第一項值得注意的變動是，此次修法寫入歐洲法院（European Court of Justice；ECJ）2012年IP Translator一案的判決教示。IP Translator一案十分重要，申請人及各國智財局可依此原則判斷商標包含的服務商品範圍，而原本分歧的歐盟各國智財局相關實務作法，也得以藉本次判決加以統合。在IP Translator一案宣判前，若有申請人指定其商標範圍涵括某一尼斯分類碼，有些智財局（例如OHIM）會當作是涵蓋該分類碼下所有的商品服務，因此這會直接影響商標權的有效性及包含範圍，而其他智財局（例如UKIPO）則規定申請人必須提示其商標包含該分類碼下哪些商品服務，而且採用不同的法律判準（使用其「通常意思」）判定該分類碼到底包括哪些商品服務。而依2012年的IP Translator案判決，申請人若使用一尼斯分類碼界定其商標保護範圍，申請人須同時提示其申請案是否意圖囊括該分類碼清單所列全部商品服務，又或僅包括部分商品服務，若僅包括部分商品服務，申請人須指明其申請未意圖包括哪些商品服務。
這是歐盟商標保護的重要議題。各局的理解及作法各異，如何調和統一，其實經過漫長的討論。此次改革方案的調和版本規定，商品服務的描述必須「清楚精確」（clear and precise）、足以使人判斷商標保護範圍，實務上，這代表分類碼標題（class heading）將以字面意思解讀，「寫什麼就是什麼」。這套標準將適用既有及未來的商標申請案，申請人使用尼斯分類碼，將視為包括該分類碼所有可能的適用例。
改革方案裡還有一項實質變革，即商標若包含商品自然產生的特徵、為達到一技術結果的必要特徵、或會給予該商品巨大價值的特徵，都將不予註冊。過去只有形狀商標申請案適用前述例外排除，如此規定未來將使非傳統標誌更難註冊商標。不過依Sieckman v DPMA一案判決，圖像呈現（graphic representation）不再綁入商標註冊適格性標準，因為按其判決，即使是人眼所無法見到（例如氣味、聲音之類），只要能以清楚精確的方法呈現，且未包含任何商品自然產生的特徵，都可予以註冊。
除此之外，由商標註冊成本結構調整，也可以看出歐盟規劃的未來目標。商標申請的價格將隨之調降，但一件申請案將只能寫入單一一項尼斯分類碼所含商品服務，而過去一件申請案最多能指定三項分類碼。舊制申請人可寫入三項分類碼，包括許多根本沒用到的商品服務項目，導致權利重疊，加大商標防侵權檢索的時間及金錢成本，衍生許多實際不存在的潛在權利衝突，判斷商標註冊有效與否，無謂增添更多不確定性。此番改制，加上前述IP Translator一案判決有關商標範圍的教示，希望能降低相關成本及複雜度，提供企業更親民且有效率的商標制度，也為商標使用者及第三方提供更多可預測性及法律明確性（predictability and legal certainty）。
EU Trade mark reform Stefano John / European Patent Attorney at Jinn IP
The European Parliament has recently adopted a package of reforms to EU trade mark (TM) law as determined by the EU Council together with the EU Commission and the EU Parliament which was made public in June 2015. This package includes changes to the EU TM Regulation (EU Regulation is direct Law applicable throughout the EU) and a Directive (EU Directives are set of Laws as proposed by the EU which have to then be interpreted and incorporated into national Law of EU member states by a set deadline). The EU TM reform package contains many procedural and organizational modifications to the EU TM system, but some of these affect the substantive issues in TM registration practice and rights that derive therefrom.
A first notable change is the codification in law of the "IP Translator" judgement made by the ECJ (EU Courts of Justice) in 2012. The "IP Translator" case is important because it settled a central issue regarding how applicants and IP offices determined the scope of services and/or goods covered by a TM and it harmonized differing practices in this respect across the IP offices in the EU. Before "IP Translator", if an applicant designated the scope of the TM under a certain Nice classification, some IP Office, like OHIM, assumed that all goods and/or services within that class were covered. This thus directly affected the validity and scope of the TM right. Other IP offices, like the UKIPO, required that the applicant must identify which goods and services are covered and used a different legal test to determine which services and/or goods within the Nice class were covered (applying their "ordinary meaning"). The 2012 "IP Translator" judgement set out that if the applicant uses a Nice class to determine scope of the trade mark protection, they must also specify whether its application is intended to cover all of the goods and/or services included in the alphabetical list for that class or only some of them. If only some were included, the applicant is required to specify which of the goods or services in that class are not intended to be covered.
After a long discussion between the different IP offices on how to harmonize this crucial issue regarding TM protection in the EU, the present reform package has determined that description of goods and/or services must be sufficiently 'clear and precise' to determine the scope of protection of the trademark. In practice this means that the class headings will be interpreted literally, also known as the 'means-what-it-says' approach. This will apply to both existing and future TM applications. If one uses a Nice class, it will be assumed that all possible examples within that class will be covered.
Another substantive issue found in the reform package, is that TM will not be registerable if they consist of any characteristic which results from the nature of the goods, which is necessary to achieve a technical result, or which gives substantial value to the goods. Previously only shapes were unregisterable if they had these qualities. This may make non-traditional marks even harder to registered. However, the criteria for registrability will no longer include a requirement for 'graphic representation'. This follows the Sieckman v DPMA decision that enables applicants to register signs that cannot be seen (such as smells, sounds, etc...), so long as they can be represented in a manner that is clear and precise and do not consist of any characteristic which results from the nature of the goods.
Other notable legal issues that will be clarified and codified by the reform package include the principle that TM owner will be able to prevent fake goods transiting through the EU where the holder or owner of those goods is unable to prove that the TM owner would not be entitled to prohibit the placing of those goods on the market in the country of final destination. How to prove such a legal test still needs to be determined. Other issues include the ability to block the use of a TM in comparative advertising and the fact that actions regarding TM infringement by a later EU or national trademark can be estopped if it was previously decided not to bring invalidity actions actions against those later marks (unless it can be shown that the later marks were applied for in bad faith).
Further to the substantive issues mentioned above, the change in TM registration costs illustrate what the EU is trying to achieve. The price for a TM application will be reduced, but that same application will be able to cover only 1 Nice class of services and/or goods, whereas before it could cover up to 3 Nice classes. The old system of up to 3 nice classifications resulted in many marks covering unused services and/or goods. This overlap of rights can make trademark clearance searches slower and more costly, can create potential conflicts between rights where, in reality, there are none, and has led to greater uncertainty in the validity of the registrations in general. Together with the introduction of clarification as to TM scope as discussed above in light of the IP Translator case, it is hoped that the reformed system will be more accessible and efficient for businesses in terms of lower costs and complexity and provide greater predictability and legal certainty for TM users and for third parties.
The above mentioned changes may affect the validity of a TM right, its scope in infringement. It also affects the present practice of applying for a TM and steps required in avoiding possibly competing TMs. It is thus advisable to review the utility, and therefore the value, of existing TM portfolios and TM strategies undertaken by companies within the EU up to now in light of these changes.
Stefano John has previously worked at the EPO and for a variety of European patent firms, both before and after qualifying as European Patent Attorney in 2009. Since 2012, he has worked at NAIPO, often contributing to this newsletter. Since Oct. 2015 he has started Jinn IP – a European IP firm tailored for foreign applicants wanting to file in Europe based in Oxford, UK.
