The Community trademark sheds its skin: the most significant changes introduced by Regulation (EU) no. 2015/2424
On 24 December 2015, Regulation (EU) no. 2015/2424 was published. This Regulation enters into force on 23 March 2016 and − together with Directive (EU) no. 2015/2436 − significantly changes the current European legislation on trademarks, reforming part of Regulation (CE) no. 207/2009 on Community trademarks. The latter will change its name to “European Union trademark” and the current Office for Harmonization in the Internal Market (OHIM) will change its name to “European Union Intellectual Property Office” (EUIPO).
Below is a brief summary of the most significant changes introduced by the Regulation.
The requirement for graphic representation of the trademark is removed [article 4(1)(b)]: an EU trademark might consist of any sign as long as its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. This change implicitly allows, for example, the registration of scent trademarks.
The same degree of protection of trademarks is granted to prior designations of origin and geographical indications [articles 7(1)(j) and 8(4a)]: their earlier registration is expressly capable of hindering the subsequent registration of an identical or similar trademark. They may also be enforced as a basis for an opposition.
Using the trademark in comparative advertising in a manner that is contrary to Directive no. 2006/114/EC is prohibited [article 9(3)(f)].
The transit of infringing goods in the Union is prohibited [recital 16, articles 9(4) and 9a]: it will be permissible for EU trademark proprietors to prevent the entry, transit, transhipment, warehousing, free zones, temporary storage, inward processing or temporary admission of infringing goods within the Union, including when such goods are not intended to be placed on the European market.
Designation and classification of goods and services shall be as specific as possible [article 28]: the general designation of goods and services for which the protection of the trademark is sought (including the general indications of the class headings of the Nice Classification) will be interpreted as including only the goods and services clearly covered by its literal meaning. In this context, by 24 September 2016, with regard to EU trademarks applied for before 22 June 2012 in respect of the entire heading of a Nice class, it is possible to contact the EUIPO to designate the specific goods and services covered by the trademark at issue.
New EU certification marks are introduced [articles from 74a to 74k]: the EU certification mark is an EU trademark capable of distinguishing goods or services that are certified by its proprietor in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods and services which are not so certified, precisely because of the particular characteristics of the goods and services it covers. The applicant for an EU certification mark, within two months of the date of filing, shall also submit regulations governing the use of the certification mark, which shall specify the persons authorised to its use, the characteristics to be certified, how the certifying body is to test those characteristics and supervise its use.
The EUIPO mediation centre is established [article 137a]: the centre at issue, by means of a joint request of the parties and by payment of a special fee (still to be determined), will handle the friendly settlement of disputes based on the Regulation, even if these are already the subject of proceedings pending before the EUIPO (i.e. oppositions, proceedings about trademark revocation or invalidity, appeals against EUIPO decisions) – in case of mediation, in fact, the proceedings in question shall be suspended and the relevant time periods shall be interrupted.
There is a change in the amount of fees [Annex I]: the basic fee for the application for/renewal of an individual EU trademark – by electronic means – is € 850, including only the first class of goods and services; another € 50 for the second class and an additional € 150 for each class exceeding the second will be due.