European Union: The New EU Trademark Law

Last Updated: 1 April 2016
Article by Constantin Rehaag

The Amending Regulation brings about a number of changes, the most obvious being the replacement of the term "Community Trademark" by the term "European Trademark" (EUTM) and the renaming of the "Office for Harmonization in the Internal Market" to "European Union Intellectual Property Office" (EUIPO). Some other changes involve:

  • The EUIPO has now the right to re-open the examination of absolute grounds on its own initiative at any time before registration and the filing of EUTM applications through national offices will no longer be possible.
  • Trademark owners shall be allowed to prevent the entry of infringing goods and their placement in all customs situations, including transit, transshipment, warehousing, free zones, temporary storage, inward processing or temporary admission, even where those goods are not intended to be placed on the Union market.
  • In infringement proceedings, the proprietor of an EUTM shall not be entitled to prohibit the use of a later registered EU trade mark where that later EUTM would not be declared invalid.
  • The graphical representation requirement will be changing for EUTMs. It will become easier to file non-traditional trademarks e.g. sound marks.
  • It will not be possible to register signs as EUTMs which consist exclusively of e.g. the shape, or another characteristic, of goods which is necessary to obtain a technical result.
  • Certification trademarks are eligible for registration.
  • The new fee structure will be as follows

    • Basic fee for the application for an individual EU trade mark by electronic means - EUR 850.
    • Fee for the second class of goods and services for an individual EU trade mark - EUR 50.
    • Fee for each class of goods and services exceeding two for an individual EU trade mark - EUR 150.
  • With regard to EU designations of International Registrations the three months opposition period will commence one month after the publication by the EUIPO.

This Amending Regulation will enter into force on 23 March 2016.

In spite of changes that will facilitate the prosecution and enforcement of EUTMs, there are some challenges for owners of registered EUTMs, whereby the most notable and challenging amendment for trademark owners will be the following:

Article 28 of the Amending Regulation codifies the existing trademark practice established by ECJ judgment C-307/10 – "IP Translator" (what you see is what you get), dated 19 June 2012 – as follows:

[...]
(2) The goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought.

(3) For the purposes of paragraph 2, the general indications included in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision set out in this Article.

(4) The Office shall reject an application in respect of indications or terms which are unclear or imprecise, where the applicant does not suggest an acceptable wording within a period set by the Office to that effect.

(5) The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood. [...]

(8) Proprietors of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing.

The declaration shall be filed at the Office by 24 September 2016, and shall indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the proprietor's intention. The Office shall take appropriate measures to amend the Register accordingly. The possibility to make a declaration in accordance with the first subparagraph of this paragraph shall be without prejudice to the application of Article 15, Article 42(2), Article 51(1)(a), and Article 57(2).

EU trade marks for which no declaration is filed within the period referred to in the second subparagraph shall be deemed to extend, as from the expiry of that period, only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class.[...]

The President of the OHIM has issued a Communication (No. 1/2016) on Article 28(8) of the Amending Regulation. This Communication provides an Annex (the "Annex") containing a non-exhaustive list of examples of goods and services clearly not covered by the literal meaning of the general indications of the Nice class headings for each of the editions of the Nice classification concerned (6th to the 10th edition).

Owners of EUTMs applied for before 22 June 2012 in respect of the entire heading of a Nice class and which are intended to cover goods and services listed in the Annex, need to declare what they actually intended to protect on the date of filing. Please note that the Annex is only a guideline, which identifies the goods and services that are clearly not covered by the literal meaning of the headings.

The respective declaration has to be filed with the EUIPO by 24 September 2016, and must indicate, in a clear, precise and specific manner, the goods and services originally covered by the proprietor's intention.

If EUTM owners do not file such declaration within this six months period, EUTMs bearing the class headings will be considered to extend only to goods or services clearly covered by the literal meaning of the Nice class indications.

The Directive will further approximate the national laws of the EU member states. In particular it provides for

  • a broader protection of well-known trademarks.
  • actions for annulment of national trademarks, which are based on bad faith, to be introduced in all EU member states.
  • the possibility to introduce certification marks.
  • a defense in infringement proceedings, whereby the proprietor of a national trade mark shall not be entitled to prohibit the use of a later registered national trade mark where that later trade mark would not be declared invalid.
  • the introduction of swift and efficient proceedings on the administrative level resulting in national trademarks being annulled and struck off.

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