Reform of the European Community Trademark regulation
THE ISSUE OF GOODS
After a significant work of revisions, debates and negotiations, on 15th December 2015 the European Parliament approved the legal reforms concerning the Regulation and the Directive of the Community Trademark.
The purpose is to harmonise the different legal rules applicable in the different member States of the European Union.
The new regulation will come into force 90 days after publication of the same in the Official Journal of the European Union, namely on 23rd March 2016.
As to the new Directive, it will come into force on the twentieth day after its publication and should be enacted in the national laws of the European countries within 3 years.
It must be highlighted that member States will be granted seven years to implement/enforce national administrative procedures concerning the nullity and revocation of trademarks at their own Offices.
The major changes which the new Regulation and the new Directive will entail are the following:
- The Office in Alicante will change its name from Office for Harmonization in the Internal Market (OHIM) to European Union Intellectual Property Office (EUIPO);
- the name “Community Trade Marks” (CTM) will be changed to “European Union Trademarks” (EUTM);
- fees will be reduced and the fee method upon filing will be changed: no fixed fee up to three classes is applicable, but a fee for each class of interest (“one class per fee principle”);
- trademark owners will be entitled to seize infringing goods transiting across Europe;
- the deadline for opposition against the Community designations of International Trademarks will change (from 6 + 3 months after publication to 1 + 3 months after publication); for Community applications, the opposition deadline will remain 3 months after publication.
- it will be possible to file oppositions based on PDOs or PGIs.
Above all, the reform raised some alarm with trademark owners. A transitional period of 6 months has been set in order to change the list of the goods and services covered by Community Trademarks filed before June 22nd 2012, if they claim the general titles of the international classification, so that they comply with the requirements of clarity and precision required by the Court of Justice;
Before delving into the heart of the matter, something must be pointed out in advance. The International Classification of Goods and Services, also known as Nice Classification, is a long list of individual goods contained at first in a book, nowadays in a database.
The book is divided into 45 sections, each bearing a Title (the so-called class heading), followed by a very long list of (hundreds) of goods/services. Accordingly, the goods are grouped in 45 classes, each provided with a heading.
A convention is applicable in filing trademarks. Anyone who wished to apply for protection for the endless list of the goods/services existing in a class, for the sake of convenience, was entitled to specify only the class heading and this “conventionally” was meant to include the endless list of the goods/services following the heading.
This convention, applied by all European countries, was based on juridical grounds only in some member States of the European Union, whereas the others only applied this convention by way of practical course of action. This prevented the hundreds of claimed goods/services to be “visually” and immediately identified.
However, a Decision of the Court of Justice, known as IP Translator, established that the above convention entails contrasting interpretation and little clarity and is basically conflicting with the legal advertisement which is required for trademark protection.
Accordingly, after the Decision of the European Court of Justice, the OHIM decided not to apply the convention about class heading any longer in its decisions on oppositions, lapse and nullity actions. The class heading will be construed according to its literal meaning and no longer according to the above convention.
Let us fancy we are a subject who claimed a whole class heading and who therefore was entitled, until recently, to protect, say, 1,000 goods included in the class, by virtue of the above convention. As a result of the new course of the OHIM, the goods/services claimed by the registration have fallen from 1,000 to, say, 900. There are hence about 900 goods referable to the literal meaning and 100 goods which are excluded therefrom. Anyone who claimed the class heading now has a more limited right.
Generally, this is not a serious problem. The literal meaning of the class averagely covers 90% of the goods included in the class. The loss of the right only regards about 10% of the goods/services, generally odd and hardly interesting, although in some cases they may be “heavy”, as was actually the case with the famous translation services comprised in class 41 but not described by the literal meaning of the class heading wording, which gave rise to the IP Translator Decision.
In order to reassure you and provide you with the actual scope of the issue, it is sufficient to examine class 25. The class heading consists of only three words: Clothing, footwear, headgear. Claiming these three words only, we conventionally claim as many as 1,053 different goods nowadays belonging to class 25.
After the change of course of the OHIM, the goods covered by said registration will no longer be 1,053, but about 900. There are often “exotic” goods which are included in the class, but are not comprised in the literal meaning thereof. By way of example, in class 25 the 1,053 goods include “studs for football boots”.
So from a practical standpoint, for conventional clothing manufacturers the loss of the right on this item is not a serious one.
However, there might be companies for which this kind of goods plays a primary role.
OHIM’s new policy was harshly criticised by many law experts, particularly because the rules of the game should not be changed while the match is under way, so those who claimed the whole heading of class 25 did so in order to cover all the 1,053 goods of said class and not only 900 of them. This objection has been deemed to be well-grounded and hence there are news which are of interest to us.
The new regulation establishes that:
We should take all the Community Trademarks claiming the whole class headings and separate them from the remaining Community Trademarks claiming other kinds of goods. We are going to do this.
In this manner, we shall have two groups of trademarks, one including those allowing to submit the so-called integration declaration and the other including marks that will remain as they are.
OHIM, on its side, will provide for each class a list of these goods, sometimes "exotic", sometimes "heavy".
Our office will provide these lists to you, harmonising them with your Community Trademarks. You will receive a list just and only if your Community Trademark is one of those entitled to be submitted to an integration declaration.
You will be requested to browse the list of the goods included in the class but not comprised in the classification. In the above example, this is a list of 153 goods, including studs for football boots. If you find goods which are of any importance to you, we shall submit an integration declaration, including the product which is to be specified as one of those covered by your Community Trademark; otherwise, if the goods are of no interest to you, we shall leave everything the way it is.