EU Trade Mark Reform

The EU Trade Mark reform, enacted through Regulation (EU) 2017/1001 on the European Union Trade Mark (EUTMR) and Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trade marks (the Trade Mark Directive), represents the most significant overhaul of European trade mark law since the original 1994 regime. The reform entered into force on 23 March 2016 (procedural provisions) and 1 October 2017 (substantive provisions). It modernised the registration system, clarified the scope of trade mark rights, and enhanced enforcement mechanisms.

The EU Trade Mark Right

The EUTMR establishes a unitary trade mark right valid across all European Union Member States. A single application to the European Union Intellectual Property Office (EUIPO), based in Alicante, Spain, produces a right enforceable throughout the EU. The unitary character means that an EUTM cannot be assigned separately, and its validity cannot be attacked in relation to only part of the EU except where that part is affected by a relative ground of refusal applicable only in that territory.

Absolute and Relative Grounds for Refusal

Article 7 EUTMR lists absolute grounds for refusal: signs that cannot constitute a trade mark; trade marks devoid of distinctive character; descriptive marks; customary signs; shape marks resulting from the nature of the goods or necessary to achieve a technical result; and marks contrary to public policy or accepted principles of morality.

The Court of Justice has developed substantial case law on distinctiveness. In OHIM v BORCO-Marken-Import Matthiesen (Case C-265/09 P), the Court held that the absolute grounds must be interpreted in light of the general interest underlying each. The reform abolished the requirement of graphical representation, allowing marks to be represented in any appropriate form using generally available technology (Article 4 EUTMR). This enables registration of sound marks, motion marks, multimedia marks, and hologram marks.

Article 8 addresses relative grounds: conflicts with earlier trade marks, unregistered rights, and other earlier rights in the course of trade. The relative grounds include likelihood of confusion (Article 8(1)(b)), which is assessed globally considering the similarity of the marks and goods/services and the distinctive character of the earlier mark.

EUIPO Practice and Registration Procedure

The EUIPO administers the EUTM system. The registration procedure comprises filing, examination (absolute grounds only — relative grounds are not examined ex officio), search, publication, opposition, and registration. Opposition must be filed within three months of publication. The EUIPO also operates a cancellation procedure for invalidity and revocation actions.

The reform introduced a certification mark (Article 83), distinct from the earlier collective mark. Certification marks guarantee that the goods or services meet certain standards, similar to certification marks in common law jurisdictions.

Infringement and Enforcement

Article 9(2) EUTMR defines the rights conferred by an EUTM: the proprietor may prevent third parties from using in the course of trade any sign identical or similar to the mark for identical or similar goods or services where there exists a likelihood of confusion, or for dissimilar goods where the mark has a reputation and use without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the mark.

The reform explicitly included infringing activities such as using the sign in comparative advertising, using the sign in the course of trade as a trade or company name, and using the sign in packaging, labels, or business documents. Article 9(4) clarifies that the proprietor may prevent the preparation of labels or packaging bearing the infringing sign.

The Directive harmonised enforcement provisions, requiring Member States to adopt measures, procedures, and remedies including injunctions, damages, and destruction of infringing goods. Articles 130–132 EUTMR regulate EUIPO actions in infringement proceedings, including applications for seizure by customs authorities.

Revocation and Invalidity

Articles 58 and 59 provide for revocation on grounds of non-use (five consecutive years without genuine use), genericism, and misleading use. Invalidity may be declared on absolute grounds (Article 59) or relative grounds (Article 60).

The reform introduced a new administrative invalidity procedure before the EUIPO, alongside existing cancellation procedures. This allows invalidity to be determined without recourse to national courts, reducing litigation costs.

Relationship with the Madrid System

The EUTM system interacts with the Madrid System for the International Registration of Marks, administered by the World Intellectual Property Organization (WIPO). An international registration designating the EU may be filed through the Office of origin, and the EUIPO examines it on absolute grounds only (Article 156). The EUIPO acts as a designated office under the Madrid Protocol, and decisions on protection in the EU may be appealed through the EUIPO’s internal review mechanisms.

Conversely, an EUTM may serve as the basis for an international application. The reform simplified the procedures for converting an EUTM into national applications where the EUTM has been refused or invalidated.

Enforcement in the Digital Environment

The reform enhanced the proprietor’s ability to enforce EUTM rights online. Article 9(3)(e) specifically provides that the proprietor may prevent third parties from using the mark in comparative advertising in a manner contrary to the Comparative Advertising Directive. The EUIPO’s enforcement guidelines address domain name seizures, marketplace listings, and social media use. National courts have developed case law on the liability of online platforms for trade mark infringement, applying the e-Commerce Directive’s framework alongside the EUTMR.