Modernisation of trade mark law in the USA
The Trademark Modernization Act of 2020 will be implemented in the USA in December 2021.
Important changes are being made to Community Trade Marks from March 23rd. Not only are they being renamed, the official fee structure is also changing. Our full report gives details on how it may affect you.
As from 23 March 2016 a Community Trade Mark (CTM) will become a European Union Trade Mark (EUTM) and the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) will become the European Union Intellectual Property Office (EUIPO).
This is the result of discussions that began in 2008 culminating in overall political agreement, reached in April last year between the European Parliament, the European Council and the European Commission, which has produced quite extensive changes to EU trade mark law. This agreement produced two documents: a new Trade Mark Directive to approximate the laws of Member States relating to trade marks, and a Regulation amending current legislation embodied in Council Regulation (EC) No 207/2009 on the Community Trade Mark.
This briefing note is directed primarily to those changes that will be brought about by the amending Regulation (EU) 2015/2424 on Community Trade Marks and which will affect all trade mark owners and applicants.
Official filing and renewal fees are changing as follows.
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The current “three-for-the-price-of-one” fee structure for filing applications and renewing registrations has been scrapped in an attempt to reduce cluttering of the register with registrations covering goods and services in more classes than necessary. There is also a welcome reduction in renewal fees to the same level as application fees, as well as reductions for opposing applications, applying for cancellation/revocation of registrations, and filing appeals to the Boards of Appeal.
The due date for the renewal of registrations will now be every tenth anniversary from the filing date and will no longer be on the last day of the month in which that date falls.
OHIM previously interpreted use of the “class heading” (the brief summary of the type of goods or services included in a class) in the specification of a trade mark registration as covering all goods or services in the class. This approach was changed by the European Court of Justice in 2012 which ruled that a literal interpretation of specifications should be adopted.
To avoid loss of rights as a result of this decision, proprietors of EU trade mark registrations filed before 22 June 2012 and registered before 23 March 2016 for an entire class heading may file a declaration identifying goods or services of interest which are included in the alphabetical list for the class in question (in the edition of the Nice Classification in force at the date of filing) by 24 September 2016.
Owners of registrations applied for before 22 June 2012 and granted before 23 March 2016 should review their registrations and consider if filing a declaration would be appropriate. We will write to owners of Community trade mark registrations filed before 22 June 2012 which are on our records to advise further on this point.
New or amended exclusions are introduced as follows:
The following is an additional relative ground for refusal or invalidity:
The three month term for opposing EU designations of international trade mark registrations will begin one month (rather than six months) from the date of publication.
The five year period in which proof of use may be required for an earlier registration relied upon in opposition proceedings will now be calculated from the filing (or priority) date of the opposed application, rather than from the date of publication of the opposed application.
The following are additional acts of infringement:
Use of the mark on goods solely for export purposes will now explicitly count as genuine use.
It will no longer be a requirement that a trade mark should be capable of being represented graphically. The recitals signify that
“A sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”
This should facilitate the registration of non-traditional trade marks, such as sounds and holograms.
A new EU Certification mark will be created, facilitating cost-effective registration of certification marks across the EU. This will complement the existing provisions on EU collective marks.
Various other procedural changes will be introduced.
If you have any questions regarding the changes, please contact one of our trade mark attorneys.