The Brave New World of the European Trademark

Submitted by the Intellectual Property PAC

By: Jorge Espinosa, Esq., Espinosa Trueba Martinez, PL

This year brought a major change to the Community Trademark that by which applicants have been registering trademarks in the member countries of the European Community for years. It was done away with by European Trademark Regulation (EU 2015/2424). Now, in its place we have the European Trademark (“EUTM”) and a new set of rules for registering your trademark in the European Union. The changes are in some cases significant. The more familiar we become with them the better we can serve our clients. The following is a quick summary of the major changes now in effect.

· The Office for the Harmonization of the Internal Market (“OHIM”) with whom many of us have filed applications has been renamed the European Union Intellectual Property Office (“EUIPO”).

· The price has gone up, slightly. Unlike a CTM trademark application which included 3 international classes for an official fee of €900 and €150 for each additional class, a EUTM costs €850 for the first class, €50 for the second class and €150 for the third class. Each additional class is €150. So for an American individual or company wishing to register a mark in three classes, not including local counsel fees, the cost goes from €900 for CTM to €1050 for a EUTM.

· On renewal however, you get a small price break. The owner of a CTM registration would pay €1350 to renew the CTM registration in its three classes. The cost for renewing a EUTM in three classes will only be €1050.

· The EUTM description of goods have to be more specific. The claim of goods and services in the CTM application allowed for far more vagueness than a US application and could rely on general statements such as “and goods not included in other classes.” This state of affairs changed with the June 22, 2012, decision in the case of IP Translator which has been integrated into the new Regulation. The ruling in that case, which has now been integrated in the new regulations, created a requirement that the descriptions of goods and services in applications be sufficiently clear and precise to others to determine the scope of protection conferred by the registration. Applications which sought the entire class heading of a class must specifically declare that they intended to protect the entire class.

· Most applicants who have applied for a CTM registration since June 22, 2012, have probably complied with the new requirements for specificity brought about by IP Translator. However, that leaves older registrations vulnerable for vagueness in the event of a cancellation action. Fortunately, the new regulations provide for retroactive interpretation for pre IP Translator registrations. Trademark owners who registered their marks prior to June 22, 2012 are allowed to amend their descriptions of goods and services or face a possibly restricted application of their registration. This opportunity to amend ends on September 24, 2016, so this is a time sensitive opportunity to buttress old registrations against future challenges.

· Purely functional marks will no longer pass the test for registration of a EUTM. Trademarks which consist exclusively of a characteristic (shape, sound, color, etc.) inherent in the nature of the goods upon which the mark is applied will be refused registration.

· Registration will also be refused to applications which seem to register a trademark that includes a protected designation of origin or geographical indication. Such designations can also serve as the basis for an opposition or cancellation action.

In addition to these significant changes, however, there are more changes coming. In a second phase due to take effect September 24, 2017, the following additional changes will be added to the regulations:

· A drawing of the trademark in the application when applying for a design or non-traditional mark will no longer be required. Instead, the applicant may submit a rendering of the trademark “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.”

· Under the new regulations, Europe will allow the registration of certification marks. Certification marks are marks which allow a certifying institution or organization to allow authorized third parties the use of a mark as a sign for goods or services complying with the certification requirements. Well known certification marks in the US include Underwriters Laboratories’ mark used on home electronics and Energy Star for energy efficiency.

· One significant change that may be significant in international efforts to stop the transfer of counterfeits is the rule allowing EUTM holders to “prevent the entry of infringing goods and their placement in all customs situations, including transit, transshipment, warehousing, free zones, temporary storage, inward processing or temporary admission.” This is a significant change from prior practice which only allowed seizure of product intended for distribution within the European Union. One caveat is that a party transshipping the goods can obtain their release by getting a ruling from the European Union trademark court that the goods are legal in the market of final destination. Nevertheless, a European Union trademark registration can now serve as a valid part of an international anti-counterfeiting strategy even where European aspects of the brand owner’s business are not significant.

In addition to the foregoing, there are numerous additional smaller changes which can have an impact in the prosecution of a successful European and global trademark strategy. Conferring with counsel familiar with the new rules and reviewing your current European portfolio in light of the changes should be a top priority for any firm or company managing marks in Europe.

Jorge Espinosa is a founder and partner at Espinosa Trueba Martinez PL and Florida Bar Board Certified in Intellectual Property Law. His practice focuses on the domestic and international protection of trademarks, patents and copyrights. He also works extensively with foreign counsel to develop international intellectual property strategies for clients. He has substantial experience serving as local counsel for firms seeking to enforce their client’s rights in South Florida and Latin America. Jorge is fluent in English and Spanish.