EUTM changes March 2016

As you may have heard, significant changes to the CTM system are coming into force on 23 March 2016.  The changes are to reflect some decisions in case law and refine the system, which has now been running for 20 years.  The most obvious change is that the CTM will be renamed as the European Union Trade Mark (EUTM) and OHIM will change its name to the European Intellectual Property Office (EUIPO).

We have set out below what we believe to be the most significant changes for you and your clients.  There are several other changes taking place now, and more that will be rolled out over the coming months.  If you would like to see the entire document and/or require advice on anything not covered, please let us know.

  1. The EUIPO wishes to discourage applying for marks in too many classes.  As such application fees will no longer cover three classes.  The initial official application fee will lower from €900 to €850(approximately $1045), but will only cover one class.  The second class will cost €50 (approximately $60) and each additional class will cost €150 (approximately $185) in official fees.  If you have any clients who are considering CTM filings in more than one class, we would strongly suggest that these are done prior to the deadline of 23 March.

  2. Official renewal fees will also change to discourage maintaining registrations in too many classes.  They will be reduced from €1350 for up to three classes and made the same as the application fees set out above.  This applies to marks due for renewal after 23 March 2016, even if renewal is requested and paid for prior to this date. If you would like us to assist in any decisions regarding which classes to cover or maintain, please let us know.

  3. The renewal deadline for registrations due for renewal after 23 March 2016 will change so that instead of the end of the month, it will be the anniversary of the filing date.

  4.  Although it has been the case for some time, the changes will enshrine the practice that class headings will no longer be deemed to cover all goods or services in a class.  Instead they be deemed to cover only the literal goods or services.  For applications filed prior to 22 June 2012 and registered before 16 December 2015, proprietors will have until 23 September 2016 to file a declaration specifying which goods or services are to be covered, otherwise the literal meaning will endure and the actual goods or services of interest may not be covered. We are undertaking a review of your client’s marks to whom this might apply, and we will be in touch shortly.  If however you would like any specific advice, please let us know.

  5. For applications filed after 23 March 2016, the EUIPO will only carry out search reports of the EUTM Register if requested. Notifications of potentially conflicting later marks identified in third party’s reports will still be sent, but can be opted out of if requested.  Please let us know if you would like to opt out of notificationsThis puts even more onus on proprietors to carry out clearance searches prior to filing and to put in place watching services once filed.  Please let us know if we can help with either.

  6. For International registrations with an EU designation published on or after 23 March 2016, the opposition period will reduce from six months to one month (still running for a three month period).

  7. In opposition proceedings commenced after 23 March 2016, the opponent will need to prove that the mark on which the opposition is based has been used within the five years preceding the filing or priority date of the opposed application. This, more logical definition, replaces the former deadline of the publication date of the opposed application.