Two laws that introduce significant changes in trademark registration systems in the European Union were published in the Official Journal of the European Union.
The Directive (EU) 2015/2436 of the European Parliament and of the Council on December 16th 2015, and the Regulation (EU) 2015/2424 of the European Parliament and of the Council on December 16th 2015, which harmonize the laws of Member States related to trademarks.
The new Directive will come into effect on January, and the maximum period for Portugal to proceed to its implementation will be within 3 years starting on January 14th of 2016. The new Regulation will enter into force on March 23rd of 2016, although some changes will only become effective from October 2017.
Regulation (EU) 2015/2424 of the European Parliament and of the Council on December 16th 2015
The new Regulation’s primary objective is to improve access conditions to trademark registration by companies, as well as to protect their rights against any infringements at EU level. Among the changes introduced by this Regulation, we would highlight the following:
- Changes related to fees. The rules on trademark registration fees were revised. The "one class per fee" system was introduced, and the base rate is no longer up to three classes of goods or services. Also, the value of the renewal fee and the rate of application for registration were made equivalent;
- Changes related to the application, examination, registration and protection of trademarks:
- Eliminating the possibility of presenting EU trademark registration applications in national institutes;
- Eliminating the requirement of the graphic representation of the brand, facilitating the presentation of non-conventional trademarks;
- Making the amendment of the statement about the rules and classes of goods and services in the application request in order for them to be in accordance with the case law of the European Court of Justice (“ECJ”);
- Changing the starting date of the opposition phase against international registrations designating the EU, from the period of three months to the period of one month from the date of its publication;
- Definition of five years as the maximum period of effective use by the holder, as of the conclusion of the registration process;
- Strengthening and clarifying some powers concerning trademark holders: for instance, in terms of reacting against the circulation of goods, against the vulgarization of the signal, against the use of the sign under the trade name, or infringement of the Directive referring to the misleading and comparative advertisement, and against the utilization of the trade mark by preparatory acts, among others;
- Improvements concerning to the protection against infringing goods. Holders of EUTMs will now be able to prevent the entry of infringing goods and their placement in all customs situations, including transit, shipment, warehousing, free zones, temporary storage, inward processing or temporary admission. This protection is available even if the goods are not intended to be placed in the EU market.
- The possibility of creating a mediation center by the EUIPO, whose services can be used by anyone to resolve by mutual agreement any dispute relating to the EU brands.
Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16th 2015
The new Directive, which may be designated as a Harmonization Directive, with the primary goal to standardize the rules applicable in the Member States, facilitating cross-border activities of companies, and approaching the national registers of some of the rules that previously were only in force for community brands, introduces changes among which can be highlighted the elimination of the requirement of graphic representation of the mark, facilitating the presentation of non-conventional trademarks and the clarification of the rules for indication of classes and the products and services on request for application, in order for them to be in accordance with the case law of the ECJ, similar to what has already been mentioned above, concerning to the amendments made by Regulation (EU) 2015/2424 of the European Parliament and of the Council on December 16th 2015.