In April this year the president of the European Council and representatives of the European Parliament have reached a preliminary agreement on the reform of the European trademark system. In June the European council?s permanent representatives have confirmed this agreement. Thus the reform might finally come into effect next year. The amendments will be important for you if you plan to apply for a European community trademark in the near future. Small and mid-sized companies shall profit the most.
Which Aims does the EU Trademark Reform Target?
The changes to the trademark guideline and regulation serve the modernization and improvement of existing standards and policies. The reform shall make the European trademark law easier and less bureaucratic. Thus the cooperation between the member states? trademark offices and the Office for Harmonisation of the internal market will be simplified. A new fee schedule will be established as well. It entails some cost reductions for trademark applicants respectively holders.
Nice Classes and Fees
- The application for an EU community trademark costs 900 Euros at the moment. Three Nice classes are already included for your obligatory list of goods and services. In the future applicants shall be able to use only one Nice class and pay 850 Euros. If they want a second class additional 50 Euros will have to be paid. Every additional class costs 150 Euros.
- The terms used within every Nice class have to match exactly with the respective class?s headline. For trademark applications filed before June 6th 2012 there will be a time limit of 6 months beginning on the day when the new legislation comes into effect. Within this period trademark holders can submit an explanation if they want the requested protection to exceed the area expressed by the respective class headline
- After the protection period of 10 years has passed a trademark?s protection can be prolonged by paying a 1350 Euro fee. This fee shall be reduced to 1000 Euros.
All existing and planned fees we?re dealing with refer to online submissions. Normally these are cheaper than applications submitted on paper.
Graphic Representability shall No Longer be Obligatory for a Trademark Application
At the moment one of the most important factors for getting a trademark registered, is its graphic representability. This applies to special kinds of trademarks as well, e.g. sound marks and scent marks. The trademark reform will fundamentally change this. The graphic representability will no longer be the most important criterion to assess a trademark?s registration. Thus other forms of representation will be accepted as long as they meet all other requirements: A trademark?s representation has to be completed in itself, easy of access, understandable, durable and objective.
A further suggested amendment is the renaming of the decentralized agencies. Thus the terms shall be adjusted to the ones agreed upon in the contract of Lisbon. The following institutions and instruments will be renamed
- The Office for Harmonisation of the internal market
- The community trademark
- The community trademark court
How can Applicants Benefit from this Reform?
The key point of the planned reform is the restructuring of the European trademark system in order to make it more efficient. The new fee schedule might be the most interesting matter concerning trademark applications. The community trademark will therefore become more cost-efficient for companies in the long run. The possibility to use only one Nice class shall put an end to the practice of unnecessarily exploiting all three possible Nice classes with a trademark application. Some changes, like the amendments to a trademark?s representability, will make it easier to apply for special trademarks like sound and smell marks. The renaming of some institutions is a mainly formal step.