E-News No.45

E-News No.45

EU Trademark Package by Eléonore Gaspar (Chair of the Standing Committee on Trademarks)

The EU trade mark reform package will replace the existing Trade Mark Directive (TMD) harmonizing the trade mark laws of the EU Member States and amend the EU Trade Mark Regulation (EUTMR) which sets out the rules applicable to EU trade marks.

Most of the provisions of the amended EU Trade Mark Regulation will enter into force on March 23, 2016, with the exception of a few ones that will enter in force only on October 1, 2017. These changes may require adoption of secondary legislation, namely new implementing and delegated acts, on which the Commission has been working.

The new Directive requires implementation by the Member States into their national laws, which must be completed by January 14, 2019, for most of the provisions, or by January 14, 2023, for the provisions related to the administrative invalidity/revocation proceedings.

Several optional provisions of the Directive will become mandatory. There will be other substantive modifications that are aligned with the EU Trade Mark Regulation.

Only as a few examples of such changes, we can mention the elimination of the requirement of graphical representation, the provision on counterfeit goods in transit and the introduction of mandatory opposition, invalidity and revocation proceedings before the National trademark offices. As further examples, a registered proprietor can only enforce its rights to the extent that they are in use (if subject to use obligation) at the time the infringement action is brought. The use of a trademark for the purpose of identifying or referring to goods or services as those of the proprietor of the trademark will not amount to an infringement.

New Directive:

http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:32015L2436&qid=1457091874609

New Regulation:

http://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1457092102847&uri=CELEX:32015R2424