EU trade mark reforms now in force – what's changed?

The EU Trade Mark Regulation, (EU) 2015/2424, (‘the Regulation’) came into force on 23 March 2016. These reforms are intended to make the EU trade mark registration system faster, more cost-effective and more predictable for users.

The key changes are set out below:

• OHIM (the Office of Harmonisation of the Internal Market) will now be known as the European Union Intellectual Property Office (‘EUIPO’) and the Community trade mark (which offers a single application to potentially obtain protection across all EU member states) will be renamed the European Union trade mark (‘EUTM’). All trade marks registered or applied for as of 23 March 2016 will be known as EUTMs and EUTM applications respectively.
• Revision of associated fees payable to the EUIPO. The European Commission anticipates that this new fee structure will save businesses up to 37% on marks held longer than 10 years. Fees payable for opposition, invalidity or revocation proceedings and filing an appeal have all likewise been reduced. Up to date fees are now shown on the EUIPO website.
• The EUIPO’s interpretation of descriptions of goods and services has changed. The wording of trade mark class specifications are to be interpreted literally. For CTMs filed before 22 June 2012, the EUIPO are offering owners the opportunity, within 6 months of implementation, to clarify the scope of their specification and declare that their intention at the date of filing was to seek protection in respect of goods or services beyond those covered within the literal meaning of the relevant class heading. These must be identified clearly and precisely. Going forward, trade mark owners should be careful to ensure that all goods and services in respect of which the mark is/will be used are included within the class specifications filed to ensure adequate protection is obtained.
• Unless there is a clear agreement to the contrary, a business’s trade marks will now automatically be included in a transfer of that business.
• Defences to infringement now apply in relation to the use of a trade mark for reference purposes. The ‘own name’ defence is now only available to individuals and not businesses – the latter must therefore carry out appropriate searches prior to using their business name. Claimants in infringement proceedings can now require the owners of EUTMs to show prior use (or reasons for non-use) during the 5 year period prior to the commencement of proceedings.
• The rights of licensees across the EU have been harmonised. Licensees can only bring trade mark infringement proceedings if the trade mark owner consents although an exclusive licensee can bring an action if the owner fails to do so within an appropriate period after receiving notice from the licensee.
• The absolute ground for refusal/invalidity in relation to the nature of goods, technical result or substantial value has been extended to include “other characteristics” beyond shape. Additional grounds have also been included as absolute grounds for refusal, for example designations of origin.
• Use of a registered trade mark as a trading or company name is now a specific infringement.
• The transit or storage of goods through the EU, although not intended for the EU market, could now be an infringement of a EUTM if the goods or their packaging bear marks identical to or undistinguishable from the EUTM, registered for the same goods. However, if the trade mark owner is not entitled to prevent sale of the goods in the country where they are to be ultimately sold, the right to pursue the third party for trade mark infringement on this ground is likely to be lost.
• Trade mark owners can bring a claim of infringement to prohibit preparatory acts in relation to packaging and labelling where it is likely that the application of a trade mark will amount to an infringement of the trade mark owner’s rights.

Clearly the success in practice of the amendments implemented by the Regulation will be determined in time. However, the introduction of a more user-friendly, effective and cost-sensitive system is no doubt to be welcomed by both new and existing EUTM owners across Europe.

For more information please contact Charlotte Bolton, Solicitor in the Intellectual Property team at charlotte.bolton@michelmores.com

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Charlotte Bolton

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