In our previous post we mentioned that brand owners should consider deferring renewals of EUTMs until after the introduction of the new EUTM Regulation where possible to save money.

Unfortunately, the renewal fee situation is no longer clear.  The new Regulation will enter into force on 23 March 2016. However, OHIM has issued draft guidelines that provide for transitional arrangements. These provide that the new timing for renewing and paying the renewal fee and the actual amount of renewal fee will only apply to EUTMs for which the basic six-month renewal period starts once the new Regulation enters into force. This effectively means that only EUTMs due for renewal on 23 September 2016 or later would be entitled to enjoy the lower fees.  For EUTMs due for renewal on 22 September 2016 or before, the old law would still apply regarding the timing for renewing and paying the renewal fee and the actual amount of the renewal fees.

We consider that this is incorrect and that the provisions on renewal under the new Regulation should apply to all EUTMs due for renewal (including those in the six-month grace period) as of the day of entry into force of the new Regulation. User associations are currently discussing a joint response to OHIM to try to convince it to change the draft guidelines. However, it remains to be seen what OHIM will finally decide.

For the time being, we recommend that brand owners renew any EUTMs due for renewal in January by the end of this month. For EUTMs due for renewal in February or later, we suggest that brand owners hold off on renewing until a final decision has been reached by OHIM.