In April 2015, the European Commission, the European Parliament and the Council finally reached a political agreement on the trade mark reform package concerning the Community Trade Mark Regulation and the Trade Marks Directive. The European Parliament officially approved the reform on 15 December 2015 in its plenary session and it will enter into force in Spring 2016. The aim of the reform is to make trade mark registration systems more efficient, lower costs, expedite the trade mark proceedings and promote predictability and legal certainty within the EU.
Stricter classification rules with retroactive effect – trade mark owners recommended to evaluate sufficiency of their current trade mark portfolios
The rules for classification of goods and services will be updated to reflect the principles set out by the CJEU in the IP Translator case (C-307/10) rendered on 19 June 2012. The goods and services for which the protection is sought must from now on be identified by the applicant with sufficient clarity and precision. If the applicant uses the general terms of the Nice Classification class headings, the authorities will interpret the class headings according to their literal meaning. As a result, the goods or services originally considered protected under a general class heading might fall outside protection. For example, as concluded in the IP Translator case, “translation services” in Class 41 are not covered by the literal class heading “providing of training; entertainment; sporting and cultural activities” in Class 41).
Under Article 28 of the proposed Regulation, proprietors of trade marks applied for before 22 June 2012 are given the possibility to amend the specifications of goods and services for trade mark applications filed before the IP Translator case within a period of six months from the entry into force of the Regulation. After this six-month period, the scope of protection of the trade marks will be restricted to cover only the goods and services that are covered by the literal meaning of the class heading.
The reform and new practices therefore entail extra work for businesses, as it is necessary that any potentially unclear classifications are reviewed, and amended if necessary. It is advisable to evaluate all valid trade mark registrations and pending applications in good time to ensure that appropriate protection is obtained or retained.
Other amendments
In addition to trade mark classifications, the reform will affect the requirements and scope of trade mark protection. One notable change is that the key requirement of “graphic representation” will be abolished, which enables easier registration of unconventional trade marks. For example, sound recordings will in the future be acceptable as representations of sound marks, provided the specific subject matter of the mark is evident. Another change expected to affect the scope of protection is the new one-class-per-fee-system by which the basic application fee will cover only one class instead of three. The one-class-per-fee-system aims at focusing protection and getting rid of unnecessarily broad trade mark registrations.
The reform will also provide more effective means for trade mark proprietors to fight against counterfeit goods in transit.
The proposed Directive thus aims at creating more effective national opposition and invalidity proceedings. Member States are to provide for efficient and expeditious administrative procedures for revocation of trade marks. Furthermore, trade mark applicants may raise the defence of non-use in opposition proceedings without taking separate legal action. These are much welcomed changes from the Finnish perspective.
见Borenius:Legal Alert – EU Trade Mark Reform Package Approved by the European Parliament
