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2016/02 > The “Trademark Reform Package” is not neutral!

The trademark reform package, which has been under discussion for several years, was finally voted in by the European Parliament in the plenary assembly of December 15, 2015, through adoption of two new legal texts:

Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 approximating the laws of European Union Member States (recast) (OJEU L 336/1 of December 23, 2015).

The Member States must implement the new dispositions of the Directive in their national legislation by January 15, 2019.

Regulation (EU) 2015/2424 of the European Parliament and of the Council of December 16, 2015 amending Council Regulation (EC) n°207/2009  on the Community trade mark and Commission Regulation (EC) n°2868/95 implementing Council Regulation (EC) n°40/94 on the Community trade mark, and repealing Commission Regulation (EC) n°2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trademark and Designs) (OJEU L 341/21 of December 24, 2015).

The new Regulation will enter into force on March 23, 2016. It provides for several amendments – notably regarding the procedure for filling a trademark application, the manner of designating goods and services, a new fee system, several procedural amendments – while reaffirming the rights conferred on the trademark owner.

A graphical representation is no longer a sine qua non requirement for trademark application purposes:

Until now, legal provisions required that, in order to be registered as a trademark, a sign had to be must be capable of being represented graphically. A non-exhaustive list was provided of signs that could potentially satisfy this condition, provided that those signs remained distinctive of a company’s products and services compared to those of others companies.

Not only have sounds now been added to this list of signs, but a representation “which enables competent authorities and the public to precisely and clearly determine the object that will benefit from the protection given to the trademark’s owner” is from now on sufficient. Hence, the protection of audible, audiovisual and 3D trademarks is now possible in the form of audio or video files, provided that the file format that will be accepted by the trademark Office is rapidly defined. However, the existing Case Law that requires a clear, detailed, easily accessible, durable and objective representation of the sign remains applicable.

(New article 4)

Up until September 24, 2016 the general wording of trademarks registered prior to June 22, 2012 can be amended to be more detailed.

Since the IP Translator decision (C-307/10) handed down by the European Court of Justice on June 19, 2012, although it is permissible to register a trademark using a specification of goods/services which uses expressions from a class heading, as provided by the international classification, in this situation, the trademark protection can only extend to the designated products and services, according to their literal meaning (understood globally), and not to the totality of products and services in a given class. In order to benefit from a protection targeting specific products and services, the specification of goods/services must precisely specify the targeted goods/services and not simply use the class heading. Clearness and precision are necessary so that not only the competent authorities, but also other economic actors, are able to evaluate the scope of the protection that is claimed.

The Council Regulation gives the opportunity, until September 24, 2016, for trademark owners whose trademarks were registered prior to June 22, 2012, to rephrase their trademarks’ specification of goods/services, when the specification solely refers to the class heading of one or several classes. It is in the interest of trademark owners to review the specifications of goods/services of their trademarks during this “moratorium” so as to rephrase them more precisely.  Otherwise, their trademark’s protection will be limited to what can strictly be understood from the trademark’s general specification of goods/services and will consequently not cover other products and services that belong in the classes but cannot be deduced from this general wording.

(New article 28)

The institution of a new fee system

In order to satisfy requests made by numerous users, the lump sum “one fee payment for three classes” is replaced by a “one fee per class” system, with an additional fee for every additional registered class.

Although the fee amount for registration in the first class is a little lower than the three classes’ lump sum, this “per class fee” equals old the lump sum amount when at least two classes are specified. As a consequence, the new system induces inflation in registration fee costs.

(Article 26, new paragraph 2)

A new payment date for trademark renewals

The Regulation provides that the registration renewal date is the exact date of the trademark’s expiry and no longer the last day of the month. Moreover, the renewal can be performed for one or several classes. Arrangements have already been put in place to regulate payments made prior to the date of entry into force, March 23, 2016, for renewals having deadlines after this date. Renewal fees have been significantly lowered both for renewals in one to three classes and for each additional class.

(New article 47)

Procedural aspects

Traditional Specialties Guaranteed (TGS) and plant variety certificates have been added to the list of absolute impediments to trademark registration. Furthermore the list of absolute impediments to registration has also been broadened to include signs when they are not exclusively constituted of a shape but also of another characteristic, and this is imposed by the product’s nature, or constituted by a functional characteristic, or by a characteristic which gives substantial value to the product. This restricts yet further the possibility to register a three-dimensional trademark.

The opposition procedure to trademark registration is from now on, accessible to persons who are authorized by their national legislation to benefit from rights granted by protected designation of origin (PDO) and protected indication of origin (PIO).

During a nullity action or an opposition proceeding, a trademark owner, whose trademark has been registered for more than five years, can be requested to provide evidence showing actual and serious use of his trademark, for products and services for which it was registered, during the five consecutive years prior to the filing date or priority date of the later trademark application. Until now, the relevant date was five years preceding the publication of the trademark application.

The time period for opposing an international trademark has been reduced. The three month period for filing an opposition now is triggered only one month after the trademark publication date, and not six months after publication.

(Article 8 amended)

Reaffirmation of the trademark owner’s exclusive right

The Regulation reaffirms the trademark owner’s right to prohibit the unauthorized use in the course of business of an identical or similar sign for identical or similar products or services, as a trade name or commercial denomination or as part of a trade or commercial name or in commercial paperwork and in advertising or in use in comparative advertising in a manner contrary to Directive 2006/114 of December 12, 2006.

The Regulation also prohibits preparatory acts regarding the use, in the course of business, of packaging, stickers, marking, safety or identification devices, or any other medium upon which the trademark is applied, as well as the offering or commercialization, the possession for commercialization or other purposes, or the exportation of those elements.

By recourse to customs authorities the trademark owner can prevent, the unauthorized entry into the European Union of a product from a non-member State, branded with an identical trademark or essentially identical sign, even if those branded products are in transit and are not intended to be commercialized in the European Union.

It is the responsibility of the products’ owner or declaring party to provide evidence showing that the trademark owner lacks the right to forbid commercialization in the final destination country.

Trademark rights are effective vis-à-vis third parties as from the publication date of the registration, but a compensatory fee can be required for acts that take place after the date of publication of the application, and which would be forbidden after the trademark registration.

(New articles 9, 9bis and 9 ter)

Finally, as a result of application of the Lisbon Treaty, the expression “community trademark” is replaced by “European Union trademark” and more broadly, the term “community” is replaced by “European”.  Moreover, the OHIM is newly named “European Union Intellectual Property Office”.

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