TRADEMARK REFORM: NEW RULES FOR EU MARKS
In December 2015, EU enacted a trademark reform, which brings a string of changes to EU trademarks. The reform comes into effect on 23 March 2016 and contains changes on e.g. application fees, official names and rules for classification.
Change of names
An EU trademark was previously known as a CTM (Community Trade Mark), but will now be called EUTM (European Union Trade Mark).
Furthermore, the European trademark office will change its name from OHIM (Office for Harmonization in the Internal Market) to the slightly less idiomatic EUIPO (European Union Intellectual Office).
Change of fees
The application fee for an EU trademark was previously EUR 900 – covering up to 3 classes. With the new rules, the “3-for-the-price-of-1” arrangement is gone and you can now apply for registration in a single class at a lower cost.
An application in 1 class will be EUR 850 in official fees, while an application in 2 classes will maintain the price of EUR 900. If you wish to apply for registration in 3 or more classes, there will be an added EUR 150 for each class.
Furthermore, the renewal fees will be reduced, so that the renewal fees will be identical to the application fees. If a trademark is registered in one class, the renewal fee will be EUR 850, while a renewal of a trademark registered in two classes will be EUR 900. The previous renewal fee was EUR 1.350 regardless of the number of classes, and the new rules will therefore be a significant reduction.
Change of classification
As we’ve previously explained, EUIPO has previously held that a trademark, classified under a class heading, also provides protection for the other goods in the class, and not just the specific goods mentioned in the class heading.
In 2012, however, this practice was changed, as the IP TRANSLATOR case determined that protection provided by a trademark registered under a class heading is limited to the literal meaning of the class heading, and that no additional protection can be provided.
Since the IP TRANSLATOR verdict, all trademarks have been handled according to the new practice, and trademark registrations have been classified accordingly. The problem is, however, that there exists a large amount of trademark registrations from before the IP TRANSLATOR case, which were not classified in accordance with the new practice for class headings.
Until September 2016, it will therefore be possible for trademark owners to amend the classification of their registered EU trademark, given that the mark is classified under a class heading and was filed before the IP TRANSLATOR verdict from 22 June 2012.
The classification can be amended to include any terms in the alphabetical list for the particular class. If no declaration is filed before the deadline, the protection of the trademark will be limited to the classification specifically mentioned in the class head, and it will not be possible to obtain protection for other goods or services within the same class.
It is therefore of the utmost importance for trademark owners to consider if their EU trademark is classified correctly and in accordance with the new rules.
Read more about the new rules for classification here.
If you wish to learn more about the trademark reform, or if you’re unsure of the reform’s effect on your registered trademarks, you are welcome to contact attorney-at-law Martin Hoffgaard Rasmussen at firstname.lastname@example.org for further advice.
By Mia Storm