What will change from March 23, 2016 regarding Community trademarks
and national trademark law and practice in EU countries?
March 23, 2016 is an important date regarding trademark law in the European Union: a number of important changes contained in the trademark law reform voted last December will enter into force, including amendments to the Community Regulation, the legislative framework that has governed the Community Trademark since 1993.
Many substantive and practice issues have evolved since the first CTM filings twenty years ago and during this period, the interpretation of the Community texts by both OHIM and the Community jurisdictions and on a national level, the harmonized provisions of national trademark laws have often been the subject of discussion and debate.
The impending changes are therefore essential to update Community trademark law in line with current European case law in order to render it more practical, flexible and accessible for users; this is equally the case for harmonized national trademark laws in individual EU countries as both systems are intrinsically bound and will continue to coexist.
Set against this background, a number of revisions have been made to the foundation texts of European trademark law, namely:
- Community Trademark Regulation N° 40/94 of 1993 and thereafter codified as Regulation (EC) N°207/2009,
- Directive 89/104/EC of 1988 and thereafter codified as 2008/95/EC, relating to the harmonization of national trademark laws of individual EU countries.
Principal modifications to the CTM system include:
- Protection afforded by class headings: class headings will no longer cover all goods or services in the class concerned but only those understood by the literal meaning of the terms of the class heading, (thus putting an end to the controversial practice adopted by OHIM since June 2012 following the IP TRANSLATOR case). Transitional provisions shall apply to CTMs registered prior to 2012 enabling rights owners to specify additional goods or services not covered by class headings. Such modifications must be requested prior to September 24, 2016.
- Shortening of the opposition deadline for CTM designations of International trademark filings: the period to oppose such designations will now expire three months from the month following advertisement of the designation and no longer three months from the sixth month following advertisement.
- It will no longer be necessary to represent a mark graphically for registration purposes*, which will allows broader scope for the registration of non-conventional trademarks (sound trademarks, movement trademarks, holograms, and even smell or taste trademarks provided it becomes technically feasible to represent such signs),
- New fee structure: the flat fee for up to three classes for CTM filing and renewal will no longer apply and a drop in first class fee payable will not only make the CTM system more accessible but also will reduce the number of defensive registrations that cover multiple classes due the existing fee structure that currently clutter the Register.
- Possibility to obtain seizure by Customs of goods in transit in the European Union, even if the goods emanate from a country where the trademark is not protected. The release of such goods may only be obtained if it can be demonstrated that the trademark is not protected in the country of final destination (thus putting an end to the practice following the NOKIA v. PHILIPS case which precluded the seizure of goods in transit).
- Creation of a European Union certification trademark*
- Change of terminology : the Community Trademark becomes European Trademark and OHIM becomes the European Union Intellectual Property Office (EUIPO).
* these changes will be enacted by the European Union Intellectual Property Office in September 2017.
Similarly, revisions to the Directive will result in a number of additional changes to national trade mark laws** in individual EU countries namely:
- Implementation in all countries of an opposition procedure where this is not already the case and the possibility to base opposition on multiple prior rights including protected appellations and designations of origin and well-known trademarks. In addition, where an applicant requests the opponent to prove use of the earlier mark invoked if it has been registered for more than five years, it will be necessary to demonstrate use for all goods and services relied upon in the opposition.
- Implementation in all countries of an administrative procedure for invalidity and revocation proceedings where this is not already the case, thus allowing third parties to obtain cancellation of trademarks before the Trademarks Office rather than having to institute Court proceedings.
** the majority of these changes will be transposed into national law over the next three years but the implementation of administrative cancellation procedures may take up to seven years.
We will keep you updated of the implementation of these changes. More specifically, if you have any CTMs which are impacted by the transitional provisions concerning amendments to specifications of goods and services that must be filed prior to September 24, 2016, we will be contacting you shortly to explain in more detail which trademarks are involved and what steps may need to be taken.
Should you have any questions regarding the present communication, please do not hesitate to contact your usual Plasseraud trademark attorney or contact us by email email@example.com or telephone 00 33 (1) 40 16 70 00.