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Insight

Key changes to the Community Trade Mark Regulation and the OHIM on 23 March 2016

We would like to advise you of some important changes which are being made to the Community Trade Mark Regulation and the Office for Harmonisation in the Internal Market, coming into force on 23 March 2016.

We would like to advise you of some important changes which are being made to the Community Trade Mark Regulation and the Office for Harmonisation in the Internal Market, coming into force on 23 March 2016.  

Summary of the key changes Summary of what you need to do
1.  Renaming of the Office and the CTM
  • Adjust your internal records accordingly.
2.  Changes to Fee Structure
  • Take advantage of the current filing fees by filing new EU applications in three or more classes before 23 March 2016.
  • Take advantage of the reduced renewal fees by delaying your renewals until after 23 March 2016.
 3.  The IP Translator case will be implemented in respect of registrations filed before 22 June 2012
  • Have your portfolio reviewed for trade marks filed before 22 June 2012 and that cover entire class headings; and
  • Where appropriate, file Article 28(8) Declarations before 23 September 2016 deadline.

 

  1. Renaming of the Office and the CTM 
  • The  Office for Harmonisation in the Internal Market (OHIM) will be renamed the European Union Intellectual Property Office (EUIPO).
  • The Community trade mark (CTM) will be renamed the European Union trade mark (EUTM).
  • Any existing CTM applications/registrations will automatically become EUTM applications and registrations on 23 March 2016.

 

  1. Changes to Fee Structure
  • There will be changes to the fee structure charged for new applications and the renewal of existing registrations.
  • There will also be reduced fees for opposing EUTM applications, seeking cancellation of existing registrations and for filing appeals.
  • The current official fees and the revised fees for filing new applications and renewing existing registrations are set out below:

2.1 Official Application Fees for an EUTM filed electronically

Class(es) Current OHIM fee (EUR) New EUIPO fee (EUR)
One 900 850
Two 900 900
Three 900 1050
Four 1050 1200
4th and subsequent class 150 150
  • A key change to the fee structure for new trade mark applications is that the official fee no longer covers up to three classes.
  • From 23 March 2016, the official fee will be reduced to €850 for the first class, with the second and third classes costing €900 and €1050 respectively. Each additional class from the third class will cost an extra €150 per class. For example, the official fees for an application in five classes will cost €1350, €1500 for an application in six classes and €1650 for an application in seven classes. Therefore, whilst the official fees will be reduced if just filing in a single class, the costs of filing in three classes will now be increased (€1050 rather than €900 as was previously the case).
  • With this in mind, if you are considering filing new EU applications in three or more classes, we would recommend that you file these before 23 March 2016 so as to take advantage of the lower fees.

2.2 Official Renewal Fees for EUTMs

Class(es) Current OHIM fee (EUR) New EUIPO fee (EUR)
One 1350 850
Two 1350 900
Three 1350 1050
Four 1750 1200
4th and subsequent class 400 150
  • By contrast, the fees for renewing registrations will be significantly reduced after 23 March 2016 and in cases where you have registrations due for renewal after this date and which are already in the renewal period, we would recommend holding off on filing the renewal applications until after 23 March 2016.

3. The IP Translator case will be implemented in respect of registrations filed before 22 June 2012

3.1 Background

  • Prior to 22 June 2012, CTMs covering class headings were deemed to cover all goods and services in the class. However, this was changed by the IP TRANSLATOR decision. In order to clarify the position on pre-2012 CTMs, the following process has been adopted.

3.2 Proposed solution 

  • Owners of CTMs predating 22 June 2012, which cover entire class headings, will be allowed a six month window from 23 March 2016 until 23 September 2016 to file Article 28(8) declarations amending the goods and services to include terms describing specific goods and services of interest, in addition to the class heading.
  • Once the six month window expires on 23 September 2016, all CTMs will be interpreted according to the literal meaning of the terms included.

3.3 Which trade marks are affected and when can you file an Article 28(8) Declaration?

  • CTM registrations filed before 22 June 2012 and that contain entire Nice Classification class headings are affected.
  • CTM registrations including other goods in the class along with the class heading on the condition that the language used does not limit or disclaim the class heading.

3.4 Can registrations be amended to cover anything in that class?

  • Yes, registrations can be amended to include any of the terms in the alphabetical list for that class in the relevant edition of the Nice Classification in force at the filing date and that are not already covered by the literal meaning of the class heading.
  • Class heading terms can also be replaced with more specific terms included in their scope using the partial surrender procedure.
  • Your Article 28(8) Declaration or the amended registration cannot be opposed by a third party. However, the Declaration will be examined by the EUIPO and the amended registration will be subject to proof of use requirements in the usual way.

3.5 What happens if you choose not to file an Article 28(8) Declaration amending CTMs filed before 22 June 2012?

  • These CTM registrations will extend protection only to goods or services clearly covered by the literal meaning of class heading terms.

3.6 Which trade marks remain unaffected? 

  • International Registrations designating the CTM system with effect before 22 June 2012.
  • National trade mark registrations.

3.7 When can’t an Article 28(8) Declaration be filed?

  • For CTM registrations filed on or after 22 June 2012. These CTMs will be interpreted according to the literal meaning of the indication or included class heading terms.
  • For CTM applications filed on or before 22 June 2012 which have not yet been registered. However, it may be possible to amend the class heading terms in the application.
  • For CTM registrations containing some, but not all of the terms from a class heading.

Fieldfisher’s practice has always been to draft specifications on a bespoke basis, including specific indications of the goods and services most relevant to clients. Where Fieldfisher have filed directly, it is unlikely an Article 28(8) Declaration will be required.

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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