Back in April of this year, the European Commission announced that, after two years of discussions, it had reached a “provisional agreement” with the Council and the Parliament on an EU trade mark reform package. On 8 June 2015 details of the agreement were published. The reforms are contained in a draft Directive and a draft Regulation, which are currently making their way through the EU legislative process and which may take effect EU wide in early 2016.
Purpose of the reforms
Community Trade Marks (CTMs), giving trade mark owners enforceable rights on a pan EU basis, were first introduced in the early 2000s and are registered with the Office for Harmonisation of the Internal Market (OHIM). The separate national trade mark systems are also subject to an EU Directive of 2008, which replaced an original 1989 Directive. Nevertheless, neither system has been reformed to any significant extent since their inception. With that in mind, the proposed changes are aimed at improving protection, cost efficiencies and modernisation.
So – aside from the rebranding of CTMs as “European Union Trade Marks” and OHIM as the “European Intellectual Property Office” (EIPO) (this is potentially misleading given it will not deal with other forms of IP, such as patents) – what are the key changes?
Non-conventional marks? There will no longer be a requirement for registration of marks to be graphically represented – they only need to be represented in a manner which enables people to determine the exact subject matter which is being protected. This should make it much easier to register more unconventional types of mark – such as sounds and smells.
Collateral damage? The draft Regulation extends acts of infringement to include branding on tags and packaging, as distinct from on the actual goods. This aims to catch circumstances where labels or tags are made separately and only intended to be affixed to the goods later. Companies in the business of designing and making labelling or packaging should be aware of the ultimate use intended for their products.
The end of the EU ‘watch’ service: An EU search report will only be provided if requested by the applicant – it won’t be done automatically. Applicants who previously relied on the EU notification as a type of ‘watch’ service will now need to instruct trade mark agents or take other steps to monitor use of their marks. This one falls under the increased efficiency point, albeit not under costs savings for applicants!
One bite at the cherry: It used to be possible to oppose the registration of a competitor’s mark (based on prior use) at the OHIM and then – if that opposition failed – to resurrect your challenge by claiming invalidity after the mark had been registered. You were only stopped from doing so if a Court of a Member State had made a final ruling on the validity of the mark. Such a later invalidity challenge will no longer be possible where the EIPO has already ruled against the opposition.
An application for revocation or declaration of invalidity will thus not be admissible as the “same subject matter” will be regarded as having been adjudicated on, either by the courts or by the EIPO itself. Parties will need to carefully review their options now before pressing ahead automatically with opposition to registration, as they may only get one chance to challenge the mark.
Europe no safe haven for counterfeits? A long time coming but worth the wait will be the ability to prevent infringing goods coming into the EU where they can be seized by Customs, even where they are merely in transit.
One step at a time? As ever with modernisation of the law, there will inevitably be some teething problems if and when the reforms are implemented. The changes outlined above are a step in the right direction but there is still a lot more to be done to make the systems more cost effective and efficient. As an example, more certainty around fair use type defences such as use in parody, meta tag and domain names can only assist in cutting down enforcement costs and avoiding unnecessary litigation to establish the position.
Hopefully we will not have to wait another 15 years…
On September 7, 2015