A new EU trade mark Regulation enters into force – time to review your EU trade marks

Published

Yesterday, on 23 March 2016, the Amending EU trade mark Regulation 2015/2424entered into force, causing several changes to the EU trade mark system. Here we list the, in our view, most significant changes. One of those is that the EU trade mark office will change its interpretation of older registrations referring to the entire class heading of a Nice class. In order to obtain the intended protection, trade marks holders will have to act within a transitional period of six months. Below, we provide more details on this regulation and the one-off opportunity now given to trade mark holders.

Some of the most significant changes due to the new Regulation are:

1.     Change of names: Community trade marks are from now on called Europan Union trade marks (or EU trade marks), and the office administrating EU trade marks (formerly called OHIM) is from now on called the European Union Intellectual Property Office (EUIPO).

2.     The requirement of graphic representation is removed. The change allows for easier registration of scents and sounds.

3.     The powers of trade mark holders are strengthened: the proprietor of an EU trade mark may prevent third parties from transporting infringing goods from a third country through the European Union, and may also prevent preparatory acts as well as the use of EU trade marks in comparative advertising in a manner which is contrary to the Directive referring to misleading comparative advertisement.

4.     A new fee system is introduced: a “one per class fee” is launched and the renewal fee is made equivalent to the application fee.

5.     A mediation centre is established: parties to ongoing proceedings (cancellation proceedings, annulment proceedings, opposition proceedings or appeals against decisions by EUIPO) or threatening disputes may jointly refer the dispute to the mediation centre in order to seek a friendly settlement.

6.     Codification of EUIPO’s approach following the so-called IP Translator case (C-307/10): The goods and services protected by a trade mark registration will be determined by the literal meaning of the goods and services set out in the application, regardless of when the application was filed. However, during a transitional period of six months from now, proprietors of certain EU trade marks registered in respect of the entire heading of a Nice class, may obtain formal clarification of the scope of protection.

The codification of the EU Court’s ruling in the IP Translator case (No 6 above), may require companies to act to protect their interests. Here we provide a brief background to the changed regulation and what holders of EU trade marks should consider.

Before the IP Translator judgment in 2012, EUIPO interpreted applications designating the entire class heading of a Nice class, as a claim for protection for all goods and/or services falling within the relevant class. Following the IP Translator judgment, applications for registration of EU trade marks filed after 21 June 2012 and referring to a particular class heading of the Nice Classification have instead been interpreted by EUIPO following a literal approach.

During the said transitional period, holders of EU trade marks which have been filed for registration before 22 June 2012, and been registered in respect of the entire heading of a Nice class, may declare that their intention on the date of filing was to seek protection in respect of goods and services beyond those covered by the literal meaning of the heading. If no such declaration is filed within the transitional period, only goods and services covered by the pure literal meaning of the heading will be protected by the registration.

It is therefore advisable that companies holding EU trade marks review them and consider whether:

1.     the trade marks (or any of them) were filed for registration before 22 June 2012;

2.     the trade marks (or any of them) are registered for at least one entire class heading of the Nice classification; and

3.     the company’s intention for those trade marks was that goods and services (within the same class) which go beyond the literal meaning of the class heading should be protected by the registration.

If 1 to 3 are at hand, you must file a declaration to EUIPO before 25 September 2016 in order to obtain protection beyond the literal meaning of the class heading.

Want to know more? Please contact Fredrik Ståhl, partner at Time Advokatbyrå, +46 701 49 25 69, fredrik.stahl@timelaw.se or Emilia Hempel, lawyer at Time Advokatbyrå, + 46 701 41 55 09, emilia.hempel@timelaw.se. Time Advokatbyrå regularly advices on trade mark law related matters such as trade mark strategies, oppositions, licensing agreements, infringements and counterfeiting.