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Community Trade mark
The Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 came into force on 23 March 2016 and its main goal is “to modernize the trade mark system in the Union by making it effective, efficient and consistent as a whole and by adapting it to the Internet era.”
This effort to modernize the trade mark system is reflected in the following amendments:
- Terminology: gross part of the terminology used in these matters is changed, for example, the expression “community trade mark” is replaced by “EU trade mark”, “community trade mark court” is replaced by “EU trade mark court”, “community collective mark” is replaced by “EU collective mark”, “European Communities” is replaced by “Union” and “Office for Harmonization in the Internal Mark” is replaced by “European Union Intellectual Property Office”;
- Elimination of the requirement of graphic representation: this requirement is deleted from the definition of “EU trade mark”; thereby it is permitted the representation of a sign in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective;
- Grounds for refusal: The grounds for refusal concerning designations of origin and geographical indications are clarified and they are extended to cover also protected traditional terms for wine and traditional specialties guaranteed;
- Proprietor of an EU trade mark: Several rights are conferred to the proprietors of an EU trade mark in close cooperation with the supervision bodies, such as:
- To prohibit a third party from using a sign in comparative advertising;
- To prevent third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods come from third countries and bear without authorization a trade mark which is identical or essentially identical with the EU trade mark registered in respect of such goods (with the exception of the generic medicines);
- To prevent the entry of infringing goods and their placement in all customs situations, also when such goods are not intended to be placed on the market of the Union and also covering the preparatory acts carried out prior to the affixing of the mark;
- However, this does not prevent the lapse of the proprietor of the EU trade mark’s rights when, in case of proceedings initiated before the European Union trade mark court, the court concludes that there was not a trade mark infringement.
- Designation and classification of goods and services: the rules for the designation and classification of goods and services are more rigorous and it requires that the goods and services for which trade mark protection is sought are identified by the applicant with sufficient clarity and precision;
- The optional EU and national trade mark searches: the search for national and EU trade marks is made optional, but it is made available all-compassing, fast and search engines for the use of the public, for free;
- Mediation Centre: A mediation center is established with the aim of achieving a friendly, expeditious and efficient settlement of disputes relating to EU trade marks and Community designs or models by mutual agreement.
- Costs incurred by Member States: the costs incurred by Member States for the role they play in ensuring the smooth functioning of the EU trade mark system are now, in part, offset by the European Union Intellectual Property Office;
- Fee amounts in the form of an annex: The Regulation presents an Annex with the amounts of fees payable and they aim to ensure that (i) the revenue they produce is in principle sufficient for the budget of the EU Intellectual Property Office to be balanced; (ii) there is coexistence and complementarity between the EU trade mark and national trade mark systems, also taking into account the size of the market covered by the EU trade mark and the needs of small and medium-sized enterprises; (iii) the rights of proprietors of an EU trade mark are enforced efficiently in the Member States.
These measures and the amendments introduced reveal an effort to achieve conciliation between the need to ensure the effective compliance of the rights granted by the marks and the need to avoid the barriers to the trade of legitimate products. As a result, the new measures allow for a balanced compromise between the possibility to enjoy the freedoms enshrined in the Treaties, without reprehensible practices in the area of protection of intellectual and industrial property rights.