A large number of amendments and additions have been introduced to the current European Union trademark regime, following the publication of Regulation (EU) 2015/2424 on 16 December 2015. The alert outlines the main changes and highlights those aspects most important to users.
One of the main changes is to bring the terminology of the Regulation in line with the Lisbon Treaty, as follows:
- Community trademark = European Union trademark (EU trademark)
- Community trademark court = EU trademark court
- Community collective mark = EU collective mark
- Office for the Harmonization of the Internal Market (OHIM) = European Intellectual Property Office' (the Office)
The changes made relate to almost every aspect of the Regulation, including extensive changes to the organisation and running of the Office. From the user's point of view, there are important changes to:
- The definition and representation of an EU trademark;
- The classification of EU trademarks
- Absolute and relative grounds for refusal of an EU trademark;
- New rights in EU trademarks and limitations to the rights in EU trademarks; and
- A new fee structure.
The definition and representation of an EU trademark
Changes have been introduced to Art.4, which defines the signs of which an EU trademark may consist, to increase flexibility and certainty.
- The requirement for the sign to be capable of being graphically represented has gone, and other forms of representation are now possible.
- There is now a requirement that the mark should be represented on the register in a manner which allows third parties to 'determine the clear and precise subject matter of the protection afforded to the proprietor'.
- Colours and sounds are now included specifically in the list of particular things that may constitute an EU trademark.
- Art.74(a) creates a whole new regime for the registration of certification marks.
These changes reflect the increasing range of ways that brand owners may want to represent their brands, possibly in digital formats.
One of the most important changes for system users relates to the specification of goods or services for which a mark is registered. The specification should cover what the user supplies both actually and prospectively, but should not be so wide as to expose the mark to revocation for non-use. It is very important to get the specification of goods right.
Difficulties had arisen in relation to the classification of goods covered by a mark. Each class within the Nice Classification is defined by a class heading comprising one or more general definitions of goods or services. Additionally, there is an extensive list of individual items included in the class, some of which would be included in the normal meaning of the class heading, but some of which would not. For example the class heading for Class 26 is 'Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers'. The list of individual items includes 'darning needles' and 'lace for edgings', which are within the ordinary meaning of the class headings, but also 'reins for guiding children' and 'toupees' which are not.
Many users choose to define the goods or services for which their mark is to be registered just by reference to the class heading or simply by specifying 'All goods included in Class XX', although the latter is generally no longer acceptable. At first, the approach adopted by OHIM was that a specification of goods or services which used the general class heading of a particular class included all the individually listed items. However, the Court of Justice of the European Union in IP TRANSLATOR disapproved of this approach, stating that the specification of goods or services must be clear and precise and that use of the class headings must satisfy this requirement. Following this case OHIM changed its practice.
Art.28 of the new Regulation is entirely redrafted and seeks to overcome these uncertainties. The Nice Classification remains the basis, but the principle provision (Art.28(2)) now requires the specification to be sufficiently clear and precise so that third parties can be certain of the extent of the protection sought, on the sole basis of the specification. Class headings are still permitted so long as they meet this requirement (Art.28(3)). They will be construed as including only those goods or services which fall within the literal meaning of the words (Art.28(5)). So, for example, if reins for guiding children are to be included, they must be explicitly included.
The fact that different items are included in the same class does not necessarily mean they are 'similar' and the fact that they are in different classes does not necessarily mean they are 'not similar' (Art.28(7)).
Proprietors whose marks were applied for before 12 June 2012 which are registered in respect of the entire heading of a Nice class, have until 24 September 2016 to file a declaration at the Office that their intention at the time of filing had been to cover goods beyond the scope of the class heading as literally construed. The declaration must state, clearly and precisely, what other goods or services were intended to be covered (Art.28(8)).
Absolute and relative grounds for refusal of an EU trademark.
Art.7(1)(e) prohibited from registration signs which consist exclusively of:
- the shape which results from the nature of the goods themselves;
- the shape of goods which is necessary to obtain a technical result;
- the shape which gives substantial value to the goods.
Each of these categories has been amended so that they now read 'the shape, or another characteristic'. While the purpose of this change is not indicated, it could relate to the removal of the requirement for graphical representation or to the introduction of newer forms of trademarks such as colours and sounds.
Art.7 has also been amended by including specifically in the absolute grounds for refusal, marks which are excluded from registration by Union law, national law or international agreements relating to designations of origin and geographical indications, traditional terms for wine and traditional specialities, or which correspond to plant variety names which have earlier registration under Union law.
Art.8(4) is amended to give to anyone who is authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the right to oppose an application for an EU trademark.
Art.8(5) contains the provision relating to earlier mark with a reputation. The courts had held that the words 'not similar' in this provision meant either similar or not similar. To bring the legislation into line, the words are now amended to 'identical with, similar to or not similar to'. The same amendment is made to Art.9 which defines the rights conferred by an EU trademark.
Although no amendment is made to Art.52 or Art.53, which set out the absolute and relative grounds of invalidity, as these Articles refer back to Art.7 and Art.8, the same amendments apply.
New rights in EU trademarks and limitations to the rights in EU trademarks
Prior to the new Regulation, rights in a Community trademark were not effective against the import of goods into the European Union unless or until the goods had been put into circulation. The new Regulation reverses this position and makes a number of other provisions relating to customs procedures.
Two specific examples of infringing actions are added to Art.9(2) :
- Using the sign as a trade or company name or part of a trade or company name (Art.9(2)(d)); and
- Using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC (Art.9(2)(f)).
Art.9(4) is the provision which gives rights in relation goods brought into the EU without being put into circulation. However, this is subject to a proviso. Goods in transit which are alleged to infringe a trademark are subject to proceedings initiated in accordance with Regulation (EU) No 608/2013. Art.4 of the new Regulation provides that the rights granted by the Article 9(4) shall lapse if evidence is provided by the declarant or the holder of the detained goods that the proprietor of the EU trademark is not entitled to prohibit the placing of the goods on the market in the country of final destination. The reason for such a provision is obvious, but how it will work in practice is less clear.
A new provision, Art.9a, also extends the rights in an EU trademark to the prevention of certain preparatory acts such as affixing the infringing sign to packaging, labels, tags and other items, where there is a risk that these items could be affixed to goods or services in an infringing manner.
There are some changes to the limitations on enforcement of an EU trademark. The exception for own name use is limited to the name of natural persons, Art.12(1)(a)). The exception for uses which are necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, is amended so that such use is excluded only when it is for the purpose of identifying or referring to goods or services as those of the proprietor, Art,12(1)(c)).
A new fee structure both for application and renewal fees will be based on the number of classes an EU trademark covers. The rate, which applies to both applications and renewals:
- is EUR 850 for the first class,
- EUR 50 for the second class, and
- EUR 150 for a third and each additional class.
Previously, application fees were EUR 900 for the first three classes and EUR 150 for each additional class and renewal fees were EUR 1350 for the first three classes and EUR 400 for each additional class.
There are a host of other changes to the Regulation. Among them are provisions that:
- An application for an EU trademark can no longer be made at a national trademark office or the Benelux trademark office, but only at 'the Office';
- That an applicant who wants to receive a search report in respect of an EU trademark application must specifically request one;
- A requirement that a claim to priority from an earlier national or Community trademark must be made at the time of application, and the supporting documentation filed within three months.
While there is no doubt that some of the new provisions provide clarity in areas where previously there was uncertainty, it would be naïve to assume that the new provisions will not create new uncertainties and, no doubt, new battles through the courts.
 Case C-307/10