On 15 December 2015, the European Parliament approved reforms to the European Union (EU) trade mark system. The reforms, by way of a new regulation and directive, intend to foster a more modern, efficient and harmonised trade mark system for the EU and its 28 member states.
The Community Trade Mark (CTM) was first introduced in 1996 and the system is now felt to be out-of-date with the ever-changing needs of business and IP owners. Reforms have been in the works for around two years following the EU Commission's proposal for revision of the Community Trade Mark Directive and the Community Trade Mark Regulation (CTMR) in March 2013 and the final text of the proposed legislation has now been agreed.
The changes to the CTMR are quite significant and include:
- Changes to fees – the reforms will see fees being charged on a per class basis (as opposed to the three class fee currently in place). There will also be a considerable reduction in renewal fees with savings of around 37%. Trade mark fees will also now be payable on filing with the removal of the one month grace period for payment.
- Class headings – the law will be brought into line with the Court of Justice of the European Union (CJEU) decision in IP Translator - see our update here. This means that class headings will be interpreted literally, so the description of goods and services must be sufficiently ‘clear and precise’ to determine the scope of protection of a trade mark. Trade mark owners will be given a six month grace period from introduction of the regulation to declare whether or not they intend to seek retrospective protection beyond the class heading.
- Counterfeit goods in transit – trade mark owners will be given increased rights against counterfeit goods which are in transit in the EU allowing them, by way of customs enforcement, to seize goods bearing an infringing mark. This is provided that there would still be an infringement in the country of final destination.
- Revocation proceedings – all national trade mark offices will be required to implement administrative proceedings for the invalidation and revocation of trade marks to prevent trade mark owners from having to issue court proceedings in this regard.
- Terminology – under the reforms the CTM will become the 'European Union Trade Mark' and the Office for Harmonisation in the Internal Market (OHIM) will become the 'European Union Intellectual Property Office'.
- Graphic representation – presently a trade mark can only be registered if it is capable of being represented graphically. Under the reforms, this requirement has been removed so that trade marks can be represented in any form using any generally available technology provided that the representation is clear and precise (Sieckmann v DPMA Case C-273/00). This will open the door to the improved registration of non-traditional marks such as sounds and smells.
The legislative process for the reforms is now complete and the associated directive and regulation are expected to come into force in early to mid 2016. Member states of the EU will have three years to transpose the directive into their national laws so we can expect some changes to the UK Trade Marks Act 1994 in the near future.
If you would like any further information about the impact of the reforms on your trade mark portfolio, please get in touch with James Touzel.
This publication is intended for general guidance and represents our understanding of the relevant law and practice as at December 2015. Specific advice should be sought for specific cases. For more information see our terms & conditions on www.TLTsolicitors.com