2016-03-21

The European Trademark legal reform: a modernisation of the trademark law?

After long discussions and analyses, the reform of the European Trademark Law, the so-called “Trademark Package”, was adopted on 15 December 2015 by the European Parliament and will come into effect on 23 March 2016 for the Community Trademarks.

This reform contains two texts, the objective of which is the enhanced harmonization of the trademark law in the European Union.

  • The new Regulation No 2015/2424 amends Council Regulation (EC) No 2007/29 of
    26 February 2009 and Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trademark.
  • The new directive No 2015/2436 replaces directive No 2008/95/CE: it aims to a harmonized functioning of the trademark systems and the unitary character of the trademark law both at national and Union level. The new directive was published on 23 December 2015 and came into effect on 13 January 2016. Unlike the Regulation, it does not have a direct effect and will have to be implemented by the member states within 3 years. However, it should be noted that a period of 7 years is allowed for the implementation of important dispositions about the new administrative procedures for opposition, revocation and invalidity.

No doubt that the upgrade brought by the new Regulation and Directive of the “Trademark Package” will have consequences in the trademark owners’ everyday life. The present summary does not comment each new measure of the Trademark Package but only the most important and noticeable changes.

A new name: “European Union trademarks”

It has been a long time since the “European Community” became the “European Union”. In order to align with this new name, the “Community Trademark” now becomes the “European Union Trademark” or “EU trademark”.

In the same way, the OHIM changes its name and becomes the EUIPO, i.e. European Union Intellectual Property Office.

Removing the graphical representation requirement

This is probably one of the most important improvements brought by the Trademark Package. In the past, the graphical representation requirement made it almost impossible to register sound trademarks, olfactory or gustative trademarks. From now on this provision of the Amending Regulation should make it easier to protect such trademarks.

The disappearance of this basic criterion means that it will be necessary to establish new technical standards and acceptable criteria in order to enable trademark owners to file their trademark applications and to allow the comparison of signs and determine a potential risk of confusion.

This amendment provides new protection opportunities to European trademark owners and is to be welcome as an evolution in line with technical developments.

Codification of case law IP TRANSLATOR

A trademark is a protected sign for specific products and services. These products and services are integrated in 45 classes sorted according to the international Nice classification. All classes include generic definitions (class headings) and numerous detailed products or services.

With the IP Translator decision the Court of Justice of the European Union requested a clear and precise description of the products and services to be protected by the trademark registration.

In the past, if you used the class heading, the protection covered all the products or services included in this class. The protection of such trademarks will from now on be limited to the list of goods and/ or services as indicated in the filing request.

The owners of the trademarks filed before 22 June 2012 now have the possibility to comply with the new requirements established by the decision IP TRANSLATOR until 24 September 2016, i.e. they can file a declaration requesting the amendment of the specification of their trademark registrations in order to meet the new criteria.

Consequently, if the concerned trademark owners do not clearly describe their products and services within this deadline, the scope of protection of their trademark will be limited to the literal sense of the definitions in the class headings.

Deciding not to modify the description of the products and services will thus limit the economic and legal value of trademarks and could even prevent trademarks owners from claiming their trademark rights against potential frauds or counterfeiters. We therefore recommend analyzing in detail the existing trademark registrations in order to avoid such inconveniences.

The end of the system « three classes for the price of one »

Until now the official filing fees for a community trademark amounted to 900 EUR for an application in one to three classes. As soon as the new Regulation comes into force the official filing fee for a EU trademark application filed electronically in one class will amount to 850 EUR, plus 50 EUR for the 2nd class and 150 EUR for each additional class. This corresponds to an increase of 150 EUR for a trademark application in three classes, whereas many European trademark owners need more than 3 classes for an adequate protection.

Contrary to what the official communications indicated, this is actually a tax increase.

The aim of this measure is to encourage the applicants to file their trademark applications only for the classes that are absolutely necessary and to slim down the European trademark registries. It might be interesting to verify whether the national Offices will also adopt on a voluntary basis this new facultative system.

Implementation of administrative procedures concerning cancellation or revocation

Currently the cancellation or revocation procedures of national trademarks are solely dealt with on a judicial basis, which often means high costs and long-lasting procedures.

The new Directive aims to simplify these proceedings by enabling the trademark owners or their representatives to initiate cancellation or revocation actions before the competent national trademark offices.

It is very likely that the amount of cancellation and revocation actions will increase exponentially if the new Directive is correctly implemented into the various national legislations.

Various changes

Furthermore, the “Trademark Package” will bring several other changes, some of which are listed hereafter:

  • The possibility to register guarantee or certification trademarks
  • An improvement in combatting fraud, especially by deleting the condition that fraudulent or counterfeited goods have to be sold in the territory of the European Union, but also by prohibiting to affix a sign identical with, or similar to a registered trademark, on all kinds of packaging, labels, tags, security or authenticity features or devices or any other means to which the mark may be affixed.
  • The traditional terms for wine, traditional specialties guaranteed and the designation of plant varieties, protected on a national level, will also constitute obstacles against the registration of European Union trademark applications.

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The “Trademark Package” maintains the coexistence of the two systems of trademark protection at national and European level but should lead to a harmonization of the procedures in both systems.

The ” Trademark Package ” is indeed a mix of small and major changes, that brings an evolution of the rules rather than a revolution of the European trademark law.