The protection and defence of trade marks are vital to the success of any company. In order to offer businesses better protection, the European Union recently reinforced, improved and modernised the legislative framework governing trade marks in Europe. A new European directive and regulation were adopted on 16 November 2015 and published in the Official Journal on 23 and 24 December 2015, respectively.
Here are the 10 most important aspects of the reform for businesses.
- EU trade mark
On 23 March 2016, the date of entry into force of the new regulation, the wording "Community trade mark" (used for the past 20 years) will be replaced with "EU trade mark". As the name indicates, an EU trade mark is a single title valid in all 28 Member States of the European Union. In Belgium, the Brussels Commercial Court and the Brussels Court of Appeal will have exclusive jurisdiction to hear cases based on EU trade marks.
- European Union Intellectual Property Office (EU IPO)
Another important change in vocabulary is that EU trade marks will be registered with the European Union Intellectual Property Office (EU IPO), the new name of the Office for Harmonization in the Internal Market (OHIM), based in Alicante.
- Lower fees
In order to help businesses, especially SMEs, adequately protect their intellectual property, registration fees will be lowered. The fee will henceforth be calculated per individual class of goods or services. To benefit from protection throughout the EU, the fee to register a trade mark (by electronic means) will amount to EUR 850 for the first class of goods or services, EUR 50 for the second class, and EUR 150 for each additional class.
- Regularisation possible until 24 September 2016
The holders of EU trade marks applied before 22 June 2012 for which the description of the goods or services covered is not sufficiently clear (for example "machinery" or "repair services", with no additional information) will benefit from a one-time extension until 24 September 2016 to regularise their situation. It is thus high time to check your trade mark portfolio and, if necessary, perform the necessary clean-up with the help of a professional.
- Elimination of the graphic representation requirement
Due to the advent of new technologies, the requirement that a graphic representation of the trade mark be provided has been abolished, which will undoubtedly facilitate the registration of holograms, sounds and moving images, provided they are distinctive.
- No protection for certain names
Protected designations of origin (PDO), protected geographical indications (PGI), traditional appellations for wine, traditional specialities guaranteed (TSG), and the names of protected plant varieties cannot, as a general rule, be registered as trade marks.
- Action against goods in transit
One major step forward for trademark holders is that they will now be able to prevent third parties from introducing products not in free circulation into the European Union, if the products originate from a non-EU country and copy or reproduce a trade mark. It will thus be possible to take action against pirated goods in transit through the EU, unless the defendant can prove that the trade mark holder has no right to prevent the placing on the market of the goods in their final country of destination.
- Action against preparatory acts
In order to better defend their rights, trade mark holders will be able to take action against acts preceding the marketing of goods.
- Proceedings before the Benelux Office
Without prejudice to the powers of the national courts, the Benelux Office will have to put in place new administrative procedures to rule on requests for revocation or invalidation of Benelux trade marks. The Benelux Office's decisions will no longer be appealed to an appellate court in each of the three Benelux countries but rather to the Benelux Court of Justice.
- Freedom of expression
The new regulation insists on the need to strike a balance between, on the one hand, effective protection of trade marks in the course of trade and, on the other hand, the use of trade marks by third parties for purposes of artistic expression.