Changes to the CTM Regulation. Katie Cameron RGC Jenkins & Co PTMG Conference, London, March 2014

Transcription

1 Changes to the CTM Regulation Katie Cameron RGC Jenkins & Co PTMG Conference, London, March 2014

2 Introduction History Max Planck Study European Commission Proposals Substantive provisions Formalities provisions Amendments to CTM Regulation, not Directive to be covered

3 History 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

4 History MPI Study 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.

5 History March 2013 Publication of Commission s Proposals March June 2013 Consultation period

6 History Commission Objectives 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.

7 History Commission Objectives (continued) 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procedures, taking the CTM as a benchmark ; Modernise existing provisions and increase legal certainty by amending outdated provisions, removing ambiguities, clarifying trade mark rights in terms of their scope and limitations and incorporating the extensive case law of the Court of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;

8 History Commission Objectives (continued) To improve the means to fight against counterfeit goods in transit through the EU s territory; To facilitate cooperation between member states and OHIM;

9 History Commission Objectives (continued) Implementation of the Lisbon Treaty Dealing with OHIM surplus

10 What is European? Community Trade Mark to be changed to European Trade Mark OHIM to be changed to European Union Trademarks and Designs Agency (EUTDA)

11 Removal of requirement for graphical representation 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

12 Previous anomaly of requirement for graphical representation which was not required for sound marks (after 2007); colours as such also acceptable Difficulties in registering and searching; Will applicants be able to register Smell marks? Touch marks? Personal movements?

13 Registrability of Certification Marks 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?

14 Absolute Grounds 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

15 Disclaimers Proposal to delete disclaimers; Should these in fact be used more? 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.

16 Abolition of optional National Searches Since 1 January 2009, limited number of countries provided searches; Abolition of mandatory OHIM Searches Limited use? Is this deliberate?

17 Classification 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;

18 Classification 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?

19 Double identity in contentious proceedings Why introduce the adverse effect on the function of the mark requirement? What about the other functions of a trade mark?

20 Reputation in contentious proceedings 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.

21 Bad faith oppositions 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.

22 Proof of use in Oppositions 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.

23 Observations Comments by third parties on absolute grounds registrability of a mark; May be filed: 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.

24 Goods in Transit 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?

25 Private Importation 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 Internet sales? Purchase of counterfeit goods abroad? Similar to Switzerland; How is this to be policed?

26 Preparatory Actions 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 Does this cover buttons for clothing? Historical problem in the UK.

27 Honest use of trade marks own name defence applies only to personal names; Otherwise too easy to set up a company and claim own name? But honest practices requirement; fair use applies to non-distinctive marks; Is this use in the course of trade? Use of third party trade marks to refer to goods or services is provided for. Car repair workshops? If fair and honest

28 Genuine Use of Trade Marks Maintained at five years; Use of mark in slightly differing elements is sufficient; What is slightly differing version is also registered? This is not important

29 Formalities Provisions Filing only possible at OHIM, not national offices; Fee required for filing date; Prevents test filings; Application and renewal fees will be charged on a per class basis Useful to prevent cluttering? Differences in fees possibly not enough to deter unnecessary multi-class filings

30 Formalities Provisions Possible discount for applicants listing goods and services which comply with OHIM s database Does this negate the point of charging per class?

31 What was missed? 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.

32 Thank you! Questions? Katie Cameron, RGC Jenkins & Co