All Change for Community Trade Marks!

The simple answer is yes, but in a good way. Most importantly for business owners it has been realised by the EU legislature that they are charging more than they need to for these rights. And so the fees at application, and at renewal, are coming down. Instead of a single fee for up to 3 classes, there will now be separate fees for each class, most significantly the fees for covering only one class is being reduced by 50 Euros at application, and by a whopping 500 Euros at renewal. Since many small businesses only need coverage in one class this is a very positive move, whilst the reduction in costs at renewal have an impact across the board with significant reductions seen at higher numbers of classes.

There is also a new set of terminology, designed to reflect the modern face of the European Union. Community Trade Marks (CTM’s) will now be known as European Union Trade Marks (EUTM’s) and the central office in Alicante, currently known rather laboriously as the “Office for Harmonisation in the Internal Market Trade Marks and Designs”, and rather affectionately known as “OHIM”, will now be called the European Union Intellectual Property Office or EUIPO, also reflecting the wider role that it now plays in intellectual property enforcement across the EU.

There are other “headline grabbing” changes which may be of interest, notably the potential ability to file for trade marks in a format other than with a graphical representation, and the ability to file EU wide certification marks. However both of these require additional legislation and so we will have to wait until autumn 2017 for these developments.

At present, as part of the application process, the OHIM/EUIPO issue an official search report for information purposes detailing earlier EU wide registrations and applications which might be used to challenge use and registration of an EUTM. And the owners of the earlier rights listed in the report are then notified when the application is published so that they are aware of the ability to raise opposition. From 23 March 2016 applicants will be able to opt out of receiving search reports, and the owners of registered EUTM’s will be able to opt out of receiving notifications. But, and this is an important but, even if an applicant opts out of receiving a search report, the owners of the earlier EUTM’s which would have been listed will still receive notification of publication of your application, unless they have also opted out of receiving notifications. On the basis of “forewarned is forearmed” it will continue to be Wynne-Jones IP policy, and recommendation, to request an official search at the time of application.

If you have any questions about the changes due to come into force on 23 March 2016 please do not hesitate to contact us.