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European Union Trademark Update

By: Lea Westman

The EU has a regional trademark system which has been continually updated and amended. The most recent changes to the EU trademark include changes in names of the organization, a change in the classification of trademarks, and a change to the rules surrounding transit of goods and trademark law. Under these new rules, current trademark owners have until September 2016 to change declared goods and services on old trademark applications.

The Old Community Trade Mark

The Community Trade Mark (CTM) has long been used in the EU in an effort to create uniformity of trademark law. A CTM registration grants uniform protection and effect across all of the EU, as set forth in Article 1(2) of the CTM Regulation, European Council Regulation No. 40/94. This system was introduced in 1996.

Under this system, CTM applications can be filed by EU nationals or other nationals who belong to WTO countries, the Paris Convention, or countries that have agreements with EU nations regarding trademarks. A single application with the Office for Harmonization in the Internal market (OHIM) leads to a trademark registration in the entire EU.

The European Parliament recently approved Regulation 2015/2424, which amends the CTM system. The new EU Trade Mark Regulation and the corresponding EU Trade Mark Directive entered into force on March 23, 2016. The new regulation includes a number of amendments which affect the community trademark regime and trademark owners’ rights.

New Names for the EU Trade Mark

In 2016, the EU adopted many changed to the CTM system. These changes include a change in name for the CTM to the European Union trade mark (EUTM) and a change of name for the OHIM to the European Union Intellectual Property Office (EUIPO), though both will function similarly to the old versions.

Additionally, many substantive changes to trademark holders’ rights have been made. These include a change in class headings, which affect the application process and fees, the allowance of declarations in response to these changes to protect current trademark holders’ rights, and changes in the rules regarding transit of goods.

Class Headings

Under the new legislation, the filing fees for new EU trademark applications will only cover a first class, as opposed to three classes. Additional fees must be paid to secure additional classes. This aligns with longstanding U.S. practice.

Moreover, the provisions of Article 28(8) alter the interpretation of ICGS (International Classification of Goods and Services) class headings. This includes the list of goods and services covered by UE trademarks applied for before June of 2012.

Prior to June 22, 2012, when a trademark was granted under the CTM, it was deemed to be protected for all types of goods and services listed in ICGS list for that class, provided the trademark was registered with reference to the heading of the relevant ICGS class.

This approach, however, was not supported by EU nation states’ domestic legislation. Most EU countries only extend trademark protection to goods or services that were expressly indicated at the time of registration. Additionally, individual national trademark offices apply different approaches in interpreting class headings.

With the new amendments, broad protection using only class headings will stop. Thus, a CTM filed before June 22, 2012 which specified “musical instruments” in class 15 previously covered all possible goods in that class, which included musical instruments and accessories. However, as of March 23, 2016, the new amendments discontinue this kind of broad protection; now, only “musical instruments” would be covered, not anything else in that class.

Trademark holders who applied before June 22, 2012 may adjust their class headings and lists of declared goods and services to ensure their trademarks coverage is sufficient through a formal declaration to the EUIPO. This also applied to trademark holders which have trademarks that do not have any classification listed. Such declarations must be made by September 23, 2016 to be valid. They should specify the exact goods and services that the trademark is intended to cover. If the trademark holder does not file a declaration, then those trademarks will be deemed to only cover goods and services within the literal meaning of the class heading.

It is worth noting that once declarations have been made, and trademark scope has been specified in goods and services beyond an original class heading, there will be defenses available for potential infringers of that trademark that may not have fallen into the scope of the trademark previously. Specifically, a trademark owner will not be able to assert an infringement claim with respect to a newly specified good or service under an Article 28 declaration against a possible infringement that pre-dates the declaration. Thus, it would be prudent for trademark holders to declare goods and services which are substantially similar to those previously protected.

Transit of Goods

Under the old EU rules, the application of trademark law to transit of goods, whether legal or gray market, was not specifically dealt with. The old Regulation generally discussed the rights conferred by a CTM, and what constituted infringement of a trademark. In Section 9, paragraph 2, the old Regulation listed actions that could be considered infringement absent consent of the trademark owner: offering the goods for sale, affixing the trademark to goods or to the packaging thereof,  stocking the goods for these purposes under the trademark, or putting goods on the market, among other things.

The old rules did not address the transit of goods from countries outside the EU into the EU. The Court of Justice of the European Union issued a few decisions regarding transit of goods, which did not categorize the transit of goods or products with a trademark as trademark infringement, but sometimes allowed trademark owners the right to prevent the release and free circulation of trademarked goods without authorization.

The new Regulation, in section 9, paragraph 4, expressly allows trademark holders to opposed transit of trademarked goods without authorization into or out of the EU. This right is granted even if the goods are not released for free circulation or intended to be placed on the EU market.  Under the new Regulation, trademark owners may contest other customs such as free zones, warehousing, transshipment, temporary storage, temporary admission or inward processing. Customs authorities of the nation states are entitled to take enforcement actions. However, as a caution to trademark owners, section 9, paragraph 4 of the new Regulation also establishes that trademark rights may not be enforced, during the proceedings to determine infringement, if the shipper in questions proves through evidence that the trademark isn’t protected in the final destination country. Thus, though the new Regulation strengthens trademark owner rights in some respects, there are limitations.

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