If you run a business and have a brand, then the chances are you will want to protect your brand in order to stop others from copying it and potentially stealing your customers. Your brand could be a word, a logo or perhaps a combination of the two. Whatever it is, the best form of protection is through trade mark registration.
The trade mark registration process is jurisdictional. That is to say, you should register your trade mark on a territorial basis relevant to where your products or services are being marketed.
Until 1st April 1996, if you wanted to protect your brand across the European Community the only way to do this was to register your mark in each Member State on a country-by-country basis. Whilst this was technically possible, it was a very expensive and time-consuming way of achieving pan-EU protection since separate applications had to be made directly through each of the national Member State government offices responsible for registering intellectual property rights in their own country.
Why a European Community system?
A system for registering a trade mark across the entire European Community by virtue of a single application was first implemented under Council Regulation (EC) No 40/94 of 20 December 1993. Under this system, a registration enables an owner to protect their trade mark across all the Member States at once and with the same legal effect as they would have with separate national trade mark rights in each Member State. Accordingly, a brand owner can enforce its rights against other parties infringing a trade mark in any of the Member States throughout the European Community. The Community registration system is intended to co-exist with the national registration systems and offer a cheaper and more efficient alternative, but not to replace them.
The first European Community trade mark applications were filed on 1st April 1996. The office responsible for the processing and management of the system (the “Office for the Harmonization on the Internal Market” or “OHIM” for short) is based in the city of Alicante in Spain.
How has it changed?
Ever since the inaugural trade mark applications were filed in 1996 the European Community trade mark system has had to evolve and adapt according to a number of factors and challenges, not least because of the sometimes disparate nature of interpretation of its “harmonised” European laws by the national Member State government offices and courts over the years, as well as the changes that have taken place in Europe geographically and an expanded European Community membership. Moreover, the way in which most people work has changed considerably over the last 20 years following the advent of the internet and vast amounts of information that have become freely and easily accessible online.
What has been done?
In order to maintain pace with these changes Council Regulation (EC) No 40/94 has been amended several times. The most recent Regulation on Community trade marks (No 207/2009) dates back to 2009.
In 2008 however, it was decided that a radical overhaul was needed. The European Commission commenced a programme of examining the European Community and national Member State trade mark systems and how they interacted with each other. Following the European Commission’s report it took a further seven years for the Commission, the European Parliament and the European Council to confirm that they had reached agreement for implementing the most extensive changes to European Community trade mark law since 2009. On 8th June 2015 the European Council published its proposals which were aimed at addressing the generally-acknowledged flaws in the current system such as higher than desirable costs, slow trade mark prosecution progress, a less than ideal level of legal certainty concerning the effects of registered trade mark rights and, in general, a low level of predictability for applicants and practitioners alike.
The result of this programme led to the implementation of Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015. This new Regulation, which comes into force on 23rd March 2016, brings about several key changes in the European Community trade mark system.
What are the key changes?
- Terminology:The word “Community” is banished from the trade mark terminology. A Community trade mark becomes known as a “European Union trade mark” and the word “Community” becomes the “Union” or “European Union”. The OHIM will now be called the “European Union Intellectual Property Office” or otherwise the “EUIPO”.
- Costs:One of the key changes promised was a reduction in the costs required to register a trade mark application in the EU and to renew the resulting registration. In reality, the costs are not changing substantively at all. Official application fees will be marginally cheaper if a trade mark application is to cover only one class of goods or services. Bigger savings can be made on renewal costs, however. An EU trade mark registration must be renewed every ten years to keep it in force and official fees must be paid in respect of this. These official fees have been reduced appreciably.
- Goods in transit:This is a significant change in the law which gives increased protection for brand owners against counterfeiters who transport goods from one part of the world to another via the EU. Under the current law, products bearing a mark identical to or similar to an unauthorised trade mark are only deemed to infringe an EU registration if those products are in any way offered for sale in the EU market. In other words, products that are simply being transported through Europe and nothing more would not be held to be “infringing” goods.Under the new law, this loophole will be closed. In the case of any product entering the EU (even if only for the purpose of being shipped elsewhere) and where that product bears another party’s registered trade mark (or a mark that cannot be distinguished in its essential aspects from that trade mark) then it will be deemed to be an infringing product. This will put an end to unauthorised products being stored temporarily or warehoused in the EU as well as those contained within trans-shipments. An importer’s only defence is if they can show that the rightful brand owner has neither a registered EU trade mark nor a registration in the territory of the product’s ultimate destination. The importance of having your key brands registered as EU trade marks therefore speaks for itself.
- “Preparations” to infringe:More bad news for counterfeiters is the change in the law which now means products being prepared for sale may also be subject to a trade mark infringement claim. This applies when an unauthorised trade mark is placed on product packaging, labelling, tags etc. in readiness for actual sale. Until now, the products had to be on actual sale in the market before a trade mark right owner could take appropriate action, or at least advertised as available for purchase.
- Classification of goods:A trade mark registration is protected for products and services by means of a classification system. In order to set out what is covered by a registration, products and services are assigned classification numbers which relate to general headings. For example, “watches” fall under Class 14 and this class is headed and defined as “Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments”.Following the decision of the Court of Justice of the European Union (CJEU) in Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks (“IP TRANSLATOR”) it was held that where a trade mark is registered simply for the wording of the class heading or a specification of goods or services that incorporates the class heading, the protection of the mark is inferred as being limited only to the literal meaning of the class heading and not all the goods or services that fall within that class. In other words, the class heading is to be viewed as a broadly descriptive reference to the goods or services covered by that class and does not necessarily include all the goods or services of that class within its definition.
The effect of the IP TRANSLATOR case is that if your registration has a filing date before 22nd June 2012 and covers a specification of goods or services that is entirely, or incorporates, the class heading, then there will be a six-month window of opportunity to address this by filing a declaration which sets out and itemises the precise goods or services which are meant to be covered under the registration. Without doing this, the class heading description could be construed to have a narrower meaning and the registered trade mark scope could be less than originally intended. It is therefore essential for all brand owners to review their European trade mark protection to determine whether they need to address this. The window of opportunity falls between 23rd March 2016 – 24th September 2016.
- Removal of “graphical representation” requirement:Until now, a prerequisite for registration has been that a trade mark must be capable of being represented graphically. This has hitherto made it impossible to register other signs such as distinctive smells, which has long been a problem for the fragrance industry in preventing copycat “smell-a-like” perfumes and aftershaves frequently seen on market stalls. Such products do not pretend to be the actual brands but merely cheaper alternatives, often comparing themselves openly to the big brands by making direct reference to them. The change is that the graphical representation requirement will no longer apply, meaning it will technically be possible to register a smell as a property right. From a practical point of view that may still be difficult. It remains to be seen how such registrations can be achieved once this change is introduced in October 2017.
This article gives a brief overview of the Community trade mark system (soon to be the European Union trade mark system) and the changes that are coming into force. Whether the system will be cheaper, increase legal certainty and be more efficient and predictable then we must wait and see. It has taken seven years to get to this position and many will argue that the changes do not go far enough, while others can make a reasonable claim that by the time these changes come into force we will have already moved on and the current provisions have quickly become out of date. Regardless of this, the Community trade mark system has benefited enormously many thousands of businesses across the EU over the last twenty years and it has been a resounding success. If you consider that the system is an attempt to harmonise the laws of the (currently) twenty-eight Member States covering a multitude of different languages, then it is something of a triumph that we have a Community trade mark system at all.