On 23 March 2016 a number of changes to EU trade mark law and practice were introduced or were listed for subsequent introduction, following the implementation of Regulation (EU) No 2015/2424 of the European Parliament and the Council which amends Council Regulation (EC) No 207/2009 (the CTM Regulation).
REGULATION No. 2015/2424
A summary of the main changes are as follows:
CHANGE OF NAME FOR THE CTM AND THE CTM OFFICE
The Office for Harmonization in the Internal Market (OHIM), also known as the CTM Office, will now be referred to as the European Union Intellectual Property Office (EUIPO) and the Community Trade Mark (CTM) will become the European Union Trade Mark (the EU Trade Mark; EUTM).
Specification of Goods and Services (Article 28)
Article 28 of the Amending Regulation (2015/2424) stipulates that the list of goods and services for which protection is sought under an EU trade mark must be clear and precise. The use of general terms, including Class headings of the Nice Classification, will be accepted. However, such terms will be interpreted by the EUIPO as including all goods and services clearly covered by the literal meaning of the Class heading. This follows the ruling of the European Court of Justice in the IP Translator case (C-307/10).
For EUTM or International Registrations designating the EU filed before 22 June 2012 covering the full Class heading, it will be possible, under Article 28(8) of Regulation 2015/2424, to amend the specification of goods/services to include any goods/services covered by the Class heading in question, which appeared in the alphabetical list of the Nice Classification edition in force at the filing date of the application. This can only be done by filing a Declaration at the EUIPO between 23 March and 24 September 2016 (inclusive).
The Declaration must specify the precise goods/services (other than those covered by the literal meaning of the terms in the Class heading), which the proprietor originally intended the EUTM to cover. The President of the EUIPO has published in his Communication 1/2016 of 8 February 2016 a non-exhaustive list of terms that, in the Office’s view, are clearly not covered by the literal meaning of the various Class headings and which EUTM owners may wish to use in their Declarations. An online recordal application form, facilitating the filing of a Declaration under Article 28, will be available on the EUIPO website from 23 March 2016 and can be filed in English, French, German, Italian or Spanish. There is no fee for filing this form.
Failing the submission of the Declaration, any EUTM registrations filed before 22 June 2012 will be deemed only to cover the goods/services covered by the literal meaning of the terms of the Class heading.
It is important to note that an amendment under Article 28(8) does not permit the owner of an EUTM to prevent third party use of goods and services added to the specification provided that a) the third party use commenced before the registration was amended and b) did not at that time infringe the proprietor’s rights on the basis of the literal meaning of the Class heading at the relevant time. The same limitations apply to oppositions and declarations of invalidity filed by the owner of the amended registration.
Signs registrable as an EUTM (Articles 4 & 7)
There is no longer a requirement to represent an EUTM graphically. Provided that the sign is capable of being represented in such a way as to enable the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the EUTM proprietor. This change should allow applicants greater scope for registering non-traditional trade marks, such as sound, smell and moving image marks. Further, the Amending Regulation now expressly provides for the registration of colours and sounds as EUTMs. In the earlier (CTM) Regulation, such marks (colours and sounds) were not listed as registrable trade marks. This amendment will come into force on 1 October 2017.
Under the old Regulation, it was not possible to register signs which consist exclusively of the shape:
a) Which results from the nature of the goods themselves;
b) Of goods which are necessary to obtain a technical result; and
c) Which give substantial value to the goods.
The Amending Regulation has extended these absolute ground restrictions to cover both shapes or any other characteristic. This means that objections based on these restrictions which previously could only be raised against applications/registrations for shape marks could now also be raised against marks such as colour, colour combination, sound or motion marks.
Article 74a of Regulation 2015/2424 provides for the registration of EU Certification marks.
Priority Claims (Article 30)
Under the old CTM Regulation, it was possible to claim priority from an earlier filed application within two months of filing the (CTM) application. Under the Amending Regulation, it will now only be possible to claim priority at the time of filing the EUTM application.
EU National Trade Mark Offices (Article 25)
Previously, it was possible to file a CTM application through an EU National Trade Mark Office. The Amending Regulation stipulates that it will now only be possible to do so through the EUIPO.
Opposition Deadline for International Applications designating the EU (Article 156)
Under the old Regulation, the non-extendible deadline for opposing an EU designation of an International application was 9 months after the publication date in the OHIM Bulletin (the 3 month opposition period commenced 6 months after the publication in the Bulletin). In line with the Amending Regulation, the 3 month opposition period will now commence 1 month after the publication of the IR (EUTM) by the EUIPO. The opposition deadline will therefore be 4 months after publication of the IR (EUTM) in the EUIPO Bulletin.
Proof of Use (Article 42)
Currently, in EUTM opposition proceedings, the owner of the opposed application can request that the opponent furnishes proof of use of the trade marks relied upon in the opposition if those registrations were registered for five years or more at the publication date of the opposed application.
Under the Amending Regulation, such proof of use can only be requested by the applicant if the opponent’s earlier rights have been registered for five years or more at the filing date (or priority date) of the opposed application.
These rules will also apply to invalidity proceedings brought against EUTM registrations based on an earlier EU national or EUTM registration.
TRADE MARK INFRINGEMENT AND DEFENCES TO INFRINGEMENT
(Articles 9, 12, 13a & 99)
Infringing Acts Extended
In addition to the acts of infringement listed under the old Regulation, the new Regulation entitles the EUTM owner to prohibit the following use:
• The affixing of a sign which is identical with or similar to the mark protected by the earlier EUTM registration on packaging, labels, tags, security or authenticity features (in the course of trade) or the placing on the market, stocking, importing or exporting of such packaging, labels, tags, security or authenticity features;
• Goods in transit within the EU; such goods will be subject to seizure by EU customs authorities, allowing counterfeit goods passing through the EU to be seized and destroyed. However, if the goods in question could be lawfully placed on the market in the country of final destination, then this new provision of the Amending Regulation will not apply;
• Use of a registered EUTM in comparative advertising that is contrary to the EU Comparative Advertising Directive (2006/114/EC).
Defences to Infringement
In an infringement action based on an EUTM registration, the proprietor of the earlier EUTM cannot prohibit the use of a later mark if he could not successfully invalidate that later mark on the basis of his earlier rights or due to prior consent/acquiescence/non-use of his earlier rights.
Further, the owner of an EUTM shall not be able to prevent an honest third party from,
• Where that third party is a natural person, using his own name or address,
• Using a sign or indication which is not distinctive or which refers to a certain characteristic (or characteristics) of the registered goods or services,
• Using the EUTM to identify or to refer to the proprietor’s goods or services. This defence applies, in particular, to goods intended to be accessories or spare parts.
TRANSFER OF EUTMS (Article 18)
As of 1 October 2017, the proprietor of a trade mark that has been registered by an agent or representative without the proprietor’s authorisation shall be entitled to demand the assignment of the EUTM by submitting the request either to the EUIPO or to an EU trade mark court.
OFFICIAL FEES (Annex I)
Previously, it was possible to pay one fee of €900 for one CTM application in up to three classes of goods/services and additional fees were payable for each class beyond the first three. This has now changed. The price structure now charges for each class of goods/services claimed in the application, as follows:
No of Classes
€150 is payable for each additional class beyond three classes.
It will no longer be possible to pay the application fee within one month of filing the application. This has to be paid at the time of filing.
A positive change in the EUIPO’s fee schedule is a substantial reduction in renewal fees.
In addition to the above, and a number of other changes to the EUTM Regulation, the authorities have also introduced amendments to the Trade Mark Harmonisation Directive governing the national trade mark laws of EU countries.
DIRECTIVE (EU) 2015/2436
The main changes affecting the EU national trade mark offices are as follows:
Specification of goods/services
(Article 39) – as in the EUTM Regulation, but there is no provision for filing a Declaration to broaden the literal meaning of the Class heading.
Signs registrable as a Trade Mark
(Article 3) – the changes referred to in relation to the EUTM Regulation also apply to the amended Directive.
Absolute grounds for refusal
(Article 4) - all EU national trade mark offices must be able to refuse an application (during examination or opposition proceedings) that seeks to protect a trade mark which is identical with/similar to a designation of origin, a geographical indication, a traditional term for wine, a traditional speciality guaranteed or a plant variety or which was made in bad faith.
Relative grounds for refusal/invalidity (Article 5) – this provides that it should now be possible to oppose/invalidate a trade mark application or registration based on an earlier application for a designation of origin or a geographical indication.
Proof of Use (Article 44) – in opposition proceedings, the applicant may put the opponent to proof that they have used their earlier mark in the 5 years prior to the filing/priority of the later mark.
Revocation & invalidity proceedings (Articles 4,5,19,20,47 & 48) – all EU national trade mark offices will have to introduce trade mark revocation and invalidity proceedings. This will predominantly affect Benelux, France, Italy and Spain where revocation and invalidity proceedings currently have to be brought before the national court (the deadline for implementing this is, however, 7 years in the future!)
Infringement and defences (Articles 10, 11, 14, 17 & 18) - the changes referred to in relation to the EUTM Regulation also apply to the amended Directive.
Transfer of EU national Trade Mark rights (Articles 22, 23 & 24) – the new Directive provides that the transfer of the whole of an undertaking will include the transfer of any trade mark (or trade marks) except where there is an agreement to the contrary or circumstances clearly dictate otherwise. Trade Marks may also be given as security or be the subject of rights in rem or be levied in execution.
Rights of licensees (Article 25) – the new Directive extends the rights of licensees to allow them (under certain circumstances) to bring trade mark infringement proceedings and to receive compensation in successful proceedings.
The majority of these amendments must be implemented within 3 years.
Advice to Trade Mark Owners
Although all of the changes above will affect EUTM owners (or national trade mark owners) at some stage, the change that will have the most immediate impact (on EUTM owners) is Article 28 on specifications of goods and services. We would urge EUTM owners to conduct a review of their EUTM portfolio on an urgent basis to ensure that registrations filed prior to 22 June 2012 cover all goods and services that were intended to be protected when the application was originally filed. To re-iterate, the Article 28(8) Declaration must be filed by 24 September 2016 at the latest.
Although all of the changes above will affect EUTM owners (or national trade mark owners) at some stage, the change that will have the most immediate impact (on EUTM owners) is Article 28 on specifications of goods and services. We would urge EUTM owners to conduct a review of their EUTM portfolio on an urgent basis to ensure that registrations filed prior to 22 June 2012 cover all goods and services that were intended to be protected when the application was originally filed. To re-iterate, the Article 28(8) Declaration must be filed by 24 September 2016 at the latest.For many years, patent offices in Europe and the courts have sought to grant and uphold patent protection for inventions which are made through the discovery of the new use of a known drug. Such second medical uses can be valuable and sometimes life-saving. Research into new uses of known compounds can be as expensive as discovery of new molecules. Discovery of new molecules is becoming more and more rare, whereas the range of known drugs and their potential for undiscovered effects has expanded.
There is no question of awarding the inventor of a new use absolute protection for the substance itself. Nor can a patent be granted for a method of treatment using the compound in question.
To circumvent these problems the Enlarged Board of Appeal of the European Patent Office has for many years granted claims for “the use of substance X for the preparation of a medicament (or pharmaceutical composition) for treating indication Y”. These are so-called “Swiss claims” because of their first use in the Swiss patent office. (See Eisai (Second medical indication)  OJ EPO 64.)
A problem with the Swiss form of claim is that it is a process claim targeted at the manufacturer. It is difficult to make a case for contributory infringement, because this would require a downstream infringer, and there is generally no-one downstream of the manufacturer who is using the substance for preparation of a medicament.
When the EPC was amended (renamed the “EPC 2000”), a different form of claim became permitted – simply “compound (or composition or substance) for use in a method of treatment of disease Y.” The EPO has stopped granting claims in the Swiss form after the EPO Enlarged Board of Appeal decision G 2/08, but claims already granted in that form continue to have effect.