Five important changes in the new EU trademark rules

On 15 December 2015 the EU Parliament adopted a significant reform of EU trademark rules. Both a new Trademark Regulation and a new Trademark Directive were adopted. The Trademark Regulation comes into force already on 23 March 2016.

The new rules will, among other things, entail five significant changes that should in particular be noted:

1. Fees - it will mainly be cheaper
An applicant previously had to pay one fee of EUR 900 when applying for registration of a trademark, no matter if the application concerned for registration in one, two or three classes. Now you will pay per class and it has become cheaper to apply for registration in one class but more expensive to apply for registration in three classes.

Also, the fees relating to trademark renewals, opposition and cancellation proceedings have been reduced significantly.

2. Use of class headings in lists of goods
In future class headings and general descriptions in lists of goods will only cover the goods and services that are clearly comprised by the descriptions.

3. Goods in transit may now be impounded
Significant improvements have been introduced in respect of trademark owners' fight against counterfeit products. Accordingly, it is now possible to impound counterfeit products in transit through EU territory.

4. Preparatory steps can now be stopped
As further help in the combat against counterfeit products trademark owners will now be able to stop unauthorised use of their trademarks on packaging, labels, tags etc, irrespective of whether they have been utilised yet in relation to goods that are being marketed.

5. Trademark licences
The licensees' rights are harmonised to the effect that neither exclusive licensees nor non-exclusive licensees are generally entitled to institute legal proceedings against third parties for trademark infringements.
A specific option to expand their lists of goods will apply to Community trademarks for which application has been filed before 22 June 2012. This issue will be discussed in a separate news item.

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