As European based trade mark attorneys we have been working with the Community Trade Mark (CTM) system since its introduction since 1996. By now, we have learnt how to move smoothly between the national trade mark filing system, and the provisions of the CTM Regulation.
In many aspects, the practices that have evolved under each system already coincide, but the planned changes to the Trademark Directive 2008/95/EC and the Community Trade Mark Regulation 207/2009/EC are intended to ensure that the level of coincidence between the systems is higher, and that the efficacy of protection and enforcement is improved.
It is anticipated that the changes to the Directive and the Regulation will be in force by the end of 2015, and be fully implemented into practice within the first six months of 2016.
We have provided a summary of the key changes that are likely to have direct relevance to our clients and associates, and will be happy to elaborate further in answer to any specific questions.
1. The title ‘Community Trade Mark’ will be changed to ‘European Union Trade Mark’ with the OHIM becoming known as the ‘European Union Intellectual Property Office’.
2. The definition of what can constitutes a trade mark will be broadened to allow for marks that are not capable of being represented graphically i.e. sounds, colours, smells,…
3. Certification marks, currently not capable of being protected as such as a CTM i.e. STILTON, may be allowed.
4. The scope of what is likely to be refused on ‘absolute’ grounds will be broadened to include for example; geographical indications, plant varieties, names for wines and speciality foods.
5. Any terms that are capable of being translated into any language of a European Member State will be refused on the basis of being descriptive.
6. The scope of comparison of marks in inter parte proceedings will be extended to take account of ‘similar’ as well as identical goods/services if reputation is being argued.
7. The basis for an opposition being brought may be extended to allow for ‘bad faith’ being pleaded that is dependent upon reliance on rights existing outside Europe.
8. The ‘own name’ defence is to be narrowed, so that it will only be allowed for a personal name.
9. The ‘up to 3 classes for a single fee’ rule will be dispensed with in favour of the fee being set for one class, with additional fees payable for each additional class included within the application after the first. This will reduce the current tendency to ‘get value’ by filing for more classes than actually needed. It is intended that over time, the register will gradually become more relevant and less cluttered.
10. The implications of the new fee structure will also be evident at renewal; an owner will be able to determine whether they renew in all the classes currently protected.
11. Official searches that currently form part of the examination process, are to be abolished altogether. This will impact upon the importance of pre-filing searches being conducted on the applicant’s behalf. It will also increase the relevance of rights holders subscribing to a watching service.
12. The impact of the decision in the ‘IP Translator’ case is being legislated for. By this, specifications will need to be clear and precise. Broad terms and class headings will not be permitted, and any terms included within a specification will be interpreted to mean what they say i.e. not to include a broad spectrum of goods/services.
13. A trade mark owner will be given the right to prevent the importation of counterfeit or infringing goods, even if the importer claims that they are only ‘in transit’, and that they are not intended for sale within the European market.
14. The laws surrounding comparative advertising will effectively be brought across into the Regulation allowing a trade mark owner to prohibit the use of their mark within an advert if the use offends against the rules.
It is evident that many of the proposed changes are focused upon reducing ‘clutter’, improving efficiency, and making the fee system fairer for all. If the current practice of broad 3-class applications were allowed to continue, the European register would become an ‘irrelevant no-go zone’, with oppositions running against almost every application filed.
Rights owners should not be complacent about some of the implications of the new regime though. Reliance upon official searches for clearance purposes and/or notification of potential conflicting rights will be a feature of the past. Hence peace of mind and policing of rights will only be achieved through pre-filing searches and a subscription to a watching service. Albright IP are well-placed to provide assistance and advice in all aspects of trademark protection in the European Union.