by Maria Miguel Carvalho, Collaborating Member of CEDU
The creation of a community trade mark law by Regulation (EC) n. 40/94, of 20 December 1993, in parallel with the protection that trade marks can benefit from at the national level, achieved a massive success as over 100.000 community marks were registered per year. This success was enhanced because their acquisition by any person (natural or legal, including public entities) through a single registration procedure before the OHIM was allowed as well as it assured a uniform protection and produced the same effects in all European Economic Area.
However, after more than 20 years of its approval, and notwithstanding the entry into force of Regulation (CE) n. 207/2009, of 26 February 2009, on the Community trade mark (TMR), which repealed the first one, a reform was needed in order to make the register system more accessible and efficient to the companies – reducing costs and complexity and raising rapidness and legal certainty. Such changes took place with the approval of Regulation (EU) 2015/2424 of the European Parliament and the Council, of 16 December 2015.
This Regulation constitutes – in line with the Directive (EU) 2015/2436, of the European Parliament and the Council, of 16 December 2016 – the largest and most important alteration to the European trade mark system, having significantly modified the Regulation (EC) n. 207/2009, of 26 February 2009.
The changes introduced came into force on 23 March 2016, except for the ones regarding the points of article 1 indicated on article 4 of Reg. 2015/2424, whose term will begin on 1 October 2017.
Beyond the new designations appointed to this specific private right under analysis, the Regulation and the EUIPO (the community trade mark was replaced by the EU trade mark, the Regulation on Community trade mark is now on the EU trade mark and the office – OHIM – gained its current name, EUIPO), we highlight that the changes do not intend to supress the national trade mark laws, but instead to improve its coexistence by strengthening both the coherence between the Regulation and the national rules and the cooperation amongst the national offices of intellectual property and the EU agency.
Out of the many modifications, we emphasise:
- The elimination of the demand for a graphic representation (article 4, Regulation), which might facilitate the access to the registry by some non-traditional marks;
- The elimination of the possibility of presenting a EU trade mark registration request to the national offices (the request must be presented directly to the EUIPO – article 25, n. 1);
- The convergence with the CJEU case law, in the scope of the “IP Translator” case (Ruling of 19 June 2012, C-307/10), for it after being established in article 28, n. 2 that the products or services to which a trade mark protection is requested must be identified by the proponent precisely and clearly enough so that the competent authorities and the economic agents can determine, in that exclusive basis, the framework of the requested protection. It is fixed that the use of general expressions (sufficiently clear and precise) shall be interpreted in a way that covers all products or services clearly included by their literal meaning (article 28, nº 3 and 5). It is simultaneously predicted a specific regime related to the community trade marks registered to the entirety of a title from a Nice Classification class, whose request had been presented to the OHIM prior to 22 June 2012, with special attention to the need for guarding the legitimate expectations of such registers, whose requests had been presented in accordance with the applicable rules at that time. In relation to these, article 28, n. 8 states that the respective proprietors may declare by 24 September 2016 that their intention at the time of the filling was to seek protection concerning the products and services beyond those encompassed in the literal meaning of this class heading, as long as such products or services are included in the alphabetical list of the class in the Nice Classification edition effective at that time. If they fail to do so, after this deadline, it is extended only to products or services clearly covered by the literal meaning of the indications included in the correspondent class heading;
- The inclusion of fees in the Regulation (annex I), reppealing the Regulation (EC) 2869/95 of the Commision, of 13 December 1995. It shall be noted still that the newly instituted regime may permit a reduction of the applicable fee, mostly in the case of register renovation (since the applicable fee becomes identical to the register request), but it only comprises the request for one class of products or services (one-class-per-fee).