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03.09.2016 Recent Changes to Community Trade Mark May Impact International Trademark Owners By: Rebecca S. Winder

On March 23, 2016, Regulation (EU) 2015/2424 of the European Parliament and of the Council will take effect, introducing changes to the process for applying for and maintaining Community Trade Mark (CTM) registrations in the European Union. While some of the changes are aesthetic, others will have a more significant impact on international trademark owners, affecting the cost of applications as well as the standards for acceptable goods and services descriptions. Companies with CTM applications and registrations should carefully review their trademark portfolios to determine the effect of the new changes on the scope of their rights.

1. Name Changes for OHIM and CTM

Going forward, the CTM will be known as the European Union Trade Mark (EUTM), and the Office for the Harmonisation in the Internal Market (OHIM) will change its name to the European Union Intellectual Property Office (EUIPO). Be wary of any communications from third parties that do not reflect these changes, as scammers pretending to be legitimate government offices are on the rise. Remember that official correspondence relating to your trademarks will typically only be communicated through your attorneys.

2. The Scope of Your Rights From Your Current CTM Trademark Registrations May Be Changing

Most importantly, the standards for an application’s goods and services description will be changing to align with standards laid out in a recent European Union trademark decision. Prior to that decision, an application for a particular class of goods or services (e.g., Class 25) could merely list a class heading in order to receive protection for all of the goods or services in that class (e.g., Class 25 for the heading “clothing, footwear, and headgear”), whether expressly included in the class heading or not. Starting March 23, 2016, each good and service to be protected must be specifically listed, as protection will only be extended to the particular goods or services clearly indicated in the application. This change will narrow trademark protection for marks registered using the class headings, as the scope of protection will be limited to the goods or services expressly included in the goods and services description. For example, an application based on the Class 42 heading of “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software” would arguably not extend trademark protection to services for providing software as a service or providing a website. Other classes of goods and services are likely to be similarly impacted. 

For any marks registered prior to June 22, 2012, there is a six month period starting March 23, 2016 during which a EUTM owner may submit a declaration clarifying the goods and services to be protected. This declaration must precisely list the specific goods or services that were originally intended to be covered by the registration. As this change could significantly impact the scope of protection provided under certain registrations, trademark owners should review their trademark portfolios to identify registrations whose goods and services descriptions require clarification. Consult with a trademark attorney to determine whether your portfolio will be impacted.

3. EUTM Official Fee Changes

The fees for an EUTM application will now be based on the number of classes included in the application. The initial application fee will no longer automatically include three classes. This means that applications with one or two classes will be slightly cheaper than the current three class application, but the cost of a new three-class application will increase slightly from €900 to €1,050. In addition, the renewal fees will be reduced and will follow the same structure as the application fees, calculating the fee on a per-class basis. As a result of this change, trademark owners should carefully consider how many classes of goods and services to include in each new application in order to effectively balance the reduced costs with the need for a sufficient scope of trademark protection. 

Overall, these changes should reduce trademark application and maintenance costs for owners of EUTMs. However, all trademark owners with European Union trademark registrations should diligently review their portfolios by consulting with their trademark attorneys in order to ensure protection of their trademark rights in the face of the stricter goods and services requirements.