This is the latest article in our series on IP management best practices. Please see our previous articles for advice on setting the right IP strategy, identifying the best model for IP management (‘outsourced, in-house or hybrid?’), assigning value to trademark assets, negotiating common pitfalls in management strategies and protecting trademark rights in the People’s Republic of China.
Most businesses can make their European trademark registration and protection strategies, and budgets, work harder by taking some time to step back and examine their current portfolios. It is common to find, for example, doubling (and, in some cases, even tripling) of protection when it comes to national/EU and international coverage. This adds to the cost of renewals, and invariably also impacts budgets for the acquisition of future rights.
In some instances, it is sensible to retain those double rights; for example, if your mark could be at risk of revocation actions on the basis of non-use. However, it is likely that you will also identify duplicate marks that could be allowed to lapse, whether immediately or following some work on seniority claims.
Depending on the age of the portfolio, European rights should also be reviewed in light of recent changes in EUTM law and practice. Marks filed before June 2014 should be considered in light of the EUIPO (then OHIM) Convergence Programme. More recent rights and future filing strategies are also likely to benefit from some examination of the recent EUTM reforms.
Recommendations from the Convergence Programme (CP) A brief reminder of the key changes:
- Black and white registrations do not provide protection for colour elements which contribute to the overall distinctiveness of the mark (CP4).
- Lists of goods and services should be sufficiently ‘clear and accurate’ to determine the extent of protection of the trademark; class headings are interpreted literally, as per IP Translator (CP1-2).
- Non-distinctive wordmarks should be combined with graphic elements, so that the sign creates an overall distinctive impression (CP3).
- When a new registration shares a component with no distinctiveness with an existing registration, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks (CP5).
As we set out in our earlier article on audits and valuation, portfolios require regular health checks to ensure that the rights they contain remain up-to-date both in terms of usage, but also in light of updates to trademark law and practice. If you haven’t already, reviewing your existing EU trademark portfolio with the changes above in mind will help you to identify which elements of protection should be added to the current status of registered marks. In particular:
- Are your main logos protected in colour by EUTM registrations?
- Are the specific goods/services that apply to your business really covered by the wording used in the (maybe historical) EUTM registration?
- How well and differently are your “weak” (e.g. potentially descriptive) names protected in light of the new EUIPO practice? Recent European case law has demonstrated that older registrations combining descriptive terms with another weak element (or logo) are entitled a level of protection; leaving some brand owners puzzled by the CP5 reform.
EUTM reform – the key provisions The final provisions of the EU’s trademark reform came into effect on 1 October last year. Alongside reform targeted at bringing more uniformity to IP practices across the EU, the EUIPO also introduced several important initiatives; namely, (1) changes to the rules for graphical representation, which should give non-traditional trademarks a real chance to thrive; (2), the creation of a certification mark registration system, which will be of particular interest to industries where consumers are increasingly concentrating on quality, environmental and ethical issues; and (3) provisions to provide greater protection against counterfeit goods in transit. EU member states have three years to implement the changes into their national laws (ending 13 January 2019).
1. Graphical representation:The criteria for EUTM registrability no longer includes the requirement for ‘graphic representation’, making it possible to file a trademark to protect a sign in any appropriate form. This enables IP owners to more easily register non-traditional signs (such as sounds, smells, holograms and multimedia), so long as they can be represented in a manner that is clear and precise (following the criteria set out by the Court of Justice of the EU in the Sieckmann judgement) and fulfil the general requirement of distinctiveness.While the intention here is clearly to harness technological progress to share and compare non-traditional trademarks (think touch or smell trademarks) in the future, the main advantage of this part of the 2017 reform is, for the moment, for sound trademarks, which no longer need to be represented in a graphical form. A MP3/MP4 or other audio file can now serve as basis to the application. Brand owners should think, therefore, about any other marketing assets that could be protected; for example, by creating/protecting a company jingle.
- 2. Certification marksThe new EU Certification Mark has been designed to deliver protection for ‘quality’ marks; in other words, marks that offer consumers a guarantee that a particular product or service has specific features or characteristics (quality, accuracy, mode of manufacture etc), as opposed to non-certified goods and services which do not have those features or characteristics. This new category of marks, which did not previously exist at EU level, will be of particular interest for organisations and associations that aim to guarantee third-party goods. It is to be noted that the main criteria for filing such an application are: (a) that the trademark shall not be used by its owner but by the certified participants in the programme, and (b) that the filing needs to be accompanied by Certification Rules that include objective indications on the quality to be certified and the conditions that need to be met for third parties to obtain certification.
- 3. Anti-counterfeitingFinally, the reforms afford trademark holders greater protection against goods in transit in the EU that infringe their trademark rights, e.g. counterfeit goods. The burden of proof has shifted, now requiring the goods’ owner to prove that the trademark owner would not be entitled to prevent the trading of the goods in the country of final destination.
Looking beyond EUTMs – to the rest of Europe
Brexit has provided an important reminder that not all of Europe is covered by an EUTM. Once Britain fully exits from the EU system (click here for our latest update), brand owners seeking to obtain UK protection as part of their European trademark registration strategies will need to include an additional UK registration. If they’re not already, they should also include such registrations for other European, but non-EU, countries, such as Switzerland, which are often overlooked in European filing strategies.