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The “Trademark Package”, what practical developments in trademark law?

Vanessa Bouchara

Updated on January 16, 2022
The “Trademark Package”, what practical developments in trademark law?

Adopted more than two years ago by the European Parliament, the “Trademark Package” is a major step forward in trademark law at both the European and national levels. It introduces significant changes to trademark law and procedures (revocation and invalidity actions). We propose to expose the main developments in trademark law.

The “Trademark Package” is composed by Regulation No. 2015/2424 and Directive No. 2015/2437.

The Regulation, which came into force on March 23, 2016, changed the state of the law regarding trademark protection at the European Union level.

The Directive, which must be transposed into national law before January 2019 (or January 2023 concerning the administrative revocation and invalidity procedures that we will discuss), modifies the national trademark regime.

  • A renewal of terminologies and definitions

As you may have noticed, since the Treaty of Lisbon of December 13, 2007, which came into force on December1, 2009, it is refer to “Community law” since  the European Communities are no longer exist. The term “Community trademark” was therefore totally outdated.

The “Trademark Package” has therefore reformulated this notion of “Community trademark” into “European Union trademark”.

This renaming also affects the Office for Harmonization in the Internal Market (OHIM), which is now renamed ” European Union Intellectual Property Office” (EUIPO).

Less cosmetic, the “Trademark Package” gives a new definition of the notion of ” trademark ” since the requirement of a graphic representation is henceforth suppressed.

Thus, the European legislator gives the possibility, in order to take into account future scientific and technological developments, to allow the registration of new categories of trademarks (sound, smell, taste, touch trademarks…).

Although such trademarks could not be registered before this reform, the jurisprudence has sometimes – but rarely – accepted the registration of trademarks that were in principle refused. Thus, a decision of the Board of Appeal of the EUIPO of February 21, 1999 accepted the registration of an olfactory trademark to designate tennis balls. This brand was described as ” the smell of freshly cut grass “.

However, trademarks must always be represented on the registers ” in a clear, precise, distinct and easily accessible, intelligible, durable and objective manner” in order to be fully effective against third parties.

Thus, in light of current technological advances, certain categories of trademarks such as scent and taste trademarks are still not protectable, as it is still impossible to preserve a smell or taste in a “durable and objective” form.


  • A significant strengthening of the conditions of validity

By imposing a new condition for the validity of a trademark, the “Trademark Package” has harmonized the classification and designation of goods and services covered by trademark applications.

From now on, and in line with the “IP TRANSLATOR” decision issued by the European Court of Justice on June 19, 2012, all the offices of the European Union will have to adopt the same method of classification and designation of the products and services which will be analyzed under a literal approach: the protection being thus limited to the only products and services specifically listed.

In addition to the classic appellations of origin and geographical indications, plant names previously protected at the national level, traditional specialties guaranteed and traditional expressions for wines are now part of the prior rights that can be used against a subsequent trademark.

A notable development is that from now on, all signs that depend on the nature of the goods, that confer substantial value on them or that are technically necessary for them are excluded from protection under trademark law.

  • A nuanced extension of the holder’s powers

The owner of a trademark is now authorized to oppose the affixing of its sign on any product, label, packaging, marking or other. He may also prohibit the use of his sign by a third party in a comparative advertisement if the latter is contrary to the rules on misleading advertising.

Moreover, the owner can now prevent the entry into the common market of goods bearing one or more signs identical to his own, even if the goods are only in transit on the territory of the Union and are not intended to be put on the market.

However, the “Trademark Package” considers that the owner of signs protected as trademarks cannot prohibit their use when it is considered ” honest in industrial and commercial matters “, which thus constitutes a limit to his powers.

The legislator gives some examples, in the form of an open-ended list, of what would be considered as such.

We will have to remain attentive to the jurisprudential developments in this area, as this will surely be the subject of numerous decisions.

  • Towards a general overhaul of the tax system?

The “Trademark Package” modifies trademark registration fees, with the objective of relieving the registries by avoiding systematic filings in 3 classes.

Thus, a progressive taxation system is set up from the second class. The registration of a European Union trademark in 3 classes is now more expensive than before.

It is likely that the INPI will do the same in the near future.

  • Extended powers of the Trademark Offices

The Trademark Offices of the EU Member States must now all offer an opposition procedure open to holders of earlier trademarks. This is already the case in France. However, the list of opposable prior art may be modified. Following the entry into force of the Trademark Package, it is possible that a company name may be used as a basis for an opposition.

Furthermore, the Directive provides for the possibility of filing an opposition on the basis of several prior rights, provided that they belong to the same owner.

Actions for revocation or invalidity of a trademark will henceforth fall under the jurisdiction of the national trademark offices.

Thus, trademark law is profoundly modified by Regulation No. 2015/2424 and Directive No. 2015/2437, companies will necessarily have to adapt to them. Thus, we can only recommend them to use professionals in this field in order to secure their registrations and defend their trademarks on all fronts.

See > 
PACT LAW: BRAND PACKAGE  in particular on subsequent developments in French law. in French law.

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