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Trade Marks Newsletter

No. 68

May 2013

May 2013

Article 5: Trade Marks and the EU Is it Time for Change? The European Commission Certainly Thinks so

Editorial

Jeremy Pennant

This edition of our newsletter marks one of the most important developments at D Young & Co with the opening this month of our first overseas office, in Dubai. The planning has been extensive; however we are delighted to be starting up in one of the most exciting parts of the world with IP becoming increasingly important both for businesses locally and also our international clients operating in the region.

The office will initially be led by Mark Bone-Knell and Kate Symons together with our recent recruits Mhammad Malaeb and Samia El Zarif. We intend to add other fee earners over the course of the next couple of months.

Mark has been a resident of Dubai since 2003 and Kate has returned to Dubai, being one of the many places around the world where she has lived. Between them, Mhammad and Samia have more than ten years’ experience of handling trade mark matters locally.

To start with we are offering filing and prosecution services not only before the Trade Mark Office in the UAE but also throughout the region. Litigation and other enforcement services can be undertaken in partnership with local firms with whom we are developing close working relationships. In time it is planned that our offering will expand to include this offering, hopefully during the course of the next year.

The opening of our office in Dubai is in response to client demand and we are anticipating that the usual level of service offered across the firm will be replicated locally, allowing the team to grow reasonably quickly.

Having just returned from another trip to Dubai I am excited by the prospects for this new venture and the firm’s full commitment with patent services being offered shortly.

 

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Article 1: High Court Retains Composure for Composite Mark Assessment - Aveda Corporation v Dabur India Ltd

Matthew Dick

The English High Court has extended the protection potentially available to brands owners to include instances where marks similar to their own are used as part of a more complex composite sign.

By its decision in Medion v Thomson (Case No. C-120/04), the CJEU had previously acknowledged that an earlier identical mark used by a third party in a composite mark could result in a likelihood of confusion if that earlier mark had an independent distinctive role (without necessarily constituting the dominant element). In Aveda Corporation v Dabur India Ltd [2013] EWHC 589, the English Court has confirmed that such confusion may arise even when a mark merely similar to an earlier trade mark is used as part of a composite sign.

The Applicant had applied for the mark DABUR UVEDA for goods in Classes 3 and 5. The Opponent raised objection against both classes based on its earlier registrations for the word AVEDA. The Hearing Officer dismissed the Opposition on the basis that the UVEDA element was not the dominant feature of the mark applied for. The Opponent appealed to the High Court.

Both the Hearing Officer and the Appeal Judge (Arnold J) considered the similarity of certain goods and their meaning (of ever-increasing importance following the decisions in Stichting BDO v BDO Unibank Inc [2013] EWHC 418 and IP TRANSLATOR (Case No. 307/10)), but the most pivotal aspect of the appeal was to what extent the marks could be held to be confusingly similar.

Ultimately Arnold J held that the Hearing Officer had not correctly applied the CJEU’s guidance in Medion v Thomson. He had focused on the ‘dominant element’ test of earlier cases (e.g. Matratzen Concord GmbH v OHIM (Case No. C-3/03)), and not taken due account of the ‘independent distinctive role’ guidance given in the later case.

In Medion v Thomson, the CJEU had expressly stated that the test of confusion should not be subject to a requirement that the overall impression produced by a composite sign be dominated by the part of it represented by the earlier mark. The fact that the earlier mark retained an independent distinctive role could be sufficient.

As regards extending that concept to include similar marks, Arnold J considered that although not expressly acknowledged by the CJEU in Medion v Thomson, the underlying logic was equally applicable. He held that the Hearing Officer had failed to ask whether the average consumer would perceive the UVEDA verbal element to have any significance independently of the application as a whole (DABUR UVEDA), and whether that could lead to confusion. In Arnold J’s opinion, both eventualities were quite likely.

Although the case confirms that it is possible to extend the approach used when comparing composite signs with earlier marks that are incorporated within them to include marks that are merely similar, the specific facts of this case should be noted: the common elements to be compared were AVEDA and UVEDA, highly similar word marks differing only in a single vowel (which some consumers are likely to pronounce identically). Indeed, Arnold J noted that the Hearing Officer had at one point in his decision mistakenly written AVEDA instead of UVEDA; and the UKIPO’s database had incorrectly recorded the case as relating to the mark DABUR AVEDA.

It should also be remembered that although the test for assessing similarity of marks is identical for the purposes of Opposition/Invalidation proceedings and infringement actions, it is always easier to assess similarity in the former: the owner of the mark being attacked has gone on record and essentially acknowledged what its mark is. In infringement cases it may be more difficult to get agreement between the parties as to what mark is actually being used, particularly when considering a complex, composite mark. If the present case were being assessed in terms of infringement, and if no application had been filed, the Applicant may have contended that the ‘mark’ being used was merely DABUR, its main house brand.

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Article 2: Trademark Clearinghouse Protection for Trade Mark Holders

Verity Ellis & Scott Gardiner

On 26 March 2013, the Internet Corporation for Assigned Names and Numbers (ICANN) launched the Trademark Clearinghouse (TMCH). It is envisaged that the Trademark Clearinghouse will provide a database for individuals and businesses to register their brands, ahead of the release of around 2,000 generic top-level domains (‘gTLDs’), eg, ‘.news’, later this year.

The TMCH will primarily serve two functions:

  1. The ‘Sunrise’ registration service, which allows members of the Trademark Clearinghouse to register a domain name that corresponds to their registered mark at least 30 days before such top-level domains (TLDs) become available to the public.
  2. Trademark Clearinghouse participants acquire access to a ‘Trademark Claims’ service, which notifies the trade mark holder if a third party applies for a domain that matches their mark.

Fees for joining the TMCH range from $95 to $150 per year per trade mark, although there will be discounts depending on the number of trade marks recorded and the duration of such registrations.

Whilst the benefits of registering with the TMCH have been extolled by many (unsurprisingly not least by ICANN themselves), the programme is not to be viewed as a panacea to the challenges which brand owners face online.

As the TMCH programme primarily serves as a central database for what ICANN has termed ‘verified rights information’ (the operators of the TMCH checking and confirming the validity of all trade mark data submitted to it) and, secondarily, serving as a mechanism for notifying brand owners of potentially infringing registrations (via its ‘Trademark Claims’ service), brand owners must continue to adopt their own practices and procedures for facilitating any enforcement action which may be deemed necessary. It is a shame that ICANN has not provided for a registration ‘blocking service’, particularly in relation to those domain name applications which actually infringe the rights of brand owners who have registered trade mark data with the TMCH (although admittedly such a system would also be open to criticism as it would prevent third parties who also have rights in a particular name from registering that name with one of the new gTLDs).

Further, when considering the value of the programme, rightsholders may be right to be critical of the cost of registering their marks (which may be many) with the TMCH and, in view of the absence of a registration ‘blocking service’, the subsequent cost of any required enforcement action. However, we must stress that enforcement action need not be expensive and, when incidents of infringement are dealt with swiftly and proportionately, can prove invaluable in protecting a brand online as well as from the consequences which may follow ‘offline’. As always, we would encourage brand owners to speak to one of our many experienced attorneys or solicitors should they become aware of any infringing activity of concern online.

Other anxieties felt by rightsholders include the TMCH’s ‘identical match’ criteria. This requires that during any Sunrise period operated by one of the new gTLDs, rightsholders may only submit an application for a Sunrise registration which is an ‘identical match’ to a mark of theirs which is registered with the TMCH. Similarly, in relation to the ‘Trademark Claims’ service, rightsholders will only be notified of a potentially infringing domain name registration where that registration is an identical match to one of their TMCH marks. Clearly, there are shortfalls to the current programme but we consider that with the right advice (and in conjunction with other pre-emptive steps and practices), the TMCH can add real value to brand owners and their ability to protect their brands upon the expansion of the domain name system.

The first of the new gTLDs could go live as early as July 2013 and it is foreseen that many rightsholders will register with the TMCH prior to such a date, in order to ensure that they are able to secure their own domain name registrations in desirable new gTLDs as well as prevent the considerably less desirable registration of infringing domain names.

Useful links

TMCH FAQ provided by ICANN

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Article 3: English High Court Allows ‘Use of Own Name’ Defence - Stichting BDO & Others v BDO Unibank Inc & Others

Tamsin Holman

The Claimants are part of a network of accountancy and professional services firms who trade under the name ‘BDO’. The First Claimant is the proprietor of Community Trade Mark No. 2 419 778 for the letter combination BDO, registered in respect of a variety of goods and services in classes 9, 16, 35, 36, 41 and 42, which it licenses to other members of the Claimants’ group. The First Defendant (‘Unibank’) is the leading bank in the Philippines which, although it does not trade directly in the UK, has commercial relationships with a number of third party remittance providers who do, including the Second to Fifth Defendants. Such services, which are provided in the UK under the name ‘BDO Remit’, enable workers from the Philippines to transfer a proportion of their UK earnings to their home country. There was no dispute that Unibank would be jointly liable for any infringements committed by the other Defendants. Unibank itself uses the name ‘BDO’, and had done so in a number of advertisements for investment banking and wealth management services in various publications which circulate in the European Union.

The evidence was that the First Defendant had used the name ‘Banco De Oro’ since the late 1970’s, and the acronym ‘BDO’ since the mid-1990’s. In turn, some members of the Claimants’ network had used the name ‘Binder Dijker Otte & Co’ since the early 1970’s and, in 1988, the member firms all adopted the acronym ‘BDO’ as part of their names. By 2010, the Claimants’ group had adopted consistent global branding, with all member firms in 110 countries having changed their name to just ‘BDO’. The English proceedings were part of an international dispute between the Claimants and Unibank in relation to the ‘BDO’ name.

There were two distinct limbs to the Claimants’ infringement case:

1. The use by the Second to Fifth Defendants of the sign ‘BDO Remit’ in relation to remittance services in the UK.

2. The use by Unibank of the sign ‘BDO’ in its advertisements in publications circulated in the European Union.

The Defendants denied infringement and counterclaimed for a declaration that the CTM was partially invalid, alternatively should be partially revoked. These counterclaims were dropped prior to judgment.

First Limb

The claims in relation to the use of the sign ‘BDO Remit’ were based on Article 9(1)(b) and 9(1)(c) of the Community Trade Mark Regulation (CTMR).

In assessing the claim under Article 9(1)(b), the Court conducted a comparison of the CTM with the sign ‘BDO Remit’, and between the relevant services covered by the CTM specification and the remittance services being supplied by the Defendants. The Court held that there was a high degree of similarity between ‘BDO’ and ‘BDO Remit’, but that there was a low degree of similarity between the Defendants’ remittance services and the relevant registered services. Taking all of the relevant factors into account, the Court concluded that there was no likelihood of confusion on the part of the average consumer and, accordingly, the claim for infringement under Article 9(1)(b) failed.

The Article 9(1)(c) claim was based on ‘dilution’, in respect of which the Court followed the guidance of the CJEU in Intel Corp Inc v CPM UK Ltd. The Defendants accepted that the ‘BDO’ trade mark had acquired an enhanced distinctive character through use (as at the relevant dates) in relation to accountancy, audit and tax services, but not otherwise. The Court held that the evidence did not establish that the mark had a reputation in relation to any other services in the relevant period and, even if it did, that this would not have affected the outcome. Although the Court was satisfied that use of the sign ‘BDO Remit’ would give rise to a link in the mind of the average consumer, and that the uniqueness of the mark in the financial services sector could be undermined, it did not follow that the distinctive character of the trade mark had been reduced. In particular, the Court noted that despite the Defendants having used ‘BDO Remit’ since 2004, there was no evidence that such use had weakened the ability of the trade mark to identify the services in relation to which it is used as coming from the Claimants. Accordingly, the ‘dilution’ claim under Article 9(1)(c) CTMR did not succeed.

Second Limb

The claim against Unibank, in relation to some 20 different advertisements, was based on Article 9(1)(a) CTMR - a so-called ‘double identity’ claim. Since the First Defendant did not itself provide its services in the EU, the first question for the Court was whether the use of the sign ‘BDO’ in the advertisements amounted to use of the sign in the EU at all. Applying the principles of L’Oréal SA v eBay International AG (amongst other CJEU decisions), from which the key issue was whether or not the advertisements were targeted at consumers in the EU, the Court held that for some of the advertisements, but not all, there was use of the sign in the EU. Considering each advertisement in turn, the Court found that 3 out of the 20 were prima facie infringements within Article 9(1)(a) CTMR, subject to the ‘use of own name’ defence raised by Unibank pursuant to Article 12(a) CTMR.

In the 2010 decision of the English Court of Appeal in Hotel Cipriani srl v Cipriani (Grosvenor Street) Ltd, it was held that the ‘use of own name’ defence was potentially available in respect of a trading name, as well as a corporate name, of a company. To fall within Article 12(a) CTMR, such use must be in accordance with honest practices. In assessing whether or not Unibank’s use met this requirement, the Court considered the list of relevant factors set out in the 2011 High Court decision in Samuel Smith Old Brewery v Philip Lee (t/a ‘Cropton Brewery’), including: whether they knew of the existence of the trade mark, whether they took legal advice in relation to their use of the sign, whether they appreciated that the trade mark owner would likely object, whether there was a likelihood of confusion, and so on. Taking all the circumstances of the case into account, including the fact that Unibank had used the name ‘BDO’ for many years, the Court concluded that it did have a justification for using the sign ‘BDO’ and, accordingly, the defence under Article 12(a) succeeded.

 

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Article 4: A&E Television Networks LLC v Discovery Communications Europe Limited

Jennifer Heath

This case involves a trade mark and passing off dispute between rival television documentary channels and highlights the difficulty of enforcing what may potentially be viewed as descriptive words. Of particular note are the Court’s comments on the probative value of witness evidence gathered from questionnaires.

The claimants, A&E Television Networks, a Delaware corporation and its British subsidiary (AETN), operate cable and satellite television channels under the name HISTORY (previously THE HISTORY CHANNEL) and MILITARY HISTORY. AETN is the registered proprietor of the word mark THE HISTORY CHANNEL and the word and device mark (figure 1-below), registered as Community trade marks in Classes 9, 16, 38 and 41, with THE HISTORY CHANNEL also registered as a UK trade mark in Classes 38 and 41. The Defendant, Discovery Communications Europe Ltd (Discovery), operates the most watched documentary channel, DISCOVERY (or THE DISCOVERY CHANNEL). Discovery’s decision in 2010 to change the name of its channel DISCOVERY KNOWLEDGE to DISCOVERY HISTORY provoked AETN to issue proceedings, claiming:

  1. there was passing off in respect of HISTORY, THE HISTORY CHANNEL and MILITARY HISTORY; and
  2. Discovery’s channel, its logo (figure 2-below) and its abbreviation DISC HISTORY, featured on the Sky EPG (electronic programme guide), infringed its trade marks. Discovery counterclaimed for invalidity of AETN’s trade marks.

In the decision of Justice Peter Smith in the Chancery Division on 1 February, the Court held that use of DISCOVERY HISTORY would not cause deception or a likelihood of confusion amongst members of the public, and that AETN’s claims for infringement and passing off therefore failed by virtue of the provision in Section 11 Trade Marks Act and Article 12 of the Regulation. The Court deemed HISTORY as indicative of the kind and characteristic of the goods or services provided, namely programmes on history, and reasoned that the addition of HISTORY to DISCOVERY merely identified the channel with Discovery, who itself had substantial goodwill. Particular account was also taken of the fact that AETN’s viewing figures had increased despite the presence of DISCOVERY HISTORY, and that THE HISTORY CHANNEL (later, HISTORY) had co-existed with the BBC Channel UKTV HISTORY (later, UK HISTORY) for a period of seven years. The Court also remarked on the impact of Marks & Spencer v Interflora, which was inapplicable on the facts, but would have excluded witness evidence deemed by the Court as having no probative value. The court however refused the defendant’s counterclaim.

Under the Marks & Spencer guidelines, the Court must be satisfied that the benefits of conducting a questionnaire outweigh its costs and that the evidence is reliable. Prior to the Marks & Spencer case, AETN had been granted permission to conduct witnessgathering evidence to ascertain whether members of the public would be likely to be deceived by Discovery’s new name. In light of Marks & Spencer and Neutrogena, Peter Smith J considered evidence to be of probative value when it assists the judge’s view.

Since AETN had failed to establish a likelihood of confusion or deception, an analysis of the probative value of the questionnaire evidence was unnecessary under the Marks & Spencer guidelines. However, AETN’s evidence was considered on the basis that the litigation was too far advanced to retrospectively disregard it.

The Court considered that this case “demonstrates all the problems of survey and witness gathering evidence covered by the Court of Appeal in the Marks & Spencer case” and found that inadequacies identified in Marks & Spencer, particularly the observation that privileges should be waived for witness statements in respect of trade mark infringement, as equally applicable to the test for establishing passing off.

Peter Smith J particularly criticised the way in which the secondary evidence had been obtained from the public. From 1,004 full questionnaire forms, 167 respondents were contacted, 116 were spoken to and 14 witness statements were obtained.

Several witnesses were unaware their statement was being used as evidence until notified at the end of the questioning, and some of those who afterwards objected to use of their evidence had their comments used as hearsay evidence. Moreover upon cross-examination, the final statements did not always reflect what had been said on the phone.

Given the inability of the Court to always be able to explore questionnaire evidence with live witnesses, this case highlights the importance placed on the duty of solicitors to not manufacture witness statements and hearsay statements to achieve the best result for their client. Further, if a person is unaware their statement is to be used in evidence, or objects to the use of their statement as evidence, it is inappropriate for his/her statement to be served as evidence in Court.

Further information

Figure 1: AETN device mark

 

Figure 2: Discovery channel logo

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Article 5: Trade Marks and the EU Is it Time for Change? The European Commission Certainly Thinks so

Gemma Kirkland

Since the introduction of the Community Trade Mark (CTM) nearly 2 decades ago, the law and practice governing CTMs and the harmonisation of national laws has been fairly static.  Following the recent study undertaken by the Max Planck Institute, this may all be about to change.  In its press release of 27 March 2013, the European Commission set out its proposals for reform of the CTM system, arguing that change is essential because the current system is outdated, the legislation (eg, the Trade Mark Directive (Directive) and the Community Trade Mark Regulation (CTMR)) is inconsistent, harmonisation between member-states has not been fully achieved and because the business environment within the EU has substantially changed since 1996 and the current system no longer reflects the business environment which it seeks to protect.

The Commissions’ proposals suggest a revision of both the Directive and the CTMR as well as a revision of the Commission Regulation on fees payable to OHIM.  The Commission hopes to enhance and streamline procedures, facilitate cooperation between member-states, assist the fight against counterfeit goods and modernise the fee structure to better meet the requirements of those customers using the CTM system.

Whilst the proposals remain in draft form for now, the main changes proposed are as follows: 

Procedural changes for trade mark applicants and owners

 

Current position

Proposed change

Filing requirements:

CTM Applications can be filed direct at OHIM or via the trade mark office of any EU member-state.

All CTM applications to be filed via OHIM only.

 

3 classes for the price of a single CTM application.

Only 1 class to be included in the basic CTM filing fee.

 

CTM Filing fees can be paid up to 1 month after the filing of the application.

All CTM filing fees will be due on the date the CTM application is filed.

Specifications:

Class headings may be used to identify goods and services within CTM applications.  Where the Class heading is used, applicants can indicate whether their intention is to obtain protection for all goods and services falling within the alphabetical list of the Nice Classification for that Class.

Class headings may be used to identify goods or services for CTMs but they will be given their precise, literal meanings.  TM holders of registrations which predate IP TRANSLATOR (22 June 2012) and which use the Class headings may declare whether they intended to seek protection for all the goods/services in the alphabetical list of the Nice Classification for the Classes in question.  If no declaration is received, the CTM in question will only be deemed to cover the literal and precise meaning of the Class heading.

CTM searches

OHIM automatically conduct searches of the CTM Register for possible conflicting registrations to any newly filed CTM and report the results to the CTM applicant and earlier rights holders.

OHIM will no longer search for potentially similar CTM applications/registrations.  The burden will lie with rights holders to monitor the CTM Register for possible conflicting rights.

Oppositions:

Proof of use requests for CTMs more than 5 years old require the holder of the earlier right to prove use from a period of 5 years preceding the publication of the CTM application being opposed.

The period for filing proof of use will be the 5 year period preceding the filing (or priority date) of the CTM application being opposed.

Counterclaims:

Counterclaims challenging the validity of a CTM can be determined in a CTM court with or without OHIM’s knowledge.

OHIM must be informed of all counterclaims for validity of a CTM and if OHIM are already investigating the validity of a CTM, the CTM Court must stay its proceedings until a decision has been rendered by OHIM as to the validity of that CTM.

 Changes to existing legislation

 

Current provision 

Proposed change

Directive: 3

 A CTM must be graphically represented

CTMR: 4

The words “graphically represented” will be removed and the Article reworded to “a trade mark may consist of any signs, in particular words….devices, logos, letters, numerals, colours…, the shape of goods or their packaging, or sounds” with a caveat that the sign must distinguish the goods of one undertaking from those of another and be represented in a manner which conveys the precise scope of protection afforded by the sign.

Directive: 4(2)

Absolute grounds objections will apply to trade marks even if the grounds of

non-registrability exist in only part of the Community.

CTMR: 7(2)

 Any trade mark in a foreign language will not be registrable, if when translated into an official language of the member-state in question, 

it would not be registrable under Article 4(1)/ 7(1).

Directive: 5(3)

 No current provision

CTMR: 8(3)

 A new subsection is to be introduced which provides for a bad faith claim in an opposition where there is liable to be confusion with an earlier mark which is not protected in the EU.

Directive: 11

 The provisions of Article 11/9(1) relating to rights conferred by a trade mark include prohibiting use by:

(a) affixing the sign to the goods or to the packaging thereof;

(b) offering the goods, putting them on the market or stocking

them for these purposes under that sign, or offering or

supplying services thereunder;

(c) importing or exporting the goods under that sign;

(d) using the sign on business papers and in advertising

CTMR: 9(a)

 Where there is a risk of infringement of a trade mark within the EU by use of a trade mark for goods or services, the TM holder shall have the right to prohibit:

  1. a) Affixing in the course. of trade a sign identical with or similar to the trade mark on get-up, packaging or other means on which the mark may be affixed;
  2. b) Offering or placing on the market, or stocking for those purposes, or importing or exporting get-up, packaging or other means on which the mark is affixed.

Directive: 10

 No current provision

CTMR: 9(4)

 Goods may not be imported into the EU even if only the consignor is acting for commercial purposes.

Directive: 10

 No current provision

CTMR: 9(5)

 Where goods are held under suspensive procedures, the holder of such goods will need to provide evidence of the final destination of the goods where there are reasons to believe the goods will be placed on the EU market.

Directive: 14

 A trade mark shall not entitle the proprietor to

prohibit a third party from using in the course of trade:

(a) his own name or address

CTMR: 12(1)(a)

 The defence of relying on your own name or address will not apply to trading names but personal names only.

 

Some of the proposed changes outlined above will almost certainly be met with some resistance.  For example, in relation to the proposed changes in relation to how counterclaims for validity are to be handled,  it may suit some defendants to have the CTM Court handling the infringement case to also decide the counterclaim for validity rather than OHIM, especially if they are keen for a quick resolution on the matter.  Having OHIM decide the claim may delay any decision in the infringement case.  

In addition, the requirement that foreign language trade marks may not be registrable in the EU even if the word itself is not known by consumers in the EU is likely to be unattractive to some applicants.  This also reverses the decision in the MATRATZEN case.

The removal of the 'own name' defence for trading names will be unhelpful to anyone other than individuals or companies consisting of the personal names of their owners.  This defence has recently been discussed in the cases of Stichting BDO v BDO Unibank Inc. (2013 EWHC 418 4 March 2013).

Conversely, the proposed addition or provisions relating to bad faith claims in CTM oppositions will no doubt be welcomed by most practitioners and trade mark holders who up until now have had to wait until the CTM that is believed to have been filed in bad faith has been registered before asserting a challenge to the mark. Given that on average, CTMs take around 9-12 months to be registered, or even longer if there are objections, it will be beneficial for objections on bad faith (albeit only for marks that are not registered in the EU) to be raised before the registration of the CTM in question takes place.

In other proposed changes:

  • CTMs will be renamed as European Trade Marks (ETMs);
  • CTM Courts will become known as European Trade Mark Courts;
  • OHIM will become the (slightly less catchy) European Union Trade Marks and Designs Agency (EUTMDA);
  • For National trade marks, the Directive will remove the examination of trade marks on relative grounds;
  • In invalidity actions to national trade marks based on lack of distinctive character, trade mark holders will be able to submit evidence of use from after the date of registration rather than before the date of filing;
  • National opposition procedures will require a mandatory 2 month cooling-off period before the adversarial stages of the opposition commence;
  • Revocation and invalidity actions should all be heard before the National trade mark offices rather than before the Courts;
  • Introduction of 2 relative grounds other than registered/pending trade mark, e.g. non-registered trade mark rights and rights to a name, personal portrayal, copyright and industrial right.

The proposed changes will not be effected until they are incorporated into the Directive. This is hoped to take place by Spring 2014, with member-states transposing the new rules into national law within 2 years.  Most provisions of the CTMR will be amended when the new Regulation comes into force.

Useful links

The European Commission Representation in the United Kingdom

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Related Resources

The Max Planck Institute Study - Overall Functioning of the European Trade Mark System

Related People

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Partner, Trade Mark Attorney
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