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European Union Trademarks

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Latest News: 10-05-2017 (Newsletter Issue 17/17)
Peru Joins Designview
As of September 18, 2017, the National Institute for the Defense of Free Competition and the Protection of Intellectual Property of Peru (INDECOPI) has made its industrial design data available to the Designview search tool.

Source: www.tmdn.org


Latest News: 10-05-2017 (Newsletter Issue 17/17)
Certification Marks Introduced / No Longer Requirements for Graphical Representation
As from October 1, 2017, EUIPO introduced certification marks which are a new kind of trade mark at EU level. EU certification marks relate to the guarantee of specific characteristics of certain goods and services.

It indicates that the goods and services bearing the mark comply with a given standard set out in the regulations of use and controlled under the responsibility of the certification mark owner, irrespective of the identity of the undertaking that actually produces or provides the goods and services at issue and actually uses the certification mark.

However, certification marks cannot be used to indicate the geographical origin of products or services and it cannot be owned by a person carrying out a business involving the supply of the goods and services of the kind certified.
Applicants have to include a statement in their application when applying for a certification mark. Also, within 2 months of the date of the filing the regulations governing the use of the certification mark has to be submitted.

Also, the graphical representation requirement no longer applies when submitting a trademark application as and from October 1, 2017.

Signs can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

The result is a 'what you see is what you get' system, which aspires to make the trade mark entries on the EUTM Register clearer, more accessible and easier to search for.

Article 3 of the EU trade mark Implementing Regulation (EUTMIR) lays down specific rules and requirements for the representation of some of the most popular types of trade mark, including some technical requirements, in accordance with the specific nature and attributes of the trade mark in question.

Please check EUIPO’s website on the introduction of certification marks and the lapse of graphical representation requirement for further information. Additional procedural changes which apply as well from October 1, 2017, can be found here

Source: www.euipo.europa.eu


09-20-2017 (Newsletter Issue 16/17)
Main Principles of EU Position on Brexit Negotiations
The European Commission (EC) has published a position paper transmitted to EU27 on intellectual property rights including geographical indications. The paper contains the main principles of the EU position for the dialogue on Intellectual Property rights in the Brexit negotiations.

For further information, please read the article of Bond Dickinson LLP here

Source: www.ec.europa.eu


09-20-2017 (Newsletter Issue 16/17)
San Marino Joins TMclass
As of July 31, 2017, the Patents and Trademarks Office of the Republic of San Marino (USBM) joined TMclass.

Source: www.euipo.europa.eu


09-05-2017 (Newsletter Issue 15/17)
Germany Joins DesignView
As of August 7, 2017, design data from the German Patent and Trade Mark Office (DPMA) has been added to DesignView.

Source: www.oami.europa.eu


09-05-2017 (Newsletter Issue 15/17)
Decision Concerning Communication by Fax
On August 16, 2017, EUIPO has published Decision No EX-17-4 to set out the accepted means of electronic communication with the Office including an Annex with technical requirements, size and formats for attachments to electronic filing and communication.
The Decision takes into account the legislative reform changes applying from October 1, 2017, and the changing communications landscape, in particular on the use of fax.

From October 1, 2017, fax falls within the definition of communication by electronic means.

From January 1, 2018, fax will no longer be accepted for filing EUTM applications or renewals except as a backup system if technical malfunctions prevent e-filing.

Further, as of October 1, 2017, applications for trademarks where the representation has a colour component (including figurative marks) cannot be filed by fax because there are no legal provisions that facilitate the subsequent filing of a representation in colour.

For more information, please click here

Source: www.euipo.europa.eu


09-05-2017 (Newsletter Issue 15/17)
Implementing and Delegated Regulations on Trademark Reform Published
The Commission Implementing Regulation (EU) 2017/1431 laying down detailed rules for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union trademark and the Commission Delegated Regulation (EU) 2017/1430 supplementing Council Regulation (EC) No 207/2009 on the European Union trademark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 were published in the Official Journal of the European Union on August 8, 2017.

The provisions in both texts are due to apply from October 1, 2017.

For more information on the EUTM regulation and the forthcoming changes, please check here

Source: www.euipo.europa.eu


07-25-2017 (Newsletter Issue 14/17)
Israel Joins TMclass
As of July 17, 2017, the Israel Patent Office (ILPO) has joined TMclass.

Source: www.oami.europa.eu


07-11-2017 (Newsletter Issue 13/17)
Codified Version of EUTM Regulation Published
The Regulation (EU) 2017/1001 of the European Parliament and of the Council of June 14, 2017 on the European Union trade mark, codifying Council Regulation (EC) 207/2009 (EUTMR) has been published in the Official Journal of the European Union.

The Regulation (EU) 2017/1001 repeals Regulation (EC) 207/2009, and will apply from October 1, 2017. Secondary legislation adopted on May 18, 2017 in the form of two separate acts, a Delegated Regulation (EUTMDR) and an Implementing Regulation (EUTMIR) will also apply from October 1, 2017.

The changes intend to make the EU trademark system more efficient and consistent and adapt it to the internet era. They concern the following areas:

- Abolition of graphical representation requirement
- Introduction of certification marks
- Requirement to file priority claims together with the EUTM application
- Possibility to invoke acquired distinctiveness as a subsidiary claim
- Alignment of provisions for cancellation proceedings with those for opposition proceedings
- Recognition of online sources for substantiation purposes
- Simplified requirements for translation
- Enhanced acceptance of electronic means of communication by and with the Office
- Introduction of strict formal requirements on structure and presentation of evidence
- Consolidation of provisions relating to the Boards of Appeal

For further information, please click here

Source: www.euipo.europa.eu


07-11-2017 (Newsletter Issue 13/17)
Colombia Joins TMview
As of June 19, 2017, the Colombian Superintendence of Industry and Commerce (SIC) has made its trademark data available to the TMview search tool.

Source: www.oami.europa.eu


07-11-2017 (Newsletter Issue 13/17)
Bosnia and Herzegovina Joins Designview
As of June 12, 2017, the Institute for Intellectual Property of Bosnia and Herzegovina (IIP-BIH) has made its industrial design data available to the Designview search tool.

Source: www.oami.europa.eu


07-11-2017 (Newsletter Issue 13/17)
Case-Law Overview 2016 from General Court/ Court of Justice
The Legal Practice Service of EUIPO has prepared an overview of case-law from the General Court (GC) and Court of Justice (CJ) in Luxembourg on trademark and design matters.

The overview includes abstracts of judgments, preliminary rulings and important orders rendered by the GC and CJ in 2016.

Source: www.oami.europa.eu


06-14-2017 (Newsletter Issue 11/17)
EU Trade Mark Implementing and Delegated Regulations
The secondary legislation package on the European Union trade mark - consisting of a Commission Implementing Regulation laying down detailed rules for certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark (Implementing Regulation) and a Commission Delegated Regulation supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (Delegated Regulation) was adopted by the European Commission on May 18, 2017.

Both texts, in all language versions, are publicly available at the European Commission's Better Regulation Portal using the following links:

Implementing Regulation: Implementing regulations enable the Commission to set conditions that ensure all national governments implement EU laws in the same way. Implementing regulations are directly applicable in all EU countries. Therefore, EU countries do not need to take further steps to incorporate them into their national legislation.

Delegated Regulation: Delegated regulations enable the Commission to supplement or amend non‑essential parts of EU laws. For example, in order to define detailed measures related to a law.
The Commission adopts the delegated regulation and if Parliament and Council have no objections, it enters into force. It then becomes directly applicable in all EU countries.

It is one of the final stages of the European Union trade mark reform. It has to be noted that the official publication of these two acts in the Official Journal of the European Union and their subsequent entry into force are still subject to the European Parliament and/or Council not raising an objection during the scrutiny period.

Source: www.euipo.europa.eu


06-14-2017 (Newsletter Issue 11/17)
New Online Form for International Applications
EUIPO informs about the new online form where EUIPO’s users can file a request for an international trademark application through the Madrid Protocol system administered by the World Intellectual Property Office (WIPO). In order to access the form EUIPO’s users will just need to log in.

The form can be accessed in various ways on the EUIPO’s website:
- Through the Dashboard in your User Area
- Via the Online Services hub
- From the Forms and Filings page
- Via eSearch plus in the ‘Actions and communications’ section

Applications can be based on one or more EU trademarks or EU trademark applications. Like the other electronic forms of the Office, users can save their work as a draft at any time in the process, and return to it later.

The European Union ratified the Madrid Protocol in 2004, allowing the EUIPO to accept international registrations of trademarks and to forward international applications from its users to the WIPO.
Up until now, the only way to file an international application based on an EU trademark application was to send the application using a paper form, which tended to produce more formality deficiencies.

Source: www.euipo.europa.eu


06-14-2017 (Newsletter Issue 11/17)
Visual search for EUIPO, INPI and UKIPO Trademarks in TMview
It is now possible to search trademarks from EUIPO, the Institut national de la propriété industrielle (INPI) and the United Kingdom Intellectual Property Office (UKIPO) within TMview using images.

Source: www.euipo.europa.eu


05-17-2017 (Newsletter Issue 9/17)
India Joined TMview and Philippines Joined Designview
As of April 26, 2017, the Indian Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) has made its trade mark data available to the TMview search tool.

Further, the Intellectual Property Office of the Philippines (IPOPHL) has made its industrial design data available to the Designview search tool on the same date.

Source: www.tmview.org


05-17-2017 (Newsletter Issue 9/17)
New Online Tool eAppeal Introduced
EUIPO informs the a new eAppeal is available since April 10, 2017, which allows users to file an appeal online.

eAppeal is easy to use and can be accessed directly from the user area of the EUIPO website, and through the online services page. It can also be entered under Actions and Communications after accessing the file in eSearch plus. The entire process has just four steps.

For more information, please see here

Source: www.euipo.europa.eu


03-29-2017 (Newsletter Issue 6/17)
Revised Guidelines Entered into Force
On February 1, 2017, the first part of EUIPO's revised Guidelines for Examination of European Union Trade Marks and Registered Community Designs for 2017 entered into force.

The Guidelines have been thoroughly updated with case law from the Court of Justice of the European Union, the case law of EUIPO’s Boards of Appeal and the outcome of the Convergence Programmes.

The new Guidelines can be accessed on EUIPO’s website on the Current trade mark practice and Current design practice pages.

Source: www.euipo.europa.eu


01-25-2017 (Newsletter Issue 2/17)
DesignClass Phase II Launched
EUIPO informs that Phase II of the design classification tool, DesignClass, was launched on January 7, 2017.

The tool offers users and IP Offices a harmonised database of approximately 15,000 product indications, including the Locarno 11th Edition Classification terms.

It is the result of collaboration between 24 participating EU Offices, 4 non-EU IP Offices, 2 User Associations, WIPO and EUIPO, who worked to pre-approve the harmonised product indications in 23 EU languages.

More information on DesignClass, including FAQs and tutorials, can be found here

Source: www.euipo.europa.eu


01-25-2017 (Newsletter Issue 2/17)
Malaysia Joined TMclass and TMview
In December 2016, the Intellectual Property Corporation of Malaysia (MyIPO) has made its trademark data available to the TMclass and TMview search tool.

Source: www.tmdn.org


01-11-2017 (Newsletter Issue 1/17)
New Assistance Service
EUIPO informs about a new service for classification and formalities assistance. The service provides guidance when selecting the type of marks, introducing a colour claim, and claiming priority or seniority. However, no legal advice will be covered by the new service.

It is available to users, both before and during the application process, in the five working languages of the Office (English, French, German, Italian and Spanish).

Source: www.euipo.europa.eu


01-11-2017 (Newsletter Issue 1/17)
Guidelines for Examination of EU Trade Marks and Registered Community Designs Revised
On December 12, 2016, the Decision adopting the first part of the revised Office Guidelines was signed. They will enter into force on February 1, 2017.

The new Guidelines will be published on the EUIPO’s website on the Current trade mark practice and Current design practice pages. The Guidelines have been fully updated with case law from the Court of Justice of the European Union and from the EUIPO’s Boards of Appeal.

The EUIPO Guidelines are the main point of reference for users of the European Union trade mark and design systems, as well as professional advisors who want to make sure they have the latest information on the Office’s examination processes.

Source: www.euipo.europa.eu


11-22-2016 (Newsletter Issue 21/16)
Colombia Joins DesignView
As of November 21, 2016, the Colombian Superintendence of Industry and Commerce (SIC) has made its industrial design data available to the DesignView search tool.

Source: www.tmdn.org


11-09-2016 (Newsletter Issue 20/16)
ARIPO Joined Designview
As of October 31, 2016, the African Regional Intellectual Property Organization (ARIPO) has made its industrial design data available to the Designview search tool.

Source: www.tmdn.org


11-09-2016 (Newsletter Issue 20/16)
Philippines Joined TMclass
As of October 24, 2016, the Intellectual Property Office of the Philippines (IPOPHL) has joined TMclass.

Source: www.tmdn.org


11-09-2016 (Newsletter Issue 20/16)
Administration Cooperation Portal Went Live
The administration cooperation portal tool "ECP4 EU" went online on October 29, 2016.

The "ECP4 EU" tool focusses on shared services and practices among the European Union IP Offices promoting the development of common examination standards and practices in cooperation.

This tool is one of the first of the new European Cooperation under SP2020 (the Consultation on the Strategic Plan 2020) which went online. Each tool is reflecting a different objective. The tools are built on the collaborative and cooperative work carried out by all the partners in the European Trade Mark and Design Network.

For more information, please here

Source: www.euipo.europa.eu


10-26-2016 (Newsletter Issue 19/16)
Brazil joined Designview
As of October 17, 2016, the National Institute for Intellectual Property of Brazil (INPI) has made its industrial design data available to the Designview search tool.

Source: www.euipo.europa.eu


10-26-2016 (Newsletter Issue 19/16)
Reorganisation of the Office
A new organisational decision has been published on EUIPO's website.

The reorganisation aims to adjust the Office to the new challenges contained within the Legislative Reform and the Strategic Plan 2020, in particular, the Office’s enhanced international cooperation activities, and the objective of digital transformation apart from minor adjustments to update the ongoing activities of each department.

The new organisational chart can be seen here. For further information, please check here

Source: www.euipo.europa.eu


10-12-2016 (Newsletter Issue 18/16)
New Features of Recordal Forms
EUIPO has introduced several functional improvements to their online recordal forms as well as a new form for seniority cancellations. Users can also pay by credit card when submitting a total transfer for a Registered Community design.

The new features of recordals are the following:
- total transfer
- partial transfer
- seniority claim
- NEW seniority cancellation
- change of representative.

For more information, please check here

Source: www.euipo.europa.eu


10-12-2016 (Newsletter Issue 18/16)
International Registrations in TMview Updated
As of September 19, 2016, the International Registrations from the World Intellectual Property Organization (WIPO) have been updated in TMview.

WIPO now also provides International Registrations in the filed, ended and expired statuses as well as more detailed information on recordals.

Source: www.tmdn.org


08-30-2016 (Newsletter Issue 15/16)
Revised Office Guidelines Published
EUIPO has adopted the second part of the revised Office Guidelines which entered into force on August 1, 2016.

The new Guidelines are available on the EUIPO's website under the Current trade mark practice and Current designs practice pages.

The Guidelines have been updated with case law from the Court of Justice of the EU, the case law of EUIPO's Boards of Appeal, and the outcome of the Convergence Programmes. The revision of the Guidelines will increase consistency and predictability for users, and is aligned with the goals of EUIPO's Strategic Plan.

source: www.euipo.europa.eu


08-30-2016 (Newsletter Issue 15/16)
Deadline for Specifying Class Headings Soon Expired
The deadline for specifying class headings in accordance with the EU trademark reform will soon expire: declarations under Article 28(8) EUTMR must be submitted to the EUIPO before September 24, 2016.

As reported earlier, Article 28(8) of EUTMR allows for a transitional period of six months during which proprietors of EUTMs applied for before June 22, 2012, and registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading.

Source: www.euipo.europa.eu


07-12-2016 (Newsletter Issue 13/16)
All EU Laws Fully in Force in United Kingdom
EUIPO informs that the United Kingdom remains a member of the European Union, with all the rights and obligations that derive from this. According to the Treaties which the United Kingdom has ratified, EU law continues to apply to the full to and in the United Kingdom until it is no longer a member.

Unless and until the process in article 50 of the Lisbon Treaty is triggered by the United Kingdom, the formal process for the United Kingdom to exit the EU will not commence. The negotiations once article 50 has been triggered will last up to two years, longer if agreed by the consent of all member states.

To access the statement, please click here

Source: www.euipo.europa.eu


07-12-2016 (Newsletter Issue 13/16)
Albania and Georgia Joined TMview and DesignView
As of July 4, 2016, the Albanian General Directorate of Patents and Trademarks (GDPT) has made its trade mark and design data available to the TMview and DesignView search tools.

As of July 7, 2016, the National Intellectual Property Center of Georgia (NIPCG) has made its trade mark and design data available to the TMview and Designview search tools.

Source: www.tmdn.org


06-28-2016 (Newsletter Issue 12/16)
WIPO Joins Designview
As of June 20, 2016, the World Intellectual Property Organization (WIPO) has made its international design data available to the Designview search tool.

Source: www.tmdn.org


06-28-2016 (Newsletter Issue 12/16)
Mobile and Tablet Application Launched
EUIPO announced on its website that a new native application for smartphones and tablets has been launched. With this new app users can perform searches of EUIPO’s databases of trademarks, designs, owners and representatives from everywhere.

In 2013 EUIPO merged two databases for trademarks and designs into a single search tool, eSearch plus. The Office then complemented it with data on owners, representatives and the Bulletin. In 2015 EUIPO released a new feature to search for images with a quick and simple drag-and-drop function. Now, EUIPO launched the eSearch plus app which is available for download from the Apple store itunes and the Android App store.

For more information, please click here

Source: www.euipo.europa.eu


06-14-2016 (Newsletter Issue 11/16)
Albania and Georgia Joined TMclass
As of May 30, 2016, the Albanian General Directorate of Patents and Trademarks (GDPT) and the Georgian National Intellectual Property Center (SAKPATENTI) joined TMclass.

Source: www.euipo.europa.eu


05-18-2016 (Newsletter Issue 9/16)
Equivalent Terms for Nice Class Headings
EUIPO published a list of equivalent terms for the Nice Class Headings which are taken from the Harmonised database (HDB). The data for goods and services is pre-approved by every national and regional IP office in the European Union.

Many users rely on the Nice class headings to determine their choice of goods and services, to ensure that they can reap the benefits offered by the harmonised terms, namely guaranteed acceptance in every IP office of the EU and the possibility of Fast Track processing.

For more information, please check here

Source: www.euipo.europa.eu


05-18-2016 (Newsletter Issue 9/16)
Information on Declarations under Article 28(8)
EUIPO informed that the online form for declarations under Article 28(8) is accessible through the User Area EUIPO’s website.

Article 28(8) of EUTMR, amended by Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation, allows for a transitional period of six months during which proprietors of EUTMs applied for before June 22, 2012 and registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading.

Further, the Office reminds that there will be various requirements (formal, regarding the mark and regarding the content of the declaration). For further information, please check here

Source: www.euipo.europa.eu


05-02-2016 (Newsletter Issue 8/16)
Peru and Colombia Joined TMclass
As of April 18, 2016, the Peruvian National Institute for the Defense of Free Competition and the Protection of Intellectual Property (INDECOPI) joined TMclass.

Further, as of April 25, 2016, the Colombian Superintendence of Industry and Commerce (SIC) joined TMclass.

Source: www.euipo.europa.eu


04-20-2016 (Newsletter Issue 7/16)
Brunei and Cambodia Joined TMclass
As of March 21, 2016, Brunei Darussalam Intellectual Property Office (BruIPO) and the Department of Intellectual Property of the Ministry of Commerce of Cambodia (D/IPR) have joined TMclass.

Source: www.euipo.europa.eu


04-20-2016 (Newsletter Issue 7/16)
Start Date for Opposition Against IR Designating EU Changed
The Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation entered into force on March 23, 2016.

The Amending Regulation brings about a number of changes in the areas of examination proceedings, absolute grounds of refusal, relative grounds of refusal, goods and services, opposition and cancellation proceedings and appeals.

With regard to opposition and cancellation proceedings, the main changes are the following:
- Changes to the start date for the opposition period against international registrations designating the EU. This period will now start one month after the date of publication.
- The Amending Regulation introduces some changes as regards counterclaims before EU trade mark courts. In this respect, EU trade mark courts will not proceed with the examination of counterclaims until either the interested party or the court have informed the Office of the date on which the counterclaim was filed.
- The Amending Regulation imposes on the Office the obligation to inform the EU trade mark court in question of any previous application for revocation or for a declaration of invalidity filed before the Office.

For further information on changes in the areas of examination proceedings, absolute grounds of refusal, relative grounds of refusal, goods and services and appeals, please click here

Source: www.euipo.europa.eu


04-05-2016 (Newsletter Issue 6/16)
Change of Office Name and Fees
OHIM announced on its website that OHIM's office name has changed to the European Union Intellectual Property Office (EUIPO) as of March 23, 2016. These changes took effect upon the entry into force of Regulation (EU) 2015/2424.

The website, e-business applications, fee calculators and online tools have all been updated to reflect the change of name, the new trade mark fee structure and other technical changes brought about by the Regulation.

The new fee structure will apply with a one-fee-per-class system. The official fee for filing a European Union Trademark is EUR 1,000 for the first class in paper and EUR 850 electronically. The fee for the second class is EUR 50 and the fee for the third class is EUR 150. The fee for all subsequent classes is EUR 150.

Source: www.euipo.europa.eu


02-17-2016 (Newsletter Issue 3/16)
Framework for Declarations under Art. 28(8) EUTMR
OHIM has issued a Communication on Article 28(8) of the amending EU trade mark Regulation, which will enter into force on March 23, 2016.

Article 28(8) of the amending Regulation allows for a transitional period of six months during which proprietors of EU trade marks applied for before June 22, 2012, and registered in respect of the entire heading of a Nice class, may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading.

In essence, this means that from the end of the transitional period, all trade marks containing class headings will be interpreted according to their literal meaning regardless of their filing date.

The Communication of the President of OHIM sets the framework for proceedings before the Office for entering a declaration under Article 28(8) EUTMR in the Register. It also provides an Annex containing a non-exhaustive list of examples of goods and services clearly not covered by the literal meaning of the general indications of the Nice class headings for each of the editions of the Nice classification concerned (6th to the 10th edition) to assist users in making their declarations.

For further information and to access a list of 'Frequently Asked Questions' can be seen here

Source: www.oami.europa.eu


02-02-2016 (Newsletter Issue 2/16)
Brazil Joins TMclass
As of January 19, 2016, the Brazilian National Institute of Industrial Property (INPI-BR) has joined TMclass.

Source: www.tmdn.org


02-02-2016 (Newsletter Issue 2/16)
Renewal Fees Reimbursed
OHIM announced on its website that the Office is committed to reimburse its users who have already paid for the renewal of a trademark expiring after March 23, 2016 under the CTM fee schedule. These users will be refunded the excess fee they have paid; equal to the difference between the CTM fee schedule and the EUTM fee schedule.

The reimbursement method will vary according to the payment method:
- Users who have indicated “debit later” will see a correction in the “Pending Debit “ tab of Current Account information in the User Area, once the Office has corrected the expected debit (during February and March 2016). No individual communication will be sent to these users.
- Users who have paid by the “debit now” method will be directly reimbursed in their current account, and a letter informing them about the reimbursement will be sent to them.
- Users who have paid by bank transfer or credit card will receive a letter from the Office requesting bank details through which the reimbursement can be paid.

Letters informing about current account reimbursement or requesting bank details will be sent during the months of April to August following a First Paid, First Reimbursed approach.

Reimbursement to users having paid with bank transfer or credit card will be done within two months after the reception by the Office of their bank details.

For more information on the Communication of the President of OHIM on the calculation of the amount of renewal fees in view of the entry into force of the amending EU trade mark Regulation, please click here

Source: www.oami.europa.eu


01-20-2016 (Newsletter Issue 1/16)
Major Changes at OHIM in Force Soon
Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation has been published in the Official Journal of the European Union. The Amending Regulation will enter into force on March 23, 2016. From that day, the Office will be called the "European Union Intellectual Property Office" (EUIPO) and the Community trade mark will be called the "European Union trade mark".

Further amendments:
- A new one-fee-per-class system for trade mark application and renewal fees
- An overall decrease in trade mark application and renewal fees payable to the Office, for the benefit of our users

Currently, the Community trade mark included protection for three classes, costing EUR 900 for an electronic application and EUR 1,050 for a paper application. After the enforcement of the Amending Regulation applicants will pay a lower fee if they apply for less than three classes. 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.

More details on the revised fee structure, and other technical changes are available in 23 different languages here

Moreover, on March 23, 2016, the date of entry into force of the amending Regulation, all the Office's online tools and services will be fully updated to reflect the changes in the fee structure. The online fee calculator and list of fees payable will also be updated. On March 23, 2016, 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.

Please also check the article of DLA Piper for more information here

Source: www.oami.europa.eu


01-20-2016 (Newsletter Issue 1/16)
ARIPO and Bosnia and Herzegovina Join TMview
As of December 7, 2015, the African Regional Intellectual Property Organization (ARIPO) and the Institute for Intellectual Property of Bosnia and Herzegovina (IIP-BIH) have made their trade mark data available to the TMview search tool.

ARIPO’s member states are Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Liberia, Rwanda, São Tomé and Príncipe, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe (a total of 19 member states).

Source: www.tmdn.org


12-08-2015 (Newsletter Issue 19/15)
Japan Joins TMview
As of November 23, 2015, the Japanese Patent Office (JPO) has made its trade mark data available to the TMview trade mark search tool.

Source: www.tmdn.org


12-08-2015 (Newsletter Issue 19/15)
Finland Joins DesignView
As of November 30, 2015, the Finnish Patent and Registration Office (PRH) has made its design data available to the DesignView search tool.

Source: www.tmdn.org


11-11-2015 (Newsletter Issue 17/15)
Poland and Serbia Join Designview
As of October 26, 2015, the Polish Patent Office (PPO) and the Intellectual Property Office of the Republic of Serbia (IPORS) have made their industrial design data available to the Designview search tool.

Source: www.tmdn.org


11-11-2015 (Newsletter Issue 17/15)
Switzerland Joins TMview
As of October 26, 2015, the Swiss Federal Institute of Intellectual Property (IGE - IPI) has made its trade mark data available to the TMview trade mark search tool.

Source: www.tmview.org


10-28-2015 (Newsletter Issue 16/15)
Macedonia Joins Designview
As of October 5, 2015, the State Office of Industrial Property (SOIP) of The Former Yugoslav Republic of Macedonia (FYROM) has made its industrial design data available to the Designview search tool.

Source: www.tmdn.org


10-28-2015 (Newsletter Issue 16/15)
Notice on Practice of Distinctiveness - Figurative Marks
The IP offices of the European Trade Mark and Design Network have agreed on a Common Practice in relation to when a figurative mark, containing purely descriptive/non-distinctive words, passes the absolute grounds examination because the figurative element renders sufficient distinctive character.

The project was initiated by the Office for Harmonization in the Internal market (OHIM) because there was a notable divergence among national European IP offices and the OHIM.

The Notice on the Common Communication on the Common Practice of Distinctiveness - Figurative Marks containing descriptive/non-distinctive words is published here
and for explanations to the (FAQ) on Common Practice CP 3. Distinctiveness - Figurative Marks containing descriptive/non-distinctive words please click here.

Source: www.dpma.de and www.tmdn.org


09-29-2015 (Newsletter Issue 15/15)
Canada Joins TMview and Designview
The Canadian Intellectual Property Office has made Canadian trademark and industrial design data available to the Office for Harmonization in the Internal Market (OHIM), TMview and Designview search tools.

Source: www.ic.gc.ca


09-29-2015 (Newsletter Issue 15/15)
China and the USA Join Designview
As of September 14, 2015, the State Intellectual Property Office of the People's Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO) have made their industrial design data available to the Designview search tool.

Source: www.tmdn.org


09-29-2015 (Newsletter Issue 15/15)
ASEAN Designview Officially Launched
ASEAN Designview have been officially launched on August 25, 2015 in Singapore.

Designview contains more than 100,000 design registrations having effects in the participating ASEAN countries. These are Brunei Darussalam, Cambodia, Lao PDR, Malaysia, Philippines, Singapore, Thailand and Vietnam.

Source: www.tmdn.org


09-15-2015 (Newsletter Issue 14/15)
UK Joins Designview
From August 10, 2015, users will be able to search UK design applications in Designview.

Source: www.tmdn.org


09-02-2015 (Newsletter Issue 13/15)
Macedonia Joins TMview
As of July 27, 2015, the State Office of Industrial Property of the former Yugoslav Republic of Macedonia (FYROM) (SOIP) has made its trade mark data available to the TMview search tool.

Source: www.tmview.org


09-02-2015 (Newsletter Issue 13/15)
Updated Guidelines Enter into Force
On August 1, 2015, the second set of the updated OHIM Guidelines entered into force, following their adoption by the President of the Office on July 8, 2015 (Decision EX-15-2).

The corresponding documents are available on the website’s Current trade mark practice page and the Current designs practice page.

The texts can be accessed in English, French, German, Italian or Spanish under a clean version or under a track-changed version.

On September 9, 2015, a webinar on the new Guidelines will be broadcast live.

The OHIM Guidelines are the main point of reference for users of the Community trade mark system and professional advisers who want to make sure they have the latest information on OHIM’s examination practices. However, it needs to be noted that the guidelines are not binding.

Source: Alicante News, July 2015 and www.oami.europa.eu


07-28-2015 (Newsletter Issue 12/15)
Report on Protection and Enforcement in Key Third Countries.
The European Commission has published its biennial report on protection and enforcement of intellectual property rights (IPR) in key third countries.

The report is part of the European Commission's Strategy for the Enforcement of Intellectual Property Rights in Third Countries. It is largely based on an EU survey on the protection and enforcement of IPR throughout the world, carried out by the Office for Harmonization in the Internal Market, and will help the Commission to update its list of ‘priority countries' on which to focus its activities and efforts for improving protection and enforcement of IPR. It will also benefit third country authorities' understanding of the perception of EU users of their IPR systems, particularly in regard to potential areas for improvement.

Despite positive developments and comprehensive legal reforms, enforcement initiatives and the creation of specialised IP Courts, two thirds of goods detained in 2013 at EU borders due to suspected IPR-infringement originated in mainland China. China therefore retains its status as a priority country. The EU has, however, over the years developed close cooperation with China on IP matters and recently signed a Memorandum of Understanding to reinforce this cooperation.

India also remains a big concern for the Commission, in particular its lack of effective patent protection. The report also highlights a general worsening of IPR protection and enforcement in Argentina, Russia and Ecuador compared to the last report in 2013. Accordingly, the Commission has moved these countries up its priority list.
Compared to the situation in 2013, the report identifies notable improvements in Israel and the Philippines. Israel has improved its protection of pharmaceutical products, while the Philippines have taken significant steps to improve the IPR environment, particularly in legislation and enforcement.

The report provides valuable information for EU rights' holders on the effectiveness of IPR regimes in countries outside the EU. It will also enable right holders – in particular small and medium-sized firms – to improve their business strategies and operations to protect their corporate value in intangibles based on intellectual property they own. In particular, they will be able to better manage risk around their IPR when doing business in or with certain third countries.

Click here to see the full report.

Source: European Commission, www.trade.ec.europa.eu


07-28-2015 (Newsletter Issue 12/15)
Payment Platform in 23 EU Languages Available
On 24 January 2015 OHIM switched to ‘Comercia Global Payments', a new banking service provider managed by La Caixa, for all credit and debit card payments. The payment platform, initially only available in the five Office languages (English, French, German, Italian and Spanish), is now ready for use in the remaining 18 languages of the European Union.

The full multilingual spectrum means that the system recognises and automatically redirects users to the payment screen in the language set by their browser.

Source: www.oami.europa.eu


07-28-2015 (Newsletter Issue 12/15)
New Guidelines for Examination CTMs and Registered Community Designs
On July 8, 2015, the President of OHIM has signed the Decision adopting the second part of the revised Office Guidelines, which received a favourable opinion from OHIM´s Administrative Board in May. They will enter into force on August 1, 2015.

The new Guidelines will be available on the OHIM website a few days before they enter into force. They are currently available in PDF form, along with the Decision, here. They are accessible to all users – currently in the 5 languages of OHIM.

The Guidelines have been thoroughly updated with case law from the Court of Justice of the EU, the case law of OHIM's Boards of Appeal, and the outcome of the Convergence Programmes. The revision of the Guidelines will increase consistency and predictability for users, and is aligned with the goals of OHIM's Strategic Plan.

Source: www.oami.europa.eu


07-14-2015 (Newsletter Issue 11/15)
Serbia Joined TMview
As of July 6, 2015, the Serbian Intellectual Property Office (IPORS) has made its trade mark data available to the TMview search tool.

Source: www.oami.europa.eu


06-30-2015 (Newsletter Issue 10/15)
Poland and Latvia Implement Back Office
The Polish Patent Office (PPO) has gone live with the Back Office for trade marks and designs, developed by the Cooperation Fund. The Patent Office of the Republic of Latvia (LRPV) has also begun to manage its national and international trade marks with the Back Office system.

The Back Office system supports the management of the entire trademarks and designs lifecycle by IP Offices, including Registration; Opposition/Cancellation/Invalidity; Recordals; Appeals; International Registration and International Application (trade marks only).

Source: www.tmdn.org


06-16-2015 (Newsletter Issue 9/15)
Agreement Concerning Trademark Reform Reached
On April 21, 2015, the European Parliament and European Council reached an agreement with the European Commission during an inter-institutional discussion on the trade mark reform package.

The new legal framework is aimed at encouraging innovation and economic growth by making trademark registration systems all over the European Union more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal certainty.

It will also improve cooperation between the Office for Harmonization in the Internal Market (OHIM), which is responsible for registering and administering trade marks at European Union level, and the national offices.

Under the agreement, a number of political principles will be incorporated in the new system, including:
- a new structure with a reduced level of fees to be paid by applicants and proprietors of trademarks; such a reduction is justified by the need to render the system more accessible to users and to balance OHIM's budget, which has been producing considerable budgetary surpluses over the years;
- the setting up of an offsetting mechanism to cover expenses incurred by national industrial property offices resulting from the handling of procedures involving EU trade marks. 5% of the OHIM annual revenue is foreseen for the offsetting mechanism, with the possibility of increasing this amount by another 5% in case of a substantive budgetary surplus;
- closer cooperation between national offices and the OHIM in projects to promote convergence of practices and tools in the field of trademarks and designs. The maximum amount of funding for cooperation projects is set at 15% of the yearly revenue of the OHIM;
- the improvement of the governance structure and the establishment of sound financial procedures in the OHIM;
- the renaming of the OHIM to "European Union Intellectual Property Office";
- the implementation of efficient and expeditious administrative procedures by the national offices for revocation or declaration of invalidity of trademarks;
- the adaptation of the designation and classification of goods and services to comply with recent EU case law, in conformity with the international classification established by the Nice agreement.

For more information, please access the EU Commission press release here and the EU Council press release here

Source: www.europa.eu and www.consilium.europa.eu


06-16-2015 (Newsletter Issue 9/15)
Tunisia Joined TMclass
As of May 15, 2015, the Tunisian IP Office Institut National de la Normalisation et de la Propriété Industrielle (INNORPI) joined TMclass.

Source: www.tmdn.org


05-27-2015 (Newsletter Issue 8/15)
Iceland Joined DesignView
As of 18 May 2015, the Icelandic Patent Office (ELS - IPO) has made their design data available to the DesignView search tool.

Source: www.tmdn.org


05-27-2015 (Newsletter Issue 8/15)
Italy Implements Similarity Tool
The Italian IP Office, Ufficio Italiano Brevetti e Marchi (UIBM), implemented the Similarity project on April 21, 2015.

The implementation work began in the framework of a two day workshop that took place at the UIBM headquarters in Rome, at which OHIM and UIBM experts validated 6,800 pairs of goods and services. One week later, 11,000 terms were validated and as a consequence, the project is considered to be implemented.

The Similarity tool, developed by the Cooperation Fund, gathers and shows assessments from the participating IP offices on similarities between goods and services

www.tmdn.org


05-27-2015 (Newsletter Issue 8/15)
Several Balkan Countries Joined TMclass
As of April 20, 2015, the IP Offices of the Intellectual Property Office of the Republic of Serbia (IPORS), the Institute for Intellectual Property of Bosnia and Herzegovina (IIP BIH) and the State Office of Industrial Property (SOIP) of the former Yugoslav Republic of Macedonia (FYROM), have joined TMclass.

TMclass now offers users the opportunity to search and translate terms to and from any of the 34 available languages, including Serbian Cyrillic, Bosnian and Macedonian.

Source: www.oami.europa.eu


04-15-2015 (Newsletter Issue 6/15)
Sweden Implemented Similarity Tool
The Swedish Patent and Registration office (PRV) has recently implemented the Similarity tool , developed within the framework of the Cooperation Fund. With this implementation, 15 national and regional IP offices across the ETMDN are now using similarity.

Similarity is a common database of comparisons of goods and services that allows users to assess whether given goods or services are considered similar or dissimilar – and to what degree – according to the practice of the participating IP offices. Similarity benefits users by bringing more transparency to the decision-taking process of EU national offices and OHIM. Similarity also improves the predictability of opposition decisions.

Source: www.tmdn.org


03-31-2015 (Newsletter Issue 5/15)
The Philippines Joined TMview
As of 23 March 2015, the Intellectual Property Office of the Philippines (IPOPHIL) has made its trade mark data available to the TMview search tool.

IPOPHIL first joined ASEAN TMview which was developed by the Intellectual Property Offices of the ASEAN Member States with the support of the EU-ASEAN Project on the Protection of Intellectual Property Rights (ECAP III Phase II) administered by OHIM.

Source: www.tmdn.org


03-18-2015 (Newsletter Issue 4/15)
Hungary Joined DesignView
The Hungarian Intellectual Property Office (HIPO) has joined DesignView and 13,000 Hungarian designs have been added.

The Hungarian Office has also implemented the Common Examiner Support Tool (CESTO), which provides a harmonised search of key databases to support examiners.

Source: www.oami.europa.eu


02-25-2015 (Newsletter Issue 3/15)
Harmonised Database with Nice 10.15 Updated
The Nice committee of experts conclude on the insertion, change and deletion of terms with regards to the Nice classification content.

The changes to the Nice Classification agreed along 2014 were introduced in the Harmonised Database in January 2015 in all EU languages with the collaboration of all National Offices and BOIP.

Source: www.oami.europa.eu


02-25-2015 (Newsletter Issue 3/15)
Updated Guidelines Enter into Force
On February 1, 2015, the first set of OHIM´s updated guidelines entered into force, following their adoption by the President of the Office on December 4, 2014 (Decision EX-14-4).

The corresponding documents are available under the current trade mark practice page and the current designs practice page of the website.

The texts can be accessed in English, French, German, Italian or Spanish under a clean version or under a version with track changes. With the latter, the user can clearly distinguish the changes that have been implemented since the version adopted last year by the President.

The changes in the guidelines have been summarized in the last edition of Alicante News. An overview of the modifications the Office has implemented can be seen here

The update of the second work package of the guidelines is set to deliver results around mid-2015; therefore the full cycle of revision will be completed by then.

Source: www.oami.europa.eu


02-25-2015 (Newsletter Issue 3/15)
Russia Joined DesignView
As of December 8, 2014, the Russian Patent Office has made its industrial design data available to the Designview search tool, adding information on more than 55 000 Russian industrial designs to the system. Moreover, as of the same date the Russian interface of the tool has become available.

Source: Mikhailyuk, Sorokolat & Partners, Ukraine


01-28-2015 (Newsletter Issue 2/15)
OAPI Joined TMclass
The African Intellectual Property Organization (OAPI) has joined TMclass on January 15, 2015.

OAPI represents 17 African Member States: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d'Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo.

OAPI registers trademarks in both French and English.

Source: www.tmdn.org


01-13-2015 (Newsletter Issue 1/15)
Several Countries Joined DesignView
As of December 8, 2014, the Danish Patent and Trademark Office (DKPTO), the Mexican Institute of Industrial Property (IMPI), the Moroccan Industrial and Commercial Property Office (OMPIC), the Norwegian Industrial Property Office (NIPO) and the Federal Service for Intellectual Property of Russia (Rospatent) have made their design data available to the Designview search tool.

The Austrian Patent Office (ÖPA) has made its design data available to the DesignView search tool as of December 9, 2014.

Additional to that the Korean Intellectual Property Office (KIPO) and the Irish Patents Office (IPO) are new members of DesignView, the registered designs search tool, after making their design data available as of December 15, 2014.

Source: www.tmdn.org


12-09-2014 (Newsletter Issue 19/14)
Iceland Joined TMview
As of 24 November 2014, the Icelandic Patent Office (ELS - IPO) has made its trade mark data available to the TMview search tool.

Source: www.tmdn.org


12-09-2014 (Newsletter Issue 19/14)
Montenegro Joins TMclass
On 20 October 2014, the Intellectual Property Office of Montenegro joined TMclass, a joint project between the Office for Harmonization in the Internal Market (OHIM) and the PTOs of member states.

Source: www.petosevic.com


11-25-2014 (Newsletter Issue 18/14)
Cyprus Joined DesignView
The registered design data of the Patent and Trademark Office in Cyprus has been integrated into DesignView database.

Source: www.tmdn.org


11-11-2014 (Newsletter Issue 17/14)
Payment of Applications in Advance
From 24 November 2014, OHIM will only examine trademark applications and process any mail related to them after they are paid for. This change will enhance the efficiency of the office.

Source: www.oami.europa.eu


11-11-2014 (Newsletter Issue 17/14)
Fast Track Procedure Soon Available
From 24 November 2014, OHIM provides a 'Fast Track' procedure for its users free of charge. The trademark application will be published in half the time or less, as compared to regular applications with this new procedure.

Further, there are going to be no classification deficiencies any more with the 'Fast Track' procedure. Users have to select their goods and services from a database of terms already accepted by OHIM and by almost all national intellectual property offices of the European Union.

For an application to qualify for, and remain in, 'Fast Track' applicants need to, among other conditions:
- Select the goods and services from OHIM's harmonised database, which contains pre-validated and pre-translated terms.
- Pay at the end of the application process or immediately after submission.

Additionally, the application should not trigger any deficiency finding at the time of submission or during its examination by OHIM staff.

More details will be available soon on OHIM website.

Source: www.oami.europa.eu


10-28-2014 (Newsletter Issue 16/14)
Tunisia Joined TMview
As of 20 October 2014, The Tunisian National Institute for Standardization and Industrial Property (INNORPI) has made its trade mark data available to the TMview search tool.

Source: www.tmdn.org


10-28-2014 (Newsletter Issue 16/14)
Iceland and Montenegro Joined TMclass
As of 20 October 2014, the Icelandic Patent Office (ELS) and the Intellectual Property Office of Montenegro (IPOM) have joined TMclass, the goods and services classification tool.

Source: www.oami.europa.eu


10-14-2014 (Newsletter Issue 15/14)
Finland Joined TMclass
As of 8 September 2014, the Finnish Patent and Registration Office (PRH) is a part of the Common Harmonised Database of Goods and Services for trademark classification. As a result, the Finnish translations of the Harmonised Database set are now available to all users through the TMclass application.

Source: www.prh.fi, www.tmdn.org


10-14-2014 (Newsletter Issue 15/14)
Practice of Relative Grounds of Refusal/Likelihood of Confusion
On 2 October 2014, the IP offices implementing the Common Practice have published on their respective websites a Common Communication detailing the Common Practice of the 25 EU and three non-EU implementing offices.

To arrive at a Common Practice, participating offices closely analysed and converged regarding non-distinctive/weak components of marks for the purpose of assessing likelihood of confusion, assuming that the good and/or services are identical, in particular:
- Define what marks are subject to assessment of distinctiveness
- Determine the criteria to assess the distinctiveness of the mark
- Determine the impact on Likelihood of confusion when the common components have a low degree of distinctiveness
- Determine the impact on Likelihood of confusion when the common components have no distinctiveness

The details of the Common Practice can be found in the Common Communication document of the CP5 section in the Convergence area of this website.

Source: www.tmdn.org


09-16-2014 (Newsletter Issue 14/14)
ASEAN TMview Launched
The new ASEAN online trademark information tool, ASEAN TMview, has officially been launched on 26 August 2014 in Singapore.

ASEAN TMview contains more than 2.2 million trademark applications and registrations of the participating ASEAN countries like Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Singapore and Thailand.

The ASEAN TMview interface is currently available in five languages: English, Bahasa Indonesia, Khmer, Lao and Thai.

Source: www.tmdn.org


09-16-2014 (Newsletter Issue 14/14)
Change in Examination of International Registrations Designated in EU
OHIM announced on its website that the office will begin examining the classification of international registrations designated in the European Union (EU), for vague terms as and from 1 October 2014.

This change brings OHIM's practice into line with that of EU national and regional IP offices, as previously outlined in the Common Communication on the implemetation of IP Translator.

On 19 June 2012 the Court delivered its ruling in Case C-307/10 "IP Translator" in which it stated that applicants seeking protection of a trade mark must identify the goods and services for which the trade mark is to be protected 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 trade mark.

In order to align the practice of International Registrations designating the EU with direct filing CTMs, the Office has decided to use the possibility, under Article 4(1)b of the Madrid Protocol, of objecting to terms it considers too broad or too vague, and that lack clarity and precision.

For more information, please click here.

Source: www.oami.europa.eu


09-02-2014 (Newsletter Issue 13/14)
Canada and Norway Joined TMclass
OHIM has announced the integration of CIPO – OPIC (Canadian Intellectual Property Office / Office de la propriété intellectuelle du Canada) and NIPO ( Patentstyret, Norwegian Industrial Property Office ) into TMclass.

Source: www.oami.europa.eu


06-24-2014 (Newsletter Issue 10/14)
New Office Guidelines
The President of OHIM has signed the Decision implementing the new Office Guidelines.

The first part of the new Guidelines came into force in February 2014. Until 31 July 2014, the current Manual of Office Practice and the first part of the new Guidelines will be in effect. After 1 August 2014, both parts of the Guidelines will form the Office's practice.

The new Guidelines will be available on the current practice page of the OHIM website in July. They are currently available in PDF form, along with the Decision, here.

The Guidelines have been thoroughly updated with case law from the Court of Justice of the EU, the case law of OHIM's Boards of Appeal, and the outcome of the Convergence Programmes.

Source: www.oami.europa.eu


06-24-2014 (Newsletter Issue 10/14)
TMview Now Available in Arabic
The graphical user interface (GUI) of TMview is now available in Arabic.

Source: www.tmdn.org


06-10-2014 (Newsletter Issue 9/14)
Italy Joined DesignView
The registered design data of the Italian Patent and Trademark Office has been integrated into DesignView database. Approximately 300,000 Italian designs are available in DesignView.

Source: www.tmdn.org


06-10-2014 (Newsletter Issue 9/14)
Denmark and Romania Joined TMClass
The Danish Patent and Trademark Office (DKPTO) and the State Office for Inventions and Trademarks of Romania (OSIM) have joined the Harmonised Database of Goods and Services.

Source: www.tmdn.org


05-16-2014 (Newsletter Issue 8/14)
New Common Practice on Black & White Marks
OHIM and the participating national offices have issued a Common Communication for trademarks registered in black and white.

Under the new Common Practice, a black & white (or greyscale) mark will only be considered identical to a sign in colour where the differences between the signs are so insignificant that they will go unnoticed by the average consumer. An insignificant difference will be one that a reasonably observant consumer will perceive only upon a side by side examination of the marks.

This change of practice will have consequences for, use, oppositions and priority claims. The practice does not affect infringement issues, use of black and white marks in colour for the purposes of acquired distinctiveness, the assessment of similarities between colours, and colour marks per se.

OHIM will publish the implementation of the Common Practice in its Guidelines on 2 June 2014. The practice will enter into force immediately after publication.

Please note that there is some divergence between the various offices as to whether the new Common Practice applies to pending applications or only applications filed after the relevant implementation date, and also as to whether it applies to pending proceedings or only proceedings filed after the implementation date.

Further, Sweden, Denmark and Norway have been constrained from participating in the new Common Practice because of their national laws. The Common Communication confirms that Italy, France and Finland have also decided not to implement the Common Practice.

Source: www.oami.europa.eu and King & Wood Mallesons, United Kingdom


04-01-2014 (Newsletter Issue 6/14)
China Joined TMView
The Trademark Office of The State Administration for Industry & Commerce of the People's Republic of China (SAIC) has joined TMclass.

Source: www.tmdn.org


04-01-2014 (Newsletter Issue 6/14)
Romania Joined DesignView
The registered designs data of the State Office for Inventions and Trademarks of Romania (OSIM) has been integrated into the DesignView database. Approximately 41,000 Romanian designs are available in DesignView.

Source: www.tmdn.org


03-18-2014 (Newsletter Issue 5/14)
Communication on Acceptability of Classification Terms
The publication of the IP Translator judgment in June 2012, led EU IP offices and OHIM to develop efforts to accomplish convergence regarding classification of goods and services.

In this context, a third Common Communication has been published on 20 February 2014, containing guidelines to identify in which cases a term is sufficiently clear and precise in order to be included in a trademark application.

The European Trade Mark and Design Network had already issued two Common Communications, respectively concerning the interpretation of the IP Translator judgment and the 11 general indications considered insufficiently clear and precise, documents in which minor changes were meanwhile introduced and whose updated versions can be found here and here.

Source: www.marcasepatentes.pt


03-04-2014 (Newsletter Issue 4/14)
South Korea Joined TMView
As of 12 February 2014, The Korean Intellectual Property Office (KIPO) has made its trademark data available to the TMview search tool.

Source: www.tmdn.org


01-21-2014 (Newsletter Issue 1/14)
Russia and U.S. Joined TMView
As of 18 December 2013, the Federal Service for Intellectual Property of Russia (Rospatent) and the United States Patent and Trademark Office (USPTO) have made their trade mark data available to the TMview search tool.

Source: www.tmview.europa.eu


11-18-2013 (Newsletter Issue 16/13)
Developments on TMview and TMclass
As of 11 November 2013, the Greek Ministry for Development and Competiveness (GGE) and the Moroccan Industrial and Commercial Property Office (OMPIC) have made their trade mark data available to the TMview search tool. This last extension brings the total number of offices participating in TMview to 32.

As of 12 November 2013, the German Patent and Trade Mark Office (DPMA) is a part of the Common Harmonised Database of Goods and Services for trade mark classification. As a result, the German translations of Harmonised Database set is now available through TMclass application.

Source: www.oami.europa.eu


11-15-2013 (Newsletter Issue 16/13)
Practice Manual on Classification Amended
The Office for Harmonisation in the Internal Market (OHIM) has amended its 'Manual of Trade Mark Practice'. The Manual concerns examination on classification of goods and services and will enter into force on 25 November 2013.

The Manual can be accessed here. Changes are marked in blue.

Source: www.oami.europa.eu


10-15-2013 (Newsletter Issue 15/13)
Update on Guidelines of TM and Design Practice
OHIM announced on its website that the office is currently in the process of updating its Manuals on trade mark and design practice and transforming them into Guidelines – a unique source of reference for the Office’s practice that will be available in all official EU languages.

The aim is to balance the work evenly over the course of the year. Therefore, the various parts and sections of the Manual on trade mark and design practice have been divided into two working packages, Work Package 1 (WP1) and Work Package 2 (WP2). WP1 is currently in phase three, awaiting consultation at the next meeting of OHIM’s Administrative Board, including feedback from user associations and IP offices received until then. WP2 has been launched on July 1, 2013.

For more information, please check here

Source: www.oami.europa.eu


10-11-2013 (Newsletter Issue 15/13)
Spain Implements Similarity
The Spanish office has implemented the Similarity tool.

This latest implementation brings the total number of offices using Similarity to eight, including OHIM. Similarity is a search tool which allows users to assess whether given Goods and Services are considered similar, and to what degree, or dissimilar according to the participating IP Offices

Source: www.oami.europa.eu


10-01-2013 (Newsletter Issue 14/13)
France Joins Seniority
The French Intellectual Property Office has successfully implemented the Seniority Project. The project enables the harmonisation of seniority information among national IP offices in the EU.

Source: www.oami.europa.eu


09-17-2013 (Newsletter Issue 13/13)
Turkey Joins TMview
Since 02 September 2013 the Turkish Patent Institute has made its trade mark data available to the TMview search tool.

This last extension brings the total number of offices participating in TMview to 30.

Source: www.tmview.europa.eu


09-17-2013 (Newsletter Issue 13/13)
Timetable of Public Holidays 2014
OHIM has published Decision ADM-13-46 relating to the timetable of public holidays for the year 2014. On the dates indicated in the Decision, the Office will not be open for the reception of documents, and any deadlines affected will be extended to the next working day.

The timetable of public holidays for the year 2014 can be seen here

Source: www.oami.europa.eu


07-16-2013 (Newsletter Issue 11/13)
Croatia, Cyprus, Mexico, and Norway Join TMview
On 1 July 2013, Croatia, Cyprus, Mexico and Norway made their trade mark data available on TMView, bringing the number of offices participating in TMview to 29 and providing access to approximately 11m trade marks.

TMView is the result of the International Cooperation and Cooperation Fund programmes managed by OHIM in collaboration with its EU and international partners.

TMclass is available online here

Source: www.ipo.gov.uk and www.oami.europa.eu


06-14-2013 (Newsletter Issue 9/13)
Croatia Integrated into Harmonisation Project
The Croatian version of the Common Harmonised Database on Classification of Goods and Services is now available to all users through the TMclass application.

This is the latest expansion in the Harmonisation Project for Goods and Services, which has been expanding continuously since it was set up. The integration of the national trademark office of the Republic of Croatia (SIPO) into the "Harmonisation community" is another step forward for the database; as it grows, it creates further benefits for European users by improving predictability.

TMclass is available for free, online to all users here

Source: www.oami.europa.eu


06-04-2013 (Newsletter Issue 8/13)
Class Headings Breakthrough Announced
OHIM announced a major breakthrough in the Convergence Programme initiative on the Nice Class Headings Individual Terms.

This effort came about through the interest of national offices, BOIP and OHIM taking a harmonised approach in addressing the Court of Justice ruling in Case C-307/10 “IP Translator” that deemed certain general indications insufficiently clear and imprecise for classification, but did not specify which were classifiable and which were not.

In under a year, an agreement was reached which will result in the creation and publication of a Common Communication on the web sites of all participating offices envisaged by the end of this year. This communication will clearly outline the initiative results and its influence on EU IP practices, as well as when and by whom this common practice will be implemented. This implementation by the EU IP Offices will happen on a voluntary basis.

Please find an overview on how each Trademark Office of the European Union deals currently with trademarks filed before and after the "IP Translator" Judgement as well as more information on how each Office refects and interprets the matter here

Source: www.oami.europa.eu


05-21-2013 (Newsletter Issue 7/13)
KIPO Joins TMclass
The Korean Intellectual Property Office (KIPO) has become the latest office to join TMclass.

TMclass is an online tool based on the Nice Classification system, that helps users correctly classify goods and services when filing a trade mark. Next to KIPO´s database, it also offers access to the databases of EU national IP offices and other major IP offices, including the United States Patent and Trade mark Office (USPTO), the Japan Patent Office (JPO) and the Swiss Federal Institute of Intellectual Property (IPI).

It allows users to search for terms in any of the 25 languages available – 22 EU languages, plus Croatian, as well as Japanese and Korean.

Source: www.oami.europa.eu


05-17-2013 (Newsletter Issue 7/13)
Manual of Trade Mark Practice Amended
The Manual of Trade Mark Practice on Proof of Use has been modified by the Office of Harmonization for the Internal Market (OHIM) to align it with the judgment of the Court of Justice in C-149/11 ‘Leno Merken’.
The revision affects Section II.4.1- Use on the "domestic" market and Section II.4.2 - CTMs: use in the European Union. For further information, please access the manual here

The amendments came into force on 2 May 2013.

Source: www.marques.org


05-17-2013 (Newsletter Issue 7/13)
Malta Joins Seniority
Malta has become the 14th EU National Office to implement the Seniority Project. The Maltese office joins Lithuania, Estonia, Latvia, Sweden, the Slovak Republic, Bulgaria, Benelux, Slovenia, Ireland, Hungary, Portugal, the Czech Republic and Romania in implementation.

Having accurate seniority data is important for Community trade mark owners who have previously registered an identical mark in an EU member state which has been surrendered or allowed to lapse. The project, a part of OHIM´s Cooperation Fund, involves establishing links between entries in the national and Community databases and making the information accessible online.

Source: www.oami.europa.eu


04-15-2013 (Newsletter Issue 5/13)
CTM Reform Proposals Available
The Commission adopted proposals for a revision of the Regulation on the Community trade mark and for a recast of the Directive approximating the laws of the Member States relating to trade marks. The package of initiatives aims at upgrading, streamlining and modernising the current legislation in order to make the trade mark registration systems all over the Union more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security.

For more information, please click here

Source: www.ec.europa.eu


04-15-2013 (Newsletter Issue 5/13)
Euroclass Becomes TMClass
OHIM has announced that Euroclass has been rebranded to be called TMclass to external website on 18 March 2013. Subsequent to the successful integration of USPTO and JPO, EuroClass will soon include the Korean classification database, further solidifying its importance as a global IP resource. It is this global expansion that has led to the decision to rebrand.

For more information, please click here

Source: www.oami.europa.eu, www.ecta.org


01-18-2013 (Newsletter Issue 1/13)
Manual on Trademark Practice for Collective Marks Changed
The Manual of Trademark Practice for collective marks focusses on the particularities which affect this type of mark in comparison to individual ones. It was changed recently, in order to reflect some recent decisions of the Board of Appeal.

The new version allows any legal person governed by public law to become an owner of a CCTM.

Before that ownership of collective CTMs was limited to (i) associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued; and (ii) legal persons governed by public law. The definition of the first type of owners did not present difficulties. As regards the legal persons governed by public law, the former Manual required that they must have members who have the right to influence the regulations of use of the mark. Under the former practice, ‘Consejos Reguladores’ could be owners, but not individual municipalities. This had created some difficulties and controversial opinions.

Source: www. oami.europa.eu


01-18-2013 (Newsletter Issue 1/13)
Ireland and Poland Joined TMview
Trade marks from the Irish Patent Office and the Polish Patent Office have now been added to the TMview search tool which provides free access to trade mark applications and registrations from a number of leading trade mark offices.

Source: www.tmview.europa.eu


01-18-2013 (Newsletter Issue 1/13)
Finland Goes Live with TM E-Filing
On 30 November 2012, the tenth new tool released under the Cooperation Fund, TM e-filing, went on a restricted go-live to local users in Finland.

The Finnish office are the first to run the e-filing tool, which OHIM will also use once it is incorporated into the Office´s new website, due for launch in April 2013.

Source: www.oami.europe.eu


11-19-2012 (Newsletter Issue 17/12)
Austria and Germany Joined TMView
Trade marks from the Austrian Patent Office and the German Patent and Trade Mark Office have now been added to the TMview search tool which provides free access to trade mark applications and registrations from a number of leading trade mark offices.

The latest expansion brings the total number of offices which have made their trade mark data available to TMview to 23. Besides Austria and Germany these are: Bulgaria, Benelux, Czech Republic, Denmark, Estonia, Finland, France, Hungary, Italy, Latvia, Lithuania, Malta, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, the UK, WIPO and OHIM. With the addition of about 184.000 Austrian trade marks and more than 1,6m German trade marks, TMview now provides access to more than 9,1m trade marks in total.

Source: www.tmview.europa.eu


11-01-2012 (Newsletter Issue 16/12)
Malta Joined TMview
Trade marks from the National IP Office of Malta, Commerce Department have now been added to the TMview search tool which provides free access to trade mark applications and registrations from a number of leading trade mark offices.

The latest expansion brings the total number of offices which have made their trade mark data available to TMview to 21. Besides Malta these are: Bulgaria, Benelux, Czech Republic, Denmark, Estonia, Finland, France, Hungary, Italy, Latvia, Lithuania, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, the UK, WIPO and OHIM. With the addition of about 50.000 Maltese trade marks, TMview now provides access to almost 7,3m trade marks in total.

Source: www.tmview.europa.eu


11-01-2012 (Newsletter Issue 16/12)
Extension of Time Limit
OHIM extends the time limit for the affected parties of the Hurricane "Sandy". All time limits that were to expire between 28 October 2012 and 11 November 2012 are extended until 11 December 2012.

For more information, please click here

Source: www.oami.europe.eu


07-17-2012 (Newsletter Issue 11/12)
Change in Practice on Use of Class Headings
The Community Trademarks Office OHIM has decided to change their practice on the use of class headings in lists of goods after the decision from the European Court of Justice in the "IP Translator" case.

The decision states that:
The specifications of goods should be expressed with sufficient clarity and precision to enable the competent authorities and economic operators to determine the extent of the protection conferred by the trade mark.
It is not precluded to use the general indications of the class headings of the Nice classification of goods and services.
An applicant who uses class heading for identifying the goods/services for which protection is sought, must specify whether the application is intended to cover all goods or services of the relevant class or only some of the goods/services.

- For Community trade marks registered before 21 June 2012 which use all the general indications listed in the class heading of a particular class, OHIM will consider that the intention of the applicant was to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made.
- For Community trade mark applications filed before 21 June 2012 and which are still not registered, OHIM considers that the intention was to cover all the goods or services included in the alphabetical list of the particular class concerned, unless the applicants specify that they had sought protection only in respect of some of those goods or services in that class.
- For Community trade mark applications filed after 21 June 2012, the applicants must expressly indicate whether or not the intention is to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services in that class

Source: Zacco AS, Norway


07-17-2012 (Newsletter Issue 11/12)
Hungary joins TMview
More than 115,000 trademark from the Hungarian Intellectual Property Office have been made available to the TMview search tool.

Source: www.tmview.europa.eu

05-15-2012 (Newsletter Issue 8/12)
Trade Mark Practice Changed
OHIM has amended the General Provisions in the Manual of Trade Mark Practice with effect from May 1, 2012.

For further information, please access the amendments of the General Provisions here

Source: www.oami.europe.eu


04-17-2012 (Newsletter Issue 6/12)
New Practice of Opposition Proceedings
OHIM has changed its practice in opposition proceedings when notifying the opposition to the applicant.

As from the April 1, 2012, in oppositions based on earlier CTMs, OHIM will no longer send the applicant the corresponding CTM-online extract attached to the Offices’ letters but will add a link to the CTM Online database along with the following text:

“Where the opposition is based on Community trade marks please access the relevant information via CTM-ONLINE on the Office’s Internet site (http://oami.europa.eu/ows/rw/pages/QPLUS/databases/searchCTM.en.do).”

This would allow the applicants to download information about the earlier CTMs and will spare the parties precious time. The change of practice will apply to all applicants.

The Manual on Trade Mark Practice has been amended to reflect the above and the new text now reads as follows (The Manual Concerning Opposition, Part 1: Procedural Matters, Page 8):

“The applicant immediately receives a copy of the notice of opposition (and of any document submitted by the opposing party) for information. In case the opposition is based on a Community trade mark, he is also informed that he can access any information about earlier Community trade marks via CTM-ONLINE, which is available on the Office’s Internet site”.


Source: www.oami.europa.eu

03-06-2012 (Newsletter Issue 4/12)
Further Countries Joined TM View
The Office for Harmonization in the Internal Market (OHIM)
provides the second version of TMView which offers new features to improve the user experience, including additional searching and filtering options. It has also expanded to include trade marks from the offices of Lithuania, Romania and Sweden. With this addition TMView now provides access to close to seven million trade marks from the seventeen participating offices. TMview allows users to search databases for existing trade marks held in major Intellectual Property Offices.

Source: www.oami.europa.eu


02-07-2012 (Newsletter Issue 2/12)
Classification Manual Incorporated
OHIM announced that the Knowledge Circle “Goods and Services Issues” has incorporated the Classifcation Manual in the Examination Manual as part B.3., which entered into force on February 1, 2012.
The document reflects the current practice of the Office and has also been brought in line with the 10th edition of the Nice Classification.

For more information, please click here.

Source: www.oami.europa.eu


01-23-2012 (Newsletter Issue 1/12)
Croatia to Join the EU
Croatia applied for the European Union membership and signed the Accession Treaty on December 9, 2011 to become a member. Subject to the Treaty's ratification by all Member States and Croatia, the country will become the 28th Member State of the European Union on July 1, 2013. A referendum on the EU accession was held in Croatia on 22 January 2012. It passed with more than 60 percent votes cast in support of the accession.

Croatia’s membership of the European Union brings with it implications for the Community trade mark and designs systems and the Treaty outlines that all CTMs and RCDs registered in Member States before the date of accession shall be extended to the territory of Croatia on the day of accession.

For more information please click here


12-01-2011 (Newsletter Issue 14/11)
Adoption of 10th Edition of Nice Classification
OHIM has announced that it will apply the 10th Edition of the Nice Classification as from 1 January 2012 for all Community trademark applications. Pending CTM applications or already registered CTMs with a filing date prior to 1 January 2012 will not be reclassified, even at the request of the CTM applicant or proprietor, nor will reclassification be allowed at the time of renewals of the CTM registration.

For more information, please click here

Source: www.oami.europa.eu


11-08-2011 (Newsletter Issue 13/11)
Mediation Service Available
OHIM has launched a mediation service in inter partes proceedings, following the decision of the first instance and in parallel to appeal proceedings (which shall then be suspended, when appropriate), allowing the parties to reach an amicable settlement without the requirement of a decision from the Boards on the substance.

Mediation talks will normally be held in Alicante and the service itself is offered free of charge. However, in order to avoid the contested decision becoming final, the party being adversely affected by the decision must, within the two months following the notification of the contested decision, file an appeal and pay the appeal fee of EUR 800. A one-off fee of EUR 750 is charged in the event that the parties wish to hold the mediation talks in Brussels in order to cover the traveling expenses of the mediator.

It is the role of the mediator to bring the parties together and assist them in finding common ground on which a potential settlement may be made, but not to act as judge nor to offer opinions on the rights and wrongs of each party’s arguments.

Detailed documentation on all aspects of the mediation can be accessed here


Source: www.oami.europa.eu

10-01-2011 (Newsletter Issue 11/11)
Mediation Service on the Way
OHIM is planning to introduce a mediation service as an alternative to proceeding with an appeal the the Boards of Appeal in trademark and design cases. The Service will be available from the end of October through the team of specially-trained mediators drawn from the Office's staff.
To qualify for the new service, an appeal must already have been filed (with payment of the normal appeal fee of EUR 800). If the mediation meetings take place at OHIM's premises in Aliante there is no further fee to pay. As an alternative, provision has been made for mediation to be offered at OHIM's Brussels office on payment of a fixed fee of EUR 750 to help defray the mediator's travel expenses.

The process of mediation is not binding on the parties but is expected to lead to the settlement of the appeal prcedure and to binding contracts between the parties in many cases. The altermative is to proceed with an appeal, which takes an average 1.5 years and in some cases is followed by further time consuming and expensive litigation again before the first Instance or at the Court of Justice in Luxembourg.


Source: www.oami.europa.eu

06-07-2011 (Newsletter Issue 8/11)
Electronic Certified Copies not Always Accepted
In May 2011, OHIM introduced a new online service allowing users to obtain automatically generated certified copies of application requests and CTM registration certificates from the CTM-ONLINE database.

However, it turned out, that the electronic certified copies are accepted in many European countries but they are not accepted in many other territories such as Canada, Hong Kong, India, China, Mexico, Argentina, among others. For those countries, certified copies need to be requested in the original manner by submitting a form and paying a fee.

Source: www.marques.org


05-10-2011 (Newsletter Issue 7/11)
Provision of Certified Copies
The Office for Harmonization in the Internal Market (OHIM) introduced a new online service allowing users to obtain automatically generated certified copies of application requests and CTM registration certificates from the CTM-ONLINE database.
The service is free of charge. The automatically generated certified copies have the same value as the certified copies sent on paper upon request and can be used either in electronic format or printed.

For more information please click here


Source: www.oami.europa.eu

05-03-2011 (Newsletter Issue 7/11)
France Joined TM View
OHIM informs on its website that France has joined TMview, a search tool providing free access to trademark applications and registrations from several trademark offices. To access TMview please click here

Source: www.oami.europa.eu

03-15-2011 (Newsletter Issue 5/11)
Forms for Legal Entities Changed
OHIM has changed a number of its downloadable forms to incorporate a section indicating the "legal form" or type of legal entity making the application.

In some countries "legal forms" of entities, such as "Incorporated", "Sociedad Anónima" or "Aktiengesellschaft" are not included in the official name. However, this information must be on the form where applicants are legal entities.

To access the downloadable forms please click here


03-14-2011 (Newsletter Issue 5/11)
New "eSearch plus" Service Launched
OHIM has launched a new search service combining the data in ten previous databases. eSearch plus, which is currently in trial or "beta" version, allows the easy searching and monitoring of Community trade marks and registered Community designs, searching for owners, representatives and related case-law.

OHIM announced that the new service offers advanced features including more complete information, sorting and filtering options, and new means of setting up "alerts" delivered via RSS.

All existing services such as CTM Online, RCD Online and the case-law databases will continue to be available for some time. It is planned to phase them out once eSearch plus is on final release.

The current eSearch plus service is in English only. The final version will be made available in all the OHIM languages.

To access eSearch, please click here


03-01-2011 (Newsletter Issue 4/11)
Online Filing of Oppositions
OHIM is providing its users a new online service for filing their Notice of Opposition from March 7th, 2011. In response to user feedback, the new Opposition Online filing has been designed to be both quicker and simpler, offering a number of functionalities which bring it in line with the existing CTM and RCD e-filings tools.

For more information please click here


01-01-2011 (Newsletter Issue 1/11)
Ireland and Malta Adopt Harmonised Goods & Services List
Ireland and Malta adopt harmonised list of goods and services
The Irish and the Maltese Patent Offices have decided to adopt the harmonised list of goods and services for trade marks as drawn up by the UKIPO and OHIM. This is part of a project to create a common list, with approved translations, accepted by participating EU trade mark offices and other international partners.

As a result of their successfully joining the EuroClass project on December 13th, 2010, the content of the harmonised list of goods and services as presented in the EuroClass application will be accepted by the Irish and Maltese office. The decision of both offices is a significant step forward in the EuroClass cooperation project, which compares the goods and services terms used by participating offices. This project is supported by WIPO who act as an arbitrator in the event of any disagreements.

For more information please click here


11-01-2010 (Newsletter Issue 16/10)
Manual of Trademark Practise Amended
OHIM has amended the Manual of Trademark Practice. To view the amendments please click here

11-01-2010 (Newsletter Issue 16/10)
New Feature in E-Filing
OHIM has announced that the CTM E-Filing has been upgraded to allow applicants using MyPage to opt for an e-mail notification when the CTM application is published. The new feature improves integration with the CTM Watch system, which allows users to monitor the status of selected CTMs. Now, an e-mail notification of publication can be requested directly at the time for application.

For more information please click here


10-04-2010 (Newsletter Issue 15/10)
New Forms
OHIM has published two new forms designed to simplify the process of requesting a change of name or address and altering representative details on OHIM’s databases.

The new forms, “Requesting changes of names and addresses" and "Appointing/deleting/replacing representatives", complement the existing all-purpose "Recordal Application Form", but are both simpler and easier to use.

OHIM advises the use of the new forms for the frequently requested changes indicated in their titles, while the existing all-purpose form continues to be used for other Recordals such as transfers and licences.

For more information please click here


09-15-2010 (Newsletter Issue 14/10)
Changes in Practise Introduced
OHIM is introducing changes in practice on suspensions and extensions of time, and new guidelines on the presentation of evidence of proof of use in opposition proceedings, effective by September 15th, 2010.

For more information please click here


08-09-2010 (Newsletter Issue 13/10)
Free Database for Spanish Trademarks Now Available
Spanish trademarks can be now searched via the free online tool TMview. The tool enables trademark search on various official online database registers.

The inclusion of Spain increases the number of IP offices covered by the joint search tool to nine.

The service already provides free access to trademark data from OHIM and WIPO, as well as the UK, Czech, Italian, Benelux, Portuguese, and Danish Intellectual Property Offices. Data from Estonia, Slovenia, Slovakia, and France will follow later this summer and the aim is for it eventually to cover all 27 EU Member States. The inclusion of 1m Spanish trademark applications and registrations will bring the total number of searchable trademarks within the system up to more than 5m.

To access TMview please click here


07-12-2010 (Newsletter Issue 12/10)
New Deadline for Correcting Translations
The Office of Harmonization in the Internal Market (OHIM) has changed the deadline for correcting translations in CTM applications.

OHIM supplies the applicant with a translation of the list of goods and services and other text in the designated second language (DE, EN FR, IT or ES) and has allowed a period of two months in the past for the response for any amendments.

The OHIM has reduced this time limit to one month effective from July 12th, 2010.


Source: www.oami.europa.eu

05-05-2010 (Newsletter Issue 10/10)
Free Internet Searchable Database Launched
The Office for Harmonization in the International Market (OHIM) launched on April 13, 2010, TMview, a free online tool that enables trademark searches on various official online database registers.

In the first phase of TMview, the databases of the European trade marks and designs registration office (OHIM), the World Intellectual Property Organization (WIPO) and the UK, Czech, Italian, Benelux, Portuguese, and Danish Intellectual Property Offices are being made available. Later this year, the data from eight other EU Offices is expected to join the project.


Source: www.oami.europa.eu

05-05-2010 (Newsletter Issue 10/10)
Future Revision of the Trademark System
The European Union council published the Draft Council conclusions on the future revision of the Trade Mark system in the European Union on April 15, 2010.

The draft contemplates, among other topics:
1) a specific provision to be introduced to define the framework for cooperation between the Office of Harmonization in the Internal Market (OHIM) and the national offices of Member states
2) the OHIM will ensure harmonization of practice and tools between member countries
3) the OHIM will cooperate with national offices in combating piracy and counterfeiting
4) the creation of a legal foundation for the allocation of funds to the national offices of Member states

For more information please click here


11-23-2009 (Newsletter Issue 5/09)
CTM Bulletin Goes Daily
Since Monday 23 November OHIM started to publish Community Trade Mark registrations on a daily basis (Monday-Friday). The B1 section of the Bulletin covering registrations is being published every day from Monday to Friday. In addition the renewals section (D1) is also being published daily when data is available. On days when no renewals are ready for publication, section D1 will be blank. All sections of the Bulletin will continue to be published as before on Mondays.

The move to more frequent publication of parts B1 and D1 of the CTM Bulletin is intended to provide a more up-to-date service for the Office's customers. Once the new service has become established, it will enable the Office to move more smoothly to electronic certificates, which are currently being tested and are due to be introduced during December.


Source: www.oami.europa.eu

European Union Trademarks were introduced on April 1st, 1996, in addition to the national and international registration. On March 23, 2016, Regulation (EU) 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation entered into force and contains a number of changes. With a registration at the European Union Intellectual Property Office (EUIPO) (trademarks, patterns, and designs) in Alicante (Spain), the trademark will be protected in all member countries of the European Union. A prior application or registration in the home country of the applicant is not required. In addition, the home country of the applicant does not have to be a member of the European Union either. Owners of national trademarks in the member states of the European Union may file opposition against a trademark applied for as European Union Trademark. Therefore, it is recommended to conduct a search in each member country before applying for a European Union Trademark.
Member states of the European Union are Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovak Republic, Slovenia, Spain, Sweden and United Kingdom. European Union Trademarks are also valid in the following overseas departments: Guadeloupe (GP), Martinique (MQ), French Guyana (GF), Saint Barthélemy (BL), Saint Martin (MF), Réunion (RE), Åland Islands (AX), Madeira, Azores, Ceuta and Melilla, Canary Islands and Gibraltar.
Nice classification, 11th edition
Registrable as a trademark is a sign capable to distinguish the goods and services of one organisation from those of another.
Trademarks are words, logos, devices or other distinctive features and they can be represented in any appropriate form as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. They can consist of, for example, the shape of goods, their packaging, colours or combinations of colours, three-dimensional marks, sound marks, multimedia, holograms, etc.
The following trademark types are registrable: trademarks, service marks, certification and collective marks.
Applications are filed at the European Union Intellectual Property Office (EUIPO) in Alicante.
Multi-class applications are possible.
An agent is not necessary for applicants who have an office or residence in one of the member countries. Those applicants, who do not have their office or residence within the European Union (EU) or European Economic Area (EEA), must be represented by a professional representative or a legal practitioner entered on the list kept by the Office. The application must be written in any official language of the European Union. Upon filing, the applicant must specify a second language, one of the five languages of EUIPO (English, German, French, Italian or Spanish). This second language can be used as procedural language in case of opposition, limitation, or nullification procedures.
Foreign applicants do not need a domestic registration.
The application process includes an examination on formal, absolute grounds and search for prior trademarks (note to proprietors if expressly requested).
Before the trademark is registered, it will be published in the “EU Trademark Bulletin”.
The average processing time from application to registration is about 7 months.
The opposition period is 3 months from publication date of application.
A trademark registration is valid for 10 years from the application date and may be renewed for an indefinite amount of further periods each of 10 years.
The grace period for renewals is 6 months from the expiration date of the trademark.
If the trademark has not been - genuinely – used within 5 consecutive years following registration, or its use is interrupted for 5 consecutive years, it may be cancelled for non-use through an action before the EUIPO Invalidity Division or in the context of a counterclaim in an infringement action before a national court. The European Court of Justice (ECJ) has established binding case law setting out different factors to be considered when analyzing what constitutes “genuine use”. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.
As of March 23, 2016, a new fee structure will apply with a one-fee-per-class system. The official fee for filing a European Union Trademark is EUR 1,000 for the first class in paper and EUR 850 electronically. The fee for the second class is EUR 50 and the fee for the third class is EUR 150. The fee for all subsequent classes is EUR 150.
Search type First class Add. class
Word Mark Search (availability) 150,00 € 35,00 €  
Word Mark Search (identical) 60,00 € 0,00 €  

The Prices above are SMD Group Search Fees

Country Surveys of Member States

Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Agreement
10-02-2017
Praxi Intellectual Property S.p.A., Rome, Italy  

05-29-2015
FMO Law Firm, Vienna, Austria  

05-27-2015
Praxi Intellectual Property S.p.A., Rome, Italy  


Beck Greener Patent & Trade Mark Attorneys





Fulwood House, 12 Fulwood Place
London WC1V 6HR
United Kingdom (UK)
Tel + 44 20 7693 5600
Fax + 44 20 7693 5601
mail@beckgreener.com
www.beckgreener.com

Beck Greener is a well-respected London based firm of attorneys practising in patents, trade marks, designs and copyright.

Beck Greener’s experience and expertise in trade marks is recognised by the industry. The firm is amongst the Top 20 filers of British Trade Mark Applications, top 30 filers of Community Trade Mark applications and in the Top 5 for appearances at oral hearings. In addition, partners Ian Bartlett and Rowland Buehrlen both appear in the Top 10 of the list of trade mark attorneys and solicitors by appearance at hearings before the UK Intellectual Property Office.*

We work with clients across a number of commercial sectors and of various sizes. We represent large multinationals and internationally famous brands, alongside small businesses, and have a notable reputation in the entertainment industry.

We file and prosecute applications to register trade marks in the UK Intellectual Property Office (UKIPO), and at OHIM. We also represent clients applying for International registrations under the Madrid system. Further, using firms of foreign attorneys, we file and prosecute cases abroad. We also advise and act in relation to trade mark opposition and enforcement.

Our trade mark services include:

- Strategic portfolio management
- Searching, due diligence and risk management
- Drafting specifications of goods and services
- Filing and prosecution of trade mark applications
- Filing and prosecuting oppositions, and invalidity and revocation actions
- Enforcement of rights
- Maintenance of registered IP rights
- Litigation and advising in IP disputes
- Advice on unregistered design rights, industrial design and copyright
- Transactional advice and documentation including assignments and licences
- Renewals

*Source: ITMA Review, Issue 422, December 2015/January2016

FMO Law Firm



Dr. Franz-Martin Orou, LL.M.

Dr. Franz-Martin Orou, LL.M.
Kapitelgasse 7/5
1170 Vienna
Austria (AT)
Tel + 43 1 890 257 10
Fax + 43 1 890 257 50
office@fmo.co.at
www.fmo.co.at

Our Law Firm was founded in 2004 in Vienna/Austria as a full service “IP-boutique”. We are dedicated to profound research and tailor made service, herewith generating the best solutions for our clients. All that with highly-competitive pricing.
We are representing domestic and international clients that are doing business internationally: global sourcing, global producing, global selling.
In case you need assistance in IP matters in Austria and the European Union (Community Trademark or Community Design) we will be happy to assist you.

The focus of FMO Law Firm is on Intellectual Property Law (IP): Trade Mark Law, Design Law and Copyright Law. Furthermore, we are specialized in selected fields of Business Law, e.g. unfair competition law.

European Union Intellectual Property Office (EUIPO)
Avenida de Europa, 4
03008 Alicante
Spain
Tel +34 965 139 100
Fax +34 965 131 344
Mail information@euipo.europa.eu
www.euipo.europa.eu