EU trademark reform: a clearer picture
Six years have passed since the revisions to the current EU trademark system were first proposed by the European Commission in 2009. In April 2015, the European Parliament, Council and Commission finally reached a provisional political agreement on the reform, and on June 8 the council published the final compromise texts reached by the three institutions. The new European trademark law may come into effect in 2016.
The reform concerns the revision of two legal instruments: the Trade Mark Directive (2008/95/EC) and the Trade Mark Regulation (207/2009/EC), and will introduce certain essential terminological changes in the European trademark law, including replacing the Community trademark (CTM) with a European Union trademark.The agreed measures are aimed at modernising trademark registration systems in EU member states and make them more effective, efficient and cohesive.
Graphical representation
Under the current article 4 of the Trade Mark Regulation, it says: “A CTM may consist of any signs capable of being represented graphically.”In other words, in order to be eligible for registration, a sign must be visualised in a two or three-dimensional form.
Because of this requirement of graphical representation, European trademark practice has been criticised for being too restrictive in granting registration. Typically, traditional brand features (eg, word, figurative and combination marks) have been most likely to fulfil the registration requirements, while more unconventional mark types (eg, sound, scent and colour marks) have needed greater consideration.
The Court of Justice of the European Union has further specified representation requirements in its case law. In theSieckmann case (C-273/00), the court held that a trademark may consist of a sign which in itself is not capable of being perceived visually, provided that“it can be represented graphically, particularly by means of images, lines or characters and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”. Since that decision, the establishedlist ofrepresentationcriteria has systematically been referred to in a number of cases, including the Libertel (C-104/01), Shield Mark (C-283/01) and Heidelberger (C-49/02) decisions.
Updated wording
With the European trademark reform, guidance from the previous case law will be incorporated into the legislation. However, the requirement of graphical representation will no longer be included in the updated wording.
To understand the reason for the deletion, one must note that the removal of the requirement of graphic representation was originally suggested in the 2011 “Study on the Overall Functioning of the European Trade Mark System” ordered by the commission. The revision was suggested due to a view that the requirement was outdated. It was nevertheless stressed that the new wording should not detract from the exigencies of legal security — as set forth in the Sieckmann case — although the list of criteria should not have to be repeated literally in the new legislation.
“Guidance from the previous case law will be incorporated into the legislation. However, the requirement of graphical representation will no longer be included in the updated wording.”
The aim of ensuring greater legal certainty regarding the means of representation of trademarks was also underlined in the final reform proposal published on June 8. The new article 4 of the Trade Mark Regulation says that “a European Union trade mark may consist of any signs, in particular words, including personal names, designs, letters, numerals, colours, the shapes of goods and their packaging, or sounds” provided that such signs are capable of being represented on the register of EU trademarks “in the manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.
The updated wording of article 4 corresponds to the list of criteria for representation provided in the Sieckmann case literally in so far as the principles of “clear” and “precise” are concerned, and indirectly for the part of the principles “easily accessible” and “objective”. In any case, the intention of the updated wording is not to grant exemption from the criteria of “self-contained”, “intelligible” and “durable”, which is emphasised in the final reform proposal.
Modern representation
The wording in the new article 4 of the Trade Mark Regulation can be seen primarily to reflect modern society and the development of technology. Given the new technological media for representation of trademarks available, removal of the requirement of graphical representation should primarily provide assistance in the filing of sound marks and complex visual marks (eg, motion trademarks, holograms and position marks). In particular, in respect of sound marks, the representation by recordings could be even more preferable to the mere graphical representation by musical notation, as it could allow more precise identification of a trademark, and also serve the aim of enhanced legal certainty.
On scent and taste marks (or even touch marks), the perception and reproduction stays subjective and variable, so it will still be challenging for these mark types to fulfil the registration requirements, even after the revised law comes into effect.
Next steps
On November 10, the council adopted its position at first reading on the reform of the European trademark system. Next, the proposed changes to European trademark legislation are expected to be put to a second-reading vote at a plenary session of the parliament. This should take place by the end of this year. If the proposal passes the vote, publication in the Official Journal should occur in early 2016. The regulation will enter into force 90 days after its publication. The directive will enter into force 20 days after its publication. Member states will have three years to transpose the directive into their laws.
Tuukka Airaksinen is a partner at Krogerus. He can be contacted at: tuukka.airaksinen@krogerus.com
Emilia Lasanen is an associate at Krogerus. She can be contacted at: emilia.lasanen@krogerus.com
