The aim of the European reform is twofold: modernizing and harmonizing the trademark law. Beyond the update of relative terminologies, the modernization implies significant changes in practice.
The most important changes deal with:
- scope of protection: with regard to both trademark signs and designated goods,
- the fees system is rebuilt: the tradition of ”flat fee for three classes” is abandoned,
- owners are given more defense options.
It is worth mentioning that:
o The legal requirement of a graphical representation is removed from the criteria for registration which should make easier the registration of “non-standard” trademarks in EU (olfactory, acoustic, moving…);
o The list of goods and services for which a trademark is claimed must be identified by the applicant with sufficient clarity and precision: the class heading shall be interpreted literally and only the goods/services expressly designated shall be covered (owners are given a transitional period in order to amend the scope of protection of their registrations. VIDON Group has developed an “opportunity matrix” in order to assist the owners in checking and optimizing their portfolios);
o The ‘one class per fee’ principle becomes a reality within the EU. It enjoins the owners to target the scope of their protections in order to enjoy the advantage of the new system;
o The reform allows the seizure of counterfeiting goods in transit through the EU’s territory, and turns the burden of proof by placing it on owner of the seized goods;
o The reform provides owners with the right to act against infringing preparatory acts (the sole use of packaging or labels is sufficient to constitute counterfeiting, even without any products involved);
o Owners must monitor dictionaries, encyclopedias or similar reference works: the quotation of a trademark is an indication of its generic character and may cause the trademark to be cancelled for degeneration. To preserve their rights, owners shall require the publisher of the works to accompany the quoted trademark with an indication that it is a “registered trademark”;
o The reform is also targeting owners of trademarks in the wine industry since it explicitly guarantees protection for Geographic Indications, and traditional terms for wine (for example: château): these terms are added to the list of absolute grounds for refusal or invalidity in the EU.
Harmonization will emerge from transposition. Member States shall implement the reform within three years (except specific cases). This will imply significant changes, notably in France. For example:
- opposition proceedings may be based on several prior rights (trademarks, trademark with reputation…),
- at last an administrative procedure (before the French PTO) for invalidation will be set up,
- in the frame of opposition proceedings, the opponent shall provide evidence of use for each goods on which the opposition is based on.
Our attorneys stay at your disposal for providing you any further information and/or clarification