Recast Trade Marks Directive 2015/2436 - Main changes - Tomás Lorenzo Eichenberg Intellectual Property European Commission, DG GROWTH ECTA Workshop Riga, 8 December 2016
Overview A. Background of trade mark reform B. Adoption and entry into force C. Main changes brought by Directive 2015/2436 D. Conclusions
A. Background of trade mark reform in EU Directive 89/104/EEC (1989), codified as 2008/95/EC Regulation (EC)40/94 (1993),codified as (EC) 207/2009 EU IP Strategy need for overall assessment - COM(2008)465 Council conclusions (2010/C 140/07) MPI Study on the overall functioning (2009-2011) IP SM Strategy need of modernisation - COM(2011)287 COM Impact Assessment - SWD(2013)95
B. Adoption of reform and entry into force COM package proposals (COM(2013) 161/162) of 27/03/2013 Reform package approved by the EP on 15/12/2015; Recast Directive (EU) 2015/2436 (repealing Directive 2008/95/EC with effect from 15/01/2019) published in OJ on 23/12/2015 and in force since 12/01/2016; Member States obliged to transpose that new Directive by 14/01/2019 (exception: asto Art45 by 14/01/2023 only!) Reg. (EU) 2015/2424 amending Reg. 207/2009 in OJ on 24/12/2015 and in force since 23/03/2016 (phased approach for amendments becoming effective due to need of enacting new secondary legislation)
C. Main changes in Directive 2015/2436 (I) Modernised TM definition through abandonment of graphic representability requirement (Art 3): signs must be representable on register in a manner enabling competent authorities/public to determine clear & precise subject matter of protection need for all types of trade marks to comply with Sieckmann criteria (recital 13!) in order to fulfil objectives of registration system intention not to permit boundless extension of admissible ways to represent a sign but to provide for more flexibility while ensuring greater legal certainty & predictability (EM, 5.3, p. 7), latter objectives prevailing! Specific COM ideas for implementing corresponding Art 4 EUTMR reflected in draft Implementing Regulation currently under discussion in Committee on Implementation Rules under Art 163 EUTMR.
C. Main changes in Directive 2015/2436 (II) Codification of common rules for the designation & classification of goods/services (Art 39) Follow principles established by CJEU in C-307/10 IP Translator; Designation to be sufficiently clear and precise to enable authorities/public to determine extent of protection on basis of application alone (see EUTMDN 20/02/2014 Comm. on criteria for determining clarity & precision of term) General indications incl. in class headings or other general terms may be used if they comply with requisite standards of clarity and precision (see EUTMDN 20/11/2013 Comm. considering 11 as non-acceptable) Means what it says approach : no longer coverage of all possible goods/services falling into a certain class but only inclusion of those clearly covered by the literal meaning of the class heading/general term. No harmonisation for the past (no article similar to Art 28(8) EUTMR)!
C. Main changes in Directive 2015/2436 (III) New absolute and relative grounds of refusal on geographical indications in line with EUTMR, complemented by (only!) AGs on traditional terms for wine & specialities guaranteed AG: Art 4(1)(i) making global reference to Union legislation/national law or int. agreements providing for GIS protection; new ground intended only to apply to national GIS not yet covered by Union legislation (i.e. non-agricultural area); AG: Art 4(1)(j) & (k) making global but exclusive reference to Union legislation or int. agreements protecting traditional terms for wine and traditional specialities guaranteed; RG: Art 5(3)(c) applying toprior GIS conferring on the authorised person the right to prohibit the use of a subsequent trade mark.
C. Main changes in Directive 2015/2436 (IV) Reinforced protection against bad faith trade mark filings AG: Art 4(2) now mandatory ground for invalidity: registered TM liable to be declared invalid where applied for in bad faith. Member States may also provide that such trade mark is not toberegistered. RG: Art 5(3)(b) new mandatory opposition/invalidity ground for TMs applied for by agent without the proprietor s authorisation (=Art 6septies PC); RG: Art 5(4)(c) kept as optional opposition/invalidity ground for bad faith applications of TMs liable to be confused with earlier marks protected abroad. Prohibition of use/demand transfer of mark: new Art 13 entitling TM proprietor to oppose use by unauthorised agent or demand assignment of TM in his favour.
C. Main changes in Directive 2015/2436 (V) Reinforced protection for TMs with reputation in a Member State RG: Art 5(3)(a) now mandatory ground entitling right holder to oppose/ request invalidity of TMs the use of which without due cause would take unfair advantage of, or be detrimental to, its distinctive character or repute; Prohibition of use: Art 10(2)(c) now mandatory base entitling proprietors of reputed TMs to prevent use which without due case takes unfair advantage of, or is detrimental to, its distinctive character or repute; Both provisions now also with updated wording to comply with CJEU in C-292/00Davidoff (no matter whether g/s similar or not).
C. Main changes in Directive 2015/2436 (VI) New right to prevent counterfeit goods being placed in a customs situation (transit, trans-shipment, warehousing, free zones etc.) when not intended for the EU market (Art 10(4))! Sole condition: goods need to bear without authorisation a mark which is essentially identical to TM registered in a Member State; Plea available to declarant/holder of goods but only before judicial authority competent to decide on infringement: entitlement of TM owner shall lapse if the declarant/holder of goods is able to prove there that the former cannot prohibit the placing of the goods on the market in the country of final destination. COM notice on IPR customs enforcement 5 July 2016 (2016/C 244/03) New right to prohibit preparatory acts in relation to the use of packaging or other means (Art 11)
C. Main changes in Directive 2015/2436 (VII) Clarification that TM Rights are conferred without prejudice to prior rights (Art 10(2)) Complemented set of trade mark limitations (Art 14) Para 1 on own name defence now limited to names of natural persons; Para 2 no longer limited to the use of descriptive terms but also (logically) covering the use of non-distinctive signs; Para 3 now covering referential use in general for the purpose of identifying or referring to the goods or services as those of the proprietor.
C. Main changes in Directive 2015/2436 (VIII) More transparent rules on the use requirement (Art 16) Para 1 confirms start date of relevant 5-year period being date of completion of registration procedure and clarifies specific limits/sanctions to apply in case of non-use; Para 2-3 establish specific start of five-year period in case of postopposition procedure and with regard to International registrations (IRs); Para 4 provides for new obligation to enter start date in the register (except for IRs!); Para 5 codifies CJEU in C-553/11 Proti whereby use in different form not altering distinctive character of TM as registered constitutes use regardless of whether TM in the form as used is also registered in name of proprietor.
C. Main changes in Directive 2015/2436 (IX) Reinforced rules on non-use defence in infringement proceedings Art 17 now provides for mandatory defence: at defendant's request, proprietor has to furnish proof that TM was put to use during 5-year period preceding date of bringing the action; Note: successful defence has only effect inter partes and leads to dismissal of infringement action as unfounded (distinct from revocation with erga omnes effect!) Art 18 (on intervening rights and inasmuch as referring to Art 46(3)) additionally strengthens position of a defendant using a later registered TM: if earlier TM was not used during 5-year period preceding filing/priority date of later TM, proprietor is not entitled to prohibit use of the later TM (i.e. no way to remedy that deficiency afterwards!).
C. Main changes in Directive 2015/2436 (X) New provisions on TMs as objects of property, including their applications (Art 26), in particular Art 22 on transfer (separate from undertaking; transfer of latter includes TM if not provided otherwise; recordal must bepossible) Art 25(3)-(5) on licensing (defining legal position of licensee in case of infringement; recordal to bepossible). Registration of collective TMs (association as owner, for exclusive use by its members) now mandatory (Art 29 36); Registration of certification TM left optional (Art 28(1)), but harmonisation extends to definition (Art 27(a)) & ownership (Art 28(2)) to ensure clear demarcation from collective TM.
C. Main changes in Directive 2015/2436 (XI) Office-based opposition procedure (Art 43) Offices allowed to keep ex-officio examination of RG in Art 5 (orig. Art 41 of COM Proposal deleted; obligation to accept coop. agreements though, Art 5(5)); Obligation to make available procedure before the offices for filing oppositions based on (all) the grounds in Art 5 (i.e. only RG, no AG!) Procedure to be "efficient" and "expeditious" (see also Art 62(4), 41(2) TRIPS!) Para 2: Minimum harmonisation as to legal standing to file opposition; latter can be based on one/more earlier rights of same proprietor Now mandatory non-use defence for that procedure (Art 44) In line with EUTMR (see its amended Art 42(2)) now it is the five-year period preceding the filing/priority date of later TM which is relevant (44(1), 46(2))!
C. Main changes in Directive 2015/2436 (XII) Office-based procedure for revocation/invalidity (Art 45) Asfor opposition, procedure to be "expeditious" and "efficient"; Grounds: Art 19 & 20 (revocation), Art 4 & 5(1) to (3) (minimum invalidity); Para 4-6: Minimum harmonisation as to legal standing to file application; latter possible against part/totality of g/s & on basis of one/more earlier rights. (Double) Non-use defence (Art 46): At owner's request of contested TM, proprietor of earlier TM has to furnish proof that TM was put to genuine use: during the 5-year period preceding the date of application for declaration of invalidity, and (where applicable) during the 5-year period preceding the filing/priority date of the later TM!
C. Main changes in Directive 2015/2436 (XIII) Addition of new defence on lack of distinctive character or of reputation of an earlier mark (protecting intervening rights and) precluding a declaration of invalidity (Art 8) New common provisions onthe consequences of revocation (Art 47(1)): ineffective as of date of application unless an earlier date on which one of the revocation grounds occurred is fixed at request ofinvalidity (Art 47(2)): ineffective as from the outset.
D. Conclusions Recast Directive 2015/2436 constitutes an important step in modernising and further harmonising Member States' TM laws. Its success will obviously depend on a timely and accurate implementation. While some guidance is to come from the new secondary legislation for the EUTM, the Commission intends to organise specific transposition workshops to assist national authorities. Member States have the opportunity to go beyond minimum harmonisation.
Thank you very much for your attention! Tomas.Eichenberg@ec.europa.eu