The new “European Union trade mark” and the EUIPO

The OHIM, Office for Harmonisation in the Internal Market changed its name in to European Union Intellectual Property Office (EUIPO). This will not be the only change introduced by the new EU Regulation no. 2015/2424.

On March 23, 2016 the entry into force of the Regulation will introduce significant changes in several areas designed to encourage companies to register trademarks. One of the most important news from a practical point of view is the change in the filing fees.

The EUIPO tax system, which will replace the OHIM, will be based on the number of classes ( “pay-per-class”) and will provide for the payment of an initial fee that will cover only the first class (and not three as in the old system) and the payment of an additional fee for classes after the first and not after the third as in the current system.

The new amount on the fees then provides for a basic filing fee of 850.00 euros, a fee for the second class of Euro 50.00 and a further fee from the third grade onwards Euro 150,00.

Another important change concerns the classes of goods or services. The new regulation codifies the current practice, in force since the judgment in Case C-307/10 ”IP Translator” which requires a specific indication of the products or services.

This practice is extended to trademarks before the ruling, so before 2012, allowing holders to a transitional period of six months to adapt the specification of the brands to their original intention when depositing.

The description and classification of goods and services must be as specific as possible (Article 28). The general designation of goods and services for which trade mark protection is sought shall be construed as including only goods and services clearly covered by its meaning literal. The lack of clarity and precision in identifying what you want to protect becomes specific reason to reject the request of registration.

The regulation in question also brings a number of changes in terms of the examination procedure, the absolute grounds for refusal, relative grounds for refusal, products and services, opposition and cancellation procedures and appeals.