Just as we were going to press, a new Trade Mark Regulation (EU) No. 2015/2424 was being introduced (23 March 2016). This long awaited upgrading of EU trade mark law will introduce some significant changes including a new name for the registry itself (European Union Intellectual Property Office; EUIPO) and for the trade mark rights issued (European Union Trade Mark; EUTM).
In addition a number of other important changes have been made including
• The removal of the need to represent a trade mark graphically (from
1 October 2017 onwards).
• A new base date for proving use of an earlier trade mark in an opposition (changed from the publication date of the later application to the filing date (of the later application)). This removes one of the key weapons that a later filer could rely on in order to strengthen its position, that is delay in prosecution and, as a result, publication.
• Broadening the definition of trade mark infringement to include, in some cases at least, goods in transit (through the EU).
• Narrowing the own name defence to trade mark infringement to cover only individuals and not company names.
• A significant reduction in EUTM renewal fees.
In the short term, perhaps the most important change, under Article 28(8), allows the owners of EUTMs dated prior to 22 June 2012, to bring their specification of goods/services into line with the use or proposed use of the registered mark. Appropriate goods or services may be added to these specifications by filing a declaration at OHIM up to 24 September 2016. Holders of qualifying EUTM registrations should therefore conduct an audit of their portfolio, and of their trade mark use in the EU, and, if necessary, deal with any gaps in protection.
None of this will address however perhaps the most fundamental problem facing the EU trade mark authorities and the associated tribunals, namely consistency in decision making, both within trade mark offices (especially the EUIPO) and between offices (national and regional). As we have said before, the only certainty in EU trade mark practice is apparently that there is virtually no certainty in many proceedings. As an example, see the Caffè Nero case discussed in this issue, in which a stylised form of the mark was refused for (international) Class 43 in the face of earlier EUTM registrations for the word mark and another stylised mark for identical services.
What is desperately needed in the European trade mark arena is a superior tribunal that is dedicated to making trade mark (or, more broadly, intellectual property) decisions and that sets, and relies on, precedent. Until we have that, the most important aspect of EU trade mark practice, namely decisions on absolute and relative grounds, will remain what it is today, a form of lottery.