2016-03-22:
As we have previously written a new trademark directive will enter into force during 2016 and it will imply a couple of changes for those who apply and own trademark rights in Europe.
The changes are both of large and small magnitude. A minor change is the name changes that will occur. For instance, the Office for the Harmonization in the Internal Market (OHIM) will be renamed to the European Union Intellectual Property Office (EUIPO). Besides, the Community Trade Mark (CTM) will be referred to as the European Union Trademark (EUTM). One of the major changes is the application procedure and the fees associated with it.
Application fees
| CTM (old system) | Fee | EUTM (new system) | Fee |
| First Class | € 900 covers up to three classes | First Class | € 850 |
| Second Class | Second Class | € 50 | |
| Third Class | Third Class | € 150 | |
| Fourth and all subsequent classes | € 150 | Fourth and all subsequent classes | € 150 |
Renewal fees
| CTM (old system) | Fee | EUTM (new system) | Fee |
| First Class | € 1 350 covers up to three classes | First Class | € 850 |
| Second Class | Second Class | € 50 | |
| Third Class | Third Class | € 150 | |
| Fourth and all subsequent classes | € 400 | Fourth and all subsequent classes | € 150 |
For trademark owners who only wish to renew a trademark registration in one class, the fee will accordingly be reduced by € 500 and for trademark owners who wish to renew in three classes or more, the fee will be reduced by € 250 per class. Thus, this can lead to substantial savings for those who hold large trademark portfolios.
Another important change, which has already been effected through case law and EUIPO communications, is the requirement to further specify the listing of goods and services.
In the judgement on June 19, 2012, in IP TRANSLATOR (C-307/10) the Court said that all terms used in specifications had to be clear and precise, and that, while general indications from class headings of the Nice classification* were in principle permissible, but they covered only goods or services covered by their literal meaning. Before that, OHIM’s practice was to consider that full class headings in any given Nice Class covered “all goods/services” in that class.
The new legislation codifies the Court’s requirements as to clarity and precision and the use of general indications, requires trademark applicants to classify their goods and services in accordance with the Nice Classification and clarifies that the classification has no impact on the similarity of goods and services. It further provides for the possibility to amend existing EUTM.
EUTMs filed before June 22, 2012, that are registered for the entire heading of a Nice Class can be amended to include goods or services that do not fall within the literal meaning of the class headings, provided these are in the alphabetical list of the edition of the Nice Classification in force at the time of the application for the EUTM.
The time window for the amendment of any EUTM is six months from entry into force of the new regulation, i.e., September 23, 2016. EUTMs that are not amended during that time will be considered to extend only to those goods or services that are covered by the literal meaning of the class headings indicated.
For those who currently are the proprietor of a EUTM there is virtually no change. It is only if you have a registration where the list of goods needs to be specified that one may need to act.
Please contact one of our consultants if you have any questions about the EU trademark.
* The Nice classification is an international treaty on the classification of goods and services for trademark applications.