Articles | Trade mark reforms – what you need to know

Terri Alam summarises the key changes introduced by recent trade mark reforms.

Contact

Address
1 London Street,
Reading,
RG1 4PN

Telephone
+44 (0)118 951 6200

Email
enquiry@fsp-law.com

Terri Alam

Terri Alam

Since 1996, the Office for Harmonisation in the Internal Market (OHIM) has processed more than 1.3 million Community trade mark applications in 23 EU languages, from nearly every country and region in the world.

Twenty years on a new regulation and a new directive are coming into force to reform the EU-wide trade mark system and the national trade mark systems of individual member states

What do you need to know and how will the changes impact on your business?

Trade Mark Regulation – comes into force on 23 March 2016

What’s in a name?

OHIM will change its name to the European Union Intellectual Property Office (EU IPO) and Community trade marks (CTM) will now be known as European Union trade marks (EUTM).

Fee reductions

The basic fee for a CTM under the old regime was €900 to file a trade mark application in up to 3 classes. From March it will cost €850 to file in 1 class and €1,050 to file in 3 classes.

The rationale behind this is to discourage parties from filing unnecessarily in multiple classes. It is believed that the old fee structure encouraged an attitude of “as I’m paying for 3 classes, I may as well as well file in all 3”.

The revised fees will also apply when renewing trade marks.

Classification

Some applicants used to file applications covering all goods or services included within a particular class of the Nice classification (the international system for describing goods/services for trade mark purposes). From March this will no longer be possible and instead more thought will be needed when preparing the trade mark specification - to ensure that the application is sufficiently clear and precise. If it is not, the trade mark protection will be limited to the goods or services covered by the literal meaning of the heading for that class (i.e. just a few words).

If you have a trade mark which was registered before 22 June 2012 you should review the specification as you may need to take advantage of the 6 month grace period (until 23 September 2016) during which specifications can be amended so that they are not bound by this rule.

Trade Mark Directive – not yet in force

The UK will need to enact national legislation before the directive comes into force but it is worth mentioning a few of the changes which are in the pipeline:

Definition of trade mark

The definition of a trade mark is to be expanded. Previously a trade mark had to be “capable of being represented graphically” - but in future it will be possible to register sounds and colours as trade marks.

However this won’t be possible where such a trade mark consists exclusively of a characteristic which results from the nature of the goods or is necessary to obtain a technical result or gives substantial value to the goods. For example a smell might not be registrable for a perfume.

Counterfeit Goods

The new rules will mean that even if counterfeit goods are not intended for consumers in the EU and are simply in transit through the EU, they will be treated as infringing and can be seized by customs.

Using packaging, tags, labels, etc bearing a third party mark could in future constitute infringement.

Company Names

The own-name defence will only be available for individuals, therefore a company cannot rely on the fact that it is using its own name as a defence to a claim of trade mark infringement.

Licensees’ Rights

Licensees will be able to sue for trade mark infringement of national marks subject to the trade mark owner’s consent. If the trade mark owner does not act, an exclusive licensee can do so.