The EU Commission, Parliament and Council have informally agreed changes to the EU Trade Marks Directive and the Community Trade Mark Regulation. Our top ten changes are below.
- Community Trade Marks will be re-named European Union Trade Marks, and the Office for Harmonization in the Internal Market will be re-named the European Union Intellectual Property Office.
- Counterfeit goods transiting through the EU will infringe the rights of trade mark owners. Currently, goods in transit generally don't infringe. (The change won't extend to 'grey' goods in transit, as had previously been proposed.) The importer will have a defence where he shows that the trade mark owner is not entitled to prevent sale in the country of final destination. There's also a new express right for trade mark owners to prevent the sale, stocking and import/export of counterfeit labels, tags or other materials.
- Trade mark applicants will no longer need to represent marks graphically. This will make it easier for businesses to register non-traditional marks, like sounds, smells, motions and holograms. Applicants will be able to represent a sign in any appropriate form, as long as registries and the public can clearly determine what is protected.
- Licensees' rights to sue third parties for infringement of national marks will be harmonised with the current rules under the CTM Regulation. So licensees will be able to sue only with the trade mark owner's consent, although exclusive licensees will have extra rights if the trade mark owner fails to act. This is the first time that licensees' rights under national marks have been harmonised across the EU, and is important for trade mark owners with international licensing regimes. If you're refreshing your IP licences, consider whether you want to limit the licensees' rights by contract, to the extent possible.
- The changes confirm that the owner of an EUTM or a national mark can prevent a third party using a sign in comparative advertising in a way that breaches the EU comparative advertising directive.
- The changes confirm that using a sign as a trade name or company name can infringe a mark. The honest use only of a natural person's own name, but not a company name, can be a defence to infringement.
- The defence of making a 'referential use' is expanded. Third parties will be able (honestly) to use other's marks to identify goods or services as those of the trade mark owner. This might include honest use of a mark for the resale of genuine goods, to put forward a legitimate alternative product, or for parody.
- The procedures for registering marks, including filing dates and standards for classifying goods and services, will be harmonised across the EU.
- There will be a new fee structure, which the Commission predicts will save businesses up to 37% on marks held longer than 10 years - this could be significant for companies with large trade mark portfolios.
- Businesses will be able to oppose trade mark applications, and seek revocation or invalidity, at national IP offices. This will remove the need to go to court.
The Parliament and Council will vote on the new directive and regulation over the next few weeks. Once the changes to the directive are adopted and published, member states will have three years to implement the new rules into national law (with seven years to introduce the new administrative procedure for revocation and invalidity claims). Most changes to the CTM regulation will take effect after 90 days, but some secondary legislation will be needed.