European trademark law is currently undergoing the most fundamental changes since the introduction of the European Community trademark system 20 years ago. In late 2015, the European Parliament approved a reform package consisting of an amended European Union Trademark Regulation (Regulation (EU) 2015/2424) and a new Trademarks Directive (Directive (EU) 2015/2436). This bundle of new laws brings changes not only to EU trademarks, but also to owners of national trademarks in the EU.
The amendments touch on the fee structure for trademark applications and renewals and criteria concerning the registrability of trademarks and procedural issues, as well as certain changes applicable to infringement proceedings and customs seizures. Among the changes are the following:
- A new one-fee-per-class-system for trademark applications and renewals of Community Trademarks (now European Union Trademarks). The new system is accompanied by a new fee structure. The good news is that renewals will become substantially cheaper. However, official fees for trademark applications containing three or more classes will increase.
- Classification of trademarks. Under previous practice, “broad” specifications consisting of “class headings” were deemed to cover all goods and services within that particular class. This topic has undergone substantial discussions since the CJEU rendered its decision in the IP Translator case in June 2012. Under the new rules, and in accordance with general practice since IP Translator, only goods and services that fall within their literal meaning will be covered. However, the proprietors of EUTMs filed before June 22, 2012 and designating the entire heading of a class will be able to notify the Office of the European Union, no later than September 24, 2016, of their intention to seek protection in respect of goods and services beyond those covered by the literal meaning of the said heading (Article 28(8) of the Regulation).
- The requirement to represent a mark “graphically” will no longer apply. This change is substantial because it will become easier to register non-traditional trademarks. Trademark applicants may apply for trademarks protecting sound, color, shapes and movements more easily. As an example, under the current system, sound marks were registered only when a music notation was provided. This will not be required any longer; thus, sounds not representable by music notations may be registered. For EUTMs, these changes go into effect starting October 1, 2017.
- Seizure of counterfeit goods in transit through the EU. A seizure will become possible even in cases where the goods were not meant for the EU, unless they would not be infringing in the country of their final destination. The burden of proof will shift to the alleged infringer. To challenge the seizure, the holder of the goods will need to demonstrate that the EU trademark holder would not be entitled to prevent the marketing of the goods in the country of final destination. The reform will also allow the rights holder to take action against infringing preparatory acts – for example, the use of packaging and labels.
- The reform requires the EU member states to provide national opposition proceedings as well as administrative (PTO) proceedings for the revocation or declaration of invalidity of trademarks. There are still several EU countries where such disputes must be brought before the national courts. However, EU member states have several years to introduce these changes.
- An EU Certification Mark will be introduced as a new type of trademark at the EU level. Certifying institutions will be able to permit adherents to the certification system to use the mark as a sign for goods or services complying with applicable certification requirements. The introduction of EU certification marks will remedy the current inconsistency between national systems and the EU trademark system.
In total, the reform package contains major changes. It appears advisable for brand owners holding trademarks in the EU to review their trademark portfolio and filing practices to ensure they are in line with the reforms. A DLA Piper microsite dedicated to the EU Trademark Reform provides regular updates on the status of the reform – visit www.dlapiper.com/en/us/focus/eu-trademark-reform.
Dr. Ulrike Gruebler, a partner in the IPT group and based in Hamburg, focuses on German, European and international trademark, design, and copyright law. Reach her at firstname.lastname@example.org.