OHIM issues guidelines for Community trademark renewals

European Union

The Community trademark will be 10 years old in 2006 and the first renewals will take place at that time. With this in mind, the president of the Office for Harmonization in the Internal Market (OHIM) has issued guidelines for Community trademark owners setting out the requirements for renewal.

Some of the main points in the guidelines are as follows:

  • A letter will be issued to the trademark proprietor, or to its representative if one exists, no later than six months prior to the expiry date. This letter will be copied to all parties having a registered right in the mark (eg, a licensee).

  • The request for renewal must be in the form of a signed, written request. It is not enough just to pay the fee. However, if the fee is paid in time, this deficiency can be remedied by submission of a signed, written request.

  • The representatives of trademark owners who have been issued with an identification number need only quote this number in the relevant correspondence with the OHIM (ie, they need not provide full name and address details).

  • Any new representative must file an authorization.

  • The renewal request can be filed in any of the five languages of the OHIM, namely English, French, German, Italian or Spanish.

  • The official fee is €2,500 for a mark in up to three classes; each further class attracts an additional fee of €500.

  • The fee must be paid within the six months ending on the last day of the month in which the registration term ends; if it is not, there is a grace period of six months for renewal during which an additional fee of 25% of the renewal fee is payable, subject to a maximum of €1,500.

  • Renewal fees may not be paid before the initial letter requesting payment is issued.

  • The OHIM will not debit renewal fees from current accounts held at the OHIM, unless an express request for renewal is filed.

Chris McLeod, Hammonds, London

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