EU trade mark reforms: Practical implications What you need to know and do. Bex Heard Frédérique Potin Adrian Dykes

Transcription

1 EU trade mark reforms: Practical implications What you need to know and do Bex Heard Frédérique Potin Adrian Dykes 26 May 2016

2 Directive 2015/2436 and Regulation 2015/2424 A new EU order for EUTMs and national TMs 7 years of history Max Planck review of functioning of EU trade mark system Regulation in force from 23 March 2016 (but note effective dates) Directive to be implemented before 23 March 2019, one provision has 7 years The usual reasons Harmonisation, streamlining processes, modernising Bolster TM protection Foster innovation and economic growth Judicial interpretation some time off No transitional or grandfathering provisions Today: Registrability / Customs / Defences

3 What s in a name? Name Changes OHIM = EUIPO CTM = EUTM President = Executive Director (António Campinos) CTM Regulation = EUTM Regulation BUT RCDs remain

4 Money, Money, Money Changes to official fees Old Fee New Fee Filing 1 Class Filing 2 Classes Filing 3 Classes 900 1,050 Renewal 1 Class 1, Renewal 2 Classes 1, Renewal 3 Classes 1,350 1,050 Opposition

5 What is registrable? Graphic representation Requirement for graphic representation eliminated (from 1 Oct 2017) Instead: capable of.being represented on the [Register], in a manner which enables the authorities and public to determine the clear and precise subject matter of the protection afforded to its proprietor. Codifies existing case law (Sieckman) introducing a test / standard for the manner in which a mark is represented Potentially liberalises the type of trade marks that can be registered Sounds? Moving images? Gestures? Probably Smells? Probably not technology not available to fix/record a smell

6 Graphic representation (continued) Example - EUTM ( Intel Inside ) The mark consists of a five tone audio progression of the notes D FLAT, D FLAT, G,D FLAT and A FLAT.

7 Movement mark Example - EUTM (Animated T Deutsche Telekom) Two hands form a "T", in which, from the position of the viewer, the right hand, stretched out flat with fingertips pointing upwards (so that only the narrow edge of the hand is visible) moves from the upper left of the image to the centre, while the left hand, also stretched out flat with fingertips pointing upwards and viewed from the side, moves from the upper right of the image to the centre; both hands then meet in the centre of the image with the upwards-pointing fingertips of the right hand touching the surface of the left hand roughly in the centre ;the viewer therefore sees a side view of the descending left hand coming to rest on the fingertips of the ascending right hand; as a result of this movement, the viewer is able at this point to recognise the letter "T".

8 Grounds for refusal Expanded functionality test Exclusion of signs that consist exclusively of: the shape, or another characteristic, which results from the nature of the goods / necessary to obtain a technical result / adds substantial value Avoids protecting de facto patents / extension of time-limited IP rights Avoids monopoly on functionality Signs excluded because of shape cannot be registered through evidence of acquired distinctiveness Tougher to register?

9 Substantial value Bang & Olufsen loudspeaker

10 Goods and Services Classification Article 28 Declarations Use of Nice Class headings has changed: it means what it says on the tin Following the IP Translator case all EUTMs filed post 22 June 2012 protect only those goods and services covered by the literal meaning of the list of goods/services Article 28 Declaration Simmons & Simmons Translator automatically identifies eligible registrations and prepares Article 28 declarations Up to 23 September 2016 to amend the list of goods and services

11 IP Translator Class 9 Class heading: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring; signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus. Alphabetic list Very Long!! Orphans Animated cartoons; cell phone straps; cleaning apparatus for phonograph records; containers for contact lenses; downloadable image files; downloadable music files; downloadable ring tones for mobile phones; electronic publications, downloadable; eyeglass cases; eyeglass chains; eyeglass cords; eyeglass frames; magnets; magnets (Decorative -); mouse pads; spectacle cases; spectacle frames; wrist rests for use with computers.

12 Goods In Transit Improving Right Holders Position Previous regime ECJ Decision 01 December 2011 (Nokia): goods coming from a non-member State which are imitations of goods protected in the European Union by a trade mark right or copies of goods protected in the European Union by copyright, a related right or a design cannot be classified as counterfeit goods or pirated goods within the meaning of those regulations merely on the basis of the fact that they are brought into the customs territory of the European Union under a suspensive procedure

13 Goods In Transit Improving Right Holders Position New regime - Principle Right holders no longer have to establish that the infringing goods are for release onto the EU market. Infringing goods may be seized whatever the customs regime under which they have entered the EU market, including when they are in transit and aimed at a market outside the EU. Infringing goods must bear a sign which is identical or essentially identical to a registered trade mark, and must concern identical goods.

14 Goods In Transit Improving Right Holders Position New Regime Shift of the burden of proof It is up to the importer to establish that he is entitled to put the goods in question on the market in the country of final destination This can be done only in the course of legal proceedings following the seizure of the goods The importer must establish that (i) the goods are not aimed at the EU market and that (ii) the right holder does not have trade mark protection in the country of destination If the importer is successful, the right holder will have to indemnify it for the loss suffered Therefore, register marks everywhere!

15 Goods In Transit Improving Right Holders Position New Regime Preparatory acts Right holders must be able to forbid the affixing of an infringing sign on a product and any preparatory acts This should entitle right holders to prevent the entering onto the EU markets of labels, packaging or other media on which the infringing sign is reproduced, even if the packaging is empty or if the labels are not yet affixed on the infringing goods

16 Goods In Transit Improving Right Holders Position The balance clearly appears to be shifting towards right holders interests, but right holders must remain vigilant. This will be all the more relevant that new means of manufacturing infringing goods are developed, e.g. 3D printing.

17 Infringement & Defences Infringement Comparative Advertising Broadening infringement: preparatory acts Defences: Articles 12, 13a EUTMR and Article 14, 18 TMD Bolstering rights, but strengthening defences? Limiting own name defence Non-distinctive signs Expanding the descriptive use defence Adding the intervening right defence

18 Infringement & Defences Preparatory acts Article 9(a) EUTMR, Article 11 TMD Where the risk exists that the packaging, labels or any other means to which the mark is affixed could be used in relation to goods or services and such use would constitute an infringement. Counterfeiting Double identity straight forward, but less clear for other cases: see Frisdranken C-119/10

19 Infringement & Defences Comparative advertising a new infringement? EUTMR Article 9(3)(f) A new act that can be prevented: use in a comparative advertisement in a manner which is contrary to the CAD Does this change anything? O2 Holdings An infringing act is still required: double identity usually Probably a for the avoidance of doubt provision EXPENSIVE BA****DS! EXPENSIVE BA

20 Infringement & Defences Own name defence Article 12(1)(a) EUTMR, Article 14(1)(a) TMD An EU trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade the name or address of the third party, where that third party is a natural person. Effectively eliminates the defence for companies: significant change to English law: CIPRIANI, PREMIER, REED, BDO, ASSOS Contrary to two CJEU decisions (CELINE & BUDWEISER) Unclear justifications Some companies now infringe! Company names should be cleared

21 Infringement & Defences Non-distinctive signs Article 12(1)(b) EUTMR, Article 14(1)(b) TMD An EU trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade signs or indications which are not distinctive or which [are descriptive ]. Covers non-distinctive signs, regardless of whether they fit into the categories of descriptiveness

22 Infringement & Defences Referential use Article 12(1)(c) EUTMR, Article 14(1)(c) TMD An EU trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade the EU trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts Recital 21 EUTMR Drawing attention to resale of genuine goods provided in accordance with honest practices Artistic expression should be considered fair Apply with full respect of fundamental rights and freedoms, in particular freedom of expression Comparative advertising?

23 Key Contacts Adrian Dykes Associate Frédérique Potin Managing Associate Sign up to elexica and receive TMT legal updates and resources: elexica.com Bex Heard Supervising Trade Mark Attorney Follow us on

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