EU trade mark law reform finalised

Decisions have now been finalised by the European Council in relation to the reform of trade mark law in the EU.

The key changes include a revised version of the Community Trade Mark Regulation renamed as the European Union Trade Mark Regulation (EUTM). In addition a new Trade Mark Directive has been developed and will be implemented into all EU member states. The Office of Harmonization in the Internal Market (OHIM) also has been renamed to the European Union Intellectual Property Office.

As previous trade mark law regulation is now over 20 years old, a key objective of the reform is to modernise the law which allows it to connect the member states in a more efficient way. The European council highlights the main objective to be ‘to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security’.

A number of key changes have been established in a number of areas of trade mark law

The first major change made is in relation to the requirement for a mark to be graphically represented. This wording has been abolished and now the requirement will read that the sign should “be represented on the register in a manner which enables the competent authorities and the public to determine the precise subject matter afforded to its proprietor”. This opens up the potential for non-traditional marks to be registered, increasing the flexibility of the law.  In addition, a prohibition of the registration of mark essential to achieve a technical result now extends beyond shapes and includes any characteristics.

The new Trade Mark Directive will now ensure that any registered trade mark that is used in a dictionary needs to be highlighted as registered to prevent it becoming generic. This prevents dilution of a mark.

In addition to changes in relation to the registration of marks, the list which outlines any use of a mark that will infringe has been extended. The first addition is the use of a registered mark as a trade or company name, including the use in comparative advertising. Infringement action can also be taken if a mark is used in the preparatory acts in relations to packaging, labels and tags.

An amendment has been made to the provisions in relation to sanctions for trade mark infringement meaning that instead of applying the law of the member state in which the infringement was committed, the EU Trade Mark Court can apply measures or orders under the applicable law which it deems appropriate.

Many changes have also been made to the defences available to infringement. One key change that has been addressed is in relation to the own name defence. This defence will now only apply to a natural person. Legal entities will no longer be able to rely on the fact that they are using their company name.

Lastly, a welcome amendment made is a reduction in fees for any application in relations to EUTM’s. The European Council states that this reduction will lead to savings of up to 37% for businesses seeking protection for registered EUTM’s beyond the initial period of 10 years.

These amendments are not exhaustive but highlight the key changes made to Trade Mark law through the EU. These changes will be implemented properly in due course.

By Ellis Sweetenham