Good things come to those who wait: modernising the EU trademark system

After a comprehensive 2009 study which revealed the potential to make the trademark law and processing system even more effective and user friendly, and 2013 proposals by the European Commission to upgrade and streamline the existing legislation, in April 2015 the European Commission, the European Parliament and Council finally agreed on a new package of reforms.

The proposed amendments to Directive 2008/95/EC and Regulation 207/2009 have already been published. The reforms are intended to:

• promote innovation and economic growth; and
• ensure coexistence and consistency between different trademark offices by modernising the existing provisions and adding new substantive law.

Formal confirmation of the amendments by the European Parliament and Council is expected in Autumn 2015. The key highlights are as follows.

Terminology
The Office for Harmonisation in the Internal Market (OHIM) will be renamed the EU Intellectual Property Office (EUIPO) and the Community trademark will become the EU trademark.

Fee reduction
The application fee will be proportionately decreased and the renewal fees will be significantly reduced. In addition, the number of classes covered by the application fee will be reduced from three to one.

Extension of trademark protection
The protection of geographical indications and traditional terms will be enhanced by clarifying existing and adding new regulations.

Further, the weakening of the trademark requirements by cancelling graphic representability and presupposing only the need for a trademark to “enable the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor” will increase the scope of registrability with regard to non-traditional marks (eg, sound, motion or hologram marks).

Moreover, using a sign as a trade name or a company name will infringe a trademark and only the honest use of a natural person’s name may be a defence against infringement.

End of the search
The EUIPO will cease carrying out searches for earlier EU trademarks. Therefore, applicants should rely on their own trademark searches.

Crime prevention
Provisions will be extended to allow owners of EU trademarks to stop affixing an infringing mark to goods. There will also be stronger measures to tackle counterfeit goods in transit to EU territories by the introduction of an express right to prevent goods from entering the European Union. In this context, an importer has a defence where it can show that the trademark owner is not entitled to prevent sales in the final destination country.

Closer coexistence and consistency
Streamlined registration, revocation and declaration of invalidity procedures will be harmonised across all trademark offices in the European Union – for example, ensuring that:

• trademark applications across the European Union will be subject to the same filing date and other formality requirements; and 
• opposition, revocation and validity actions are provided for by all national IP offices concerned without the need to go to court.

Finally, greater consistency between the directive and the regulation will be achieved.

Next steps
The political agreement on the trademark reform package still needs to be formally confirmed. The European Parliament and Council will vote on the new directive and regulation over the next few weeks. Once the political agreement has been adopted, member states will have three years to implement the directive into national law (with seven years to introduce the new administrative procedure for revocation and invalidity claims). Further, most of the amendments to the regulation will come into effect with its entry into force 90 days after its publication in the Official Journal, while the remainder will apply only once the necessary secondary legislation has been enacted.