Sections
INTA Blog
February 03
How To Renew Your EU Trademark Following The EU Trademark Reform

EUTMReform_Blog_020316.jpg
As many readers will know, the EU Amended Trade Mark Regulation comes into force on March 23.  One area which is set to change is the renewal of EU registrations and official renewal fees. 

The deadline to proceed with renewals will change. The current procedure is that registered trademarks can be renewed up to the end of the month in which the registration falls due. Therefore a trademark which falls due for renewal on March 3 can be renewed at any time up to March 31.  It is also possible to renew a Community Trade Mark (CTM, soon to be called EU trademarks) in the six month period preceding this date. This will be changed so that registered trademarks fall due for renewal on the actual date of expiry. 

Fees for EU trademarks would now be per one class instead of covering three classes. The renewal fee will also be lower under the Amended Regulation:

 

 ​

CURRENT RENEWAL FEES

NEW

RENEWAL FEES

One class

€1,350

€850

Two classes

€1,350

€900

Three classes

€1,350

€1,050

Four classes

€1,750

€1,200

Five classes

€2,150

€1,350


Initially, OHIM (soon to be called the European Union Intellectual Property Office) had suggested that the current law should apply to all CTMs where the 6 month period for renewal started to run before the entering into force of the new Regulation. This would have meant applying the current higher renewal fees and the "end of the month" renewal rule to all EU trademarks where the six month period began before March 23.  This would have resulted in trademark owners having to pay the current higher renewal fees, in particular for all those CTMs that were filed on Day 1 of the CTM, namely, April 1, 1996.

INTA filed submissions at OHIM that there was no legal basis for continuing to apply the old rule to registrations where the six month period started before March 23, 2016 (the entering into force of the new Regulation) and that the law enters into force on the day prescribed. The President in his communication no. 2/2016 has addressed this question and we are pleased to report that INTA's submissions have been taken into account.  

  • The due date for calculation of a renewal fee is to be the date of expiry of the CTM regardless of the date when renewal is requested and the renewal fee paid.
  • Existing renewal fees should be paid for CTMs which fall due for renewal before March 23 even if renewal is requested after March 23.
  • New renewal fees should be paid in respect of CTMs falling due for renewal on or after March 23 even if renewal has been requested before February 1 (when OHIM’s President communication came into force).
  • There is a provision for OHIM to refund any excess fees which have been paid.

This welcomed communication clarifies the position on renewal fees. It removes uncertainty which could have led to trademark owners having to pay higher renewal fees for marks which fall due for renewal after March 23, 2016, which would likely have triggered multiple complaints and appeals. 

Christopher Benson, Taylor Wessing LLP (United Kingdom), Chair of the OHIM Subcommittee, Trademark Office Practices Committee. 


Share


Comments

There are no comments for this post.
INTA values your opinion and encourages you to add a comment to this discussion. Comments may be edited for clarity. Off-topic or offensive comments will be deleted.
 
You must be logged in to leave a comment. If you do not have an account, please click here to create one.