15 March 2019Trademarks

CITMA 2019: EU directive brings big national changes

The European Trademark Directive is set to ring major changes in some jurisdictions, while others are already more aligned with the new provisions, according to lawyers.

The comments were made at the  spring conference of the Chartered Institute of Trademark Attorneys in London today, March 15.

A panel of trademark experts from France, Germany, Spain and Portugal discussed the impact of the directive, which was passed in 2016 and is currently being transposed into national law in EU member states.

Out of all of the jurisdictions discussed, France is set to undergo the most dramatic transformation in national trademark law, largely to the benefit of trademark owners, according to Karina Dimidjian-Lecomte, partner at  Casalonga in Paris, who predicted a “significant” increase in trademark revocation actions.

Under the new provisions, all direct trademark revocation actions will now take place before the French National Institute of Industrial Property, France’s national IP registry office.

Previously, the office did not have jurisdiction to consider the use of a trademark. This, Dimidjian-Lecomte argued, largely contributed to the office’s ability to deliver decisions on oppositions within six months of the opposition deadline.

With the office now set to expand its staff in order to equip it to consider prior use of a mark, decisions on opposition proceedings may take longer with the implementation of the directive, she suggested.

French trademark owners will also be able to base trademark oppositions on as many current registrations as they wish. Previously, she explained, oppositions could only be based on one prior mark, leading to multiple oppositions to contest a single infringing mark.

Dimidjian-Lecomte noted, however, that France was somewhat “behind schedule” in transposing the provisions required by the directive into national law.

João Miranda de Sousa, partner at  Garrigues, based in Lisbon and Madrid, spoke about the impact of the directive on the Portuguese trademark system.

With the directive’s provisions set to be implemented in the jurisdiction in July, it will be possible to bring trademark invalidity actions before Portugal’s IP office, alongside revocation actions which were already processed by the office.

Meanwhile, in Germany, the cost of opposition proceedings is set to fall as the system becomes more flexible for trademark owners, explained Sandra Sophia Redeker, partner at  SKW Schwarz in Berlin.

For trademark revocation actions, petitioners will be able to choose between going through a court or through the German Patent and Trademark Office (DPMA). Redeker predicted that while bigger companies may still choose to go to court, DPMA proceedings would open a cheaper pathway for many smaller entities.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today's top stories:

CITMA 2019: ‘Greater consensus’ needed across EU on new marks

Xiaomi faces jurisdictional fight in New York

CITMA 2019: AI use in retail has implications for TMs

Myanmar enacts first-ever patent protection law

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk

More on this story

14 March 2019   The chair of IPReg, the regulatory body of patent and trademark attorneys in the UK, has said today that if the UK leaves the European Union without a deal, the trademark attorneys could face severe consequences.
15 March 2019   Rapidly developing technologies and online IP enforcement pose the biggest challenge in terms of IP rights in an increasingly digital world.
10 November 2020   The question of who owns works generated by artificial intelligence is set to divide the courts worldwide but is unlikely to lead to AI being granted a “legal personality”, leading lawyers have said.