The European Parliament, Council and Commission has now agreed to changes to the Trademark Directive 2008/95/ EC (Directive) and the Community Trademark Regulation 207/2009/ EC (Regulation).

The aim of these reforms is to encourage innovation in the EU by making the EU trade mark filing and registration system easily accessible to all and more efficient in relation to costs, speed and legal complexity. Another motivation of the reforms is to provide more effective trade mark protection against counterfeit goods and also, to ensure co-existence and complementarity between the EU trade mark systems and the national trade mark systems.

Some of the key changes are:  

Types of trade marks

The definition of trade marks will be extended to include non- traditional marks and applicants will no longer have to present their mark graphically.

The new proposed definition states that a sign must merely be capable of “being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor”. In particular, the definition will be extended to specifically cover “colours as such” and “sounds” and there are discussions to introduce provision to allow for registration of certification marks.

Renaming

Use of the name “Community Trade Marks” will be changed to “European Union Trade Marks” and the Community Trade Mark Courts will therefore be renamed as the European Union Trade Mark Courts. The name of the Office for Harmonization in the Internal Market (OHIM), will become the European Union Intellectual Property Office.

Absolute grounds for refusal

There are proposals to add the following grounds for refusal to the existing list of absolute grounds:

  1. prior designations of origin, geographical indications, protected traditional terms for wine and traditional specialties and protected plant varieties; and
  2. terms which, if translated or transcribed into any script or official language of a Member State, would be descriptive.

Relative grounds for refusal 

The definition of earlier marks with a reputation will be extended to include those covering identical and similar goods/services to take into account the approach the Courts have taken for many years.

There is also discussion to allow for opposition to be filed on the basis of bad faith, where the opponent has an earlier trade mark right outside of the EU.

Own name

It seems that the changes planned will qualify the own name defence as only applying to personal names.

Fees

The current basic fee for an application covers up to three classes of goods and services. The new fees will be set at one class, with a separate fee for each additional class included in the application after the first.

The aim of this change is to make the cost of filing a new application cheaper but also, to ensure there are fewer applications which include extra classes which are not essential to the application, but applicants include anyway as they are included in the price. This should therefore reduce the number of marks registered in superfluous classes and hopefully, reduce the “clutter” on the register.

In addition, the application fee will be payable on filing.

Practical points

All applications should be filed via OHIM and it will no longer be possible to file an application via a national trade mark office of an EU member state.

The searches conducted by OHIM for earlier identical/similar marks will be abolished, as will the optional searches which are conducted by trade mark offices of certain EU member states.

Specifications

Following the ruling by the Court of Justice of the European Union (CJEU) in the IP TRANSLATOR case, as discussed here and here, changes are planned which state that the description of goods and services listed in an application must be sufficiently clear and precise. Any general terms will be deemed to include goods and services clearly covered by their literal meaning only.

For those marks applied for before 22 June 2012, there will be an option to amend the specification.

The aim of these changes is to avoid overly broad specifications of goods/services. Historically, applicant’s would seek protection for the class heading of goods/services as OHIM would not object to the same. This meant the trade mark would be protected for goods/services which were not strictly necessary to the owner, resulting in further clutter to the register and the potential for frivolous oppositions based on the same.

Goods in transit

At present, if an importer of counterfeit goods can show that the same will not be put on the market in the EU and in fact, they are only “in transit” in the EU, they are not regarded as infringing unless the trade mark owner can demonstrate the goods will in fact be put on the market in the EU.

The proposed changes mean that a trade mark owner will be able to prevent the importation of such goods, even if the goods are only “in transit”.

Comparative Advertising

Provision will be made which specifically states that if a trade mark is used in a comparative advertisement and the requirements of the Comparative Advertising Directive are not satisfied, the trade mark owner can prevent the use of their trade mark in the advert.

Next Steps

The changes are currently being reviewed before they can be put to a vote at the European Parliament.

If all runs smoothly, it is expected that the changes to take place will be confirmed by the end of this year, with implementation to come into effect in the six months following.