Does use of a trade mark within the UK constitute valid use within the EU to evidence enhanced distinctiveness of an EU trade mark?
The judgement of the Shopify vs Shoppi case has important implications for UK trade mark owners.
Following discussions that began in 2008 an overall political agreement was reached in April of this year between the European Parliament, the European Council and the European Commission which has resulted in quite extensive changes to EU trade mark law. This agreement has produced two documents: a new Trade Mark Directive to approximate the laws of Member States relating to trade marks, and a Regulation amending current legislation embodied in Council Regulation (EC) No 207/2009 on the Community Trade Mark.
It is anticipated that the new Regulation will be published in the Official Journal early next year, meaning that they will come into force 90 days after publication. This briefing note is directed to some of the changes that will be brought about by the amending Regulation on Community Trade Marks.
No longer will it be possible to file an application in three classes and expect to pay the same fee as for one class. The current fee for applications filed electronically is EUR 900 in up to three classes. The revised fees will be EUR 850 for one class, EUR 900 for two classes, and EUR 1050 for three classes. For each additional class the fee will be unchanged at EUR 150.The reduction in renewal fees is considerable.
The current fee for renewals filed electronically is EUR 1350 in up to three classes. The revised fees will be EUR 850 for one class, EUR 900 for two classes, and EUR 1050 for three classes, and EUR 150 for each additional class instead of EUR 400. You may be able to take advantage of this reduction by delaying renewal for as long as possible of any registrations until the new Regulation comes into force.
There are also reductions in fees for opposing applications, applying for cancellation/revocation of registrations, and for the lodging of appeals to the Boards of Appeal.
Most of these involve the law on extending or clarifying
These and other changes will be covered and discussed in separate briefing notes during the course of 2016.