OHIM has released Communication 2/2016 of the President clarifying that the new fee regime will apply to all CTMs (then EUTMs) that expire on or after 23 March 2016 – even where renewal is requested before that date. All CTMs expiring before that date are subject to the current renewal fees.
The new EU Trademark Regulation, which replaces the Community Trademark Regulation, enters into force on 23 March 2016. There are multiple changes of practical relevance. The most immediately visible change concerns fees and renewals of CTMs – which will be EUTMs as from 23 March.
As regards renewals, the new law provides that renewal must be effected by the date of expiry of the registration, not the end of the month. And it provides for a significant lowering of renewal fees, as the following table illustrates:
|1 class||3 classes||5 classes||7 classes||10 classes|
|CTMR (current law)||1,350||1,350||2,150||2,950||3,850|
|EUTMR (new law)||850||1,050||1,350||1,650||
In its new Communication (published here), OHIM has made it clear that the new regime will apply to all CTMs that expire on or after March 23. This is true even where renewal for those marks has already been requested or will be requested before this date. Excess renewal fees paid will be refunded.
This is a very welcome change from OHIM’s original position, announced on December 14, whereby the old regime (and old fees) were to be applied to all CTMs or EUTMs for which the 6-month renewal period starts before March 23. This would have meant for all CTMs expiring before August 30 to be subject to the old renewal fees.
With respect to marks expiring between March 1 and 23, OHIM’s solution is also pragmatic. OHIM says that the fees under the current law will apply, even in the event that renewal is requested and paid for after March 23. Where – in compliance with the current rules – CTM owners request renewal by March 31, this will be subject to the current fees, and no surcharge will be levied.
OHIM also says that, where CTM owners have already requested and paid for the renewal of marks that expire on or after March 23, excess fees will be refunded.
This is certainly an easier and less litigious solution than to apply the old law to marks expiring after March 23, which would have surely triggered a lot of angry reactions.