Reform of the European Union Trade Mark Law

In December 2015, the European Parliament and Council significantly amended the trade mark law of the European Union by REGULATION (EU) 2015/2424 and also by DIRECTIVE (EU) 2015/2436 harmonising the trade mark laws of the EU member states. Parts of the amended REGULATION already entered into force on 23 March 2016, whereas other parts requiring implementing legislation will enter into force on 1 October 2017. The EU member states are to implement the DIRECTIVE until 14 January 2019, while administrative invalidation and revocation procedures are due on 14 January 2023.
 
The main goals of the EU Trade Mark Law Reform were, according to the Preamble of the amending REGULATION, a need to modernise the trade mark system in the European Union by making it more effective, efficient and consistent as a whole, harmonisation of national trade mark laws and practices in the member states of the EU, and achieving more transparency, flexibility and legal certainty in all trade mark matters, for example in trade mark proceedings, enforcement, trade mark registers, legal definitions, and case law.
 
In the following, this article will emphasise the most important and relevant changes for proprietors of EU trade marks by the EU Trade Mark Law Reform, with specific focus on the new REGULATION:
 
I. Formal changes
 
There were formal changes regarding the name of the REGULATION, which were renamed “Council Regulation on the European Union Trade Mark” (“EUTMR”), and regarding the name of the concerned trade mark, namely CTM (Community Trade Mark) became EUTM (European Union Trade Mark). The name of the Office was changed from OHIM (Office for Harmonization in the Internal Market) into EUIPO (European Union Intellectual Property Office), managed by the “Executive Director” (formerly “President”).
 
II. Changes in substantial law
 
“Signs of which an EU trade mark may consist”
 
Article 4 EUTMR newly defines of what constitutes registrable signs as an EU trade mark, adapting to the requirements of the internet era. From October 2017 on, the graphic representation of a sign will be abolished, provided that the sign “being represented on the Register of European Union trade marks, …, in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor” (thus requiring implementing rules on the representation of a sign). Accordingly, an EU trade mark may then “consist of any signs, in particularly words, including personal names, designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds”. In particular, the items “colours” and “sounds” were added stating further examples for non-traditional registrable trade marks.
 
In a nutshell, the amended Article 4 EUTMR will allow a wider spectrum of non-traditional signs as registrable EU trade marks, with, at the same time, less registration requirements for representation of the signs. This will simplify and accelerate the entire application and registration process for EU trade marks, in particular for non-traditional EU trade marks such as colours and sounds.
 
“Absolute grounds for refusal”
 
From 23 March 2016 on, the Office is allowed to refuse an EU trademark application for additional grounds, with regard to marks of mere functional characteristics (Article 7 (1) (e) EUTMR: not only to shape marks) or when seeking protection for all (national or EU) geographical indications (Article 7 (1) (j) and (k) EUTMR), names of traditional specialties (Article 7 (1) (l) EUTMR) or plant variety denominations (Article 7 (1) (m) EUTMR).
 
“Relative grounds for refusal”
 
From 23 March 2016 on, some further rights were defined as opposition rights per se: Upon opposition based on a designation of origin or a geographical indication protected in the EU, an EU trade mark application shall also not be registered (Article 8 (4a) EUTMR).
 
“Rights conferred by an EU trade mark“
 
From 23 March 2016 on, the EU trade mark proprietor’s exclusive right to act against third parties were more precisely legally defined and, in some parts, also strengthened (Article 9 (1) (d) and (f) and (4) and Article 9a EUTMR).
 
For example, the proprietor of an EU trade mark has an exclusive right to prohibit use of an identical or similar sign for packaging, labels, tags, etc., although the conflicting sign has not yet been affixed to the goods (new Article 9a EUTMR).
 
A significant change includes the new Article 9 (4) EUTMR which now allows an EU trade mark proprietor to prohibit transit of counterfeit products through the EU, unless “evidence is provided … that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.”
 
Using a registered EU trade mark as a trade or company name is now an infringement as well as preparatory acts such as a packaging or labelling even if the goods or services are for export.
 
III. Changes in opposition proceedings
 
From 23 March 2016 on, the period of non-use of five years for an earlier mark, which is requested to provide evidence of use in opposition proceedings, starts from the filing or priority date rather than the date of publication.
 
Furthermore, the three months deadline for the notice of opposition of International Trademark Registrations designating the EU now already begins after one month after the publication (formerly after six months).
 
IV. Changes in fees
 
On 23 March 2016, several Office fees were simplified and lowered. 
 
Newly introduced was a “one-fee-per-class” system for application and renewal of EU trade marks, where an extra fee is to be payed after the first class (no flat fee for application/renewal for up to 3 classes any longer):
o   For the first class € 850 (electronic filing) and € 1,000 (paper filing).
o   The second class costs € 50. 
o   From thethird class on, € 150 (per class) are additionally charged.
 
To the benefit of proprietors of EU trade marks, this “one-fee-per-class” system significantly lowers renewal costs for their EU trade marks.
Some other Office fees were moderately lowered, for example when filing for
o   Opposition: € 330 (formerly € 350)
o   Cancellation: € 630 (formerly € 700)  
o   Appeal: € 720 (formerly € 800).
 
V. Some recommended Actions to be taken
 
1. Trade mark owners who do not yet watch company names should do so in the future.
2.  The time periods for using trade marks must be adapted to the new terms.
3. Signs which serve as a trade mark, but which have not yet been filed, because they were not graphically representable should be filed as of October 2017.
4. Companies being part of or using a certification mark should now file for such mark and obtain protection.
5. Once a trade mark is renewed, check whether all classes shall be renewed or whether you may save money by just renewing some of the classes.
6. Inform custom authorities about your trade marks/designs.

F. Peter Müller is a German and European patent and trademark attorney. He studied electrical engineering at the Technical University of Munich, the Ludwig-Maximilians-University of Munich, the Lund Institute of Technology in Sweden, and studied law for patent and trademark attorneys at the University of Hagen, Germany. He was educated and has worked at the German PTO, the German Federal Patent Court, the District Court of Düsseldorf and at an IP law firm in New York. Peter also studied Mediation at the University of Hagen. He is partner of the IP law firm Müller Schupfner & Partner in Munich.

F. Peter Müller can be contacted on +49 (0)89 219912 0 or by email at peter.mueller@propat.de