Key Changes to the Community Trade Mark System in 2016/17
The EU trade mark reform legislative package was published on December 24, 2015 in the Official Journal of the European Union. The publication put in motion the implementation of the various and significant reforms to Community trade mark law. The following is a summary of the key changes contained within the Regulation.
The term “European Union” replaces “Community” and therefore we will no longer refer to rights as Community trade marks but as European Union trade marks. Accordingly the Community Office will be known as the European Union Intellectual Property Office.
- New Fee Structure
A new fee structure will be implemented, namely a one-class-per-fee system, as is used in almost every other territory.
- The basic official fee for the application for registration of an individual mark by electronic means will be €850 (Euros) rising to €1000 (Euros) for a non-electric filing.
- The official fee for a claim to a second class of goods/services in the application will be €50 (Euros)
- The official fee for each class of goods/services claimed in the application exceeding two will be €150 (Euros)
- The basic official fee for the renewal of an individual EU trade mark registration by electronic means will be €850 (Euros), rising to €1000 (Euros) for non-electronic filing
- The official fee for the renewal of an EU trade mark registration will increase by €50 (Euros) where there is a claim to a second class of goods/services in the registration.
- The official fee for the renewal of an EU trade mark registration will increase by €150 (Euros) for each class of goods/services claimed in the registration exceeding two.
A full list of the revised fees is available on request.
- Formal Recognition of the Registrability of a Wider Scope of Non-Traditional Trade Marks
There is to be formal recognition of the registrability of a wider scope of non-traditional trade marks. The existing wording in the Regulation states that “A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”. This wording is to be replaced with “An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or the packaging of goods, or sounds, provided that such signs are capable of ;
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) 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 or the protection afford to its proprietor.”
Please note that the requirement that a trade mark is “capable of being represented graphically” has been removed and replaced with the term “capable of ...... being represented on the Register in a manner which enables the competent authorities and the public to determine a clear and precise of the protection afforded to its proprietor”. This should enable trade mark owners to formally protect a far broader range of trademarks in the EU, thus boosting their ability to trade with confidence in the European Union. However this change will come into force only on 24th September 2017.
- Absolute Grounds of Refusal
The Regulation introduces significant changes to the wording of Article 7. The current wording for Article 7(e) states that a trade mark shall not be registered if it consists of,
“signs which consist exclusively of;
i the shape which results from the nature of the goods themselves;
ii the shape of goods which is necessary to obtain a technical result;
iii the shape which gives substantial value to the goods”.
This will now be replaced by
“signs which consist exclusively of;
i the shape, or another characteristic, which results from the nature of the goods themselves;
ii the shape, or another characteristic, of goods which is necessary to obtain a technical result,
iii the shape, or another characteristic, which gives substantial value to the goods.”
In effect this broadens the scope of absolute grounds of refusal as the requirement applies to all types of trade mark rather than being restricted to shape marks. Of course it is yet to be seen how the Examiners will apply this aspect of the new Regulation.
- Counterfeit Goods passing Through The EU
One particularly welcome aspect of the new Regulation is the addition of Article 9 (4) which states “Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trade mark which is identical with the EU trade mark registered in respect of such goods or which cannot be distinguished in its essential aspects from that trade mark”. However Article 9(4) continues “The entitlement of the proprietor of an EU trade mark pursuant to the first sub-paragraph shall lapse if, during the proceedings to determine whether the EU trade mark has been infringed, initiated in accordance with Regulation (EU) No. 608/2013 concerning Customs Enforcement of Intellectual Property Rights, evidence is provided by the declarant or the holder of the goods that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination”. Therefore, whilst this should make it easier for a trademark owner to prevent counterfeit goods from passing through EU countries, that ability will be tempered if the goods are destined for a country in which the trade mark concerned is not protected.
- The Clarity of Claims to Goods and/or Services
Article 28 of the Regulation formalises changes to examination practice (already implemented) to ensure that the goods and services for which the protection of the trade mark is sought are identified by the Applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought. Proprietors of EU trade marks, applied for before 22nd June 2012, which include claims to the entire heading of a Nice class, may, within a specified period (March 23rd 2016 – September 22 2016) make a declaration that the intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal interpretation of the wording of that class heading. The declaration will need to describe in a clear, precise and specific manner the goods and/or services that are now to be claimed (replacing the claim to the class heading). If the declaration is filed within this period and the specification is acceptable to the Examiner the Register will be amended accordingly.
Please note that as from the expiry of the period ending September 22 2016, claims to goods and/or services in European Union registrations for which no such declaration is filed and accepted shall be deemed to extend only to a literal interpretation of the goods and/or services set out in the class heading concerned.
Where the Register is amended, the exclusive rights conferred by EU trade mark under Article 9 shall not prevent a third party from continuing to use a trade mark in relation to goods or services where and to the extent that the use of the trade mark for those goods or services:
- commenced before the Register was amended, and
- did not infringe the proprietor’s rights based upon the literal meaning of the record of the goods or services in the Register at that time.
In addition, the amendment of the list of goods or services recorded in the Register shall not give the proprietor of the EU trade mark the right to oppose or to apply for a declaration of invalidity of a later trade mark where and to the extent that:
- The later trade mark was either in use or an application had been made to register the trade mark for goods or services before the Register was amended; and
- The use of the trade mark in relation to those goods or services did not infringe, or would not have infringed, the proprietors rights based on the literal meaning of the record or the goods or services in the Register at that time.”
Owners contemplating the protection of their trade marks in the EU may consider that aspects of the Regulation currently in force would benefit their own strategy and on that basis wish to accelerate any required filings – particularly those seeking to claim in excess of three classes of goods/services in the application. Others may consider that the amended Regulation better suits their strategy and will prefer to wait until after March 23rd 2016 when the majority of the new provisions have been implemented.
Please contact WP Thompson for further advice