This post was written prior to our January 2017 merger, under our previous firm name, MacPherson Leslie & Tyerman LLP.
The Office For Harmonization of the Internal Market (OHIM) has published Amending Regulations which will enter into force on March 23, 2016, amending several existing directives governing trademark practice and procedure in the European Union.
European Union Intellectual Property Office
OHIM will be renamed the European Union Intellectual Property Office (EUIPO). All existing Community Trade mark registrations and applications will now be referred to as “European Union Trade marks” and “European Union Trade mark applications“.
Revised and Reduced Fee Structure
The Amending Regulations include a revised fee schedule for classification fees payable during the application and renewal process. Currently, the fee payable to OHIM (or EUIPO) for a new application covering up to 3 classes is €900, with the renewal fees for existing registrations being €1,350. Under the revised fee structure, the new fees payable, effective March 23, 2016 will be as follows:
The deviation from the multi-class fee structure for new applications is an attempt to discourage trademark owners from filing for protection in general classes for which they do not require protection. Any European Union Trade mark holders who have registrations due for renewal may wish to assess the goods and services contained in their existing registration and delete any classes not relevant to their business in the European Union marketplace, to take advantage of the reduction in renewal fees.
General Class Headings Not Acceptable
The Amending Regulations expressly require “clarity and precision” in the designation of goods and services. The former practice of OHIM (now EUIPO), permitted protection of a trademark utilizing using general class headers. Previously, registrations which included general class headers were interpreted to include the entire alphabetical listing of goods and services contained in that specific class, but which may not actually be listed on the registration certificate. However, the Amending Regulations have taken the approach of “what you see is what you get” for registrations containing general class headers. The scope of protection for registrations containing general class headers will be taken at their literal meaning based on the “natural and usual meaning of the terms”. Any owners of European Community Trade mark Registrations which were issued prior to June 22, 2012, will be permitted to file a Declaration with EUIPO in accordance with Article 28.8 as follows:
- Declares that the general class heading contained in their existing registration was intended to cover the complete alphabetical listing of the goods or services contained in that class, but which may not be specifically listed on the registration certificate; or
- Modifies the specification of the goods or services contained in the general class headers of the existing registration; …
The Office has established a 6 month period expiring September 24, 2016, for trademark owners to file the Declaration noted above.
OHIM has released a series of videos and FAQ documents regarding all of the substantive practice and procedure changes being implemented under the Amending Regulations. For more information refer to the OHIM website: https://oami.europa.eu/ohimportal/en/eu-trade-mark-regulation.
If you have any questions with respect to the new fee structure, or require additional information regarding the Declaration requirements for existing trademark registration holders, please do not hesitate to contact your trademark professional at MLT.