This Regulation amends and supplements numerous provisions of the previous regulations, “Regulation (EC No. 207/2009) of the Council regarding Community Trade Marks” and “Regulation (EC) No. 2868/95 on the Implementation of Regulation (EC) No. 40/94”. In addition, EC No. 2869/95 on the fees payable to the Office for Harmonisation of the Internal Market was repealed and a new fee structure was introduced.
The new Regulation ushers in numerous changes, including:
In Article 8 (5), the prerequisites for an opposition based on the recognition of the registered earlier trade mark are specified in the sense that what is relevant is not whether the goods or services for which the more recent trade mark is to be registered are identical, are similar or not similar to the goods and services for which the earlier trade mark is registered.
When the new Regulation takes effect, the rights of the trade mark proprietor with respect to the transit of goods will be strengthened. Under the new Article 9 (4), trade mark proprietors now have the right to prevent the importation of goods into the EU, even in transit, if the goods, including packaging, come from third countries and, without the authorisation of the trade mark proprietor, bear a trade mark that is identical with the EU trade mark registered with respect of such goods or which cannot be distinguished in its essential aspects from that trade mark. This means that any importation of trade mark-infringing goods into the customs territory of the EU fulfils the elements of the offense of trade mark infringement. However, this entitlement lapses if the declarant or the holder of the goods proves that the proprietor of the EU trade mark is not entitled to prohibit the placement of the goods on the market in the country of final destination.
Article 9 a grants the trade mark proprietor the right to prohibit preparatory acts in connection with the placement of trade marks on packaging, labels or other identifying markings.
4. Provision on the establishment of intervening rights, Article 13 a:
Similar to German law, Article 13 a now governs the establishment of the interim rights of a proprietor of a trade mark registered at a later date. These interim rights are designed as a defence in infringement proceedings.
It is important to clarify the list of goods and services for proprietors of EU trade marks applied for before 22 June 2012. The background of the provision is that, up until now, a trade mark has protected all of the goods and services of a particular Nice Class if the proprietor states the full heading of the Nice Class in the list of goods and services. Now, with new applications for a trade mark, the trade mark only protects the goods and services that are clearly covered by the heading indicated in the list.
Proprietors of EU trade marks applied for before 22 June 2012 may clarify to the Office that, on the filing date, it was their intention to seek protection for goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the version of the Nice Classification in force on the date of filing.
The deadline for filing such a declaration with the Office will expire on 24 September 2016. The declaration must indicate in a clear, precise and specific manner the goods and services that were not clearly covered by the literal meaning of the terms in the class heading under which they were originally intended to be registered by the proprietor.
If no such declaration is filed by 24 September 2016, the EU trade mark shall only protect those goods or services that are clearly covered by the literal meaning of the terms in the heading for the relevant class (Article 28 (8), 3. Abs.).
Under the new Regulation, to the extent that a proprietor must prove that rights to the trade mark were preserved through use, a proprietor who files an opposition must provide proof of use for the last five years before the date of filing or the date of priority of the EU trade mark, and not only from the date of publication of the contested trade mark.
A new provision makes it possible to register a so-called EU certification mark, which protects seals of approval or industrial standards against abuse.
The fee structure has been changed, inter alia, for applications and extensions.
Electronic application for an EU trade mark:
– First class: EUR 850
– Second class: EUR 50
– Third and subsequent classes: EUR 150 per class
If a paper application is filed, an additional EUR 150 is due for the first class, i.e. a total of EUR 1,000; starting with the second class, the fees remain the same.
The fees for an electronic extension are reduced to:
– First class: EUR 850
– Second class: EUR 50
– Third and subsequent classes: EUR 150 per class
If a paper application for an extension is filed, an additional EUR 150 is due for the first class; starting with the second class, the fees remain the same.
Thus an extension of EU trade mark protection costs the same amount as a new application.
According to the notice issued by the President (No. 2/2016 dated 20 January 2016), the new extension fees apply to all EU trade marks that expire on or after 23 March 2016, even if an extension has already been applied for and the fees have already been paid on the date that the Regulation takes effect. If there is an overpayment, the excess amount of fees will be refunded.
Finally, some of the terminology has been changed: The “Community trade mark” has been replaced by the “EU trade mark”, and the terms “Community” and “European Community” have been replaced by “EU”. The Office for Harmonisation in the Internal Market has now been re-designated as the “European Union Intellectual Property Office”.
