Attention business owners and entrepreneurs! As of March 23rd 2016, there’s a few changes being made to EU trade mark registration. If you’ve registered a trade mark in the EU or you were planning on doing so, you might need to take notice of a few changes.
Registering a trade mark in the EU means your branding will be protected through all the 28 countries of the EU. Registration is much the same as if you were to apply for a trade mark here in the UK. You should see if the trade mark is already taken, then submit your application. Once the application is accepted by the office it will be published. If no challenges occur during the publication period, registration is granted. You will hold the trade mark for 10 years before needing to renew it.
The new regulations on EU trade marks should make it cheaper, easier and fairer to own an EU trade mark. Here’s a brief summary of some of the changes:
1. Some name changes
Community Trade Marks (CTM) will now be known as EU trade marks. The Office for Harmonization in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO).
2. Reductions to fees, and introduction of a one fee per class system
Different fees now apply for different numbers of classes, rather than the old blanket fee of €900. You can now e-file a one class application for €850 or two classes for €900. Each further class costs €150.
Class Current (€) New (€)
1 900 850
2 900 900
3 900 1050
The fees for renewing your trade mark have decreased from a blanket €1,350.00 to a reduplication of the cost of registration. That is, €1,050 for three classes, €900 for two classes or €850 for one class, and additional classes at €150 per class.
Class Current (€) New (€)
1 1350 850
2 1350 900
3 1350 1050
A number of other fees have also been reduced.
- The opposition fee has been reduced from €350 to €320
- The revocation or invalidity fee has reduced down from €700 to €630
- The fee for Appeal has gone from €800 to €720
3. Change of time limits to renewal and proof of use
The renewal date for your trade mark is now the same date you filed your trade mark, plus 10 years (rather than the end of the month in which you filed).
When contesting proof of use against someone using a new trade mark, proof of use has to be furnished if the 5 year grace period ended before or at the application date of the younger trade mark, as opposed to the date of publication of the trade mark.
4. Overly generalised descriptions have been abolished
Trade marks are now only protected for the goods and services that can be inferred from the literal interpretation of the Nice descriptions of goods and services. Formally, a few EU member states and OHIM permitted the use of overly general class headings to protect all goods or services contained in the alphabetical list. Those that relied on this ‘class heading covers all’ practice have a six month grace period, from March 23 to September 23, in which to declare to EUIPO (formally OHIM) that their intention had been to seek protection beyond that covered by the literal meaning of the class heading.
5. Search reports and monitoring letters no longer mandatory
Prior to the changes, applicants were not able to refuse search reports and monitoring of trade mark applications as provided by OHIM. From now on, applicants of a trade mark can choose whether they wish to receive search reports, and owners of trade marks can opt out of monitoring letters regarding younger trade mark applications.This will encourage private monitoring or availability searches and eradicate excess paper work.
The following provisions will come into force in October 2017 as they have to be developed by secondary legislation.
6. Trade marks no longer have to be represented graphically.
A trade mark no longer needs to be represented graphically. For example, if you wish to trade mark a sound, you don’t need to provide the visual notation, just the sound file will do.
7. Introduction of EU certification marks
Certifying institutions and organizations can now file EU trade marks as a signifier for goods or services that comply with certification requirements.