The 10 most significant changes in Trade Mark law- 2016
Intellectual Property is one of the areas of law which has been developing significantly over the course of the last two decades. The changes that occur every year are really important and need to be discussed. One of the areas of IP law that has experienced a lot of changes during 2016 is Trade Mark law. Starting with the new Regulation in March and continuing with the change of OHIM to EU IPO this year has been one of continuing developments for trademarks. The ten most significant and worth knowing are going to be mentioned here.
- Community trade mark to EU trade mark
The new regulations introduced on the 23rd of March 2016 replaced the ‘Community Trade Mark’ which has been used the past 20 years, with ‘EU Trade Mark’. The ‘EU Trade Mark’ has the same use as the Community Trade Mark. Specifically, it is valid in all 28 Member States and the Brussels Commercial Court and Brussels Court of Appeal have the exclusive jurisdiction for hearing cases relating to such trademarks.
- OHIM to EU IPO
The Office of Harmonization in Internal Market (OHIM), based in Alicante, was renamed European Union Intellectual Property Office (EU IPO). This vocabulary change did not affect the responsibilities of the office which remain as they were before it.
- Reduced fees
For the purpose of helping businesses and most importantly small medium sized enterprises (SMEs) to protect their rights the registration fees for trademarks have been significantly reduced. The cost therefore will now be calculated by individual class of good/services. The registration of an EU trade mark will cost 850 euros for the first class and 50 euros for the second class each additional class will cost 150 euros. These are the fees for the EU Intellectual Property Office.
- 24th of September 2016 deadline to make changes to descriptions of goods/services if they are unclear
Trademark Holders who applied before the 22nd of June 2012 and have unclear descriptions of the goods/services they offered had the chance to change it till the 24th of September 2016.
- Elimination of the graphic representation requirement
The requirement of graphical representation had caused many issues due to the fact that technology has significantly developed and there was a need of more flexibility in order for registration of Holograms or moving images to be possible.
- Certain names cannot be protected as trade marks
Certain names as a general rule are not able to be registered as trade marks. These names include protected geographical indications (PGI), traditional specialties guaranteed (TSG), protected designations of origin (PDO), traditional appellations for wine, and the names of protected plant varieties.
- Action against goods in transit
An important development for trademark holders is the fact that they will have the ability to prevent people from bringing out products which are not in free circulation within the EU, provided that the products are from a non-member country and they copy or reproduce a trade mark. If the defendant cannot prove the trademark holder has no right to prevent him from introducing the goods to the EU market, then it will be possible to take action against him. Consequently, it is obvious that pirated goods or goods in transit will be prevented from circulation within the EU market.
- Preparatory acts
Trade mark holders, for the purpose of further protection of their rights, will now be able to take action prior of the marketing of goods.
- Proceedings before the Benelux Office
In order to deal with requests for revocation or invalidation of Benelux trade marks, the Benelux Intellectual Property Office will need to create new administrative procedures which are not influenced by the national courts. The decisions of the Office will be heard in the Benelux Court of Justice instead of the national appellate courts, which was the case until now.
- Freedom of expression
Many believe that trade marks are limiting the freedom of expression and that is one of the arguments against trade mark protection. For this purpose, the new regulation aims to achieve a balance between effective protection of trademarks and the use of them for artistic expression.
By Dimitra Angelopoulou