Goodbye OHIM, Hello EUIPO

Today marks a significant change to the European trade mark regime with the long-awaited Regulation 2015/2424 (the “Regulation”) coming into force. The Regulation was been the subject of debate for almost three years before its adoption by the European Parliament at the end of 2015 and has gone through various iterations in that time.

The change represents the most substantial overhaul of the European trade mark system in the last 20 years and it is hoped that these amendments will help to address some of the major issues and concerns that have arisen in that period. Like much European legislation, it is not perfect and has required a great deal of negotiation and compromise.

As a result, the new Regulation makes changes across all aspects of the regime ranging from changes to the registry, changes to the registration process and the registrability of marks and changes to the enforcement regime.

We have sought in this Law-Now to highlight some of the most significant amendments but, as a result of the extent of change, this is not intended to be a comprehensive list. We have endeavoured to set out below the 10 key changes that everyone should know about – from brand owners with only one or two marks, to more substantial portfolios.

Change of name, lower cost

CTMs become EUTMS, OHIM becomes EUIPO

1. There has been a change in nomenclature for both the Community Trade Mark (CTM) and the registry (the Office for Harmonisation in the Internal Market (OHIM)) which will be renamed the European Union Trade Mark (“EUTM”) and the European Union Intellectual Property Office (EUIPO) respectively. Lower costs, single class fees
2. The cost of new EUTMs will be lower. At present, the basic fee covers registration in up to three classes. However, under the new regime, the registry will charge on a one fee per class basis. The registration fee for one class will be EUR 850, a second class will cost EUR 50 and any subsequent classes covered will cost EUR 150 each. Previously the first three classes were for a single fee, which arguably encouraged unnecessarily expansive filings across multiple classes. Registrability Specification means only what it says
3. In defining the goods and services to be covered by any EUTM, the Regulation now codifies the law as established in the IP Translator decision from 2012. The use of general terms and class headings in any specification will be interpreted as only including the goods and services covered by the literal meaning of the terms. Holders of existing Community trade marks (filed before 22 June 2012) which do not comply with this practice (i.e. which were registered by reference to class headings) will have a grace period of six months in which to file a declaration stating that their intention at the date of filing was to seek protection in respect of goods or services beyond those covered by the literal meaning of the class heading. Upon receipt of such a declaration, the registry will update the register accordingly. Trade mark owners should carefully review their portfolio in advance of the 24 September 2016 deadline to ensure they do not compromise on coverage. No requirement for graphical representation
4. From 1 October 2017 in respect of new applications, it will no longer be necessary to “graphically represent” a proposed trade mark provided it can be represented in a way which “enables the public to determine the clear and precise subject matter of the protection”. This has been explicitly introduced to make the system more flexible and has the potential to make unusual trade marks such as smells or sounds easier to register. Further restrictions on shape mark registrability
5. The existing Community trade mark Regulation includes various shape-specific exclusions which prevent the registration of shapes that: (i) result from the nature of the goods themselves; (ii) are necessary to obtain a technical result; or (iii) give substantial value to the goods. These exclusions are now being extended beyond shapes to “other characteristics”. How this will be applied remains to be seen but, in addition to the existing wealth of case law on shape marks, it is likely to give rise to significant amounts of judicial input to clarify the circumstances in which another “characteristic” could be excluded. PDO & PGI objections
6. From 1 October 2017 the absolute grounds of refusal will be extended in connection with “designations of origin” and “geographical indications”. Enforcement Transit reverse
7. Owners of EUTMs will be able to prevent transit of counterfeit goods through the European Union even if the goods are not intended for sale in the European Union. This reverses the decision in C-446/09 and C-495/09 Phillips and Nokia. However, this entitlement will lapse if the holder of the goods can provide evidence that the trade mark owner does not have rights over the trade mark in the goods’ intended destination. Despite this caveat, and because the burden of proof is shifted to the alleged infringer, this is a powerful new tool in the armoury of trade mark owners and will help to tackle the transit of counterfeit goods throughout the EU. Packaging infringement
8. In addition, EUTM owners will now have the right to prohibit the use and circulation of packaging, labels, tags, security or authenticity features or devices bearing a brand owner’s mark even before such packaging etc is put on or attached to the relevant goods. Again, this increases protection against counterfeit goods by making it easier to stop their production. Comparative Advertising
9. Use of a trade mark in comparative advertising which is contrary to the Comparative Advertising Directive is now expressly stated to constitute infringement. This will make it easier for owners of EUTMs to bring proceedings directly against advertisers. In addition, if the trade mark owner is successful the court can award damages as well as an injunction preventing the advertising. No own name defence for corporates
10. European trade mark law has long included a defence for use of one’s own name (the so-called “own name” defence) in respect of any claim of infringement. There has been significant case law on this issue but the new Regulation now clarifies that this defence does not apply to companies. Only “natural persons” will be able to use this defence in the future.

A New Trade Mark Directive too

All of the above changes relate to the Regulation – EUTMs/CTMs. It should be noted that in addition to the above, in December, the European Parliament also approved the new Trade Marks Directive (Directive 2015/2436). This Directive, which seeks to harmonise EU trade mark law, will make similar changes to Member States’ domestic trade mark legislation. The Directive came into force on 13 January 2016. However, Member States have three years to implement most of those changes. The extent of change required to national law varies considerably between Member States. The UK is required to make a number of changes to national practice and procedure, but considerably less than many other Member States. Do contact the UK team or another member of the CMS team across Europe for a summary of changes in any CMS jurisdiction.