Deadline due for implementing EU trademark reforms
EU member states must have implemented the EU Trademark Directive, which was approved in 2015, by tomorrow, January 15.
Countries including the UK and Spain have implemented the changes today, January 14.
The modifications will affect applications and registrations for trademarks, as well as the management and enforcement of them.
As part of the reforms, trademark applications will no longer have to be accompanied by a graphical representation of the mark. It gives applicants the flexibility of choosing from a wide variety of formats, including submitting sound and video files online.
The changes will also give customs authorities the right to detain infringing goods passing through the EU en-route to countries outside the EU customs territory, following an application by a trademark owner.
The laws will also shift the burden of proof to the person shipping the allegedly counterfeit goods. The accused will have to prove that the owner of the mark has no right to stop them from shipping or circulating the goods.
There are also enhanced provisions to deal with counterfeit goods. For example, the owner of a mark may take action against a third party that makes the packaging being used for the allegedly infringing products.
Previously, trademark owners wishing to take legal action against a potentially infringing trademark had to prove the mark was invalid first. Under the changes, a court will determine questions of validity within infringement proceedings.
During infringement proceedings, a defendant will be able to raise the non-use of the owner’s trademark as a defence, rather than having to launch separate revocation proceedings.
Trademark owners will also be able to take legal action against licensees under trademark law.
Licensees may also pursue trademark infringers themselves. While non-exclusive licence holders will need consent from the owner of the mark to pursue alleged infringers, exclusive licence holders will only need to give the trademark owner an initial opportunity to take legal action. If no legal action is taken within two months, the licensee may pursue its own case.
Furthermore, if the owner of a collective trademark is involved in an infringement suit, authorised users of the mark may also intervene in the proceedings and obtain compensation for any losses they may have incurred due to the third-party infringement.
Lastly, trademark renewal notifications will be issued sooner, at six months before the renewal date rather than four. If a trademark owner fails to renew a mark, restoration of the mark is possible if the failure to renew is ruled as “unintentional”.
As a result, this could mean the restoration process will become easier and more objective.
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