European Union Trade Mark Reforms

Significant changes to the laws, systems and processes concerning European Union trade marks will be implemented on 23 March 2016. The intent behind the changes is to increase efficiency and to harmonise the laws between the EU Intellectual Property Office and the Intellectual Property Offices of the individual EU member states. Member states must implement the majority of changes into their laws within the next three years.

Some of the notable changes are outlined as follows:

Terminology

While simply a cosmetic change, EU trade marks, presently known as Community Trade Marks will be renamed ‘European Union Trade Marks’. The Intellectual Property Office is presently known as the Office for Harmonization in the International Market, and will be renamed the ‘European Union Intellectual Property Office’.

Graphical Representation

A trade mark will no longer have to be capable of graphical representation (e.g. as a word, a logo or sounds represented by musical annotation). Non-traditional marks such as smells, sounds and holograms can be applied for, assuming that technology is available to denote them in a precise manner. It has been noted that as technology develops, different types of trade marks will likely become available to register.

Goods and Services

Registrations filed before 22 June 2012 that contain Nice class headings only in their specification will no longer be able to claim all of the goods and services in the affected classes. Only the literal meanings of the headings will be considered to be covered by the registrations, unless owners amend their specifications to include the relevant goods and services beyond the literal meaning of the class heading before 23 September 2016.

Proof of Use

Under the new rules, when the owner of an EU Trade Mark registration brings an infringement action, the defendant can require the owner to provide proof of use of the trade mark (or suitable reasons for non-use) for the five years prior to the commencement of the infringement action. This removes the need for the defendant to counterclaim on the basis of non-use in a new action. Proof of use is already required for oppositions and cancellation proceedings.

Administrative Procedures

Some EU member states allow revocation and invalidity proceedings to only be heard before a court. This is time consuming and costly. These member states, for example Italy and Spain, have seven years to provide an efficient and expeditious administrative procedure for these actions.

Fees

Previously, the OHIM charged a flat fee for filing trade mark applications in up to 3 classes. As of 23 March 2016, there will be a one fee per class system in an attempt to discourage applicants from seeking protection in multiple classes unless genuinely required. Applicants intending to file in three classes or more should file before 23 March 2016 to benefit from the current fee structure.

Notably, after this date, registration renewal fees will be decreased.

There are also moderate reductions to the fees for opposition, cancellation and appeal proceedings.

Geographical Scope of Use

Aside from these reforms, it is worthwhile to note the recent case law regarding what amounts to ‘proof of use’ when defending an EU trade mark registration in proceedings. It appears that the use of an EU trade mark in only one EU member state may not suffice, although this depends on the nature of use and the goods and services concerned. There has been recent conflicting case law on the matter, and it may be wise in some circumstances to supplement EU trade mark protection with national registrations in member states of importance to you. In this situation, professional advice should be sought.