8 Keys to Understand the New European Trademark Directive
Nowadays the economic markets experience constant and vertiginous changes in the way in which daily transactions are developed, both of goods and of services. Within these markets, not only material assets have a paramount value, but also the signs used to identify them and to distinguish them from the rest of the competitors, that is, the so-called intangible assets.
Therefore, it is not surprising that the European Union decides to harmonize the laws of each of its members in relation to the type of trademarks that can be requested before the European Union Intellectual Property Office (EUIPO), the requirements of the applications and also of the form of processing.
For this reason, on December 16, 2015, Directive No. 2015/2436 was issued, “on the approximation of the laws of the Member States regarding trademarks”, which entered into force on January 14, 2019. In this sense, it is important to point out that since a Directive is the one that establishes these rules in trademark issues, each European country must dictate a national law to transpose the community regulations to its national scope in order to avoid any type of penalty in case of not doing it.
Based on the previously mentioned, we will comment on the main changes that will have greater impact on the day to day of professionals and owners of industrial property rights, both in Europe and in the rest of the world, namely:
I- Legitimization to obtain the registration of a trademark: From now on, they will be entitled to apply for and register a trademark, natural or legal persons, whether they are nationals of the European Union or of another country outside the Union. However, it is important to note that the latter, when they are legal persons, must do so with an EU agent or lawyer with the corresponding authorizations.
II – Requirement of graphic representation disappears: What until now was a fundamental requirement, will cease to be required when submitting an application to EUIPO. In other words, it will only suffice if the sign can be represented in such a way that there is sufficient clarity about the object to be protected and that it can be published in the Official Gazette. As a consequence of this change, the range of possibilities for the registration of non-traditional brands (brand of form, position, pattern, movement and holograms, among others) is broadened, which, added to technological changes, will allow adequate representation in the Official Gazette for later registration.
III- New types of brands: On one hand, the multimedia trademark is incorporated, which is a combination of image and sound that will be represented by the presentation of an audiovisual file that contains the combination of the image and the sound (EJ: video game). On the other hand, the trademark of certification or guarantee which allows to distinguish the products or services that its owner certifies with respect to the materials, the way of manufacturing the products or the rendering of the services, the quality, the precision or other characteristics, with the exception of the geographical origin, of the products and services that do not possess this certification, without the need of belonging to any group or entity.
IV- The ¨notorious trademark¨ disappears: Prior to the new directive, signs that reached a certain degree of popularity could be called “notorious” (popular brand within a specific market) or “renowned” (popular brand for the consuming public in general). With the new directive, the “notorious” brand category is absorbed into the “renamed” brand. Therefore, the old “notorious” brands must accredit their wide use and knowledge in the general public to achieve this recognition.
V- Changes in the registration procedure: The main news about the registration procedure are related to the legitimacy to formulate opposition, including those of the licensees of a trademark, by imposing on the opponent the obligation to prove the use of the trademark on which it is based. the opposition and, finally, for the total renewal of the brand, as it will be enough with the payment of renewal fees to renew the trademark.
VI- Priority claim: It must be filed now with the trademark application. The priority is what allows the owner to request the trademark in any member country over a period of six months, but taking as a reference the date of application to the European office. Until now, it could be requested for three months from receipt of the priority declaration.
VII- Acquisition of distinctive character due to use: The Office will only examine the acquired distinctive character if there is a request from the applicant for the European Union trademark. As regards the application deadlines, both types of claim can be presented: together with the application; or at the latest, in response to the first objection of the examiner. It will not be possible to present claims in the appeal procedures.
VIII- Increase in anti-piracy measures: Piracy is a major problem at present for trademark holders and licensees. Therefore, even if the products (which contain identical or virtually similar brands) are not going to be marketed in the TM holder or licensee’s country within the EU, if not in another EU country, a trademark owner may prevent the transit of these products through his country. In order to do so, it is only required that the base trademark of the enforcement action is registered in the country where the product in question will be marketed (destination country).
To conclude, we understand that the changes introduced will lead, among other things, to the simplification, efficiency and strengthening of the trademark protection system in the EU. And, although the objective of this reform as a whole is to strengthen the European Trademark Network, it is important to bear in mind that these changes will mean a new challenge for the European administrations, having to adapt its work system to the required changes in record time.