New regulation on the Community Trademark
Since 2013, the reform of the trademark system in Europe was planned in order to make it simpler, less costly and more effective.
On December 24, 2015, the new Regulation (EU) 2015/2424 of the European Parliament and of the Council of December 16, 2015 amending Regulation (EC) No 207/2009 on the Community trademark, which is now named “European Union trade mark”, has been published in the Official Journal of the European Union.
What are the main changes of the new Regulation?
On the procedural issues:
- Establishing of the application fee per class (article 26(2))
The applicants will have the possibility of filing their marks in one or two classes only, compared to three in the current system, allowing then to reduce registration costs.
- Shortening of the calculation period for opposition (article 156§2)
For the Community part of the international trademarks, the opposition period of 3 months shall begin 1 month following the date of the publication (instead of 6 months following this date until now),
- Possibility for third parties to submit their observations without waiting for the publication of the mark (article 40§2)
They could be submitted any time before the end of the opposition period or before the final decision on the opposition is taken (where an opposition against the trade mark has been filed).
On the substantial right issues:
- Removal of the graphic representation obligation of the marks (article 4)
Any sign may consist of a mark, if it can be “represented on the Register in a manner which enables the competent authorities and the public to determine” the clear and precise subject matter of the protection afforded to its proprietor. That modification should permit filing of trademarks rejected until now, such as sound marks, which are added to the list of the signs capable to constitute a mark (that is not the case of smells).
- Inclusion of “traditional specialities guaranteed”, “traditional terms for wine” and “plant varieties” to the list of absolute grounds for refusal of the mark (article 7§1 k), l) and m)) that can disallow the registration of homonymous mark.
- Reinforcement of the protection of the “designations of origin” and “geographical indications” that become rights that can be invoked in an opposition to the registration of a mark (article 8§4 bis).
- Possibility to prevent third parties from using the mark as a trade or corporate name or part of a trade or corporate name (article 9§3 d))
- Possibility to prevent third parties from using the mark in comparative advertising in an illegal manner (article 9§3 f))
- Possibility to prevent third parties from bringing in European Union the goods coming from third countries, even if they are not intended for sale in European Union, unless the declarant or the holder proves that the proprietor of the mark is not entitled to prohibit the placing of the goods on the market in the country of final destination (article 9§4)
- Possibility to prevent third parties from affixing a sign identical with or similar to the European Union trade mark on packaging, labels, security or authenticity features or any other means, as well as offering them for sale (including exporting them), placing them on the market, stocking them for those purposes or importing them (article 9bis)
- Restriction of limitation of the effects of a mark (homonymous exception): a mark did not allow its proprietor to prevent third parties from using their name. Now, this limitation of the effects of the mark applies to third parties - natural persons only (article 12§1. a))
- Insertion concerning the use of the case Law RINTISH of the Court of Justice of the European Union (article 15§1 a)): Constitute use, the use of the mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.
- Obligation of clarity and precision in the list of the goods and services designated by the trademark application in order to enable the competent authorities and third parties to determine the exact scope of the protection sought (article 28§2).
These new provisions will enter into force 90 days after their publication in the EU Official Journal, i.e. 24 March 2016.
Contact : Cyrille MAZELINE