The New EU Trademark System Threats, Risks and Challenges …

DIMITRIS BOTIS - EUIPO Deputy Director for Legal Affairs Trade Mark Law Symposium Munich, 19 April 2018

23 MAR 2016 14 JUN 2017

CTMR

CTMFR

CTMIR

RPBoA

EUTMR 2015/2424

EUTMR Codified 2017/1001

EUTMIR 2017/1431

EUTMDR 2017/1430

TM DIRECTIVE 2015/2436

+3Y Transposition

+7Y Opposition

12 JAN 2016

1 OCT 2017

ADOPTION OF THE NEW TRADE MARK LEGISLATION

o Modernisation and clarification of existing rules;

o Closer approximation of substantive provisions;

o Harmonisation of procedures, taking the EU system as benchmark;

o Enhanced cooperation between EUIPO and NIPOs to promote harmonised practices and interconnected tools;

o Alignment with Lisbon Treaty and the ‘Common Approach’ on agencies; Enhanced Usability, Legal Certainty & Predictability

MAIN THEMES OF THE REFORM

SYSTEMIC RISKS AND CHALLENGES

1. No implementation framework in the EUTMR / TM Directive regarding the representation requirements for new TM types;

2. No rules in the Directive regarding old registrations with class headings;

3. Unstable framework with regard to national (and Lisbon) PGIs / PDOs;

4. Inconsistent approach regarding Certification Marks;

5. Absence of transitional provisions;

Five threats to the coherence of the system

NEW TYPES OF TRADEMARKS

ART. 3 EUTMIR: REPRESENTATION PRINCIPLES

Representation

Description Type

Art. 3 (3) IA: SPECIFIC TM TYPES

Position Pattern Motion Multimedia Hologram

5 existing TM types redefined

WORD

Word

Figurative Figurative Colour Shape Sound

5 newTM types added

‘Other’ marks Smell?

Taste?

Tactile / Texture?

Samples not acceptable

o Although the Directive mirrors the EUTMR as concerns the elimination of graphic representation, it does not contain guidance on:

The acceptable types of trade marks and their definition; Their means of representation and other filing requirements; The value to be given to the type of mark or its description.

o ‘Support to the Transposition of the Directive’ Project: Coordinated action by the EUIPO and national IP Offices to prevent discrepancies;

NEW TYPES OF TRADEMARS: THE GAP IN THE DIRECTIVE

o The Communication was endorsed by EUIPO’s Management Board & published in December 2017:

- Types of trade marks NIPOs plan to accept;

- Definitions and means of representation for the new types of TMs;

- Acceptable electronic file formats for sound, motion, multimedia and hologram marks.

NEW TYPES OF TRADE MARKS

COMMON COMMUNICATION ON NEW TYPES OF TMs

WORK STREAM 1: Formalities and Absolute Grounds: The application of Sieckmann criteria to new types of marks. Discrepancies between the representation, type and description of the mark. Inherent distinctiveness of new types of marks. Descriptiveness of new types of marks. Characteristics which result from the nature of the goods, or are necessary to

obtain a technical result, or give substantial value to the goods

WORK STREAM 2: Relative Grounds - Comparison of the Signs Comparison between new types of marks themselves; Comparison between traditional marks and new types of marks.

CP11 – New types of marks: examination of formalities and grounds of refusal

NEW CONVERGENCE INITIATIVE - CP 11: PROJECT SCOPE

2019 2017 2018

New TM types in MS Laws

CP 11 – Kick off: October 2018

Work Stream 1 FORMAL REQUIREMENTS + ABSOLUTE GROUNDS

Work Stream 2 RELATIVE GROUNDS

CP11 – New types of marks: examination of formal requirements and grounds of refusal

‘Support to the Transposition of the Directive’ Project

‘Common Communication on

new TM types’

October - EUTMIR enters into force

June - EUIPO MB approves CP 11

January - end of transposition period

OVERVIEW OF COMMON INITIATIVES ON NEW TYPES OF TMs

• Case C-124/18 P Red Bull v EUIPO, appeal to the CJEU against the Judgment of the General Court of 30 November 2017, in Joined Cases T-101/15 and T-102/15 (ECLI:EU:T:2017:852)

• Case C-578/17 Oy Hartwall AB - Preliminary Reference to the

CJEU from the Finnish Supreme Administrative Court

• General Court Case T-193/18 Andreas Stihl AG & Co. KG v EUIPO (Colours Grey & Orange)

COLOURS PER SE: COURT CASES

Colour marks The indication of recognised colour codes remains compulsory

The reproduction must show the systematic arrangement of the colours

A description may be filed detailing the systematic arrangement further

GOODS AND SERVICES

WHAT? SUBSTANTIVE CHANGES

Article 33 EUTMR:

(2) Express requirement for clarity and precision;

(4) Express basis for rejection in case of no compliance;

(5) Interpretation of broad terms based on their natural and usual meaning;

(8) Transitional 6 month period for amending the register for marks containing Nice Headings that were filed before the Judgment in IP Translator;

(9) Limitations of the exclusive right with regard to amendments.

DESIGNATION AND CLASSIFICATION OF GOODS & SERVICES

o Art. 39 (5) of Directive 2015/2436 = Art. 33 (5) EUTMR:

‘... The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods and services clearly covered by the literal meaning of the indication ...’

o No equivalent in Art. 39 of the Directive to Art. 33 (8) and (9) EUTMR;

o Unclear if the lack of clarity can constitute a cancellation ground.

GOODS & SERVICES: THE GAP IN THE DIRECTIVE

o Uncertainty regarding TMs registered pre-IP TRANSLATOR in MS applying the ‘class covers all’ principle;

Art. 39 of the Directive does not prevent MS from laying down transitional rules; Common Communication on CP2 to be revised;

o CJEU Ruling of 11 October 2017 in Case C-501/15P (CACTUS DE LA PAZ)

If no legislative intervention = Class Covers All? Possible to foresee otherwise without transitional rules?

RISKS IN THE INTERPRETATION OF NATIONAL SPECIFICATIONS

GEOGRAPHICAL INDICATIONS

o Art. 7 (1) (j) EUTMR and 4 (1) (i) of Directive 2015/2436 : ‘... The following shall not be registered [...] trade marks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications [...]’

o Art. 8 (6) EUTMR and 5 (3) (c) of Directive 2015/2436 : ‘... Upon opposition [...] the trade mark applied for shall not be registered [...] pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications [...]’

PDOs/PGIs IN THE EUTMR AND THE DIRECTIVE

o CJEU C-56/16 P EUIPO v Instituto dos Vinhos do Porto (PORT CHARLOTTE):

National PGI/PDOs for Foodstuffs, Wines and Spirits not enforceable

PGI/PDOs currently protected:

- Under EU Regulations - Under EU bilateral agreements - Under national legislation X - Under non-EU international agreements X

GEOGRAPHICAL INDICATONS: VALIDITY OF NATIONAL GIs

o Future EU legislation in the area of Non-Agri GIs:

Currently protectable but only available in few MS; As soon as EU legislates that protection ceases;

o Future ratification by the EU of the Geneva Act of the Lisbon Agreement

Lisbon GIs currently not protected; As soon as the EU ratifies Lisbon they will be entered in the EU Register;

PROTECTION OF PDOs/PGIs: OUTLOOK

CERTIFICATION MARKS

Art. 83 (1) EUTMR: An EU certification mark shall be an EU trade mark which is described as such [...] and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services not so certified.

Description

Ownership

Regulations of use

Art. 83-93 EUTMR, Art. 2(3) and Art. 17 EUTMIR

CERTIFICATION MARKS IN THE EUTMR

Specific ground of refusal (misleading)

o Art. 28 (4) of Directive 2015/2436 (≠ Art. 83 (1) EUTMR): ‘... By way of derogation from Article 4(1)(c), MS may provide that signs or indications which may serve, in trade, to designate the geographical origin of the goods may constitute guarantee or certification marks. Such a guarantee or certification mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications [...] In particular, such a mark may not be invoked against a party who is entitled to use a geographical name....’

o Certification Mark = Not Uniform Treatment

CERTIFICATION MARKS IN THE DIRECTIVE

o Certification Marks with geographical terms as earlier rights:

Fair use of such terms as a valid defence in opposition proceedings;

Distinctiveness of geographical terms;

Impact on the assessment of likelihood of confusion;

o How far their different essential function matters?

CERTIFICATION MARKS - CHALLENGES

TRANSITIONAL PROVISIONS

o No Transitional Rules in the EUTMR and the Directive:

Is it possible to invoke new grounds for refusal in cancellation proceedings against marks filed or registered before the transition?

See Preliminary Reference to the CJEU in Case C-21/18, Textilis Ltd., regarding the temporal application of the new AG to cancellation proceedings initiated before the changes.

ABSENCE OF TRANSITIONAL ARRANGEMENTS

OTHER CHALLENGES

o Unclear State of the Case-law in key areas:

Territorial Aspects relating to the application of Art. 7 (3) EUTMR; Appeals pending before the CJEU, in Joined Cases C-84, 85 & 65/17 P (KIT-KAT).

Territorial aspects of Reputation and Detriment; The Judgments of the CJEU in Cases C-301/07 PAGO International (PAGO), and C-125/14 Iron & Smith (BE IMPULSIVE), are far from clear.

Territorial Aspects of Use; The Judgment of the CJEU in Case C-149/11 Leno Merken (ONEL) is lending itself to more than one interpretation.

OTHER THREATS TO THE COHERENCE OF THE SYSTEM (1)

o The impact of BREXIT on EUTMs in areas not regulated by the draft Withdrawal Agreement:

Absence of clear rules governing the fate of EUTM Applications still pending at the time of withdrawal; Should/Could AG and RG for refusal originating from the UK be taken into account?

Absence of rules on the capacity to act before the Office in the withdrawal agreement; does this mean that the cliff-edge scenario applies?

OTHER THREATS TO THE COHERENCE OF THE SYSTEM (2)

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