DOCSLIB.ORG

Implementing the EU Trade Marks Directive

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
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 1 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. 2 Hogan Lovells 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) 3 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. 4 Hogan Lovells 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.
Load more

Recommended publications
  • Official Journal C 244 of the European Union
    Official Journal C 244 of the European Union Volume 59 English edition Information and Notices 5 July 2016 Contents II Information INFORMATION FROM EUROPEAN UNION INSTITUTIONS, BODIES, OFFICES AND AGENCIES European Commission 2016/C 244/01 Communication from the Commission amending the Annex to the Communication to the Member States on the application of Articles 107 and 108 of the Treaty on the Functioning of the European Union to short-term export-credit insurance ............................................................................. 1 IV Notices NOTICES FROM EUROPEAN UNION INSTITUTIONS, BODIES, OFFICES AND AGENCIES European Commission 2016/C 244/02 Euro exchange rates .............................................................................................................. 3 2016/C 244/03 Commission notice on the customs enforcement of Intellectual Property Rights concerning goods brought into the customs territory of the Union without being released for free circulation including goods in transit .................................................................................................................... 4 2016/C 244/04 Commission notice concerning the date of application of the Regional Convention on pan-Euro- Mediterranean preferential rules of origin or the protocols on rules of origin providing for diagonal cumulation between the Contracting Parties to this Convention .................................................... 10 EN NOTICES FROM MEMBER STATES 2016/C 244/05 United Kingdom Government notice concerning
    [Show full text]
  • City Research Online
    City Research Online City, University of London Institutional Repository Citation: McDonagh, L. and Mimler, M. (2017). Intellectual Property Law and Brexit: A Retreat or a Reaffirmation of Jurisdiction? In: Dougan, M. (Ed.), The UK after Brexit. (pp. 159-179). Cambridge, UK: Intersentia. ISBN 1780684711 This is the accepted version of the paper. This version of the publication may differ from the final published version. Permanent repository link: https://openaccess.city.ac.uk/id/eprint/17634/ Link to published version: Copyright: City Research Online aims to make research outputs of City, University of London available to a wider audience. Copyright and Moral Rights remain with the author(s) and/or copyright holders. URLs from City Research Online may be freely distributed and linked to. Reuse: Copies of full items can be used for personal research or study, educational, or not-for-profit purposes without prior permission or charge. Provided that the authors, title and full bibliographic details are credited, a hyperlink and/or URL is given for the original metadata page and the content is not changed in any way. City Research Online: http://openaccess.city.ac.uk/ [email protected] CHAPTER 8 INTELLECTUAL PROPERTY LAW AND BREXIT: A RETREAT OR A REAFFIRMATION OF JURISDICTION? Luke McDonagh and Marc Mimler* Intellectual Property Law and Brexit 1. INTRODUCTION The effect of European Union law on intellectual property (IP) law in the United Kingdom has been profound. There is no area of IP law that does not feature EU legislation or CJEU case law. In fact, it may be the most ‘Europeanised’ area of private law.1 For this reason, ‘Brexit’ will undoubtedly have a massive impact on the current IP framework in the UK.
    [Show full text]
  • Eucrim 1/2016
    eucrim 2016 /1 THE EUROPEAN CRIMINAL LAW ASSOCIATIONS‘ FORUM Focus: Procedural Rights and Cooperation – New Tendencies Dossier particulier: Droits procéduraux et coopération – nouvelles tendances Schwerpunktthema: Verfahrensgarantien und Zusammenarbeit – neue Tendenzen The Directive on the Presumption of Innocence and the Right to Be Present at Trial Steven Cras and Anže Erbežnik The Directive on the Presumption of Innocence. A Missed Opportunity for Legal Persons? Stijn Lamberigts Inaudito reo Proceedings, Defence Rights, and Harmonisation Goals in the EU Prof. Dr. Stefano Ruggeri Paving the Way for Improved Mutual Assistance in the Context of Customs Fraud Emilia Porebska Können die Regelungen über die Zusammenarbeit der EU-Mitgliedstaaten bei der Strafverfolgung kurzerhand aufgehoben werden? Ulrich Schulz Vollstreckungshilfe zwischen Deutschland und Taiwan auf neuer Grundlage Dr. Ralf Riegel and Dr. Franca Fülle 2016 / 1 ISSUE / ÉDITION / AUSGABE The Associations for European Criminal Law and the Protection of Financial Interests of the EU is a network of academics and practitioners. The aim of this cooperation is to develop a European criminal law which both respects civil liberties and at the same time protects European citizens and the European institutions effectively. Joint seminars, joint research projects and annual meetings of the associations’ presidents are organised to achieve this aim. Contents News* Articles European Union Procedural Rights and Cooperation – New Tendencies Foundations Procedural Criminal Law 25 The Directive on the Presumption of 2 Fundamental Rights 13 Procedural Safeguards Innocence and the Right to Be Present at 2 Area of Freedom, Security 13 Data Protection Trial. Genesis and Description of the New and Justice 15 Ne bis in idem EU-Measure 3 Schengen Steven Cras and Anže Erbežnik Cooperation 36 The Directive on the Presumption of In- Institutions 16 European Arrest Warrant nocence.
    [Show full text]
  • The German Association for the Protection of Intellectual Property (GRUR)
    The German Association for the Protection of Intellectual Property (GRUR) The Secretary General German Association for the Protection of Intellectual Property (GRUR) Konrad-Adenauer-Ufer 11 Konrad-Adenauer-Ufer 11 . RheinAtrium . 50668 Köln . Germany RheinAtrium 50668 Köln Phone +49 (0) 221 650 65-151 Fax +49 (0) 221 650 65-205 Email [email protected] www.grur.org July 1, 2013 Full English Version Opinion of the German Association for the Protection of Intellectual Property (Deutsche Vereinigung für gewerblichen Rechtsschutz und Urheberrecht e.V.) regarding the European Commission proposal for a recast of the Trade Mark Directive The German Association for the Protection of Intellectual Property (GRUR) is a scientific non-profit as- sociation. Its statutory purpose is the academic advancement and development of industrial property, copyright and competition law at the German, European and international level. For fulfilling these tasks, GRUR provides assistance to the legislative bodies and to authorities competent for issues of intellectu- al property law, organises conferences, workshops and further education courses, provides financial aid to selected university chairs and research projects and also publishes four leading German professional IP law journals (GRUR, GRUR International, GRUR-RR and GRUR-Prax.) With over 5,250 members coming from 52 countries, the association offers an umbrella for a wide range of IP professionals: law- yers, patent attorneys, judges, academics, representatives of the specific public authorities and of the international organisations as well as enterprises dealing with issues of intellectual property. On 27 March 2013 the European Commission presented proposals for an amendment of Regulation 207/2009 on the Community trade mark (Regulation) and for a recast of Directive 2008/95/EC for the approximation of the laws of the Member States relating to trade marks (Directive).
    [Show full text]
  • Governance by Committee: the Role of Committees in European Policy Making and Policy
    Governance by Committee: The Role of Committees in European Policy Making and Policy Research Paper 00/GHA Return to Introduction STATE OF THE ART REPORT CONTRACT NUMBER: HPSE-CT-1999-00019 PROJECT NUMBER: SERD-1999-00128 TITLE: GOVERNANCE BY COMMITTEE, THE ROLE OF COMMITTEES IN EUROPEAN POLICY-MAKING AND POLICY IMPLEMENTATION MAASTRICHT, MAY 2000 Table of Contents 1. General Introduction ................................................................................................................ 4 Subproject 1: The Standing Committees in the European Parliament 2.1..................Introduction ............................................................................................................... 6 2.2..................The Evolution of the European Parliament: From Consultative ............................... 6 Assembly to Co-legislator 2.2.1...............The EP as a Legislative Actor after Maastricht......................................................... 7 2.2.2...............EP and Council on an Even Footing after Amsterdam.............................................. 8 2.2.2.1. ..........The Streamlining of the Co-decision Procedure........................................................ 9 2.3..................The Role of EP Committees in the Legislative Process ............................................ 10 2.3.1...............Membership in EP Committees.................................................................................12 2.3.2...............Powers and Competences of EP Committees...........................................................
    [Show full text]
  • The Repackaging of Pharmaceutical Products and Parallel Trade in the EU
    Legal Feature The Repackaging of Pharmaceutical Products and Parallel Trade in the EU Héctor Armengod and Laura Melusine Baudenbacher examine how European case law affects trademark owners’ ability to lawfully oppose further marketing of their repackaged product. The question of whether pharmaceutical products can be repackaged by parallel traders has been – and continues to be – a recurrent topic before the European Court of Justice. In the European Union, each member state, based on its own healthcare policy, dictates Price differences among the prices of the drugs sold in its territory. This leads to significant differences in the price of EU member states lead to pharmaceuticals across the EU. These differences create business opportunities for parallel business opportunities for importers who can buy the drugs in those countries where they are cheaper and import them in parallel importers the more expensive ones, thereby obtaining a lucrative margin. The packaging and labelling of pharmaceuticals is highly regulated both at EU and member state level, and a product acquired in a given member state often needs to be repackaged before it is placed on the market of a different member state. Repackaging can interfere with the trademark rights of the original supplier of the product. The protection of trademark rights has been recognised by the ECJ as an essential element in the system of undistorted competition which the EC Treaty seeks to establish and maintain1. The exercise of these rights can, however, be in conflict with the principle of free movement of goods, which is one of the cornerstones of the EU internal market.
    [Show full text]
  • Collective Rights Management in the Digital Single Market
    Implementation of the EU Trade Mark Directive 2015 Intellectual Property Office is an operating name of the Patent Office Implementation of the EU Trade Mark Directive 2015 Contents Introduction ............................................................................................................. 1 Relevance of UK withdrawal from the EU ......................................................... 1 Our approach to implementation ...................................................................... 2 About this consultation ............................................................................................ 2 Proposed amendments in detail ............................................................................. 3 Article 3: Signs of which a trade mark may consist .......................................... 3 Article 3: Removal of requirement for ‘graphic representation’ in section 1 - new file formats ................................................................. 3 Article 3 (and Article 39.2): ‘Competent authorities’ ............................... 4 Article 4: Absolute grounds for refusal ............................................................ 5 Article 4.1(i),(j),(k) & (l) – specific references to geographical indications, traditional terms for wine, etc .............................................. 5 Article 4.5: distinctive character acquired after application date, but before registration date (optional) ............................................ 6 Article 5: Relative Grounds for refusal or invalidity ..........................................
    [Show full text]
  • EU Trade Marks: When Is the Right Time for a Face Lift?
    The In-House Lawyer www.inhouselawyer.co.uk The In-House Lawyer Spring 2016 TMT Focus EU trade marks: when is the right time for a face lift? By John R Olsen, partner, Locke Lord t appears that the right time for a face lift is conceived EU trade mark and the Office for when the spirit needs a nuance of rejuvenation Harmonization in the Internal Market (OHIM) and the elements for doing so are all to hand. itself, which is to be renamed the European Union ISimilarly, as a brand is the face of an organisation Intellectual Property Office (EUIPO) . The new the time for a ‘face lift’ of a business organisation is Directive came into force on 13 January 2016, when opportunities present themselves and there is and is intended to harmonise further the national a need to revitalise. The European Parliament has trade mark systems and laws of the individual now provided that opportunity and necessity for member states of the European Union. businesses to think seriously about getting a new face for their brands in view of the new legislation. Summary of key administrative changes and alterations in examination practice John R Olsen Introduction Pricing At the end of December 2015, the European Of importance to smaller companies, individuals Partner, Locke Lord Parliament adopted a reform package for European and start-ups is the abolition of the previously [email protected] trade marks which will result ultimately in the inflexible ‘three classes for one’ pricing structure, implementation of substantial changes to European whereby the cost of filing for a CTM in up to trade mark law throughout the course of 2016 – and three classes was fixed, so that an application beyond.
    [Show full text]
  • The European IP Bulletin
    The European IP Bulletin The Intellectual Property, Media & Technology Department Issue 28, January 2006 McDermott Will & Emery UK LLP 7 Bishopsgate London EC2N 3AR Tel: +44 20 7577 6900 Fax: +44 20 7577 6950 www.mwe.com www.mwe.com/london Boston Brussels Chicago Düsseldorf London Los Angeles Miami Munich New York Orange County Rome San Diego Silicon Valley Washington, D.C. SUMMARY OF PAGE CONTENTS NO. HOT TOPICS 1. WORLD TRADE ORGANISATION MEMBERS AGREE TO AMEND THE 1 TRIPS AGREEMENT ON PATENTS AND PUBLIC HEALTH The decision of the General Council of 6 December 2005 on the amendment of the TRIPS Agreement makes the flexibilities contained in the 2003 decision on patents and public health permanent. This in effect will lead to the first amendment of a core WTO Agreement. 2. UK CHANCELLOR ANNOUNCES INTELLECTUAL PROPERTY REVIEW 2 As part of his Pre-Budget Report Package, the Chancellor of the Exchequer, Gordon Brown, has announced the launch of an independent review of intellectual property in the UK, to be headed by the former editor of the Financial Times. COPYRIGHT 3. SONY BMG’S ANTI-PIRACY SOFTWARE IN BIG TROUBLE 3 Sony BMG’s trouble started immediately following Windows programming expert Mark Russinovich's discovery that Sony’s anti- piracy software used virus-like techniques to stop illegal copies being made. There have been several class action lawsuits launched against both Sony BMG and First4Internet. Widespread pressure has made Sony BMG take actions to settle the dispute. 4. EVALUATION OF EU RULES ON DATABASES 4 The European Commission has published an evaluation of the protection EU law gives to databases.
    [Show full text]
  • Page 1 of 20 3-2-2011
    Page 1 of 20 IMPORTANT LEGAL NOTICE - The information on this site is subject to a disclaimer and a copyright notice. OPINION OF ADVOCATE GENERAL CRUZ VILLALÓN delivered on 3 February 2011 (1) Joined Cases C-446/09 Koninklijke Philips Electronics NV v Lucheng Meijing Industrial Company Ltd Far East Sourcing Ltd Röhlig Hong Kong Ltd and Röhlig Belgium NV (Reference for a preliminary ruling from the Rechtbank van eerste aanleg te Antwerpen, Belgium) Case C-495/09 Nokia Corporation v Her Majesty’s Commissioners of Revenue and Customs (Reference for a preliminary ruling from the Court of Appeal of England and Wales, United Kingdom) (Goods placed under the external transit procedure – Intellectual property rights – Regulation (EC) No 3295/94 and Regulation (EC) No 1383/2003 – Treatment of goods in transit as if they were goods produced in the territory of the Union (‘production fiction’) – Conditions governing action by the customs authorities in cases where goods in transit are counterfeit or pirated – Suspected infringement of an intellectual property right) Table of contents I – Introduction II – Legal framework A – Regulation No 3295/94 http://curia.europa.eu/jurisp/cgi-bin/gettext.pl?where=&lang=en&num=79889796C190... 3-2-2011 Page 2 of 20 B – Regulation No 1383/2003 III – The main proceedings and the questions referred for a preliminary ruling A – Philips B – Nokia IV – The procedure before the Court of Justice V – A preliminary matter: similarities and differences between Nokia and Philips VI – Analysis of the question referred for
    [Show full text]
  • The Communicative Aspects of Trade Marks : a Legal, Functional and Economic Analysis
    The communicative aspects of trade marks : a legal, functional and economic analysis. Maniatis, Spyros M The copyright of this thesis rests with the author and no quotation from it or information derived from it may be published without the prior written consent of the author For additional information about this publication click this link. http://qmro.qmul.ac.uk/jspui/handle/123456789/1659 Information about this research object was correct at the time of download; we occasionally make corrections to records, please therefore check the published record when citing. For more information contact [email protected] THE COMMUNICATIVE ASPECTS OF TRADE MARKS: A LEGAL, FUNCTIONAL AND ECONOMIC ANALYSIS by SPYROS M. MANIATIS A Thesis Submitted for the Degree of Doctor of Philosophy Intellectual Property Law Unit Centre for Commercial Law Studies Queen Mary and Westfield College University of London July 1998 Table of Contents Page Acknowledgments .9 Abstract .10 CHAPTER I Introduction .................................................................................................................. 11 1.1. Defining trade marks as communicators and assets.............................................11 1.2. Some trade mark problems...................................................................................12 1.3. The scope and objectives of this thesis ................................................................13 1.4. The tools for evaluating the hypothesis................................................................13
    [Show full text]
  • Abolition of Graphical Representation in EU Trademark Directive: Should Countries with Similar Provisions Follow EU’S Footsteps?
    View metadata, citation and similar papers at core.ac.uk brought to you by CORE provided by NOPR Journal of Intellectual Property Rights Vol 24, May-July 2019, pp 62-68 Abolition of Graphical Representation in EU Trademark Directive: Should Countries with Similar Provisions Follow EU’s Footsteps? Tolulope Anthony Adekola† School of Law, City University of Hong Kong, Tat Chee Avenue, Kowloon, Hong Kong SAR Received: 18 March 2019; accepted: 23 July 2019 Since the graphical representation requirement for trademark registration was abolished in the European Union, the need to critically appraise its effect on the registration of Non-Traditional Marks has become necessary. The question as to whether or not countries with similar provisions for graphical representation in their trademark laws should follow in the footsteps of the European Union has also become relevant. This paper critically evaluates the effect of the removal of the graphical representation requirement on the registration of olfactory, tactile and gustatory marks by offering arguments, examples and legal authorities to support its view. The paper found that even though the EU has recently relaxed the graphical representation requirement, this step makes very little practical difference to the registrability of olfactory, tactile and gustatory marks. The reason for the said category of mark’s failure to satisfy the graphical representation requirement prior to its abolition still persists under the revised EU registration system. In this regard, the paper concludes that the changes brought about by the EU Trademark Reform Package are more cosmetic than substantive with regard to the registration of olfactory tactile and gustatory marks.
    [Show full text]