The Community Trade Mark - what changes lie ahead?

Following the recent publication of the new Trade Mark Directive (EU) 2015/2436 and the amended Trade Mark Regulation (the Regulation) in the Official Journal, we consider imminent changes to the Community Trade Mark (CTM) system.

What is the background to these reforms?

In recognition of the need for modernisation, in 2008 the European Commission began to examine the CTM system and consider how it interacted with the national trade mark systems of Member States. After two years of negotiation between EU institutions, the EU Presidency reached a provisional agreement with the European Parliament on reform of the European trade mark regime on 21 April 2015. On 10 June 2015, the European Council’s Permanent Representatives Committee (Coreper) approved a compromise agreement on the reform package. The latest installment is the publication of the recast Directive and amended Regulation which appeared in the Official Journal on 23 December and 24 December 2015 respectively:

• Directive (EU) 2015/2436. This Directive repeals Directive 2008/95/EC with effect from 15 January 2019
• Regulation (EU) 2015/2424 amending Council Regulation 207/2009/EC on the Community Trade Mark. This Regulation will enter into force from 23 March 2016

What changes will come into force on 23 March 2016?

Regulation 2015/2424 comes into force on 23 March 2016. In respect of the Directive (which largely mirrors the Regulation), Member States are required to transpose into national law the bulk of the Directive by 14 January 2019, namely arts 3–6, arts 8–14, arts 16–18, arts 22–39, art 41, arts 43–50 by 14 January 2019. In respect of the revocation and invalidity procedure laid down in art 45, the deadline for transposition is 14 January 2023.

This article highlights some key reforms that will come into effect on 23 March 2016. This list is non-exhaustive and statutory references are to the Regulation unless otherwise stated.

Terminology

The title 'Community trade mark' is replaced by 'European Union trade mark' or EUTM (art 1(1)) and 'Community trade mark court' is replaced by 'European trade mark court' (art 1(2)).The Office for Harmonization in Internal Market (OHIM)