After more than eight years of discussions, the long-awaited EU trademark reform is almost here. The new European Trade Mark Directive (further harmonizing the trademark laws of the 28 member states of the European Union) and a successor of the Community Trade Mark Regulations (governing trademarks claiming protection at EU level and the related fees) will enter into force in early 2016.
The biggest change is that OHIM is doing away with the "three-classes for the price of one" official filing fee regime. There will now be a fee per class even for the first three classes. The official fees for filing in one class will be slightly less than the current three-class fee, the official fees for filing in two classes will be comparable to the current three-class fee and the official fee for filing in three classes will be slightly more than the current three-class fee.
At the same time, the renewal fees will go down. There will now be a fee per class system and the renewal fees for each class will be reduced.
The Regulation will enter 90-days after its publication (currently expected for early next year), and the Directive still has to be implemented by the EU member states. Nevertheless, savvy trademark owners should already consider the following:
- File multiclass Community trademark applications early. As mentioned above, the EU trademark reform will bring an end to "three classes for the price of one," with official fees charged by class from the first class.
- Renew Community trademark registrations late. As mentioned above, the official fees for renewals will go down considerably, when renewing registrations in three classes this would afford a savings of more than 20%.
- Prepare to clarify the scope of older Community trademarks covering class headings. For Community trademarks claiming class headings and filed before June 22, 2012, new law will allow filing a declaration with the office saying that the applicant wanted to claim products mentioned in the alphabetical list of goods and services under the Nice Classification at the time of filing beyond the literal meaning of the specifications. The declarations have to be filed within six months after the new law enters into force.
- Prepare for new terminology. Going forward, "Community trade marks" will be called "European Union trade marks" (or "EU trademarks" or "EUTMs"), and the "Office for Harmonisation in the Internal Market" will be called "European Union Intellectual Property Office" (or "EU IP Office" or "EUIPO").
The EU trademark reform will bring opportunities and threats in many fields, amongst others also introducing a right of trademark owners to take steps against goods in transit, and EU certification marks.