Trade mark law across Europe is changing

Why is the law changing?

The Trade Marks Directive (EU) 2015/2436 (the "Directive") should have been implemented by all member states on or before 14 January 2019 (with the exception of one provision relating to administrative procedures – see below).  A number of member states have, to date, amended their law to implement the necessary changes, including:  Czech Republic, Denmark, Germany, Slovakia, Spain, Sweden and the UK.  

A great many of the changes are technical in nature; the greatest benefit to companies being that they harmonise national trade mark laws and bring national trade mark law into line with the EU trade mark regime. 

What is changing?

As each member state's law starts from a slightly different place, the changes being made in each one differ.  Some of the major changes are listed below.

Definition of a trade mark is now broader (or is it?):  The change that has been most widely heralded is the removal of the need to represent a mark graphically. This means that it should be possible to register marks comprising sounds, smells, moving images, holograms and multimedia, as well as the more traditional words, figurative marks and shapes.

However, the changes mandated by the Directive provide that a mark has to be represented "in a manner which enables the registrar and the public to determine the clear and precise subject matter of the protection afforded to the proprietor". It has been observed by the General Court in Red Bull (Joined Cases T-101/15 and T102/15) that this new wording, or rather the equivalent in Regulation 207/2009 as amended, is more restrictive than the previous wording.  

Consequently, although the change may, at first glance, appear to open up registration to far more marks, in practice, there will only be a few non-traditional marks which will be sufficiently clear and precise to fall within the definition of a trade mark.

The fight against anti-counterfeits is now much easier:  The law as it previously stood following the CJEU's decision in Philips/Nokia case (Joined Cases C-446/09 and C-495/09) made it almost impossible to stop counterfeit goods in transit through the EU.

In a welcome change reflecting the lobbying that has taken place since this case, provisions were contained in the Directive providing that potentially counterfeit goods originating outside the EU may be detained by the customs authorities when they are in transit through a member state without being released for free circulation. The burden for proving that the goods should not be seized will then shift to the importer or holder of the goods who will have to prove that the proprietor is not entitled to prohibit the marketing of those goods in the country of destination.

Trade mark rights have been strengthened:  The provision against anti-counterfeits is not the only way in which the rights of the trade mark owner have been strengthened.  For example, a trade mark owner will also be able to act against the use of the trade mark as part of a trade or company name and against the use of the trade mark in comparative advertising in a manner that is contrary to the Comparative Advertising Directive 2006/114/EC. 

The 'use it or lose it' principle has been strengthened:  The quid pro quo for granting a right which is not time-limited has always been that the trade mark owner must use the mark.  In the EU, the requirement is that a trade mark must be used within five years of being registered otherwise it will be vulnerable to being revoked for non-use.  The Directive makes such revocation proceedings easier and cheaper; by 14 January 2023, each member state must provide that revocation proceedings (and opposition proceedings) can be commenced before the national intellectual property office.  In many member states, such actions can, at present, only be brought before the courts e.g. in Germany, France, Italy and Spain.  In contrast, the UK IPO has had jurisdiction over such actions for many years and the Benelux IPO has had such jurisdiction since 1 June 2018.

The 'use it or lose' principle has also been strengthened by the Directive which mandates a number of changes which all go to requiring that a trade mark owner prove that the trade mark has been genuinely used in the last five years if that trade mark owner bases an opposition, invalidity or infringement action on that mark.  These changes should already have been implemented in all member states, although as noted above, some have yet to do so.