Reforms to EU trade mark law 2016

In this document we summarise changes to the Community Trade Mark Regulation and Trade Mark Directive. We particularly recommend readers take note of the limited period in which it may be possible to make changes to specifications (see point 10 overleaf). For further advice or for a review of relevant trade marks, please contact your usual D Young & Co trade mark advisor.

Eligible signs

• The requirement for graphic representability will be removed. A sign will be allowed to be represented in any available technology as long as it is possible to determine the clear and precise subject matter. In the amended Regulation reference is made to the possibility of an EU trade mark consisting of colours or sounds and the new Regulation should in theory open the way for more nontraditional marks to be registered, although the additional absolute grounds of refusal (see below) will mean that such marks are still likely to remain difficult to register in practice.
• There will be an extension of absolute grounds of refusal to the existing exclusions for registration of shapes to other "characteristics". Previously, the Regulation made it clear that signs which consist exclusively of a shape which results from the nature of the goods themselves, which is necessary to obtain a technical result or which gives substantial value to the goods could not be registered. The new Regulation will extend this so that a sign shall not be registered which consists exclusively of the shape or "another characteristic" which results from the nature of the goods themselves, which is necessary to obtain a technical result or which gives substantial value to the goods.
• There will be an extension of absolute grounds of refusal to include designations of origin, geographical indications, protected traditional terms for wine and traditional specialities.

Extension of rights

• There will be an extension of rights so as to prohibit use of a sign as a trade or company name. The prohibited act will include "using the sign as a trade or company name or part of a trade or company name". Under the current Regulation there may occasionally be issues in establishing a sufficient connection between the name of a company and the goods and services offered by that company, for the purposes of establishing infringement. This revised wording should assist with establishing such a connection.
• The amended Regulation also prohibits use of a sign "in comparative advertising in a manner that is contrary to Directive 2006/114/EU". This links the new Regulation with the Misleading and Comparative Advertising Directive, as the CJ has done in a number of recent cases.
• There will be an extension of rights so as to prohibit third parties from bringing goods into the EU bearing an infringing sign even where those goods are not being released for circulation in the EU. This is an important amendment dealing with the issue of goods in transit. It essentially reverses the decision of the CJ in Philips and Nokia which had ruled that goods in transit could only be classified as counterfeit if it could be shown that the goods were intended to be put on the market in the EU. Now trade mark owners will be able to prevent third parties bringing goods bearing a mark which cannot be distinguished in its essential aspects from a trade mark into the EU even if not released for free circulation. If the declarant/holder of the goods is able to prove that the proprietor of the EU trade mark will not be entitled to prohibit the placing of goods on the market in the country of final destination, the goods will be released for export to that country. This amendment should assist brand holders in fighting counterfeiting across the EU.
• The amended Regulation also prohibits the affixing of an infringing sign to packaging, labels, and other means of identity. Again this should assist brand owners in dealing with infringing goods.

Specifications of goods and services

• The Directive states that "to ensure legal certainty with regard to the scope of trade mark rights and to facilitate access to trade mark protection", classification of goods and services should be made sufficiently clear and precise. Before the IP Translator Decision, class headings incorporated within Community trade marks were considered to cover all goods and services within the relevant class as found in the full alphabetical list in the edition of the Nice Classification in force when the Community trade mark was filed. The official practice changed following the IP Translator case and the new Regulation seeks to clarify the position.
• If general terms are used within a specification, those terms will beinterpreted literally. Going forward, any application covering terms that are unclear or imprecise will be rejected and the applicant will be invited to suggest alternative acceptable wording.
• In an attempt to address the position pre-IP Translator, Article 28 of the new Regulation provides owners of EU trade marks filed before 22 June 2012 which incorporate an entire class heading, the opportunity to confirm if the intention on filing had been to cover goods and services falling outside the literal meaning of the general terms used at that time, as long as any goods and services apparently missing are listed on the alphabetical list of goods/services for the relevant class within the edition of the Nice Classification in force at the time of filing. This opportunity is open for a six month period from the date on which the new Regulation comes into force and therefore will be available between 23 March 2016 and 23 September 2016.
• If no change is made to the specification of goods and/or services covered by a trade mark filed before 23 September, registration of that mark will protect the mark only in relation to goods and services falling under the literal meaning of the terms used. Even if a trade mark owner makes changes to the description of goods/services under Article 28, the rights in the registration will not be extended beyond the literal meaning of the terms as regards any use of a trade mark by a third party that commenced before the amendments were made and was not considered an infringement at that time. A similar provision will apply in relation to opposing or applying for a Declaration of Invalidity of a later trade mark if the later trade mark was either in use or an application had been filed to register that mark before the amendments had been made to the specification of goods and services.
• OHIM has published information concerning the declaration that can be filed by a trade mark owner to make changes to the specification of goods and services as referenced above, including confirming how any accepted declaration will be published. We recommend that you instruct us to review relevant EU trade mark registrations so that we can advise on whether or not it may be appropriate to make any changes to the specifications. OHIM has indicated that it will be possible to file the declaration even if the specification contains additional goods and services, as long as the specification also includes the entire class heading and assuming that the class heading has not been limited in any way.
• OHIM has also produced a document confirming "examples of terms not considered to fall under the literal meaning of the respective class headings" which is likely to prove of assistance in any review of existing protection. By way of example, if you consider the class heading of class 25, "clothing, footwear, headgear", with reference to the most recent version of the Nice Classification, terms such as "footwear uppers" and "inner soles" are not considered to fall under the literal meaning. Similarly, "air bags" are not considered to fall under the literal meaning of the standard class 12 heading. In practice, it will be interesting to see how OHIM deals with any requests filed under the provisions set out above.
• It is important to note there has also been a slight change to the deadline by which renewal fees may be paid; the renewal request and fee must be filed within the six month period prior to the expiry of the registration rather than, as before, "within a period of six months ending on the last day of the month in which protection ends".

Opposition period for international trade marks designating the EU

Sensibly the timing of the start of the opposition period for International trade marks designating the EU will be changed to run from one month following the date of publication instead of six months following that date as at present.

Automatic search

The automatic search conducted by OHIM of earlier EU trade marks and provided to applicants as part of the application process will cease. An applicant may actively file a request for such a search, if required; it may also request search reports to be provided by each of the offices of the member states if the service is offered by the relevant member state. OHIM will still provide notifications to owners of earlier EU trade marks of the publication of the EU trade mark application unless the proprietor of an earlier registration or application has requested that no such notifications be sent. We can advise on appropriate searching where required.

Own name defence

The new Regulation provides a defence to use of a sign that is the name or address of the third party where that third party is a natural person only. This is another significant amendment which means that companies will no longer be able to take advantage of the own name defence in relation to alleged infringement of an EU trade mark, as ASOS successfully did in 2015. Until the Trade Mark Directive is amended, the own name defence might still be available in cases concerning alleged infringement of a UK trade mark (under section 11(2)(a) TMA 1994). The nature of any transitional provisions to deal with the availability of the own name defence in relation to infringing acts prior to 23 March 2016 is unclear at present.

Proof of use period

In opposition proceedings, if the applicant requests that the opponent proves use of its earlier trade mark, the relevant five year period will be that preceding the date of filing or the date of priority of the opposed EU trade mark not, as before, the date of publication.

Certification marks

The new Regulation introduces the EU certification mark which "is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified".

As with the UK certification mark, the applicant for an EU certification mark cannot itself carry on the business involving the supply of the goods or services of the kind certified. Rules governing the use of a certification mark will have to be filed within two months of the date of filing. It will be possible to convert an application for an EU certification mark, but only where the national law of the relevant member state provides for the registration of guarantee or certification marks.

Mediation centre

A mediation centre may be established under the new Regulation to help parties settle disputes. The new Regulation provides for the parties to a dispute to jointly file the appropriate request, upon payment of a fee, which would lead to the relevant time periods being suspended and could be available in connection with disputes before the Opposition Division, the Cancellation Division and the Boards of Appeal.

Name changes

There will be changes of name for OHIM, for Community trade marks, for the Community Trade Mark Regulation and the Community trade mark courts in each member state of the EU.

• The trade mark will be called the "The European Union trade mark" or "EU trade mark".
• OHIM will be called the "European Union Intellectual Property Office".
• A "Community Trade Mark Court" will now be referred to as an "EU Trade Mark Court".
• "Community Collective Mark" will become "European Union Collective Mark".

The full title of the Regulation is "Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No. 207/2009 on the Community Trade Mark and Commission Regulation (EC) No. 2868/95 implementing Council Regulation (EC) No. 40/94 on the Community Trade Mark, and repealing Commission Regulation (EC) No. 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)".