The European Commission, Council and Parliament reached agreement last year on changes to the Community trade mark regime, the aim of which is to simplify the existing system and to harmonise further the rules across Member States.
The key points to note are:
- changes in terminology. The Community trade mark (CTM) will become the European Union trade mark (EUTM). The Office for Harmonization in the Internal Market (OHIM) will be renamed the European Union Intellectual Property Office (EUIPO)
- changes to the filing fee structure. Applicants in one class will pay slightly less (€850 as against €900). However, applicants in three classes will have to pay rather more – €1,050 as against €900 – for an EUTM filed electronically
- the end of the graphical representation. The concept of “graphical representation” is to be removed from the conditions of an EUTM. All that will be required is a “representation that enables the authorities and the public to determine clearly and precisely what is being required”. This should facilitate the protection of non-conventional trade marks, such as smells or sounds
- a requirement for all Member States to adopt an administrative procedure for cancellation actions. For example, there is not currently any administrative cancellation procedure in France, e.g. to revoke a trade mark for non-use
- an enlargement of the scope of infringement actions. In particular, the use of a trade mark by competitors in comparative advertising will be recognised as trade mark infringement
- the corporate “own name” defence will no longer apply. This reflects recent case law
- a new “intervening rights” defence. This will provide a qualified defence to trade mark infringement to owners of later filed trade mark registrations
- stricter rules on counterfeiting. Businesses will be able to prevent third parties from bringing counterfeit goods bearing an “essentially identical” trade make to their own into the Member State(s) where the trade mark is registered.
- Most of the changes concerning the Community Trade Mark will come into effect in June this year (although the removal of the graphic representation requirement is not scheduled to take place until next year). However, Member States will have three years in which to transpose the new regime requirements into national law (and it will be seven years for the new administrative cancellation procedure requirement). This means that there will be a three-year period in which the rights enjoyed by the holders of Community (or “EU”) trade marks and national trade marks will differ.