Trademark law – New community Trademark Regulation comes into effect on march 23, 2016 (01/2016)

On March 23, 2016, an amended version of the Community Trade Mark Regulation will enter into force. The amendments concern formal as well as substantial regulations throughout the complete legislative act. In the following, we will provide an overview on some of the practically particularly important changes.

1. New Names
The Office for Harmonization in the Internal Market (OHIM) will be renamed to European Union Intellectual Property Office (EUIPO), and the Community Trade Mark (CTM) to European Union Trade Mark (EUTM).

2. New Official Fees
The reduced basic filing fee will only cover the designation of goods/services in one Nice class. Claiming additional classes will lead to additional fees. Renewal fees will also be calculated for each individual class covered by the respective trade mark. The following charts compare the fee structure under the present and future regime:

–BILDER — BILDER—

When filing a EUTM application in three classes, the application fees will thus be slightly higher than under the present system. However, the renewal fess will be reduced significantly. According to a present proposal of complementary administrative Guidelines, the renewal fees due under the present regime will apply to such CTMs for which the renewal period is already running when the new regulation enters into effect on March 23, 2016.

3. Renewal Date
Presently, renewal fees must be paid on the last day of the month in which the CTM’s protection ends at the latest. This final date will slightly change under the new regime. The new renewal date will then be exactly the day on which the EUTM’s protection ends. Again, the present proposal of administrative Guidelines suggests that the present legal situation
regarding the renewal date applies if the renewal period is already running when the new regulation enters into effect on March 23, 2016.

4. Specification of Goods/Services of CTMs filed before June 22, 2012
According to OHIM’s past practice, CTMs registered in respect of the entire heading of a Nice class were deemed to cover all specific goods/services falling into that class even if they might not be covered by the literal meaning of the heading. In its “IP Translator” decision of June 2012, the Court of Justice of the European Union considered this approach invalid. According to the court, a CTM covers only those goods/services falling under the literal meaning of the (narrow or broad) terms actually claimed.

The new regulation allows proprietors of old CTMs filed before June 22, 2012 which are registered in respect of the entire heading of a Nice class to seek protection in respect of goods/services beyond those covered by the literal meaning of the heading of that class, provided that those goods/services were included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing. The proprietor must file a corresponding declaration with the EUIPO by September 24, 2016.

5. Relevant Genuine Use Period in Opposition Proceedings
If requested by the EUTM applicant, the party opposing registration of the mark based on older registered trade mark rights will have to furnish prove that, during the five-year period preceding the date of filing or the date of priority of the EUTM application, the earlier trade mark had been put to genuine use. The relevant period of genuine use will thus slightly change. Presently, this period covers the five years preceding the publication of the CTM application.

6. Opposition Period for International Registrations Designating the EUTM
The opposition period for an International Registration (IR) designating the EUTM will begin one month as of the date of its publication. In comparison to the present legal situation, this effectively shortens the opposition deadline, as today the opposition period for such IRs starts after 6 months as of the publication date.

7. New Certification Marks
A new category of marks will be introduced, namely so-called certification marks. Such marks will serve to distinguish goods or services which are certified by the proprietor in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from goods/services which are not so certified.

We will keep you informed on further developments.

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