In the last December, it has been given the go-ahead to the EU trade mark reform package .
As a result, the new Regulation 2015/2424 was published on 24 December 2015 and will come into effect across Europe on 23 March 2016.
The Directive 2015/2436 was also published on 23 December 2015 and it will need to be implemented into the national laws of each member state by 14 January 2019.
Of course, changes were needed so to ‘modernize’ the system and make it more efficient, accessible, speed, effective and more close to the market and Internet changes.
As for the new Regulation, significant changes will come into force as of 23 March 2016.
The main changes include the following:
1. A new name for the Office, European Union Intellectual Property Office (EUIPO), and a new name for the marks, European Union trademark (EUTM).
2. A one-fee-per-class-system for trademark applications and renewals, and we may say that generally fees will decrease. Intuitively, the new fees should make the European trade mark system more accessible for smaller businesses which usually protect their marks in a lower number of classes if compared to bigger businesses.
3. The Regulation will also affect “broad” specifications of goods and services of Community trademarks which cover “class heading” terms, a topic that has undergone substantial discussions since the codification of the existing practice deriving from the IP Translator case of the CJEU in connection with ‘broad’ specification of goods and services. But probably more important, the new Regulation confirms the extension of this practice also to registrations filed before the IP Traslator case, giving the trademarks owners a transitory period to adjust the specification of the marks to their original intention when they filed them. In practice, as far as the Office told, trademarks owners should receive a communication from the Office inviting them to specify the goods and services of a registration if they were indicated with general terms at the time of filing. And might be an easy wok for some classes, but firstly, it is the Office that determine if a term is ‘broad’ and secondly, the owners shall take into account the different editions of the Nice edition and may not broader their initial specifications (for example, today software are in class 9 but were in this class in the previous editions of the classification?).
4. The requirement to represent the mark “graphically” will no longer apply. As a consequence, we may not but imagine that Non-Traditional Trademarks will be registered more easily even if the conditions for the filing of a EUTM have still to be adopted by the Commission with one of the various implementing acts required by the new Regulation.
5. As for the seizure of counterfeit goods which are in transit through the EU, there is the extension of rights to prohibit third parties from bringing goods into the EU bearing an infringing sign even where those goods are not being released for circulation and are not meant for the EU market, provided that they will also be infringing in the country of their final destination. The prove that the goods are genuine in the country of destination will be shifted towards the alleged infringer.
6. A particular welcome is given to the extension of absolute grounds of refusal to include designations of origin, geographical indications, protected traditional terms for wine and traditional specialties, which is particular important for the European Countries which have an incredible huge number of those rights, which also constitute our culture and our business card in our commercial life abroad. Owners of designations of origin, geographical indications, protected traditional terms for wine and traditional specialties shall also have the possibility to file oppositions on the basis of these prior rights. And in this regard, we may also welcome the introduction of the EU certification marks.
7.As for some procedural issues, we mention the 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, the 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 (the opposition period itself remains three months).
Of course the Regulation provides for other changes but more important we shall wait for some of the changes deriving from the Delegated acts of the Commission. We consider that the changes that need immediate consideration are those related to the specification of goods and services and the change in the fees. For the remaining changes we shall be sending out a knowledge update with additional details and recommendations in the near future.