Tahir's Tips: EU trademark reform and Brexit

While the true impact of Brexit may take a few years to be felt, speculation over the implications for the UK began immediately. With the EU trade mark system well established, and heavily relied upon by many UK businesses, brand owners should consider taking a proactive approach to ensure their marks remain adequately protected.

Adding to the uncertainty introduced by Brexit, there's also been a reform of the European trade mark regime, which could still affect you and your business.

In this week's tips, we run through the top ten most important changes introduced by the new European Regulation and how it could affect any trademarks you hold, before considering the best steps for you, post-Brexit.

Reform

In 2008, the European Commission decided a review of the European trade mark system was necessary in order to streamline procedures, support anti-counterfeiting measures and to better reflect modern business practices. In March of this year, the reform entered into force.

So, what’s changed?

1. Introducing you to the European Union Trade Mark

Previously, if you had registered a trade mark in Europe, you would have held a Community Mark. Now you've got a European Union Trade Mark (EUTM). Instead of dealing with the Office for Harmonisation in the Internal Market (OHIM) when registering a new mark, or update your existing one, you'll need to speak to the European Union Intellectual Property Office (EUIPO).

2. It’s easier to register smells and sounds

While it’s always been theoretically possible to register smells and sounds as trade marks, in practice it was hard to meet the requirement of representing them graphically. EUTMs now just need 'clarity and precision’, so the authorities can determine the extent of the protection sought.

3. You could lose some protection

The new Regulation makes clear that the words used in the class specification are to be interpreted literally – meaning you need to carefully and specifically identify what types of goods or services you want your EUTM to cover.

The change is also retrospective and applies to marks that were already registered – so you could lose protection if your existing marks aren't specific enough. There is a six-month window to make some changes to make sure you're properly covered – but this will run out on 24 September 2016.

4. The reasons to refuse applications just got wider

Previously, the registry could refuse an application for a shape mark where the shape itself resulted from the nature of the goods, or where it was necessary to achieve a technical result. This has now been extended beyond shapes, to ‘other characteristics’. This is an absolute ground for refusing the application - which means it can't be overcome by showing that the mark is distinctive. There is also a mirror provision to allow an existing mark to be challenged for this reason.

5. ... as have the relative grounds for refusal and invalidity

Owners of a designation of origin or a geographical indication can rely on those rights to prevent the registration and use of a subsequent EUTM. Further, protection for marks with a reputation has been extended so that an opposition to a trade mark opposition can be based on a reputation, irrespective of whether the goods or services covered by the opposed application are similar or dissimilar to the goods or services for which the reputation is claimed.

6. What counts as infringement has been expanded on

The list of acts that constitute infringement have been added to, to specifically include:

* Use of a trading name or company name (trade mark owners that don't currently subscribe to a company name watching service should consider doing so)

* Various preparatory acts, including adding a trade mark to packaging or labels; and

* Use of registered marks in comparative advertising that does not comply with the Comparative Advertising Directive

7. Counterfeits travelling through the EU can be seized

EUTM owners can now seize counterfeit goods travelling throughout the EU, even if those goods aren't intended for sale in the EU market. While this sends out an important message to counterfeiters, how useful it will be remains to be seen, as alleged infringers have a defence if they can show there would be no trade mark infringement in the intended final destination of the goods.

8. Narrowing of the 'own name’ defence

The 'own name' defence can no longer be relied on by companies. Only natural persons can now assert that they were using their own name or address in accordance with honest business practices as a defence to infringement. Conducting appropriate searches prior to adopting a trading name or company name has become even more important.

9. Proving the use of marks registered more than 5 years ago

In infringement proceedings, defendants can now put trade marks owners to proof in respect of older marks. Where the mark has been registered for more than 5 years, defendants can require owners to demonstrate that the mark has been used in the five-year period prior to the commencement of infringement proceedings.

10. Reduced fees (yay!)

A new fee structure, where applicants pay per class, has been introduced, which the European Commission predicts will actually save businesses up to 37%. The fee for online filing, opposition, invalidity or revocation proceedings have all been reduced, as has the cost of filing an appeal.

Effect of Brexit

While the UK remains a full member of the EU, EUTMs remain valid in the UK.

Currently, the UK government is consulting as to how to proceed once the UK has left the EU. While UK businesses will still be able to register and rely on EUTMs, which will cover all remaining EU Member States, there is uncertainty as to the status of protection in the UK.

Prudent trade mark owners, who need to be able to rely on protection in the UK, should take steps to register the mark domestically now to ensure their marks have priority, in case the the UK less beneficial status than it currently has under the current EUIPO system.

For more information on Industry member, Tahir, visit his personal partner page on the Sheridans website. To contact him directly, visit The Industry Directory, email [email protected] or telephone 020 7079 0103.