That is definitely my trademark! Smell it!

Finally the new text of the trademark regulation has been officially published in order to harmonise the national trademark laws and practices with the EU trademark. Let us see what the biggest changes are which will presumably have the most effect on trademark practice.

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First of all, the Institution under whose wings all the changes presented below will take effects –  the former OHIM (Office for Harmonization in the Internal Market) – has been renamed: from now, it is called the European Union Intellectual Property Office.

The main objectives of the reform are:

  1. to reduce the payable Office fees
  2. to ensure an effective, efficient and expeditious examination and registration
  3. to strengthen trademark protection and combat counterfeiting more effectively
  4. an “updated” procedure, with special regards to the needs of the private sector

One of the biggest changes is deleting the requirement of the shape to be represented graphically. What does that mean exactly? In the future, the good old section – being represented graphically; and distinguishing the goods or services of one person from those of another person – is not a must anymore. It opens the possibility for the application for example of sounds. This does not mean that everything can be a trademark though – it must be able to be represented with the available technology. Furthermore, it might be possible that a few abstract “sensations” could be trademarked (like fragrances), but still, it is hard to tell what the future – and not at least: practice of law – will bring.

 What is that  distinctive  smell?

What is that distinctive smell?

Besides, the basic fees will be lower: formerly the application fee for up to three classes of goods and services was 900 EUR, with a 150 EUR extra fee for each additional class. After amendment, the basic fee for the application for an individual EU trademark (by electronic means) will be 850 EUR (for one class of goods and services), the second class will cost 50 EUR extra, and 150 EUR extra fee for each class of goods and services exceeding two. This provision could decrease unnecessary applications (primary concern), therefore also could be effective on reducing the number of opposition and invalidity proceedings.

Speaking of opposition: the new regulation makes it possible to prevent trademark applications made in bad faith from registration as of the opposition period instead of a cancellation procedure which is longer and more expensive. So far, the opponent had to wait until the registration is done to start the invalidity procedure, so we could say it should be a powerful, cost-effective and yet necessary dispatch.

The EU trademark reform legislative package not only contains amending and repealing regulations, but also includes replacement of the existing EU Trade Mark Directive (namely: Directive 2008/95/EC).

From now on, it is not permitted to register any descriptive trademarks in any official language in the EU member states. For example, in the past, a beer in Croatia could not be registered as “dobre pivo”, nor as “Buena cerveza” in Spain. From now, a descriptive mark cannot be registered in any of the EU member states in any member state language, regardless of the language spoken in the particular state. Also, the competent authority will not examine the relative grounds ex officio – making the registration process even faster.

 No more of these in any EU member states regardless of the language spoken

No more of these in any EU member states regardless of the language spoken

The new regulation makes it obligatory for member states revocation and opposition procedures to be decided before the national intellectual property offices’ as first instance authorities in such procedure. (For example in France a trademark cancellation procedure could be initiated before courts, which resulted in slower and more expensive enforcement for trademark owners.)

Against the previously applied jurisprudence explicated in Courts’ Nokia and Philips decision, the legislator now allows the prevention of transit goods in any infringing situations, including the transshipment, warehousing, temporary storage, etc.

In addition, there are a lot of modified sections to serve the objective of fostering and creating a well-functioning internal market, and also ensuring greater legal certainty – for example to prevent third parties from bringing in goods or to extend the absolute grounds to cover the protected traditional terms for wine and traditional specialities – it it safe to say that it is worth the time to study the novelties.

Pintz & Partners