Briefing

EU Trade Mark Reforms – an update

Posted by: Peter Wienand | Date posted : 17/03/2016

Just before Christmas the EU adopted its new package of trade mark reforms, in the form of the new Regulation (EU) 2015/2424 (coming into force on 23 March 2016) and the Trade Marks Directive (Directive (EU) 2015/2436) (which came into force on 13 January 2016 but allows Member States until January 2019 to implement most of the provisions).  The reforms have been on the cards since at least 2008 as part of the EU's bid to modernise and streamline its trade mark system, or as the original Commission proposal put it:

"to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems."[1]

Name changes

  • The Office for Harmonization in the Internal Market (OHIM) will be renamed as the European Union Intellectual Property Office (EUIPO). Community Trade Marks are to become 'EU trade marks' and this name change will apply to existing CTMs.

Fee changes

  • Fees (including for renewals) are to be reduced and there will be a payment system of one fee per class. This is good news for those filing single class applications but worth noting that for clients who want to file for 3 or more classes in a single application, the current system is more favourable so they may want to take advantage of this before the fees change.
  • The rationale with the fee changes is to make the process cheaper for SMEs (who are more likely only to need one class) and reduce the congestion caused by filing across multiple classes because of the 'three for the price of one' incentive of the current system.

Rules on graphic representation

  • The requirement that marks be capable of being represented graphically has been removed, to allow for greater flexibility and legal certainty for newer forms of technology – so sounds and colours, for example, are explicitly mentioned as possible forms for which protection can be sought.[2]

Class specifications and filing

  • Under the new legislation, reflecting the ECJ's ruling in the IP Translator case, it will be important to identify "with sufficient clarity and precision" the goods and services for which protection is sought.[3] Whereas before, the use of a class heading meant that all possible goods and services within that class were covered, under the new system "the use of general terms should be interpreted as including only all goods and services clearly covered by the literal meaning of the term."[4]
  • Owners of Community Trade Marks applied for before 22 June 2012, which are registered in respect of the entire heading of a Nice class, have six months from when the new Regulation comes into force to declare that their intention had been to cover all goods and services within the class (provided that they are included in the list for that class of the edition of the Nice Classification in force at the time of filing) – i.e. beyond those covered by the literal meaning of the class heading.[5]
  • If the register is amended in this way, protection is included in the Regulation for third party trade mark owners who might be affected. It provides that where their use of the trade mark commenced before the register was amended and did not infringe the amended mark owner's rights based on the literal meaning of the goods and services in the register at the time, they shall be able to continue to use their mark.
  • Trade mark owners who do not do this within the six month period need to be aware that their trade mark will be deemed to extend only to the goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class which could therefore weaken their protection.

Absolute grounds for refusal

  • Absolute grounds for refusal now include signs consisting exclusively of shape or another characteristic which:
  1. results from the nature of the goods themselves;
  2. is necessary to obtain a technical result; or
  3. gives substantial value to the goods.
  • Absolute grounds for refusal have also been extended to include designations of origin and geographical indications – including traditional terms for wine and traditional specialities.[6]

Infringement

  • Using a registered trade mark as a trade or company name (or part of such) is a specific infringement.
  • The defence of 'use of own name' in accordance with honest business practices can now only be relied on by natural persons.  Companies can no longer use this defence.
  • Protection against counterfeit goods is to be strengthened so that trade mark infringement will occur if there is transit of the goods through the EU, rather than the goods having to be released for free circulation in the EU, unless the importer/holder of the goods is able to prove that the trade mark owner is not entitled to prohibit the sale of goods in the country of final destination.[7]

Harmonisation of procedure

  • Member states are required to harmonise key aspects of their national trade mark procedures: "the designation and classification of goods and services covered by a trade mark application should follow the same rules in all Member States and should be aligned to those applicable to EU trade marks."[8]

Grounds for revocation

  • An EU trademark will be liable to revocation if it is not put to use within a continuous five year period, commencing on the date when the mark can no longer be opposed, or when a decision terminating the opposition proceedings becomes final or when the opposition is withdrawn.[9] Revocation can also occur if the trade mark becomes generic or is liable to mislead the public.[10]
  • A defendant in infringement proceedings, or an applicant, can request the claimant (or opponent) to furnish proof that, during the five year period preceding the date of bringing the action, the trade mark has been put to genuine use in connection with the goods or services in respect of which it is registered and which are cited as justification for the action.

Opposition period

  • For parties opposing EU designations in international registrations, the window for opposition remains three months, but this period will now begin one month after publication rather than six months (as currently applies).

Points to consider

Short term

  • Awareness of fee changes: worth considering making applications before the Regulation comes into force in March if they would benefit from the multi-class discount of the current system.
  • Pre-June 2012 CTMs: consider a declaration regarding original Nice class intentions within 6 months of the Regulation to ensure extra protection is secured.

Longer term

  • Consider including company names in watch services.
  • Importance of ensuring clarity in drafting to reflect the new approach to class headings.
  • Consider the need/opportunity for new applications in the light of changes to the rules on graphic representation which widen the scope of what can be protected.

If you require further information on anything covered in this briefing please contact Peter Wienand (peter.wienand@farrer.co.uk; 020 3375 7355) or your usual contact at the firm on 020 3375 7000.

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Farrer & Co LLP, March 2016



[1] Proposal for a DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL to approximate the laws of the Member States relating to trade marks (Recast) – 2 April 2013, para 1.2

[2] Directive , Article 3 and Regulation, Article 1(8)

[3] Regulation para 25

[4] Ibid

[5] Ibid Article 1 para 28(8)

[6] Directive, Article 4(1) and Regulation Article 1(9)(b)

[7] Regulation, paras 16 and 17 and Directive, paras 22 and 23

[8] Directive, para 37

[9] Ibid - Article 19 para 1

[10] Ibid – Article 20