Over the last few years the European Union has been exploring the need to harmonise national trade mark laws and practices to bring them further in line with the EU trade mark system. The underlying theory being that such uniformity will give businesses greater legal certainty as to how it can protect its trade marks (and the level of protection it gets) in each member state and throughout the Union as a whole and therefore increase confidence when operating across the single market.
While the Commission are of the view that the EU's trade mark system is not fundamentally broken, there is a recognition that changes are needed if it is to achieve the ultimate aim of creating, so far as possible, equal conditions for the registration and protection of trade marks throughout the Union.
The latest chapter in this drive to harmonise the trade mark laws of member states is encompassed in the amendments to the Community Trade Mark Regulation 207/2009 (the "CTM Regulation") set out in Regulation 2015/2424 (the "Amending Regulation"). Published on 24 December 2015, the Amending Regulation came into force on 23 March 2016 (although some changes will not apply until 1 October 2017).
In this, the first of three articles exploring the EU's drive to transform EU trade mark legislation, we will briefly look at how the Amending Regulation helps to achieve these aims by streamlining proceedings, clearly defining the European Union Intellectual Property Office ("EUIPO") tasks and revising the fee structure for European Union trade marks ("EUTM") applications and renewal fees.
One of the key changes heralded by the Amending Regulation is the renaming of Community trade marks ("CTM") as EUTM and the Office for Harmonisation in the Internal Market ("OHIM"), the body responsible for the registration and management of CTMs, to the EUIPO. Similarly in line with other EU legislation, references to the Community have been replaced by references to the Union.
A number of reforms to the current system have been made, ultimately with the overall aim of making applications more cost effective. Whether or not this proves to be the case for an individual trade mark owner will of course depend on the number of classes covered by a particular mark. The main changes are that:
The changes to Article 28 of the CTM Regulation, which covers the designation and classification of goods and services in respect of which a trade mark registration is applied for, are some of the most significant changes under the Amending Regulation.
The NICE classification system still forms the backbone by which goods and services are classified. However, whereas previously a class heading was interpreted as covering all possible goods and services in that class, the revised Article 28 requires that specifications of goods and services must now be sufficiently clear and precise to identify the extent of protection sought by those words alone.
Class headings will now be strictly interpreted to include only goods and services covered by its literal meaning. Any new EUTM application will need to specify individually all items of interest, as well as any broader general or class heading language as a catch-all. General indications in class headings may be used if they include all goods / services clearly covered by the literal meaning of the indication or term and comply with the requisite standards of clarity and precision.
Importantly, for proprietors of registered EUTMs applied for before 22 June 2012 who took a "whole class coverage" approach to their application, the Amending Regulation also provides that they have a six month window (from 23 March to 24 September 2016) to file a declaration to widen the scope of protection to cover any goods / services which may not fall within the literal meaning of the class heading. This declaration can be made free of charge and again clarity and precision is key so the declaration must list out the goods / services that the owner originally intended to cover which may fall outside the literal meaning of the indications. If no such declaration is filed in this 6 month period then the scope of the trade mark may consequently be limited in an unanticipated way by a literal interpretation of the specification.
Trade mark owners should also be aware of the limitations of any declaration. In particular, that the amendment to the register will not have retrospective effect and cannot be used as grounds to either:
in each case where such trade mark was in use / the application was made before the amendment and did not infringe on the literal meaning of the goods or services on the register at the time.
Proprietors of trade marks applied for before 22 June 2012 which are not yet registered or which are applied for after 22 June 2012 cannot, however, make such a declaration.
A number of other substantive changes are made under the Amending Regulation. However the Amending Regulation cannot be looked at in isolation as it forms only one part of the package to reform EU trade mark legislation.
In fact many of these other changes (which may require a change in mind-set and approach by some brand owners) are also addressed in the Trade Mark Directive 2015/2436 (the "2015 Directive") which replaces the existing EU Trade Mark Directive 2008. Although the 2015 Directive was published on 23 December 2015 and came into force in January 2016, member states have three years to implement the various changes in their national laws.
In our next article we will look at the relationship between the 2015 Directive and the Amending Regulation and what it means for trade mark owners in the immediate future. Our final article will consider the likely impact of the Trade Mark Directive for UK business on both the domestic and the wider European front.