New EU trade mark regime takes shape

The Council of the European Union has published on its website the final compromise texts for the revised EU trade mark Regulation and Directive, the basic legislation governing trade marks across the European Union. The texts will proceed in substantially this form to adoption by the Council and the European Parliament towards the end of 2015. 

The Regulation will, once it comes into force in early 2016, make the following key changes to the existing “Community” trade mark regime:

• Community trade marks will become “European Union trade marks” (EUTMs) and the Office for Harmonisation in the Internal Market will be renamed the European Union Intellectual Property Office (EUIPO).
• Fees of EUTMs will be charged per Nice class. Renewal fees will be reduced by up to 37%. EUIPO fees for oppositions, cancellation actions, appeals etc. will also be reduced;
• The definition of a trade mark is broadened to include non-traditional marks such as colours, sounds, shapes.
• Proprietors of EUTMs will be entitled to prevent infringing goods in transit throughout the European Union.
• Proprietors of EUTMs adopted at a time when earlier trade marks were unenforceable (“intervening rights”) will have a defence to infringement proceedings.
• Proprietors of Community trade marks filed before 22 June 2012 (change of OHIM classification practice following the ECJ decision C-307/10 “IP TRANSLATOR”) which covered the class heading of an entire Nice class will have six months within which to declare which goods or services of the Nice alphabetical list they intended to cover.
• Priority claims for EUTMs will be required to be made at the time of filing.
• The possibility of disclaiming elements of EUTMs will be removed.
• EU certification marks are introduced to cover the material or mode of manufacture of goods or the performance of services, as well as quality, accuracy or other characteristics, except for geographical origin.
• EU designations of International Registrations will be subject to opposition much sooner after publication, thereby reducing the time to ultimate grant of protection by approximately 5 months.
• The EUIPO is empowered to establish a Mediation Centre to provide services for amicable settlement of disputes regarding EUTMs and Community designs. A request for mediation may be submitted much sooner than at present.

The revision to the Regulation will also iron out issues which have arisen regarding the interpretation of the wording of the existing Regulation, and to subject the EUIPO to new governance and compliance rules.

The new trade marks Directive will require EU Member States to harmonise their national trade mark laws yet further and in many cases brings the wording of the Directive in line with the more detailed provisions of the Regulation. Some of the key changes for national trade marks are as follows:

• Expanded protection for reputed national trade marks will be compulsory.
• Invalidity actions based on bad faith will become compulsory.
• Non-use of a registered national trade mark is introduced as a compulsory defence for infringement proceedings.
• Member States may introduce national guarantee or certification marks.
• Member States must have an efficient and expeditious administrative procedure for oppositions, oppositions may be based on more than one earlier right, and the applicant can request proof of use.
• Member States must, within a seven year transposition period, make available administrative Office-based procedures for revocation or declaration of invalidity of national trade marks. 

This final change will be one of the key benefits of the reformed Directive, given the possibility of avoiding more expensive court-based actions which are the only avenue for revocation and cancellation in some Member States. It is unfortunate that the political agreement is to allow Member States such a long time to transpose this provision of the Directive. All other provisions must be transposed into national law within three years of the Directive being adopted.