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European trademark reform—a summary

01-10-2015

Michiel Rijsdijk

It takes a while for reforms to travel through the European administrative system. However, the European Commission, Parliament and Council have agreed on a trademark reform package. This brings change for new and existing Community trademark (CTM) owners.

The package introduces an altered CTM Regulation, while also introducing a new Trademark Directive. The general goal of the package is to modernise the European trademark system and make it more accessible and efficient for businesses in terms of lower costs, speed, predictability and greater legal certainty.

Fee reduction

Reductions in fees for the CTM (which will become known as the EU trademark) can, according to a press release from the commission, lead to savings of up to 37%. While this is always welcome, these costs are usually dwarfed by other costs, such as costs of marketing the trademark.

Basic fee for an application for an individual mark by electronic means will be €850 ($956);

Fee for the second class of goods and services for an individual mark will be €50; and

Fee for each class of goods and services exceeding two for an individual mark will be €150.

The ‘pay for one get two for free’ system in terms of classes will no longer be applicable. Before, with one registration a trademark applicant could apply for goods and services in three different classes for the same price as for one class. This clogged the register with unused trademarks in certain classes, which is why this system will be abolished. The result should be a cleaner register which also gives a more accurate view of trademark use in specific classes, but also leads to more expense (and therefore less of a fee reduction) for trademark owners wishing to register in more than one class.

No ‘graphically displayable’ requirement

The requirement that a trademark needs to be displayed graphically will be abolished under reference to the Sieckmann ruling. In this decision the Court of Justice of the European Union ruled that non-displayable signs such as smells and sounds may be registered, as long as they are described clearly and precisely. In the proposal it is now noted that a sign should be permitted to be represented in any appropriate form, so not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

"National trademark offices are to implement, within seven years of the introduction of the new directive, administrative procedures for the revocation and nullification of national trademarks."

Class headings

The provisions concerning class headings will be updated according to the IP Translator ruling. In order to determine the scope of protection of a trademark, the applicant must clearly and accurately describe the goods and services in the classes in question. This also applies to trademarks already registered.

Trademark owners should ensure their registered CTMs still provide the scope of protection that was originally intended. The class headings covering the goods and services for which the trademark was applied mean what they say. The mere mentioning of the class heading may not be precise enough. If not described clearly and precisely, the scope of protection might be significantly reduced.

One exception should be mentioned: trademark owners of applications from before June 22, 2012 have the possibility to further clearly and accurately describe their trademark(s). After the passing of a six-month sunset period, this will no longer be possible.

Administrative procedure

National trademark offices are to implement, within seven years of the introduction of the new directive, administrative procedures for the revocation and nullification of national trademarks. This will save the trademark owner from starting court proceedings when trying to revoke or nullify, for example, an unused national trademark.

Goods-in-transit

Procedures regarding in-transit goods will also be reformed. This aims to prevent the EU from being misused as a transit hub for counterfeit goods. The proposed measure aims to enlarge the scope of customs enforcement. A trademark owner can prevent in-transit goods from travelling on to the country of destination, unless the owner of the goods can prove that the trademark owner has no right to act against the goods in the country of destination.

While the aforementioned changes are the most prominent, there are others such as changes to the grounds for opposition and an increased number of grounds for refusal. The package is not in force yet: it still has to be approved by the parliament’s Committee on Legal Affairs and the council. The International Trademark Association expected this to happen by September 2015. After the directive takes effect, member states have three years to implement the directive in their national legislation.

Michiel Rijsdijk is a partner at Arnold + Siedsma. He can be contacted at: mrijsdijk@arnold-siedsma.com  

Michiel Rijsdijk, Arnold + Siedsma, CTM, trademark, parliament, European Commission, CTM Regulation,

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