On 27 March 2013, the European Commission adopted proposals to revise the Community Trademark Regulation and the Trademark Directive aimed at modernising the trademark system, improving access to the trademark registration systems and increasing flexibility and legal certainty. Several substantive and procedural changes are proposed.
On 27 March 2013, the European Commission adopted proposals for a revision of the Community Trademark Regulation 207/2009/EC, the Trademark Directive 2008/95/EC (“TMD”) and Regulation 2869/95 on fees payable to the Office for Harmonization in the Internal Market (OHIM). The proposals are based on a study by the Max Planck Institute for Intellectual Property and Competition Law, which was published on 8 March 2011.
The European Commission stated in its press release that the modifications will make the trademark registration systems all over the European Union cheaper, quicker, more reliable and predictable. The trademark protection against counterfeits would become more effective.
As regards fees, the “one-class-per-fee” is introduced both for Community trademark applications and for national trademark applications, enabling (small) businesses to register a trademark for only one product class instead of three.
Main modifications proposed by the European Commission
New terminology
The terminology will be adapted [according] to the Lisbon Treaty terminology, and the terms “Community Trademark” and “Community Trademark Courts” will be changed to “European Trademark” and “European Trademark Courts” respectively. (Note: “EU Trademark” would have been more correct.) OHIM will be renamed “the European Union Trade Marks and Designs Agency” (EUTDMA).
Substantive changes
The current requirement that a trademark has to be capable of being represented graphically in order to be registered will be abolished. This should allow for greater flexibility when registering trademarks, in line with the jurisdiction of the Court of Justice of the European Union (CJEU). (Article 4 European Trademark Regulation (“ETMR”) and article 3 TMD.)
The proposals also amend the rules on the rights conferred on the trademark proprietor. According to the proposals, a trademark proprietor can only prevent the use of a sign that is identical to his trademark in relation to identical goods or services, where such use affects or is liable to affect the function of the trademark to provide a guarantee to consumers of the origin of the goods or services. Hence, the Commission adds a requirement (prejudice to the indication of origin function) to the double identity rule. This proposed amendment reverses the case law of the CJEU which has recognized several times that the advertising, communication and investment function of a trademark also deserves protection, and not just the indication of origin function.
Trademarks applied for in a foreign language will not be eligible for protection if their registration is refused on absolute grounds when translated into an official Member State language. (Article 7 (2) (b) ETMR and 4 (2) (b) TMD.)
The “own name” defence against trademark infringement will only apply to personal names, and no longer to trading names as well.
Procedural changes
Pursuant to the proposal, “European Trademarks” can no longer be filed at National Offices. Applicants will no longer have one month to pay the application fee for a European Trademark, as the application fee will instead be payable on application.
Article 28 ETMR and article 40 TMD will codify the CJEU IP Translator (C-307/10) decision. The goods and services for which the protection of the trademark is sought will be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought. The list of goods and services will allow each item to be classified in only one class of the Nice Classification. Use of class headings will be interpreted as including all goods or services clearly covered by the literal meaning of the term. Proprietors of trademarks applied for before 22 June 2012 (i.e. the IP Translator case) may declare that their “intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the class”.
For the purposes of an opposition, if the applicant requests the proprietor of an earlier European Trademark to show genuine use, the relevant period will be the five years preceding the filing date of the later European Trademark, instead of the publication date in the current system.
Article 100 (4) ETMR will oblige a European Trademark Court to not examine a counterclaim for revocation or a declaration of invalidity until the EUTDMA (OHIM) has been informed. It has to stay the proceedings if the European Trademark has already been challenged by the EUTDMA.
Anti-piracy and counterfeiting measures
Regarding consignments from commercial suppliers, goods may not be imported into the EU even if just the consignor of the goods is acting for commercial purposes. As such, the trademark owner has the right to prevent businesses from importing goods located outside the EU which have been sold, offered, shipped or advertised to private consumers and to discourage the ordering and sale of counterfeit goods over the internet.
In line with the CJEU Nokia and Philips (C-495/09 and C-446/09) cases, rights holders will be able to oppose the transit of counterfeit goods, in the context of commercial activity, through the customs territory of the EU, even when the goods are not released for free circulation within the EU.
Where it is likely that the get-up, packaging or other means by which the mark is affixed will be used for goods or services and the use in relation to those goods or services would constitute an infringement of the rights of the proprietor, the trademark proprietor shall have the right to prohibit:
Affixing, during the course of trade, a sign on get-up, packaging or other means by which the mark may be affixed that is identical or similar to the European Trademark; and
Offering or placing on the market, or stocking for those purposes, or importing or exporting get-up, packaging or other means by which the mark is affixed.
This provision might well have arisen from the Redbull case (C-119/10).
The recasting of the Trademark Directive and revision of the Community Trade Mark Regulation are legislative proposals to be adopted by the European Parliament and the Council under the co-decision procedure.
