On 23 March 2016, a new EU regulation entered into force, which amends the law relating to EU trade marks. The EU trade mark is a unitary right which provides protection for the current 28 member states of the EU.
The purpose of the reform is to create a system that is more efficient, cost-effective and predictable than the previous system. The reforms are also expected to increase harmonization across the various EU trade mark regimes and to promote greater cooperation between the Office for Harmonization in the Internal Market (OHIM) and national trade mark offices.
Furthermore, it has been over 15 years since the Community Trade Mark (CTM) was introduced and during this time there have been significant developments in case law, as well as in technology and the needs of businesses. Yet despite these developments, there has not been any major reform to the substantive EU trade mark law.
The key changes which are introduced by the regulation, are set out below.
OHIM will now be known as the European Union Intellectual Property Office (EUIPO). The CTM will be known as the European Union trade mark (EUTM) and the Community trade mark court is to be termed the European trade mark court. It is thought that these names are more self-explanatory than the previous terminology.
Filing and fees
The previous CTM application fee was €900 for up to three classes. Consequently applicants who were seeking protection in one or two classes were encouraged to extend their application to three classes due to the cost being the same.
However, under the new regime, an applicant filing in one class pays a lower fee of €850 with a €50 fee for the addition of a second class and thereafter each additional class incurs a €150 fee. Trade mark renewal, opposition, cancellation and appeal fees have also been reduced under the new regime.
In addition, the option of filing EUTMs at national offices has been abolished, so applications can now only be filed directly with the EUIPO.
Following the IP Translator case (Chartered Institute of Patent Attorneys v the Registrar of Trade Marks: C-307/10), the ‘class heading covers all’ approach no longer applies and trade mark specifications that simply list class headings will be interpreted as including only the goods and/or services covered by the literal meaning of the terms listed.
Please note that, the new regulation provides that until 24 September 2016, declarations can be submitted in respect of trade marks that predate the IP Translator decision (i.e. that were filed before 22 June 2012) where the specification refers to the entire headings for one or several classes.
Search for earlier EUTMs
The EUIPO no longer automatically send search reports detailing earlier, potentially conflicting, EUTMs to applicants.
Proving acquired distinctive character in invalidity cases
Under the new law, registrants who are subject to an invalidity action will now be able to rely on evidence of acquired distinctive character from after the registration date of trade mark. Previously, this evidence had to relate to the period before the date of the trade mark application. Therefore a trade mark will not be declared invalid if the proprietor can show that the mark has acquired distinctiveness before the date of the invalidity application.
Own name defence
Under the new regulation, the own name defence is no longer available for companies. Thus the defendant’s use of a trade mark which is the same as its company name will not be a defence to infringement. The own name defence is now only available for natural persons.
During opposition proceedings, a trade mark owner whose trade mark has been registered for more than five years, may be required to provide evidence of actual use of the trade mark. Currently, the relevant date is five years preceding the publication of the trade mark application. This has been amended, with the relevant date being the date of filing or the priority date of the contested EUTM.
The time period for opposing an EUTM designation of an international registration has also been reduced. The three month period for filing an opposition is now triggered only one month after the trade mark publication date, as opposed to the current period of six months after publication.
The main change that will impact EUTM owners will be the interpretation of class headings in trade mark specification. Trade mark owners should take this opportunity to review the specifications of goods/services of their EUTMs. The scope of protection of their trade marks may be limited to goods/services which are covered by the literal meaning of the class heading, and consequently will not cover other products and services that belong in the class but cannot be construed from the general wording. As detailed above, trade mark owners have until 24 September 2016 to submit a declaration to the EUIPO amending the specification where the entire class heading is used. Bond Dickinson can assist with this process.
There are also a number of other changes which will impact trade mark owners. For instance, given the change in period to prove acquired distinctiveness, we strongly recommend that trade mark owners planning to rely on acquired distinctiveness keep evidence of use, dating from prior to the application, during the opposition stage and post-registration of the trade marks. Also, it is now no longer possible to rely on the use of a mark which is a company name as a defence to trade mark infringement.
A positive of the changes, is that it is now potentially cheaper to file an EUTM application, for instance, the official fee for a trade mark one class has been reduced from €900 to €850. However, to file a trade mark in three classes has actually increased from €900 to €1050, therefore it depends on the protection required as to whether the changes in fees will be a negative or positive change.
The EUTM is a unitary right covering the current 28 EU member states, it enables trade mark owners to obtain one form of protection covering all these jurisdictions. A main benefit of the system to applicants is that it is cheaper than filing individually in each of the countries. It allows trade mark owners to obtain the same form of protection at a fraction of the cost of filing nationally.
However, the drawback of a unitary right means that an issue in one member state, such as a conflicting national right, can knock out the entire EUTM. This will mean that the applicant will have to apply nationally in each of the jurisdictions of interest, thereby increasing the cost of obtaining protection.
As well as amending the EUTM system, the new regulation aims to harmonise national trade mark law at member state level. For instance, it is now mandatory for national trade mark law to allow a six month grace period for the renewal of trade mark registrations. The harmonisation will offer certainty for trade mark owners and ensure that national trade mark law is uniform across the EU, as well as in line with the EUTM regime.
The next step in the reform is the introduction of secondary legislation, which contains further reforms to the EU trade mark system, which is due to come into force on 1 October 2017. These changes include, the introduction of certification marks and the removal of the graphical representation requirements for trade marks. The individual EU member states will have until 15 January 2019 to implement the new elements of the regulation in their national legislation.
The reform is a welcome change for the EUTM system, implementing developments in case law and practice into EU trade mark statute. It will provide certainty and uniformity across the 28 EU member states and enable trade mark owners to have consistency in their protection in the EU.
Bond Dickinson LLP is a full service law firm and has a specialist team of solicitors and trade mark attorneys dedicated to advising on intellectual property matters for a wide variety of clients operating across various sectors. If you have any further queries concerning these changes or any other intellectual property queries, please contact the individuals below: