EU Trademark Reform Is Now In Effect

The good news for trademark owners is that the costs for renewing an EU registration will be reduced significantly, from 1350 euros covering up to three classes, to 850 euros for one class or 900 euros for a registration in two classes. The fee for renewing each additional class (beyond two or three) is also substantially reduced, going from 400 euros to 150 euros. This reform will benefit all trademark holders, from small companies with limited trademark budgets to large companies with substantial trademark portfolios.

Prior to the Court of Justice of the European Union (CJEU) decision “IP Translator” (C-307-10, issued June 19, 2012), if a specification of goods for a trademark application included the class heading, the resulting registration was deemed to cover all the goods or services included in that class. “ IP Translator” put an end to this practice, stating that trademark applications designating a class heading were protected only for the products and services falling under the literal meaning of the class heading. The new regulation has adopted this interpretation. Trademark owners who wish to specify the scope of the protection of their trademark should do so by Sept. 23, 2016; failing to do so will restrict the scope of their trademarks.

In order to facilitate the registration of unconventional trademarks such as sounds, smells or tastes, the criteria for graphic representation of a trademark has been removed. A clear representation of the trademark limiting the scope of the rights being claimed should however still be provided.

All marks containing geographic indications or indications of origin shall be refused based on absolute grounds. This means that trademark including names such as Parmigiano Reggiano, Champagne or Neapolitan pizza will be refused on absolute grounds, regardless of a possible challenge from the association or entity defending these rights.

The new trademark package provides better protection against piracy and the gray market by: targeting mere preparatory acts; and increasing the customs' power to block infringing goods. Rights holders will also obtain better control over any goods in transit because the burden is now on the importer to prove that the good is allowed to be sold in the country of destination. This solution overrules the judgment that had been issued by the CJEU in Philips v. Nokia, C-446/09, Dec. 1, 2011.

The new regulation additionally provides a new ground of opposition making it possible for a third party to oppose a registered trademark on the grounds that the proprietor was acting in bad faith when it applied for the mark. Third parties may rely on the registrations they own outside of the EU, alongside other elements, to support a claim that the application was filed in bad faith.

The new regulation also creates a new option for rights holders to block the importation of infringing goods even when only the consignor ' rather than the importer ' acts in commercial capacity. This provision confirms the solution adopted by the CJEU in Blomqvist v. Rolex, C-98/13, Feb. 6, 2014.

Further, the EU trademark reform extends the “cooling-off” period ' during which parties are encouraged to enter into discussions to settle their trademark dispute ' to national opposition proceedings. This should encourage the settlement of more trademark disputes in Europe.

Overall, the new trademark package provides a number of positive reforms which should benefit most trademark owners: reduced fees for trademark filings and renewals; broader scope of protection for trademarks' and most importantly, a new range of tools to fight infringement, both within the EU frontier and at the borders. In the context of an increasingly integrated transatlantic market, this reform should further encourage U.S. right holders to extend the protection of their marks in Europe.

B'atrice Martinet is special counsel at Sideman & Bancroft in San Francisco. Working with the firm's Brand Integrity and Innovation Group, she focuses her practice on intellectual property litigation, arbitration and transactional work for clients in a wide range of sectors, including in the computer, technology, software, publishing and fashion industries.