Registration and Maintenance of a Community Trademark to Become Cheaper and Easier
The European Parliament, the Council and the Commission have agreed on the Community trademark reform which will come into effect the next year. Even though the system might seem identical at first glance, it should bring considerable benefits for trademark proprietors. More than 117 000 trademark applications have been received by the office registering the Community trademarks in 2014 (an increase of 3% compared with 2013). Consequently, it is expected that the amended system may also boost the volume of the trademark applications even further.
Community trademark registration and maintenance fees have been reduced in the new system
Currently the minimal fee for the Community trademark application including 3 classes of the Nice Classification (groups of goods) is 900 euros. It means that the protection is granted to the products of the 3 classes. Once the proposed reform comes into effect, the fee per class will be 850 euros plus 150 euros for any additional class. Regardless of the increased registration fee for a larger number of classes, the reform is targeted at the trademark registration for one class with the aim of reducing the costs borne by businesses, since one class is usually sufficient for the trademark protection.
Businesses will also benefit in terms of renewal (maintenance) of the trademark protection. The renewal fees are to decrease significantly compared to the current ones. For example, the trademark renewal fee for one class will be 500 euros less than under the current regulation (850 euros instead of 1350 euros). The research conducted by the European Commission shows that it will help businesses to save up to 37% of costs, especially the ones which are to renew the trademark protection several times, i. e. are interested in the trademark protection for a period longer than 10 years.
Graphical representation will no longer be required
Currently, one of the key requirements for the trademark is the capability of being represented graphically. It had been noticed that with the increase of “unconventional” signs on the market, for example, signs consisting only from sound, or even smell, their proprietors encounter a problem of failing to satisfy, entirely or to some extent, this requirement which appears to be downright formal. Once the reform comes into effect, it will be established that a trademark may be represented graphically or by other means deemed to identify the trademark with greater precision.
Narrowing of the requirement of graphical representation does not imply that trademarks could be formed from absolutely anything; on the other hand, it should ensure a more flexible approach to the modern technologies as well as their integration in the legal regulation, which would allow for the registration of unconventional trademarks such as smell, sound, colour, hologram, etc.
Trademarks are registered for marking certain goods or services specified in the Nice Classification. Currently, when applying for the trademark protection in respect to all the goods and services included in a certain class, it is necessary to list every good or service, which ultimately results in a list containing hundreds or thousands of goods and services. In fact, such practice is inconvenient for the applicants and may separate a trademark from further changes in the Classification. In other words, the current requirement of precise identification of goods and services prevents trademark proprietors from a possibly broader trademark protection.
Once the reform comes into effect, applicants will be able to indicate a general heading of a class of the Nice Classification in the trademark application thereby protecting all the necessary goods and services; however, such indication of the goods will have to be sufficient and clear.