And we’re off!  The most immediate change envisaged by the EU Trade Mark Reform Package adopted in December has now come into effect.  Today, Regulation (EU) No. 2015/2424 concerning the EU Trade Mark came into force, with the exception of just a few provisions which will enter into force on 1 October 2017.  OHIM has become the EUIPO and the CTM has become the EUTM.  You can read about these and other major changes in our blog series on the reforms.

The EUIPO is now confronted with many of the same issues faced by any other entity that has ever attempted a rebrand.  Rebrands are undertaken for a variety of reasons – e.g. to refresh tired offerings, to reflect new innovation and the evolution of a business, or to ward off/resolve conflicts  – but how do you balance these opportunities with the challenges of ensuring that you retain the customers/users that you do not want to lose?

The EUIPO/OHIM is not a typical brand owner but here are some of the things which the Office is doing to manage the transition:

• Goodwill transfer:  Although it has changed its name, the EUIPO has kept the same graphic logo as its predecessor, OHIM, which offers some obvious continuity.  We often see brand owners maintaining similar get-up for products/services for which the name has changed (and vice versa); think of Unilever’s rebranding of Jif to Cif. One of the biggest challenges faced during a rebrand is (re-)educating the consuming public about the new brand so that existing brand equity and goodwill is not lost.  Retaining some “old” brand elements can sometimes help with this if continuity is desirable.
• URL domains:  The EUIPO has adopted a new address for its website (euipo.europa.eu) and the old OHIM address (oami.europa.eu) is automatically directing users to the new address.  This will help minimise traffic lost because users are searching for the old address, either because they are unaware of the rebrand or using old bookmarks. However, links to the old OHIM online tools are not automatically directing to their EUIPO counterparts, so regular users of the website should update those bookmarks!
• E-mail addresses: Employees of the EUIPO have been given new e-mail addresses which reflect the new URL. Whilst everyone gets used to the transition and updates their address books, the old OHIM e-mail addresses will remain active “for several months”.
• Social media handles: The EUIPO has adopted new social media handles to reflect its new name, e.g. @eu_ipo on Twitter, but has maintained the same profile image used on its former account.

Brand owners will typically also need to consider other important IP issues as part of a rebranding exercise:

• Freedom to use:  Has adequate searching been undertaken to establish the risk in adopting a new name, logo or tag line?
• Trade mark protection:  Is it necessary to make any new trade mark applications to ensure adequate protection for the brand (brand name, logo, etc.)?
• Design protection:  Are there any elements of the appearance of a new product (or its packaging) which could benefit from design protection?
• Commissioned work:  Has assignment been taken of the copyright in any commissioned work, e.g. if a designer or freelancer has been commissioned to produce any new visual brand element or marketing copy?
• Ownership issues:  Are the IP rights sitting with the correct entity, especially if the rebrand has accompanied restructuring of the business?

At Stobbs we have significant experience in helping clients to negotiate the IP issues associated with rebranding.  If you have any questions or need specific advice, feel free to contact us.