Reform of the
Community Trade Mark Regulation

by Julia Göppel

The recent reform of the Community Trade Mark Regulation includes an agreement on the most extensive changes to EU trade mark law since the 1989 Trade Marks Directive (2008/95/EC) and the 1994 Community Trade Mark Regulation (207/2009/EC). The new Regulation, (EU) 2015/2424, will enter into force on 23 March 2016. Member States will have until 14 January 2019 to transpose the provisions of Directive, (EU) 2015/2436, which enters into force 20 days after publication, into their national laws. Directive 2008/95/EC is repealed with effect from 15 January 2019.

In the following we have set out a non-exhaustive list of what we consider to be the key changes to the Community Trade Mark Regulation.

1. New terminology

All references to the Community are replaced with European Union.

The new regulation will be the European Union Trade Marks Regulation (EUTMR).

The Community Trade Mark is renamed the European Union Trade Mark (EUTM).

The Office for Harmonisation in the Internal Market (OHIM) will become the European Union Intellectual Property Office (EUIPO).

2. Non-graphical representations

Trade mark applications will no longer need to represent marks graphically. It has to be expected that it will therefore be easier to register non–traditional signs such as sounds or smells. The requirement will be that the sign applied for is “capable of… being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.

3. Trade mark classification

The Trade Marks Directive (TMD) and EUTMR codify the CJEU’s decision in the IP Translator case (Case C-307/10). According to this practice, a trademark covering a class heading of the Nice Classification of goods and services is protected only in respect of those goods or services which are literally included in that heading, and not in respect of all the goods or services falling in the relevant class.

Trade mark owners should be careful to ensure that all goods and services in respect of which the mark is, or will be, used are included within the class specifications filed to ensure the desired scope of protection is achieved which of course also has a bearing on enforceability. The relevant provision states that goods and services should be identified with sufficient clarity and precision so that the extent of the protection can readily be determined. Whilst the class headings of the Nice classification system may be used they must comply with the required standard.

The new regulation temporarily provides the possibility for owners of Community trademarks registered for whole class headings and filed before June 22nd, 2012, to detail their specification of goods and services by filing a declaration regarding products or services not comprised in the literal meaning of those headings, but belonging to the corresponding class. No official fee for this declaration will be due.

For example, if the trademark was filed for the heading of class 12 (“Vehicles; apparatus for locomotion by land, air or water”) in order to obtain the most broad protection in the field of transportation means, the trademark specification may be detailed by declaring spare parts of those products such as “vehicle wheel tires [tyres]”, which are not literally included within that class heading.

The additional goods or services must have been included in the prevailing Nice Class at the time. For more information on the Nice Classification and its different versions, see http://web2.wipo.int/classifications/nice/nicepub/en/fr/edition-20160101/taxonomy/

The declaration must be filed with the European Union Trademark Office (EUIPO) within a non-extendable, six-month deadline from the entry into force of the new regulation (on March 23rd, 2016), that is no later than September 24, 2016.

Without prejudice to the application of provisions on non-use, the Register will then be amended accordingly. Where the register is amended, the EUTM cannot be used to prevent third parties from continuing to use a trade mark where that use commenced before the register was amended and the use did not infringe on the literal meaning of the goods and services at that time. In addition, any amendment to the classification does not give the owner the right to oppose or apply for invalidity of a later trade mark where that later mark was in use or an application for registration had been made before the amendment and the use would not have infringed on the literal meaning of the goods and services on the register at the time.

In such cases, the owner will need to rely on the literal interpretation of the original, un-amended specification.

In the absence of any clarification of a class heading, or in case of late declaration, the trademark will be deemed to be protected only in respect of the goods or services clearly included in the literal meaning of the claimed class heading(s).

Alternative: Article 50 partial-surrender

It is always open to CTM owners to surrender part of their trade mark by deleting particular goods and services from a specification. This power can be utilized where the specification covers an entire class heading to delete that heading and replace it with the full alphabetical list of goods and services listed in the relevant Nice Classification for that class, less one type of good or service. This means replacing an entire class heading with a (very) long list of goods and services, which may have impacts especially on the questions of use and non-use.
If there might have been doubts as to whether a good or service was covered by the literal meaning of the words in the class heading, this method, like an Article 28 declaration, can overcome the doubt by expressly specifying the good or service in question.

4. Absolute grounds for Refusal or Invalidity

Signs which consist exclusively of the shape or another characteristic which results from the nature of the goods or is necessary to achieve a technical result, or which gives substantial value to the goods, may not be registered. This absolute ground, which cannot be overcome on evidence of acquired distinctiveness, has been extended to include “other characteristics” beyond shape.

 The following additional grounds have also been added as absolute grounds for refusal: designations of origin, geographical indications, traditional terms for wine, traditional specialities guaranteed and plant varieties.

5. Opposition/Infringement/Third Parties
  • Opposition period: The opposition period for international registrations will remain at 3 months but this will start one month after the date of publication (as opposed to 6 months).
  • The owner of a designation of origin or a geographical indication can rely on those rights to prevent the registration and use of a subsequent trade mark.
  • Marks with a reputation – this ground of opposition has been extended to cases where goods or services are similar
  • Using a registered trade mark as a trade or company name (or part of such) is a specific infringement.
  • Defense for trademark owners against counterfeiting
    • Goods in transit: Trade mark owners will be able to prevent the bringing into the EU of goods bearing a mark that "cannot be distinguished in its essential aspects from that trade mark" using any customs procedure (including transit, internal processing, temporary storage or free trade), unless the importer can prove that the trade mark owner would not be able to prevent the sale of the goods in the country of destination. Previously only goods that were put into circulation in the EU were deemed to infringe whereas under this rule the mere transporting or storing of goods through or in the EU could be an infringement.
    • Preparatory acts/ packaging:Trade mark owners can bring a claim of infringement to prohibit preparatory acts in relation to the use of packaging, labels or other materials to which a trade mark is applied where there’s a risk that such Materials will be used in relation to goods or services and that such use would constitute an infringement of the owner’s rights. Trade mark owners will be able to prevent an identical or similar mark from being applied to materials and also prevent others from offering, placing on the market, stocking, importing or exporting any offending materials.
6. Miscellaneous
  • Renewal: The EUIPO will inform the owner at least 6 months before expiry of the mark.
  • Mediation: The EUIPO may establish a mediation centre whose services can be used on a voluntary basis with the aim of arriving at a friendly settlement of disputes.
  • Certification marks: A set of specific provisions has been added for the purpose of providing protection to EU certification marks.
  • Licensees’ rights to sue

Licensees' will be able to sue for infringement only with the consent of the trade mark owner. Exclusive licensees will also be able to act if the owner fails to do so.

7. Revised fee structure

There is a new fee structure. The initial application fee no longer covers up to three classes. Instead it has been introduced a new "one-class-per-fee" structure. Renewal fees are similarly ordered with substantially reduced fees. Additionally, the fees payable for opposition, invalidity or revocation proceedings are all moderately reduced as is the cost of filing an appeal.

Application fees for an EUTM filed electronically

Class(es)

Current fee (EUR)

New fee (EUR)

One

900

850

Two

900

900

Three

900

1050

Four

1050

1200

(4th and subsequent class)

150 each

150 each

The application fee will be payable on application as opposed to the previous one month grace period offered.

Renewal fees for EUTMs (electronically):

Class(es)

Current fee (EUR)

New fee (EUR)

One

1350

850

Two

1350

900

Three

1350

1050

Four

1750

1200

(4th and subsequent class)

400 each

150 each

8. Conclusion

The new legislation includes some important changes that will modernize trade mark law. The changes to the EUTM Regulation will come into force on March 23rd, 2016.

Brand owners with CTMs filed before June 2012 should therefore be considering whether to declare that any Nice class headings were intended to cover all goods and services in that class. If a declaration is not made within 6 months of the EUTM Regulation coming into force, thus until September 24th, 2016 the latest, the specification will be deemed to only cover those goods or services covered by its literal meaning.

Brand owners considering multi-class (3 or more classes) filings might also consider taking advantage of the cheaper official fees now, before the changes come into force. Additionally, the reduction in renewal fees will mean that brand owners might consider reducing their budgets to account for the significant renewal fee reduction, which will apply to all trademarks with expiry date after March 23rd, 2016.

Of course, we stay at your disposal for your and your client’s further support, especially for examining the scope of your Community trademarks and for guiding you in defining and filing your modified specifications of goods or services, as the case may be.

Beetz & Partner mbB - Patent- und Rechtsanwälte - Steinsdorfstr. 10 - D 80538 München
Tel. ++49 89 21689100 - Fax ++49 89 21689200 - www.beetz.com - info@beetz.com