Implementing the EU Trade Marks Directive

Summary: Implementing the EU Trade Marks Directive

What's changing in national trade mark law? 2019

Contents

Summary 1

Comparative table 2

Benelux 3

France 4

Germany 5

Italy 6

Poland 7

Key contacts 9

Summary

Andreas Renck (Office Managing Partner, Alicante)

Background Our first IP Outlook webinar of 2019 focused on the implementation of the EU Trade Marks Directive and its impact across various Member States. EU Member States were required to implement the Directive into national law by 14 January 2019 (14 January 2023 for implementing cancellation proceedings before trade mark offices). The Directive aims to harmonise the conditions for obtaining and continuing to hold a registered trade mark so that they are, in the main, identical in Member States.

The key points of new Trade Mark Directive are:

 Seizure of Goods in Transit, Preparatory acts of infringement

 Date change for time to prove use in contentious proceedings

 Request for proof of use possible both in opposition, invalidity and infringement actions

 Intervening Rights (dormant marks)

 Implementation of Certification Marks  Registration of rights in rem and licences

 Cancellation proceedings before the Trade Mark Offices (TMOs)

Our focus This webinar summary explores how some of the EU Member States are handling the implementation of the Directive: what the most substantive changes are in each Member State; where brand owners might face challenges and what new opportunities exist for businesses protecting and enforcing their brands across the EU. We also address how to best deal with the new procedural rules for cancellation proceedings before TMOs that will be set in various member states.

Please refer to the following summaries for Benelux, France, Germany, Italy, Poland and Spain. With the UK expected to leave the EU on 29 March 2019, our London IP team will present on the UK developments in a separate webinar. A quick-reference comparative table is also provided, highlighting key differences across jurisdictions.

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Comparative table

Country Benelux France Germany Italy Poland Spain

Status of 1 /3/2019 fully In pr ogress Pa rtial In pr ogress Du e Feb/March Pa rtial im plemented 2 019 implementation Application Change: Single Change: Single No change: 1 fee 3 No change: No change: No change: class fee class fee classes Single class fee Single class fee Single class process – Fee fee structure

Guidance on new No guide – Non e as yet Secondary law / Non e as yet Non e as yet No guide – options set up pu blications options set types of mark a v ailable up Opposition – Changes Ma jor changes Changes Ma jor change Changes Changes ex pected Grounds of opposition

Opposition – Yes – No change Yes - Change Yes - Change Yes – No change Yes – No change Yes – No change Multiple earlier rights in same action

Opposition - Yes – No change Yes – with Yes – with Yes – with Yes – No change Yes – changes changes changes m ajor Request for proof change of use (PoU) of earlier marks?

Cancellation – Yes – Change Du e 2020 Du e 2020 Du e 2023 Yes – No change Du e 2023 (a s of 1 June TMO proceedings 2 018) implemented?

Cancellation – Is No – m ajor No – No – a bsolute No – Ma jor Yes – Yes – PTO change - depending of gr ounds change - No change - ex clusively the TMO a lternatively ty pe of action ex clusively with a lternatively PTO exclusively r esponsible exclusively in courts and PTO PTO, rest courts and PTO r esponsible charge of a lternatively courts and PTO proceedings?

Cancellation – Change – Change – Change – Change – Non e - a s PTO Non e - a s depending on depending on depending on type depending on ex clusively PTO Enforcement complexity, type th e prior of ev idence ty pe of evidence r esponsible ex clusively strategy of ev idence r ight(s) pr oduction, pr oduction, r esponsible considerations pr oduction and inv oked n umber of n umber of or a l hearing instances available in stances a n d interest in a v ailable and or a l hearing or a l hearing Cancellation – Art. Change No No change – Change information Changes in 8 EU TM Directive: yet. in terpretation Intervening rights possible however du e to the TM Dir ective Infringement Position Change No changes No changes Change No exclusive licensee – Non - changes actions - Relevant str engthened ex clusive changes: licensees licensees may la unch pr oceedings (unless the con tract pr ovides oth erwise)

Benelux

Win Yan Lam (Senior Associate, Amsterdam)

Status: Not fully met target date but very close. Amended Benelux (BX) Convention on IP comes into force 1 March 2019 (all final changes), BX Office very proactive with two rounds of changes already (1) Implemented 1 June 2018: Cancellation procedure before BX Office; Reputation as opposition ground; New role for BX Court of Justice. (2) implemented 1 Jan 2019 – New single class fee structure (and an overall 1.5% fee increase). Highlights: 4 substantial changes adopted: Reputation as an opposition ground; Cancellation procedure before BX Office in place; New 1 fee per class structure for applications; BX Court of Justice now venue for appeals against BX Office decisions. Application process – Fee structure: Change - Before 3 classes with basic fee, now single class fee structure. Additional fee per class doubled to around €80. Guidance on new types of mark: No guidelines but indication that the new types of mark will be incorporated into the existing e-filing system. Opposition - Grounds of opposition: New ground for Reputation adopted 1 June 2018. An evaluation highlighted a real need for this ground. Trade names not added as evaluation did not identify such a need. Opposition - Multiple earlier rights in same action: Previously permitted in the same opposition action – no change. Opposition - Request for Proof of Use (PoU) of earlier marks allowed? Previously allowed – Deadline 2 months from date of receipt of opposition arguments

Cancellation TMO proceedings implemented? Implemented since 1 June 2018. Cancellation – Is the TMO exclusively in charge of proceedings? There's a choice to go before BX Office or national courts. Cancellation actions before the courts have priority over office cancellation actions so the BX office will suspend actions where the same disputed mark has a pending court cancellation action. Enforcement strategy considerations: The BX Office cancellation proceedings are more straightforward, inspired by opposition proceedings (typically 1 written round and no oral hearings). Generally, English can be used as the procedural language before the BX Office if both parties agree. However for complex cases, the courts may be a more suitable venue.

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France

Fanny Cony (Associate, Paris) and Julie Gemptel (Associate, Paris)

Status: In December 2018 the Association of Trade Mark Specialists was granted access to draft implementing the Directive. On 15 February 2019, the Final Draft Ordinance and Decree implementing the Directive were circulated within the Association of Trade Mark Specialists. A public consultation has been launched up until 20 March 2019. French parliament is discussing a draft act authorising FR government to implement the Directive. Ordinance publication is expected within 6 months following enactment of the draft act, then FR parliament ratification is due 6 months following publication. FR TMO aims to implement cancellation by beginning 2020. Highlights: Invalidity actions based on relative grounds: (i) While currently claimant must demonstrate that it has interest in the invalidation of the mark (operates identical/similar business under identical/similar name) before French courts, after the implementation of the Directive any natural or legal person owning the prior right will be able to start cancellation proceedings before the FR TMO; (ii) Plaintiff in a main invalidity action can chose to launch action before TMO or the courts depending on the prior rights. Application process – Fee structure: Change – Keen to adopt single class fee structure – no exact fees indicated yet but an application in 3 classes may work out more expensive than now.

Guidance on new types of mark: None in place. Opposition - Grounds of opposition: Major change - Provisional draft implementing Directive extends the list of acceptable prior rights including; corporate names, name/image/reputation of a public institution/public law org.; TM filed w/o authorisation of agent or representative of owner. Currently, notorious unregistered TM must have identical Goods/Services but implementation will enable opponent to rely on a prior well-known registered trade mark even though the latter covers different Goods/Services. FR law already allows opponent to rely on prior designations of origin and Geographical Indications (GIs). Opposition - Multiple earlier rights in same action: Now permitted in the same opposition action (No fee info. available). Opposition - Request for PoU of earlier marks allowed any time? Requests were already allowed within 2 months of notification of the opposition, so no change. Change – Currently only use of at least one of the G&S upon which opposition is based must be proved. After implementation, proof of use for all Goods/Services is required. Evidence no longer required as of date of request but as of the filing or priority date of contested TM.

Cancellation TMO proceedings implemented? Expected to come into force 2020. Cancellation – Is the TMO exclusively in charge of proceedings? Competency is dictated by the type of action as well as the kind of earlier rights involved. For example the French TMO will handle invalidity actions based exclusively on absolute grounds or a prior trade mark, corporate name, GI, designation of origin, name/image/reputation of a territorial authority/public organization or for applications filed by the TM agent/representative of the TM owner and main revocation actions. Courts will handle main invalidity actions based on at least one of some relative grounds including author's rights, designs, personality rights, domain name, trade name as well as invalidity and revocation counter claims.

Germany Marion Fischer (Senior Associate, Munich) and Malte Wachsmuth (Senior Associate, Hamburg)

Status: On time. Target met. Amended German (DE) TM Act entered into force 14 Jan 2019 – all material changes stipulated by TM Directive now enforced. Procedural rules on new cancellation action before the German Patent and Trade Mark Office (DPMA) enter into force May 2020. Highlights; Multiple earlier rights allowed in same opposition action; "floating" non-use-defence abolished for oppositions; New types of mark, including certification marks; May 2020 brings non - use & prior rights cancellation actions before DPMA.

Application process – Fee structure: No change to previous basic fee €300 (€290 e-filing) up to 3 classes + €100 per additional class. Guidance on new types of mark: Secondary TM legislation in place setting out rules for application procedure for new types of mark. DPMA communication issued describing details such as accepted storage mediums/formats. Opposition - Grounds of opposition: 2 new grounds for opposition – GIs and Designations of Origin. Company names, trade names etc. continue to be an option. Opposition - Multiple earlier rights in sam e action: Now permitted in the same opposition action (€50 per extra right invoked). Opposition - Request for PoU of earlier marks allowed? At any time? Note that the scope of the non-use-defence is now more restricted. Now proof may only be requested for the 5 year period before the date of filing the contested application or priority date. Further PoU request (relating to all further 5 year periods up until to the decision), so called "floating" non- use defence is no longer possible in an opposition but is still possible in cancellation proceedings (this may be reviewed for compliance with EU law). No specific time limit but general rules of "as early as possible" apply so case -by-case assessment may apply to later requests.

Cancellation TMO proceedings implemented? Will come into force 2020. Cancellation – Is TMO exclusively in charge of proceedings? From May 202o, there will be a choice to go before the DPMA or the courts for actions based on prior rights of non-use. The DPMA has exclusive competence for cancellations based on absolute grounds. Enforcement strategy considerations: 3 Considerations when deciding whether to go before the DPMA or the courts for cancellation proceedings. 1) Cost – DPMA less expensive & more straightforward 2) Means of evidence – DPMA allows affidavits but the courts don’t. Witness must appear in person in court. 3) Appeals – If the chance of a 3rd instance review at the German Federal Court shall be maintained best, courts should be chosen as ways of getting to the German Federal Court from the DPMA are more limited.

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Italy

Maria Luce Piattelli (Senior Associate, Milan)

Status: Implementation ongoing. At the end of 2018 the government issued a decree to amend the IP code. Secondary legislations are expected to be issued by Italian (IT) PTO as soon as law comes into force. On 24 Jan 2019 the head of IT PTO summarised to IT parliament the main provisions to be changed and substantial/procedural rules. A new decree is expected in force in the following months. Procedural changes will enter into force before final deadline 2023. Highlights: Introduction of non-traditional TMs; Protection for reputed TMs; General improvement of options for cancellation and invalidity at an administrative level. Application process – Fee structure: Current single fee structure - €34 each additional class. No changes in draft but secondary legislation to review.

Guidance on new types of mark: None in place. Opposition - Grounds of opposition: Major change expected as soon as law is enforced; inclusion of reputed & well-known TM in context of Paris Convention; Previously not possible to rely on fame in oppositions. Opposition - Multiple earlier rights in same action: Previously permitted in the same opposition action – no change. Opposition -Request for PoU of earlier marks allowed? Previously available and the curren draft of the new law indicates no major changes to be expected. No change to deadline (1st substantive brief of applicant). One change to align with the EU Directive is the relevant period which is 5 years preceding filing or priority date of the application.

Cancellation TMO proceedings established? Expected to come into force in 2023. Cancellation – Is the TMO exclusively in charge of proceedings? Major change. Previously no administrative cancellation/revocation action. These actions are not alternative options to the ordin ary validity and revocation actions of the IP court. Draft law provides a system of staying proceedings where a n action has been launched. Coordination is also expected for counterclaims of invalidity within infringement proceedings. A cancellation and revocation proceedings outline has been provided in the draft and they vary widely from court proceedings. They are more similar to oppositions, and quicker than current proceedings. The Italian IPO has made a request to the parliament for staff at judge -level to handle these changes.

Poland

Ewa Kacperek (Counsel, Warsaw)

Status: Implementing act under consideration by Polish parliament and the lower house has adopted it. The law is due in force Feb/March 2019. No need for adoption of procedural rules as they are already in place.

Highlights: New rights for licensees; PoU in invalidation proceedings. Application process – Fee structure: No change to previous single class fee structure. €100 first class + €30 each additional class.

Guidance on new types of mark: None in place. Opposition - Grounds of opposition: 2 new grounds for opposition – GIs and Geographical Designations of Origin. Company names continue to be an option. Opposition - Multiple earlier rights in same action: Previously permitted in the same opposition action – no change. Opposition - Request for PoU of earlier marks allowed? PoU requests were previously possible before implementation, so no changes. Deadline for request is with 1st submissions.

Cancellation TMO proceedings implemented? Previously available, no change. Cancellation – Is the TMO exclusively in charge of proceedings? The Patent Office of the Republic of Poland (PPO) has exclusive competency. However for cancellations of an EUTM with infringement proceedings, actions can be filed before the EUTM courts. Infringement actions - Relevant changes: licensees: Changes have been made concerning licensees who can now file infringement claims but exclusive and non-exclusive licensees have different options. Exclusive licensees can file infringement claims if the trade mark holder does not react despite being notified of the infringement. Non-exclusive licensees can only bring infringement actions if they have the consent of the TM owner. Licensors have the option to exclude these rights in the license agreement.

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Spain

Constanze Schulte (Partner, Madrid)

Status: December 2018 brought a government decree to modify the TM act. This was confirmed by Parliament in January 2019. Implementation is not yet met completely: PoU provisions pending adoption of implementing regulations. Current reform may not be final as, on confirming the decree, Parliament launched adoption of the law as an act of parliament so some amendments are possible. Highlights: Role and function of the Spanish Patent and Trademark Office (SPTO) changed. Introduction of PoU for oppositions (to enter into force soon). Cancellation proceedings before PTO as of 2023. Protection of intervening rights in cancellation and infringement actions. Application process – Fee structure: No change – Single class fee structure. Guidance on new types of mark: In Jan 2019 the patent office issued instructions on general conditions/requirements for filing new types of marks. New TM application forms now available. Main impact is from elimination of graphic representation requirement . Opposition - Grounds of opposition: Well-known marks as ground for opposition were available prior to the reform but the corresponding provision has been redrafted. Previously, 2 types of well-known mark existed: 1)"marca notoria" sector specific 2)"marca renombrada" known to general public. New law uses only the term "marca renombrada" but concept appears broader than previously (the preamble of the decree reforming the law refers to it as a mark that is known by "a significant part of the public interested in the goods and services"). Company/trade names previously possible and continue to be. GIs expressly introduced as grounds for opposition. Opposition - Multiple earlier rights in same action: Previously permitted in the same opposition action – no change. Opposition - Request for PoU of earlier marks allowed, and if so, when? Major change. PoU requests will be possible following the adoption of the implementing rules. Currently an applicant can only initiate a court action for non-use to defend itself against an attack from a non-used Spanish mark in opposition proceedings (elevated efforts/costs). Details for the new procedure still to be defined. Long time limit for providing proof of use is unlikely as the ES PTO proceedings favour procedural economy. The current draft of the changes to the implementing regulation provides that the request for proof of use must be made within the time limit for responding to the opposition and tha t the proof of use must be provided within one month from the notification thereof by the PTO. Cancellation TMO proceedings implemented? Provisions on the new procedures adopted an expected to come into force 2023. Cancellation – Is the TMO exclusively in charge of proceedings? Major change. As the law stands, the Spanish IPO will have exclusive competence for main cancellation and revocation actions as of 2023– this type of action was not previously available. The commercial courts will be restricted to ha ndling counterclaims in an infringement action. However, this may be reviewed with the claimant being given the option to go through the commercial court for main actions as part of the legislative process that is still under way. Cancellation – Art. 8 EU TM Directive: Intervening rights. Corresponding articles fully implemented – "protection for intervening rights" protects marks that have been registered despite the existence of earlier rights. Where action is taken against a later registered mark, the attacking mark may be subject to evidence of distinctiveness, reputation and not only upon initiation of the action but also from the priority date of the attacked mark. This calls for solid documentation of use of core marks and diligent opposition strategy when onsidering opposing later marks to contain the emergence of intervening rights.

Key contacts

Andreas Renck Malte Wachsmuth Office Managing Partner, Alicante Senior Associate, Hamburg T +34 965 1383 00 T +49 40 419 93 0 [email protected] [email protected]

Win Yan Lam Maria Luce Piattelli Senior Associate, Milan Senior Associate, Amsterdam T +39 02 720 2521 T +31 20 55 33 600 [email protected] [email protected]

Fanny Cony Ewa Kacperek Associate, Paris Counsel, Warsaw T +33 1 53 67 47 16 T +48 22 529 29 00 [email protected] [email protected]

Julie Gemptel Constanze Schulte Associate, Paris Partner, Madrid T +33 1 53 67 47 47 T +34 91 349 82 00 [email protected] [email protected]

Marion Fischer Senior Associate, Munich T +49 89 290 12 0 [email protected]

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