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Reform of European trade mark law

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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 arks 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.

Important changes and harmonisation

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. For example, application for a European Union certification mark will only be possible from 1 October 2017.
The reform does not mean any fundamental revision of European trade mark law but some significant changes and harmonisation. 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 (for example, 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.

Round table with people and "Brand" inscription

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. For example, there will only be a fixed period of use, for which use of an earlier trade mark must be documented. The applicable German trade mark law, namely the Trade Mark Act, provides for two periods, one of which is variable (Sec. 43(1) Trade Mark Act).

New: certification mark

As at the European level, the legislator plans to introduce a certification mark in German law. Such trade marks can be seals of quality, which are awarded to third parties by the trade mark proprietor if certain requirements determined by the latter are met.

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 ministerial draft bill was submitted on 3 February 2017 for comments by stakeholders. The goal is to adopt the obligatory as well as optional changes as soon as possible into German trade mark law.

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Picture 1: iStock.com/Drazen, Picture 2: iStock.com/rawpixel

Last updated: 23/11/17 

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