The European Community Trademark Reform and What It Means For Canadian Brand Owners

On December 24, 2015, a new Regulation (EU No. 2015/2424) was published which will bring several significant changes to the Community Trademark system.  The Regulation will come into force on March 23, 2016.  The aim of the Community Trademark Reform is to harmonize the existing national EU trade mark system.

What are some of the most relevant changes for Canadian brand owners?

  • New Fee System: The EU will implement a “one fee per  class” (as opposed to having a lump sum fee for up to 3 classes).  Canadian brand owners that are thinking of filing multi-class trademark applications in Europe should do so before March 23, 2016 in order to take advantage of the lower filing fees.
  • Opportunity to re-specify goods in existing CTM registrations: Following the CJEU’s ruling on the IP Translator case, trademark protection will now only extend to the specific products and services designated in the application. This is problematic for many brand owners who registered trademarks using  the “class heading” hoping to cover all of the products or services within that class.  The IP Translator case held that trademark protection can only extend to the literal description  in the class heading, and not to the totality of products or services included in that class.  Canadian owners of CTM registrations filed before June 20, 2012 that only include class headings will have the opportunity, until September 24, 2016, to provide a more precise description of the goods and services associated with the mark.  The  specific description must nonetheless fall within the relevant class.  All Canadian brand owners who own CTM registrations should review their portfolios with their agent to ensure that they did not use the class headings as the descriptor of the goods or services associated with the mark.  In the event that class headings were used, an amendment should be filed before September 24, 2016 so that the goods or services can be specifically identified.
  • Change of Name: The Community Trade Mark Office will be changing its name to The European Union Intellectual Property Office (EUIPO).  Community Trademarks will now be known as European Union Trade Mark (EUTM).  Canadian brand owners who own CTM registrations should amend their records to reflect the change of name to EUTM.
  • Renewal Date and Fees:  Renewals must now be made prior to the expiry of the registration period.  Previously, applicants had until the end of the month in which the mark was registered to proceed with a renewal payment. Renewal fees will be charged per class.  Canadian brand owners should ensure that they renew their EUTM registrations well in advance of the deadline date.
  • Priority Claims:  Previously priority claims could be made up to two-month following the CTM application date.  Under the new Regulation, priority claims must be made at the time of filing.

For further information, please contact Paula Clancy at




OHIM Changes Practice for Black and White Marks

On June 2, 2014, the European Community Trade-mark Office (known as “OHIM”), changed its practice for trade0marks filed in black and white or gray-scale.  Specifically, while a black and white registration was thought to cover all colour variants of the mark, OHIM’s new policy suggests that this is no longer the case.  Under the new policy a black and white mark is not deemed to be identical to its colour variant.  Moreover, if colour gives the image a special effect, then a separate colour registration is required.  Use of a colour mark will only be deemed to be use of the black and white form (and vice versa) if the change in colour does not affect the distinctive character of the mark.  As a result, our European associates are recommending that in the case of designs, both black and white and colour versions of the mark be filed in the EU.  For further information about your international trade-mark portfolio or trademark strategy, please contact Paula Clancy.