What are the Challenges and News in the Area of Trademarks in the EU Member States?

Author: Ruta Olmane, Latvian Trademark and Design Attorney, European Trademark and Design Attorney, Lawyer at METIDA, President of ECTA; Rasa Slunksnyte, junior consultant at METIDA

5aacdda1750e56a4d34431d7dfbba2b2The European Communities Trade Mark Association (ECTA) organised discussions on the relevant topics: “Implementation of the EU Trade Mark Directive” and “Intellectual Property Implications of the Brexit”. In the discussions, the major focus was placed on the strategy of implementation of the new European Union Trade Mark Directive and necessary actions to be assumed in the national jurisdictions. The discussions have been initiated and moderated by Ruta Olmane, the associated partner of METIDA in Latvia, the President of ECTA.

Already at the end of the year 2015 when new provisions regulating the EU trade marks were made available, implementation of the reform aimed at convergence of the trade mark system at the EU level and national level has started. After the effective date of the Regulation, it is worth looking at the changes in the regulation of national trademarks and the effects on the proprietors of the trade marks.

First of all, the provisions of the directive must be transposed into the national law till 14 January 2019. Thus, uniform requirements for all stages of protection of trade marks will be valid across the EU. Nevertheless, there are mandatory and optional provisions.

Greater Opportunities for the Proprietors of Trademarks

The requirement for graphical representation in the regulation concerning protection of the EU trade marks has been dropped. The Member States will also have to apply the afore-mentioned provision. Thus, the limits of opportunities of future proprietors of trade marks will be extended: a trade mark may consist of any signs; however, the signs must be featured in the register so that the competent authorities and society could precisely identify the object of protection granted to the proprietor. Thus, an applicant willing to register his advertising background as a trade mark may do this much more easily than before.

Door will be more widely opened not only to trade marks which are considered as non-standard trademarks. For example, the well-known recycling symbol sup could be registered as a certification sign and the symbol showing the fineness of silver products 2 could be considered as a warranty label. It is to be noted that protection of certification or warranty signs is attributed to optional provisions of the directive, i.e. the Member States may exercise its prerogative to decide on incorporation of such provisions.

Tougher Sanctions on Shrewd Applicants for Trade Marks

Upon implementation of the directive, not only the list of types of trade marks, but also the requirements set for them may be extended. Unfair intentions of the applicant will be included in the absolute grounds for refusal of registration the conformity to which is examined by national agencies. Existence of earlier similar not registered trademarks or trademarks registered in another state will be included in the list of relative grounds for refusal. Thus, the rights of the proprietors of earlier trademarks will be protected. Hence, prudent applicants will have to examine a broader market share than before and apply for registration only after assessing conformity of the new trade mark to the requirements.

A Possibility to Oppose a Trade Mark Before the Effective Date of Registration

Yet another novelty well-known to the proprietors of the EU trade marks is the so-called pre-grant procedure which also will be obligatory to the Member States. The substance of the procedure is the possibility for the opponents to oppose your trade mark application immediately after publication of the application, already before the effective date of registration. Furthermore, national patent offices cannot register an application for three months from the publication of the application. From the perspective of the proprietor of the trade mark, the afore-mentioned change will be relevant due to more rarely recurring confusion in the case-law. For example, according to the procedure currently in force in Lithuania and some other EU Member States, a decision on registration of the trade mark is taken after conducting an expert examination. Later on, after paying the public fee, such mark is published. A less experienced proprietor may have the impression that the procedures have been accomplished. However, in practice, publication is deemed to be only one of the stages of registration when the proprietors of other trademarks may oppose a later mark. And only if no opposition is received, a registration certificate is issued.

Concepts of Geographical Indications and Places of Origin

Several new concepts which will be considered as absolute grounds for refusal of registration must be established in the national law of the Member States. That is to say, the concepts of geographical indications and places of origin on the basis of which registration of the marks referring to the particular geographical areas will be refused must be established. Pursuant to the European Union law, such areas determine the characteristics of the respective product or indicate that at least one of production stages will take place in such area. For example, your sparkling wine cannot be called “champagne” because,

as you know, this beverage may be produced only in the particular region in France. The Member States are also obliged to provide for protection of the terms characterizing the wine so that no one could acquire exclusive rights to such terms. Furthermore, protection of traditional specialties guaranteed will be established. This means that certain name is used for description of the product or indicates its specific nature and the product is produced using a traditional method, extensive protection is granted and no similar trade mark will be registered. In other works, if you wanted to register the trade mark Liliputas, you should accept that such mark will not be registered because the term is protected and you cannot acquire exclusive rights to it. An analogous situation has emerged with regard to Daujėnų duona, i.e. the bread produced only in this region, thus, protecting the name.

As for the provisions that will mostly affect the proprietors of the newly registered trademarks, it should be noted that the directive will affect the proprietors of the trademarks which have already been registered as well. National patent offices will be obliged to notify of expiry of the registration. Besides, transit of infringing goods will be established.

It is also planned to lay down the provisions concerning use of a trade mark, i.e. a possibility to refer to non-use as a remedy in opposition proceedings or proceedings concerning infringement. Yet another relevant provision is related to prohibition from invalidation of registration where an earlier mark has not acquired a distinctive feature or reputation at the moment of filing an application for a later mark.

Thus, it may be concluded that if the EU Member States have not set forth the afore-mentioned mandatory provisions in the legal acts aimed at protection of trade marks yet, they will have to do this as soon as possible. After all the afore-mentioned provisions are laid down, the procedures in relation to protection of trade marks that are easier to understand and more simply enforceable, lower likelihood of confusion is expected. The fact that the changes would apply to the proprietors of the newly registered trademarks and the proprietors of already registered trademarks is significant. And such exclusive rights to the products or varieties of plants specific to the respective region will not be granted to anyone due to the newly established concepts.

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