News

This week marks the beginning of major reforms to the European Union trademark system. The Amending Regulation will take effect on March 23, 2016, and will incorporate a number of substantive changes into European Union trademark law.

Description of Goods and Services
Any language designating classes of goods and services will be interpreted literally. Therefore, class headings will only be read to include whatever goods and services are literally indicated within. Owners of CTM registrations filed before June 22, 2012 have until September 23, 2016 to file an amendment to revise their registrations to claim their desired goods and services, which International Registrations designating the EU are excluded from this provision.

Fee Changes

Applications
Formerly, EU trademark applications cost €900 and covered up to three classes. Moving forward, applications will cost €850 for one class, €900 for two classes, and an additional €150 for each additional class. The table below provides a detailed comparison:
Class(es) Current OHIM fee (EUR/USD) New EUIPO fee (EUR/USD)
One €900 / ≈$1000 €850 / ≈$960
Two €900 / ≈$1000 € 900 / ≈$1,000
Three €900 / ≈$1,000 €1,050 / ≈$1,180
Four €1,050 / ≈$1,180 €1,200 / ≈$1,350
Additional classes + €150 / ≈$170 + €150 / ≈$170

Renewals
Formerly, a renewal fee of €1,350 covered up to 3 classes. Now, the new renewal fees mirror the filing fees, which results in a reduction in renewal fees for registrations up to four classes:

Class(es) Current OHIM fee (EUR/USD) New EUIPO fee (EUR/USD)
One €1,350 / ≈$1,520 €850 / ≈$960
Two €1,350 / ≈$1,520 €900 / $1,000
Three €1,350 / ≈$1,520 €1,050 / $1,180
Four €1,750 / $1,970 €1200 / $1,350
Additional classes + €400 / $450 + €150 / $170

Renewal Deadline
Currently, trademark renewals are allowed to be filed by the end of the month in which the registration expires. The new regime will harmonize the renewal deadline with the expiration date, so all renewals will now be due on the actual date of expiration.

Oppositions
The three month opposition period against International Registrations designating the EU will be open one month, rather than the current six months, after publication. Protected designations of origin and protected geographical designations have been added as grounds for oppositions.

What should you do as a trademark owner?

(1) If you currently file applications for three classes in the EU to take advantage of the pricing, you may want to reevaluate this strategy as three class applications have now become more expensive, as have the renewals in connections with these applications.
(2) Determine if any existing CTM registrations filed before June 22, 2012 should be amended to unambiguously designate the desired goods and services. Review CTM application filed on or after June 22, 2012 to determine whether additional applications may be needed to ensure that goods or services of interest are covered.

Should you have any questions regarding the effects of the new changes or trademark strategy, please contact us.

This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to IPLA, LLP, or the firm’s clients.