Posts by: Anette Rasmussen | (3) posts

Reform of the European Trademark System

After some years work on aligning and improving the European trademark system a new legislative package on trademarks has finally been accepted by the EU Parliament at the end of 2015. The new Trademark Directive is already in force, but needs to be implemented as national legislation within the next three years. The further course of the Directive into new national trademark laws thus follows national routes from now.

The new regulation on the European Trademark (EUTMR) will enter into force on 23 March 2016. The basic legislation is available, but the implementing regulation and official guidelines on practical issues are not yet final. Thus, we expect more information and many details over the coming months.

The most visible change with the reform is the change of name. What has been a Community Trade Mark (CTM) will become an EU Trademark. And OHIM (Office for Harmonization of the Internal Market) will change name to EU Intellectual Property Office (EUIPO).

But there are more changes on the way. Another very visible change is of the fee structure. So far, a basic application fee covers up to three classes. As of 23 March 2016 it will cover only one class. Thus, companies planning to file trademarks this year should already now consider their strategy and if it will be more advantageous to file now or await the new fee structure. If your sole interest is selling goods that belong to one class, like vacuum cleaners, then it would be cheaper to file the application after the 23 March 2016. But if you produce goods that belong to more than one class, like shoes and leather bags, it will be cheaper for you if you file now before the changes takes effect.

The change of fee structure also applies to renewals of trademarks, but for renewals the lowering of the fee is so significant that you will gain no matter what compared to today’s fees. Trademarks may be renewed 6 months in advance of their expiry date. The practical implementation of this is currently being considered by EUIPO. It has relevance in situations where e.g. a trademark expires after the 23 March 2016, but is renewed before, which fee is applicable? Awapatent will of course follow this closely and keep you informed.

Another big practical change will be the possibility of amending the list of goods and services for once’s trademark registration, if it was filed before 22 June 2012 and if it covers the class heading of a Nice class. Awapatent will inform you in a separate blog and via emails on this topic.

Awapatent will closely follow the implementation of the new regulation and will keep the Awa IP blog (www.awaipblog.com) updated on the most important or interesting changes. If you have any questions to how the reform might affect your trademarks, do contact your Awa IP Lawyer.

Anette Rasmussen, Attorney at Law and Line Wittendorff, Trademark Attorney, Awapatent

Is use of a Community trademark in one of the EU member states sufficient?

As is well known, a Community trademark (CTM) must be put into genuine use within five years of the registration date in order to maintain protection. When the Community trademark was launched in 1996, it was decided politically that use “in the Community” was satisfied by use in one member state. This decision was laid down in a Joint Resolution from the European Commission. The European trademark authority, OHIM, decided to follow this resolution in practice and still does today.

Since then, the EU has expanded as a lot of countries, including smaller countries such as Cyprus and Malta have joined. Consequently, it is ever more discussed whether use in one member state remains sufficient or whether it is time to change this practice. In addition, the Court of Justice of the EU has laid down in a case concerning another legal area that a Joint Resolution is not legally binding. Naturally, this has contributed to the uncertainty as to whether use in one member state is sufficient notwithstanding that OHIM adhere to their practice.

Trademarks in Belgium, the Netherlands and Luxembourg are managed by one communal regional authority. In connection with a trademark case (the ONEL case) in Benelux, this authority has made a decision stating that documentation of use in one member state of the EU is not necessarily enough to document genuine use of a CTM.

The reasoning of the Beneluxian authority is that a trademark right is an exclusive right. In order for this right to endure, it must be put into genuine use. Consequently, it would be contrary to the fundamental consideration of trademark protection if the scope of the protection by far exceeds the geographic area in which the trademark is used.

The delivered judgment will most likely be appealed to the Appellate Court in The Hague. In this connection, the Appellate Court will presumably ask the Court of Justice a number of preliminary questions concerning the interpretation of the geographical requirement in connection with documenting use of a CTM. Hitherto, the Court of Justice has ruled that genuine use in Austria could be sufficient in order to document use of a CTM.

So far the ONEL case leaves an uncertainty concerning the existing practice for documenting genuine use of a CTM. For the time being, OHIM adheres to the practice that use in one member state is sufficient. In addition, OHIM has expressed criticism against the judgment in the ONEL case. Supporters of the opposite point of view argue that a CTM must be put into genuine use in all 27 member states. The relevant Danish authority (the DKPTO) believes that the answer must lie somewhere in between.

An important consideration of the CTM system is the fact that markets/countries are open to competition, i.e. that trademark owners do not have to apply for trademark protection every time they enter a new market within the internal market of the EU. In addition, an intensification of the geographical requirements could make it more difficult for smaller companies to achieve and maintain a trademark registration in the EU. Furthermore, the cost of a trademark protection will increase if smaller companies are forced to protect their trademarks nationally in a number of member states on account of the fact that it is uncertain whether their CTM will endure.

We regard a change of the existing practice as a threat under the current CTM System. Consequently, we have worked in International forums at maintaining the existing practice according to which genuine use in one member state is sufficient to document use of a CTM. Of course there is a risk that the CTM register will be filled with trademarks that are only in use in few member states. However, a regulation hereof should be handled differently, e.g. by intensifying the existing practice concerning lists of goods and services.

The entire CTM system is under review by the European Commission this year. In this connection, the Max Planck Institute is carrying out surveys concerning use of a CTM among other things. It shall be interesting to learn if the users of the CTM system demand a clarification of the practice and in such case if that practice will be laid down in a new legislation instead of being left for interpretation by the Court of Justice of the EU. We will be following the progress and hope that the existing practice will be laid down legislatively.

In any case, we will encourage CTM owners to put their trademarks into genuine use in as many member states as possible – and to make sure to save all documentation of genuine use.

Anette Rasmussen, Attorney at Law and Line Wittendorff, Trademark Attorney, Awapatent

Trade Mark User Requirements Tightened Following US Supreme Court Ruling

Following a key US Supreme Court ruling earlier this year we announced that the practice in regard to the fulfilment of the user requirements for trade marks has been tightened in the USA. Consequently, an entire trade mark registration can be cancelled if the owner can only prove use of trade mark for a part of the list of goods. This will now be considered to constitute fraud.

The US Patent and Trademark Office (USPTO), which handles the actual registration, interpreted the ruling very strictly and thus it was considered fraud if the trade mark owner ought to have known that the trade mark had not been put to use for the entire list of goods.

Subsequent to the Supreme Court ruling, however, the US Federal Circuit Court has ruled that the party seeking the cancellation of another party’s trade mark registration, i.e. a third party, has the burden of proof and must prove that the registrant is guilty of fraud. This means that in future it should not be so easy to successfully seek the cancellation of a trade mark registration owned by another party . The ruling ought to result in the USPTO changing its practice on fraud, but we do not know if such a change of practice will take place.

Unfortunately, the ruling of the Federal Circuit Court gives no indication as to how many goods must be deleted from the trade mark registration when fraud has been established. The USPTO has interpreted the practice to mean that the entire class of goods must be deleted if the trade mark is not used at all or is only used for some of the goods for which it was registered, but this does not necessarily mean that the entire registration must be cancelled. Whether this practice will be confirmed in a court of law remains unknown at the present time.

As long as doubts exist about the practice for proof of use of trade marks in the USA, we recommend that trade mark owners make sure that the list of goods accurately reflects the goods for which the trade mark is actually used. This is particularly important where a company’s most important trade marks are concerned.

Anette Rasmussen, Attorney at Law