EU trade mark reforms come closer (Brands & IP newsnotes - issue 1)

Some key reforms

• Basic definitions: Farewell to the “CTM” and “OHIM”; say hello to the “European Union Trade Mark” (EUTM) and “European Intellectual Property Office” (EUIPO).
• Class headings: The codification of the IP Translator decision from 2012. A Nice class heading cannot be interpreted as covering all possible goods and services in that class, unless those goods/services are clearly covered by the literal meaning of the heading.
• Goods in transit: strengthening the anti-counterfeiting tool box, the new legislation gives brand owners the right to take action against counterfeit goods which are merely in transit through the EU. But importers will still have a defence where they can prove that the trade mark holder would not be entitled to prevent sale in the country of the goods’ final destination.

Timing

The new legislation is expected to be adopted in 2016, following which most of the new Regulation will be in force within 90 days. Member States will have three years to implement the new Trade Marks Directive.

Things to think about

Holders of CTMs filed before June 2012 will have a six month grace period from the new EUTM Regulation coming into force to make a declaration as to whether any class headings were intended to cover all goods/services in that class. Otherwise the specification will be deemed to include only those goods and services covered by its clear meaning. Rights holders should start to review their trade mark portfolios now to identify where declarations are needed. They should also review their anti-counterfeiting strategies to identify opportunities to exploit their strengthened rights against goods in transit.