April 2016

COMMENTARY
Overview of European Trade Mark Law Reforms
Following the Max Planck Institute for Intellectual marks” (“EU TMs”). The “Office for Harmonisation in the
Property and Competition Law’s “Study on the Overall Internal Market” (“OHIM”) has also changed name and
Functioning of the European Trade Mark System” and will now be known as the “European Union Intellectual
the adoption of its recommendation by the European Property Office” (“EU IPO”) (Article 1 EUTMR).
Commission (see our Commentary from August 2013),
the European Parliament approved a package of
reforms to European trade mark law in December 2015.
Tightening the Rules for Trade
Mark Applications
This constitutes the most significant change to European Non-Graphical Representation. Trade marks will no
trade mark law since the introduction of the Community longer need to fulfil the requirement for graphical rep-
trade mark in 1996. The reforms are set out in the EU resentation (Article 4 EUTMR, Article 3 EUTMD). Instead,
Trade Mark Regulation 2015/2424 (the “EUTMR”), which under the new regime, trade marks must be capable of
came into force on 23 March 2016, and the EU Trade “being represented on the register in a manner which
Mark Directive 2015/2436 (the “EUTMD”), which came enables the competent authorities and the public to
into force on 13 January 2016 and must be transposed determine the clear and precise subject matter of the
into national law by Member States by 14 January 2019. protection afforded to its proprietor”. The recitals to
the EUTMR and EUTMD further state that trade marks
This Commentary highlights some of the most sig- should be permitted to be represented in any appropri-
nificant changes that will be made to the European ate form using generally available technology as long
trade marks regime as a result of the EUTMR and as the representation is “clear, precise, self-contained,
EUTMD which we believe are most relevant to our cli- easily-accessible, intelligible, durable and objective”.
ents and friends.
This is an important change in European trade mark
law and will likely make it easier to register nontradi-
New Terminology tional marks, such as sounds or colours. The change
All references to “Community” have been changed also marks a welcome step forward in terms of EU
to “European Union”, which means that “Community trade mark law meeting the needs of a technologically
trade marks” are now called “European Union trade evolving world.

© 2016 Jones Day. All rights reserved.

Designation and Classification of Goods and Services. The indications, traditional terms for wine, traditional speci-
EUTMR and EUTMD incorporate the Court of Justice of the alities guaranteed or plant varieties (Article 4(9) EUTMR,
European Union (“CJEU”) findings from the IP Translator case Article 4(1) EUTMD).
(C-307/10) (Article 28 EUTMR, Article 39 EUTMD) regarding
Nice Classification class headings. Under the new system,
trade mark owners will need to identify the goods and ser-
Changes to Opposition Proceedings
vices for which the application is made with sufficient clar- Opposition Deadline. The period for opposition to interna-
ity and precision so that the extent of the protection can be tional registrations designated to the EU has been changed.
readily determined. Although general indications included in Previously, the period was three months starting from the
the class headings of the Nice Classification can be used if sixth month from publication. Now the period will be three
they are sufficiently clear and precise, the term used will be months starting from the first month of publication. This will
interpreted literally in order to identify the goods and ser- result in a significant acceleration of the opposition proceed-
vices included under it. ings in the future.

Owners of EU TMs filed before 22 June 2012 will be able to Change of Computing the Grace Period Before Use in
declare, within six months of entry into force of the EUTMR, Commerce Is Required. The relevant five-year period is now
that they intended to file their marks in respect of goods and calculated by reference to an earlier starting point. It no lon-
services other than those covered under the literal meaning ger commences with the publication of the younger mark but
of the relevant class heading. The additional goods and ser- rather its application or priority date (Article 42 (2) EUTMR,
vices must have been included in the Nice Classification at Article 44 (1) EUTMD). This change adheres to the expedited
the time of application. Trade mark owners who registered processing at the Office, with the result that new trade mark
trade marks before this date should therefore review their applications appear in the online databases long before their
trade marks to ensure that all necessary goods and services official publication date.
headings were included in their registrations.

Jones Day is currently implementing a review process for

Improved Harmonisation
“European Union trade marks” administered by it, informing Cancellation Actions To Be Available Before All National
our clients in due course about their options. Offices. Currently, invalidity proceedings involving national
trade marks may be initiated (i) in certain Member States
Absolute Grounds for Refusal. The absolute grounds for before the national trade mark office or before the compe-
refusal to register a trade mark which cannot be overcome by tent court (such as in Germany and England) and (ii) in other
evidence on acquired distinctiveness have been extended Member States before the competent court only (such as in
to include signs which consist exclusively of a “shape, or France). Pursuant to the EUTMD, all Member States must set
other characteristic” [emphasis added] which results from in place an “efficient and expeditious administrative proce-
the nature of the goods themselves, is necessary to obtain dure before their offices for the revocation or declaration of
a technical result or gives substantial value to the goods invalidity of a trade mark” (Article 45 EUTMD). Member States
(Article 4(9) EUTMR, Article 4(1)(e) EUTMD). The addition of (such as France) will now have to implement an administrative
the words “or other characteristic” broadens the scope of this cancellation action of national trade marks. This will undoubt-
ground of refusal and will be particularly relevant when con- edly improve the cost and time efficiency of national trade
sidering nontraditional marks such as scents. The basic idea mark cancellation proceedings EU-wide.
behind this is to prevent protection of features or character-
istics that are inherent in a product or are entirely functional. Avoiding Trade Marks Becoming Generic. EUTMR confirms
the ability, for EU trade mark owners, to obtain from dictionar-
There are also new absolute grounds for refusal to register ies an indication that a word, such as a dictionary entry, con-
marks which constitute designations of origin, geographical stitutes a registered trade mark. Such provision is an efficient

Jones Day Commentary

tool to prevent EU trade marks from becoming generic. mark on packaging, labels, tags, security or authenticity fea-
Article 12 of the EUTMD enlarges such provision to encom- tures or devices, where there is a risk that these materials
pass national trade marks as well. This new provision should could be used in relation to goods and services and such use
be very welcomed by trade mark owners. would constitute infringement of the owner’s rights (Article
9a EUTMR, Article 11 EUTMD). Trade mark owners will also be
Freedom of Expression. Recital 21 of the EUTMR incorpo- able to prevent others from offering, placing on the market,
rates in the trade mark law landscape the fact that “uses stocking, importing or exporting any such offending materi-
made by third parties for the purpose of artistic expression als. This development will be welcome news for trade mark
should be considered as being fair as long as they are at the owners as it will strengthen their ability to protect their marks
same time in accordance with honest practices in industrial at an earlier stage by preventing the affixing of infringing
and commercial matters”. Such reference, which is in line with marks to products.
intellectual property law reforms EU-wide, will provide a legal
basis in all Member States so as to ensure that trade mark “Own Name” Defence. The “own name” defence has now
law is applied in a way that ensures the full respect of fun- been limited so that only natural persons can rely on the fact
damental rights and freedoms, in particular the freedom of that they are using their own name or address (Article 12(1)
artistic expression. (a) EUTMR, Article 14(1)(a) EUTMD). Companies can no lon-
ger rely on this defence, and this will therefore increase the
importance for companies of filing relevant trade marks early.
Improved Tools for Countering Infringement
Goods in Transit. Trade mark owners will now be able to pre-
vent third parties from bringing goods, including packaging,
A Fairer Fee Structure
in the course of trade into the EU, even if those goods are The fee structure for EU TMs is changing to encourage appli-
not being released for free circulation in the EU (Article 9(4) cants to register EU TMs in the necessary classes only. The
EUTMR, Article 10(4) EUTMD). These goods must bear a mark new fees will be €850 for an application in a single class,
that is identical or cannot be distinguished in its essential €900 for two classes and a further €150 for each additional
aspects from the owner’s trade mark. Under the previous class. As a result, applicants will pay a lower fee than before
rules, only goods that were intended to be put into circulation if they apply for only one class, the same fee if they apply for
in the EU could infringe, whereas under the new rules, the two and a higher fee if they apply for three or more. Renewal
mere transporting or storing of goods (including temporary fees have been substantially reduced and will now be the
storage, trans-shipment and warehousing) through or in the same as application fees.
EU could constitute infringement.
These lower fees will be welcomed by all businesses, par-
This change will no doubt be welcomed by brand owners, par- ticularly small- to medium-sized enterprises which may have
ticularly in the fashion and pharmaceutical industry where coun- previously been deterred by the amounts involved.
terfeiting is a significant problem. The fact that non-EU goods
may be targeted is also likely to make European ports more
important in the fight against global counterfeiting. It is impor-
Conclusion
tant to note, however, that the right to prevent goods in transit It is evident that the reform package constitutes a significant over-
will lapse if the owner of the goods can show that the trade mark haul of trade mark law within the EU and that these changes seek
owner is not entitled to prevent the goods from being placed on to adapt EU trade mark law to meet the needs of a technologi-
the market in the country of the goods’ final destination. cally evolving world. The changes to the application rules mean
that a wider variety of marks can likely now be registered, which
Preparatory Acts. It is now an infringement to undertake a will be a welcome development for trade mark owners and appli-
preparatory act, in particular affixing a similar or identical cants. Trade mark owners’ rights have also been strengthened,

Jones Day Commentary

in particular with broader infringement provisions, and it is likely
these changes will further help trade mark owners act more effec-
tively against infringing products.

In view of these sweeping changes, it will be more interesting

than ever to see how case law from the CJEU develops in
relation to EU trade mark law over the next few years.

Lawyer Contacts
For further information, please contact your principal Firm
representative or one of the lawyers listed below. General
email messages may be sent using our “Contact Us” form,
which can be found at www.jonesday.com/contactus/.

Primary Trade Mark Law Contacts

Marc F-X Groebl Emmanuel G. Baud

Munich Paris
+49.89.20.60.42.200 +33.1.56.59.39.18
mgroebl@jonesday.com ebaud@jonesday.com

Jakob Guhn Rebecca Swindells

Düsseldorf London
+49.211.5406.5500 +44.20.7039.5845
jguhn@jonesday.com rswindells@jonesday.com

Additional Contacts

Indradeep Bhattacharya François Holmey

London London
+44.20.7039.5277 +44.20.7039.5253
ibhattacharya@jonesday.com fholmey@jonesday.com

Edouard Fortunet
Paris
+33.1.56.59.38.34
efortunet@jonesday.com

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