Likely Changes to European Trade Mark Laws
4 August 2015, Lynn Harris
Agreement has been reached between the European Commission, the European Parliament and the EU Council to revamp European trade mark law. This is likely to result in a number of important changes, which are summarised below.
Trade marks will no longer have to be “capable of graphic representation”, meaning that it should be easier to register colour, sound, motion and other non-traditional trade marks (such as the lion’s roar of MGM and the five note melody associated with Intel). A trade mark should, however, still be represented in a manner that enables the public and authorities to make a "clear and precise" determination of the subject matter.
Brand owners with non-traditional marks should consider preparing to file applications under the new system.
There will be additional protection for geographical indications, traditional terms for wine and plant varieties.
The fee structure is to change. Currently there is a fixed fee for up to three classes and additional fees payable for four or more classes. The changes introduce one class per fee. Although it will make it more expensive to file in three classes, it is hoped that this change will limit the number of applicants filing in classes they do not really need and blocking the register for other traders.
Brand owners who are considering filing multi-class applications in three or more classes should consider filing their applications now, so as to benefit from cheaper fees, before the changes come into effect.
The opposition period for international applications will still be 3 months, but will now start one month after the publication date, which will speed up registration being achieved.
No grace period for paying the application fee will be offered any longer and renewal, opposition, cancellation and appeal fees are to be reduced. As renewal costs are also reducing, this will help with budgeting costs. Overall, the fee changes are helpful to brand owners.
Use as a company or trading name is now specified as an infringement and there is clarification that trade mark owners can prevent competitors using their mark if it breaches the Comparative Advertising Directive.
As for counterfeit goods in transit through the EU, these will now infringe a registered trade mark.
If any brand owners are aware of counterfeit goods transiting the EU, they should consider involving Customs authorities in the relevant country or countries to seize the goods.
All national trade mark offices are to harmonise registration and other procedures across the EU. A particularly useful change is in relation to opposition, revocation and invalidity procedures in some countries, which had previously necessitated court action, will now be via the national trade mark office.
Finally, a less important change for brand owners, but one that may take a bit of getting used to is that the name ‘Community’ is to be changed to ‘Union’. Accordingly, the Community Trade Mark (CTM) will become the European Union Trade Mark (EUTM). Also, the Trade Mark Office in Europe is having its own re-brand, such that the Office for Harmonisation in the Internal Market (OHIM) will become the European Union Intellectual Property Office (EUIPO).
The European Commission, the European Parliament and the EU Council now have to formally vote on the changes, but they are expected to be introduced without much alteration. Member states will then have three years to implement the Directive into national law and seven years to implement the invalidity/revocation changes at their national offices.
These changes should streamline trade mark law across the EU, such that it is more harmonised than at present.
If you would like advice on any of these issues or on any other trade mark matters, please do not hesitate to contact us.