The EU Trademark Reform Proposals: a chance for the SMEs?

Symbole copyrightOn March 27 the European Commission presented a package of initiatives in order to make the trademark registration system throughout the European Union “cheaper, quicker, more reliable and predictable”(1).

This package contains three elements: a recast of the 1989 Directive (codified as 2008/95/EC) approximating the laws of the Member States relating to trademarks, a revision of the 1994 Regulation (codified as 2007/2009/EC) on the Community Trademark, and a revision of the 1995 Commission Regulation (2869/95) on the fees payable to the OHIM.

The proposed trademarks’ reform plans to remove the existing structure of ‘three classes for the price of one’ to replace it by a ‘one class per fee’ system that would be applicable both for the application of Community trademarks and for national trademark applications in Member States. Thus it would enable companies, and particularly SMEs, to apply for trademarks according to their actual needs. Currently, the present system allows for the registration of trademarks for up to three classes for a single fee. According to the proposal, applicants should be able to apply for the registration of a trademark for a single class. Thus, the fees payable would be lower for an application in only one or two classes, whereas a three-classes application would remain the same. The aim of this proposal is to allow access to trademark protection to all companies. As such, the Reform’s purpose is to increase legal certainty, to limit the risk of litigation and to enhance the competitiveness of the European Market.

This new fee system would equally reduce the costs of trademark renewal. It would also limit the potential congestion of trademark registers, which would no longer have to deal with trademark applications for goods and services classes, which are not actually needed by the applicant.
In practical terms, whereas the current fees payable for a three-classes application are € 900, a single-class application would cost € 775. A separate class fee would be paid for each additional product or service class applied for beyond the first one (€ 50 for the second and € 75 for the third class). Application fees for fourth and subsequent classes would remain unchanged (€ 150).

The European Union aims to adopt the amended Fees Regulation hopefully before the end of 2013. The Commission should adopt it after prior endorsement by the competent Committee on OHIM fees.