Changes to European Trade Marks
The new European Union Trade Mark Directive and Regulations, which were published in December 2015, come into force on 23 March 2016. This will result in a number of significant changes to trade mark practice in Europe.
The new Regulations introduce changes to the name of the Office and the mark, introduce a new structure for application and renewal fees and have implications for the interpretation of the specifications of goods and services, and various other changes relating to the examination of the application.
The most obvious changes will be those of the names of the Office and the mark. The Community Trade Mark (CTM) will become the European Union Trade Mark (EUTM) and the Office for the Harmonisation of the Internal Market (OHIM) now becomes the European Union Intellectual Property Office (EUIPO). However, the Office will continue to deal with trade marks and designs only and there are no plans for the Office to become involved with patents, for example when the unitary patent enters into force.
One significant change introduced by the new Regulation is to the fee structure. Under the current system the application fee covers goods and services in up to three classes, with additional fees being payable for goods and services in extra classes. This is understood to lead to applicants who would have filed an application in one or two classes only including additional classes (up to three) in their application “just in case” and because they represent no additional cost.
According to the new system each class beyond the first will attract additional fees. An application in a single class will now cost €850 (for an application filed electronically). This is less that the current cost. Introducing a second class of goods or services into the application will add €50 to the application, bringing the total cost to €900, which is the same as the current cost for filing an application. Adding each additional class thereafter adds €150 to the application. While this cost is identical to the cost of each additional class under the current system, this represents an addition of €150 to the base line cost for any application have three or more classes.
Thus the new system represents a decrease in costs for applications filed in a single class; no change for applications filed in two classes; and an increase in costs for applications filed in respect of three or more classes.
However, the renewal fees are being brought into line with the application fees and thus for a registration in a single class this represents a reduction from €1350 to €850. Similarly the renewal fee for a registration in two classes is reduced from €1350 to €900.
There is also a small reduction in the Opposition fee from €350 to €320.
Specifications of Goods and Services
The Decision on the IP Translator case changed the way in which trade mark specifications were interpreted.
Prior to this decision the use of the class headings of the Nice Classification had been interpreted as covering all of the goods in that class, namely those included in the full alphabetical list for that class in the Nice Classification guide. The IP Translator Decision held that this did not enable others to determine the extent of the protection conferred by the trade mark. As a result practice was changed so that a trade mark specification is interpreted according to its literal meaning. Thus a new policy of “what you see is what you get” was introduced for trade mark specifications.
However, this left a question over registrations filed before this change, namely before 22 June 2012, which used the full class heading and whether this should cover all of the goods of the class or just those of the wording of the class heading.
In order to clarify this, there will be a six month period starting on 23 March 2016 for proprietors of such registrations to file a Declaration setting out all of the goods and/or services the proprietor intended to cover at the time of filing. Forms will be available on the European Union Intellectual Property Office website from this date for making a suitable Declaration.
On expiry of this period, i.e. 24 September 2016, the specification in any registration for which a Declaration has not been filed will interpreted by the literal meaning of that specification.
This should introduce clarity to the meaning of the specifications of goods and services and remove the ambiguity created by the IP Translator decision and the change in practice.
A number of other changes have been introduced which will affect European trade marks.
It will no longer be possible to file applications to register a European trade mark through national Trade Mark Offices. While this option has been available it is so rarely used that this change should have very little effect.
Currently it is possible to add a priority claim to an application up to two months after the filing of the application. This will change and from 23 March 2016 priority must be claimed at the time of filing of the application.
It will no longer be possible to disclaim rights to non-distinctive elements of a trade mark in order to avoid doubts as to the scope of protection. As a mark comprising a combination of a distinctive and a non-distinctive element should not be relevant to the use of the non-distinctive element on its own, then this should not alter the protection afforded by any trade mark.
The Regulation will clarify that the use of a Protected Designation of Origin, or a Protected Geographical Indication is an absolute ground for refusal. In addition a separate specific grounds of opposition and cancellation is introduced based on PDOs and PGIs.
In an Opposition where proof of use is required, namely where the earlier registered mark has been registered for more than five years, the period from which proof must be filed is now five years prior to the priority or filing date of the opposed application (rather than the publication date of the opposed application).
The Regulation also clarifies the period during which third party observations can be filed. Following current practice such observations can be filed at any time up to the end of the opposition period, or where any opposition has been filed, at any time before the final decision is issued. In addition the Regulation sets out that the Office has the right to re-open examination on its own initiative at any time prior to registration.
Currently, a European search report covering marks registered by OHIM is carried out for all new applications. Where an existing application or registration is cited in such a search report, the proprietor of the existing application or registration is notified if the new application proceeds to publication. In future it will be possible to opt out of these search reports and surveillance letters.
The prohibition on shape marks that they must not result from the nature of the goods, are necessary to obtain a technical result and give substantial value to the goods will be extended to all functional marks, for example colour or sound. This restriction will now apply to shape or other characteristic of the mark.
Further changes will be introduced in October 2017. The first of these is that the requirement for the trade mark to be “represented graphically” will be removed. This paves the way for sound and smell marks and possibly other non-traditional trade marks. The marks must be represented in a way that this clear, precise, self-contained, easily accessible, intelligible, durable and objective so that third parties can immediately understand that scope of protection afforded by the mark. Further details of how such marks can be represented and filed in an application will be issued in due course.
The second important change will be introduction of a certification mark. This will provide registration for marks which can be used by other parties provided that they comply with certain certification requirements set out by the certifying institution or organisation, who will be the proprietor of the registration. Further details on the requirements for filing regulation for use of the mark will be issued in due course.
These changes are the most significant since the introduction of the Community trade mark since the registration system was established and will affect all users.
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