EU trade mark law: new legislation published

Background

Trade mark registration has been harmonised in EU member states for more than 20 years, and national and Community trade mark (CTM) rights have co-existed since 1996. In 2008, the European Commission (the Commission) commissioned a study by the Max Planck Institute to evaluate the overall functioning of the CTM and national trade mark systems, which resulted in a number of draft amendments to the Trade Marks Directive (2008/95/EC) and the CTM Regulation (207/2009/EC). The Commission adopted the proposed trade mark reform package on 27 March 2013.

Facts

The European Parliament formally adopted the EU trade mark reform package at early second reading on 15 December 2015, and it was published in the Official Journal on 24 December 2015. The new European Union Trade Mark (EUTM) Regulation will enter into force on 23 March 2016, whereas the new Trade Mark Directive will enter into force on 13 January 2016. The 28 member states will then have three years in which to implement the Directive into their national laws, except for the administrative invalidation and revocation procedures, for which have been given seven years.

Key proposed changes include the following:

• The CTM will become the EUTM and the Office for Harmonization in the Internal Market (OHIM) will become the European Union Intellectual Property Office (EUIPO).
• From 1 October 2017, trade marks will no longer need to be represented graphically as long as they are clear and precise, reflecting the fact that marks can be represented in other ways, such as smells.
• Goods in transit through the EU will be able to be seized if they infringe EU trade mark rights, even if those goods are not targeted at EU consumers, unless the infringer can prove that there is no trade mark infringement in the country of final destination.
• There will be extended protection for intervening rights so that it will not be possible to prevent the use or registration of a later mark if, at the filing date, the earlier mark could have been revoked for non-use.
• Proof of use, in actions based on rights registered for more than five years, will be able to be requested in all infringement, opposition and invalidity actions.
• The “own name” defence will be restricted to natural persons and use as a trading or company name is specifically identified as a potentially infringing act.
• Use in comparative advertising will be an infringing act unless it meets the criteria of the Comparative Advertising Directive (2006/114/EC) (existing position codified).
• Preparatory acts, such as the distribution and sale of labels, packaging and similar items that may subsequently be combined with infringing products, will potentially be infringing acts.
• Administrative proceedings for invalidation and revocation in intellectual property offices, as opposed to only in court proceedings as currently in Benelux, France, Italy and Spain and other places, will become mandatory.
• Class heading terms in the specifications of trade mark applications and registrations will only cover the literal meaning of the words, no matter what the filing date of the application or registration.
• There will be a new fee structure for EUTM applications aimed at preventing everyone automatically applying to register in three classes.

Comment

The new legislation, which has been a very long time coming since the original proposals for reform in 2007, will make a number of important changes to EU trade mark law. While many changes may not be implemented immediately, the changes to the CTM Regulation will be in place within a relatively short timeframe on 23 March 2016.

First published in the January/February 2016 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.

^Source:

• ^{European Parliament: legislative resolution on the Council position at first reading with a view to the adoption of a regulation of the EEP and of the Council amending Council Regulation (EC) 207/2009 on the Community trade mark and Commission Regulation (EC) 2868/95 implementing Council Regulation (EC) 40/94 on the Community trade mark, and repealing Commission Regulation (EC) 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs), 15 December 2015.}
  
• ^{European Parliament: legislative resolution on the Council position at first reading with a view to the adoption of a directive of the EP and of the Council to approximate the laws of the member states relating to trade marks (recast), 15 December 2015,}