THE NEW EU TRADEMARK REGULATION
By Franco de Barba, Attorney-at-Law
MERX is an European law firm specializing in Intellectual Property. Our team draw from many years of experience gained as members of highly renowned IP teams of major Spanish law firms. We have successfully registered trademarks in more than 70 countries, including the European Union and LATAM.
Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation, will enter in force next 23rd March 2016.
This regulation, which ends with a review process that started more than 7 years ago, introduces a relevant changes in respect of the classification of products/services, taxes, procedures and substantive law.
Here is an overview over the most important changes for the European Trade Mark regime:
Fees for electronic applications
Until now the fees to be paid for a community trade mark application amounted to 900 € for the first three classes. With the new regulation, the fee for filing a EU Trade Mark in one class will be reduced to 850 Euros, the fees for filing a mark in two classes will remain the same (900 Euros) and the fees for filing a mark in three classes will be increased (150 EUR every additional class beyond 2).
On the other hand, renewal fees will also be reduced to 850 Euros for the first class. Additional classes cost the same as for filing (50 EUR second class, 150 EUR every additional class beyond 2).
Certainly, the new fees structure will discourage applicants to protect a trade mark for goods and/or services which are not of special commercial interest, reducing examination time, and unnecessary opposition proceedings.
The community trademark will be renamed “European Union Trade Mark” and the OHIM changes its name for “European Union Intellectual Property Office” (EUIPO).
According to the new regulation, general indications are in principle admitted, although they cover all goods/services included in their literal meaning, as opposed to the practice of the OHIM prior to the ECJ Case “IP TRANSLATOR”, C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks. As you may recall, before IP TRANSLATOR, it was considered that class headings of the Nice Classification covered all goods or services listed in the Alphabetical List of that class.
In this sense, according to art. 28 of Regulation (EU) No 2015/2424, the use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as only including all the goods or services clearly covered by the literal meaning of the indication or term.
Owners of existing registrations filed before 22 June 2012 which were granted with respect of the entire heading of a Nice class may declare, that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice classification in force at the date of filing.
The time window for this is 23 March - 24 September 2016.
Otherwise, the protection will remain limited to their literal meaning.
The Regulation also introduces some important changes in the registration procedure.
For instance, priority claims must be made at the moment of fling of the application, and cannot be raised after that moment. On the other hand, disclaimers in order to overcome absolute ground refusals are abolished.
Absolute ground for refusal or invalidity of shape marks is amended to apply also to “other characteristics” that are essentially functional.
Traditional terms for wine, traditional specialities, plant varieties’ names constitute absolute grounds for refusal, which are independent of consumer perception.
Additionally, in order to allow the registration of other non-traditional trademarks, the requirement of graphic representation disappears, although marks still need to be represented in the Register (this change will only come into force on 1 October 2017).
Finally, evidence of use of the prior right in opposition or cancelation proceedings, must be provided by the opponent, during the 5 years prior to the application or priority date (and no longer before of the publication date).
Certification trade marks
The revised Regulation will also include a new set of rules allowing for the registration of certification marks at EU level, ending with the discussion whether they are more appropriately registered as individual or as collective marks. This will, however, only become into force on 1 October 2017.
According to art. 74, an EU certification mark is described as a mark capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.
Any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods/services of the kind certified.
Concerning renewals, the request for renewal shall be submitted in the six-month period prior to the expiry of the registration, and no longer at the end of the month during which expiry occurs. Anyway, renewal can still be requested in the period of six month following the expiry of the registration, provided an additional fee for late payment is paid within this period.