Obtaining a Community Trade Mark (CTM) is the most important thing a business can do to protect its brand and prevent counterfeiting within the EU market. With 40m counterfeit goods seized in the EU in 2013 according to the European commission, counterfeiting is a genuine threat.
Last week, the European commission, parliament and council agreed changes to the EU Trade Marks Directive and the Community Trade Mark Regulation, with the parliament and council due to vote on the new directive and regulation over the next few weeks. There are multiple changes which will impact brand owners worldwide, including the promise that the registration will be faster, cheaper and less burdensome, and the fight against counterfeiting strengthened.
While the majority of the changes will take effect in 90 days, others require implementing legislation from member states and so will not bite for between three to seven years. What are the headlines changes brands need to be aware of?
1) The CTM is no more
The unitary trade mark which confers protection across all member states of the EU will be called the European Union Trade Mark (EUTM) with OHIM renamed as the European Union Intellectual Property Office or EUIPO (not to be confused with the EPO – European Patent Office).
2) Change to official fees
In order to discourage trade mark cluttering, there will no longer be a flat fee for filings in three classes. For brand owners only wishing to file in a single class, the official fees drop from €900 to €850 with those seeking broader protection in three classes seeing an increase from €900 to €1050, and €1200 for those with four classes. While the change in the fee structure is welcome, given the surplus at OHIM, it’s a shame a greater overall cost saving was not possible.
3) Counterfeit goods in transit
In a measure to help in the battle against counterfeiting, new provisions will be introduced so that goods in transit within the EU can be seized and destroyed unless the goods can lawfully be put on sale in the country of final destination.
4) New infringing act aimed at packaging
The amended directive will include a right for brand owners to take action against third parties who offer, stock, import or export packaging, labels or “other security or authenticity features” to which the trade mark is affixed where these will be used in relation to goods and services that would constitute an infringement.
5) Cheaper inter-partes proceedings
Under the new rules, all member states must offer opposition, invalidity and revocation proceeds before the registry so that parties are saved the expense and time delay caused by having to bring proceedings at court. There are four member states where trade mark litigants currently have to go to court to deal with revocation and invalidity matters so this is particularly welcome for those embroiled in disputes in Benelux, France, Spain and Italy. National member states have been given seven years to introduce the necessary changes.
Sarah Wright is a partner and head of trade marks at Olswang
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