Overview Of European Trade Mark Law Reforms

Following the Max Planck Institute for Intellectual Property and Competition Law's "Study on the Overall Functioning of the European Trade Mark System" and the adoption of its recommendation by the European Commission (see our Commentary from August 2013), the European Parliament approved a package of reforms to European trade mark law in December 2015.

This constitutes the most significant change to European trade mark law since the introduction of the Community trade mark in 1996. The reforms are set out in the EU Trade Mark Regulation 2015/2424 (the "EUTMR"), which came into force on 23 March 2016, and the EU Trade Mark Directive 2015/2436 (the "EUTMD"), which came into force on 13 January 2016 and must be transposed into national law by Member States by 14 January 2019.

This Commentary highlights some of the most significant changes that will be made to the European trade marks regime as a result of the EUTMR and EUTMD which we believe are most relevant to our clients and friends.

New Terminology

All references to "Community" have been changed to "European Union", which means that "Community trade marks" are now called "European Union trade marks" ("EU TMs"). The "Office for Harmonisation in the Internal Market" ("OHIM") has also changed name and will now be known as the "European Union Intellectual Property Office" ("EU IPO") (Article 1 EUTMR).

Tightening the Rules for Trade Mark Applications

Non-Graphical Representation. Trade marks will no longer need to fulfil the requirement for graphical representation (Article 4 EUTMR, Article 3 EUTMD). Instead, under the new regime, trade marks must be capable of "being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor". The recitals to the EUTMR and EUTMD further state that trade marks should be permitted to be represented in any appropriate form using generally available technology as long as the representation is "clear, precise, self-contained, easily-accessible, intelligible, durable and objective".

This is an important change in European trade mark law and will likely make it easier to register nontraditional marks, such as sounds or colours. The change also marks a welcome step forward in terms of EU trade mark law meeting the needs of a technologically evolving world.

Designation and Classification of Goods and Services. The EUTMR and EUTMD incorporate the Court of Justice of the European Union ("CJEU")...