Modernizing EU trade mark law - A summary of reforms
Many readers will already be aware of the changes that are being made to the Community Trade Mark Regulation and Trade Mark Directive.
The European Commission decided that the Community trade mark system required modernization to make it more "effective, efficient and consistent as a whole and by adapting it to the Internet era".
We list the main changes below and shall be sending out a knowledge update with additional detail and recommendations in the near future.
- Changes of name for the office, for Community trade marks, for the Community trade mark regulation and for the Community trade mark court in each member state; in short "Community" is replaced with "European Union" or "EU".
- Removal of the requirement for graphic representability; a sign will be allowed to be represented in any available technology as long as it is possible to determine the clear and precise subject matter.
- Extension of absolute grounds of refusal to apply the exclusions for registration of shapes also to other "characteristics".
- Extension of absolute grounds of refusal to include designations of origin, geographical indications, protected traditional terms for wine and traditional specialities.
- Extension of rights so as to prohibit use of a sign as a trade or company name.
- Extension of rights so as to prohibit use of a sign in comparative advertising where that advertising is contrary to the misleading and comparative advertising directive.
- Extension of rights so as to prohibit third parties from bringing goods into the EU bearing an infringing sign even where those goods are not being released for circulation.
- Extension of rights so as to prohibit the affixing of an infringing sign to packaging, labels, and other means of identity.
- Requirement for specifications of goods and services to be set out with adequate clarity and precision to make it clear for what a sign has been protected. General terms will be interpreted literally.
- Cessation of the automatic search conducted of earlier EU marks as part of the application process.
- Revision to own name defence to refer only to a natural person.
- Changes to official fees; these include many reductions.
- Revision of the relevant five year period for proof of use of the earlier mark in opposition proceedings to be that preceding the date of filing or the date of priority of the EU trade mark application, not the date of publication.
- Introduction of EU certification marks.
- Revision to permitted representation to allow a legal practitioner qualified in one of the member states of the European Economic Area (EEA) to act, rather than of the EU.
- Establishment of a mediation centre to help parties settle.
- Revision of the timing of the opposition period for International trade marks designating the EU to run from one month following the date of publication instead of six months following that date.
Directive 2008/95/EC of 22 October 2008 to approximate the laws of the member states relating to trade marks' (TMD): http://dycip.com/tmd2008