Proposed Community Trade Mark Reform
5th October 2015
The European Parliament and the European Commission have reached a provisional agreement in relation to the proposed trade mark reform package, and the agreement was published on 8 June 2015. The main changes present in the final proposal are outlined below. Articles referred to below are Articles of the Community Trade Mark Regulation (CTMR).
• The name “Community Trade Mark” is to be changed to “European Union Trade Mark”
• OHIM is to become the “European Union Intellectual Property Office”
• Article 4 – the requirement for a mark to be capable of being represented graphically has been removed, and instead a mark should be capable of being represented on the register in a manner which enables people to determine the clear and precise subject-matter of the protection afforded
• Article 7 – amended so that not just “shape”, but “another characteristic”, can give rise to grounds for refusal. Also amended to include geographical indications in general.
• Article 8 – amended so geographical indications are a ground of opposition.
• Article 9 – the list of infringing acts has been amended to include use in a company/trade name and use in comparative advertising which is not in line with the comparative advertising directive. Also amended to include provisions for dealing with “goods in transit”.
• Article 9a – newly added, and extends preparatory acts of infringement to include tags and packaging separately from the goods themselves.
• Article 12 – amended so that the “own-name” defence is limited to natural persons.
• Article 13 – amended so exhaustion includes the EEA rather than just the Community
• Article 18 – amended so there is a defence to automatic transfer back where an agent applies for a mark instead of the owner, if the agent can justify their action.
• Article 25 – the national filing route has now been removed. All applications should be filed directly with OHIM (or the EUIPO as it may become).
• Article 26 – the application fee will only cover a single class, as opposed to three classes, but will be lowered, and the fee for three classes will remain the same.
• Article 28 – amended to state what “class headings” can be used, and what they mean (literal meaning only). There will be transitional provisions to allow pre-22 June 2012 applicants to apply to extend the class heading to goods/services beyond the literal meaning of the class heading.
• Article 38 – amended so that an EU search report is only drawn up if requested (possible implications for watching services)
• Article 40 – amended so third party observations can be made prior to publication
• Article 56 – amended to refer to final decisions both by either the Office or a Court
• Articles 74b-74ja – added in relation to certification marks, and mainly mirror provisions for collective marks
• Article 93 – representatives can be qualified in member states of the EEA rather than just the EU
• Article 99 – amended so that invalidity of a mark can be challenged in court without it being a counter claim. Revocation still has to be a counter claim before the courts.
• Article 156 – opposition period for international applications amended to be three months starting one month from publication, as opposed to current six months.
The agreement is still subject to confirmation by the Committee of Permanent Representatives of the Council, and we will provide further updates if and when they occur.