This month will see a major overhaul of the current EU trade mark system. This article summarises some of the key changes relevant to your (or your clients’) rights as a European Community Trade Mark (CTM) holder.
Background
The CTM, as it is currently known, is a unitary right which provides the proprietor with trade mark protection in all 28 Member States of the European Union. The right was first created in 1994 by an EU Regulation, and has been amended several times since, the current version having been adopted in February 2009. This Regulation is the principal piece of legislation governing the CTM system. In March 2013, the European Commission published proposals seeking to modernise the Regulation with the aim of making the system more streamlined, accessible, and cost effective. The resulting EU Regulation 2015/2424 amending the 2009 CTM Regulation will enter into force on 23 March 2016.
Summary
- CTMs will now be known as EUTMs; OHIM will be called the EUIPO.
- There is a six-month window to expand coverage of earlier EUTMs which cover class headings.
- Official fees on application and renewal are changing.
- How non-traditional marks can be represented on the register is changing.
- Grounds for refusal are being expanded.
- Proof of use rules in infringement and opposition proceedings are changing.
- Anti-counterfeiting measures are being broadened.
Main changes in Detail
Below is a non-exhaustive list of some of the key changes that will be introduced:
1) Terminology
The word ‘Community’ will generally be replaced by ‘European Union’. Therefore, the Community Trade Mark will in future be known as the European Union Trade Mark (EUTM) and the Community Trade Marks Regulation (CTMR) will be referred to as the European Union Trade Marks Regulation (EUTMR). In addition, the Community Trade Marks and Designs Office, currently referred to as the Office for Harmonization in the Internal Market (OHIM), will be renamed the European Union Intellectual Property Office (EUIPO).
2) Classification of goods and services
As advised in our earlier communication, one of the most significant changes to the EU trade mark system concerns the goods and services deemed covered by existing CTM registrations (including corresponding CTM designations under the Madrid system). More specifically, the change affects CTMs filed prior to 22 June 2012 and include amongst the list of goods and services they cover the “heading” of the class concerned. (The term “Class Heading” means the summary of the goods and services of each class of the Nice Classification of Goods and Services in force when the CTM application in question, was filed – see here.)
OHIM previously took the view that the inclusion of class headings should be interpreted as meaning that the CTM covered all goods in the alphabetical list of available goods in that class. Following a decision of the Court of Justice of the European Union, this practice has had to be amended, and now class headings will only be interpreted as including goods which clearly fall within their literal meaning.
By way of example, “cotton wool” is probably not included within the literal meaning of the class 3 heading which currently reads “bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.” If it was intended that such a registration should have covered cotton wool and the proprietor wishes to ensure that the mark is protected for such goods, a corresponding declaration and request to amend the registration should be filed by the deadline of 24 September 2016.
By contrast, “wine” is plainly within the literal meaning of the class 33 heading namely “alcoholic beverages”. Therefore, an application to include wine in a class 33 registration that currently lists just “Alcoholic beverages” would not, in our view, be necessary.
If your, or your clients’, Community Trade Mark registration (or corresponding Madrid designation) includes the class heading, and was applied for prior to 22 June 2012, then it should be reviewed to ensure that it expressly covers everything the original application was intended to cover.
NB – The above applies to CTM registrations (or corresponding protected designations under the Madrid system) filed before 22 June 2012. It does not apply to pending applications (or pending Mad rid designations). If you or your client has such a pending application it may be possible to amend the specification of goods/services in accordance with the above. However, as advised in our earlier newsletter, any such amendment must be requested before 22 March 2016.
Action. If you would like us to review your, or your clients’ CTMs, and to advise whether the filing of a declaration and a request to amend the goods/services they cover would be desirable, or if you have any questions, you should contact us bearing in mind the unextendible deadlines noted above.
3) Fee structure
Currently, when filing a CTM application electronically, it is possible to cover up to three classes of goods and services for the same official fee of €900. An official fee of €150 is charged for each additional class beyond the third. Similarly, when renewing a CTM registration the current fee is the same for up to three classes of goods and services (€1350) and there is an additional fee of €400 for each class beyond the third. The EUTMR is changing this structure for both filing and renewal. Additional official fees will be charged based on each class beyond the first class claimed, not the third.
For businesses that wish to renew their registrations beyond the initial ten year protection period, the changes may reduce overall costs by up to 37%. However, as far as filing fees are concerned, the revised structure will reduce fees for applications filed in one class of goods and services though will increase the cost for applications filed in three classes and up.
A summary of the revised structure is shown below:
4) Graphical representationAction. If you (or your client) intend to apply for a CTM in three classes or more in the near future, a significant saving could be made by doing so before 23 March 2016. It will not be possible to time the filing of renewal applications to make any saving.
After a CTM application is filed, it is examined by OHIM to check that it meets the necessary requirements for legal protection. One of the aspects OHIM checks is that the mark applied for complies with the EU definition of what a CTM may protect. Currently, the mark filed must be: a) a sign, b) capable of being represented graphically and c) capable of distinguishing the goods and services of one undertaking from those of other undertakings.
Most marks satisfy these criteria without difficulty. Nonetheless, the EUTMR further lowers the bar by removing the requirement that marks be represented graphically. This opens up greater possibilities for registering non-traditional marks, such as smells. The new requirement will be that signs must be capable of being “represented on the Register of European Union trade marks, (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. As long as a sign can be represented by generally available technology in a way that is sufficiently clear, precise, self-contained, easily accessible, intelligible, durable and objective, there is no need for the representation to be graphical.
This change will not come into effect until September 2017 when new Implementing Regulation (Rules) will also be adopted.
5) Absolute grounds for refusal
The EUTMR will add the following to the list of marks that can be refused on examination under absolute grounds for refusal:
- geographical indications
- designations of origin,
- traditional terms for wine,
- traditional specialities
- plant varieties.
6) Proof of use
A defendant in infringement proceedings may now require that the owner of an earlier CTM, which has been registered for more than five years, prove use of its mark (or provide proper reasons for non-use) during the five years immediately prior to the commencement of the proceedings.
Until now, during opposition proceedings, the proprietor of an earlier CTM which had been registered for more than five years could be required by the applicant to show use of its mark when requested by the applicant. The relevant date for the five year period was the date of publication of the opposed application. The EUTMR changes this rule such that the relevant date will now be the filing/priority date of the application.
7) Anti-counterfeiting measures
The EUTMR introduces increased protection against counterfeiters. Under the previous law, where infringing goods were not intended for circulation in the EU market, it was not possible to prevent third parties from bringing goods into the EU. It will now be possible to seize goods in transit bearing marks that are identical (or essentially identical) to the EUTM in question where those goods are covered by the registration. As it will no longer be necessary for the infringing goods to be intended for the EU market, this will consequently make it easier for EUTM proprietors to prevent counterfeiting outside of the EU. There is thus = an increased benefit in setting up an EU-wide customs watch.
Action. Consider setting up an EU customs watch on your or your clients’ CTMs.
