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EU Trade Mark Reform 2

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This article is the second in a series of articles about the impending changes to the Community trade mark system. The first article can be accessed here. Under the reforms, there are going to be changes to what type of marks can be protected and the way that specifications are treated:-

European certification marks

A certification mark is a type of trade mark which shows that the branded goods or services are certified by the proprietor as having certain characteristics, other than geographic origin). Whilst various national systems (including the UK) have allowed protection of certification marks for a number of years, the EU system currently does not. However, the reforms will introduce a set of rules to allow for certification marks to be protected from 1 October 2017.

Graphic representation

Currently, in order to be eligible for trade mark protection, the mark must be capable of being represented graphically. However, this requirement has been the subject of criticism for being out of date as it can create difficulties when protecting non-traditional trade marks, such as smells or holograms. The reforms will liberalise this requirement by replacing it with representation “in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection…”. However, no guidance has been given as to how this will work in practice and there will be a delay until 1 October 2017 before this change is introduced.

Technical exclusion

At present, signs can be refused protection if they consist exclusively of the shape of the goods, a shape which is necessary to obtain a technical result, or a shape which provides substantial values to the goods. The purpose of this provision is to prevent trade mark proprietors claiming monopolies in the shape of goods, which may be more properly the reserve of designs or patents (which have a shorter lifespan). If an objection is raised under this ground, it is not possible to overcome it by showing that the shape has become distinctive (that is, consumers associate it as indicating the origin of the proprietor) as a result of the use that has been made of it.

Under the reforms, this ground for refusal will be extended to any sign which consists exclusively of “another characteristic” which results from the nature of the goods, is necessary to obtain a technical results or gives substantial value to the goods. The interpretation of this change will be a matter for the Court of Justice of the European Union. However, it is clear that the exclusion has been widened to extend to other marks, such as sound or colour, and may make it more difficult to protect non-traditional trade marks.

Classification of goods and services

Trade marks are protected in relation to an internationally agreed classification of goods and services. The classification is organised by “class headings” which categorise different goods into 34 “classes” and services into 11 “classes”. Previously, it was possible to file an application for the “class heading” to obtain protection for all goods and services within the class. However, following a decision of the Court of Justice of the European Union (referred to as IP Translator), it is now a requirement that the wording of the specification must be sufficiently clear and precise to describe the goods/services provided under the mark and class headings are deemed to only cover goods or services that fall under the literal meaning of the words (rather than all of the goods/services in that class).

Whilst this change increases legal certainty (as specifications now operate as “what you see is what you get”), it may cause issues for brand owners who filed applications for a class heading, intending to gain protection for all goods/services in the class. Given this, the reforms will provide brand owners with CTM registrations filed before 22 June 2012 a six month grace period (that is, until 23 September 2016) to file a declaration specifying whether it was their intention to seek protection for the goods or services covered by the alphabetic list which do not fall under the literal meaning of the class heading, otherwise the registration will only be deemed to cover goods or services covered by the literal meaning of the class heading. Depending on the class(es) covered, not filing a declaration could result in a significant reduction in the scope of protection.

However, mechanisms has been introduced to protect existing trade marks owners who could be prejudiced by the expansion of specifications. Namely, it will not be possible to bring an infringement claim based on the expanded list of goods/services against a trade mark owner who was using a trade mark prior to the amendment, on the condition that the use did not infringe the rights based on the literal meaning of the words. Likewise, it will not be possible to file an opposition or invalidity action if the contested trade mark was used or filed prior to the amendment and the use was not objectionable based on the literal meanings of the specification prior the amendment.

In view of this, brand owners with affected CTM registrations (that is, filed prior to 22 June 2012 and covering class headings) should be reviewed to ensure parity between the literal meaning of the words covered by the class heading and the business activities. If necessary, an amendment to the specification will need to be filed prior to 23 March 2016 in order to avoid being foreclosed from bringing infringement actions or oppositions against third parties whose rights were not objectionable based on the literal meaning of the specification. Alternatively, a declaration should be filed by the deadline of 23 September 2015, otherwise the class headings will be given its literal meaning.