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18 January 2016
The European Council has published news of impending changes to the Community Trade Mark Regulation and a new Trade Mark Directive, most of which will come into effect in March 2016.
The changes do away with some of the idiosyncrasies which have made European trade mark law less accessible to the non-professional public.
Most saliently, all references to “Community” shall be replaced with “European Union”. Thus the Community Trade Marks Regulation (CTMR), will become the European Union Trade Marks Regulation (EUTMR), and the Community Trade Mark the European Union Trade Mark.
The European trade marks registry, OHIM, is re-named as the European Union Intellectual Property Office (EUIPO), despite the fact that it does not currently deal with patents. However, there are other issues, less cosmetic in nature, which will have a significant impact on trade mark law and practice in the EU.
The Community Trade Mark Regulation has previously required marks to be capable of graphical representation in order to achieve registration. The intention behind this was that the register should be capable of easy consultation by interested parties. However, the need for graphical representation had long hindered the registration of non-traditional trade marks, such as sound, smell, and moving image marks.
Now, in the context of the public’s increased access to technology, the Office has altered its stance, and an amended requirement, less restrictive than that of graphical representation, has been introduced. Under the new Regulation, the mark must “be represented on the register in a manner which enables the competent authorities and the public to determine the precise subject matter afforded to its proprietor.”
Where before musical score was deemed an appropriate graphical representation of a music mark, the Office will now accept a digital sound file. The same applies to motion marks, where a video file may be submitted.
While some non-traditional marks, such as smell marks, will continue to be problematic under the new wording, the path has been cleared, in principle, for greater registration of sound and moving images as identifiers of origin. Implementation of this change will be concluded by September 2017 in order to allow national offices the chance to update their digital infrastructure as required.
Certification trade marks
From 24 September 2017, a new category of European intellectual property protection will be available- certification trade marks. A certification mark is designed for use by authorised entities, and rather than identifying the goods as those of a single entity, it guarantees to the relevant public that the goods or services possess a particular characteristic, such as a level of quality, a mode of manufacture of goods or performance of services, or that they are made from a particular material.
A certification mark can be used to prevent trade mark applications for the same sign as well as use by unauthorised parties. Importantly, the proprietor of a certification mark cannot itself continue to offer the goods or services covered by the registration. Rather, the proprietor must issue as part of the application a set of regulations governing the conditions of use of the mark, as well as specifying the persons authorised to use the mark, the characteristics to be certified, and how the proprietor will enforce and assess those characteristics and otherwise supervise use of the mark, including the sanctions applicable for misuse.
Certification marks are already available in the United Kingdom, but new applicants will soon be able to enjoy protection throughout the EU.
Own name defence for corporate names
The new Trade Mark Directive provides that use of another’s registered trade mark without consent as a trade name or company name is now specifically deemed infringing use. However, use of a natural person’s own name will remain a defence. Additionally, use of a registered trade mark in comparative advertising will also be deemed an infringement unless it complies with the EU’s Comparative Advertising Directive (2006/114/EC).
Goods in transit
Registered trade mark owners will be able to prevent infringing goods bearing the trade mark from entering the EU where their release for free circulation has not been consented to by the rights holder. The new regulation covers the entry of goods into the EU as well as their placement in all customs situations, including transit, trans-shipment, warehousing, free zones, temporary storage, inward processing or temporary admissions. The importer will have a defence where the final destination of the goods is a country where the trade mark rights do not prevent their sale.
Proof of use
Until now, only defendants in opposition and cancellation proceedings were able to request that the owner prove use of trade mark registrations relied on in such proceedings where the registration was more than five years old. The new Trade Mark Directive provides that, where it is established that the trade mark could be revoked (such as on the basis of non-use) at the time of the infringing use, the defendant may request that the owner of the EUTM proves use of the mark in the five year period preceding the commencement of the infringement proceedings.
In light of its considerable surplus, the Office has reduced the fees for EUTM applications, accounting for savings of 37% over the life-time of a renewed trade mark. Moreover, in a change to the fee structure, an application will now only cover one class unless others are specified, where before the fixed application fee allowed for up to three classes to be specified.
Classification of Goods and Services
The new Trade Mark Regulation and Trade Mark Directive accommodate the decision handed down in the IP TRANSLATOR case (Case C-307/10). This concerned the interpretation of a registration’s scope of protection where the specification listed only the terms in a particular class heading. The confusion surrounded whether this was to be taken as referring to every single good or service in the class, or merely the goods and services referred to literally by the terms of the class heading.
Article 40 of the new Trade Marks Directive and 28 of the EU Trade Marks Regulation provides that the applicant must identify goods and services “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.” IP TRANSLATOR makes use of the same requirements for register clarity as does the Sieckmann criteria, which establishes that information included there must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
Accordingly, the Regulation and Directive provide that terms should be interpreted only to the extent of their literal meaning.
Evidently, rights cannot be taken away from the thousands of registrations filed on the basis of a different interpretation in the years before IP TRANSLATOR became settled law.
The Office’s solution to this problem is to allow a six month window for applicants to clarify the scope of protection which they intended. Where an application was filed before June 22 2012 and specifies the Nice Class heading in its entirety, as it stood at the time of filing, and where the literal meaning of the terms would not cover the goods or services, the trade mark owner may file an “Article 28(8) amendment”, which allows him to specify the exact terms he intended to protect. These will then be protected in addition to the literal interpretation of the class heading terms. This system was the result of much negotiation and a late change in March. The Article 28(8) provision now applies to International Registrations designating the EU as well, but amendments can only now be filed for so-called ‘orphan’ terms- like ‘translation’ in Class 41- which could not be covered by the literal meaning. In practice, it is often difficult to think of these ‘orphan’ terms, such that far fewer registrations will now be affected. However, owners of qualifying marks in Class 7 (machine parts) and Class 12 (vehicle parts) should take particular care.
If you require further information on anything covered in this briefing, please contact your usual contact at the firm.
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, January 2016