Regulation No. 2015/2424 which amends the EU’s trade mark system comes into force on 23 March 2016. As a result, some major changes to the system are set to be implemented.
Below is a summary of some of these changes:
Name Change for the Office of Harmonization in the Internal Market (OHIM)
The OHIM will change its name to the European Union Intellectual Property Office. The name of the trade mark itself will also change from “Community trade mark” to “European Union trade mark”.
Classification of Goods and Services for Trade Marks filed before 22 June 2012
As reported in our update on 20 August 2015, prior to June 2012, CTM Applicants seeking broad protection for its marks in the EU took advantage of the OHIM’s class heading “cover-all” approach meaning that if a class heading was claimed, the OHIM interpreted coverage of the mark to include all goods/services in the class. The practice has now changed whereby CTM applicants must describe the goods/services with “sufficient clarity and precision to enable the competent authorities and economic operators on that basis alone to determine the extent of protection”.
With this new practice in mind, the regulation provides a transitional 6 month period (23 March to 23 September 2016) to allow the owners of CTMs registered for a class heading and filed before 22 June 2012 to declare that their intention at the time of filing had been to seek registration in respect of goods/services beyond those covered by the actual meaning of the class heading. If the declaration is not filed by the deadline, the trade mark will be deemed to extend only to the literal meaning of the class heading.
It is therefore important that you review your current CTMs to ensure that they will be adequately covered.
Change to official fees
There are changes to the application and renewal fees for CTMs.
Application fees:
| Application | Current fee (online) | Fee from 23 March 2016 |
| One mark in one class | 900€ | 850€ |
| Second class | – | 50€ |
| Third class | – | 150€ |
| Each additional class over 3 | 150€ | 150€ |
Renewal fees:
| Renewal | Current fee (online) | Fee from 23 March 2016 |
| One mark in one class | 1350€ | 850€ |
| Second class | – | 50€ |
| Third class | – | 150€ |
| Each additional class over 3 | 400€ | 150€ |
Opposition period shortened for international trade marks
The time limit for opposing international trade marks has been shortened from six (6) months to one (1) month.
No longer a requirement to represented a trade mark graphically
This amendment to the EU trade mark system makes it easier to register non-traditional trade marks including sound, scent and motion trade marks.
End to search for earlier CTMs
The OHIM will cease to carry out searches for earlier CTMs. Applicants should rely on their own trade mark searches and ensure watches are in place.
What to do next?
To ensure adequate protection for your trade marks in the European Union, we suggest that you conduct an audit of your current trade mark portfolio and that you do so well before the deadline of 23 September 2016 to allow sufficient time to implement changes to your CTMs if required. We also suggest that watches are put in place to avoid confusingly similar marks being registered.
Please contact us if we can assist you with your trade mark portfolio in the European Union.