Trade marks that cover Nice class headings can be extended Owners of CTMs filed before 22 June 2012 that cover one or more of the Nice class headings will be given a six month period during which they can expand the list of goods and services covered by their marks (Article 28(8) of the revised CTMR). This provision follows on from the Court of Justice's judgement in IP Translator, which ruled that the use of the Nice class headings in trade mark specifications did not mean that all goods or services within that Nice class were covered. This ruling was contrary to OHIM's practice at the time, so it has been felt desirable to give trade mark owners the opportunity to add in other goods and services from the Nice classification. Provisions have been included in the new CTMR to ensure that these additional indications cannot be asserted against third parties who have obtained trade marks or commenced use prior to the amendment of the register. Brand owners in the pharmaceutical sector and related industries who filed CTMs for the Nice class headings prior to 22 June 2012, may wish to note that: (c) the Nice class heading for class 5 covers Pharmaceutical and veterinary preparations but not, for example, diagnostic preparations; (d) the Nice class heading for class 10 covers surgical, medical, dental and veterinary apparatus and instruments but not, for example, medical clothing and medical funiture; and (e) the Nice class heading for class 42, covers medical services but not pharmaceutical services or other human healthcare services. will require changes to the law in a number of Member States, including Italy and Spain. Members News New Members We are delighted to welcome the following new members to the Group: Clare Jackman of Norton Rose Fulbright LLP, London, UK clare.jackman@nortonrosefulbright.com Aurelie Boissaye of Biofarma, Suresnes, France aurelie.boissaye@servier.com Matias Noetinger of Noetinger & Armando, Buenos Aires, Argentina mnoetinger@noetar.com.ar David Aylen of Gowlings International Inc., Moscow, Russia david.aylen@gowlings.com Ezgi Baklaci of Moroglu Arseven Law Firm, Istanbul, Turkey ebaklaci@morogluarseven.com Fee changes The practice of the basic CTM filing fee covering up to three classes has been scrapped. OHIM's fees will be reduced slightly from EUR €900 to EUR €850 for one class applications; will effectively stay the same for two class applications; and will increase by EUR €150 for applications covering three or more classes. Whilst this means that application fees are broadly increasing, it is obviously good news for those pharmaceutical companies who only wish to cover class 5 and will perhaps also help to reduce the cluttering of the register. Most other fees, including renewal fees, are being reduced – renewal fees for a three class mark, for example, are being reduced from EUR €1,350 to EUR €1,050. Moves and Mergers John Ward is now working for Alcon (part of the Novartis Group) in Geneva, Switzerland. John can be contacted at john.ward@alcon.com Jonathan Day has left Arnold & Porter LLP and is now with Carpmaels & Ransford LLP, London, UK. Jonathan can be contacted at jonathan.day@carpmaels.com Birgitte Waagepetersen has left Horten to join Budde Schou A/S in Copenhagen, Denmark. Birgitte can be contacted at bwa@buddeschou.dk Fabio Pezzolato has left Chas Hude to join Zacco A/S in Copenhagen, Denmark. Fabio can be contacted at Fabio.pezzolato@zacco.com Jacob Bremer is now with BarentsKrans N.V. in The Hague, The Netherlands. Jacob can be contacted at jaap.bremer@barentskrans.nl Chris McLeod has left Squire Patton Boggs to join Elkington & Fife in London, UK. Chris can be contacted at chris.mcleod@elkfife.com Rebecca Lawrence formerly with Powell Gilbert, will join Redd Solicitors LLP in London, UK, as a partner, on 27 September 2015. Her email address will be rebecca@redd.eu. Please remember to let us know of any changes to your contact details. You can notify me either via the PTMG website www.ptmg.org or directly to Lesley@ptmg.org or by writing to me at Tillingbourne House, 115 Gregories Road, Beaconsfield, Bucks, HP9 1HZ Lesley Edwards PTMG Secretary Timeline The expectation is that the new TMD and the revisions to the CTMR will be adopted towards the end of 2015. Most of the substantive legal changes that arise from the revisions to the CTMR will come into force 90 days after its publication in the Official Journal, which will be shortly after the revisions are adopted. However, the removal of the graphic representation requirement and many of the procedural changes are not due to take place until 18 months after its adoption. The time scale for transposition of the TMD is longer, with Member States being given three years to put in place most of the necessary legal and administrative changes to comply with the new TMD (the exception being the requirement for administrative cancellation procedures, which Member States will have seven years to comply with). The substantive changes to trade mark law, including the rights enjoyed by trade mark owners, will not apply to national marks until the day after that deadline expires. The consequence of this is that there will be a period of almost three years in which there are significant differences between the rights enjoyed by holders of CTMs and holders of national trade marks. Increased harmonization The new TMD also provides for a much greater level of harmonization, partly of substantive law but mainly of registry practice and procedure. These include mandatory administrative procedures for revocation and invalidity actions, which 5