On 15 December 2015, the European Parliament adopted the new European Trademark Regulation. It will come into force on 23 March 2016. The new Trademark Regulation will reform the trademark system in the European Union in order to make it more effective, efficient and consistent.
The new Regulation will entail many changes for existing and future trademark owners. We will briefly outline the most important amendments for you.
Amendment to the definitions
As of 23 March, some definitions will have a new name. The official name of a European trademark will no longer be 'Community trademark' but 'European Union trademark' ('EU trademark'). The European Trademark Office will no longer be called the 'Office for Harmonization in the Internal Market ' but the 'European Union Intellectual Property Office' (EUIPO).
The requirement of graphic representability
With the entry into force of the new Regulation, trademarks are no longer required to be graphically representable in order to be eligible for protection. As long as trademarks are identified with clarity and precision, as far as both the authorities and the public are concerned, they are eligible for registration. A trademark must of course meet other requirements, such as a sufficiently distinctive character. In theory, this will facilitate the registration of, for example, odour and sound marks. The question, however, is whether such marks have a sufficiently distinctive character to be eligible for protection, because they cannot be regarded as being widely accepted until everyone recognises such an odour or sound as a trademark. We do not expect a major increase in the registration of this kind of mark.
Until now, a trademark could be protected in one, two or three classes for a single fee. It was not until there was a fourth class that that one had to pay an additional fee. This will change. The EUIPO will return to charging one fee per class. This change will apply not only to new registrations but also to renewals of existing registrations.
The fees for both applications for registration and renewals of registrations will however be reduced. The costs of renewing an EU trademark registration, in particular, will be considerably lower.
Scope of protection
Since June 2012, with the judgment in the IP translator case, it has no longer been assumed that all products in the class concerned were being claimed with the designation of the standard class heading. For a long time, this applied only to registrations dating from after the judgment in the IP translator case. Earlier registrations with class headings were still assumed to cover all products in the classes concerned. This will change with the introduction of the new Regulation. A class heading will henceforth claim only what is actually mentioned and not all products in the classes concerned. Trademark owners are given a transitional period of six months to correct their wording by way of a declaration. If such declaration is not filed in time, the registration will only apply to what is actually mentioned as of 23 September 2016.
You will find more detailed information on this issue in the previously published article 'New rules product descriptions European trademark registrations'.
Opposition, cancellation and invalidity
Opposition proceedings allow the owners of prior rights to raise objections to the registration of conflicting new trademarks. The new Regulation extends the grounds for filing a notice of opposition. At EU level, the protection of a geographical indication is also a new ground for opposition, but most of the additions are mandatory rules for national trademarks offices. For instance, it must become easier to take action against national registrations. At present, the court must cancel a registration or declare it invalid, resulting in time-consuming and costly proceedings. National trademark offices are given seven years to put this facility in place.
The period for filing opposition against the EU designation of an International Registration is being brought forward. It used to start six months after publication and is now being brought back to only one month after the publication of the designation of the International Registration.
Until now it was possible to register two different kinds of trademarks in the European register. Aside from 'ordinary' marks, referred to as individual marks, there were also collective marks that serve to distinguish one or more common characteristics of goods or services of an association of businesses. One group was clearly missing. Trademarks are sometimes used to guarantee characteristics of products where there is just a single trademark proprietor and a large group of users. In order to fill this gap, a third kind is added, i.e. the certification mark. The certification mark guarantees that products with this mark will meet certain standards or characteristics. The proprietor of the registration must therefore ensure that these products actually meet these standards or have these characteristics. The regulations governing use, which specify who is authorised to use the mark, which characteristics are certified, how the certifying body is to test those characteristics and how the use of the mark will be supervised, including sanctions that may be imposed must be submitted to the EUIPO.
Counterfeit products in transit
The new Regulation also offers better tools to combat counterfeiting. Where trademark proprietors could previously only act against counterfeit products once they had been or were about to be put on the market in the EU, they are now given more options. They can also act against infringing products that are not destined for the European market or consumers, but that nonetheless enter the EU, e.g. by transit, transhipment, warehousing, free zones and temporary admission, unless the importer can demonstrate that the trademark proprietor is unable to counter the sale in the country of destination.