The Office for Harmonisation in the Internal Marke (OHIM) announced in a recent press release that the Regulation (EU) No. 2015/2424 of the European Parliament and the Council (EU trade mark regulation) dated December 16, 2015 will enter into force on March 23, 2016.

For applicants and owners of registered community trademarks the following changes should be noted.

1. Re-Branding of the OHIM

As from March 23, 2016, the OHIM will re-brand itself to „European Union Intellectual Property Office (EUIPO)“. From the same date, a community trademark (CTM) will be called “European Union trademark” (EUTM).

The office’s email addresses will also change. The new email addresses will have the format: name.firstname@euipo.europa.eu. The office’s website will be updated to reflect the new name. The new domain name will be: www.euipo.europa.eu.

2. New Fee Structure

The fee system under the EUIPO will replace the current fee system of the OHIM. The filing, maintenance, litigation and appeal fees will all be changed.

2.1 Filing Fees for EU Trademarks

The basic filing fee for EU trademarks will cover only one class instead of three classes, as it is presently the case. In other words, additional class fees will have to be paid for any EU trademark application covering goods and services of more than one class (Nice classification). The fees are summarized in the following table.

2.2 Fees for the Renewal of EU Trademarks

The renewal fees for EU trademarks will be lowered and will now correspond to the filing and class fees. The renewal fees for EU trademarks are summarized in the table below.

In contrast to the present system, the renewal of any EU trademark will have to be requested on the renewal date rather than at the end of the month of a possible renewal, in accordance with Art. 47 (3) EU trademark regulation.

Example: a EU trademark with a filing date of April 15, 2016 must be renewed and the renewal fee must be paid on or before April 15, 2026 (Friday).

If the renewal of a EU trademark is not requested within the normal due date, the trademark can still be validly renewed, if an additional late payment fee is paid together with the basic fee. The time limit for requesting renewal of the trademark and pay the late payment fee and basic renewal fee will end 6 months from the date of the normal time limit.

2.3 Fees in Relation to EU Trademarks

The process fees for opposition, nullification and appeal proceedings are lowered, as will be apparent from the table below.

3. Introduction of EU Certification Marks

On September 23, 2017, a new type of trademarks will be introducted at the EUIPO: the so-called “EU certification mark”.

The certification mark will allow a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods or services complying with certification requirements. Thus type of trademark will only be available to members of the organisation, which ensures that the quality standards are observed. For this reason, the applicant of an EU certification mark must file together with the application documents the regulations of the organisation which set out a number of matters.

4. Introduction of New Types of Trademarks

Starting from October 1, 2017, the registration of new types of trademarks will be easier. The EU trade mark regulation will remove the requirement of graphical representation. New types of non-traditional trademarks, such as holograms or motion trademarks, will in principle be registrable as EU trademarks.

It is still unknown, how the new types of trademarks may be non-graphically represented in each case.

5. Possible Seizure of Goods in Transit within the EU

In a measure to help in the battle against counterfeiting, the EU trade mark regulation intends to make it easier for trademark owners to seize counterfeit goods in transit within the European Union.

The owners of EU trademarks will be entitled to seize and destroy goods in transit within the EU that are illegally marked with their trademarks, unless the goods can be lawfully put on sale in the country of final destination. In other words, the seizure may be prevented by the potential trademark infringer, if he can prove that he is allowed to bring into the market the goods marked with the trademark in the country of final destination.

6. Interpretation of the Goods and Services of a EU trademark

The European Court has previously ruled in its decision “IP Translator” (C-307/10) that the protection provided by a trademark covering the class headings of the Nice Classification is limited to the literal meaning of the terms. With entering into force of the EU trade mark regulation, it is now implemented law that in accordance with the WYSIWYG (abbreviation for “what you see is what you get”) approach the descriptions of goods and services will be interpreted strictly such that class heading language will no longer be construed as covering all goods or services in the class.

This principle as codified in Sect. 28 (5) of the EU Trade Mark Regulation Union will not only be applicable to the newly filed EU trademarks, but also for all registered trademarks and pending trademark applications. Since the application of the new law may in principle constitute a loss of legal rights for all those old cases, the EU Trade Mark Regulation provides for a transitional regime for the trademarks registered prior to June 22, 2012. The owners of these trademarks may declare whether the selected class headings should protect all other goods and services within the class and extend protection to those goods and services. The time limit for submitting the declaration to the EUIPO will expire on September 24, 2016.

However, this option only applies to those cases, wherein the terms cannot be subsumed under the verbatim of the claimed class headings. The goods and services to be claimed in the declaration must be selected from the alphabetical list of terms according to the Nice Classification as valid at the time of filing the trademark.

7. Comments

In our view, the procedural and substantive changes that are introduced by the EU trade mark regulation are to be welcomed. The reduction of the renewal fees for EU trademarks might reduce the number of double registration of trademarks by the same applicants.

With respect to the WYSIWYG approach for interpreting the scope of protection of a trademark now applicable under the EU trade mark regulation, applicants for and owners of EU trademarks should check their portfolios for trademarks, for which action is required prior to the expiry of the time limit of September 24, 2016. If necessary, a declaration should be filed with the EUIPO that the trademark should be extended to the desired (missing) goods and services.

Foto: © MPD01605, [CC BY-SA 2.0]