New EU trademark regulations - some practicalities

23 March 2016 will see some fundamental changes to trademarks in the European Union.

Gone will be Community Trade Marks to be replaced with European Union trade marks.

The Office for Harmonisation in the Internal Market (OHIM) will become the EU Intellectual Property Office (EUIPO).

The new names are clearer but what else may change that trademark owners and representatives should note? Scroll down to the bottom if you don't have time to read all this.

New fee structure

Official fees will change. It's generally good news.

The initial filing fee will be reduced by €50 to €850. However, rather than getting "three classes for the price of one" as with the current fees, the new initial filing fee covers one class only. Trademark cluttering is considered a concern in the EU and this is a step towards discouraging it.

If you need to cover two classes then the additional class fee for the second class is €50 so for such applications there will be no fee differences under the new and old systems.

For the third class upwards, the fee will be €150 per class. It is for these multi-class applications where it will get more expensive.

If you do have a three class or more application to file then you may want to consider filing it before 23 March.

Conversely, if you have a one class application, you could consider holding off filing until 23 March or after. It is not normally recommended to delay filings and the official fee saving is fairly small but could be taken advantage of if you have a priority filing.

Renewal fees will come down significantly with the basic fee dropping from €1350 to €850. The Office will apply the fee due at the time of renewal though to avoid "tactical" timing of renewals. If you've already paid future renewals using the old fees, don't worry, you'll be reimbursed. If you've done these renewals through a third party then you may need to 'nudge' them so money returned to them can make its way to you!

There will be some small fee decreases for the likes of oppositions and revocations in due course too. N.B. Application and renewal fees presume filings are made online.

Misleading invoices

The Office does not send invoices out . However, their name change may see an upsurge in activity from scammers. A cursory check of the UK Company Registers does not show any newly incorporated companies containing "EU Intellectual Property", but such entities may be being set up in other countries.

It is important that trademark owners and representatives remain vigilant.

In terms of payments to the Office, we can anticipate a need to update the beneficiary name details for the Office for when payments are made to them by bank transfer for payment of fees or to top up current accounts.

New website

We can imagine that there will be a new website address - and euipo.europa.eu currently redirects to the current OHIM website at oami.europa.eu.

I imagine a redirection in the other direction will be put in place on or after 23 March, but users may wish to update their favourites accordingly.

Many will recall the problems faced in late 2013 and early 2014 with the Office's revamped website. Let's hope these are not faced again or you may see IP practitioners take to social media in less than jovial moods.

Speaking of which, watch out in case the Office adopts new social media handles.

If the website does go down for whatever reason then TMview should remain available for trademark searches. Be wary though that if there are problems with the Office's website that TMview may not be able to access the EU database and search results may be missing EU applications or registrations.

Old specifications for class headings

The IP TRANSLATOR case changed a previous interpretation at the Office that registrations for class headings covered the entire class and specifications were not to be interpreted literally.

Trademark owners of registrations filed before 22 June 2012 that covered class headings (and therefore thought they were getting entire class protection) can now file Declarations stating the protection they require.

• The deadline is 24 September 2016
• The goods and/or services, other than those clearly covered by the literal meaning of a class heading, must be indicated in a "clear, precise and specific manner"
• Such goods and/or services indicated must have been in the same International Class in force at the time of the application and contained in the alphabetical list for that class

If the deadline is not acted upon then any specifications for class headings will be interpreted literally (the means what it says approach).

EEA representation

Trademark owners and representatives from Iceland, Liechtenstein and Norway, which together with the EU member states make up the European Economic Area, will be able to act directly before the Office.

Applicants from these three nations would have often covered the EU through an International Registration but may now choose to file directly.

International Registrations

A practical disadvantage to designating the EU in an International Registration was the time it took to obtain protection as there is a more long-winded publication process.

This will now be shortened by five months, but if you take into account processing times at the Office of origin and WIPO, it is still quicker to file directly, even more so if your application can fulfil the Fast Track conditions.

At this time, there has been no word of a change in Individual fees for designating the European Union in an International Registration. I imagine it's only a matter of time before they are aligned with the new regular official fees.

There will be further changes in October 2017, but the key changes you may wish to look into now or very shortly are:

1. Update records and database with the new name e.g. change Community Trade Mark to European Union trade mark.
2. Update schedules of charges to show any new official fees and any pre-populated template documents containing the current fees.
3. If you have any three classes or more applications to file then get them on file soon, if possible.
4. For any one class applications, particularly where you have the security of a priority claim, you could hold off filing until after 23 March.
5. Be as alert as ever to misleading invoices.
6. Get ready to update beneficiary name details for making bank transfers to the Office.
7. Bookmark a new website address.
8. Review pre-22 June 2012 registrations for any that contain class headings and begin preparations to clarify the protection.
9. Docket the deadline of 24 September 2016 for such cases.

WIPO Madrid Highlights - Issue 2‏

WIPO have issued their second edition of their e-zine Madrid Highlights following on from their first edition in March.

Most of the publication is, of course, self-explanatory but as lots of it uses "WIPO speak", which is not a criticism as they are obliged to use this language, I will comment in simpler English.

In the first Madrid Working Group section, point 1 refers to the deletion of a section which has become obsolete. This needs to be agreed but would appear a formality.

The second point refers to Article 9sexies of the Madrid Protocol. It is not often anyone would regard the Madrid Protocol as sexy! What this currently means is that if contracting parties are both members of the Madrid Agreement and Madrid Protocol when it comes to examination and fees they follow the Madrid Agreement. For example, if you happened to be a Swiss applicant (basing your International application on a Swiss registration) designating China then the Chinese Office would have to examine the mark within 12 months and a complementary fee (not an individual fee) would be charged for China. Switzerland and China are members of the Madrid Agreement and Madrid Protocol.

This does put applicants from countries that are parties to both the Madrid Agreement and Madrid Protocol at an advantage in terms of being able to obtain quicker protection and cheaper protection for some countries. Applicants from the likes of the United States, the UK, Australia and Japan (i.e. Madrid Protocol only members) may consider this unfair.

On the flip side, Trade Marks Offices in the likes of China are under more pressure to examine quickly and they are losing out on official fees. China lost out on nearly 10 million Swiss francs last year. That may represent a relative drop in the ocean to an economy the size of China's but it could pay for a few examiners. The Office of Belarus, as another example, lost out on over 4 million Swiss francs last year. With processing delays of 3-4 years on national applications think of the number of examiners and support staff they could recruit to reduce their backlog.

Of course, our Swiss applicant as per the example above, is happy - a cheap trade mark within 12 months. The WIPO document is merely asking the Working Group to consider Article9sexies but, reading between the lines from how the information has been presented, it is encouraging them to close this "loophole".

For now, applicants from EU countries that are Agreement and Protocol members (e.g. France, Germany) would find it advantageous to file International applications based on national applications/registrations rather than Community Trade Marks.

The third point relates to a suggestion from the Association romande de propriété intellectuelle (a professional IP association for French-speaking Switzerland) to introduce division in International Registrations. This was back in 2008 so you can see it takes a while for things to progress in the corridors of power at WIPO.

It basically provides for a designation of an International application (i.e. not the entire application for all countries) to be divided specifically when, during examination, some goods/services have been accepted but others are subject to objections. It would allow the accepted goods/services to move forward to obtain a Statement of Grant and the objections raised can be argued against separately.

The merger provisions will allow divided designations to be merged back together, assuming the objections are overcome.

This has not been agreed yet but I can anticipate it coming into force. It will only be applicable to member states that have division provisions within their national laws. For example, division is possible for Community Trade Marks. Their current guidelines do not allow it through the Madrid Protocol: "The division is not available for an international application under the Madrid Protocol designating the EC: Their Register is exclusively kept at WIPO. The OHIM does not have the authority to divide an international designation."

Point 4 relates to translations between the three official languages (English, French, Spanish) and, in my opinion, will not impact users too much. It is more to manage WIPO workloads and not to translate for translation's sake.

The Madrid System Legal Forum is set up "to facilitate the free exchange of ideas concerning the present and future of the Madrid system". Well, not quite. Disappointingly, this is restricted (as you can see) to staff from member state Trade Mark Offices. I can appreciate WIPO not wishing all and sundry making comments and suggestions but they could at least give access to professional bodies such as INTA, ECTA, ITMA, etc. It is my usual criticism of WIPO that it is a "closed shop" or like an old state monopoly that does not seek the opinions and feedback from its customers (trade mark owners and representatives) enough.

Most of us will already be aware that the Philippines and Colombia have joined the Madrid Protocol. I have heard that, like with national applications, Affidavits of Use will be required for IRs designating the Philippines to be filed with the Intellectual Property Office of the Philippines, not WIPO.

The rest of the document requires little explanation. I was keen on the 'Madrid Tips' section on Second Part Individual Fees. However, because they must keep to their "WIPO speak" they cannot use everyday IP language to most of us: these are basically registration fees. I would also recommend using WIPO's excellent E-Payment facility to pay these which gives you an immediate e-mail confirmation.

Cayman Islands - trade mark developments commentary

There have been recent developments in the regulations surrounding trade marks in the Cayman Islands.

The developments will not change much for some trade mark owners. It will have its most notable impact on trade mark owners who use an agent or specialist annuity payment provider based outside the Cayman Islands who have previously been dealing with the General Registry directly. They will now need to use a local agent which will raise costs. Caymanian agents are not particularly cheap and this is not surprising as the Cayman Islands enjoy the highest standard of living in the Caribbean; the islands are a key international financial centre and luxury tourist destination.

In my experience, having an agent on the ground in the Cayman Islands is not a bad thing. The General Registry has had issues with resources and a local agent is able to go to the Registry and help out physically; something not available to non-resident agents.

The new legislation also requires a stricter requirement on the payment of annuities although it remains to see if the Registrar will be equipped enough to proactively cancel trade mark registrations for failure to pay annuities ex officio.

The law appears to maintain the current requirement to have a UK, Community or International Registration designating the UK to form the basis of a local Cayman Islands application. This will be a disappointment to some, particularly for trade mark owners with little need for UK/European protection which they will need to get in advance. This is an obvious disadvantage to local Cayman Islands applicants.

It also maintains the Cayman Islands as one of the most expensive trade mark jurisdictions in the world, especially considering it is a deposit registry. Even taking away the need to obtain registration in the UK or EU (this could be needed by a business anyway), it is the annual fees that ramp up the costs in the Cayman Islands. It is not clear if the fees will change under the new legislation, but presuming they remain the same, a three class registration will cost $4390.20 in official fees to obtain and maintain in force for its first 10-year term - and this is without the agents fees on top. It is hoped it will still be possible to bulk pay the annual fees up to the next renewal date as this can go some way to reducing the agents fees as well as reducing the administrative burden.

With an estimated population of only 55,000, the Cayman Islands do not represent the best value trade mark jurisdiction out there. When you require protection here, be sure to budget accordingly.