Trade mark reform – how will it affect you?

We highlight some of the more important practical changes to European trade mark reforms taking effect later this month.

Europe’s trade mark reforms will start to take effect later this month. Many of the changes are administrative, and only of interest to trade mark specialists. But there are several important changes to the protection available for brands going forward, and steps that need to be taken to ensure protection is maintained. We highlight some of the more important practical changes.

Many of the EU-level changes will take effect on 23 March, with others following in October 2017. Most of the changes that involve national implementation need not be made until early 2019, but may be introduced sooner.

Name changes

From 23 March 2016 EU trade marks and the EU office will be renamed.

Community Trade Mark/CTM

 European Union Trade Mark/EUTM

Office for Harmonization in the Internal Market/OHIM

 European Union Intellectual Property Office/EUIPO

Action point

Those managing your brand registrations will need to be wary of approaches from fraudsters seeking to exploit confusion around the new names. This is already a problem for trade mark owners, and the name changes will increase the risk of being misled.

Changes to the identification of goods and services

It used to be possible to cover large groups of goods or services by use of the so-called Nice class headings without specifying them in detail. A test case decided in 2012 (IP Translator) meant that this was no longer possible, and the revised rules, writing this into law, will require more “clarity and precision” about what goods or services are to be protected.

For example: Class 9 of the Nice Classification before October 2012:

“Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.”

“Computer software” is not expressly included and so would not be covered by the class heading.  

Action point

Check your trade mark portfolio. Any important EU level registrations filed before 22 June 2012 should be reviewed to ensure that the goods and services that they cover are appropriate. Those that use a Nice class heading may need amending if use of the class heading was intended to cover goods or services beyond the literal meaning of the class heading, or extra goods need to be protected. You have until 24 September 2016 to file a declaration that will tailor the scope of protection. Failure to do so could result in a serious reduction in the scope of goods or services that the trade mark covers, because it would be restricted to the more limited range of goods or services expressly listed in the class heading.

Fee changes for EU trade marks

There’s good news on official fees. Overall there should be reductions for most brand owners. The old system of up to three classes of goods/services for one fee will go, to discourage unnecessarily broad filing. And there are small reductions in fees for renewals, oppositions etc.

Action point

Consider accelerating your registration process to get in before 23 March if you want to cover a wide range of goods and services (in three classes or more) as there is likely to be a small upfront saving.

Extension of protection for non-traditional marks

Changes in the definition of what can be registered will mean that there will be greater freedom to protect non-traditional marks. The requirement for “graphical representation” is being removed – so long as the brand feature can be clearly and precisely determined it should be possible to protect it. This means that MP3 sound files could be registered, for example, instead of relying on a pen-and-paper description such as musical notation.

Action point

Review your branding for elements extending beyond words and logos. Are there sound, colour or motion elements, for example, that you might want to protect? Take advantage of the changes to strengthen your brand protection.

Restriction of protection for functional or technical features of goods

An existing restriction on protection of shape elements of a product is being widened to capture all characteristics of goods. So where previously a shape that resulted from the nature of the goods themselves, was necessary to obtain a technical result or gave substantial value to the product could not be registered, this restriction will now extend to colours, surface decoration, sounds etc.

Action point

Some of the more ambitious attempts to protect shapes, smells, colours etc, have already been rejected under existing law, but these changes are likely to lead to further tightening. Before trying to protect a feature which simply adds value to the product, rather than a separate branding element, it is worth taking a careful look at whether this will be money well spent.

Need to prove use before suing for infringement

Failure to make genuine use of a registered trade mark in your business for an extended period can leave it vulnerable to attack. Currently, if you sue for infringement of your trade mark rights it is an option for the infringer to counterclaim for revocation. In future, an infringer may require a brand owner whose trade mark has been registered for more than five years to provide proof of use for the five years immediately preceding the commencement of the infringement action. Failure to do so would undermine the infringement claim. So brand owners will need to be ready to prove use before suing.

Action point

Keep records of sales, advertising and trade dress used over time to demonstrate use of your registered marks, so that if you need to take legal action quickly you are ready to demonstrate use.

Counterfeit goods and packaging

Changes to the rules on counterfeit goods and packaging and labelling materials will be welcomed by many businesses. Brand owners will in future be able to stop goods in transit through the EU, even where those goods are not intended for EU sale. And brand owners will be able to take action against anyone dealing in packaging, labelling, security or authenticity features that bear their trade mark.

Action point

If you are threatened by counterfeit trading, but do not currently have EU-level registrations, now would be a good time to consider obtaining this type of protection in order to maximise control over goods in transit.

This is just a selection of the changes coming in this month and to follow in the next few years. To discuss these or any other aspects of the reforms, and how they might best be used to achieve your business objectives, please get in touch.

Our content explained

Every piece of content we create is correct on the date it’s published but please don’t rely on it as legal advice. If you’d like to speak to us about your own legal requirements, please contact one of our expert lawyers.

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