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REFORMS TO EUROPEAN UNION TRADE MARK LAW

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.

Change of Name

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.

Application / Renewal fees

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.

Applications (e-filing)

Number of classes Current fees (Euros) New fees (Euros)
1 900 850
2 +50
3 +150
4 (and each thereafter) +150 each +150 each

Renewals (e-filing)

Number of classes Current fees (Euros) New fees (Euros)
1 1350 850
2 +50
3 +150
4 (and each thereafter) +400 each +150 each

Scope of the Specification of Goods and Services

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,

and

(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,

and

(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.

The Application Process

  •  Priority

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.

  • Search reports

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.

  • List of goods and services

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.

  • Graphical representation

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.

  • Article 7(1) – Absolute Grounds of Refusal

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.

Opposition period for EU designations of international registrations

  • The three month opposition period for EU designations of International Registrations now starts one month (rather than six months) after the date of republication of the details of the designation by the EUIPO. This should result in EU designations being granted protection about five months earlier than previously.

Proof of use in opposition and cancellation proceedings

  • If a later mark is being attacked by an earlier mark that has been on the register for five years or more at the date of filing or the date of priority of the later mark, the owner of the later mark can request proof that genuine use of the earlier mark has taken place in the five year period ending at the filing date or date of priority of the later mark, as applicable; previously the five year period was calculated from the publication date of the later mark.

Infringement

  • It is now specifically stated that use of a sign that is the same as, or similar to, an EUTM, “as a trade or company name or part of a trade or company name” may be prohibited. This clarifies the current law.
  • The right now exists to prohibit preparatory acts regarding packaging, labels, tags, security and authenticity features and devices, etc. bearing the mark, which would, if used in relation to goods or services, be an infringement of the EUTM owner’s rights.
  • The proprietor of an EUTM will not be entitled to prohibit the use of a later registered mark where that later mark would not be declared invalid in an invalidation action. This extends the previous rules on “dormant marks”. It means that proprietors of earlier marks cannot prevent the use of, or invalidate, a later mark if, at the filing date or priority date of the later mark, the earlier mark could have been revoked for non-use.
  • It will not be possible for the proprietor of an EUTM to bring infringement proceedings if the other party is using a sign or indication which is not distinctive, provided that the use is in accordance with honest practices in industrial or commercial matters.

Other Changes

There are various other changes; of particular note are:

  • It is made clearer that designations of origin, traditional terms for wines, and geographical indications and now also traditional specialities guaranteed and plant variety denominations can be the basis of objections on absolute grounds. Designations of origin and geographical indications can also be used as a ground for opposition.
  • The ability for EUTM owners to prohibit others using the same or a confusingly similar sign in comparative advertising in a manner that is contrary to the relevant EU directive has been included in the Regulation.
  • Previously a CTM proprietor could not stop the use of a CTM in relation to goods which had been put on the market in the European Union under that trade mark by the proprietor or with his consent; this provision has been changed to refer to the European Economic Area (that is the EU plus Iceland, Liechtenstein and Norway).
  • Subject to certain safeguards, it will be possible for the proprietor of an EUTM to stop goods from a third country from being put in transit through the EU (without being released for free circulation in the EU) if they bear, without authorisation, marks that are identical to, or in effect indistinguishable from, an EUTM registered for those goods.
  • There are also many technical changes, including those relating to the organisation and running of the Office.

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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.

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