New proposals governing EU laws on trade marks have been approved by the European Parliament. They include changes to Community Trade Mark Regulation (CTMR) and the creation of a new Trade Mark Directive. The new Directive came into force mid-January and its transposition into national laws will be made within three years. The new Regulation will enter into force in March 2016. All references to “Community” shall be replaced with “European Union”, so the Community Trade Marks Regulation (CTMR), will become the European Union Trade Marks Regulation (EUTMR), and the Community Trade Mark the European Union Trade Mark. The European trade marks registry, OHIM, is re-named as the European Union Intellectual Property Office (EUIPO). Here I outline some of the headline changes the new Directive and new Regulation will implement.
Definition of a Trade Mark
Previously trade mark law required marks to be capable of graphical representation in order to achieve registration. The new Directive states that ""a sign should be permitted to be represented in any appropriate form using generally available technology"". The new definition of a trade mark now mentions colours and sounds as potentially suitable types of sign.
The ""own name"" defence has been narrowed down to ""natural persons"", excluding companies, partnerships and other business entities. The ""referential use"" defence applies where the use is ""necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts"". The new Directive extends this defence to all circumstances where the trade mark is being used for the purpose of referring to goods or services as those of the proprietor of the trade mark, for example advertising goods for re-sale and even for parody, as long as such use is fair and honest.
The new Directive provides that a licensee can only bring infringement proceedings with the proprietor's consent, unless it is an exclusive licensee where it may bring such proceedings if the licensor has failed to do so within an appropriate period after being served with formal notice. Under the Trade Mark Act 1994 exclusive licensees only have the right to bring infringement proceedings on their own account at the discretion of the licensor, so the new Directive improves the position of exclusive licensees of trade marks in the UK.
Revised Fee Structure in the new EU Regulation
Instead of the current flat fee covering three classes in a trade mark application, a fee per class system will be applied. This will reduce costs for some applicants. As the current system encourages every applicant to get three classes for the price of one, it is hoped the new pricing system will reduce broad claims for goods and services not really required by the trade mark applicant.
Specification of Trade Mark Registrations
The new EU Regulations now adopt the ruling in the IP translator case. This case concerned an application for registration of the trade mark IP Translator for education, providing of training, entertainment, sporting and cultural activities in Class 41. Following the UK practice that the class heading covered all services in the class, the UKIPO rejected the application on the basis that “translation services” were included in class 41 (even though not mentioned in the heading) and the mark was descriptive of translation services so the mark must be refused. The new EU Regulations now clarify that any application or registration covering simply the Nice class heading will be interpreted as covering only those goods or services specifically listed. Applicants who would like to use class headings must check whether the general indications are not only sufficiently clear and precise but also cover what they need. A six month grace period for amendment will be given for all marks filed before 22 June 2012 where the trade mark is registered in respect of the entire heading of a Nice class.