January 27, 2016
EU Trade Mark Reforms - Shape mark exclusions widened
EU Trade Mark Reforms - Shape mark exclusions widened
Trade mark law in Europe will undergo some significant reforms in the next few months.  A new EU Regulation (2015/2424) and EU Directive (2015/ 2436) were enacted in December 2015 (to enter into force from March 2016) which introduce some very important changes affecting Community Trade Marks (CTMs). One of the reforms brought in by the new Regulation will widen the provisions which currently exclude certain types of shape marks from registration. Under the current law, a trade mark will be refused registration on absolute grounds if the sign consists exclusively of the shape of the goods themselves, or a shape which is necessary to achieve a technical result (e.g. functional shapes), or a shape which provides substantial value to the goods (Article 7(1)(e) CTMR).  Notably, this ground for refusal cannot be overcome through evidence of acquired distinctiveness. New grounds for refusal These exclusions for shape marks will now be widened to apply to all characteristics of the sign, beyond just the shape.  This means that from 23 March 2016, if a sign consists exclusively of “another characteristic” (other than just its shape) which (i) results from the nature of the goods themselves; (ii) is necessary to obtain a technical result; or (iii) gives substantial value to the goods, then this will also now fall foul of the absolute grounds for refusal. This will apply to any characteristic of the sign concerned, meaning that this exclusion from registrability will be significantly widened.  This will potentially now catch characteristics such as colour, smell, sound and perhaps even ornamentation and is expected to lead to the refusal of more (most likely non-traditional) marks. In view of this forthcoming change in examination practice, we would urge any clients considering protecting an unconventional mark (such as those listed above) to expedite the filing of their application such that it may still be examined under the current law (i.e. before 23 March 2016). We would also highlight that this reform will create a temporary discrepancy between the examination of EUTMs and the national examination of UKTM applications. The implementing Directive requires the UK to amend our national legislation to fall in line with this EU law any time before January 2019, therefore the examination of such marks under UK law will arguably be more lenient in the interim period.  

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