Regulation (EU) 2015/2424 of the European Parliament and of the Council amending the Community Trade Mark Regulation (EU Trade Mark Regulation) has significant practical consequences.
In addition to the supposedly cheaper application fees, there are also changes to the designation and classification of the list of goods and services. In addition to the terminology, important legal framework conditions for EU trademarks are also changing.
We have summarized the most important information below.
OHIM becomes EUIPO – Automatic change of designation
First of all, the Office for Harmonization in the Internal Market (OHIM) will become the “European Union Intellectual Property Office” (EUIPO). In future, the Community trademark will be called the “EU trademark”.
Already registered Community trade marks (CTMs) and Community trade marks in the process of being applied for will automatically become EU trade marks or EU trade mark applications on the above date.
Slight reduction in application fees for the EU trade mark
By moving away from the 3-class system to the 1-class system, the fees for applying for an EU trade mark will be reduced almost across the board.
Previously, the trademark application automatically included three classes of goods or services. This was accompanied by an application fee of €900.00. The application fee of €850.00 instead of the previous €900.00, which will apply from the entry into force of the EU Trade Mark Regulation, will now only cover one class of goods or services.
Each additional class costs an additional €150.00. This means that anyone wishing to register three classes from the start, as in the past, will now have to pay €1,050.00 instead of the previous €900.00.
Significant reduction in fees for the renewal of an EU trade mark
There is a significant reduction in fees for the renewal of Union stamps.
For the renewal of an EU trade mark (one class), fees of € 850.00 are due instead of the previous € 1,350.00. Additional classes will cost €50.00 (for the second class) or €150.00 (from the third class).
Application for EU trade marks without graphic representability
It is already possible to apply for trade marks in various forms. These include, for example, olfactory or sound marks, as long as they can be represented graphically.
As of the entry into force of the new EU Trademark Regulation, this graphic representability will no longer be a prerequisite for filing an application:
“A sign should be capable of being represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, provided that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”
It remains to be seen what this wording will mean in official practice. However, it is to be welcomed that the applicant is also given greater flexibility for unusual trademark forms.
European Union Trade Mark Regulation introduces EU certification marks
The EU Trademark Regulation is also intended to introduce the so-called EU certification mark. This must be suitable,
“[…] to distinguish goods or services for which the proprietor of the mark warrants the material, method of manufacture of the goods or performance of the services, quality, accuracy or other characteristics, with the exception of geographical origin, from those for which no such warranty exists.”
The EU certification mark is therefore intended to identify a certain quality standard. The details of use must be specified in the corresponding statutes. In this respect, there is a similarity to German collective marks pursuant to sec. §§ 97 ff. MarkenG.
Designation and classification of the list of goods and services
The Union Trade Mark Regulation also regulates how the terms of the list of goods and services, including the generic terms of the class headings of the Nice Classification, are to be interpreted in future. Accordingly, only the literal meaning of a term will be covered. This eliminates the frequently used option of applying for trademarks for the generic term of a class in order to obtain the broadest possible protection.
This regulation also applies to trade marks that have already been applied for! The EU Trademark Regulation therefore provides for a transitional arrangement for trademarks that were registered before June 22, 2012. Owners can subsequently register individual goods and services under certain conditions. The deadline for late registration ends on September 24, 2016.
If you have any questions, you can contact us at any time. We will check your brand portfolio for any need for action.
If you hurry, you can still save on fees now
Even if the future EUIPO is currently suggesting otherwise: A trademark application will probably only be cheaper for those who only want to register their trademark in one class of goods or services.
Anyone who is already sure that they want to file a European trademark application in three classes of goods or services should hurry. From 23.03.2016, the application fee for this will be €1,150.00 instead of the previous €900.00.
Anyone who can wait until after March 23, 2016 to extend the term of protection of their trademark should do so. You can actually save fees at this point.