Since 23 March 2016, the new EU trade mark regulation (EUTMR) has been in force with significant changes in European trade mark law. This Regulation introduced significant changes to the unitary EU-wide trade mark system that has existed since 1996.
On the one hand, we will have to get used to new terms such as the EU trade mark (or EUTM, instead of CTM) and the EUIPO (European Union Intellectual Property Office), but there are also significant substantive amendments, including the introduction of the European Union certification mark (from 1 October 2017) and codification of the 'literal meaning' approach to specifications of goods and services.. These two issues require a closer look.
Interpretation of Specifications
Although the 'literal meaning' approach has been in place for new applications for a number of years, the new Regulation makes clear that it now applies to all EUTM registrations, no matter when they were filed. As a result of this many trade mark owners whose trade mark specifications contain class headings from the Nice classification may find they have to take immediate action to prevent a reduction in their protection.
According to Article 28 EUTMR class headings of the Nice Classification that are contained in EU trade mark specifications will be interpreted following a literal approach, according to their natural and usual meaning. Therefore, class headings will only cover the goods and services that are clearly covered by the literal meaning of the respective words. Following the entry into force of the new EU trade mark regulation, the protection for such EUTMs is now therefore limited to those specific goods and services (not, for example, all goods/services within the particular class concerned, as was the case under the EUIPO's previous practice).
Owners of EUTM registrations who applied before 22 June 2012 and covered a class heading have until 24 September 2016 to try to maintain protection for goods or services they are particularly interested in, but which do not fall within the literal meaning of the words of the class heading (i.e. terms they thought were covered by the class heading used in their specification despite not being listed in that wording). EUTM owners must do so by filing a declaration indicating that their intention at the time of filing was to obtain protection beyond the literal meaning of the class heading(s) involved. Any such declaration should indicate the goods/services in respect of which there was an intention to obtain protection, with the proviso that only those terms included in the alphabetical list of the Nice Classification in force at the filing date shall be accepted. In this way, limitation in the scope of protection can be avoided (subject to certain caveats regarding pre-existing later third party marks).
If no declaration is filed, the owner's rights will be limited to the literal meaning of the class heading.
European Union Certification mark
The EUTMR also introduced a new European Union certification mark in Articles 74a-74k EUTMR, although applications for such marks may not be filed until 1 October 2017.
Whilst a trade mark acts as an origin indicator, a certification mark acts as a quality indicator. It signifies that the goods and services in relation to which it is used comply with certain quality standards – irrespective of the origin of those goods or services.
The owner of an EU certification mark will certify certain characteristics of goods and services, which may include: material, mode of manufacture of goods or performances of services, quality or accuracy, but not geographical origin.
In contrast, EU trade marks and EU collective marks distinguish the origin of goods and services from one undertaking from those of other undertakings.
An EU certification mark may not be owned by persons involved in a business relating to the supply of goods and services of the kind certified.
Therefore, the owner of an EU certification mark will not be a supplier of the goods and services on the market, instead they will be the party responsible for certifying and monitoring the qualities or characteristics of the relevant goods or services.
The mark owner must, within two months of filing their application, submit regulations governing the use of the certification mark, including details of which persons are authorised to use the mark and the relevant characteristics to be certified by the mark. The mark owner should also demonstrate how the certifying body is to test and monitor compliance with those characteristics and how it will supervise authorised use of the mark.
It is important that the certification mark owner maintains robust procedures for ensuring authorised use of the mark since a certification mark may be revoked if the original applicant no longer meets the requirement of neutrality.
Although still almost 18 months away from being available the EU certification mark is an important development. It is particularly important for those in EU territories that do not currently have national certification mark systems.