In July 2015 we reported proposed changes to the CTM system which is overseen by the Office of Harmonisation in the Internal Market (OHIM). The European Parliament has now approved these changes and, except where indicated below, they will come into force on 23 March 2016. The more important and practical implications are:
New names: OHIM and the CTM
These will be renamed the EU Intellectual Property Office (EUIPO) and the EU Trade Mark (EUTM) respectively. Despite the change of name, the EUIPO will not be granting patents. This will still be the reserve of the European Patent Office and the national patent offices.
New Official Fees: Applications and Renewals
The current system allows for a CTM application to be filed covering up to three classes before any additional official class fees have to be paid. However, official fees will now be payable for each class. The same applies to renewal fees. Set out below is a table illustrating how the changes affect “3 Class” applications/registrations filed electronically at the Office:
Click here to view table.
International Classification: “Class Heading” Claims
The previous practice stated that if an entire “Class heading” was used as a claim for an application, protection was granted for all goods or services within that class. This practice was amended following the decision in the “IP TRANSLATOR” case which held that the use of a “Class heading” was now to mean that the claim should be limited to the “literal meaning” of the terms referred to, and would no longer automatically cover all goods/services in the class. This was to be the case for trade mark applications filed after that decision (22 June 2012). From then on, although “Class headings” could still be used, it was advisable also to refer to any specific terms that required protection.
It has been decided that owners of CTM registrations filed prior to 22 June 2012 and which simply refer to a “Class heading” only can amend the claims to make sure that they actually cover the goods/services of interest. This will be achieved by filing a Declaration which will specify the actual goods/services that the registration is to cover, and these will then be recorded on the CTM Register.
The deadline to file such a Declaration is 23 September 2016. After that date, any CTM registrations that simply refer to a “Class heading” will only be protected for the goods/services referred to in that “Class heading”. Although this may well be sufficient to protect a trade mark for the goods/services of interest, it is advisable to review the actual claims of such registrations to ensure that adequate protection is provided.
Opposition Proceedings: “Proof of Use”
Under current Regulations, if an opposition is filed against a CTM application and is based on an earlier registered right that has been registered for more than five years prior to the publication of the opposed application, the Opponent can be required to file evidence of use to prove that enforceable rights exist. This can often be to the advantage of the Opponent, particularly if the opposed application has taken some time to reach the publication stage.
This five year period will now be the five years prior to the application date, and not the publication date, of the opposed application.
The filing of applications for Certification Marks (which provide a “guarantee” that the goods/services offered meet a particular standard or possess specific attributes) will now be permitted, but not until 24 September 2017.