EU Trade Mark Law Getting Modernised and Harmonised

Wide ranging amendments should make process of obtaining registration easier, while also strengthening the rights obtained...

Following a review commenced in 2008 the European Parliament has now approved reform of the Community Trade Mark (CTM) system, which will take effect from 23rd March 2016. While generally still fit for purpose, the following amendments are being made with a view to modernising, harmonising and improving efficiency:

• Replacing the term ‘Community Trade Mark’ with ‘European Union Trade Mark’, and replacing ‘Office for Harmonisation in the Internal Market’ (OHIM) with ‘European Union Intellectual Property Office’ (EUIPO).
• Formalising a framework for cooperation between the EUIPO and national office. This will include harmonising national practices with the EU trade mark system, with a view to having more streamlined procedures that are less burdensome on SME’s.
• Removing the requirement for registrable trade marks to be capable of graphical representation. Provided marks satisfy the criteria of being clear, precise, self-contained, easily accessible, intelligible, durable and objective they will be registrable. This will make it easier for non-conventional marks such as sounds, smells, tastes and colours to be registered.
• Following the ‘IP Translator’ decision by the ECJ in June 2012, subsequently filed specifications with general terms matching the relevant class heading have been interpreted literally unless accompanied by a statement to the effect that the term is to be interpreted with the scope of the class heading. This practice will be extended to earlier registrations unless proprietors file a declaration within 6-months of the new regulations entering into force (i.e. by 23rd September 2016) stating that they sought coverage as a class heading.
• Making bad faith a ground of opposition in addition to being a ground of revocation.
• Where invalidity proceedings are commenced against a trade mark on the basis of lack of acquired distinctiveness, the proprietor can rebut that allegation by showing acquired distinctiveness before the date of application for invalidity rather than as of the application filing date.
• Currently counterfeit goods can transit within the EU provided they are released for free circulation therein. However, the revised law would allow rights holders to prevent counterfeit goods from entering the EU, even if only for the purpose of forwarding on to a destination outside the EU.
• Applications will need to be filed at the central office rather than via a national office, and application fees will need to be paid at the time of filing rather than within the current one month grace period. Currently the minimum application and renewal fees can cover up to three classes. This will be replaced by single per class application and renewal fees that give discounts for concurrently filed or renewed classes.
• Where amendments are required to be made to national laws member states will have 3-years to do so – i.e. until 23rd March 2019.

Author: Quinn Miller

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