The business environment is constantly evolving and changing. However, National trademark registration in the member states of the European Union was harmonized 20 years ago, and the unitary Community trademark was created more than 15 years ago. Since then, there have not been any major reforms. One might say, that the legislative reform package just published, is an attempt to reflect the current business environment. As it has been said, the main objective of the reform package is to modernize European trademark law, and to make it more ‘effective, efficient and cohesive’.
The new European Trade Mark Directive - 2015/2436 - has now been adopted by the European Parliament and has been in force since the beginning of the year. Member states of the European Union have until January 2019 to implement the majority of the Directive’s provisions into national legislation.
In addition, Regulation (EU) No 2015/2424 of the European Parliament and the Council, which amends the Community trade mark regulation, has been published in the Official Journal of the European Union. This will come into effect as of the 23rd March 2016.
The aforementioned changes will predominantly affect both existing and future Community trademarks and National trademarks owners. It is, therefore, vital for IP practitioners and trademark owners to be informed of the upcoming changes.
Below, I elaborate on a few key changes of the Regulation.
The Office for Harmonisation in the Internal Market (OHIM) will be called the European Union Intellectual Property Office (EUIPO) and Community trademarks will henceforth be called European Union Trademarks (EUTM). Needless to say, that, the newly named “European Union Trademarks” will also be characterized by their unitary nature.
Up until now, a mark had to be capable of being represented graphically in order to be registered. This requirement has now been removed and a mark can be registered if it can be represented in a way that the public and the examiner can clearly understand the subject matter of the protection. This will open the gateways to the registration of non-traditional marks such as holograms. It remains to be seen in practice how this will be done.
EU Trademark owners will be allowed to take action to prevent the entry of infringing goods and their placement in all customs, situations including transit, transhipment, warehousing, free zones, temporary storage, inward processing or temporary admission, also when such goods are not intended to be placed on the market of the Union. This addresses a point raised in the much disputed and controversial case of Nokia and Philips (C446/09 / C495/09), in which it was held that the goods would only infringe the rights of other trademark owners’ if they were released into free circulation.
In deciding the "IP Translator" case in June 2012, the European Court of Justice stated that the designation of goods and services should be ‘sufficiently clear and precise’ and that "the use of general terms shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication". So, in light of the ruling in the "IP translator" case and the reasoning thereof, the new regulation clarifies and provides that the use of general terms should be interpreted as only including all goods and services clearly covered by the literal meaning of the term. A six month grace period for amendment will be given for all marks filed before 22 June 2012 giving the chance to those trademark owners to review and check their portfolios.
It is now provided that the use of the trademark as a trade or a company name or part of a trade or a company name, constitutes an infringement as long as the use is made for the purposes of distinguishing goods or services.
The new regulation makes the “own name” defence - as it is known- available for natural persons. So an owner of a prior mark will not be entitled to prohibit a third party from using, in the course of trade, the name or address of the third party where the latter is a natural person.
The single fee covering the first three classes in a trademark application has been replaced with a "fee per class" system. This should reduce costs for most applicants, particularly SME's. Renewal fees will also change to be "per class".
Another important change, is that Geographical indications (GI) will be an an absolute ground for refusal in respect of a registration application of a European Union Trademark.
