2016 will see the introduction of a new Trade Marks Directive and Regulation, resulting in a number of important changes to the Community Trade Mark system, including fee reductions and new names. Here we highlight the key points.
The Community Trade Mark (CTM) will become the European Union Trade Mark (EUTM), and OHIM will be renamed the European Union Intellectual Property Office or EUIPO for short.
EUTM application fees will be charged on a per-class basis, rather than the current system of the basic fee covering up to three classes. The new fee structure will be:
- One class: €850
- Two classes: €900
- Each class above two: €150 per class
In a more significant move this fee structure will be mirrored for renewal fees, resulting in a minimum saving of €500 per registration.
The need for a mark to be graphically represented will be removed. However, there will still be a requirement for clarity and precision in what is actually protected, meaning we are unlikely to see any immediate practical difference.
The new law clearly endorses the ‘literal meaning’ approach to what is covered by Class Headings, codifying the approach adopted in the IP TRANSLATOR case that specifications with Class Headings are deemed to cover the literal meaning of the terms listed and nothing more.
The new law includes a provision dealing with the previous OHIM practice (Class Headings were deemed to cover all goods/services falling within a class). Those who own registered EUTMs with Class Heading coverage filed before 22 June 2012 (i.e. the date of the IP TRANSLATOR judgment) will have a 6 month period after the entry into force of the new law within which to file a declaration that their intention when filing was to obtain protection beyond the literal meaning of the Class Heading/s involved.
There is set to be a change in the opposition deadline for EU designations of International Registrations, with the 3-month opposition period starting 1 month after publication by the EUIPO rather than the current 6 months. It will also become possible to oppose EUTM applications on the basis of protected designations of origin or geographical indications.
In a move that is likely to be welcomed by many certifying bodies, we are also due to see the introduction of EU-wide certification marks. It will be necessary to file regulations governing the use of such marks, and there will be a separate implementing act laying down the requirements that such regulations should meet.
When will this all happen?
Whilst the exact timing is not yet known, the new Regulation will come into force just 90 days after the final version is published – so watch this space.
This article is part of the Bird & Bird's fifth edition of BrandWrites
View PDF Brochure >>