European Union: Key Reforms to European Union Trade Mark Law

Last Updated: 23 March 2016
Article by David Gourlay

Important changes to European Union trade mark law take effect later this month.

The end of 2015 saw an important conclusion to long-standing work on reforming the European Union trade mark system. This culminated in two landmarks being reached. A new EU Trade Mark Directive (Directive (EU) 2015/2436) was published in the Official Journal of the European Union on 23 December 2015. The following day, a new EU Trade Mark Regulation (Regulation (EU) 2015/2424), amending the existing EU Trade Mark Regulation (Regulation 207/2009/EC), was published in the Official Journal of the European Union.

Member States have three years in which to adapt their national laws to reflect the provisions of the Directive. The majority of the changes to the existing EU Trade Mark Regulation will, however, take effect on 23 March 2016.

Summary

The 2015 Trade Mark Directive

  • Published in the Official Journal on 23 December 2015 and came into force 20 days later.
  • Repeals the 2008 Trade Mark Directive from 15 January 2019.
  • Member States have three years to amend their national laws to comply with the new Directive. Member states, however, have seven years, i.e. until 15 January 2023, to establish administrative procedures for revocation and invalidity proceedings.

The 2015 Amending EU Trade Mark Regulation

  • Published in the Official Journal on 24 December 2015 and enters into force on 23 March 2016.
  • Some changes will take effect on 24 September 2017.

Aims of The Reform

The EU trade mark reform package is aimed at modernising, harmonising and simplifying EU trade mark law.

Although the new legislation maintains the dual system of national and EU trade marks, its aim is to strike a level of consistency between the treatment of national and EU trade marks. EU trade mark law is also being modernised with the hope of making the trade mark registration system more accessible. It is hoped that improving accessibility will encourage innovation and economic growth. The average cost of EU trade marks will fall as will the average time to register an EU trade mark.

Key Changes and their Effects at European Union level

The following are some of the more notable changes and their effects:

  • European Union Trade Marks: Trade marks currently registered in the EU are called Community Trade Marks (CTMs). They will become known as European Union Trade Marks (EUTMs).
  • European Union Intellectual Property Office (EUIPO): This new body will replace the Office for Harmonisation in the Internal Market (OHIM). This change in name is not just a face lift as the EUIPO's task list will be extended to include the following:
    • management of the EU trade mark system (previously the exclusive task of the OHIM);
    • promotion of convergence through cooperation with national IP offices;
    • management of the EU-wide database for orphan works; and
    • management of the European Observatory on Infringements of Intellectual Property Rights.

In its present form the OHIM carries out the majority of these tasks informally whereas the Amending Regulation formalises this arrangement with the EUIPO.

  • New classification rules: Holders of Community trade marks which were filed before 22 June 2012 (the date of the decision in IP Translator (Case C-307/10)) and which are registered in respect of the entire heading of a Nice class have a six month period (i.e. from 23 March to 23 September 2016) to file a declaration to identify exactly the goods and/or services which they wish to be protected (provided that those goods or services were included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing). If they do not take advantage of this opportunity, then with effect from 23 September 2016 the scope of their protection will be restricted to the goods and services covered by the literal meaning of the indications included in the heading of the relevant class. Owners of such CTMs should consider very carefully, therefore, whether they should take action and file a declaration.
  • New fee system: Average costs will be reduced (by up to 37%) for EUTM applicants as well as for holders of EUTMs. The current cost for registering (online) an individual mark covering up to three classes is €900. Each additional class costs €150. The renewal cost is currently €1,350 including three classes and €400 for each additional class. The new cost structure will work as follows:
    • Registration
      • individual mark, one class = €850
      • second class = €50
      • each additional class after the second class = €150
    • Renewal
      • individual mark = €850
      • second class = €50
      • each additional class after the second class = €150

The move from a basic fee covering up to three classes to a one-class-per-fee system is notable. Applicants will pay a reduced fee for a single class application, the same fee as at present for a two class application and a greater fee for applications covering three or more classes. The uniformity in the new structure between registration and renewal will assist applicants to estimate the costs of applying for and maintaining a EUTM.

  • Protections against goods in transit: The Amending Regulation provides EUTM holders with improved means of stopping the transit of goods bearing identical signs through the EU whether or not such goods are to be sold within the EU. A defence is available where the mark is not protected in the final country of destination of the goods.
  • "Own name" defence: The use by a natural person of their own name or address in the course of trade continues as a defence to trade mark infringement. However, the defence does not extend to non-natural persons such as companies and partnership and the unauthorised use of a registered trade mark as a trade name will constitute infringing use.
  • Graphical representation: The Amending Regulation removes the requirement for marks to be capable of graphical representation. Until now this requirement has traditionally made it more difficult for applicants to register non-traditional trade marks such as smell (olfactory), moving image and sound marks. Instead signs will have to be capable of "being represented on the Register of European Union trade marks,("the Register"), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor". The EUIPO will have to formulate criteria to determine what marks can and cannot be reasonably registered as a EUTM. This will be interesting to observe since any changes to registerable marks will flow down to Member States' national IPOs. This change will take effect from 24 September 2017 and before then the EUIPO will provide guidance on alternative media and formats which meet the new requirement.
  • European Union certification trade mark: EU certification marks will be introduced from 24 September 2017, although national certification marks are already available in some member states. Certification marks allow certifying bodies to allow those that adhere to their certification system to use the mark as a sign for goods and/or services which comply with the certification requirements.

 

Key European Union Trade Mark Changes at a Glance

From 23 March 2016

  • Community trade marks become known as European Union Trade Marks.
  • OHIM is replaced by the European Union Intellectual Property Office.
  • New fee system introduced reducing average cost for EUTM holders.
  • Six month window for trade mark owners to clarify specifications of marks filed before 22 June 2012.
  • Protections against infringing goods in transit from entering the EU.
  • Narrowing of the "own name" defence.
From 24 September 2017

  • Removal of requirement for a trade mark to be capable of graphic representation with greater scope to register non-traditional marks.
  • EU certification marks available.

Changes to UK Trade Mark Law

For the moment the UK Government has published the European Union Trade Mark Regulations 2016. The Regulations take effect on 6 April 2016 and amend the Trade Marks Act 1994 and the European Community Trade Marks Regulations 2006. The new Regulations make technical amendment to the Trade Marks Act 1994 and the 2006 Regulations to change "Community Trade Mark" references to "EU Trade Mark", and to insert references to the new numbering of articles of the European Union Trade Mark Regulation. In good time prior to 15 January 2019, the UK Government will also need to consult on changes to UK trade mark law to reflect the requirements of the new Trade Mark Directive.

© MacRoberts 2016

Disclaimer

The material contained in this article is of the nature of general comment only and does not give advice on any particular matter. Recipients should not act on the basis of the information in this e-update without taking appropriate professional advice upon their own particular circumstances.

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