[[{"type":"media","fid":"4680","view_mode":"default","alignment":"left","instance_fields":"override","attributes":{"height":250,"width":276,"style":"width:276px;height:250px"},"field_file_image_alt_text[und][0][value]":"","field_file_image_title_text[und][0][value]":""}]]As you might already be aware, the European trademark law and practice has been subject to some changes in recent months which may also affect your registered Community Trademark(s) or your International Registration(s) designating the EU. We would, therefore, like to provide our clients with a brief overview of the most important changes and point out where it might be appropriate to take action. The information contained in this letter is of general nature, but we are, of course, always available in case of questions and for further explanations. Should we, in addition, see any need for you to take specific actions regarding your own trademarks, we will contact you individually during the next weeks and inform you accordingly.

 

1. Change of Name of the Office for Harmonization in the Internal Market

On 23 March 2016, the central registry for trademarks that provides protection throughout the territory of the European Union – that is in all 28 Member States – will change its name from “Office for Harmonization in the Internal Market” (OHIM) to “European Union Intellectual Property Office” (EUIPO). In parallel, the “Community Trademark” (CTM) and “Community Trademark Application” (CTMA) will be renamed to “European Union Trademark” (EUTM) and “European Union Trademark Application” (EUTMA).

2. Change in Official Fees

Since through its official fees the OHIM had earned substantial surpluses in recent years, the fee structure is now being reorganized.

While the basic fee for a trademark application so far covered up to three classes of goods and services, the system will be changed to a per class fee.

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The fees for the renewal of Community Trademarks due after 23 March 2016 are lowered significantly and will then meet the application fees in amount and structure. The due date for the renewal shall be the date of expiry of the Community Trademark regardless of the date on which payment is actually received by the Office. If the due date is on 23 March 2016 or later, the new fees will apply. In case the renewal fees are paid before 23 March 2016 following the old fee schedule, the Office will refund the difference. Should the protection of a trademark expire before 23 March 2016 and the renewal fee is not paid until after 23 March 2016, the old (higher) fees will nevertheless apply.

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The official opposition fee will amount to EUR 320 instead of EUR 350. For applications for invalidity or revocation (because of an alleged non-use) only EUR 630 instead of EUR 700 are to be paid. The appeal fee is reduced from EUR 800 to EUR 720 respectively.

3. Use of Class Headings of the Nice Classification in Lists of Goods and Services

In the following, the term „Community Trademarks“ shall also comprise International Registrations designating the European Union.

Trademark registrations are always protected only for the goods and services that have been designated in the so-called list of goods and services at the time of application. At a later stage, the scope of protection may only be reduced by restricting the list, but not extended. Therefore, it was and is common practice to draw up the list as broad in scope as possible at the time of filing. This is often done by resorting to the International Classification of Goods and Services, the so-called Nice Classification. This classification, in its currently 10^th edition, includes 45 classes, of which the first 34 refer to goods and the other 11 to services. The classification contains class headings which consist of general indications that show the basic direction of the goods / services generally falling into the respective class. In fact, regardless of those general indications that are explicitly listed, each class comprises ALL the goods / services that fall into the same field of goods / services as described by the general indications contained in the class headings. Even though the headings of each class are complemented by an alphabetical list with additional goods / services, this list is also not exhaustive. Instead, there exists no list of ALL conceivable goods / services of a class. Theoretically, however, each conceivable term describing a good or a service shall be assignable to one of the 45 classes and their thematic order.

For many years, it has therefore – although not without controversy – been assumed that Community Trademarks that if their respective list of goods and services covered all the class headings of the Nice Classification in a class were protected for all goods / services of that specific class including goods / services that were not covered by the literal meaning of the explicitly listed terms. This understanding changed in 2012 when the Court of Justice of the European Union, in its decision “IP Translator”, found that:

• The goods and services for which protection of a trademark is sought are to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trademark.
• The general indications of the class headings of the Nice Classification may still be used in trademark applications to identify the goods and services for which the protection of a trademark is sought, provided that such identification is sufficiently clear and precise.
• An applicant for a trademark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trademark is sought must specify whether the application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

a. The Scope of Protection of a Class when using the Class Headings

Against the background of this decision and starting from 23 March 2016, the EUIPO (formerly OHIM)  will interpret general terms, including the general indications of the class headings of the Nice Classification, by their literal meaning only. In other words, general terms will only comprise those goods and services which are clearly covered by its literal meaning. The German Patent and Trademark Office has been following this approach for some time already.

Proprietors of Community Trademarks that have an application date before 22 June 2012 and are registered for the whole class heading of a Nice class, now have the opportunity to declare in writing until 24 September 2016 at the latest that it had been their intention on the date of filing to seek protection for goods and services beyond those covered by the literal meaning of the respective class heading. Those additional goods and services have to be listed in a clear and precise manner and have to be contained in the alphabetical list of the edition of the Nice Classification in force at the date of filing.

Meanwhile, the OHIM has published a list of terms of the alphabetical list of the Nice Classification that it deems not comprised by the literal meaning of the class headings. The list is sorted by class and edition of the Nice Classification. It is not exhaustive, but still provides a good indication for a possible amendment of the list of goods and services of a registered Community Trademark. Upon request, we will be pleased to provide you with the OHIM list as well as the respective alphabetical list(s) of the Nice Classification.

If no such supplement declaration is filed until 24 September 2016, the respective Community Trademarks will only be protected for those goods or services, which are clearly covered by the literal meaning of the terms in the heading of the relevant class.

As far as Community Trademark Applications were filed after 22 June 2012, it is assumed that the applicants already had the chance to consider the decision "IP Translator" of the Court of Justice of the European Union and to amend their applications accordingly. For these pending and / or registered trademarks, there is no possibility to complement the terms of the list of goods and services.

b. The Scope of Protection of a Trademark for which the List of Goods and Services is amended until 24 September 2016

If the list of goods and services of a Community Trademark is amended to contain additional terms that were originally not covered by the literal meaning of the list, the trademark proprietor may nevertheless not proceed against the use of a mark by a third party in relation to goods or services where and to the extent that the use of the trademark for those goods or services commenced before the register was amended and did not infringe the proprietor's rights based on the literal meaning of the goods and services as registered at that time.

c. Trademark Applications using general Indications

In addition, the trademark offices of the European Union identified 5 general indications in the class headings of the Nice Classification that they deem too vague to meet the requirement of clarity and precision of goods and services as confirmed by the Court of Justice of the European Union. These terms are the following:

• Class 7: Machines
• Class 37: Repair
• Class 37: Installation services
• Class 40: Treatment of materials
• Class 45: Personal and social services rendered by others to meet the needs of individuals

When filing a new trademark application, the use of these general indications is no longer accepted. Instead, the applicant must file a clear and precise description of the goods or services for which protection is sought. Unfortunately, there is no exhaustive list of the individual terms covered by the above mentioned general indications. However, the applicant may rely on the alphabetical list of the Nice Classification. The individual terms contained therein will be generally suitable to describe the field of goods and services that a trademark is intended to cover. For any future trademark applications, we will, of course, take these requirements into account and propose lists of goods and services that have been drawn up accordingly.

 However, the Office will not ex officio change these non-acceptable 5 general indications as far as they are contained in the list of goods and services of already registered Community Trademarks. Instead, it is at the discretion of the trademark proprietor to amend and clarify the wording of the list of goods and services by way of a partial limitation so that in case of conflict the list will be sufficiently clear to proceed against a potential infringer. If you are not sure whether such a restriction is advisable in your case, you are welcome to contact us at any time for further advice.

4. Disclaimer

Furthermore, no disclaimers will be permitted from 23 March 2016. A disclaimer is a statement from a trademark applicant that – in view of an element of his trademark that is deemed not distinctive and that could give rise to doubts as to the scope of protection of the trademark – he will not claim any exclusive right to that element.

This applies to the kind of disclaimers that have been proposed by examiners ex officio in the course of registration proceedings or were voluntarily included by applicants. However, as far as such disclaimers are already contained in the description of registered trademarks, those are not affected. There is no need for action for trademark proprietors.

5. Black and White Marks

Moreover, the question frequently arose what effect it had if a trademark that was registered in black and white or greyscale was only used in color (or vice versa). The majority of the trademark offices of the European Union in the meantime agreed as part of their convergence program to the following and issued a Common Communication:

To maintain the rights that are granted by a trademark registration, the mark must be put to genuine use. That, however, is only the case if the mark is used in its registered form in the course of trade. An exception is made only if a trademark is used in a form that differs in elements which do not alter the distinctive character of the mark as registered; such use constitutes use of the mark as registered.

With regard to differences in color, the question is whether the use of a color version of a trademark registered in black and white or greyscale (or vice-versa) is acceptable for the purpose of establishing genuine use of the registered mark. The offices agreed to answer that question with „yes“ – as long as the mere change in color does not alter the distinctive character of the (registered) trademark. This is presumed if the following requirements are met:

• The word / figurative elements in the mark as registered and as used coincide and are the main distinctive elements.
• The contrast of shades is respected.
• Color or combination of colors does not possess distinctive character in itself and
• Color is not one of the main contributors to the overall distinctiveness of the mark.

Although these specifications continue to leave room for interpretation and argumentation, they may still be used as a reference by the trademark proprietor when he decides on the design of his trademark that he would like to use in the market. We encourage you to review the genuine use of your trademarks in particular with a view to the use in color. A timely change of use might prevent revocation requests by third parties alleging non-use of your trademark and reduce the effort needed to provide proof of genuine use of your trademark in case of dispute. Should you have any doubts whether the actual use of your trademark qualifies as genuine use of the registered mark, please do not hesitate to contact us at any time for a discussion and / or further advice.

Status: 1 March 2016 - © LexDellmeier

The European General Court (EGC) decided that the sole shape of the crest of the FC Barcelona has no distinctive character neither itself or through use (Judgment dated 10 December 2015; Case No.: T-615/14).

Background of the Case and Subject Matter  

On 24 April 2013, Fútbol Club Barcelona (FC Barcelona) filed an application for registration of a Community Trademark (CTM) at the Office for Harmonization in the Internal Market (OHIM). The figurative mark in respect of which registration was sought is the shape of the crest of the FC Barcelona (see below) for – among others – stationery, clothing items and sports activities.

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In May 2014, OHIM rejected the application for registration because the sign is not distinctive. The examiner of OHIM is convinced that the trademark applied for did not contain any specific element which is suitable to be an indication of origin of the goods and services covered by the application for the consumer. Furthermore, the sign does not really differ from other basic shapes which are used in various sectors only for ornamental purposes.

The football club also filed evidence at OHIM which should prove that the shape had acquired distinctive character through use in the European Union (EU). The filed evidence are copies of documents consisting of web pages, documents that concerning the applicant’s participation in social networks, extracts from newspapers and the online encyclopedia “Wikipedia” which contained information about the Football Club itself and football in general, especially its economic importance. OHIM refused this evidence in general because they are not sufficient to prove that the shape had acquired distinctive character.

FC Barcelona brought an action against OHIM’s decision before the EGC.

Decision of the EGC

The EGC dismissed the appeal.

First, the EGC follows OHIM’s arguments and comes to the result that the shape has no distinctive character. In this connection the court observes that crests are commonly used in business for purely decorative purposes without fulfilling the function of a trademark. Consequently, the sign cannot be registered as a trademark, except if it has acquired distinctive character through its use.

Secondly, the EGC is of the opinion that the football club has not succeeded in demonstrating that the sign has acquired distinctive character through its use. The court stated that the filed evidence is too general and therefore did not allow drawing conclusions about the perception of the shape in the EU. Therefore, it cannot be proven that a significant proportion of consumers in the EU connect the mark applied for with the FC Barcelona at the date of filing.

Therefore, the court decided to dismiss the action brought by the football club FC Barcelona.

The European General Court (EGC) ruled that the shape of the new Coca-Cola bottle cannot be protected as a three-dimensional trademark because it is devoid of any distinctive character (Case T-411/14, Judgement of 24 February 2016). Background of the Case and Subject Matter In December 2011, the famous Coca-Cola Company Ltd filed an application for registration of a Community Trademark (CTM) at the Office for Harmonization in the Internal Market (OHIM) for the following three-dimensional mark for - inter alia – metallic, glass and plastic bottles: [[{"type":"media","view_mode":"media_large","fid":"4617","attributes":{"class":"media-image size-full wp-image-2701 aligncenter","typeof":"foaf:Image","style":"","width":"281","height":"311","alt":"Coca Cola neu"}}]] In March 2014, OHIM rejected the application for registration on the ground that the trademark has no distinctive character in respect of the goods covered by the application. Especially, OHIM did not follow the Coca-Cola Company’s arguments that the trademark should be regarded as a natural evolution of its famous iconic bottle (the contoured bottle with fluting – see below). [[{"type":"media","view_mode":"media_large","fid":"4618","attributes":{"class":"media-image size-full wp-image-2702 aligncenter","typeof":"foaf:Image","style":"","width":"204","height":"234","alt":"Coca Cola besser"}}]] Therefore, the Coca-Cola Company appealed against the decision of OHIM. Decision of the Court  But, finally even the EGC followed the argumentation of OHIM’s argements. First, the court stated the consumer is accustomed to a wide range of variants of shapes of bottles. Therefore, consumers are, in general, not enable to see the shape of the bottle as an indication of its origin. The Coca-Cola bottle is no exception because - in contrast to the famous contoured Coca-Cola bottle with the fluting - the new bottle does not possess any characteristics that distinguish it from the other bottles which are available on the market. Secondly, the EGC noticed that Coca-Cola has failed to establish that the sign had acquired distinctive character through use. Therefore, the court decided to dismiss the action brought by the Coca-Cola Company.

[[{"type":"media","fid":"4616","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2690 alignright","typeof":"foaf:Image","style":"","width":"234","height":"234"}}]] The German Federal Court of Justice (BGH) ruled that smartphone apps can – in principal – be protected as work titles (Case I ZR 202/14, Judgement of 28 January 2016). Background of the Case and Subject Matter The complainant operates a website that offers local weather data and other information about the topic weather under the domain “wetter.de” (Note: The German word “wetter” means “weather”). In 2009, the domain holder started to also provide this information as an application for mobile devices under the designation “wetter.de” The defendant is holder of the domain “wetter.at” and “wetter-deutschland.com” and also provides weather data on the internet. In 2011, he also started an application under the designations “wetter DE”, “wetter-de” und “wetter-DE”. The complainant is convinced that the behavior of the defendant infringes his commercial rights of the domain name and his application designation “wetter.de”. Therefore, he demands the defendant to cease and desist from further infringing actions and for damage compensation. Decision of the BGH First, the BGH notes that domain names relating to internet services and applications for mobile devices can in general be protected as work titles. But, the designation “wetter.de” for weather data is devoid of any distinctive character because it is just a description of the content of the offered services. Finally, the court came to the result that the defendant was not able to prove that the requirement of distinctiveness can be neglected because of market recognition of at least 50 percent. Press here to read the BGH’s press release in German.

Every April 26 – the day on which the World Intellectual Property Office (WIPO) Convention came into force in 1970 – the World Intellectual Property Day is celebrated to promote discussions of the role of intellectual property in encouraging innovation and creativity. The WIPO’s member states designated this day with the aim of increasing the general understanding of intellectual property, including trademarks, copyrights, designs, patents, utility models etc. Each year, a special topic and focus is picked. [[{"type":"media","fid":"4614","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2658 aligncenter","typeof":"foaf:Image","style":"","width":"492","height":"275"}}]] The 2016 World IP Day Theme This year’s World Intellectual Property Day 2016 focuses on the theme: “Digital Creativity: Culture Reimagined”. Cultural works such as films, TV, music, books, art, etc., have long crossed borders. However, the Wi-Fi era is transforming how consumable culture is created, distributed and enjoyed in markets that are expanding far beyond national borders. Accessible digital technologies have swept away physical constraints, which is feeding the imagination of artists and creators in a new way as it opens for cross-cultural collaboration. The creative work of creators and artists is also easy accessible for the digital consumer, as we read, watch and listen to the works of countless creators from across the world, wherever, whenever and however we want. Reimagining culture – how we create, access and finance it- has its challenges. The challenge of a flexible and adaptive intellectual property system is to ensure that the artists and creative industries in our digital word can be properly paid for their work, so that they can and will keep creating. Therefore, WIPO has decided that we should explore some of the issues surrounding our cultural future. Both experts on creativity in the digital market and creators themselves will on this day elaborate on where they think we are heading. Events on the World IP Day 2016 The World IP Day offers a unique opportunity each year to join interesting events all over the world. For information about events near you, please check out the “World Map of IP Day events 2016” here. Also, join the World IP Day discussions on Facebook and Twitter – and use the #worldipday hashtag in your posts. For more information about the World Intellectual Property Day 2016, press here.

[[{"type":"media","fid":"4613","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2645 alignright","typeof":"foaf:Image","style":"","width":"142","height":"202"}}]] The World Intellectual Property Organization (WIPO), a specialized agency of the United Nations headquartered in Geneva, Switzerland, has recently published the Global Innovation Index (GII) Report about the latest trends in intellectual property (IP) activity worldwide. Patent and Trademark filings showed a strong growth in 2014 while industrial design applications declined for the first time in two decades. Trademarks Trademark applications reached a new record in 2014 with a total number of 7.45 million classes specified in applications. As you can see below the increase of 6% was driven by filings in the Trademark Office in China with 2.22 million trademark application, followed by the United States of America (471,228), the European Union (333,443), France (269,837) and Japan (242,073). [[{"type":"media","fid":"4610","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone size-full wp-image-2642","typeof":"foaf:Image","style":"","width":"517","height":"202"}}]] Most of the applications are made in the advertising and business management sector (9.8% of the total filing activity), followed by the clothing industry and by scientific, photographic, measuring instruments, recording equipment, computers and software. Below you can see the trademark applications by top three sectors. In Germany, most applications are made in the area of research and technology area. [[{"type":"media","fid":"4611","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone size-full wp-image-2643","typeof":"foaf:Image","style":"","width":"540","height":"202"}}]] Patents Innovators marked a worldwide annual rise of 4.5 % in 2014 by filing 2.7 million patent applications. The top five Patent Offices worldwide are China with 928,177 applications in 2014, followed by the United States (578,802), Japan (325,989), the Republic of Korea (210,292) and the European Patent Office (152,662) (see below). [[{"type":"media","fid":"4612","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone size-full wp-image-2644","typeof":"foaf:Image","style":"","width":"537","height":"218"}}]] Most applications worldwide in 2014 were made in the fields of computer technology, electrical machinery, measurement, digital communication and medical technology. The last two sectors have been the two fastest growing technological fields since 1995. Designs After a 20 year period of growth, the total number of industrial designs dropped by 8.1% to about 1.14 million applications in 2014. The fall was mainly due to a sharp decrease in filings by Chinese residents. For more detailed information and the full report including charts, overviews and other statistics please see:  http://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2015.pdf

In the recent and comprehensive decision from the Chancery Division of the High Court of Justice, England and Wales, Justice Arnold ruled that the Metrocab taxi is not infringing the London Taxi Company´s (LTC) three-dimensional United Kingdom Trademark (UKTM) and Community Trademark (CTM). On the contrary, the three-dimensional trademarks were found to be invalid as they both lack necessary distinctive character and consist exclusively of the shape which gives substantial value to the goods. The CTM was also found invalid due to non-use. (Case No: HC-2014-002085, Judgement of 20 January 2016)

 

                              LTC´s UKTM No. 2440659                                      LTC´s CMT No. 951871

  Background of the case and subject matter The Claimant, the London Taxi Company, is the successor in title to the manufacturer of the Fairway, TX1, TXII and TX4 models of the London taxi. The Defendants, Frazer-Nash Research Ltd and Ecotive Ltd, are the successors in title to the manufacturer of the Beardmore, Oxford and Metrocab models of the London taxi. The LTC is the registered proprietor of the three-dimensional Community Trademark No. 951871 (CTM) for “motor vehicles, accessories for motor vehicles; parts and fittings for the aforesaid” in Class 12, and the United Kingdom Trademark No. 2440659 (UKTM) for “cars; cars, all being taxis” in Class 12. The representations of the UKTM also forms the subject-matter of LTC´s UK Registered Design No. 2069313, which was not relied upon by LTC in these proceedings. The LTC claimed that the shape of the Metrocab taxi is substantially copied from the shape of the TX4, and that the Defendant intends to deceive the public as to the origin of the new Metrocab taxi by adopting a shape which closely resembles that of the LTC´s models. The Defendants counterclaimed that the trademarks are invalidly registered because they lack distinctive character and add substantial value to the goods. In alternative, the Defendants contended that the CTM should be revoked for non-use. The Decision of the Chancery Division of the Hight Court of Justice In the comprehensive judgement of 299 paragraphs, Justice Arnold dismissed the claims for trademark infringement and passing off brought by LTC and accepted the counterclaims and defenses of the Defendants. In summary, Mr. Arnold came to the conclusion that both of LTC´s trademarks were devoid of inherent distinctive character in relation to goods in Class 12 at the respective dates of application, and that neither of the marks had acquired a distinctive character as a result of use by the date of the counterclaim. In the judge´s view, the disputed trademarks would simply be perceived by the average consumer of taxis as merely a variation of the typical shape of a taxi. Furthermore, regardless of the distinctiveness, the two trademarks were also declared invalid in respect of Class 12 because they exclusively consist of the shape. After a comparison of the shape of the Metrocab and the s[[{"type":"media","fid":"4609","view_mode":"media_large","instance_fields":"override","attributes":{"height":135,"width":240,"class":"media-image size-full wp-image-2607 alignright"}}]]hapes of the LTC´s taxis, for which the trademarks were registered, Mr. Arnold came to the conclusion that there is no likelihood of confusion. Also, the Defendants were not found to take unfair advantage of the LTC´s reputation, as a reputation as such was not found. In addition, it was found that the CTM should be revoked for non-use in respect of goods in Class 12 with effect from 2 May 2014, as the only use of taxis of that mark consisted of sale of second-hand taxis or sales for scrap. Lastly, Justice Arnold concluded that the use of the Metrocab is in accordance with honest practices and that there is no evidence that the shape of the new Metrocab is likely to lead consumers of taxi services to believe that it comes from the same source as LTC´s taxis, as opposed to being a licensed London taxi. There has been no damage and the claim for passing off thus failed. Press here to read the full judgement.  

The TMA Committee has kicked-off the year 2016 with a fantastic event. On Thursday, 28 January 2016, a mini-seminar was organized by the International Trademark Association (INTA) and the German Patent and Trademark Office (DPMA) in Munich, Germany. The seminar was specially developed for Trademark Administrators (TMAs) and Paralegals in Germany. [[{"type":"media","fid":"4583","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone size-full wp-image-2533","typeof":"foaf:Image","style":"","width":"844","height":"429"}}]] The four-hour event with the title “Make Yourselves Invaluable to Your Firm and Company”, with over 90 attendees was, thanks to the organizing committee, speakers and sponsors, an overwhelming success. The topics included:

• Promoting INTA and the work of the German TMA Committee;
• An update from the German Patent and Trademark Office (DPMA);
• The role and challenges of a paralegal working outside your country at another office and how to use this to enhance your career;
• The challenges and views on running a trademark portfolio in-house;
• What you need to know about preliminary injunction proceedings (PI´s) in trademark cases in Germany.

After a fantastic lunch and snacks provided for by the DPMA, Ms. Barbara Preissner, Head of Trademark and Design Department at the DPMA, started the event off with a welcome speech, followed up by a total of five speakers on different topics relevant for TMAs and Paralegals. The seminar was interactive with a Q&A session after each presentation. [[{"type":"media","fid":"4584","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image aligncenter wp-image-2540","typeof":"foaf:Image","style":"","width":"490","height":"388"}}]] The first speaker was Mr. Martin Sebele from the Trademark Department at the DPMA, who gave an update from the DPMA on the changes and updates on classification. Secondly, Ms. Christina Maier, Paralegal at Kuhnen & Wacker Patent- und Rechtsanwaltsbüro, and Ms. Natalie Oei, Head of Trademark Administration/Paralegal at Noerr LLP, shared their experiences with working as paralegals in another office in another country, and how to use this experience to enhance your career. Afterwards, Ms. Claudia Meindel, Head of Intellectual Property Department at Euro-Triumph GmbH, continued with a presentation on legal and corporate practice on running a trademark portfolio in the fashion/lingerie industry from the point of view of an in-house counsel. Mr. Stephan N. Schneller, Attorney at Law at Maiwald Patentanwalts GmbH, gave a presentation on what paralegals need to know about preliminary injunction proceedings (PI´s) in trademark cases in Germany. DOWNLOAD OF PRESENTATIONS: The presentations (in German) given can be downloaded here: VORTRAG_Martin_Sebele_DPMA_Klassifikation VORTRAG_Christina_Maier_20160128_USA_Praktikum VORTRAG_Natalie_Oei_Secondment_Alicante Alexandra Dellmeier, Attorney at Law at LexDellmeier IP Law Firm, and Susanne Ferstl, Freelance Paralegal, closed the mini-seminar with a great round of applause by the participants and small snacks. [[{"type":"media","fid":"4585","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image aligncenter wp-image-2541","typeof":"foaf:Image","style":"","width":"505","height":"405"}}]] We want to especially thank the DPMA and its President, Ms. Cornelia Rudloff-Schaeffer, and Ms. Barbara Preissner, Head of the Trademark and Design Department, for actively supporting and hosting this event at their Munich headquarters for the third time after the last TMA event there in 2013. Of course special thanks also go to INTA and DPMA staff members as well as the organizing team in Munich, Alexandra Dellmeier (previous TMA Committee Member), Susanne Ferstl (current TMA Committee Member) and Melanie Schulze. Please see some more pictures from the INTA/DPMA mini-seminar below: [[{"type":"media","fid":"4595","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image aligncenter wp-image-2554","typeof":"foaf:Image","style":"","width":"547","height":"389"}}]] [[{"type":"media","fid":"4596","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2556 aligncenter","typeof":"foaf:Image","style":"","width":"548","height":"410"}}]] [[{"type":"media","fid":"4597","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2559 aligncenter","typeof":"foaf:Image","style":"","width":"551","height":"412"}}]] [[{"type":"media","fid":"4599","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2564 aligncenter","typeof":"foaf:Image","style":"","width":"555","height":"415"}}]] [[{"type":"media","fid":"4598","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2562 aligncenter","typeof":"foaf:Image","style":"","width":"558","height":"422"}}]] [[{"type":"media","fid":"4601","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2568 aligncenter","typeof":"foaf:Image","style":"","width":"559","height":"414"}}]] [[{"type":"media","fid":"4602","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2570 aligncenter","typeof":"foaf:Image","style":"","width":"555","height":"408"}}]] [[{"type":"media","fid":"4603","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2573 aligncenter","typeof":"foaf:Image","style":"","width":"553","height":"406"}}]]

The fee system at the European Union Intellectual Property Office (EUIPO) will change from the fee system applied by OHIM - the "old" name of the office until 23 March 2016. The system will change from a basic fee that covers up to three classes of goods and services to a ‘pay-per-class' system.

  Pay for what you need

The Community trade mark included protection for three classes, costing €900 for an electronic application and €1 050 for a paper application. The Amending Regulation sees the Office move to a one-class-per-fee system. This means that in practice applicants will pay a lower fee if they only apply for one class, the same fee if they apply for two, and a higher fee if they apply for three or more. Renewal fees are substantially reduced in all instances and set to the same level as application fees, and there are also reductions in opposition, cancellation and appeal fees.

  Application fees (e-filing)

CTM (old system)	Fee	EUTM (new system)	Fee
First class	€900 covers up to three classes	First class	€850
Second class		Second class	€50
Third class		Third class	€150
Fourth and all subsequent classes	€150	Fourth and all subsequent classes	€150

  Renewal fees (e-filing)

CTM (old system)	Fee	EUTM (new system)	Fee
First class	€1 350 covers up to three classes	First class	€850
Second class		Second class	€50
Third class		Third class	€150
Fourth and all subsequent classes	€400	Fourth and all subsequent classes	€150

  SPECIALTY: New European Union certification mark

European Union certification marks will be introduced in 21 months' time. These will allow 'a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods and services complying with the certification requirements' (Article 74b EUTMR). The registration cost for an EU certification mark will be the same as for an EU collective mark, i.e. €1 800 (€1 500 e-filing); €50 for a second class; €150 for a third (and all subsequent) classes.

This information has been taken from the office's website: https://oami.europa.eu/ohimportal/en/eu-trade-mark-regulation-fees  

The EU trademark reform package was approved by the European Parliament on 15 December 2015. The amendments are expected to come into force in March/April 2016. The reform package brings changes to the Community Trademark Regulations (Council Regulation (EC) No 207/2009) and adopts a new Directive to approximate the laws of the Member States relating to trademarks. The reform is extensive; the new Directive consists of 57 articles whereas the old Directive only had 19 articles. Major changes are also made to the regulation: for example, the structure of the fees payable will be significantly changed. The aim of the reform is to foster innovation and economic growth as well as to ensure coexistence and harmonization between trademark systems. The changes are intended to make trademark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. We have listed some of the main features of the changes to the regulation and the new directive. The list is not exhaustive – and this is just a very short overview.

1. Name changes

Community trademarks will become European Union trademarks (“EU trade marks“ or “EUTMs“). The name of the Office for Harmonization in the Internal Mark (OHIM) will be changed to European Union Intellectual Property Office (“EU IP Office” or “EUIPO”) and the Community trademark court will be known as EU Trademark Court.

2. Use of class headings

The rules for classification of goods and services will be updated according to the principles set out by the CJEU in the IP Translator case (C-307/10) rendered on 19 June 2012. The goods and services for which trademark protection is sought for, need to be specified more clearly and with more precision. The use of general terms will be interpreted as including only all goods and services clearly covered by the literal meaning of the term. Owners of EU trademarks which were applied for the entire class heading before 22 June 2012 can file a declaration that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class. The declaration needs to be filed at the Office within six months of the entry into force of the Regulation.

3. Anti-counterfeiting provisions

In order to strengthen trademark protection and combat counterfeiting more effectively, the rights of the proprietors of EU trademark will be strengthened. It will be possible for the owners of EU trademarks to stop transit of goods, when they bear without authorization a trade mark which is identical or essentially identical with the EU trade mark registered in respect of such goods.

4. Fee structure

The basic application fee will cover only one class of goods and services and is 850 EUR (when filed by electronic means, otherwise 1000 EUR). The fee for the second class will be 50 EUR and every class after the second 150 EUR. The renewal fees will be lowered to the same level as the application fees. In the Directive, the one-class-per-fee-system is made optional for the Member States. There are more changes included. At this point in time, we only posted a couple of significant changes. As the implementation of the new legislation comes closer in March/April 2016, we intend to go into more detail.