Important changes are being made to Community Trade Marks from March 23rd. Not only are they being renamed, the official fee structure is also changing. Our full report gives details on how it may affect you.

New Name: European Union Trade Mark

As from 23 March 2016 a Community Trade Mark (CTM) will become a European Union Trade Mark (EUTM) and the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) will become the European Union Intellectual Property Office (EUIPO).

This is the result of discussions that began in 2008 culminating in overall political agreement, reached in April last year between the European Parliament, the European Council and the European Commission, which has produced quite extensive changes to EU trade mark law.  This agreement produced two documents: a new Trade Mark Directive to approximate the laws of Member States relating to trade marks, and a Regulation amending current legislation embodied in Council Regulation (EC) No 207/2009 on the Community Trade Mark.

This briefing note is directed primarily to those changes that will be brought about by the amending Regulation (EU) 2015/2424 on Community Trade Marks and which will affect all trade mark owners and applicants.

Changes coming into effect from 23 March 2016

Official fees: new fee structure and reduced renewal costs

Official filing and renewal fees are changing as follows.

The current “three-for-the-price-of-one” fee structure for filing applications and renewing registrations has been scrapped in an attempt to reduce cluttering of the register with registrations covering goods and services in more classes than necessary. There is also a welcome reduction in renewal fees to the same level as application fees, as well as reductions for opposing applications, applying for cancellation/revocation of registrations, and filing appeals to the Boards of Appeal.

The due date for the renewal of registrations will now be every tenth anniversary from the filing date and will no longer be on the last day of the month in which that date falls.

Classification

OHIM previously interpreted use of the “class heading” (the brief summary of the type of goods or services included in a class) in the specification of a trade mark registration as covering all goods or services in the class. This approach was changed by the European Court of Justice in 2012 which ruled that a literal interpretation of specifications should be adopted.

To avoid loss of rights as a result of this decision, proprietors of EU trade mark registrations filed before 22 June 2012 and registered before 23 March 2016 for an entire class heading may file a declaration identifying goods or services of interest which are included in the alphabetical list for the class in question (in the edition of the Nice Classification in force at the date of filing) by 24 September 2016.

Owners of registrations applied for before 22 June 2012 and granted before 23 March 2016 should review their registrations and consider if filing a declaration would be appropriate. We will write to owners of Community trade mark registrations filed before 22 June 2012 which are on our records to advise further on this point.

Absolute grounds for refusal or invalidity

New or amended exclusions are introduced as follows:

• Signs consisting exclusively of shapes, and now also “or another characteristic”, (i) resulting from the nature of the goods themselves, (ii) necessary to obtain a technical result, and (iii) which give substantial value to the goods, cannot be registered.  Such objections cannot be overcome by evidence of distinctiveness acquired through use.  “Another characteristic” may be directed to non-traditional marks such as colours and smells.

• Trade marks which are excluded from registration include those that are protected as designations of origin, geographical indications, traditional terms for wine, traditional specialty guarantees, and plant varieties.

• It will no longer be possible to introduce disclaimers to overcome absolute grounds for refusal.

Relative grounds for refusal or invalidity

The following is an additional relative ground for refusal or invalidity:

• Any person duly authorised to exercise the rights arising from a designation of origin or a geographical indication may oppose a later trade mark, which shall not be registered if the designation of origin or geographical indication confers the right to prohibit the use of that later trade mark.

Opposition deadline for international registrations

The three month term for opposing EU designations of international trade mark registrations will begin one month (rather than six months) from the date of publication.

Proof of use in opposition proceedings

The five year period in which proof of use may be required for an earlier registration relied upon in opposition proceedings will now be calculated from the filing (or priority) date of the opposed application, rather than from the date of publication of the opposed application.

Rights conferred by an EU trade mark

The following are additional acts of infringement:

• Use of a mark as a trade or company name, or as part of a trade or company name, such that the “own name” defence to infringement will no longer apply to company names and will only apply to natural persons.

• Use in comparative advertising in a manner that is contrary to Directive 2006/114/EC on Misleading and Comparative Advertising.

• Use of an identical trade mark on goods brought into the EU, but not for release in the EU, in transit to a non-EU country, provided that the owner of the EU trade mark is entitled to prohibit the placing of the goods on the market in that non-EU country.  This is intended to enable seizure of counterfeit goods in transit.

• Preparatory acts in relation to the use of packaging or other means, including affixing a trade mark identical or similar to an EU trade mark to packaging, labels, tags or security features, and selling, stocking, importing or exporting such packaging, labels, tags or security features.

Genuine use

Use of the mark on goods solely for export purposes will now explicitly count as genuine use.

Changes coming into effect from 1 October 2017

Graphical representation

It will no longer be a requirement that a trade mark should be capable of being represented graphically.  The recitals signify that

“A sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”

This should facilitate the registration of non-traditional trade marks, such as sounds and holograms.

New EU certification mark

A new EU Certification mark will be created, facilitating cost-effective registration of certification marks across the EU. This will complement the existing provisions on EU collective marks.

Other procedural changes

Various other procedural changes will be introduced.

If you have any questions regarding the changes, please contact one of our trade mark attorneys.