11/01/2016
As our colleague Catherine Nursaw predicted only a few weeks ago, 2016 is indeed going to be a year for changes in trade mark law in the EU – the European Commission gave formal notice of the changes to the Community Trade Mark Regulation on 24th December 2015. The changes will start to come into effect on 23rd March 2016.
Renewals
Renewal fees will decrease if you can pay after 23rd March 2016.
That “if” is there because there had been some commentary that you could defer a due payment until after the implementation and pay at the new rates, with the grace period surcharge. Our contacts at the OHIM Key User desk say that is not the case. If you are paying late, you pay at the old rate, not the new one.
So, while you cannot get a reduction on fees due before 23rd March, you may want to defer paying fees which are due after 23 March 2016 to pay at the lower rates.
There is a weird period in March to watch out for. OHIM have clarified for us what is the due date for payment. At present, renewal fees fall due on the last day of the month in which the ten year anniversary of the filing date falls. For all marks filed in January, the due date for renewal is currently 31st January. Under the new regime, the renewal fees will fall due on the anniversary date itself. We have been advised that, overnight, the deadline becomes the filing date anniversary: a problem if you were relying on end of month payments, especially if your anniversary is before 23rd March. The safe course is to instruct payment of any upcoming renewal fees at least a month ahead of what you have been told is the due date.
We are monitoring notices from the Office in Alicante daily and if you have concerns over how best to handle renewal of any particular EU registration, do please ask us.
Specifications
We now have a deadline of 23rd September 2016 for addressing any registrations granted before 22 June 2012 with specifications covering only the wording of the class headings, to clarify their scope of protection. Under the new Regulation, there is no longer the assumption that the registration covers all of the goods / services of that class.
As we mentioned in our earlier news report, this requirement only applies to registrations which use the wording of the class headings in the Classification Guide (the Nice Classification). These are not easy to spot. We are running an analysis of the cases on our records. We do know that the way we have always drafted specifications for the United Kingdom, including a specific list of goods and services of interest, is such that EU cases filed by our attorneys are most likely continue to give the scope required. We are looking into whether precautionary declarations under the new Regulation are advisable in any event.
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.
