European Union Reform: Key changes

On 24 December 2015, Regulation (EU) No. 2015/2424 of the European Parliament and the Council introducing important amendments to Regulation (EC) No. 207/2009 of the Council on the Community trade mark was published in the Official Journal of the European Union.
This new regulation, which is part of a legislative reform package aimed to review the overall functioning of the EU trade mark system, entered into force on 23 March 2016.

We have summarized herein the significant changes brought by this new regulation:

  1. The scope of the “IP Translator” decision has been extended

Indeed, the scope of this decision, which established the principle that goods or services must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and the economic operators to determine the scope of the protection conferred by the trade mark, has been extended by this new regulation. There is now the possibility for proprietors of EU trademarks applied for before 22 June 2012 to benefit of a six-month transitional period to declare that on the date of filing their intention had been to obtain protection in respect of specific goods or services (within those included in the alphabetical list of the Nice Classification in force at the time of filing), in addition to the ones covered by the literal meaning of the heading of the designated class. However, be careful, if this faculty has not been exercised in due time, the existing trademarks will certainly maintain full validity, however, their protection will be considered limited to the literal meaning of the class heading.

  • We hence believe that an audit of your clients’ EU Trademarks is needed given that there is an opportunity to be taken to ensure a more targeted and efficient protection of your clients’ trademarks, but there is also a real risk that goods and/or services of actual interest are not adequately protected.
  • When applicable, a declaration under Article 28(8) EUTMR can be filed with the EUIPO.

The European Union trademarks have to fulfill two cumulative conditions to be considered as being eligible to this amendment:

–         They must be filed before 22 June 2012 and registered before the entry into force of Regulation 2015/2424 i.e. 23 March 2016;

–         Their specification of goods/services must comprise full class headings.

How can we help you in that process?

  • The 1st step is to identify, among your clients’ EU trademarks, those which are eligible to this amendment declaration.

It is important to note that trademark specifications that contain the entire heading of a Nice Class but are followed by some additions or precisions will not be eligible for a modification.

We hence suggest to check the content of the specification of goods/services of each concerned trademark to compare it with the content of the class heading at the filing date. You could either provide us with the list of your EU Trademarks or at least the number of concerned marks so that we can give you the corresponding quotation.

  • The second step is to check among the eligible marks which are in use whether the current specification of goods/services is sufficient or whether other goods/services should be added.
  • The third step would consist in filing the amendment declaration with the EUIPO and follow-up the file with the Examiner who will appreciate the acceptable character of the requested amendment.

Please note that our fees for each of the described steps will depend on the number of concerned marks.

Finally, please note that the deadline to file this declaration with the EUIPO expires on September 22nd, 2016.

  1. Filing or renewal global fee system covering-up to 3 classes will be replaced by a “one-fee-per-class” system

The applicant will now pay for the exact number of designated Classes. If the amount of the official tax is indeed lower for the first class, we know that most applicants designate at least 2 classes in their filings, if not 3, in order to get the proper protection (which often requires to designate the services related to the designated goods).
Unfortunately, this regulation engenders an increase of the taxes related to the filings in 3 classes: 1050 € instead of 900 €.

We have hence decided to adapt our fees which remain the same so that the clients only have to bear the increase of the official tax.

  1. It will no longer be required to provide a graphic representation of sound, olfactory, taste and hologram marks.

This is particularly important regarding the registration of olfactory marks, the graphic representation of which is practically impossible. In fact, graphic representation requirement has been an important obstacle to the registration of these marks for years.

> Please, do not hesitate to contact our teams in case you have any questions regarding this matter.

  1. It will be soon possible to request a revocation of the mark for non-use before a national office, for example before INPI – French National Industrial Property Office (!)

This will consequently ease the procedure, which until now had to be initiated before the national courts, by making it more economic and less time consuming. It is thus expected that a lot more revocation actions will be filed in the future.

> From now on it is important to anticipate the use of your clients’ marks in the European Union in order to prevent such actions being initiated against your clients’ marks. However, given our experience in such proceedings, we are ready to assist you in case such matter arises.

  1. Once a mark with reputation ends up in a dictionary, it is a first sign that it has possibly become a generic term.

In such case, the owner of the mark has to request the editor of the dictionary to mention that the term at issue is in fact a “registered mark” because otherwise, there is a high risk of the mark becoming generic. The risk is even higher if the mark is used to designate unique products or if it constitutes the main segment of the particular market.

>Here again, our teams hold acute expertise before the publishing professionals in the social network area and are ready to assist you in this matter.

Overall, this reform of the EU trademark law modifies a number of substantial provisions and thus is an important step towards a new EU trademark registration framework.

Our teams remain at your full disposal in case you wish to analyze together the potential repercussions of this reform on your clients’ trademark portfolio and to identify any necessary measures in that regard.