The latest reform of trademark rules by the European Parliament

September 2016  |  EXPERT BRIEFING  |  INTELLECTUAL PROPERTY

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A recent reform was brought about by Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015, which aims to ensure coherence between the trademark laws of Member States (the ‘Directive’), as well as Regulation 2015/2424 of the European Parliament and of the Council of 16 December 2015 which amended Council Regulation 207/2009 on the community trademark and Commission Regulation 2868/95 implementing Council Regulation 40/94 on the community trademark (the ‘REUT’).

The reform concerns both Directive 2008/95/EC of the European Parliament and of the Council, of 22 October 2008 to align the laws of the Member States relating to trademarks (the ‘Directive EC’) and Council Regulation No 207/2009 of 26 February 2009 on the community trademark (the ‘RCT’).

The Directive is a recast text of the EC Directive and aims to ensure coherence between national systems and the EU system. As a rule of thumb, Member States will bring the laws into force by 14 January 2019, given that the EC Directive will be repealed on 15 January 2019. However, national application of the procedures included in Article 45 (i.e., revocation and invalidity procedures) will be permitted until 14 January 2023.

For its part, the REUT entails institutional reform. Since it came into force on 23 March 2016, a ‘community trademark’ is an EU trademark and the ‘Community Trademark Court’ is the EU Trademark Court. Furthermore, the Office for Harmonisation in the Internal Market has been renamed the European Union Intellectual Property Office (the ‘EUIPO’).

The REUT aims to improve the system by increasing effectiveness, efficiency and legal certainty, as well as cooperation between the EUIPO and the central intellectual property offices of the Member States. It foresees the creation of connected database websites for sharing and exchanging technical knowledge, and replaces the former fee regime with a payment per class system. Therefore, within the REUT, those who apply for an EU trademark for one class will not pay the same fee as those that apply for two classes or more (the RCT establishes a protection system which includes at least three classes).

One of the main amendments consists of removing the requirement for graphic representation. The definition of EU trademarks does not include the requirement to represent the trademark graphically. Consequently, the sign seeking registration as a trademark may be represented by any appropriate sign, not necessarily by graphic means, provided that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. For instance, sounds can constitute EU trademarks, provided that they comply with the above circumstances and are suitable for distinguishing products or services in the market.

As a consequence of the reform, designations of origin and protected geographical indications are now more protected, as long as they are considered grounds for refusal to register an EU trademark. EU certification trademarks are defined as those by which the holder certifies the materials, manufacturing method, quality and method of presenting the goods, as well as services, service provision and other characteristics, with the exception of geographical origin. The registration of these types of trademarks requires submitting to the EUIPO the regulations governing their use within two months of the date of filing and, obviously, it can only be transferred to a person that does not operate a business involving the supply of goods or services of the kind certified.

The holder of an EU trademark may ask for ‘reasonable’ compensation for acts occurring after the publication of an EU trademark request, when those acts are prohibited by virtue of said publication. Moreover, the holder is entitled to prohibit, among others, preparatory acts of the infringing activity that take place in the course of trade (such as, for example, the fixing of identical signs on packaging, labels or tags, as well as the offering or placing on the market, or storage, of such elements).

EU trademark applications can only be filed with the EUIPO and the search report is now optional. In addition to providing a representation of the trademark, which no longer needs to be graphical, the applicant must state, with sufficient precision, the products or services that it wants to register. A lack of clear and precise information may result in the rejection of the application if not rectified within the term granted by the EUIPO.

For all practical purposes it is necessary to point out that the trademark holders that registered their trademark before 22 June 2012 (which at that time was referred to as a community trademark) must state before 24 September 2016, with sufficient clarity and precision, the products or services they wish to keep protected within each entire heading of the Nice classification. If the trademark holder does not update the categories and only refers to general classes, from said date, it will be understood that the protection extends only to products or services clearly included in the literal wording of the terms which identify the trademark. For example, holders that registered community trademarks as general class 12 under the Nice classification “vehicles; apparatus for locomotion by land, air or water” must inform the EUIPO of which specific goods and services within those included in the referred class they wish to remain protected under their trademarks (for instance, brakes for vehicles).

If, as a consequence of the above, the register is amended, the exclusive rights granted by the EU trademark will not prevent a third party from continuing to use the trademark in relation to goods or services, provided that this use: (i) began before the register was amended; and (ii) did not infringe the holder’s rights according to the literal meaning of the wording of the record of the goods and services in the register at that time. Furthermore, amending the list of goods or services recorded in the register shall not grant the EU trademark holder the right to oppose or to apply for a declaration of invalidity for a later trademark provided that: (i) the later trademark was already in use, or an application had already been made, to register the trademark for goods or services, when the register was amended; and (ii) the use of the trademark in relation to those goods or services did not infringe, or would not have infringed, the holder’s rights based on the literal meaning of the wording of the record of the goods and services in the register at that time.

Finally, in order to facilitate the friendly, expeditious and efficient resolution of disputes related to EU trademarks and community designs and models, the EUIPO will be entitled to establish a mediation centre, which any person can voluntarily attend in order to confidentially achieve a settlement by mutual agreement.

 

Sara de Román Pérez is a senior associate at Pérez-Llorca. She can be contacted on + 34 91 423 67 31 or by email: sderoman@perezllorca.com.

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Sara de Román Pérez

Pérez-Llorca

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