Important Changes to European Trade Marks

16 Mar 2016
23 March 2016 sees some important changes to the European trade mark system.

The two changes with the most immediate effect are:-

  1. The fee structure will change with effect from 23rd March. In the current system, a fixed fee of €900 applies whether an application is for 1, 2 or 3 classes and a fee of €150 applies for each class thereafter. In the new system, the EU Registry will charge €850 for an application in the first class. The second class will cost €50 and each class thereafter will cost €150. In short, if you intend to file an EU application for three or more classes, it will be cheaper to do it before 23rd March. So, if you have been deliberating about filing in the EU, there is now an additional incentive to get the process underway before 23 March.
  2. The name of the EU Registry is changing. The cumbersome current name (The Office for Harmonisation in the Internal Market (OHIM)) will change to the European Union Intellectual Property Office (EUIPO). At the same time, the Community trade mark (CTM) will become the European Union trade mark (EUTM). It is a welcome change, albeit in name only, but it may well create some degree of confusion, at least in the short term, owing to the proliferation of various scam operations which use similar names. The scam names include ‘European Trademark Publication Register’ and ‘IPT Trademarks’. The scammers are likely to try to use the name change to spread uncertainty and, of course, to illegally profit, so it will pay to be on your toes.
    It has always been our practice to pay all fees for clients, so that there is never any need to pay any third-party invoice. Nevertheless, if you receive anything you are unsure of, please forward it to us by email and we will provide guidance on what, if anything, needs to be done.

The above two practical issues have been accompanied by a raft of technical changes to the EU trade mark process, the most notable of which is a change to the rules for the use of class headings. Some companies have, in the past, filed applications using only the general NICE classification headings, and thereby sought to cover all and any goods or services falling into that particular class. However, the EU Registry practice is changing such that those general descriptions will now be given only their normal or usual meaning and will not automatically cover all goods and services in the relevant class.

This change in practice will have retrospective effect, such that existing European trade mark registrations which have relied on class headings will no longer have the benefit of the implication of covering all of the goods or services in that particular class. Owners of existing EU registrations can address this issue by making specific declarations or claims for the specific goods or services in the classes concerned and so maintain the breadth of their registration. To do so, declarations have to be filed before 23 September 2016.

It has never been our practice to apply for general class headings but if any of your existing European registrations use general class headings, you should review them and if needed, make specific declarations in respect of the detailed goods and services which you wish to cover. If not, you risk the ambit of your protection being significantly limited.