EU Trademark Directive five years on – what has changed?
Part one of this article was published in WTR Weekly on 15 October 2020. Click here to read.
The EU Trademark Directive (2015/2436/EU) was issued almost five years ago but its implementation across EU member states has been staggered over the years since. As the implementation process draws to a close, practitioners from various CMS trademark offices in the European Union have commented on the impact of the changes in their respective jurisdictions. This two-part article does not cover all aspects harmonised by the directive. Rather, it gives a flavour of the changes and how individual practices have been altered, as well as the future impact that the directive is likely to have.
Recent changes in regulations with regard to IP protection in Poland have been extremely generous to rights holders. The number of new legal tools to protect trademarks and other IP rights can arguably be compared to a sandbox or shop full of brand new toys!
First, the relevant rules set out in the directive entered into the Polish Industrial Property Law in 2019. They abolished the requirement for the graphic representation of trademarks in new applications and significantly broadened and clarified the prerequisites for pursuing claims for trademark infringement. Further, on 1 July 2020 new specialised IP courts were established with a broad scope of exclusive competences, which cover not only IP and other intangible assets cases, but also matters concerning unfair competition and, to some extent, personal and moral rights. Rights holders have waited a long time for these changes and hopes are high in this respect.
Many of the changes in the United Kingdom have involved defences in the litigation sphere (eg, clarifying that the own-name defence does not cover company name use, only personal names, and the ability to deploy a non-use defence in an infringement action rather than having to launch parallel revocation proceedings). Also, it is now possible to divide UK trademark registrations; previously, only applications could be divided – an extremely helpful tool if only part of an application was being delayed, perhaps by an opposition.
The EU Trademark Directive has meant bidding adieu to some peculiarities in the Austrian Trademark Law. Previously, the 10-year term for Austrian trademarks was calculated from the end of the month of registration. Since August 2018, it has been calculated from the filing date (with a transition period for existing trademarks). Further, until 2019, oppositions could be based on prior identical or confusingly similar trademarks only. Now, they can be based on trademarks with a reputation, well-known trademarks, designations of origin and geographical indications. It is still not possible to invoke prior non-registered trademarks, other signs used in the course of trade or copyrights in oppositions (the rights holder must resort to cancellation proceedings). Finally, Austrian law only provides for opposition proceedings following the registration of a trademark. Since 2019, the five-year grace period for non-use has been calculated from the end of the opposition period (or, if opposed, from the date of the decision terminating the opposition proceedings became final or the opposition was withdrawn). Some of these changes and their interpretation are already subject to legal proceedings.
In May 2019 the Spanish Patent and Trademark Office (SPTO) finally introduced the option for an applicant to request proof of use from an opponent in opposition proceedings. The new procedure is fully in line with that of the EUIPO. Indeed, the EUIPO has been training SPTO officers on how to examine evidence of proof of use and the formalities that should be met. It is expected that the SPTO will apply EUIPO criteria in this regard. The latest SPTO statistics available show that from a total of 124 proof of use requests, only five have been served so far.
Opponents will need to wait until 2023 for the SPTO to be able to examine direct actions for cancellation and invalidation. Therefore, these proceedings will remain in the courts for now.
Although Turkey is not part of the European Union, its laws are often influenced by EU law. The new Turkish IP Law (enacted in January 2017) was designed to further harmonise Turkish IP legislation with the relevant EU directives. Therefore, the EU Trademark Directive acted as a model for many of the revised trademark provisions. For example, the new law expressly confirms that colours per se and sounds can be considered for trademark protection. It has also introduced procedures for filing non-use revocation actions at the Turkish Patent and Trademark Office (previously the Turkish Patent Institute) rather than the IP courts. However, this change is not due to be implemented until 10 January 2024.
At the end of 2019, the new Marks and Geographical Indications Act was adopted to implement the EU Trademark Directive. Key changes included:
- broadened options for representing a trademark (eg, multimedia formats);
- improved registration processes (including shortened procedural terms and a simplified payment model); and
- amended rules to increase trademark protection (eg, prohibiting preparatory actions for an infringement and the transit of counterfeit goods).
The ban on the transit of counterfeit goods may prove to be particularly useful as Bulgaria shares an external border with the European Union.
Despite these novelties, owners of well-known trademarks that are not registered in Bulgaria may face challenges in prohibiting use of their trademarks by third parties in the country. Owners of renowned brands could run into difficulties caused by the production of confusingly similar goods in the country. In many cases, these conflicts could have been avoided by seeking earlier trademark registration.
The EU Trademark Directive was implemented in Portugal in July 2019 and has introduced a variety of changes to the country’s IP law. One of the key changes has been to enable the Portuguese Trademarks Office (INPI) to deal with invalidity and revocation proceedings, which will speed up decision times and be more cost effective than court actions. Further, the time limit to file cancellation actions before INPI has been reduced to five years from the granting of the challenged registration (previously, the time limit was 10 years).
The other big change is that applicants can request proof of use from opponents in opposition proceedings, which will have an impact on opponents’ strategies when deciding whether to file an opposition, as they will need to consider the availability of evidence and potentially increased costs.
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