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The restructuring of the Rights of Trademarks within the European Union in favor of the innovation of enterprises

Home > Intellectual Property in France | Published 2015-10-13

Legal security, the predictability and innovation of enterprises drove the Commission, the European Parliament and Counsel to reform trademark law within the European Union. Thus the harmonization of the registration procedure and the resulting reinforcement of control methods against the counterfeiter form the cornerstone of this restructuring. The Commission’s adoption on the June 10, 2015 of the “package brand” marks the commencement of changes that should be transposed by members of State with a deadline of 36 months. Until such time, PICOVSCHI lawyers can inform you of what is to come.

Consolidate the innovation of enterprises while harmonizing the procedure of registering trademarks within the European Union

The first significant point of this reform is a new definition of trademarks

Presented in article 2 of the directive 2008/95/CE at the Council of European Parliament the brand as, “any of the signs capable of being represented graphically, notably the words, such as personal names, designs, letters, the shape of products and of it’s packaging, under the condition that each mark belongs to the products or services of an enterprise or those of other undertakings.”

Thus the right of the European Union requires that the mark be capable of graphic representation making it extremely difficult, near impossible, to pass with a trademark in sound or smell. The “packaging brand” hopes to do away with this obligation of graphic representation which leaves some hoping to try their luck again in obtaining protection of a trademarked smell.

Recall, that the OHMI (Office d’harmonisation du Marché Intérieur or The Office for the Harmonization for the Internal Market) had admitted in 1999 by the Smell of Fresh Cut Grass Decision the registration of a branded smell. But since Sieckman, Refusal to Register a Branded Smell of the CJUE (Court of Justice of the European Union) on December 12, 2002 stating, “the requirements of graphic representation are not fulfilled by a chemical formula, by a description through written word, by the submission of a sample of a smell or by the combination of these elements,” and no further registration for these types of trademarks was successful.

This new definition should itself accompany the creation of a European trademark replacing the actual communal trademark, and thus the change of the name of the office.  However, the OHMI must leave space for the office of Intellectual Property.

To better define the guaranteed legal rights conferred by the registration of a of a trademark

The European institutions must consider the accuracy requirement regarding denominated categories, proposed by the Chartered Institute of Patent Attorney c/ Registrar of Trade Marks decision by the CJUE on June 19 2012. During the case concerning “IP translator,” the CJUE disrupted the positions of OHMI and the INPI (National Institute of Intellectual Property) concerning the description of products and services listed in the categories designated to registration demands, corresponding to the “Classifications of Nice”. In High Court, the use of general information or the designation of an entire class including general terms is not quite accurate enough to say that the rights given to the applicant are sufficiently determined. The “package brand” states that community trademark applicants, having addressed the entire premises of a category, could regulate the situation by limiting and refocusing their choices.

Besides this the geographical indications and appellations of controlled origins will be integrated into the list of citations justifying the refusal or opposition of the registration of a trademark. These two signs were already added to article L711-4 of Intellectual Property Code, following the Hamon Law of March 17, 2014.

Contributing to the competitiveness of enterprises by reducing the fee for submitting a trademark

At present, the fees linked to submitting a trademark in France at the community level allow one to apply for one’s trademark in three classes. However, a large number of enterprises are not interested in submitting their mark for trademarking in one or two of the categories. The European institutions hope to modify this by offering more than flexibility to enterprises by introducing the idea of one tax per class. Besides this, the European Commission is announcing significant reduction of tax costs notably for the enterprises who wish to benefit from long protection (more than 10 years).

Affirm the legal security of trademark owning enterprises strengthening the fight against means of counterfeiting

The European institutions found that the European Union is a hub for the distribution of goods. The beginning of research with the “package brands” is to avoid the European Union serving transit for the distribution of counterfeit goods in the world.  

Today goods that are not intended for sale within the European Union or that are merely in transit may be custom to seizures. This reform will hopefully change this by disallowing such seizures.

Besides that, preventative measures are reinforced since the trademarks could themselves oppose the realization of all acts preparing for the apposition of illegal trademarks on products that are associated with services. They may also ask for a ban making it forbidden to infringe upon the mark in any medium.

The mark of an enterprise reflects its image, serving to retain clientele and therefore constituting an added value. It is necessary to an enterprises growth and development of its competitiveness. Therefore, it is essential to adapt legal methods to develop socially and entrepreneurially, so as to protect and preserve the marks of one’s enterprise. This evolution should bring into account access to the protection of rights conferred by the submission of a trademark. The new ways of fighting against counterfeiting at the national level in Europe are regularly put into place eradicating the flow of important economic, human, and cultural items.

In regard to underlying issues and trademark law, it is essential that the heads of the enterprise take support and advice from an intellectual property lawyer. PICOVSHI lawyers, master of all aspects of trademark law on the French, European, and national levels can offer you the optimal solution to benefit your enterprise.

This article is available online for public information purposes. It is updated regularly, as needed. Due to the constant evolution of the laws and the legal system, we cannot guarantee that the information in this article is still applicable. We invite you to contact us with any legal questions or concerns you have regarding this topic at +33 1 56 79 11 00. In no way can this firm be held liable for articles that contain inaccuracies or are now out of date.

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