Reform of European trade mark law
New rules for national and EU trade marks
The current concept of trade mark law in the European Union is based on the coexistence of national trade marks of the member states and trade marks uniformly valid in the whole of the European Union (formerly called "Community trade marks", now "European Union trade marks"). The 1989 Directive of the European Economic Community to approximate the trade mark systems in the member states and the 1994 Regulation on the Community trade mark were the legal basis. The current German Trade Mark Act (Markengesetz) of 1995 is, in large parts, the result of the transposition of the Directive into German law.
The European Commission contracted the Max Planck Institute for Intellectual Property, Competition and Tax Law (now the Max Planck Institute for Innovation and Competition) to carry out a study reviewing the harmonisation process of trade mark law in the European Union. Based on this study, the member states, the Commission, the European Council and the European Parliament prepared a new version of the Trade Marks Directive as well as of the Regulation on the Community trade mark (now called "European Union Trade Mark Regulation"). The legislative procedure was completed with the consent of the European Parliament on 15 December 2015.
Overview of the most important changes and harmonisation measures
The new Directive as well as the new European Union Trade Mark Regulation entered into force at the beginning of 2016. Generally, the member states have 36 months for the transposition of the Directive into national law, seven years for more complex revisions. At the EU level, parts of the reform have also not entered into force immediately. The reform does not mean any fundamental revision of European trade mark law but some significant changes and harmonisation measures.
For example, a trade mark is no longer required to be capable of being represented graphically. This requirement is due to the fact that trade marks which are entered into a register kept in paper form have to be represented graphically so that the subject matter of trade mark protection is clear to everyone. Since trade mark registers are kept electronically nowadays, graphical representability is no longer required. This allows trade marks to be represented as a media file in future. This means that certain types of trade marks such as the sound mark (the sound of a closing car door), which have been virtually impossible to be graphically represented and thus not eligible for application, can now be filed as an audio file and are now capable of being examined.
After entry into force of the reform, it will be possible to file cancellation requests against registered trade marks due to non-use and, for the first time, also due to conflicting earlier rights with the offices, where they will be examined as to the substance and decided on. Until now, the decision in such cases exclusively rests with the courts of ordinary jurisdiction in Germany.
The Directive intends to approximate and harmonise the basic principles of the procedure of trade mark examination in the whole of the European Union. For this purpose, the Directive contains different procedural rules, which at least modify the provisions valid in Germany until now. In the future, for example, there will possibly be only one fixed period of use, for which use of an earlier trade mark must be documented. So far the applicable German trade mark law, namely the Trade Mark Act, has provided for two periods, one of which is variable (Sec. 43(1) Trade Mark Act).
The Federal Ministry of Justice and Consumer Protection is working intensively on the transposition of the Directive into German law, for which the DPMA provides support and expertise. The goal is to adopt the obligatory as well as optional changes as soon as possible into German trade mark law.
New: certification mark
The recast EU Directive 2015/2436 to approximate the laws of the Member States relating to trade marks of 16 December 2015 (EU Trade Mark Directive) provides for the optional introduction of a certification mark as another category of trade mark besides the individual trade mark and the collective mark.
Pursuant to Art. 27(2) of the EU Trade Mark Directive, a certification mark is a trade mark which is described as such when the mark is applied for 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, from goods and services which are not so certified. The certification mark can thus provide trade mark protection for seals of quality or test marks of neutral certification companies.
Therefore, contrary to the known categories of trade mark, the individual trade mark and the collective mark, the function of a certification mark is not to indicate to the commercial origin of goods and/or services but to certify specific characteristics of goods and/or services.
To make use of the option provided by the Directive and introduce a certification mark into national trade mark law, a national implementation act is required. So far, only a draft of this act has been available; however, when and in what form the act will be adopted has not yet been determined. The DPMA is preparing to accept applications for national certification marks from around mid-2018.
The EU Trade Mark Regulation 2015/2424, which entered into force on 23 March 2016, brought about the introduction of the EU certification mark on 1 October 2017. From this date on, EU certification marks can be applied for with the European Union Intellectual Property Office (EUIPO) with effect for the whole of the European Union, including Germany, and invoked as earlier rights also in German national proceedings, pursuant to Sections 9, 125b no. 1 of the Trade Mark Act (Markengesetz).
Picture 1: iStock.com/Drazen, Picture 2: iStock.com/rawpixel
Last updated: 19/05/18