Europe 04 Dec 2015

The EU’s new trademark reform

The EU’s member states have preliminary agreed on a number of changes concerning the European trademark system. The changes will reflect the actual use of trademarks on the market today. This is the first major change in the system that has taken place in the last 15 years. The reform will lead to improvements in regards to costs, availability and predictability. Most of the new rules are expected to enter into force during the first half in 2016.

Below is a summary selection of the planned changes:

Due to the reform, the EU’s trademark agency in Alicante, the Office for Harmonization in the Internal Market (OHIM), will change its name. The Agency will in the future be known as the European Union Intellectual Property Office (EUIPO). The Community Trade Marks (CTM) will also henceforth be known as the European Union Trade Marks (EUTM).

Trademark rights holders will be able to better protect their trademarks against infringement and piracy. A trademark owner will be able to prevent the transit through the European Union of goods bearing marks that are confusingly similar to said mark. When it comes to such transit issues the aim is to avoid that legitimate goods are confiscated, while allowing pirated goods can be seized. The reform should also allow right holders to take action against infringing parties offering, storing, importing or exporting packages bearing counterfeit marks.

There will no longer be required to provide a graphical representation of the mark when it comes to the application of non-traditional marks. A mark need only be represented in a sufficiently clear and precise manner to enable the competent authorities and the public to determine the extent of the trademark rights. This should facilitate the registration of marks such as hologram as well as taste- and scent marks.

Furthermore, the proposed rules state that the use of a company name or trade name which involves a risk of confusion with a registered trademark shall be deemed to constitute infringement. The use of a personal name or as a trademark will, however, still be allowed. At the same time, it will be mandatory to refuse registrations of trademarks that are confusingly similar to marks with a “well-known reputation”.

In regards to proceedings concerning revocation and declarations of invalidity against the trademark rights the reform means that EU Member States should be able to provide effective, prompt and inexpensive administrative procedures in these respects.

Descriptive marks shall not be refused registration if the mark, before the application was made, has acquired distinctiveness through use. Marks that are already registered shall also be protected against invalidity if the mark has acquired distinctiveness through use before the application for invalidity was filed.

The new rules require that the goods and services for which an EU trademark was registered are identified clearly and precisely. This means that one must specify the goods and services in the right trademark class via the so-called Nice-system. Trademarks registered prior to the 22nd of June 2012 shall be given the opportunity to submit declarations where the holder clarifies which goods and services the trade mark protection is to cover. This opportunity is available for a transitional period of six months. If no declaration is submitted, the protection is assumed to include only those goods and services as shown by the literal wording of the so-called “class heading”. Applications made after the 22nd of June 2012 have previously been made subject to a rule which entails that the applicant must specify the goods or services covered by the trademark.

The agreement between EU member states is preliminary but a formal signing is expected in the near future. The amendments in the Directives governing the implementation of national laws will come into force in March 2016. From that point in time, Sweden and other Member states have three years to implement the necessary changes into their national legislation.

If you have any queries regarding trademark protection, you are welcome to contact our consultants at +46 8 729 91 00.

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