Reforms to the Community Trade Mark (CTM) system were adopted by the European Parliament in December 2015, and several changes to the law will take effect next week, on 23 March 2016.
Summary of action points for brand owners
Short-term
- For those considering CTM applications in three classes or over, it will be advisable to file before 23 March 2016 to take advantage of the current fee structure.
- Undertake trade mark portfolio review to determine whether Article 28 declarations/partial surrenders are required, or existing protection offered by class specification is adequate.
- Brand owners (luxury brands, FMCGs, etc) having issues with counterfeits to consider EU customs registrations.
Long-term
- Brand owners seeking protection for distinctive “non-traditional” intangible assets (for instance, instantly recognisable sound/tune used in ad jingles (FMCG) or phones (tech)) to consider applying for protection (change from September 2017).
Contact
Key contacts
Rebekah Gay
Partner, Head of Intellectual Property, Sydney
Laura Orlando
Managing Partner, Milan Office, Milan
Sue Gilchrist
Consultant, Sydney
Peng Lei
Partner, Kewei, Mainland China and Shanghai
Alexandra Neri
Partner, Paris, Korea Group and Africa Group
Dr Ina vom Feld
Partner, Germany
Sebastian Moore
Partner, Head Intellectual Property, London and Milan
Rachel Montagnon
Knowledge Counsel, London
Disclaimer
The articles published on this website, current at the dates of publication set out above, are for reference purposes only. They do not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking any action.