A year has passed since the coming into force of the Amending Regulation of the Community Trademark Regulation, and we ask what impact the new rules have had on practical effects.
The reform of the Regulation is aimed specifically at modernizing and adapting its provisions to the age of the internet and consequently at simplifying the procedures and increasing the certainty of the right by adapting the regulations to normal practice. But has it actually been like this?

Briefly, the Amending Regulation was published on 24 December 2015 and, ninety days later, on 23 March 2016, the legislation formally came into force with important effects on the previous regulations. Actually, some of the rules of the Amending Regulation will come into force later, twenty-one months after publication, specifically 1 October 2017, as they need to be developed by additional enforcing provisions.

In particular, the Amending Regulation made a series of changes to terminology, the examination procedure, absolute grounds for refusal of registration, relative grounds of refusal, the classification of products and services, the opposition and cancellation procedures, and the appeals procedure.

One of the most visible changes has been to adapt the terminology of the Regulation to the terminology in the other EU treaties, and in particular the Treaty of Lisbon. As a consequence, the name of the Office and the name of the Community trademark have become, respectively, the European Union Intellectual Property Office (EUIPO) and the “European Union trade mark”, and the Community Trade Mark Regulation has now become the European Union Trade Mark Regulation.

The other changes of greatest impact that have already come into force relate to, in addition to a reduction and harmonization of fees:

The search report on prior EU trademarks is no longer automatically issued, but must be requested by the applicant.

– In the designation of products and services, the Amending Regulation has codified the practice that was instituted following the decision in case no. C-307/10 “IP Translator” (what you see is what you have).

– There is now a codified exclusion from registration of appellations of origin and protected geographical indications, traditional specialities guaranteed, and plant varieties.

– Functional signs (for example, color or sound) are now subject to the same prohibitions as shape trademarks.

– The reference date for submitting proof of use in oppositions is now the date of filing or the date of priority of the contested EU trademark application, instead of the date of its publication.

– Opposition terms for an EU designation of an international trademark have been reduced: no longer between 6 and 9 months from the (first) publication in the register, but between 1 and 4 months.

– There is now a codified prohibition on using the sign as a trade name or company name.

– The right to use the EU trademark descriptively has been codified: in order to identify or refer to products or services as products or services of the owner of that mark, especially if the use of that mark is necessary to distinguish the destination of a product or service, in particular as accessories or spare parts.

– In appeals, the right to an ancillary appeal has been codified. In their response, the defendant can formulate conclusions aimed at the cancellation or reform of the disputed decision with regard to a point not raised in the appeal.

Well, we can say that the EUIPO has won its bet, given that all these changes were received positively and handled sufficiently smoothly both by professional attorneys and by the owners of trademarks, and in effect they have contributed to giving greater simplicity of management of the administrative procedures along with certainty regarding rights by making the rules fall into line with practice. In addition, the lowering of the fees brought a not insignificant reduction in costs. The only practical difficulties were encountered in users remembering the new terminology, after being used to the old terms of “Community trademark” and “OHIM”, for no less than 20 years, and in the management of classification of products and services, where a term until 24/9/2016 was granted to align the specification of trademarks to their original intention at the time of filing. That meant a lot of work for attorneys, but it certainly brought advantages for owners of trademarks, who saw an upgrade in the protection granted to their signs. Also with regard to classification of products and services, in EU designations of an international trademark there were coordination problems with the lists of products and services used by the WIPO (World Intellectual Property Organization) which manages international trademarks, and the two bodies, EUIPO and WIPO, will no doubt bring their lists into line soon.

Great attention will be paid to the further new rules that will come into force on 1 October 2017, in particular the impact of the major change of Article 4 of the Regulation which is to eliminate the graphic reproduction requirement. This means the signs can be represented in any suitable form, also using available technology, as long as the representation is clear, exact, evident, and easily accessible. And the introduction of European Union certification marks will have a major impact, by enabling a certification institution or body to allow participants in the certification system to use the trademark as a sign for the products and services that meet the certification requirements.

Last but not least, it must be noted that, in parallel, the new Harmonization Directive no. 2015/2436 came into force in January 2016, with which the member states of the European Union were asked to continue the process of standardization/convergence of the individual national laws on trademarks begun in 1988, so as to comply with the new EU Regulation and enable the full agreement of rules, principles and, especially, judgment criteria. Most of the new rules must be introduced into the national system by 2019.

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ISSN 2531-4483