With effect of March 23, 2016, the Community trade mark Regulation (CTMR) underwent a profound revision. The most striking amendment concerns the name: from now on, “Community trade marks” are called “European union trade marks”, so that the regulation should be called “European Union trade mark Regulation” (EUTMR). The Office for Harmonisation in the Internal Market (OHIM), which administers applications and registrations of those marks, has also received a new designation, too. It is now named European Union Intellectual Property Office (EUIPO).
Among the substantive amendments, the following may be highlighted:
In order to be eligible for registration as a European Union trade mark, a sign does no longer have to be capable of being “graphically” represented. Any clear and precise way of representing the mark shall be sufficient now. For instance, registrations of sounds and marks with changing designs or colours will be easier to obtain.
In contrast, it will be more difficult to obtain registrations for signs associated with the type, value or a technical function of the relevant goods. Under the old CTMR, such signs were only excluded from protection if they consisted in the shape of the goods. The EUTMR no longer contains such limitation to form marks so that e.g. technical signalling colours may be barred from registration on this ground. That restriction cannot be overcome by acquired distinctiveness of the sign throughout its extensive use in commerce.
- The EUTMR introduces EU certification marks for designating characteristics such as the quality of goods. A requirement for a certification mark to become registered are written regulations governing characteristics to be certified by the mark and how to test those characteristics and to supervise the trade mark use.
- Oppositions to new applications may now be based also on designations of origin or geographical indications. Indeed, geographical indications and designation still will be assessed by EUIPO. However, in particular for national protected indications, which are not always known to the Office, this implements an additional measure for defeating such an application.
- Further, it is now clarified that the use of a sign as a trade or company name may be taken as an infringement of a EU trade mark. Nevertheless, this only applies for uses “for goods or services” and the sole use as a name should thus not be regarded as a trade mark infringement. Therefore, this amendment codifies the established practice of the ECJ (see judgment of 11/09/2007 – C-17/06 – Céline).
- A substantial improvement of protection is introduced for product piracy cases. Until now, goods infringing a Community trade mark were only subject to border detention if released to free circulation in the EU or if it could be established for other reasons that a risk for putting them on the EU market existed (see e.g. ECJ, judgment of 01/12/2011 – C-495/09 – Nokia Corporation). Such limitation does not apply any longer for goods bearing a sign being identical or that cannot be distinguished in its essential aspects from, a European Union trade mark. If, however, the declarant or holder of the goods proves that the owner of the EU trade mark is not entitled to prohibit the import of the goods to the country of final destination – for instance, if the declarant or holder holds earlier national trade mark rights in that country –, the detention shall be lifted.
- Analogous to the German trade mark Act, EUTMR now deals with “indirect trade mark infringement”, i.e. a European Union trade mark may be asserted pre-emptively against labels, packaging etc. as such.