European Commission intends to strengthen trademark protection and to facilitate the proceedings

Dipl.-Ing. Nils Winthuis

Dipl.-Ing. Nils Winthuis

According to a bill by the European Commission, trademark protection in Europe shall become easier and more effective for companies so as to foster innovation and growth. The reform shall be based on the following points:

1.      streamlining and harmonization of the registration procedure, on the level of member states, too,

2.      modernization of existing regulations and strengthening of legal security,

3.      improvement of tools for fighting product piracy in case of goods which pass the EU area as well as

4.      facilitation of the cooperation between trademark offices of the member states and the OHIM.

Regarding this, the reform package comprises three initiatives, i.e.

1.      new formulation of the guidelines of 1989 for adjustment of legal provisions of the member states regarding the trademark,

2.      revision of the provision of 1994 regarding the community trademark and

3.      revision of the provision by the Commission of 1995 regarding fees to be paid to the OHIM.

As a schedule, it is planned that the European Parliament and the Council adopt the Commission’s bill in spring 2014. Within two years from this point in time, an implementation into the respective national law must be carried out. The schedule of fees, however, shall be changed before as it can be passed by the Commission as an implementing action and therefore “only” requires prior approval by the responsible board of fees at the OHIM. Hence, a change of the schedule of fees is already expected for the end of 2013/beginning of 2014.

The new schedule of fees has been suggested by the Commission as follows:

The application fee shall be € 755.00 for one class, with an additional € 50.00 for the second class, € 75.00 for the third class and € 150.00 for every further class. Currently, the application fee amounts to € 900.00 for three classes and €150.00 for every further class. Consequently, there is a saving of costs of € 125.00 with an application of a trademark with only one class and a saving of costs of € 75.00 with an application of a trademark with two classes. When it comes to trademark applications with three classes and more, there will be no change in costs.

The renewal fees shall also be changed to € 1,000.00 for one class, € 100.00 for the second class, € 150.00 for the third class and € 300.00 for every further class. Currently, the renewal fee is € 1,350.00 for three classes and € 400.00 for every further class. Hence, there is a saving of costs of € 350.00 with regard to the renewal fee with a trademark with one class, € 250.00 with a trademark with two classes and € 100.00 with a trademark with three classes.

The introduction of the new schedule of fees is very much to be encouraged. Under these cost aspects, it becomes considerably interesting to deposit a trademark application in particular for trademarks with only one or two classes of goods as they often occur in the small to medium-sized sector. Accordingly, an increase of trademark applications has to be expected.

Sources: Press announcement and memo by the European Commission dated March 27, 2013

Author: Dipl.-Ing. Nils Winthuis (Patent Attorney), Update 2/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany

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