Changes to the Community Trade Mark

This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.

Last week the Commission published the amendments agreed with the Council and EU Parliament for changes to the Trade Marks Directive (89/104) and the Community Trade Mark Regulation (207/2009). While the majority of the changes will take effect in 90 days others require implementing legislation from member states and so will not bite for between 3-7 years. There are multiple changes which will impact brand owners worldwide. The headline changes to be aware of are as follows:

1. Acronyms: The CTM is no more - the unitary trade mark which confers protection across all member states of the EU will be called the European Union Trade Mark (EUTM) with OHIM renamed as the European Union Intellectual Property Office or EUIPO (not to be confused with the EPO - European Patent Office).
2. Official fees: in order to discourage trade mark cluttering, there will no longer be a flat fee for filings in 3 classes. For brand owners only wishing to file in a single class, the official fees drop from €900 to €850 with those seeking broader protection in 3 classes seeing an increase from €900 to €1050, and €1200 for those with 4 classes. While the change in the fee structure is welcome, given the surplus at OHIM, it's a shame a greater overall cost saving was not possible.
3. Inter-parties actions: All national registries must offer opposition, invalidity and revocation proceedings before the Registry so that parties are saved the expense and time delay caused by having to bring proceedings at Court. There are 4 member states where trade mark litigants currently have to go to court to deal with revocation and invalidity matters so this is particularly welcome for those embroiled in disputes in Benelux, France, Spain and Italy. National member states have been given 7 years to introduce the necessary changes.
4. Non-traditional trade marks: The requirement for marks to be represented graphically has been removed which could indicate a possible surge of applications of non-traditional marks, although the amendments to Artcile 3(1)(e) grounds is likely to counteract that in practice since a mark which consists of its shape "or any other characteristic" will not be registerable.
5. New infringing act aimed at packaging: the amended Directive will include a right for brand owners to take action against third parties who offer, stock, import or export packaging, labels or "other security or authenticity features" to which the trade mark is affixed where these will be used in relation to goods and services that would constitute an infringement.
6. Goods in transit: in a measure to help in the battle against counterfeiting new provisions overturn the position in Nokia/Philips (C446/09, C495/09) so that goods in transit within the EU can be seized and destroyed unless the goods can be lawfully be put on sale in the country of final destination.
7. Own name defence: this will no longer be available for corporates, with protection only being conferred on individuals. The recentMaier v ASOScase is one that is likely to be affected by this change given that defendant ASOS was recently found by Court of Appeal to have infringed Maier's trade mark, but saved from an injunction or other remedy on the basis the own name defence applied since the company had honestly adopted its corporate name.
8. Trade Marks as property rights: When a company or undertaking is sold as a whole, this will include a transfer of any trade marks expect where there is an agreement to the contrary or circumstances which clearly dictate otherwise. Articles 23 and 24 also confirm that trade marks can be given as security, be levied in execution and be the subject of rights in rem.
9. Non-use is a defence to infringement: A registered proprietor can only enforce his rights to the extent they are in use (once more than 5 years old) at the time the infringement action is brought. This extends OHIM's proof of use rules into infringement actions, and enables a defendant to force a claimant to prove the rights they rely on.
10. Referential use defence: this has been widened to make it clear that use of a trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of the trade mark will not amount to an infringement. Additional wording has also been added to clarify circumstances which amount to honest practices.