Mag. Balazs Esztegar LL.M.
Attorney-at-law Vienna

Piaristengasse 41/10
1080 Vienna, Austria
Tel. +43 1 997 4102
Fax +43 1 997 4102-99

Community trade mark becomes EU trade mark

The Community trade mark, in existence since 1996, has become an unexpected success story of the European Union. In the meantime, the Office for Harmonisation in the Internal Market in Alicante, Spain, has processed 1.3 million Community trade mark applications. With one application, trade mark protection can be obtained in all member states of the EU, and on economically attractive terms. As of 23 March 2016, the Community trade mark was renamed into EU trade mark.

The Regulation (EU) 2015/2424 of the European Parliament and of the Council amending the Community Trade Mark Regulation entered into force on 23th March 2016. The most obvious change is the renaming of the property right previously known as the Community trade mark to the EU trade mark. At the same time, the trade mark authority of the European Union, the Office for Harmonization in the Internal Market (abbreviated to "OHIM"), was relieved of its bulky and not very meaningful name and renamed the European Union Intellectual Property Office (abbreviated to "EUIPO").

The amending regulation is part of the EU's trade mark reform package, which also replaces the existing EU Trade Mark Directive (Directive 2008/95/EC of the European Parliament and of the Council). All existing Community trade marks (CTM) and pending CTM applications automatically became EU trade marks or applications for an EU trade mark.

Apart from the change of name, the amending regulation also brings innovations in the fee schedule, namely - and this is rare nowadays - a general reduction of fees for the trade mark application of an EU trade mark, but also for the renewal of its term of protection. However, in future fees will have to be paid per class according to the Nice Classification. So far, the application fee included 3 classes, so that additional fees were only incurred from the 4th class onwards. In future, the - reduced - registration fee of EUR 850.00 is only valid for one class. The second class triggers additional fees of EUR 50.00 and each additional class triggers additional fees of EUR 150.00 each. 

In future, the application for an EU trade mark can only be filed directly with EUIPO. In future, an EU search report will also only be sent if the applicant expressly requests it. In addition to some other procedural innovations, the Regulation also brings substantive changes to trade mark law, of which the most significant change is probably the abolition of the need for a graphic representation of the trade mark (previously Art 4 Trade Mark Directive). In future, any technically possible form of representation of the trade mark will suffice. 

The changes are intended to make trade mark applications even more efficient and attractive, to which the new fee structure of the EUIPO is to contribute in particular, in order to ensure that the EU trade mark remains a popular way of obtaining trade mark protection in all Member States of the EU.