The new Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation was published in the Official Journal of the European Union on 24th December 2015.
The Amending Regulation will thus enter into force on 23rd March 2016. From that day, the Office will be called the European Union Intellectual Property Office (EUIPO) and the Community trade mark will be called the European Union trade mark. The legal reform also includes the replacement of the existing Directive 2008/95/EC with the new EU Directive (EU) 2015/2436 of the European Parliament and of the Council of 16th December 2015 to approximate the laws of the Member States relating to trade marks.
The changes brought by the legal reform will be implemented at different times, but immediately coming on 23rd March are the above mentioned changes in the names of the Office and of Community trade marks as well as of the legal texts and, among other things, the adoption of the new fee scheme for applications, renewals and proceedings before the Office.
Article 28 (8) declarations
Owners of CTMs may want to pay particular attention to the implementation of Article 28(8) of the Amending Regulation (EUTMR), which provides a six-month window to make declarations regarding the scope of goods and services covered by marks applied for and registered before 22nd January 2012.
This window enables CTM owners who used class headings of the Nice Classification in trade mark applications to make declarations on their goods and services specifications if these are not clearly covered by the literal meaning of the indications of the class headings. This provision has been envisaged to comply with the CJEU IP Translator decision, which says that the specification must identify the goods and services with “sufficient clarity and precision”. In fact, the Office has changed its approach since the new Common Practice on Classification (adopted also by all EU national IP Offices and the Benelux Office) and already interprets that the goods or services protected by the trade mark are only those encompassed by the literal meaning of the class heading terms.
There is no fee for filing an Article 28(8) declaration but the deadline to do so is 24th September 2016. If no action is taken during the six-month window, then the scope of protection of the affected marks would remain limited to cover only the literal meaning of the terms expressed in the class headings.
However, it would remain possible, as an alternative to filing such a declaration, to make – at any time - a partial surrender according to Article 50 EUTMR, by narrowing the scope of the class headings, on the grounds of a more detailed list of goods or services.
The Office will soon publish a Presidential Communication to clarify who could file an Article 28(8) declaration, its scope and how such a declaration would have to be submitted.
At that moment, the MARQUES European Trade Mark Law and Practice Team will provide MARQUES members with a further update.
New absolute and relative grounds based on PDOs, PGIs, TTWs, TSGs and plant varieties
Brand owners will need to take into account that the Office will raise absolute grounds objections at the examination stage, also on the grounds of protected designations of origin (PDOs) and protected geographical indications (PGIs) as well as traditional terms for wines (TTWs), traditional specialties guaranteed (TSGs) and registered plant varieties, according to Article 7 (1)j to 7(1)m EUTMR.
A geographical indication will now serve as a basis of any opposition proceedings according to the new Article 8(4)a.
New fee regime
The new fee scheme will introduce payment of one fee per class for both new applications and renewals.
Renewal fees have been lowered and the new renewal fees will apply on or after the entry into force of the Amending Regulation, ie 23rd March 2016.
According to the transitional arrangements that the Office had reflected into the Draft Guidelines of the Legal Reform Package that were subject to public consultation (Section 4, Renewal, point 5.4. Time Limit, 5.4.3 Transitional arrangements), when the basic period for renewal started before the entry into force of the Amending Regulation, then the old renewal fee regime should apply, no matter if the basic period (and also the six month grace period following expiry) would end on or after 23rd March 2016.
However, there is no transitional provision in the Regulation that would exclude a different possibility, ie that those trade marks that are still renewable after the entry into force of the Amending Regulation – in spite of the fact that their basic period for renewal started before then – could benefit from the new lower renewal fees.
On 29th January 2016 the Office published the Communication No. 2/2016 of the President of the Office of 20th January 2016 which concerns the calculation of the amount of renewal fees in view of the entry into force of Regulation (EU) 2015/2424. In practice, all "Community trade marks expiring on or after 23rd March 2016 will be subject to the new renewal fees indicated in points A.11 to A.19 of Annex 1 EUTMR, even in the event that renewal was requested and paid for before the entry into force of this Communication". Those trade mark owners eligible according to those conditions but who had already paid will be refunded any excess renewal fees.
Further information and new online resources for MARQUES members
The above are issues that trade mark owners need to consider as a priority.
Over the past few weeks, members of the European Trade Mark Law and Practice Team and the Geographical Indications Team have been analysing these issues and submitted comments on the proposed Draft Guidelines of the Legal Reform Work Package on 22nd January 2016.
Earlier, on 4th January 2016, members of the European Trade Mark Law and Practice Team also filed comments on the proposed draft Presidential communication on Article 28(8) declarations.
Those comments have recently been posted on the MARQUES EU Trade Mark Reform mini-site, available only to MARQUES members:
MARQUES Comments on Article 28(8) – draft Presidential communication (part 1)
MARQUES Comments on Article 28(8) – draft Presidential communication (part 2)
MARQUES Comments on absolute and relative grounds for refusal under Article 7(1)(j) (geographical indications)
MARQUES Comments on draft guidelines (parts A – professional representation - and B – search reports)
MARQUES Comments on draft guidelines part C - oppositions (Sections 5 and 6)
MARQUES Comments on part E (renewal fees) and part M (international marks – absolute grounds for refusal)
MARQUES will continue to provide updates on the EU trade mark legal reform and its implementation online, via social media and in future issues of HouseMARQUES.
In the meantime, readers can also consult the Office’s dedicated page https://oami.europa.eu/ohimportal/en/eu-trade-mark-regulation on the new Regulation, which also includes links to webinars for users and will be updated as more information becomes available. You can also read about the details of the reforms on the MARQUES EU Trade Mark Reform Task Force page and in the special issue of HouseMARQUES (July 2015).
Issue 061
