Trademark Owner Action Steps

  • Take advantage of the European Union Intellectual Property Office’s new trademark fee structure.
  • Make priority claims based upon earlier national trademark filings at the time of filing of a new European Union Trade Mark application.
  • Identify the goods and services you wish to protect in your European Union Trade Mark application with “clarity and precision.”
  • Of particular importance, review your portfolio of existing Community Trade Mark registrations to determine whether each registration identifies with “clarity and precision” the goods and services you wish to protect. If you own a registration issued prior to June 22, 2012 which uses an International Class “heading” to identify your goods or services, take advantage of a one-time only opportunity that expires on September 24, 2016, to request an amendment to obtain an identification meeting the “clarity and precision” standard. Alternatively, consider obtaining a new European Union Trade Mark registration where necessary to ensure an adequate scope of protection.

Significant changes are coming to the Community Trade Mark or “CTM” starting in 2016. Since 1996, the CTM has provided a unitary trademark registration system to protect trademarks within the European Union, which now has 28 member countries. The registration system has been administered by the Office for Harmonization in the Internal Market or “OHIM” in Alicante, Spain. The CTM has gained wide commercial acceptance; OHIM issues “almost” 100,000 CTM registrations annually.1

Notwithstanding its success, the Community Trade Mark is undergoing significant changes starting March 23, 20162. Among the changes you should be aware of are the following:

New Name: The Community Trade Mark – the CTM – changes its name to the European Union Trade Mark – the EUTM.

New Agency Name: The Office for Harmonization in the Internal Market – OHIM – also gets a new name, the European Union Intellectual Property Office – EUIPO.

New Fee Structure:

  • Application Fees: OHIM’s prior fee structure for new EUTM applications (i.e., €900 for an electronic application covering up to three International Classes and €150 for each additional class) is ended. EUIPO’s new application fee structure (i.e., €850 for a single class electronic application, €900 for a two class application, and €150 for each additional class) may result in cost savings and should discourage unnecessary multi-class trademark applications.
  • Registration Renewal Fees: OHIM’s prior fee structure for registration renewal fees (i.e., €1,350 for an electronically renewed registration covering up to three International Classes and €400 per each additional class) also is ended. EUIPO’s new registration renewal fee structure tracks the new EUTM application fee structure (i.e., €850 for a single class electronic application, €900 for a two-class application, and €150 for each additional class), and may result in significant savings to trademark owners.

Application Formalities: The EUTM reforms include important changes for trademark application formalities, including the following:

  • Goods and Services Identification: In accordance with the 2012 IP TRANSLATOR case3, the former practice of allowing claims of class-wide rights (i.e., all the goods or services falling within the scope of a given International Trademark Class under the Nice Agreement) based upon the use of one of the established International Class “headings” is no longer allowed. Rather, the applicant must identify the goods and services for which the mark is to be protected “with sufficient clarity and precision to enable competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought.” The applicant may still use a “class heading” to identify the subject goods and services, but that identification must meet the “clarity and precision” requirement. For example, if the registration identified the goods using the International Class 25 heading – “Clothing, footwear, headgear” – this might well identify sandals or boots with sufficient “clarity and precision,” but might fail to do so for bow ties. 

Further, it should be particularly noted that the owner of a Community Trade Mark registration issued prior to June 22, 2012 (effectively, the IP TRANSLATOR decision date) is allowed until September 24, 2016, to file a request with EUIPO to amend such registration to change a “class heading” identification of goods and services to an identification complying with the new “clarity and precision” standard. Failure to amend will limit the scope of such pre-June 22, 2012 registrations to goods and services which the “class heading” description identifies with “clarity and precision,” potentially making such a trademark registration of little or no value to the owner. Returning to the prior example, a trademark owner selling bow ties whose mark is registered for “Clothing, footwear, headgear” (i.e., the International Class 25 heading) might find the registration no longer protects bow ties unless amended to explicitly identify such goods.

  • Graphic Representation of the Mark: Presently, a trademark owner’s CTM application must include a graphic rendering of the trademark. This graphic representation requirement has made it difficult to obtain registration for non-traditional marks such as scent and sound marks. Under the CTM reforms, this requirement is to be loosened, albeit subject to the requirement that the mark still must be represented in a manner allowing for the determination of “the clear and precise subject matter of the protection.” Additional law implementing this particular reform is to be issued.
  • Priority Claim: Previously, an applicant could make a priority claim based upon an earlier national filing within two months of the filing of a new CTM application. Under the reformed EUTM system, a trademark applicant asserting priority must do so at the time the application is filed.

Grounds for Opposing an EUTM Application: The grounds for opposing a European Union Trade Mark application are expanded and clarified to include the following:

  • Designations of Origin and Geographical Indications: An EUTM application now may be opposed based upon rights in certain recognized indicia of geographic origin, namely:
  1. Protected Designation of Origin – “covers agricultural products and foodstuffs which are produced, processed and prepared in a given geographical area using recognised know-how.”
  2. Protected Geographical Indication – “covers agricultural products and foodstuffs closely linked to the geographical area. At least one of the stages of production, processing or preparation takes place in the area.”4
  • Reputation: European Union trademark law provides the owner of an “earlier” trademark with a reputation greater trademark protection (e.g., the mark may enjoy protection even where a likelihood of confusion is not established). Such enhanced rights have long been the basis to oppose a CTM application for an identical or similar mark, but only for “goods and services which are not similar.” The coming CTM reforms bring opposition practice into line with infringement practice;the owner of an earlier trademark with a reputation now may oppose an EUTM application for an identical or similar mark “irrespective of whether the goods and services … are identical with, similar to, or not similar to” those of the earlier rights owner.

Certification Marks: A unitary European Union certification mark system is being introduced. A certification mark is used by the mark owner (who may not be engaged in offering the goods and services being certified) to indicate that the goods and services of another meet an established criteria respecting “material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin.” Commonly encountered examples include a mark showing that a food product is “Kosher” or the ENERGY STAR mark for energy efficient appliances. Additional law implementing the new certification mark system is to be issued.

These and other changes are coming as the Community Trade Mark becomes the new European Union Trade Mark.