European Trade Mark Reform. Changes to the Community Trade Mark…
09
Mar
2016
On 23 March 2016, an amended European Trade Mark Regulation will come into force. What are the key changes?

The reforms have been a hot topic among trade mark lawyers over recent months. We have looked into the changes, many of which are technical. Here are those which we think have most practical relevance for brand owners:

Terminology

The Community Trade Mark (CTM) is no more. The unitary trade mark which confers protection across all member states of the EU will be called the European Union Trade Mark or EUTM, with OHIM renamed as the European Union Intellectual Property Office or EUIPO.

Fees

There will no longer be a flat fee for filing/renewing trade marks in three classes. The good news is that renewals will be substantially cheaper. However, official fees for applying in three or more classes will increase. Please note that we are not changing our fee structure so applicants will not be at any disadvantage from that perspective, regardless of the number of classes.

Filing fees

Class(es)Current FeeNew Fee
One class€900 covers up to three classes€850
Two classes€900
Three classes€1050
Fourth and subsequent classes (per class)€150€150

Renewal fees

Class(es)Current FeeNew Fee
First class€1350 covers up to three classes€850
Second class€900
Third class€1050
Fourth and subsequent   classes (per class)€400€150
From 23 September 2017, it will be possible to register an EU Certification Mark, e.g. Woolmark, Stilton, which were previously only available in EU countries at a national level.

End to search for earlier CTMs

Applicants will no longer receive a search report citing earlier CTMs. Practically, this has no impact and we will continue to advise that applicants conduct their own clearance searches for conflicting earlier marks.

Dealing with counterfeit goods

New provisions mean that counterfeit goods in transit within the EU can now be seized and destroyed (unless the goods can be lawfully be put on sale in the country of final destination). Brand owners with counterfeit issues should consider how they can help Customs authorities to seize counterfeits that are using trade routes involving a transit in the EU territory. For more information on EU customs enforcement strategies, please contact email@carpmaels.com

New EU Certification Mark

From 23 September 2017, it will be possible to register an EU Certification Mark, e.g. Woolmark, Stilton, which were previously only available in EU countries at a national level.

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