Almost unperceived, right before the holiday season, the new Directive (EU) 2015/2436 of the European Parliament and of the Council, to approximate the laws of the Member States relating to trade marks (“New Directive on Trade Marks”), was published on 23rd December 2015. It is a recasting exercise, bringing in some modifications of the previous Directive (2008/95/EC), which has been derogated.
Some of the key objectives of the New Directive on Trade Marks are (i) to reduce the areas of divergence that exist in the European trade mark system as a whole, (ii) to adapt the trade mark system to the age of the Internet, and (iii) to provide further harmonisation with a positive effect on competitiveness and growth.
The main changes are the:
1. Unification of the conditions of registration
A list of examples of signs that could constitute a trademark must be established. In that regard, in order to facilitate the clear and precise representation of the sign, from now on, it will therefore be allowed to be represented in any form deemed appropriate, using the technology that is generally available, and it need not necessarily be represented by graphic means.
Furthermore, the grounds for refusal or the causes of invalidity regarding the trademark itself, including the absence of any distinctive character, should be listed in an exhaustive manner. For these purposes, the Directive includes the same provisions relative to the geographical indications as those contained in Regulation (EC) No 207/2009.
2. Extensive regulation of guarantee or certification marks and collective marks
The new Directive widely develops provisions regarding “guarantee or certification marks” and “collective marks”. Guarantee marks authorise its proprietor for the granting of certifications regarding the compliance of technical standards, quality standards, etc., concerning the products and services protected by the trade mark.
Furthermore, “collective marks” are established as a useful tool to promote products or services with common specific features. Thus, it is considered appropriate that national collective marks are subject to similar regulations to those applicable to European Union collective trade marks. In this respect, a collective trade mark is defined as any trade mark capable of distinguishing the goods or services of the members of an association which is the proprietor of the mark from the goods and services of other companies.
3. Increase in the means to combat counterfeiting
In order to reinforce the protection conferred by a trade mark and combat counterfeiting with greater efficiency in accordance with the international obligations of the member States of the World Trade Organization (WTO), in particular Article V of the General Agreement on Tariffs and Trade (GATT) concerning the freedom of transit and, as regards generic medicines, the ‘Declaration of the TRIPS Agreement and public health’ adopted by the Doha WTO Ministerial Conference on 14th November 2001, the new Trade Mark Directive entitles the proprietor of the trade mark to prevent third parties from bringing goods into the Member State where the trade mark is registered, without being released for free circulation there, where such goods come from third countries and bear without authorisation a trade mark which is identical or essentially identical to the trade mark registered in respect of such goods.
4. Cooperation between national trade mark offices and the OHIM
Offices shall cooperate effectively with each other and with the OHIM (Office for Harmonisation in the Internal Market) in order to promote the convergence of the practices and tools for the examination and registration of trade marks, as well as in all areas other than those mentioned.
5. Transposition time limit
Member States shall transpose the legal, regulatory and administrative provisions necessary to comply with Articles 3 to 6, Articles 8 to 14, Articles 16, 17 and 18, Articles 22 to 39, Article 41 and Articles 43 to 50 by 14th January 2019.
In respect of Article 45, the transposition shall be made by 14th January 2023.
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8th January 2016
