Tuesday, 16 February 2016 02:27

March 23, 2016 Date Set for Changes to European (CTM) Trademark Registration

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As a follow-up to a previous blog entry, it’s finally official -- reform legislation in the European Community (“EU”) will take effect on March 23, 2016 and bring major changes to the CTM (“Community Trade Mark”) registration system.  Over the past 20 years, the CTM has become a staple of international trademark portfolios as a cost-effective way to achieve protection in 28 member countries in a single package.  Among the most notable changes, the CTM name will be changed to the “European Union Trade Mark,” or “EUTM.”  Also, the registrar’s office in Alicante, Spain, now known as OHIM (“Office of Harmonization in the International Market”), will be re-named as the “European Union Intellectual Property Office,” or “EUIPO.”  In addition to minor, technical changes, the overhaul will increase filing fees for multiple-class applications, replacing the existing structure of up-to 3 classes for the initial filing fee.  Of note, any application filed before March 23rd will still benefit from the 3-for-1 filing fee, so clients are encouraged to consider immediate filing to reduce costs.  Other changes to the law will impose stricter rules for specific listings of goods and services, which will affect existing registrations and upcoming renewals, and there also will be enhanced enforcement provisions available to registrants, especially against counterfeit and gray market goods.  The Firm continues to assist clients with trademark registration and enforcement in virtually every country of the world.

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John Malloy, III

As the Partner overseeing the Firm’s Intellectual Property Litigation and International Tradmark Portfolio groups, Mr. Malloy is Board Certified as an Expert in Intellectual Property Law and concentrates his practice on Trial and Appellate Litigation. He also focuses on International Portfolio Management, filing trademark applications and directing enforcement proceedings around the globe. Mr. Malloy taught for nearly a decade as an Adjunct Professor of Intellectual Property Law at St. Thomas University Law School. He earned his bachelor’s degree from Vanderbilt University and his law degree from the University of Miami. During his tenure as the Chair of the International Trademark Association’s Model State Trademark Bill from 2003 to 2007, Mr. Malloy oversaw the passage of trademark legislation in a half dozen states and personally spear-headed the enactment of Florida’s present trademark statute, which became effective in 2007. In 2009 Mr. Malloy was named the Chairman of the DCBA Intellectual Property Committee.