The European Trademark Reform brings substantial changes not only to Community trademarks but also for owners of national trademarks in the EU. The reform package consists of two legislative components:
- The European Union Trademark Regulation (Regulation (EU) 2015/2424) sets out rules applicable to EU trademarks and came into force on 23 March 2016 although not all changes have been implemented immediately.
- The new Trademarks Directive (Directive (EU) 2015/2436) intends to further harmonize the national trademark systems of the EU member states. It has come into effect on 13 January 2016 but requires implementation by the individual EU member states. Two deadlines are running for the various amendments. The vast majority of changes needs to be implemented by 14 January 2019 at the latest. The introduction of mandatory office proceedings for revocation and declaration of invalidity for trademarks has to be implemented by 14 January 2023.
The confirmed reform package contains a wide range of innovations, including changes to the fee structure, criteria concerning the registrability of trademarks and procedural issues as well as certain changes applicable to infringement proceedings and customs seizures. Some of the most relevant changes are:
- The Community Trademark (CTM) was re-named into European Union Trademark (EUTM) and the Office for Harmonization in the Internal Market (OHIM) became the European Union Intellectual Property Office (EUIPO) as of 23 March 2016.
- There is a new one-fee-per-class-system for trademark applications and renewals of European Union Trademarks which is accompanied by a new fee structure. These changes came into effect on 23 March 2016 and OHIM has issued a new fee schedule. The good news is that renewals have become substantially cheaper. However, the official fees for trademark applications containing 3 or more classes increased.
- The regulation will also affect the classification of trademarks. Under previous practice, “broad” specifications consisting of "class headings" were deemed to cover all goods and services within that particular class. This topic that has undergone substantial discussions since the CJEU rendered its decision in the IP Translator case in June 2012. Under the new rules, and in accordance with general practice since IP Translator, only goods and services that fall within their literal meaning will be covered. The proprietors of EUTMs filed before 22 June 2012 and designating the entire heading of a class will however be able to notify the Office of the European Union, no later than 24 September 2016, of their intention to seek protection in respect of goods and services beyond those covered by the literal meaning of the said heading (Article 28(8) of the Regulation).
- It will become easier to register non-traditional trademarks since the requirement to represent a mark 'graphically' will no longer apply. This change is very substantial and will apply as from 1 October 2017 for EUTMs. It will enable trademark applicants to apply for trademarks protecting sound, colour, shapes and movements more easily. To give an example that demonstrates the relevance of this change: Under the current system, sound marks were registered only when a music notation was provided. This will not be required any longer with the effect that sounds not representable by music notes may be registered.
- There are also changes concerning the seizure of counterfeit goods which are in transit through the EU. A seizure will become possible even in cases where the goods were not meant for the EU, unless they would not be infringing in the country of their final destination. The respective burden of proof will be shifted towards the alleged infringer.
- The opposition period for EU designations in International Registrations (IRs) presently commences six months after publication. This has been amended to be one month after publication. The opposition period itself remains three months. If no oppositions are filed, the IR will be granted protection within 4 months rather than within 9 months (as is current practice).
- Under the new law, renewals for EUTMs must be requested by the date of expiry and no longer at the end of the month during which the expiry of the trademark occurs.
- An EU Certification Mark will be introduced as a new type of trademark at EU level as of 1 October 2017. Certifying institutions will be able to permit adherents to the certification system to use the mark as a sign for goods or services complying with applicable certification requirements. The introduction of EU certification marks will remedy the current inconsistency between national systems and the EU trademark system.
- Protection of marks with a reputation against dilution becomes mandatory for national trademark systems of all EU Member States. Although this is already the law in most Member States, bad faith must be a possible ground for declaration of invalidity of a trademark.
- Opposition proceedings as well as administrative (PTO) proceedings for revocation or declaration of invalidity of national trademarks must be provided by EU Member States. Such disputes have to be brought before the national courts of the various Member States. However, Member States have several years to introduce these changes. Opposition proceedings need to be provided by 14 January 2019 at the latest. The deadline for implementing office proceedings for revocation and declaration will expire on 14 January 2023.
These reforms include some major changes that will modernize European Union trademark law and ensure greater harmonization in trademark practice and procedures across the European Union. Businesses need to consider the various implications of the upcoming changes for their existing trademark portfolio and trademark enforcement strategies but also for future trademark applications. It is advisable to review the trademark portfolio to identify potential issues and opportunities caused by the reform.