The European Commission has recently proposed new amendments to European trademark law which will result in some fundamental changes for trademark owners. First, they extend the absolute grounds for the refusal of a trademark registration.
As a consequence, the absolute grounds for refusal also apply to trademarks which contain a translation or transcription of any language. This is also the case for trademarks which conflict with a member state’s public order and good morals. The proposal also results in broader trademark protection. Trademark owners have more possibilities at their disposal to prohibit the import and transit of infringing products.
In March 2013, the European Commission published new proposals for the amendment of the Trademark Directive and of the Community Trademark Regulation. The proposal contains interesting changes which will impact trademark owners, especially regarding the registration of trademarks and the options available to trademark owners seeking to prohibit the import and transit of infringing products.
Foreign descriptive terms banned
The amendment regarding the absolute grounds for refusal of registration has far-reaching consequences for the admissibility of trademarks with a meaning in a foreign language.
This is because grounds for non-registrability also apply when a trademark is descriptive in a foreign language, or will be upon transcription. For example, a trademark that consists of Russian or Chinese descriptive words in their respective script or characters will no longer be able to register under the new proposal. As there are 6,000 to 7,000 languages in the world, the proposal limits the possibilities of applicants choosing a trademark.
The limitation, however, does not only apply to new trademarks in foreign languages. In the new directive, the absolute grounds for refusal and invalidity also apply, regardless of whether those grounds were obtained in a member state other than where the registration application was originally filed. This means that a trademark cannot be registered if it conflicts with the public order or good morals of any member state. To avoid becoming frustrated in developing a brand name strategy, applicants are advised to consult examiners, who can give an indication as to whether a trademark will be accepted.
Luckily, the proposal also creates new opportunities for trademark owners seeking to protect their trademarks. When goods are sold online, the proprietor of a European trademark now has the opportunity to prevent the importing of goods when the consignor of goods acts for commercial purposes. This will make it easier to act against the online sale of infringing goods. Another advantage of this new provision is that legal proceedings can be brought against the consignor in the country where the violation or import of the goods takes place. This is important, as trademark owners will have an additional forum at their disposal to protect their rights. Lastly, the possibilities for trademark owners to protect their rights in the case of goods in transit are also extended. The proposal contains a provision which entitles trademark owners to prevent all third parties from bringing goods into the customs territory of the European Union. This is important as the trademark owner is now able to take action against the importation of goods without having to prove that the goods will actually be put on the European market, as is currently the case under ECJ case law.
Changes regarding the use of signs which are identical to the trademark
Under a proposal by the Commission, trademark owners must fulfil an additional requirement if they want to prevent the use of a sign which is identical to their trademark. The use of the sign should affect, or be capable of affecting, the product’s designation of origin. This additional requirement limits the protection of the trademark when identical signs are used.
This proposal suggests that there is a requirement for designations of origin to be affected in order for trademark owners to prevent the use of a sign which is identical to their trademark. It is our view, that this is not the case. The additional requirement should be regarded as an exception to the rule. This means that the party invoking the exception has the burden of proof. The trademark owner thus does not have to prove that the product’s designation of origin has been affected.
When will the changes come into effect?
The aim is to have the proposals adopted by spring 2014. Once officially adopted, member states will have two years to transpose the new rules of the directive into national law. The provisions of the regulation, once adopted, will be self-executing.
The new legislative proposals imply many more changes; we have highlighted a few of the most significant changes for you.