Since our recent update on Key changes to the Community Trade Mark Regulation, the Office for Harmonisation in the Internal Market (OHIM) have clarified, in a communication which came into force on 01 February 2016, the Office's position with regard to how renewal fees are calculated in light of the New Regulation (EU) 2015/2424 which comes into force on 23 March 2016.
The communication states that:
- Community trade marks (CTMs) due to expire before 23 March 2016 will be subject to the current official fees (i.e. €1350 for the first three classes and €400 for each class from the 4th class onwards), even if they are renewed after 23 March 2016.
Official Renewal Fees
- CTMs due to expire on or after 23 March 2016 will be subject to the new official fees (i.e. €850 for the first class, €50 for the second class and €150 for each additional class from the 3rd class onwards), even if they are renewed before 23 March 2016. This means that contrary to previous discussions, there is no benefit to waiting until after the New Regulation comes into force on 23 March 2016, as owners will still be charged the new (lower) fees rather than the current fees.
- Where CTMs which were due to expire after 23 March 2016 have already been renewed, OHIM will issue a refund to the value of the difference between the fees paid and the fees which would have been due under the new fee schedule. If Fieldfisher has attended to such renewals we will arrange for clients to be refunded any excess amounts.
- Once the New Regulation takes effect on 23 March 2016, the deadline to file renewal applications will be the actual renewal date rather than the end of the month, i.e. if the Renewal Date is 02 June 2016, then it must be renewed by this date and it is no longer possible to delay payment until the end of the month. Fieldfisher's practice has always been to file before the CTM registration renewal deadline.
This is an active area at present. Any further changes to the Community Trade Mark Regulation will be reported through this SnIPpets blog. If you have any questions regarding how your IP rights will be affected by these changes, please get in touch with your usual trade mark contact, or one of the authors.
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