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News concerning EU Trademarks

On March 23, 2016, the Amending EU trademark Regulation will enter into force. This Amending Regulation will have significant impacts regarding the form and the Content.

1.      New terms:
From that day, the Office (official name: Office for Harmonization in the Internal Market) will be called the European Union Intellectual Property Office (EUIPO) and the Community trademark will be called the European Union trademark.

2.      Amended fee system:
The system will change from a basic fee that covers up to three classes of goods and services to a “pay-per-class” system, i.e. if your application covers more than one class of goods and services, there is a fee payable for each additional class. The same applies for the renewal of trademarks. The new system will apply for all trademarks filed on or after March 23, 2016 as well as for all renewals of EU trademarks which are payable on or after March 23, 2016.

3.      Amended official fees:
Not only will the fee system change, but also the setting of the fees. This means that in practice applicants will pay a lower fee if they only apply for one class, but a higher fee if they apply for three or more classes:
The official filing fees including protection for, e.g., 2 classes will cost €900 (i.e. as much as is currently payable for up to 3 classes); if applicants only apply for one class, the application will cost €50 less than before; if applicants apply for three classes, the application will cost €150 more than before.
However, the renewal fees will be substantially reduced. Presently, the fee to renew an EU trademark registered in up to 3 classes is €1.350, with a fee of €400 for the fourth and all subsequent classes. Under the new fee system, the fee to renew an EU trademark registered in up to 3 classes will be €1.050, the fee to renew an EU trademark registered in up to 2 classes will be €900 and the fee to renew an EU trademark registered in 1 class will even be €850 only. The fee payable for the fourth and all subsequent classes will be €150 only.
There are also reductions of 10% in, e.g., opposition or appeal fees.

4.      Amended scope of protection of class headings:
In the old system, the EU Office accepted EU trademarks registered for the entire heading of a Nice class and therefore protection was extended to all goods and services listed under this heading. In the new system, under the Amending Regulation, this will not be possible anymore: protection will extend only to goods and services clearly covered by the literal meaning of the indication or term.
Attention! Transitional period until September 24, 2016 for owners of registered EU trademarks filed before June 22, 2012: Proprietors of EU trademarks applied for before June 22, 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing.
By submitting such a declaration, proprietors of EU trademarks applied for before June 22, 2012 have the possibility to subsequently expand the list of goods and services of EU or international trademarks.
The declaration shall be filed at the Office by September 24, 2016, and shall indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the proprietor’s intention.
The declaration may only be filed with regard to trademarks (EU trademarks or international trademarks designating the EU) which are registered in respect of the entire heading of at least one Nice Class. It does not matter if there are additional goods and services in the specification, provided that the language does not limit or in any way disclaim the general indications of the heading.
The declaration may only include goods and / or services that are not clearly covered by the literal meaning of the general indications of the class heading (e.g. in class 25, the class heading “clothing” clearly covers t-shirts as well; for this reason, it is not admissible to submit a declaration in respect of adding t-shirts to the list of goods and services).
The declaration may only include goods and / or services that are in the alphabetical list for the relevant class of the edition of the Nice Classification in force at the date of filing (6th to 10th edition).
EU trademarks for which no declaration is filed within the above-mentioned period, i.e. until September 24, 2016, shall be deemed to extend, as from the expiry of that period, only to goods or services clearly covered by the literal meaning of the indications in the heading of the relevant class.
Please contact us in case you wish us to check if such a declaration for expanding the list of goods and services of your EU or international trademark is possible and reasonable.

5.      Further amendments, briefly summarized:
a) Changes to the start date for the opposition period against international registrations designating the EU: this period will now start one month (in the old system: 6 months) after the date of publication of the international trademark. This new time limit applies for international trademarks published after March 23, 2016.
b) Use of trademark variations: the use of an EU trademark in a form that differs in elements which do not alter the distinctive character of that mark, in the form in which it is registered, should be sufficient to preserve the rights conferred regardless of whether the trademark in the form as used is also registered.
c) Rights conferred by an EU trademark: the proprietor of that EU trademark should be entitled to prevent all third parties not having his consent from using the sign as a trade or company name or part of a trade or company name.
d) Transit of goods: the proprietor of an EU trademark should be entitled to prevent the transit of infringing goods within the EU.
e) Exhaustion of the rights conferred by a community trademark: An EU trademark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area (i.e. not only in the Community) under that trademark by the proprietor or with his consent.
f) Filing of the application: the Amending Regulation eliminates the possibility of filing EU trademark applications through national offices.
g) Third-party observations should take place before the end of the opposition period or, where an opposition against the trademark has been filed, before the final decision on the opposition is taken. The Amending Regulation also expressly states the Office’s right to re-open the examination of absolute grounds on its own initiative at any time before registration.
h) An application for revocation or for a declaration of invalidity shall be inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits, either by the Office or by an EU trademark court, and the decision of the Office or that court on that application has acquired the authority of a final decision.
i) Examination of the opposition (or the application for revocation or for a declaration of invalidity): new calculation of the five-year grace period which is 5 years preceding the date of application or the priority date (in the old system: five-year period preceding the date of publication) The new calculation of the five-year grace period applies for all objections for non-use raised after March 23, 2016.
j) EU certification marks: effective as of October 01, 2017! An EU certification mark shall be an EU trademark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified. Any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified. An applicant for an EU certification mark shall submit regulations governing the use of the certification mark within two months of the date of filing.
k) Continuation of proceedings: continuation of proceedings will now be applicable to cases where it was previously excluded, in particular in the context of opposition proceedings. In future, there will be only a few cases left for which the continuation of proceedings will not apply.
l) The most relevant changes in fees at one glance: The application for an EU trademark shall be subject to the payment of a basic fee in the amount of € 1000 (Article 26, paragraph 2). The application for an EU trademark via e-filing shall be subject to the payment of a basic fee in the amount of € 850 (Article 26, paragraph 2). The application for the second class of goods and services of an EU trademark shall be subject to the payment of a fee in the amount of € 50 (Article 26, paragraph 2). The application for three or more classes of goods and services of an EU trademark shall be subject to the payment of a fee in the amount of € 150, respectively (Article 26, paragraph 2). The renewal of an EU trademark shall be subject to the payment of a basic fee in the amount of € 1000 (Article 47, paragraph 3). The renewal of an EU trademark via e-filing shall be subject to the payment of a basic fee in the amount of € 850 (Article 47, paragraph 3). The renewal of the second class of goods and services of an EU trademark shall be subject to the payment of a fee in the amount of € 50 (Article 47, paragraph 3). The renewal of three or more classes of goods and services of an EU trademark shall be subject to the payment of a fee in the amount of € 150, respectively (Article 47, paragraph 3).
This means that the official filing fees including protection for, e.g., 2 classes will cost €900 (i.e. as much as is currently payable for up to 3 classes); if applicants only apply for one class, the application will cost €50 less than before; if applicants apply for three classes, the application will cost €150 more than before.
However, the renewal fees will be reduced in the future: the fee to renew an EU trademark registered in up to 3 classes will be €1.050 (in the old system: € 1.350), and the fee to renew an EU trademark registered in 1 class will even be €850 only.
The renewal fees within the new system apply for all trademarks due on or after March 23, 2016. Where the renewal fees have been paid before March 23, 2016 but have not already been due, those fees will be refunded.

For further information, please visit the corresponding website of the EUIPO.