Declarations under Article 28(8) EUTMR
1. What will happen to my trade mark?
Existing Community trade marks and Community trade mark applications will automatically become European Union trade marks and European Union trade mark applications upon the entry into force of the Amending Regulation. Users will not have to take any action.
2. Will the way I do business with the Office change?
No. All our online applications will be updated and ready to use on the day the Amending Regulation enters into force. The new fee structure will be reflected in our online trade mark filing application and in all our other applications available throughout our website. Our fees calculator and full list of fees will be updated with the new fee structure on the day the Amending Regulation enters into force.
3. Where can I get information on trade mark practice under the Amending Regulation?
On 23-03-2016, the date of entry into force of the Amending Regulation, an updated version of the Guidelines for Examination will also enter into force, which will reflect the changes introduced by its amendments in the Office's trade mark examination practice. This information will be available via our current trade mark practice page. More information is also available in Alicante News — the Office's newsletter, which gives up-to-date information on IP- and Office-related matters.
4. What do I do if I receive an invoice I don't recognize?
If you receive a letter or invoice, please check very carefully what is being offered to you and whether its source is genuine. If you have any doubts, please check with your legal advisers or contact us. More information on misleading invoices can be found here.
5. What differences are there between the old and the new fee system for trade marks?
The Amending Regulation which enters into force on 23/03/2016 introduces an overall decrease in fees payable to the Office in trade mark matters and a new one-fee-per-class system for application and renewal fees. All of the fees can be found in Annex I to the Amending Regulation and more information can be found online, including some comparison tables of the old and new fees for EUTM applications, renewals, oppositions, cancellations and appeals.
6. If any excess payments have been made in view of the changes in the fee system, will the excess payments be reimbursed?
Yes. On 29th January the President published online the planning for reimbursement of the excess fees paid for renewal. The reimbursement method will vary according to the payment method used. Please refer to this online news publication as it explains in detail how the fees will be reimbursed.
7. New filings – do I have to pay the ‘old' or the ‘new' fees?
The date of filing the EU trade mark application, notice of opposition, application for revocation or declaration of invalidity (cancellation) or appeal (related to EU trade marks), will determine which fee is payable (old or new system).
If the date of filing of the action is prior to the entry into force of the new regulation (i.e. prior to 23/03/2016) the old fee system will apply even if the payment is made after the entry into force of the new regulation, and this includes the calculation of any surcharge fees for late payment if applicable. If the date of filing of the action is after the entry into force of the new regulation (i.e. on or after 23/03/2016), the new fee system will apply. This stems from the principle that the action, once paid for, will take effect from the date of filing which is when it will be deemed to be entered.
By means of example, if the three month opposition period runs from 01/02/2016 – 30/04/2016, and an opposition is filed on 01/03/2016, the opponent will have to pay the old fee (350€). However, in the same example, if an opposition is filed on 15/04/2016 the opponent will have to pay the new fee (320€). The opponent may not file the opposition on 01/03/2016 and wait until 30/04/2016 to pay the new fee, because while the payment will still be within the three month opposition period, the date of filing of the notice of opposition (and its effect) was prior to the entry into force of the new regulation.
Declarations under Article 28(8) EUTMR
8. Who can make a declaration under Article 28(8) EUTMR?
Proprietors of EU trade marks, or international registrations designating the EU, filed or designated before 22/06/2012 and registered before the entry into force of Regulation 2015/2424 of 16 December 2015 amending Council Regulation (EC) No 207/2009 of 26 February 2009 on the EU trade mark that contain the entire heading of a Nice Class.
9. When can the declaration under Article 28(8) EUTMR be made?
Article 28(8) EUTMR declarations must be made between 23 March 2016 and 24 September 2016 inclusive.
10. Which form should I use for a declaration under Article 28(8) EUTMR
The Office has created a new online Recordal application form, under ‘EUTM Recordal' subtype ‘Declaration under Art. 28(8)'. The form will be available from 23 March 2016, from the Forms and filings section. Users need to log in to make the online request. Proprietors/holders wishing to file on paper should use the normal Recordal Application form. Only one form may be filed per EU trade mark.
For more information, please see the detailed FAQs on declarations under Article 28(8) EUTMR
11. What date counts when calculating which renewal fees are applicable to an EUTM?
The calculation date for establishing which renewal fees are to be paid is the ‘date of expiry' of the trade mark. All EUTM's that have an expiry date prior to 23/03/2016 will be subject to the ‘old' fee system irrespective of when they are paid. All EUTM's that have a date of expiry on or after 23/03/2016 will be subject to the new fee system. This has been confirmed in Communication No 2/2016 of the President of the Office of 20 January 2016, and further information can be found online here.
12. For a mark which is subject to the old renewal fee, can the proprietor delay the payment and pay the new reduced fee within the six-month ‘grace period'?
No. The calculation date for establishing which renewal fees are to be paid is the ‘date of expiry' of the trade mark and this still applies even if the proprietor decides to wait and pay later in the additional six-month ‘grace period'. In the cases where the date of expiry of the mark is prior to 23/03/2016, even if the proprietor pays the fee after the entry into force of the new Amending Regulation, the calculation of all additional surcharges for late payment (namely 25% of the belated renewal fee) will be calculated based on the fee which was due on the date of expiry of the mark.
13. Does the basic period for renewal expire at the end of the month or on the exact date?
Under the current CTM Regulation the request for renewal and the fee for renewal can be made right up until the end of the month in which the expiry of the registration of the mark is due to occur, and the additional six-month ‘grace period' for renewal starts to count as from the first day following the end of the month.
Under the new Amending Regulation, this Article is modified and the request for renewal and the fee for renewal must be made in the six-month period prior to the expiry date of the registration (in other words the ‘date of expiry' of the mark), and the additional six-month grace period for renewal starts to count from the day following the date of expiry.
However, the Office has established transitional arrangements for those marks where the basic six-month period for renewal started before the entry into force of the new Amending Regulation on 23/03/2016. For these marks the ‘old' method of calculation will apply, even if their date of expiry is after the 23/03/2016. This means, that EUTMs that expire on 22/09/2016 will be the first to fully apply the new calculation of the renewal periods.