EU trademark law reform enters into force

By Martin Miernicki

The adoption of Regulation (EU) 2015/2424 in December 2015 concluded a comprehensive reform process regarding trademark protection in the European Union. Most importantly, the regulation extensively amends Council Regulation (EC) No 207/2009 on the Community trade mark. On 23 March, important parts of the reform entered into force.[1] At the same time, Directive (EU) 2015/2436 was adopted, which establishes a new framework for the harmonization of national trademark laws.

Important changes to Council Regulation (EC) No 207/2009

Terminology: Throughout the entire regulation, the term (European) Community is replaced by (European) Union so that, most prominently, the trademarks granted under Regulation No 207/2009 are called “European Union trade marks” (EU trade marks) from now on. Moreover, the Office for Harmonisation in the Internal Market is renamed to European Union Intellectual Property Office – Article 2 [hereinafter: EUIPO].  Further terminological adaptions were made in addition.

Subject matter of trademark protection (effective as of 2017): It is no longer a requirement that EU trade marks be capable of being represented graphically. Instead, prospective trademarks must be capable of i) distinguishing goods and services of one undertaking from another; ii) “being represented on the Register of European Union trade marks […] in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.” – Article 4. The second criterion was newly introduced by the reform. Furthermore, sounds and colors are now explicitly mentioned in Article 4.

Application & registration procedure: All applications must be filed with the EUIPO; it is not possible anymore to file such applications with national offices – Article 25(1); the fee structure is changed to a “one-class-per-fee-system”, meaning that fees are payable for single classes of goods and services rather than for multiple classes – Article 26(2). The EUIPO highlights that the fee for one single class will be lower, the same for two classes and higher for more than two classes than prior to the reform.[2] Moreover, renewal fees are reduced. Furthermore, trademark applications must be made in accordance with the Nice Classification established by the Nice Agreement as well as the standards of clarity and precisions – Article 28. As regards the registration procedure, the search report is no longer mandatory – Article 38.

Exclusive rights: The existence of rights acquired prior to the filing date is expressly acknowledged – Article 9(1). Furthermore, EU trade marks confer – in cases where goods from third countries bear identical or not distinguishable signs – the right to prevent third parties from bringing such goods into the Union, even if they are not intended to be released to the European market, unless it is proved that the exclusive rights would not be enforceable in the country of final destination – Art 9(4) (goods in transit).

Limitations to exclusive rights: Amongst other changes, it is specified that (only) a natural person cannot be enjoined from using his or her name in the course of trade on the basis of an EU trade mark – Article 12.

Certification marks (effective as of 2017): A new chapter – Articles 74a-74k – is introduced which provides for a new type of EU trade mark, the EU Certification mark. Such trademarks are capable of distinguishing goods and services which are certified by the owner in respect of material, mode of manufacture etc. from goods and services where this is not the case.

Numerous further amendments were made and include changes to the absolute and negative grounds for refusal (Article 7, 8), the new intervening right which provides for a defense in infringement proceedings (Article 13a) and many administrative and procedural adaptions.


Impact of the reform

The reform modernizes the trademark framework and adapts it in many respects to what had been common practice or established case law. However, novelties introduced by Regulation (EU) 2015/2424 such as the intervening right or the rules regarding goods in transit should be kept in mind. The terminological changes lack substantive content, but underline the development from the European Communities to the European Union as a consequence of the Treaty of Lisbon.  As regards the harmonization of national trademark law, one will be able to assess the broader impact of Directive (EU) 2015/2436 on the respective national statutes once transposition is completed, a task for which members states are given several years. The previous directive is repealed as of January 2019.

[1] A number of rules will enter into force in October 2017.

[2] The applicable fees are listed in Annex I of the regulation.