Community trade marks (CTMs) can be sold, licensed, modified and renewed. Changes to registered CTMs are published in the Community trade marks bulletin.
How to stay protected
A CTM registration lasts for 10 years but can be renewed indefinitely. Every 10 years you will be faced with the question: do I want to renew my trade mark? The answer depends on your brand strategy.
You have the following three options.
Renew. Online renewal costs €1 350 (plus €400 per class where a CTM covers more than three classes of goods and/or services). If you want to stay protected throughout the EU, renew online.
Convert. If you want to maintain your trade mark in certain Member States only, you can do so by converting your EU trade mark into national registrations. IP bridge
Abandon. If you decide not to renew your trade mark in the EU, the rights associated with it will expire.
When to renew
It is your responsibility to make sure you observe the time limit for renewal. However, OHIM will generally inform you or your representative six months before expiry that your CTM is due for renewal. Any other person holding a right to your CTM, e.g. a licensee, will also be informed by the Office.
The renewal form should be submitted and the renewal fee must be paid within the six months preceding your CTM's expiry date. The form may be submitted right up until the last day of the month in which the protection ends.
If you have failed to observe the time limit but still wish to renew your mark, you can still do so for six months after the expiry date, but there is a 25% surcharge.
Every period from the first list starts and ends with a step presented in the next list.
- Registration period
Late online renewal
Renewal period starts
Last day for renewal with regular fee
Last possibility for renewal
How to renew
Your CTM should be renewed online. There is a paper form but, as it is more expensive to process this, the fee for renewing on paper is €1 500 as opposed to €1 350 for renewing online. Don't forget that you cannot change your trade mark when renewing it. You can restrict the list of goods and services you applied for 10 years ago but you cannot add goods or services.
Let us know if your details change
e.g. your name or that of your company, address or contact details.
If you have not appointed a representative, we'll need to contact you direct. It is therefore crucial that you inform us of any change in your personal details. Even if you have appointed a representative, it is in your interest to keep the details concerning your business up to date. We, or a third party, may need to contact you.
There is no official time limit. The sooner you make us aware of any changes the better.
If you have a representative, inform them and they'll do the rest. You can also easily do it yourself via your online User Area. Just access your User Area and use the options menu to make the appropriate changes to your personal details. Alternatively, send us a fax indicating your OHIM ID number and the changes.
Changes to personal details must not affect the applicant's/owner's identity. A change in the applicant's identity is called a transfer.
Legal persons can only have one official address. In case of doubt, OHIM may make a request for evidence of the legal form or address.
When indicating your ID number, you will not have to state all the rights that belong to you. The change will automatically apply to all of them.
Can I sell or lease my CTM?
Your CTM is an asset. Ownership can be licensed or sold. The main difference between these options is that when you transfer your CTM you transfer ownership to another party permanently, whereas when you license it you retain ownership. It's like selling or renting your house. As soon as an agreement has been reached, you should let us know the details.
Licensing and transferring ownership — details
Whether or not you decide to license or transfer your CTM is up to you. All we need to be sure of is that we have correctly recorded the outcome. Here are some issues to consider:
To license or to transfer?
|Fee||There is no administrative fee.||
Administrative fee - €200 per trade mark
Maximum fee of €1 000 (providing that the parties are the same in all licences).
|Geographical Scope||Your right will be transferred for the whole EU.||Rights can be licensed for specific countries in the EU.|
|Time||Your right will be transferred without any time limit.||You can license your right for a specific period.|
|Goods and services||You can transfer only part of your list of goods and services.||You can license only part of your list of goods and services.|
As soon as an agreement has been reached between you and another party, let us know.
All you need to do is request that a transfer or licence be recorded in the register: this request is referred to as a recordal. You can file a recordal quickly and easily online via your User Area.
Alternatively, a simple request by fax, signed by you and the other party, will be enough. If you have appointed a single professional representative for both parties (and the latter is representative of the current owner), this representative may sign the request on your behalf. In such cases, you do not need to file a copy of the deed of transfer or licence.
Why to review your scope after registration
You might wish to review your CTM's scope of protection, either for reasons of strategy or because of external factors, for example if a competitor threatens to attack your right unless you reduce your CTM's scope. Remember, you can only restrict the scope of your specification of goods and services. You cannot increase it. When you restrict the scope of your CTM once it has been registered, we call this a partial surrender.
When to review your scope after registration
Immediately. Just let us know. But please remember that you will not subsequently be allowed to reinstate your original list.
How to review your scope after registration
The easiest way is to use the online partial surrender form in the User Area. You can also send us your request by fax. Your request can be signed by you or your representative. It should be in clear and unambiguous terms. Please note that no new registration certificate will be issued after you have reduced the scope of protection. A fresh certificate is issued only where OHIM has to make a correction on its own account. If you want to obtain a new document – whether certified or not – you can request one via the 'inspection of file' section in your User Area.
The scope of your application can also be revised any time before registration by requesting a limitation by fax.
What else can you do with your right?
There are also other, less common, things that you can do with your right. You will find more information within your User Area, but the basics are summarised for you here.
Conversion: (IP bridge) This is the bridge between CTMs and national marks. If your application is refused or your CTM ceases to exist, either because you have abandoned it or because it has been refused or cancelled, you can convert it into one or more national applications. Converted national trade marks maintain their CTM filing date.
Division: This allows you to divide your CTM into two or several marks.
Rights in rem: This allows you to use your trade mark as security.
Seniority: (IP bridge) This allows you to claim the seniority of an earlier national trade mark (or an earlier international registration with effect in a Member State). In this case, the CTM application represents a consolidation of earlier national registrations. If you claim seniority from one or more earlier registered national marks and the seniority claim is accepted, you may decide not to renew the earlier national registrations. If you abandon or allow your national trade mark to lapse, you would still be in the same position as if the earlier trade mark had continued to be registered. A seniority claim can be made within two months of the CTM's filing date or after its registration.