From 23 March 2016, a number of changes to European trade marks
A "CTM" IS NOW A
"EUTM" – The Europe-wide "Community
Trade Mark" (aka "CTM"), whilst still offering
protection in all 28 Member States, is now called the
"European Union Trade Mark" (or "EUTM").
THE "OHIM" IS NOW
THE "EUIPO" – The European TM Registry,
formerly known as "OHIM", is now renamed as the
"European Union Trade Mark Office" (or the
LOWER SINGLE CLASS
APPLICATION COSTS – Application filing costs are now
based on the starting point of a single class for €850, with
costs rising to €900 for two classes and €1050 for three
classes. Costs for each additional class remain at €150.
(SLIGHTLY)EARLIER RENEWAL DATES – EUTMs which are due
for renewal (i.e. at the end of each 10 year period) will no longer
enjoy a grace period to the end of the relevant month. Instead the
renewal period will end in each case on the actual date of
SPECIFIED GOODS AND SERVICES
– The longstanding practice of registering a mark in
a "whole class" by reference only to the key goods or
services from that class no longer applies. Applicants must specify
the precise list of goods and services for which protection is
sought. Holders of "whole class" registrations from
before 2012 must immediately update any such "whole
class" with a detailed list of the specific goods or services
for which protection is sought.
Aside from the new English-friendly names ("EUTM" and
"EUIPO"), the most important change is to the
specification of goods and services. Before 2012, many businesses
registered their "CTM" (now "EUTM") using the
shorthand method of choosing a whole class – e.g. a business
seeking protection for toys and games may have registered all goods
in Class 28 by entering only a short phrase which was intended to
represent the whole class. Whilst this arcane "code" did
the job at the time, from today it provides protection only for the
goods or services actually named in the "code" version
(e.g. "decorations for Christmas trees") and nothing else
in the class. The newly-renamed EUIPO is providing a 6-month
transition period from today in which most "whole class"
TM holders are permitted to change the long-registered wording to
correctly identify the specific goods or services within the
relevant class. Any such application which has not been updated by
23 September 2016, however, will be locked into the old wording,
which in some cases may result in TM holders having no useful brand
If you are in any doubt as to whether your existing registration
might be exposed to this new "whole class" danger, please
contact us to check for you.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
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