The new EU-legislation on Trade Marks gets finalised

1.  Union Trademark Regulation

The European Regulation (EU) 2015/2424 of 16 December 2015 (hereinafter the "Union Trade Mark Regulation") which was published on 24 December 2015 introduces a number of important reforms.

This Union Trade Mark Regulation is directly applicable in all Member States and does not need to be transposed into national law. Some provisions come into force as of 1 October 2017 but most will become effective starting from 23 March 2016.

We discuss below the main effects to be applied from 23 March 2016.

1.1. Name change: henceforth “EU Office for Intellectual Property” and “Union trademark”

As of 23 March 2016, the Office for Harmonisation in the Internal Market, in short “OHIM”, will be known as the “European Union Intellectual Property Office, in short “EUIPO”, or “the Office”.

On that same date, the “Community trade mark” (CTM) will be renamed the “European Union trade mark”.

These changes will be automatically implemented; trademark holders will not have to do anything.

1.2.  More legal certainty for designation and classification of goods and services

Goods and services for which a trademark registration is submitted, are categorised according to a classification system, known as the “Classification of Nice”.

The Union Trademark Regulation takes into account the existing practice after the IP-Translator ruling of 19 June 2012 of the EU Court of Justice (hereinafter “the Court”).

In this ruling the Court substantiated itself from the practice whereby trademark holders can often enjoy a too large and artificial scope of protection of their trademark by the single inclusion of a main group of classes of goods and services, the so-called “class-heading-covers-all”-principle.

From now on, the Union Trademark Regulation embeds the principle that a general designation of a trademark, by using a main group from the Classification of Nice, for example main group 41 “Education; leisure and sports”, should be interpreted based on a literal approach, the so-called “means-what-it-says”-principle.

Trademark holders will have to consider, in practice, if the competent authorities and other market participants, among whom their competitors, are able to determine the scope of the trademark protection, solely based on the description of the goods and services.

In our example of main group 41 “Education; leisure and sports”, the trademark holder would be well advised to specify clearly and precisely, within this main group, using a list of accepted terms (in the meantime more than 750 terms), for which domain it wants protection.

This also applies to all trademarks already registered in the past in all 34 classes of goods and 11 classes of services.

The Union Trademark Regulation provides a transitional provision, allowing trademark holders of Union Trademarks requested before 12 June 2012 until 24 September 2016 to adapt their existing general description. Trademark holders who do not make use of this possibility risk seeing the scope of protection of their trademark drop to the literal meaning of their indicated general designation.

1.3  Change in tax system: one tax per class and decrease in taxes for renewal of the trademark

➢    Fee trademark request e-filing

Under the old regulation, an electronic request of an individual Community trademark entailed a basic tax of € 900 for up to three classes of goods or services for a period of protection of 10 years.

The Union Trademark Regulation embodies another philosophy, whereby calculations are made per class. Indeed, for the electronic registration of an individual Union trademark for the first class, a fee of € 850 is charged, for the second class € 50 and for any class of goods and services above the second class a tax of €150.

The new system is advantageous for the trademark holder if he registers his trademark for one single class of goods or services. From two classes and upwards the amount owed will either stay the same or increase.

➢    Fee trademark renewal e-filing

Today, a trademark holder is obliged to pay a tax of € 1350 for the renewal of his trademark up until three classes for a period of 10 years. From the fourth and any subsequent class, a tax of € 400 is due.

The new system charges the same amounts as those of the request of a trademark. For the first class € 850 is charged, for the second class € 50 and for any class of goods and services above the second, a tax of € 150 is due.

You can find the text of the published Union Trademark Regulation here.

2.    The new Trademark Directive

In addition to the aforementioned changes, the European Trademark Directive 2008/95/EG of 22 October 2008 has been replaced by the new Directive (EU) 2015/2436 of 16 December 2015 (hereinafter “the new Trademark Directive”).

This new Trademark Directive was published on 23 December 2015 and entered into force on 12 January 2016. The Member States have been given three years to transpose this new Trademark Directive into their national trademark legislation.

The most important outlines for the Benelux trademark legislation are the following:

➢  Requirement “prone to graphic representation” expires

The new Trademark Directive expands the scope of signs that can be registered as a trademark. No later than 14 January 2019, the Member States of the EU need to have adapted their national legislation with regards to the removal of the requirement of graphic representation.

This clears the way for registering sounds and odours under the trademark law on the condition that: (i) the sign has a distinctive character and (ii) it can be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation offers satisfactory guarantees to that effect.

Besides, the abovementioned Union Trademark Regulation provides the same removal of the requirement of “prone to graphic representation” for Union Trademarks, on the condition that the sign is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

➢    Class taxes

The new Trademark Directive provides a possibility for the Member States to shift to a system in which one tax per class is charged.

➢  An administrative procedure for expiry or invalidity of trademarks

The new Trademark Directive obliges the Member States to offer, by 14 January 2023, an administrative procedure for expiry or invalidity of trademark registrations to their national trademark offices – in Belgium the Benelux Office for Intellectual Property (BOIP).

As a result, trademark holders will only have to initiate a judicial procedure before a court when they disagree in case of appeal.

You can find the text of the new Trademark Directive here.

Belgium, the Netherlands and Luxemburg already concluded a Protocol agreement in this regard, and the Belgian Council of Ministers has approved on 18 February 2016 a preliminary draft of the law.

This preliminary draft alters the Benelux-Treaty concerning the opposition and the adoption of a new Chapter 6bis BVIE for an administrative procedure for expiry or invalidity of trademarks.

This draft now has to pass the legislative procedure.

Besides, the Protocol can only enter into force after each of the three Benelux states has transposed this Protocol into its national legislation.

In any case, it seems that the Benelux-states are right on schedule to offer this within the deadline of 14 January 2023.