New trade mark laws have been introduced, affecting EU trade mark owners.  John Buckby, IP specialist at Spearing Waite solicitors, explains the changes.

On 23 March 2016, a new EU Trade Mark Regulation introduced important changes that trade mark owners should be aware of. These include:

  • a new name for the trade mark office
  • a new name for the Community trade mark
  • a revised fee structure for filing and renewing EU marks
  • changes to the classification of trade marks, and a limited opportunity for owners to correct earlier marks
  • The Regulation comes just after a new EU Trade Mark Directive entered into force on 13 January 2016. Member states have until 14 January 2019 to transpose the provisions of the Directive into their national laws. But the new Regulation is effective immediately, as of 23 March 2016.

Detailed below are the key changes contained in the new EU Trade Mark Regulation. There are a few points to get through, so you might want to grab a coffee and settle down for five minutes to read them. Alternatively, feel free to contact me at Spearing Waite and I can let you know what the changes mean for your trade mark portfolio.

Goodbye OHIM, hello EUIPO

As of 23 March 2016, the ‘Office For Harmonisation in the Internal Market (Trade marks and designs)’ has been renamed ‘The European Union Intellectual Property Office’ (EUIPO), and it has a neat new logo to boot:

Some businesses may wish to inform their finance departments of OHIM’s new name, given that authorities have for some time warned the public to ignore invoices and correspondence from bogus overseas entities purporting to be ‘IP offices’.

In the wake of the name change, some may mistake the ‘European Union Intellectual Property Office’ as just another bogus office.  If you use lawyers to file your applications, all genuine correspondence is likely to be sent directly to them.

Your lawyers will be able to tell what’s genuine, and what isn’t.

Introducing the European Union Trade Mark

Since 1996, it has been possible to apply for a trade mark covering the whole of the EU in a single application.  In the last 20 years, OHIM has processed more than 1.3 million of these pan-EU marks, known as the ‘Community trade mark’ (CTM for short).

As of 23 March 2016, the Community trade mark has been renamed the ‘European Union Trade Mark’ (EUTM).

There is no need for trade mark owners to take any action in response to this change – all marks will be renamed automatically.

Revised application fees

Trade marks give exclusive rights in relation to specific goods and services, which must be listed in the mark.  Goods and services are categorised into 45 different ‘classes’ for administrative purposes.   The cost of a trade mark application depends on how many classes it covers.

Until 23 March 2016, the application fee payable to OHIM was the same (€900) irrespective of whether a trade mark covered 1, 2 or 3 classes.  This encouraged some applicants to file additional classes unnecessarily – there was no extra cost in doing so, and it broadened the rights the applicant might acquire.

Under the new arrangements introduced by the Regulation, the fees payable to the EUIPO for EU Trade Mark applications vary depending on the number of classes included:

  • 1 class – €850
  • 2 classes – €900
  • 3 classes – €1050

Each additional class beyond this will cost €150, as before.

The changes provide a small saving to applicants filing a mark in just one class, but an increase for those filing in 3 classes. This should encourage applicants to think twice, before filing marks in classes that are not directly significant to their business.

Reduction in renewal fees

The renewal fee for the Community trade mark was €1350 (whether it covered 1, 2 or 3 classes). From 23 March, the new arrangements introduce lower fees for renewing an EU Trade Mark:

  • 1 class – €850
  • 2 classes – €900
  • 3 classes – €1050

Each additional class will cost €150 (the cost was €400 previously). So, in all circumstances, renewal fees for EU marks have fallen.

The new fee arrangements apply to all EU trade marks that expire on or after 23 March 2016, and those who paid renewal fees early on the old rates can claim a refund.

Another change is that renewals will be due exactly 10 years after the filing date, and not at the end of the month in which renewal falls due, as was previously the case.

Class headings have ‘ordinary meaning’

Before 2012, it was normal practice for applicants to use ‘class headings’ to describe the scope of their applications. It was generally accepted by practitioners and users as a simple way to secure all the goods within a particular class, without having to painstakingly list all those goods.

Because of this, many trade marks on the register state the class heading (e.g. “clothing, footwear and headgear”, “musical instruments” or “printed matter”) instead of listing specific goods belonging within them.

However, in June 2012, the court decided this approach was wrong (in the ‘IP Translator’ case).  The court ruled that applicants must identify goods and services with sufficient clarity and precision to enable relevant parties to determine the exact nature of the protection sought, on the basis of the description alone.

This was quite a big change. It meant, for example, that an applicant wanting to include music stands in their trade mark could no longer achieve this aim by using the class heading ‘musical instruments’.  The heading would only cover goods that are, literally, ‘musical instruments’.  For example, a music stand would previously have been presumed to fall within the ‘musical instrument’ class heading. A music stand is not a musical instrument, so it will now have to be listed as a separate term.

The new Regulation codifies this approach, which ensures that all trade marks will be interpreted by reference to practice approved by the court in June 2012.   Owners of marks filed prior to to 22 June 2012 will have a temporary opportunity to amend their registrations, so as not to lose the protection they thought they were getting.

There is ‘transitional period’ of 6 months, until 23 September 2016, during which owners can notify the EUIPO of a wish to seek protection wider than would be afforded by a literal interpretation of the wording in their marks.

Trade mark owners should check their marks, and consult with IP lawyers, to see if they should take advantage of the opportunity.  If they don’t, the door closes on 23 September 2016 and goods / services in a trade mark which do not fall within the literal meaning of the wording of a class heading will not be covered by the mark.

Requirement for graphical representation abolished

Under the previous arrangements, Community trade marks could only be registered for signs that could be “represented graphically”. This made it rather difficult to register non-traditional signs such as moving image or ‘sound’ trade marks.

The new Regulation has abolished this requirement, and provides instead that signs must be shown in a way that allows the public to determine the precise subject matter of the trade mark.

The change provides greater flexibility for those wishing to apply for more unusual marks, and sounds and moving images can be made digitally available on modern online trade mark databases, so their scope may be determined with ease and precision without the need for graphical representation.

This change effectively means that trade marks no longer need to be static and opens the door to people using more innovative types of signs to set their business apart.

Changes to defences to trade mark infringement

The EU Trade Mark Regulation has changed the defences that may be relied on when faced with an allegation of trade mark infringement.

It is now a defence if you are using a mark in a non-distinctive way, i.e. in a way that would not be perceived by consumers as referring to the trade origin of the goods.  In addition, the Regulation introduces a new defence of using a trade mark for the purpose of ‘artistic expression’ (as long as it is ‘in accordance with honest practices’).

One of the previous defences has been removed – a company can no longer rely on use of its own company name as a defence to infringement.  The ‘own name’ defence is now only available to ‘natural persons’ (i.e. individuals) using their own names, and it must be ‘in accordance with honest practices’.

Checklist for all EU trade mark owners

The main ‘call to action’ arising from the new Regulation is that trade mark owners should examine any marks filed before June 2012, to check if there are any ‘class heading’ issues which can be addressed before the September 2016 deadline. In addition:

  1. Don’t be tempted to register unnecessary classes for your trade marks.
  2. Check to see if you can reclaim part of the renewal fees on any trade marks that were renewed early.
  3. Be aware of the new name – EUIPO – and ensure your team is familiar with it.
  4. Consider filing non-traditional trade marks – sounds, moving images etc – if they are distinctive of your business.

The changes introduced by the new EU Trade Mark Regulation help to modernise the system, introduce a more logical fee structure, and provide greater clarity for users. The new names ‘EU Intellectual Property Office’ and ‘EU Trade Mark’ are sensible and clear, helping the office to do exactly what it says on the tin.

Spearing Waite’s intellectual property team provides expert advice on acquiring, commercialising, and enforcing trade marks in the UK, EU and worldwide. If you have any questions about the new Regulation (or about trade marks in general) get in touch: ip@spearingwaite.com.

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