All Change for Community Trade Marks!

All Change for Community Trade Marks!

The simple answer is yes, but in a good way. Most importantly for business owners it has been realised by the EU legislature that they are charging more than they need to for these rights. And so the fees at application, and at renewal, are coming down. Instead of a single fee for up to 3 classes, there will now be separate fees for each class, most significantly the fees for covering only one class is being reduced by 50 Euros at application, and by a whopping 500 Euros at renewal. Since many small businesses only need coverage in one class this is a very positive move, whilst the reduction in costs at renewal have an impact across the board with significant reductions seen at higher numbers of classes.

There is also a new set of terminology, designed to reflect the modern face of the European Union. Community Trade Marks (CTM’s) will now be known as European Union Trade Marks (EUTM’s) and the central office in Alicante, currently known rather laboriously as the “Office for Harmonisation in the Internal Market Trade Marks and Designs”, and rather affectionately known as “OHIM”, will now be called the European Union Intellectual Property Office or EUIPO, also reflecting the wider role that it now plays in intellectual property enforcement across the EU.

There are other “headline grabbing” changes which may be of interest, notably the potential ability to file for trade marks in a format other than with a graphical representation, and the ability to file EU wide certification marks. However both of these require additional legislation and so we will have to wait until autumn 2017 for these developments.

At present, as part of the application process, the OHIM/EUIPO issue an official search report for information purposes detailing earlier EU wide registrations and applications which might be used to challenge use and registration of an EUTM. And the owners of the earlier rights listed in the report are then notified when the application is published so that they are aware of the ability to raise opposition. From 23 March 2016 applicants will be able to opt out of receiving search reports, and the owners of registered EUTM’s will be able to opt out of receiving notifications. But, and this is an important but, even if an applicant opts out of receiving a search report, the owners of the earlier EUTM’s which would have been listed will still receive notification of publication of your application, unless they have also opted out of receiving notifications. On the basis of “forewarned is forearmed” it will continue to be Wynne-Jones IP policy, and recommendation, to request an official search at the time of application.

If you have any questions about the changes due to come into force on 23 March 2016 please do not hesitate to contact us.

Related News

US Inventor Declarations and Assignments
news

US Inventor Declarations and Assignments

After a patent application has been filed, the inventor may be required to sign and submit various forms.  What happens if this is several years into the patent process, and the inventor can no longer be reached to sign these forms?  And what can you do now to prevent any complications from arising?

UKIPO ending temporary fee changes on 31 March 2021
news

UKIPO ending temporary fee changes on 31 March 2021

The UK Intellectual Property Office (UK IPO) temporarily reduced or removed certain official fees associated with patents, trade marks and registered designs because of the disruption caused by the Coronavirus pandemic. However, the temporary fee changes are set to end on 31 March 2021.

Insurance for IP Litigation Costs
news

Insurance for IP Litigation Costs

If you own any intellectual property (IP) rights, are you concerned about your exposure to litigation, and how you will finance any legal action?  One way to address this concern is by means of an insurance policy.

Does owning IP rights improve economic performance?
news

Does owning IP rights improve economic performance?

A recent study performed by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) has shown that companies which own at least one patent, trade mark or registered design generate on average 20% higher revenues per employee and pay their staff on average 19% higher wages compared to companies that do not own any of these intellectual property (IP) rights.

Let it go!
news

Let it go!

Keeping an IP budget afloat despite sunk costs.

The cost of securing IP can be heavily front loaded. Examples of such costs include patent drafting, pre-filing searches, filing fees, etc. These costs become “sunk” costs in that they cannot be recovered. Because IP protection can be a relatively long process, at any time during the process there are likely to be significant “prospective” costs: future costs that may be wholly or partially avoided depending on actions taken.

Turkish Declarations of Use
news

Turkish Declarations of Use

Have you recently validated your European patent in Turkey?  Did you know that in addition to paying annual renewal fees, Turkish law also requires you to submit a public declaration stating whether you have actively worked your invention in Turkey?

Managing your business-critical IP during the COVID-19 crisis
news

Managing your business-critical IP during the COVID-19 crisis

UK businesses are fighting for survival during the continuing COVID-19 outbreak and trying to trade under difficult conditions, the likes of which haven’t been seen in the living memory of most business people. If you’re afraid that your business is going to the wall, it probably isn’t the top of your mind to pay for a patent application for your new technology or a registration of the trade mark for your brand new clothing range, right?  Where is the money coming from to invest in such luxuries as IP, we hear you say, when staff are being furloughed and orders have been postponed?

Videoconferencing: the future of oral proceedings at the EPO?
news

Videoconferencing: the future of oral proceedings at the EPO?

The European Patent Office has announced that videoconferencing will become the norm for oral proceedings before examination and opposition divisions until at least 15 September 2021. But is this a taste of what the future holds for oral proceedings at the EPO?

aipex logo aipex logo aipex logo