Substantial Changes in European Trade Mark Law
On 24 December 2015 the European Regulation (EU) 2015/2424 dated 16 December 2015 was published. It will enter into force on 23 March 2016.
A multitude of points in the community trademark law will be changed.
An overview of the main points are (please consider point 2 in particular):
1. Rebranding of the office / of the law / of the trade marks
2. Transition period for declarations concerning the protective scope of the list of goods and services
3. Fee changes
4. Remarks of third parties (influencing on registration)
5. Facilitation of trade mark enforcement in transit traffic
6. Facilitation of trade mark enforcement in comparative advertisement
7. Relaxation of the registration requirements
8. Introduction of a new trade mark form: Guarantee trade mark
The Office for Harmonisation for the Internal Market will be renamed to „European Union Office for Intellectual Property“.
The Community Trademark will be renamed Union Trademark.
The Community Trademark law will be renamed Union Trademark Law.
2. TRANSITIONAL PERIOD
The changes in the Union Trademark Law cover in particular regulations resulting from the decision of the European High Court „IP translator“ and turns it into codified law. Accordingly, applications can no longer cover a wide area of the list of goods and services by simply citing the complete class heading of a given class in the Nice classification of goods and services. Quite contrary the current practice resulting from the above decision has now been codified, such that goods and/or services, for which protection is claimed, must be formulated sufficiently clearly and precisely. By doing so, in particular in opposition and infringement proceedings, a more specific consideration of the danger of confusion should be expected. A careful drafting of the list of goods and services in a trademark application will become even more important, than it was already.
Additionally, for trade marks that where registered before 22 June 2012 for complete class headings of a class of the Nice classification for goods and services a transitional period until 23 September 2016 is provided to declare, that at the time of filing the application, it was the applicant’s intention to obtain protection for goods and services extending beyond the literal meaning of the words in the class heading. Not providing this declaration can lead to a severe limitation of the scope of protection.
3. CHANGE OF FEES
The change of fees mainly concerns a change in the number of classes comprised in the official filing fee. With the date of entering into force, it will be only one class instead of three classes of the Nice classification that will be comprised. For applications that are already planned and that extend beyond two classes, it is advisable to file this application before the date of entering into force to save official fees. After entering into force, filing an application for a trademark electronically in two classes will cost €900, which before entering into force would have included three classes.
The good news is that the basic fee of the Office for renewing a union trademark after 10 years will be decisively cheaper with €1000 (instead of €1350).
4. COMMENTS BY THIRD PARTIES
According to the changes in the union trademark law, comments by third parties are regulated more precisely, with which measures can be taken against the registration of a trademark, falling under the reasons for denying registration of a trademark listed in Art. 5 and 7 European Trademark Directive. One should not over estimate this tool, though, as a third party will not become part of the proceedings and thus has no influence on whether or not his comments will be considered. Nevertheless this can be a first and rather cheap possibility of a reaction against colliding trade mark applications. Such comments can now be filed until the end of the opposition period or until the final decision in running opposition proceedings. For filing comments by third parties no official fees are due.
5. TRANSIT TRAFFIC
As before the changes tot he law it was sometimes very difficult to act against counterfeiting goods on transit through the European Union, the amended Union Trademark Law provides for a positive change for trademark owners. From now on trademark owners can keep third parties from bringing those transit goods into the European Union, if those goods, including packaging, origin in states outside the European Union and carry a sign identical or highly similar to a protected trademark without consent by the trademark owner. However, this regulation finds its limits where it can be shown that the trademark owner has no rights to deny circulation of those goods in the country of final destination.
6. COMPARATIVE ADVERTISING
A new reason to request cease and desist is provided for trademark owners in the future, if in comparative advertising EU guideline 2006/114/EC is infringed. This would be the case for example in cases where a trademark for particular goods and services is vilified or degraded. Parallels to the German law of unfair competition can be seen in this regulation. The position of the trademark owner will be further strengthened.
7. REGISTRATION REQUIREMENTS
The requirement of a graphical representation of a trade mark as a prerequisite for registration has been abolished. With this change the register in principle is open to the registration of sound marks and smell marks. In the future those signs will be considered as registrable that may be shown in such a way that the responsible official bodies and the public can gather the object of the scope of protection granted to the owner of such a trademark clearly and explicitly. We will have to wait for decisions and the day-to-day practice to see what specific requirements „exotic“ trademark forms will have to fulfil in The future.
Possibilities for oppositions based on traditional specialities, plant varieties and geographical origins have been further strengthened.
8. GUARANTEE MARK
With the changes of long a new trademark form will be introduced: The „guarantee mark“. This new trademark form is a Union Mark that needs to be denominated as such at the time of application, and that is suitable to distinguish goods and services for which the owner of the trademark guarantees the material, the kind of manufacturing of the goods, or the provider of services the quality, the precision or other characteristics -with the exception of the geographical origin -from those that don’t carry such a guarantee.
Natural and legal entities can apply for those marks as long as they conduct a business comprising the delivery of goods and services, for which a guarantee exists. Examples could be the entry of Conformity Signs that, according at least to German law, where denied entry to the register so far. As a matter of course, we will have to wait for the day-to-day practice regarding this new trademark form.
Considering all of the above it can be said that many of the things that have found entry into the day-to-day practice already after „IP translator“ will now be part of the codified law. For applicants in particular the application for trade marks with more than two classes before entering into force is of interest, to save costs. The other important point is the potential declaration regarding the class headings in the list of goods and services (See point 2 above).
Questions? Please don’t hesitate to ask.