EU Trade Mark Reform. Consequences in Latvia Jānis Ancītis Counsellor, Department of Trademarks and Industrial Designs ECTA workshop Implementation of Trade Mark Directive, 8 December 2016, Riga
STRUCTURE OF THE PRESENTATION: (a) Points of TM Directive with the most significant influence for Latvian legislation and practice (b) How they should be reflected in the provisions of law and practice 2
(a) Abolition of the requirement of graphic representability for a sign to be registered as a trade mark (b) - to amend the trade mark definition and to adjust the provisions for filing of applications for registration and for official publication - to elaborate on the Cabinet rules on applications, including rules on representation of different marks (word, figurative, shape, position, pattern, colour per-se, sound, motion, multimedia, hologram marks), acceptable file formats and size - to adjust the technical means for e-filing, examination, publication, storage in data bases, accessibility and search 3
(a) Expansion and specification of absolute grounds for refusal and invalidity regarding: - shape and other characteristics of goods - emblems other than those covered by Article 6ter of the Paris Convention (an option) - protected designations of origin and geographical indications - traditional terms for wine - traditional specialities guaranteed - plant variety denominations (b) - to extend and to specify the existing provisions on absolute grounds - to adjust the technical means for examination accordingly 4
(a) Redetermination of the moment at which the acquired distinctiveness of the mark must be established: - within the registration procedure - within the invalidity proceedings (b) - to decide on the option provided in Art. 4(5) of the Directive (distinctiveness acquired after the filing date) - to specify the provisions (the existing seem more flexible for the applicant / owner of the earlier mark) 5
(a) Specification of relative grounds for refusal and invalidity to cover the extended protection of national and EU marks with reputation, irrespective of similarity / non-similarity of goods / services (b) to restructure and to expand the existing provisions on relative grounds (which are now covering inter alia EU marks with a reputation, protecting them especially in the field of non-similar goods / services) 6
(a) Establishment a posteriori of invalidity or revocation of a trade mark providing the basis for the seniority claim of an EU mark (b) to introduce the corresponding provisions within the invalidity and revocation procedures 7
(a) Specifications in exclusive rights conferred by registration of a trade mark: - extending protection of a national mark with a reputation irrespective of similarity / non-similarity of goods / services - specifying the use of the sign in comparative advertising - specifying the use of the mark on transit goods - specifying the possibility to prohibit preparatory activities (use on packaging, labels etc.) - extending the rights to oppose the use of the mark registered by an agent or to demand the assignment of the mark in favour of the actual proprietor (b) - to adjust the existing provisions on the rights conferred 8
(a) - Limitations of the exclusive rights, leading to restraints within opposition / invalidity proceedings of a later mark, and consequently, within infringement proceedings when opposing use of it: - in case if the earlier trade mark had not yet acquired distinctiveness or the necessary reputation at its filing or priority date - in consequence of acquiescence in the use of a later mark - in case of non-use of the earlier mark (b) - to adjust and specify the provisions on opposition, invalidity and infringement procedures (including provisions on consequences of acquiescence, non-use as defence and intervening right of the proprietor of a later mark as defence) 9
(a) Specifications in the actual use requirements: - the five-year period starts after the post-registration opposition period or after the termination of the post-registration opposition proceedings - in case of international registrations when the protection has been granted (b) - to adjust the provisions on use accordingly, including those on revocation procedures - to resolve the issue of fixing the commencement of the five-year period in the Register and in the technical means for examination 10
(a) Specifications in the provisions on trade marks as objects of property, including the requirement to allow licensing of applications for trade mark (b) - to adapt the provisions on licensing and the office practice to this requirement (until now we are registering only licensing agreements covering the registered marks) 11
(a) Provisions on guarantee marks and certification marks (b) - to introduce the registration of certification marks - to elaborate on the (transitional?) provisions for certification and collective marks in order to exclude the situations of legal uncertainty (when these specific types of marks can be found also in the Trade Marks Register) 12
(a) Harmonisation of requirements regarding designation and classification of goods / services (b) - to adjust the existing provisions according to Art. 39 of the Directive - to decide on the option provided in Art. 42 (class fees also for renewal?) 13
(a) Introduction of administrative procedures: - for declaration of invalidity - for revocation (b) - to decide on enactment of these procedures: - in 2 years or in 6 years? - within the competence of Patent Office or of Industrial Property Board of Appeal? - how to make them compatible with the competence of courts? 14
(a) Taking into account the amount and complicated structure of required amendments: (b) - to decide on: - amending the existing Law On Trade Marks and Indications of Geographical Origin? - drafting of a new legal act? 15
Thank you fo your attention janis.ancitis@lrpv.gov.lv