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New and Improved Trade Mark System for the European Union

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We are pleased to announce that on 15 December 2015 the EU Parliament adopted the Trade Mark Reform Package. The package includes a Regulation (amending existing EU trade mark law) and a Directive (requiring member states to further harmonise national trade mark laws). The new Directive was published on 23 December 2015 and will enter into force 20 days later (but member states have a 3 year term to implement most of the changes required). The amended Regulation will enter into force on 23 March 2016, 90 days after its publication on 24 December 2015.

The main points from the revised Regulation are:

  • The OHIM will be re-named the European Union Intellectual Property Office (EUIPO).
  • The Community Trade Mark will be renamed as the European Union Trade Mark.
  • Certification marks will be allowed; currently only ordinary marks and collective marks are provided for by the Regulation.
  • Application fees will be on a per-class basis, meaning that the minimum “up to 3 classes” fee will be abolished. The official fee for one class will be less than the current three class fee. This is good news for SMEs and those only requiring protection in one class! It is hoped that this change will also reduce “cluttering” of the register by marks in classes which are not really needed by the trade mark owner.
  • Renewal fees will be reduced significantly to the same level as application fees.
  • There will be no requirement for a trade mark to be capable of graphic representation – a trade mark must merely be represented technologically in a manner in which is can be precisely identified. This may assist with the filing of non-conventional marks such as smells or sounds.
  • Priority will have to be claimed upon filing; currently it is possible to claim priority within 2 months of filing.
  • If you wish to receive a search report from the CTM register (later to be called EUTM register) it will be necessary to “opt-in”. Currently this is provided on an automatic basis. There will be no fee for opting in.
  • There will be an exclusion from registration of all signs that consist exclusively of characteristics which (a) result from the nature of the goods, (b) are necessary for a desired technical result or(c) give significant value to the goods. Currently this exclusion is limited to shape marks only.
  • The codification of the result of the IP TRANSLATOR case from 2012, dealing with the use of class headings in specifications of goods/services. Prior to the decision a class heading was deemed, by OHIM, to cover all goods/services in the class. Going forward specifications will be interpreted literally. It is important therefore to file for a list of goods/services which mentions the exact goods/services of interest.
  • There will be a six months window for trade mark owners to submit a revised specification of goods/services for cases where the current specification contains the wording of the class heading.
  • EU designations under an IR will proceed more quickly than in the past. The 3 months opposition period will start 1 month after publication by the EUIPO rather than the current 6 months.
  • It will be possible to oppose an application on the basis of geographical indications and designations of origin.
  • The codification of the DAVIDOFF case relating to opposition on the basis of reputation; it will be possible to file opposition on the basis of reputation, whether or not the goods/services covered by the opposed application are similar OR dissimilar to the goods/services for which the opponent claims reputation.
  • In oppositions, “proof of use” will need to be filed for the five years period up to the filing date of the opposed application, rather than the publication date of the opposed application as now.

The main points from the new harmonisation Directive are:

  • It will be possible for a trade mark owner to have infringing/counterfeit goods seized in the EU, even if the goods are only in transit to a final destination outside of the EU, as long as the owner has rights in the final destination.
  • All Intellectual Property Offices must provide an administrative process for opposition, revocation and invalidity. Malta will need to introduce opposition proceedings and Benelux, France, Spain and Italy will need to introduce administrative cancellation proceedings. This should lead to significant cost savings compared to Court proceedings.
  • All states must provide for the cancellation of a trade mark filed in bad faith.
  • All states must provide for reputation-based refusal. Cyprus and Lithuania do not currently provide for refusal on that basis.
  • All states must provide a 6 months grace period for late renewal of registrations.

We welcome the changes to be implemented, and will be looking more fully at the impact of them, and the steps which trade mark owners should be taking in light of them, over the coming weeks.

If you require further information regarding the Reform Package please contact your usual Forresters’ attorney who will be happy to advise you.