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Our services are centred around intellectual property that can be registered. We protect innovation, design, and branding across all sectors of industry, and at all stages in the supply chain.

For each IP right we offer services covering strategic advice, pre-registration searches, registrations and renewals, oppositions and dispute resolution. We handle work throughout the world, working with local colleagues in over 100 countries.

Sectors

Our attorneys specialise in one or more sectors of industry, which enables them to provide quality advice with a commercial focus.

Our patent specialists have detailed understanding of the background technology, which ensures that your patent applications are prepared with the correct scope, reducing the likelihood of challenges from third parties and objections from the patent office.

They also advise whether other forms of protection would be more appropriate. Our brand specialists work with brand managers for leading brands and their advice is commercially focussed making sure that you get the best value from your budget.

The TMs, they are a changin’


9th Dec 2015

2016 is going to be a big year for changes in trade mark law in the EU, with both a new Trade Marks Directive and a new Community Trade Mark (CTM) Regulation due to come into force in the early part of the year. The Directive will affect national laws, but the EU Member States will have several years to implement changes so this will have little immediate impact. However, it is expected that the changes under the new Regulation will have effect by April 2016. If you currently own any CTM registrations or are considering applying for a CTM, you may want to take action before then. Three proposed changes in particular should be considered as soon as possible.

New Filings

If you are considering filing a CTM application in 3 classes or more, it will be more expensive to file under the new Regulation. (Incidentally, you would be filing for an “EUTM” under the new Regulation, standing for “European Union Trade Mark”.) The official fee for online filing in a single class will actually go down by 50 Euros (from 900 Euros to 850 Euros). Unless you can claim priority from an earlier application, it will not be worth delaying filing your application until April to take advantage of this slight reduction. The official fee for filing in 2 classes will be the same as now, but the official fees for filing in 3 or more classes will be 150 Euros higher.

Renewals

Renewal fees, on the other hand, will all go down under the new Regulation, no matter how many classes are covered by a registration. If you own a trade mark which is due for renewal in or after April 2016, you should consider delaying renewal until the fees have changed. It may also be worth delaying renewal of registrations which fall due for renewal between now and April 2016. There is a 6 month “grace” period after the renewal deadline during which a registration can still be renewed. Even though there are additional fees for late payment, in some cases this could still result in significant savings. We will be happy to review your portfolio and advise if you could make savings by delaying renewal of any of your CTM registrations.

Specifications

If you own a CTM registration that was registered before 22 June 2012 and your mark was registered for the full class heading in any class, you may want to apply to amend the specification either now, before the Regulation comes into effect, or in the succeeding 6 months. The new laws could lead to a narrowing of the scope of protection of your registration.

Historically, OHIM took the view that a full Nice class heading in any class should be read as covering all of the goods or services in that class. Unfortunately for OHIM, on 19 June 2012 the CJEU in the IP Translator case (C-307/10) held that only goods and services clearly covered by the literal meaning of the class heading were protected.

OHIM immediately revised their practices so that, going forward, applicants who applied for a full class heading were required to state whether or not the application was intended to cover all goods / services in that class. However, marks which had already been registered for a class heading were automatically deemed to protect all goods / services which had been included in the alphabetical list of that class in whichever edition of the Nice Classification was in force at the time the application was filed.

Under the new Regulation, there will be no automatic assumption that registration for a class heading automatically covers all goods / services in the class as long as the registration pre-dates 22 June 2012. Owners of affected CTM registrations will be given 6 months from when the new Regulation comes into force in which to amend their specification to make it clear that it is intended to cover all goods / services listed under that class at the time of filing. If no action is taken by the proprietor, the registration will from then on be deemed to cover only the goods / services covered by the literal meaning of the class heading.

When might this matter to you?

Supposing that computer software is of interest to you under your registered mark. Computer software was not included in the class heading for Class 9 under the Nice Classification system until the tenth edition, published in 2011. However, “computer software (recorded)” was included in the alphabetical list of goods in Class 9 as early as the seventh edition, published in 1996. A CTM registration filed for the seventh edition Class 9 heading might well not cover computer software under the literal meaning of the class heading. However, you could apply to amend the specification of your registration so that it will be covered.

There are many other examples in other classes.

The Regulation does provide protection for third parties who might be affected by such an amendment of a CTM registration. The owner of a CTM registration which has been amended in this way will not be able to prevent a third party from continuing to use his trade mark where such use pre-dates the amendment of the specification and would not have infringed the CTM based on the literal meaning of the goods / services specified prior to the amendment.

It is also worth stressing that you can only add items that were listed in the alphabetical list of goods / services of the edition of the Nice Classification which was in force at the time the CTM was filed. If a new technology has since emerged that did not exist at the time the CTM was filed, the class heading cannot be interpreted to include this new technology. Companies that see fast changes in their key technology should regularly review the protection provided under their registered marks, to see whether this needs to be updated to reflect new products.

We will be happy to review any of your registrations which might be affected by this new Regulation and to advise on whether you should seek to amend your specification. We recommend starting this process as soon as possible, rather than waiting until a deadline is imposed under the new Regulation.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Catherine Nursaw
Senior Associate
About the author

Would you like to know more? You can talk to Catherine Nursaw who will be able to help. Call +44 (0)20 7242 0901

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