THE EUTM
June 1, 2016
Presented by:
Ava K. Doppelt, Esq.
Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
255 South Orange Ave. Suite 1401
Orlando, FL 32801
407-841-2330
Fax 407-841-2343
E-mail: [email protected]
www.patentamerica.com
ĒĒ -YOU – TEM?
YOU – TEM?
EWW – TEM?
E – U – T – M?
So how did we get here?
European Union
“United in Diversity”
A unique economic and political union among 28
European countries to foster economic
cooperation and avoid conflict.
• Formed in 1958 as the European
Economic Community (EEC) (The
Treaty of Rome)
• Started with 6 countries –
Belgium
Italy
Frace
Luxembourg
W. Germany Netherlands
Since then, a huge single market has developed.
It began purely as an economic union but now spans policy
areas, from climate, environment and health, to external
relations and security, justice and immigration.
A name change in 1993 to the European Union (EU)
reflected this.
The Maastricht Treaty established the EU name and
introduced European citizenship.
Everything is founded on treaties agreed to voluntarily by
the member countries.
It is governed by the principle of representative democracy.
Citizens are represented at the union level in the European
Parliament.
Member states are represented in the European Council of
the EU.
• Helped raise European living standards
• Launched a single European currency – the Euro € (19
States)
• Because of the abolition of border controls among EU
countries, people can travel freely throughout most
of the continent.
• EU received the Nobel Peace Prize in 2012 for
advancing the cause of peace, reconciliation,
democracy and human right in Europe.
• The single or “internal” market is the EU’s main
economic engine, enabling most goods, services,
money and people to move freely.
• Another objective is to develop this huge resource in
other areas like energy, knowledge and capital
markets to ensure that Europeans can draw
maximum benefit from it.
• Its GDP in 2014 was $18,495 trillion U.S. dollars, 24%
of the global GDP.
• The EU anthem is based on Beethoven’s Ninth
Symphony.
As of today, there are 28 member states (includes over 508
million inhabitants, comprising 7.3% of the world’s
population, and covers 1,7047,787 square miles).
.
• Austria 1995
•
Denmark 1973
• Belgium 1958
•
Estonia 2004
• Bulgaria 2007
•
Finland 1995
• Croatia 2013
•
France 1958
• Cyprus 2004
•
Germany 1958
*Continued On Next Page*
• Czech Republic 2004
•
Greece 1981
• Hungary 2004
• Poland 2004
• Ireland 1973
• Portugal 1986
• Italy 1958
• Romania 2007
• Latvia 2004
• Slovakia 2004
• Lithuania 2004
• Slovenia 2004
• Luxembourg 1958
• Spain 1986
• Malta 2004
• Sweden 1995
• Netherlands 1958
• United Kingdom 1973
• The “European Trademark System” is a dual system, made up of the EUwide trademark system and the national systems of the EU member states.
• The EU trademark concept originated in 1964 in a draft of a “Convention of
European Trademark Law.”
• 1980 – The first proposal for a regulation dealing with the European
trademark appeared.
• The regulation establishing the trademark office was adopted by the
council of the European Union in 1993. Revised in 2009 and 2015. It
created the EUTM (CTM) as a legal instrument in the EU law and
established the office as an EU agency with legal, administrative and
financial autonomy.
• April 1, 1996 – The first EU trademark applications were processed and the
register started.
TM VIEW
Most complete search tool of its kind. Connected to databases of 40+
IP offices, including those of all EU member states, U.S., Korea, Mexico
and Canada.
Contains about 32 million registered trademarks. Since 2010, it’s
received more than 16 million searches from 149 countries.
DESIGN VIEW
Most complete design search. Contains about 8.9 million registered
designs.
A trademark which is pending registration or is registered in
the European Union as a whole, rather than on a national
level within the individual countries in the EU.
The EU TM system creates a unified TM registration system in
Europe, whereby one EU registration provides protection in
all member states of the EU.
The system is unitary – An objection against an EU
application in any member state can defeat the entire
application.
An EUTM registration is enforceable in all member states.
• Gives its owner a uniform right applicable in all
member states of the EU by a single procedure which
simplifies TM policies at the European level.
• It fulfills the three essential functions of a TM at the
European level:
(1) Identifies the origin of goods and services
(2) Guarantees consistent quality
(3) Is a form of communication, a basis for
publicity and advertising
• Can be a manufacture’s mark, a mark for goods of a
trading company, a service mark, or a collective mark.
And now – also a certification mark.
• Trademark rights are obtained by registration in the
EUIPO. When registered, transferred or allowed to
lapse, the effect is EU-wide.
• Valid 10 years, and can be renewed indefinitely.
FEES
The initial cost of filing, though generally higher than the filing
fees in the individual countries, is much less than the cost of
filing separate national applications in all 28 member states.
The applicant for a failed EU TM application can convert the
application into one or more applications in EU states in which
the grounds for refusal do not apply (but can’t recover the EU
filing fees and must pay fees in each country where the EU
application is converted).
NAMES
Community Trademark (CTM)
Trademark (EUTM)
European Union
Includes all previously registered CTMs, which became EUTMs.
OHIM
(EUIPO)
European Union Intellectual Property Office
OLD APPLICATION FEES
1 – 3 CLASSES
NEW APPLICATION FEES
(FOR FILING ONLINE)
€ 900
SINGLE-CLASS APPLICATION
€ 850
TWO-CLASS APPLICATION
€ 900
EACH ADDITIONAL CLASS
€ 150 PER CLASS
(Means slight savings for those filing single-class applications,
no change for two classes, and increase for three or more
classes)
APPLICATION FORMALITIES
PRIORITY
Must claim priority at time of filing. No longer have
further two months to do so.
Documents needed to support a priority claim must
be filed within three months of date of filing
application.
SEARCHES
Old system whereby OHIM automatically provided applicants with results of
search of CTM register – replaced by opt-in system for both search of EUTM
register and of national registers that offer such reports. No fees for EUTM
search report, but fees remain for national search reports. (Europeans say
they are not doing these searches.)
Regardless of whether applicant requested search of EUTM register, EUIPO
will send citation letters to owners of any earlier EUTMs cited, unless they
request not to receive such notification.
No longer one-month hiatus between transmission of search report to
applicant and publication of application, so applications should be published
and registered more quickly.
GRAPHIC REPRESENTATION
Mark applied for no longer required to be capable of
graphic representation, so opens door to nontraditional marks such as sounds, smells, tastes. But
– extends existing ground for refusal of shapes
(functionality).
CLASS HEADINGS
Endorsement of “literal meaning” approach to class headings. Per IP
Translator case, goods and services identifications that include class
headings are deemed to cover the literal meaning of the terms
covered, nothing more, i.e., not all goods or services within the class.
Note: Owners of registrations filed before June 22, 2012 with class
heading coverage have until September 23, 2016 to file a declaration
saying their intention at time of filing was to obtain protection
beyond literal meaning of class heading and specify the specific goods
and services (if in NICE classification list at time of filing date).
OPPOSITIONS
Opposition period will still last three months but will start one
month after publication by EUIPO, rather than the former six
months.
Will now be able to oppose EUTM applications on basis of
protected designations of origin or geographic indications.
Oppositions can be based on a reputation claim, regardless of
whether the goods and services of the opposed application are
similar or dissimilar to those of opposer.
Where opposition is based on a prior EU registration, the proof of
use date is now the filing date of the opposed application, rather
than its date of publication.
HARMONIZATION AT MEMBER STATE LEVEL
Proceedings for opposition, revocation and invalidity – must be a jointly
requested suspension period of at least two months. Malta, Benelux, France,
Spain and Italy will have to change practice.
Mandatory bad faith grounds for cancellation.
Mandatory provision for reputation-based refusal. Lithuania and Cyprus must
change.
Mandatory six-month grace period for late renewals.
Requires member states to make available office-based cancellation actions
(7-Year phase-in).
Established formal framework of cooperation between EUIPO and national
marks.