The EU has published a trade mark reform package for 2016, comprising a new Community Trade Mark (CTM) Regulation and Trade Mark Directive.
The Regulation, which sets out the rules and procedures governing CTMs, will come into effect on 23 March 2016. The updated Trade Mark Directive will introduce a number of similar provisions in respect of national trade mark systems, however, its provisions will not come into effect until January 2019.
Key changes under the Regulation include:
Fees: Currently up to three classes of goods and services can be registered for the same basic fee. Under the new regime, the basic fee (€850) will only cover one class of goods and services, however renewal fees in one class will be significantly cheaper (€850 instead of €1350).
Non-conventional marks: The requirement for registered trade marks to be "represented graphically" will be abolished. Instead such marks must be capable of being represented in a manner which enables the public to determine "the clear and precise subject matter of the protection afforded to its proprietor." This should make it easier to register non-conventional marks such as sounds, smells, shapes and motions.
Rebranding: The confusingly named Office for Harmonisation in the Internal Market (OHIM), which maintains the public registers for CTMs and Community Designs, will be renamed the European Union Intellectual Property Office. The CTM will be known as the European Union Trade Mark.
Specification: Trade mark owners must clearly and precisely specify the goods for which the protection of a trade mark is sought. The use of a class heading (which gives general information about the type of goods or services covered by each class) will only grant protection for the goods or services clearly covered by the literal meaning of the term – it will not grant protection for all goods and services covered in that class. Owners of CTMs filed prior to 22 June 2012 (when OHIM practice in this area changed as a result of the IP Translator case) will be able to file a declaration amending their registration until 24 September 2016.
Technical Exclusion: Under the current regime, signs are precluded from registration if they consist exclusively of a shape which:
- results from the nature of the goods themselves;
- is necessary to obtain a technical result; or
- gives substantial value to the goods.
This prohibition has been widened to exclude signs which consist exclusively of shapes or "another characteristic" which results from the nature of the goods, is necessary to obtain a technical result, or gives substantial value.
Designations of Origin and Geographical Indications: Pre-existing designations of origin and geographical indications are specified as relative grounds for refusal of a trade mark application.
Counterfeit Goods: Trade mark owners will have expanded rights to use customs procedures to prevent third parties from transiting counterfeit goods through the EU. These customs procedures can be used even where the goods in question are not intended for sale in the EU. However, if the importer can show that the trade mark owner would not be able to prevent the sale of the goods in the country of final destination, then the measures will not be available.
Own Name Defence: The "own name" defence will be limited to natural persons. A company will no longer be able to rely on the use of its company or trading name as a defence against trade mark infringement (as successfully argued by "Asos" in the recent UK decision, Maier and another v ASOS Plc and another).
The published text of the Regulation, No. 2015/2424, is available on the OHIM website here.