You may have heard about the new EU trade mark reforms which were enacted in December. These introduce some very important practical changes on matters such as fee levels, payment dates, representations of trade marks and amendments to existing registrations for class headings.
If you wish to read the reforms in full, the text of the new Regulation No. 2015/2424 is available here.
Change in name for the Office and CTMs
The OHIM will now be called the European Union Intellectual Property Office (EUIPO). Community trade marks will now be called European Union Trade Marks (EUTMs).
Change in fee structure
The “three classes for the price of one” arrangement is gone. Instead, each class will carry a separate fee. This applies to filing fees and also renewal fees.
Changes in fees
The new official fees will be:
Click here to view table.
For comparison, the current fees for filing an application in up to 3 classes are €900 and on renewal, €1350. This means that the official renewal fees for a registration in one class will be greatly reduced from €1350 to €850. The official application fees for one class will fall from €900 to €850. If you file in two classes, the application fees are the same under the new and old systems (€900) and the renewal fees will be reduced from €1350 to €900. For three class marks, the application fees will increase from €900 to €1050 but the renewal fees will fall from €1350 to €1050.
Practical tip – if you typically file in 3 or more classes, you may want to review your plans for 2016 and file as many planned applications as possible before the changes come into effect on March 23, 2016, to avoid paying the increased filing fees.
If the renewal period is running when the proposals come into effect, the draft OHIM / EUIPO Guidelines incorporating the changes state that the old renewal fees will apply.
Change in renewal fee due date
Renewal fees must be paid by the renewal date, rather than at the end of that month.
If the renewal period is running when the proposals come into effect, the draft OHIM / EUIPO Guidelines incorporating the changes state that the old payment date will apply, which would mean that those registrations could be renewed by paying the fee at the end of the month in which the payment date falls. However, in case these Guidelines change, or the validity of this practice is challenged, we would recommend paying all renewal fees by the renewal date once the changes come into effect on 23 March 2016.
Amendments to the goods / services for CTMs filed before IP Translator where class headings were used
This is a big change and we have issued a separate briefing note on this. If you have not received this yet, you can view it here.
No graphical representation necessary from 2017
You will no longer have to file a graphical representation of the trade mark. This means that it will be easier to file non-traditional trade marks such as sound marks and movement marks. It will still be necessary to properly indicate what is to be protected by the trade mark and we can advise you on this. This change comes into effect on 24 September 2017 (21 months after the publication of the Regulation).
Change in proof of use period for oppositions
Currently an opponent who owns a trade mark registration which is over 5 years old can be required to file proof of use of that trade mark for the 5 year period ending on the publication date of the opposed trade mark. This period for which proof of use can be required will change to 5 years ending on the filing or priority date of the opposed trade mark, whichever is the earlier. Where an opposition is filed before the changes come into effect on 23 March 2016, the old rules will continue to apply.
Shorter waiting time for International Registration opposition periods
The start date of the opposition period for CTM designations of International Registrations will be one month from the date of publication, instead of six months.
Certification trade marks can be filed as EUTMs from 2017
A third category of trade mark will been introduced from 24 September 2017, in addition to standard trade marks and collective trade marks. Certification trade marks protect trade marks which certify the characteristics of the goods or services, rather than those which act as an indicator of trade origin.
Oppositions can be based on PDOs and PGIs
Protected designations of origin and protected geographical indications can be used as the basis for an opposition. They can also still be used in cancellation (invalidity) actions, as was the case up until now. The draft OHIM / EUIPO Guidelines incorporating the changes state that there are no transitional provisions, so this applies to all CTMs / EUTMs regardless of whether they were filed before or after the new Regulation comes into effect.
When does all of this come into effect?
The changes come into effect on 23 March 2016, with a few exceptions including removal of graphical representation requirement and certification trade marks mentioned above.