Changes to the CTM Regulation

Changes to the CTM Regulation
Katie Cameron
RGC Jenkins & Co
PTMG Conference, London, March 2014
Introduction
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History
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Max Planck Study
European Commission Proposals
Substantive provisions
Formalities provisions
Amendments to CTM Regulation, not Directive to
be covered
History
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July 2009 – Call for tender for a study on the
overall functioning of the trade mark system
February 2001 – Max Planck Institute publishes
the results of a study analysing performance and
setting out possible areas for improvement
Consultation until September 2001
History
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MPI Study
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Harmonisation should be continued;
Alignment of Directive and Regulation was desirable;
Cooperation between OHIM and national offices
desirable;
Specific amendments to TMD and TMR proposed,
including relating to goods in transit.
History
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March 2013 – Publication of Commission’s
Proposals
March – June 2013 – Consultation period
History
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Commission Objectives
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The system should be quicker, cheaper, more reliable
and predictable;
Businesses need better conditions in which to
innovate and prevent counterfeits, including fake
goods in transit.
History
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Commission Objectives (continued)
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Harmonisation of registration procedures, taking the
CTM as a “benchmark”;
Modernise existing provisions and increase legal
certainty by amending outdated provisions, removing
ambiguities, clarifying trade mark rights in terms of
their scope and limitations and incorporating the
extensive case law of the Court of Justice;
History
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Commission Objectives (continued)
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To improve the means to fight against counterfeit
goods in transit through the EU’s territory;
To facilitate cooperation between member states and
OHIM;
History
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Commission Objectives (continued)
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Implementation of the Lisbon Treaty
Dealing with OHIM surplus
Substantive Provisions
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What is “European”?
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“Community Trade Mark” to be changed to
“European Trade Mark”
“OHIM” to be changed to “European Union
Trademarks and Designs Agency” (EUTDA)
Substantive Provisions
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Removal of requirement for “graphical”
representation
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“A trade mark means any sign capable of being
represented in the Register of European Union Trade
Marks in a manner which enables the competent
authorities and the public to determine the precise
subject of the protection afforded to its proprietor”
Substantive Provisions
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Previous anomaly of requirement for “graphical
representation” which was not required for sound
marks (after 2007);
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“colours as such” also acceptable
Difficulties in registering and searching;
Will applicants be able to register
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Smell marks?
Touch marks?
Personal movements?
Substantive Provisions
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Registrability of Certification Marks
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Different from collective marks;
Requires one “regulatory body” which certifies users,
but the regulatory body does not trade;
National Offices not required to provide for
certification marks – difficulties in conversion?
Substantive Provisions
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Absolute Grounds
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Registration may be prohibited in respect of marks
which are not in a script of one of the languages of
the Union, but which, if transcribed or translated,
acquire a meaning which would result in the refusal of
protection.
OHIM Guidelines of January 2014 refer to “official
languages of a member state”, not “official languages
of the EU”
Substantive Provisions
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Disclaimers
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Proposal to delete disclaimers;
Should these in fact be used more?
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Problem of non-distinctive marks being registered due to
addition of device element.
Should the non-distinctive element be disclaimed?
Provides clarity to third parties.
Prevents unfair monopolies.
Substantive Provisions
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Abolition of optional National Searches
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Since 1 January 2009, limited number of countries
provided searches;
Abolition of mandatory OHIM Searches
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Limited use?
Is this deliberate?
Substantive Provisions
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Classification
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Implementation of IP TRANSLATOR
Attempt at clarification
Registered Marks covering class headings - Possibility
to declare that proprietor’s intention “had been to
seek protection in respect of goods or services
beyond those covered by the literal meaning of the
heading of that class”
Once transitional period is over, literal meaning will
be assumed;
Substantive Provisions
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Classification
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Additional layer of confusion?
Intervening rights?
Changes in Nice classification?
Will OHIM be able to cope with the number of these
“Declarations” which may be filed?
Substantive Provisions
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Double identity in contentious proceedings
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Why introduce the “adverse effect on the function of
the mark” requirement?
What about the other functions of a trade mark?
Substantive Provisions
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Reputation in contentious proceedings
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Now includes identical or similar goods or services, as
well as non-similar goods or services;
Confirms the position following case law in the
Davidoff case.
Substantive Provisions
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Bad faith oppositions
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Proposed to be introduced to opposition proceedings;
Initially “where the trademark is liable to be confused
with an earlier trade mark protected outside the
Union”
Why only “outside” the Union?
Proposal now to amend to include “within” the Union.
Substantive Provisions
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Proof of use in Oppositions
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Relevant five year period now precedes the date of
filing/priority of the later application, rather than the
date of publication of the later application.
Similar provisions are now introduced for invalidity
and revocation proceedings.
Substantive Provisions
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Observations
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Comments by third parties on absolute grounds
registrability of a mark;
May be filed:
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prior to the publication of the application;
Prior to the end of the opposition period if no opposition is
lodged;
Prior to the determination of the opposition if any
opposition is lodged.
Substantive Provisions
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Goods in Transit
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Introduced following case law in Philips & Nokia;
Rights owners may prevent the import of counterfeit
goods into the EU without being released for free
circulation;
Requirement for mark to be registered in the country
of destination?
Substantive Provisions
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Private Importation
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Importation into the EU of goods which infringe a
CTM may be prevented if the consignor is acting for
commercial purposes, but not the purchaser;
Designed to deal with
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Internet sales?
Purchase of counterfeit goods abroad?
Similar to Switzerland;
How is this to be policed?
Substantive Provisions
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Preparatory Actions
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Covers import of labels or packaging, etc which, when
applied to goods, would constitute infringing goods.
Regulation covers “other means on which the mark
may be affixed”
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Does this cover buttons for clothing?
Historical problem in the UK.
Substantive Provisions
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Honest use of trade marks
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“own name” defence applies only to personal names;
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“fair use” applies to non-distinctive marks;
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Otherwise too easy to set up a company and claim “own
name”?
But “honest practices” requirement;
Is this “use in the course of trade”?
Use of third party trade marks to refer to goods or
services is provided for.
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Car repair workshops? If “fair and honest”
Substantive Provisions
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Genuine Use of Trade Marks
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Maintained at five years;
Use of mark in slightly differing elements is sufficient;
What is “slightly differing” version is also registered?
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This is not important
Formalities Provisions
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Filing only possible at OHIM, not national offices;
Fee required for filing date;
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Prevents “test” filings;
Application and renewal fees will be charged on a
“per class” basis
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Useful to prevent cluttering?
Differences in fees possibly not enough to deter
unnecessary multi-class filings
Formalities Provisions
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Possible discount for applicants listing goods and
services which comply with OHIM’s database
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Does this negate the point of charging per class?
What was missed?
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ONEL case – question about the geographical
extent of use required;
Some national offices’ practices are at odds with
OHIM’s practice
No apparent desire to require national offices’
practices to be harmonised.
Thank you!
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Questions?
Katie Cameron, RGC Jenkins & Co

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