Yesterday EU directive 2015/2436 came into force resulting in the OHIM rebranding to the EUIPO and ‘Community’ trademarks being renamed EU trademarks.
Aside from cosmetic tinkering the directive also introduced changes to both procedural and substantive law relating to the newly named EU trademark.
Of most interest to trademark applicants and owners will probably be the change to the trademark application and renewal fees.
Under the old system a flat filing fee of EUR900 included up to three classes of goods and services, with additional classes costing EUR150.
This led to a large number of applications being filed in three classes, when in reality the proprietor was only interested in one or two classes. For example, it was quite common for trademark applicants to include class 35 (relating to advertising and retail services for goods) when actually the applicant only had an interest in selling branded goods.
This unnecessary trademark coverage cluttered the register so a new fee regime has been introduced to try to curtail this undesirable practice.
Now a single class application costs EUR850, the second class EUR50 and each additional class EUR150.
Renewal fees for EU trademarks have also been overhauled, and instead of a flat fee of EUR1350 for renewal in up to three classes, with each additional class renewed costing EUR150, the renewal fees have been brought into line with the new filing fees.
Thus, a single class renewal costs EUR850, the second class EUR50 and each additional class EUR150.
Of interest to existing owners of EU trademarks filed before 22 June 2012 (the date of the IP Translator judgment) will be the six-month period to extend any registrations filed with class headings to cover other goods and services not explicitly included in the specification at the time of filing.
This has arisen because, prior to the IP Translator case, OHIM practice was to consider a class heading to cover all goods/services in the relevant class.
This led to inconsistencies and problems, not least because items in a particular class are not necessarily listed in the class heading, and furthermore as the classification system evolves goods/services can move between given classes.
For example, in the IP translator case the class 41 class heading ‘Education; providing of training; entertainment; sporting and cultural activities’ was deemed to cover translation services (which fall in class 41 but are outside of the scope of the literal meaning of the class heading).
Thus, the directive attempts to remedy problems caused by the past practice of the EU trademark registry by allowing any owner of a relevant EU trademark filed with a class heading to apply to introduce wording specifically covering other goods/services in the relevant class according to the Nice Classification at the date of filing.
Once the six-month period to apply to introduce additional wording has expired all trademarks will be deemed to only cover goods/services that fall within the literal meaning of the class heading. As illustrated by the IP Translator case, many goods/services in any given class do not fall within the literal wording of the class headings.
Thus, if action is not taken by a relevant owner of an EU trademark within the next six months that owner may experience a significant narrowing of the trademark protection that they currently enjoy, and in the worst-case scenario, their EU trademark registration(s) might not cover their commercial interests.
The opportunity to add to the wording of trademark specifications will only exist once, so it is important that trademark owners take action now or they will lose the opportunity to acquire trademark protection that they may be entitled to.
The directive introduces a raft of other changes, most of which will only be of interest to IP practitioners in order that they might properly advise their clients.
For example, the directive removes the requirement for a trademark to be capable of graphical representation, extends infringement rights to cover goods in transit through the EU, removes the ‘own name’ defence to infringement for companies, and extends the absolute and relative grounds for refusal and invalidity of an EU trademark.
If you have any questions about the EU trademark reforms please do not hesitate to contact us.