New European Trademark Regulation: what is new?

New Regulation on the European trademark (Reg. (EU) 2015/2424) come into force on  March 23th 2016, amending the previous regulation (Reg. (EC) n. 207/2009), with the aim to modernize the trademark legislation, in line with the latest technological developments. Numerous innovations have been introduced by the new Regulation, intended to have a significant impact on both existing trademarks and on those of next recording.

Olfactory marks and sound marks can now be registered

Legal requirements for the registration of the trade mark have been modified: under the previous version of Article 4 of the European Trademark Regulation, a sign was requested to be capable of being represented graphically. This requirement, however, constituted an obstacle to the registration of sound marks, olfactory marks, or those marks constituted by moving images or sequences of pictures, as well as to the so-called “light marks”. In the new discipline such requirement has been  deleted and it is instead provided only that that the sign must be “….capable of being represented on the Register of European Union trade marks, (“the Register”), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.”  Thus new Article 4 allows the registration of sound or visual marks through the deposit of audio or video recordings.

Need to identify the products or services for which the mark is registered  Article 28 of the Regulation has been amended, ruling that the application for trademark registration must indicate the goods or services for which registration is required with sufficient clarity and precision to enable the competent authorities and economic operators to determine, solely on that basis, the degree of protection required. The amendment is intended to counter the practice adopted by many, to request trademark registration vis-à-vis general categories, which do not correspond to products or services actually produced and sold by the company, but for the entire product group and maybe even for similar product classes. New Article 28 specifies that “… it is possible using general indications included in the titles of Nice classification or other general terms, provided that they comply with regulatory requirements of clarity and precision laid down in this Article“. Basically under new Regulation the general indications of the class of products will be interpreted in a restrictive way, according to their literal meaning, in order to include only the products and services “… clearly corresponding to the literal meaning or the term. Such terms or signs are not interpreted as including products or services that cannot be understood as such. “The Regulation grants to those who have registered European mark under the old regime, for a particular class of products, a period of grace of six months (expiring next September 24th, 2016) to specify the goods or services, for which the trademark registration is sought, which are not included in the literal meaning of the relevant class. The explanatory statement will not have retroactive effect and shall not be used to oppose the registration or the use of a similar mark by another person, where the use or the application for registration are antecedent to the filing of the explanatory statement. The trade marks for which no explanatory statement is filed shall be valid only in relation to good and services covered by the literal meaning of the class for which they were recorded.

Procedure of opposition to registration of Community trade mark The term to file an opposition to the registration of an European trademark has not been modified, having remained of three months, but the term now will begin to run one month after the publication of the trademark, rather than after six months. The shortening of the term is likely to have the effect of reducing the litigation concerning trademark opposition.

Registration fees The registration fee is € 850 per one class of products/services; an additional tax of € 50 has been provided for each additional class. The fees relating to the filing of applications for opposition, invalidity or revocation have been reduced.

Inhibition of acts preparatory to trademark’s infringement The new Regulation enable the owner of a registered trade mark to ask for a prohibition order of the so-called preparatory acts of infringement, i.e. those activities, such as affixing a trademark on packaging, labels, tags or authentication devices, that do not constitute per se a trademark’ infringement but are prodromal activities aimed to use on the market another’s trade mark.

Certification trademarks

The Regulation has introduced new “trademarks of certification”, namely trade marks capable of distinguishing the products or services certified by the owner of the mark in relation to the material, the manufacturing process of the product or the service, the quality, accuracy, or other characteristics, except the geographical origin of products and services not certified. The person requesting the registration of a “trademark of certification” must submit, along with the application for the trademark’ registration, the regulation concerning  the use of the certification mark, specifying the persons authorized to use the mark, the features that the brand has to certify, the procedure to verify the occurrence of such futures and the use of the mark surveillance. This Regulation also sets out the conditions of use of the mark, including sanctions.

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