From 23 March 2016, a number of changes to European trade marks take effect:
- 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 "EUIPO").
- 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 expiry.
- 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 protection.
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.