Amended EU Trade Mark Regulation – Goes Live!

We have  extensively blogged on the EU trade mark law reforms and 23 March 2016 marks the introduction of many of the reforms at EUIPO level. The reforms represent the biggest overhaul to EU trade mark law since the inception of the EU trade mark in 1996. It will bring about substantial changes to owners of both EU trade marks and national trade marks in the EU.

The main legislative changes are a new Trade Mark Directive aiming to harmonize the national trade mark systems of the EU member states and an amended EU Trade Mark Regulation. The Directive came into effect on 12 January 2016 but requires implementation by EU member states, with the majority of changes to be implemented by 15 January 2019. The  requirement of mandatory office proceedings in EU member states for revocation and declaration of invalidity for trade marks has to be implemented by 14 January 2023.

The amended Regulation applicable to EU trade marks comes into effect on 23 March 2016 although, some changes will be implemented later.

The new reforms are made up of a variety of improvements and changes and we have summarised some of the more significant changes.

1. Renaming of the OHIM and the CTM

The Office for Harmonisation in the Internal Market (OHIM) will be renamed the European Union Intellectual Property Office (EUIPO). The Community trade mark (CTM) will be renamed the European Union trade mark (EUTM). Any existing CTM applications/registrations will automatically become EUTM applications and registrations on 23 March 2016. The President of the EUIPO will now be called the Executive Director.

2. Changes to fee structure for EUTM Applications and Renewals

From  23 March 2016 a new one fee per class system, together with a new fee structure, will be introduced for trade mark applications, the costs of which will increase for applications in 3 or more classes although for renewals of EUTMs the costs will be reduced significantly. Please see our previous blog posts (here) and (here) for more information on the new fee schedules released by the EUIPO.

3. Goods in Transit

Goods in transit can infringe. Only where the alleged infringer can prove that the trade mark will not be infringed at the final destination must the goods be released.

4. Renewal of EUTMs

From 23 March 2016 the renewal of EUTMs must be requested by the date of expiry and not, as is current practice, at the end of the month during which the expiry of the trade mark occurs.

5. No graphical representation required

From 1 October 2017 applicants applying for non-traditional trade marks will no longer be required to represent a mark graphically. Therefore, protecting sound, colours, non-traditional marks such as hologram and motion marks, often used with digital branding strategies, will be more straightforward.

6. Classification of trade marks – Article 28(8) Declarations

Prior to 22 June 2012, EUTMs covering class headings were deemed to cover all goods and services in the class. However, this was changed by the IP TRANSLATOR decision. The new Regulation means that only goods and services that fall within their literal meaning will be covered. Therefore, in order to clarify the position on pre-2012 EUTMs, owners of EUTMs predating 22 June 2012, which cover entire class headings, will be allowed a six month window, from 23 March 2016 until 23 September 2016, to file Article 28(8) declarations amending the goods and services to include terms from the alphabetical list, in addition to the class heading. Once the six month window expires on 23 September 2016, all EUTMs will be interpreted according to the literal meaning of the terms included. Please see our previous blog post for more information.

7. Opposition period for International Registrations (IRs) designating the EUTM

The opposition period for International Registrations (IRs) designating the EUTM which had commenced six months after publication will now start one month after publication, with the opposition period remaining as three months. This means that  IRs designating the EU, proceeding to registration without opposition, will be granted protection within four months instead of the current period of nine months. You should be aware that the opposition deadlines will change accordingly from 23 March 2016.

8. Opposition proceedings and administrative proceedings

Administrative  proceedings for revocation or declaration of invalidity of national trade marks must be provided. In most Member States, such claims currently have to be brought before the Courts. Member States, however, have until 14 January 2023 for introducing this change although it is hoped that most member states will introduce this sooner.

9. EU Certification marks

From 1 October 2017 an EU Certification trade mark will be introduced as a new category of trade mark at EU level. This change will resolve the current inconsistency between national systems and the EU trade mark system.

10. Own name defence – no longer covers companies

The own name defence will be restricted to natural persons – it  no longer covers companies. (Assos v Asos would be decided differently in the future)

11. Intended purpose (accessories/spare parts)

Defence widened to cover any use for the purpose of identifying or referring to goods or services of those of the owner of the trade mark.

12. Protection of marks with a reputation

Under the new Regulation protection of marks with a reputation against dilution becomes compulsory, as is already the law in most Member States.

Recommendation

These changes are wide reaching and may impact brand owners and their portfolios directly. You should review your portfolio and continue to monitor the implementation of these reforms.