The EU-reform will effect far-reaching changes in the trademark law of the European Union and its Member States.
On December 24, 2015 the amendment of the „Directive to approximate the laws of the Member States relating to trade marks“ (Directive 2008/95/EC) and the modernization of the “Community Trade Mark Regulation” (Regulation No. 207/2009/EC) was published. In the same instant, the implementing regulation (Regulation No. 2868/95/EC) is being changed and the regulation on the fees payable (Regulation No. 2869/95/EC) will be repealed.
The Regulation will enter into force 90 days after publication, thus in March 2016. The implementation of the new Directive on a national level will still require some time, however. The national legislations have to implement the changes within three years.
The following are among the most relevant reform changes:
Changes in terminology
One amendment concerns the terminology. This entails the replacement of “Community trade mark” by “European Union trade mark”. In addition, the name of “The Office for Harmonization in the Internal Market (trade marks and designs)” is replaced by “European Union Intellectual Property Office”.
Requirement of graphic representability is deleted
Up to now, a trademark can only be registered if a graphic representation is possible. This requirement, especially for unconventional trademark forms such as sound marks or marks based on odors, frequently constituted an insurmountable obstacle for the application, which often led to a negative decision in the application process. In the future, a trademark can already be registered when the trademark is represented 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. This means the technical progress is taken into consideration and the representation in every suitable form is sufficient.
Clearer indication of goods and services
Up to now, all goods and services in a specific class could be covered by mention of the generic terms. In the future, precise terms of goods and services of the trademark must be indicated by the applicant, because the general indications of the class headings shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The important issue is that the changes apply not only for new applications but retroactively for all trade marks applied before 22 June 2012 which are registered in respect of the entire heading of a Nice class. The result is that the protection scope can be reduced if the owner does not declare until September 24, 2016 that and which goods and services not covered by the literal meaning of the respective class headings should be covered by the protection of the trademark. There is a need for immediate action!
Time for plea of non-use
While until now, the owner who has given notification of opposition furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use, in the future it will be concerned to the date of filing or the date of priority of the EU trade mark application.
Addition to catalogue absolute grounds for refusal
The catalogue of absolute grounds for refusal will be changed insofar that the regulations cover all marks which are excluded from registration for the protection of geographical indications, designations of origin, traditional terms for wine, traditional specialities guaranteed and variety denomination.
Rights conferred by an EU trade mark
The proprietor shall be entitled to prevent third parties using the sign as a trade or company name or part of a trade or company name. In addition the proprietor is entitled to using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC.
Own name defence
While until now, name rights can be cited against trade marks regardless of their priority, in future, this will apply for personal names only (as opposed to trade names) (Art. 12 CTMR (new version)/ Art. 14 Trade Marks Directive (new version)).
Better protection against trademark counterfeiting
A further focus of the reform is better and more effective protection of companies against trademark counterfeiting. In order to prevent the EU from continuing to be misused as a hub for the worldwide trade of counterfeit products, the resources for combatting the counterfeiting of products are increased. In addition, a procedure against preparatory acts to violate trademarks is supposed to become easier and also goods can be stopped, which should not come into circulation in the EU (transit goods).
“Cooling-off”-period in national opposition procedure
The Directive provides that the parties of the opposition proceeding shall be granted at their joint request, a minimum of two months in order to allow for the possibility of a friendly settlement. Hence in future there will be a regulation in the national trademark laws similar to the “cooling-off”-period.
Change in the Fee Structure
The new fee structure for the trademark application and renewal may be of special interest for trademark applicants. An online-trademark application in three Nice classes previously amounted to 900 euros and the renewal to 1,350 euros. The official basic fee and the renewal fee are now each supposed to be reduced due to the reform to 850 euros. These fees will only cover one instead of three classes, however. A further class is supposed to amount to 50 euros and each additional class then will be an additional 150 euros. This means that the costs for an application and for a renewal are for one class 850 €, for two classes 900 € and for three classes 1,050 €.
With a view to the lower fees for the trademark renewal, a long-term saving of 30%-40% can be expected precisely for companies, which intend to protect a trademark for more than 10 years. Therefore, the EU trademark becomes cheaper in the long term, even though it does not appear to be so at first glance.
The aforementioned innovations only constitute some important aspects of the reform package. The reform will decisively advance the harmonization of trademark law on the European level and provide trademark law in the area of legal harmonization with a real pioneering function.