Background

Following the publication of the EU Trade Mark Directive and Community Trade Mark (CTM) Regulations Regulation (EU) No 2015/2424 (the Amending Regulation), CTM practice is set for a number of important changes.

The initial changes come into effect on 23 March 2016, with further changes to follow.  We highlight below the key points which we think you should be aware of:

Name Change

From 23 March 2016, the Office of Harmonisation in the Internal Market (OHIM) will become known as the European Union Intellectual Property Office (EUIPO).

In addition, what was known as a Community Trade Mark (CTM) will become a European Union Trade Mark (EUTM).

NOTE: As you may be aware, there are a number of organisations issuing misleading invoices appearing to originate from official trade mark offices (see: https://oami.europa.eu/ohimportal/en/misleading-invoices).  Care should be taken that only legitimate invoices are settled.  Should you be in doubt, please contact us.

Fee Changes

From 23 March 2016, a class-by-class application fee will replace the previous practice of the initial application fee covering up to three classes.  This will allow applicants to pay a comparatively lower fee if only applying in a single class.  It should also assist in reducing ‘clutter’ on the register, as trade mark owners may be less likely to include immaterial classes  to applications.

The changes to the official application fees are:

Renewal fees will also be reduced to the same level as application fees, with those changes being *:

* additional fees may be incurred for marks which fall into their grace periods.

There will also be reductions in opposition, cancellation and appeal fees, with those changes being confirmed in due course.

Changes to Effective Renewal Deadline

Under current practice, CTM renewal fees may be paid by the end of the month in which the renewal anniversary falls.

From 23 March 2016, renewal fees must be paid by the renewal anniversary itself.

Classification of Goods and Services

When the CTM system was introduced, OHIM’s practice developed so that where a trade mark specification covered a ‘class heading’ from the Nice Classification, this would be interpreted as a claim to all the goods and services falling within the relevant class.

However, following the European Union Court of Justice decision in IP TRANSLATOR (C-307/10) of 2012, OHIM amended its practice so that new trade mark specifications, even if they consist of ‘class headings’, were interpreted on a literal basis (i.e. what you see is what you get).

From 23 March 2016, the specifications of any trade marks filed prior 22 June 2012 will be interpreted on a literal basis.  However, proprietors of trade marks which were filed prior to this date have until 24 September 2016 to submit a declaration with the EUIPO stating that, where the specification of those registrations include a ‘class heading’, it is intended to cover all goods/services in the revised Class heading (or, indeed, a subset of those goods/services).  Should a declaration not be filed, the specification of these registrations will be interpreted in a literal manner.

We will be notifying our clients of any registrations caught by this change in good time before 24 September 2016.

Changes to Application Practices

From 1 September 2017, the requirement for a registered trade mark to be “capable of being represented graphically” will be removed.  In its place, trade marks will simply need to be represented in a manner which allows consumers to determine the clear and precise subject matter of protection.

Further guidance will be provided by the EUIPO nearer the time but it is expected that this change will make it easier to secure protection for non-traditional trade marks, such as holograms, moving marks and sound marks.

Changes to Absolute and Relative Grounds of Objection

The scope for absolute grounds objections will be widened from 23 March 2016.

At the time of writing, an application can be refused if it consists of a shape which results from the nature of the goods themselves, a shape that is necessary to achieve a technical result, or a shape which provides substantial value.

This approach will now be widened to include any types of signs, such as colour or sound marks which may, for example, consist of a characteristic which results from the nature of the goods themselves.

Further, new grounds of refusal will be introduced in relation to trade marks which conflict with designations of origin, protected geographical indications or any other intellectual property titles, such as plant varieties.  Owners of such rights can also seek to enforce them at opposition, whereas previously they could only be brought to bear in post-registration invalidity proceedings.

The EUIPO will also have a right to re-open the examination of absolute grounds on its own initiative at any time before registration.

Changes to Opposition Period for EUTM designations of International Registrations

At the time of writing, the opposition period for CTM designations of International Registrations was between the sixth and ninth months following publication of the designation.  From 23 March 2016, the opposition period will be brought forward, so that it will fall between the first and fourth months following publication.

Introduction of Certification Marks

Whilst there is currently provision for collective trade marks at OHIM, there is no provision for certification trade marks.  This will all change from 24 September 2017, when the EUIPO will introduce the EU certification trade mark.

This will allow certifying institutions or organisations to obtain protection for signs which are used to indicate that goods/services comply with their certification requirements.

 29 February 2016