KEY POINTS OF THE COMMUNITY TRADEMARK SYSTEM REFORM

The "OHIM" and the "Community Trademark" will disappear in few weeks… at least under these names!

As of March 23, 2016, the OHIM (Office for Harmonization in the Internal Market) will become the EUIPO (European Union Intellectual Property Office), and the community trademark (CTM) will henceforth be the European Union trademark (EUTM).

Aside from these changes in name, the entry into force of the new European Trademark Regulation (n° 1212/2015) on March 23 will change several rules to which applicants were accustomed. Here is an overview of the biggest changes:

►  MODIFICATION OF THE FEE SYSTEM

For both EUTM filing and renewal, the fees will be calculated on a class-by-class basis. This is a major change, since under the current system, a single fee is owed regardless of whether 1, 2 or 3 classes are designated and an additional fee is only due beginning with the 4^th class. The amount of the fees is also changing:

One can see that filing an EUTM in a single class will be more advantageous under the new system. However, targeting a large number of classes will become more expensive. Performing your filings before March 23 may therefore be more cost-effective.

In parallel, trademark renewals will be more advantageous than under the current system.

There will also be a slight reduction in opposition, cancellation and appeal fees.

►   MODIFICATION OF THE PAYMENT DATE FOR RENEWAL FEES

Currently, fees can be paid on the last day of the month during which the CTM expires. This will no longer be the case under the new system, and EUTM renewals will need to be paid no later than the expiration date of the protection period.

►   CLARITY AND PRECISION OF WORDING

More than ever, the wording of your trademarks will need to be clear and precise. This in particular means that the use of the general terms under the Nice Classification will need to be evaluated before filing an EUTM. If the wording does not meet these criteria, it will be rejected or interpreted based on its literal meaning.

The new Regulation indeed incorporates elements of a decision issued by the Court of Justice of the European Union, the “IP TRANSLATOR” Case dated of June 19, 2012. Before that date, the OHIM held that when a CTM targeted a “class heading”, the awarded protection covered all of the products mentioned in the alphabetical list of the designated class under the Nice Classification.

The regulation takes this further :  for EUTMs filed before 06/19/2012 and covering “class headings”, it creates a transitional period ending on 09/26/2016, during which EUTM holders may file a declaration of amendment making it possible to specify the products and services they wish to designate in addition to the products and services of the class heading. After this period, the EUTMs will be interpreted as being protected exclusively for the targeted notes.

► OPPOSITIONS:

Oppositions may henceforth also be based on Designations of Origin or Geographical indications.

The holder of a contested CTM application may require that the opponent provide proof of the use of the cited prior trademark, on the condition that it has been registered for more than 5 years, for the period of 5 years preceding the publication date of its application. This period will be modified as of March 23, 2016 and it will be the period of 5 years preceding the filing or priority date of the contested application that will be taken into account.

►  2017 CHANGES:

The requirement of a graphic representation of EUTMs will disappear and Certification Marks, guaranteeing a certain level of quality, will be able to be filed as EUTMs. These points will be covered in more detail in later communications.

Brevalex remains at your disposal for any additional information you may require regarding these regulatory changes.

                                                                                                       The Trademarks and Models Department