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.