The EU trademark reform: Finally adopted

Intellectual Property Update

More than ten years after it came into force, the European Union trademark system is going through its first big reform, leading to a recast of the trademark rules at the European level.

The 'Trademark Reform Package' (which includes a new Directive approximating the laws of the Member States relating to trademarks and a new Council Regulation[1]) aims at achieving further harmonization of national laws by adapting it to the current European economic environment and reducing areas of discrepancies between national laws on trademarks within the European Union.

The European Trademark Reform Package was adopted on 15 December 2015 and published in the Official Journal of the European Union on 23 and 24 December 2015. 

The Regulation will come into force on 23 March 2016. The Directive is in force since January 12, 2016 and shall be implemented by the Member States in their own legislations: 

  • no later than 14 January 2019 for the major part of the provisions and 
  • no later than 14 January 2023 for those related to the revocation procedure and declaration of invalidity. 

Apart from some terminology changes (the 'European Union trademarks' will replace the 'Community trademarks' and the 'European Union Intellectual Property Office' will replace the 'Office for Harmonization in the Internal Market'), the most important changes are as follows:

By 23 March 2016, the 'three classes for the price of one' concept will be abandoned for the European Union trademarks 

The previous fee of 900 Euros for 1 to 3 classes will be deleted and replaced by a new system of fee per class: 850 Euros for the first class, 50 Euros for the second class and 150 Euros for each additional class.
These fee modifications aim at putting an end to the incentive to register three classes for the price of one class, which led to congest the trademark register with redundant and unused classes. 

According to Article 42 of the Directive, Member States are invited to implement the same principle in their national laws. 

Clarity and precision in the specification of goods and services 

Not surprisingly, the recent decision IP TRANSLATOR[2] has been codified by Article 39 of the Directive.
The rule is now expressly set by the Trademark Reform Package: goods and services shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators to determine the extent of the protection sought. 

From now on, only goods and services which are expressly claimed in the class headings will effectively be protected, to one exception: the proprietors of European Union trademarks filed before 22 June 2012 and designating the entire heading of a class may 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 of the Regulation). 

The graphic representation is no longer a criterion for a sign to be registered as a trademark 

Goods in transit can be seized by Customs 

Article 10 puts an end to the Nokia case[3] according to which only goods which were intended to be used in the course of trade within the European territory or goods reasonably suspected to be used in the course of trade could be subject to customs controls. 

From now on, the proprietor of a registered trademark shall be entitled to prevent the mere transit of goods coming from third countries and bearing -without authorization- a trademark which is identical to the trademark registered in respect of such goods, or which cannot be distinguished in its essential aspects, on the territory of the Member States where the trademark is registered, even if the goods are not aimed at being placed on this territory. 

It is only during the proceedings to determine whether the registered trade mark has been infringed, that the declarant or the holder of the goods would be able to contest the Customs seizure in providing evidence that the goods were intended to be sold in a national market where the counterfeited trademark was not protected. 

Opposition and cancellation procedures are harmonized 

From a French perspective, the following new common rules will deeply change the opposition and cancellation procedures: 

  • Opposition could be grounded on one or several prior rights (currently, the French opposition does only allow to claim one trademark right as a basis for opposition)
  • The procedure of revocation or invalidity of national trademark would have to be brought before the trademark offices. This would be a major reform for France where such proceedings have always been brought before Courts. Considering the importance of such change, the Member States have 7 years to implement this provision. 

The trademark holders rights are strengthened 

Trademarks with reputation may validly serve as a basis for opposition or cancellation (through an action for invalidity) directed against an identical or similar mark applied for or registered at a later date, "irrespective of whether the goods or services for which it is applied are identical, similar to or not similar to those for which the earlier mark is registered". 

The proprietor of a registered trademark shall now be entitled to bring an infringement action against third parties using its trademark as a trade name or corporate name for products and services identical or similar to those designated in the filing. 

The proprietor shall also be entitled to prohibit the use of its registered trademark in comparative advertising where such comparative advertising is contrary to Directive 2006/114/EC. 

The Directive also expressly grants to the trademark owner the right to act against preparatory acts of infringement of a trademark such as the affixing of an identical or similar sign to the trademark on packaging, labels, tags and any other security or authenticity features or devices, or in any other form, as well as their offering on the market, or the stocking for this purpose, import or export. 

_________________________________

[1] Directive (EU) 2015/2436 of the European Parliament and the Council of the European Union of 16 December 2015 to approximate the laws of the Member States relating to trademarks, OJ of the European Union L 336 of 23 December 2015 ; Regulation (EU) 2015/2424 of the European Parliament and the Council of the European Union of 16 December 2015 amending the Council Regulation (EC) No 207/2009 on the Community trademark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trademark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trademarks and Designs). 

[2] ECJ, June 19, 2012, C-307/10, Chartered Institute of Patent Attorneys v Registrar of Trademarks 

[3] ECJ, Joint Affairs C-446-09 et C-495/09, Koninklijke Philips Electronics NV v Lucheng Miejing Industrial Company Ltd and Nokia Corporation v Her Majesty's Commissioners of Revenue and Customs