The EU trademark system has undergone substantial reform. A first set of changes entered into force on 23 March 2016.
The unitary Community Trademark (CTM) is now called the European Union Trade Mark (EUTM). The Office for Harmonization in the Internal Market (OHIM) is now called the European Union Intellectual Property Office (EUIPO).
Changes of fees
A new "one-fee-per-class" system will apply: The basic fee will be lower than it was before. It will apply for trademark filings and renewals covering one class of goods and services. Every additional class will cost an additional fee. While previously three classes were covered by the basic fee, applicants will have to consider budgetary aspects starting from the first class in the future.
Watch out for conflicting trademark applications and act swiftly
As before, the owner of an earlier EUTM, which has been registered for more than five years, cannot prevail in infringement proceedings against use of a younger registered (EU or national) trademark if he cannot prove genuine use of the earlier EUTM at the time of the enforcement. The significant change now for intervening rights is that the owner of the earlier trademark needs to be prepared to also show that in the past, at the time of filing (priority) of the younger mark, the earlier mark:
- enjoyed a sufficient scope of protection (a sufficient degree of distinctiveness or reputation) to obtain the declaration of invalidity of the younger mark; and
- has genuinely been used (if registered at that time for more than five years)
Such proof, in relation to the past, can be really burdensome. Consequently, trademark owners are well-advised to:
- procure early notice about potentially conflicting younger marks (through a watch service); and
- take appropriate action as early as possible, eg, file oppositions.
Substantially the same rules will apply for earlier national trademarks under the amended EU Trademark Directive (upon implementation into national law, which has to be done by the EU member states until January 14, 2019).
Register your brand as early as possible
The owner of a younger trademark is therefore in a better position when he is not only relying on unregistered use-based rights, but has a registered trademark. Consequently businesses are encouraged:
- to file for the registration of trademarks; and
- to file as early as possible, so that the trademark may come up in watch services and the applicant shall be notified by the owner of any potentially conflicting earlier rights as early as possible.
EUTM via International Registration
EUTMs filed via the Madrid System (as designations of an International Registration) will become more attractive as the opposition period will now already start one month after the publication date (previously this was delayed for six months).
Carefully consider the goods and services covered – transitory period for certain amendments
The translation of the real scope of business activity, for which the trademark shall be used, into sufficiently clear and precise terms for a list of goods and services in a trademark application has become much more important over the last years than it was in the past. The complexity of current and planned future use in commerce needs to be adequately reflected in the list of goods and services. It should not be too narrow, in order to allow for a natural development of the business in the near future – and not too broad, in order to avoid unnecessary conflicts with earlier rights or the need of subsequent limitation to the goods and services for which the trademark is actually used if challenged for non-use later-on.
It is therefore advisable:
- to review one's trademark portfolio in order to identify whether it fits the current requirements;
- to use the transitory period until 24 September, 2016 to request the amendment of the list of goods and services if the list of goods and services of an EUTM applied before 22 June, 2012 contains the entire class heading of a class according to the Nice Classification, but the literal meaning of the class heading does not cover goods or services important for the trademark owner; and
- to consider replacing a vague term in the list of goods and services by a precise term by way of a partial surrender.
Schoenherr has been advising clients on the appropriate identification of goods and services according to the recent standards. We will be happy to advise our clients on their specific needs in relation to their existing trademark portfolios. The coming into force of the EU trademark law reform may be a good opportunity to review existing trademark portfolios.
By Christian Schumacher, Partner, Guido Kucsko, Partner, and Michael Woller, Attorney at Law, Schoenherr