Recently, substantial changes to European trademark laws were announced. They are intended to make trademark-law procedures cheaper, faster and more reliable.
The reforms pertain to the EU Trademark Directive and the Community Trademark Regulation. The EU Trademark Directive lays down the framework for the national trademark-law provisions of the EU member states. The Community Trademark Regulation directly governs the law of the Community trademarks applicable throughout the EU. The changes to the Community Trademark Regulation are coming into force on 23 March 2016. The partially similar changes to the Trademark Directive must first be implemented by the EU member states into national law in the coming years.
We would like to inform you in this Infoletter about some important changes to the Community Trademark Regulation:
1. Changed terminology
Because as a result of the Lisbon Treaty the European Community became the European Union, the current designation, "Community trademark", is being replaced by "European Union trademark". In order to better express the Office for Harmonisation in the Internal Market's area of activity, this has been renamed the "European Union Intellectual Property Office" (abbreviated "EUIPO"). The text below already adopts the new terminology.
2. New fee structure, which is cheaper in many cases
A new stipulation of official fees will cause a reduction of costs in many cases. The fees for the renewal of the period of protection for European Union trademarks will fall particularly noticeably, which in future will be precisely the same as the registration fees. The basic fee for the registration of a European Union trademark will be lowered, but will no longer include registration in up to three classes of goods and services, but rather only in one class. The purpose of this is so that only those classes which the trademark applicant actually intends to use are named in the registration application.
3. Necessary review of the list of goods and services for older European Union trademarks
In the past, the rule was that European Union trademarks enjoyed protection for all goods and services of a class if the full class heading of the corresponding goods or services class was named in the list of goods and services.
In its "IP Translator" judgement, however, the European Court of Justice (ECJ) decided some time ago that European Union trademarks only enjoy protection for goods and services which are clearly and unambiguously covered by the literal meaning of the generic terms in the class heading. This case law was initially applied only to European Union trademarks which were applied for after 21 June 2012.
The new rules of the European Union Trademark Regulation now codify this ECJ case law and expand it to all European Union trademarks. The holders of European Union trademarks which were applied for before 22 June 2012 and which are (still) registered for complete class headings, however, have the option of declaring in the period from 23 March 2016 until 24 September 2016 that their trademark should cover further goods and services beyond the literal sense of the class heading. If the correspondingly named goods and services are set out in the alphabetical list of the relevant class in the version of the so-called Nice classification applicable at the time of the trademark application, they will be included in the list of goods and services for the trademark. European Union trademarks for which no declaration is submitted will apply after the expiry of the said deadline only for the goods and services which are clearly covered by the literal meaning of the terms in the heading of the pertinent class.
The rule outlined above applies correspondingly for international registrations with which protection was applied for for the European Union before 22 June 2012.
We will be writing in the next few months to the holders of European Union trademarks and international registrations for the EU for whom we are named as representatives, in order to explain specifically the action options existing in this respect in their particular case.
4. Evidence of right-preserving use
If action is taken under an older trademark, e.g. by filing an opposition to a younger European Union trademark right, the holder of the older trademark must upon request by the attacked party prove in future that it has used the older trademark in a sufficiently right-preserving manner within the last five years before the application date or the priority date of the younger European Union trademark right.
The date relevant in future for the calculation of the five-year period can be significantly before the formerly relevant date of the publication of the application for the attacked European Union trademark right, and be far in the past. Accordingly, it is even more important than before for the trademark holder to collect usage documents in a precautionary manner in order to guarantee that, in the event of dispute, use of its own trademarks can be proven, even for periods farther back in the past.
5. Faster protection possible for international registrations
In the future, international trademark registrations can be granted protection for the EU five months earlier than previously, because the opposition period has been brought forward by five months.
6. Trademarks can also be enforced against company names
The case law pursuant to the ECJ has assumed for some years that trademark rights do not confer an entitlement to proceed against the use of a company name if the company name is only used to designate the company and not the company's goods and services as well. This problematic limitation of the trademark right has fortunately now been overcome by the revision of the Community Trademark Regulation.
PPR & PARTNER would be pleased to advise you should you have any questions in connection with the new EU trademark-law legislation. Your contact partner is Mr Joerg Mever, attorney-at-law and special counsel for industrial property rights.