Changes to Community Trade Marks

On 23 March 2016 a new Regulation will come into force that makes many changes to the Community Trade Mark (CTM) system. The main changes that CTM owners, and those looking to apply for a CTM, need to know are:-

• The CTM will be renamed the European Union Trade Mark.

• The Office for the Harmonization of the Internal Market (or OHIM for short) which administers the CTM system will be renamed the European Union Intellectual Property Office.

• It will be possible to register Certification Marks. These are marks that are used to certify that goods/services meet a particular standard eg the Kitemark (for meeting a British Standard) or the Woolmark (that the goods are 100% pure new wool).

• There will be a period of 6 months (expiring on 23 September 2016) within which proprietors of certain existing applications/registrations will be entitled to clarify the goods/services that were intended to be included when filed but which, following a recent court decision, are not now included. In the past, OHIM accepted the use of ‘class headings’ to imply that all goods in a class were included within an application. A recent court decision has ruled that this was wrong. For example, the class heading of class 15 is simply “Musical Instruments” but also in that class are ‘music stands’. In the past, any CTM for ‘Musical Instruments’ would have been deemed to include ‘music stands’. This is no longer the case. We will be writing directly to all our clients for whom this might be an issue.

• The official fees for filing an application will change as follows:-

No. of classes in applicationCurrent official fee (EUR)After 23 March (EUR)
Each additional class after 3rd150150

Our all-inclusive charges will be amended to reflect these changes.

• The official fees due on renewal of a registration will be reduced as follows:-

No. of classes in registrationCurrent official fee (EUR)After 23 March (EUR)
Each additional class after 3rd400150

Our all-inclusive charges will be amended to reflect these changes. Clearly, if there are classes in a registration in respect of which a mark has not been (and will not be) used then it makes sense to remove those classes in order to reduce renewal costs. We will draw this issue to the attention of clients when we write in order to seek instructions regarding the renewal of any CTM.