On 15 December 2015 the European Parliament approved on second-reading the reform of the european trademark system. The reform consists first of all of the replacement of the existing Trademarks Directive 2008/95/EC with the new Directive 2015/2436/EU (available here, the “Directive”), which has been published in the Official Journal of the European Union on 23 December 2015.

The Directive entered into force on 12 January 2016, 20 days after its publication, but the Member States will have 3 years to transpose its provisions into their national laws. According to Article 55 of the Directive, Directive 2008/95/EC is repealed but with effect from 15 January 2019.

On the other hand the Regulation (EU) n. 2015/2424 (available here, the “Regulation”), amending the Community Trademark Regulation 2009/207/EC and repealing the Commission Regulation n. 2869/1995 on the fees payable to the OHIM, has been published in the Official Journal of the European Union on 24 December 2015. The Regulation will enter into force on 23 March 2016, 90 days after its publication.

While the provisions of the Regulation concerning community trademarks will obviously directly enter into force, those of the Directive concerning national trademarks may undergo changes during the process of transposition into the various domestic laws (as it happened in Italy, e.g. with the provision concerning the obligation of the licensee to use the trademark to distinguish goods or services identical – in quality – to those placed on the market by the owner or by other licensee, an obligation which was not foreseen by the Directive 2008/95/EC).

The main amendments introduced by the reform (for our previous comment on the reform see here) can be summarized as follows:

• the replacement of the names “Office for Harmonization in the Internal Market” and “community trademark” with “European Union Intellectual Property Office” (“EUIPO”) and “European Union trade mark” (“EU trade mark”) (Art. 1 point 1 and 7 of the Regulation);
• the repeal of the requirement of graphic representability from the trademark’s definition and its replacement with the provision that a sign can be represented in any manner, not necessarily graphic, enabling the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor (Art. 3 lett. b of the Directive and Art. 1 point 8 of the Regulation);
• the extension of the absolute grounds of refusal or invalidity of the registration provided for signs constituted by a shape also to signs constituted by «another characteristic», i.e. to signs constituted for example by a smell, a sound or a colour, which will not be registrable if that characteristic is considered imposed by the nature of the product, or necessary to obtain a technical result or giving substantial value to the product; think, for example,  to a  typical alarm sound whose registration is claimed  for home-surveillance apparels (Art. 4.1 lett. e of the Directive and Art. 1 point 8 of the Regulation);
• the codification of the principles adopted by the CJEU as concerns the renowned trademarks about the application of their protection also when the sign is used for products or services which are identical or similar to those for which the trademark is registered (Art. 5.3 lett. a and 10.2 lett. c of the Directive and Art. 1 point 10 lett. b and point 11 of the Regulation);
• the addition, to the provision concerning the rights conferred by the registered trademark, of the specification that the owner of the trademark may also prohibit the use of the sign as a trade or company name and the use of the sign in comparative advertising, if made in a way which is contrary to the Directive 2006/114/EC (Art. 10.3 lett. d and f of the Directive and Art. 1 point 11 of the Regulation);
• the introduction of provisions on the goods in transit in the EU concerning the faculty for the owner of the trademark to prevent third parties from bringing fake goods, in the course of trade, into the Member State where the trademark is registered (Art. 10.4 of the Directive and Art. 1 point 11 of the Regulation);
• the amendments to the provision concerning the limitation of the effects of a trademark consisting in the specification that the owner is not entitled to prohibit to a third party to use in the course of trade the name or the address if the third party is a natural person (Art. 14.1 of the Directive and Art. 1 point 13 of the Regulation);
• the addition of the provision that the owner is not entitled to prohibit a third party from using in the course of trade signs or indications which are “not distinctive” (Art. 14.1 of the Directive and Art. 1 point 13 of the Regulation);
• the provision that applications for EU trademarks can be filed only at the EUIPO (Art. 1 point 25 of the Regulation);
• the addition of provisions concerning the designation and classification of goods and services according to which they have to be identified by the applicant with sufficient clarity and precision in order to determine the extent of the protection sought (Art. 39 of the Directive and Art. 1 point 28 of the Regulation).

Among all the new provisions, those on the goods in transit in the EU have been so far the most criticized, and are however those which have undergone most changes before the approval of the final text of the Directive and of the Regulation.

Moreover, it is not yet fully clear the significance of the provision according to which the entitlement of the owner shall «lapse» (in the italian text: «si estingue», in the french text «s’éteint», in the german text «erlischt», in the spanish one «extinguirá», etc.) if during the proceedings to determine whether the registered trade mark has been infringed, evidence is provided by the «declarant» (i.e. the defendant, holder of the goods) that the proprietor of the registered trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination. Probably the only reasonable meaning that can be attributed to this provision is that if that evidence is provided, the owner cannot bring future actions to prohibit the marketing of the same branded goods.

Sara Caselli