The European Commission recently announced plans to update the system of Community trade mark protection. The proposed changes aim to make the EU trade mark system more accessible by reducing the cost and complexity of the system.

Under the Community trade mark system, applicants may make a single application and obtain a single registration which has effect across the European Community. The system has been in place for 15 years. During this time, there have been no major modifications to the relevant laws. However, the business environment has changed significantly. The proposed modernisation aims to bring the Community trade mark system up to date with the current requirements of the users.

The key proposals include:

• Changes to application fees and renewal fees. Currently the application fee is 900 euros and covers applications containing up to three classes. Additional fees are payable for each extra class. Under the proposed changes, it would be possible to pay a reduced application fee for applications covering only one or two classes. The one month period for paying application fees will be abolished meaning that application fees will need to be paid at the time of application. Renewal fees for registrations covering one or two classes are also expected to decrease.
• Relaxation of the requirements for trade marks to be represented graphically. This will make it easier to obtain Community registrations for non-traditional trade marks such as sounds or smells.
• Removal of the requirement for OHIM to undertake priority searches. This will mean that OHIM will no longer search for identical/similar prior applications or registrations. This should speed up the application process.
• Introduction of the option to submit observations against newly filed applications, explaining why the mark should not be registered on the grounds of prior applications or registrations. Currently, such observations can only be filed after an application has been published.
• Improved measures to help combat counterfeit goods. This will include a broader right to prevent importation of counterfeit goods into the EU.

The proposals also include a number of changes to frequently used terminology. The term “Community Trade Mark” (CTM) will be changed to “European Trade Mark” (ETM). Also, the office responsible for dealing with Community trade marks will change its name from the “Office of Harmonization for the Internal Market” (OHIM) to the “European Union Trade Marks and Designs Agency” (EUTMDA).

These proposals, if accepted, are expected to be implemented by spring 2014. EU countries will then have two years to transpose the new rules into their national laws. A notable exception is the change to the amount of application and renewal fees. The new fees are expected to be adopted before the end of 2013.

If you have any questions about the current UK or Community trade mark registration procedure or would like to discuss how these proposed changes might affect you, please do not hesitate to contact Wilson Gunn.