REFORMS TO EUROPEAN UNION TRADE MARK LAW
On 23 March 2016 significant changes to European Union trade mark law came into force through the implementation of a new EU Regulation. This affects what were previously called Community Trade Mark (CTM) applications and registrations, including the cost and content of applications and contentious proceedings. Some of the more significant changes are discussed in further detail below. A number of specific provisions, many technical, but also, in particular, the introduction of a new EU certification mark (which was previously dealt with as a Community collective mark), will be implemented in October 2017.
The Office for Harmonisation in the Internal Market (OHIM) became known as the European Union Intellectual Property Office (EUIPO). Correspondingly, the Community Trade Mark (CTM) is now called the European Union trade mark (EUTM). The new terms will be used in the rest of this briefing sheet. The EUIPO is also responsible for Registered Community Designs but these continue with the same name.
The changes of name may give new opportunities for people making false claims that they are an official and legitimate trade mark organisation requesting payment – please be alert to unusual requests for payment in connection with EUTMs.
The EUIPO has moved to a one-fee-per-class system for application and renewal fees. The tables below set out the changes to the official fees. There are significant reductions for renewals. Please note that renewal must now be by the date of expiry of the registration, which is the tenth anniversary of the application. Previously the deadline for renewal was the end of the month in which renewal was due. The fees relating to EU designations of International Registrations have been similarly changed.
There have been small decreases in the official fees for filing oppositions and cancellation actions.
|Number of classes||Current fees (Euros)||New fees (Euros)|
|4 (and each thereafter)||+150 each||+150 each|
|Number of classes||Current fees (Euros)||New fees (Euros)|
|4 (and each thereafter)||+400 each||+150 each|
One of the more significant provisions that has been introduced is the possibility of filing a declaration that could affect the scope of the specification of goods and services and thus the protection afforded to an EUTM registration. In order to take advantage of that provision:
(i) The EUTM must have been applied for before 22 June 2012,
(ii) be registered in respect of the entire class heading (or headings) of the Nice Classification of Goods and Services.
In that case, the proprietor may declare that their intention at the date of filing had been to seek protection in respect of goods and / or services beyond those covered by the “literal meaning” of the class heading, provided that:
(a) the goods and / or services intended to be covered are included in the alphabetical list in the Nice Classification for that class / classes applicable at the time that the application for registration was made,
(b) the goods and / or services intended to be covered are indicated in a clear, precise, and specific manner,
(c) the declaration is filed by 24 September 2016.
If no declaration is filed, the EUTM will be deemed to cover only the goods or services clearly covered by the literal meaning of the class heading(s).
It should be noted that any EUTMs amended by a declaration are limited, in that they cannot be used to challenge third party use or registration of a mark where the use or application process of the later mark started before the amendment, and the later mark would not have infringed the earlier EUTM based on a literal meaning of the goods or services claimed.
The United Kingdom Intellectual Property Office has always followed the literal meaning approach – “it means what it says” – and, in light of this, UK attorneys have tended to do the same in drafting lists of goods and services. Consequently in many cases the introduction of this provision seems unlikely to have a significant impact, as the list of goods and services is likely to already cover the goods and services of interest to the proprietor. Nevertheless, now would be a good time to re-evaluate the scope of any registrations to see whether they still offer sufficient protection.
Similar provisions apply to EU designations of International Registrations.
Any claim to priority must be filed together with the application; it is no longer possible to claim priority up to two months after filing the application.
Searches for earlier EUTM applications, registrations and EU designations have become optional and must be requested at the time of filing the application (or just after filing for EU designations). However, the proprietors of earlier cited EUTMs and EUTM applications will be notified of the publication of the application (or of the existence of the EU designation) regardless of whether the applicant has requested an EUTM search. Another development is that EUTM proprietors may opt not to receive such surveillance letters. The system of requesting national searches, in some Member States is still available and is optional upon request and payment of a fee.
The principles laid down by the Court of Justice of the European Union in the landmark IP TRANSLATOR case are enshrined in the Regulation. This requires that a list of goods and services must be identified with “sufficient clarity and precision”. Furthermore, general indications in class headings are acceptable provided that they are clear and precise. Their scope will be interpreted literally, and will not be deemed to cover all the goods or services in the alphabetical list of the relevant class, nor all the goods or services in the class.
The current requirement that a mark must be capable of being represented “graphically” will be removed in October 2017 and replaced with a requirement that the “clear and precise subject matter of the protection afforded to its proprietor” can be determined. The recitals to the Regulation state that “a sign shall be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
In theory, this change could make it easier to register non-conventional marks, such as sounds, smells or tastes, especially with advances in technology. However, in practice it may still be difficult to represent some of these kinds of marks in a clear, precise and objective way. Furthermore, such marks may still face objections, for example due to lack of distinctive character, or under the amended Article 7(1)(e) – see below.
The previous exclusions relating to shapes are contained in Article 7(1)(e) – which does not allow for the registration of signs that consist exclusively of a shape which results from the nature of goods themselves, or which is necessary to obtain a technical result, or which gives substantial value to the goods. These provisions have been extended so that instead of just shape, the wording now refers to the shape, or another characteristic.
There are various other changes; of particular note are:
Please feel free to speak to a member of our Trade Mark team for further advice regarding any of the changes.
This information is simplified and must not be taken as a definitive statement of the law or practice.