Trade Marks 2017

The Trade Marks guide provides expert legal commentary on the key issues for businesses involved in intellectual property matters. The guide covers the important developments in the most significant jurisdictions.

Last Updated March 01, 2017

Andreas von Falck focuses on litigation/counselling in patent law and all other areas of IP, specifically in the pharmaceutical, medical devices and high-tech industries. Andreas is recommended for patent litigation by numerous legal publishers. He regularly speaks at patent law conferences and has published extensively on, for example, preliminary injunctions in patent matters, transactional IP issues, the Unitary Patent system, second medical use claims and ancillary competition law issues. Andreas is leader of the firm's IP group and a member of its International Management Committee.

Hogan Lovells International LLP teams bring a broad range of legal capabilities to the table. The firm has major strengths in corporate law, dispute resolution and finance, alongside world-class capabilities in areas such as competition, government regulatory, intellectual property, tax and real estate. This means that the firm is able to advise its clients seamlessly on the full spectrum of legal issues, on a global scale. The firm’s key industry sectors include: aerospace, defence and government services; automotive; consumer; education; energy and natural resources; infrastructure; financial institutions; industrials; life sciences and healthcare; real estate; sports and recreational facilities; telecommunications, media and technology; and transportation.

Trade Marks: Global trends and developments

The Impact of "Digital"

The undeniable and continuing trend in the global brand world of today is the influence of digital technologies on customer interactions. Brands interact with customers in more ways than ever before. The more credible and authentic the communication is, the more valuable the brand becomes. But, in times of increased reach of brands through digital technologies, the real fight is for "face time." Brand ambassadors or advocates communicate with a view to enhancing the credibility of the brand – or tarnish it for good. A natural expansion of the "real" ambassador are the virtual ambassadors, avatars, or brand impersonations that exist only in an online world and that can become even stronger (and cheaper and more reliable) ambassadors of the brand. A rich and rounded brand experience can be a strong experience for customers, so strong that, in fact, the brand itself can affect behaviours. No longer is it the customer that selects the brand – instead, it is the brand that can create and change behavioural and even social patterns. The brand can take the shape that suits the customer. Personalisation of brand appearances makes the brand performance even stronger, and unprecedented technology delivers the brand experience into customers' homes, with the customer opening the door through handsets, TVs or smart home-control devices. Predictive technology can time the brand contact in more efficient ways than ever before, and social communities can be used to add further credibility to the brand. Today, a car maker can allow its car to be controllable via an app, which in turn can incorporate an unlimited number of add-on services, ranging from smart home options to financial services and online shopping; the result can be a brand experience that is partly removed from the traditional "auto" world and allows the leveraging of the brand in areas where brand owners believe they can credibly act.

Omnichannel interactions are the norm nowadays. Still, with these techniques becoming more common, the key issue of getting customer attention is not going away. What these strategies offer is the ability to capture the attention of customers that are willing to interact more fully than ever before; the downside, however, is that when everybody else does the same thing the loyalty of individual customers will be higher – but it will be harder to create in the first place. This concern also highlights the need for practically any brand owner today to engage in Customer Experience Management (CEM) programmes in order to retain a meaningful market presence.

Legal Services and Digital Markets

In 2016, the most highly valued brands according to Forbes were once more Apple, Google, Microsoft and Coca Cola, followed by more media and technology companies, consumer brands and the occasional car maker. But how can all these brands be protected efficiently in the digital age? In a world that is dominated by technology, the ability of brands to enter the private sphere of the customer is unprecedented. However, the same is true of the ability to hijack, abuse and destroy brands through technology. The demands on legal services around the creation, management and protection of brands increase at the same speed at which the options for the use of brands expand. Whilst the mere registration of trade marks is easier than ever before, data protection and IT security and online protection are becoming integral parts of a rounded brand strategy. Legal service providers that are not "IT savvy," enhancing performance through standardisation, whilst at the same time reducing costs and increasing transaction speed, will disappear. The importance of the digital world even for a traditional brand owner is mirrored in today's litigation world where banks or pharmaceutical companies with the same or similar brands enter into vigorous fights regarding domain names, social media names or colours used on websites.

Changes in the European Trade Mark Landscape

In the European Union 2016 was an important year for trade marks. On 23 March, the European Union trade mark reform legislative package came into effect modernising the Community trade mark, which is the greatest reform of the Community trade mark system since its introduction in 1996. The Reform Package consists of an amended European Union Trade Mark Regulation (Regulation (EU) 2015/2424) and a new Trade Marks Directive (Directive (EU) 2015/2436). The reform aims to give users a greater incentive to register Community trade marks by making the registration cheaper, quicker and more reliable and guaranteeing more protection for trade mark owners. For example, owners of EUTMs now have the ability to obtain the seizure of counterfeit goods being transported through Europe, even if the final destination is outside the European Union. 

Besides the "rebranding" of some of the EU brand nomenclature itself from Community Trademark (CTM) to European Union Trademark (EUTM) and from Office for Harmonization in the Internal Market (OHIM) to the European Union Intellectual Property Office (EUIPO), other fundamental changes were made, eg implementing a new fee structure with a one-fee-per-class system for trade mark applications and renewal fees.

On top of those administrative changes, the reform package also implements substantial technical improvements. Trade marks need not be “graphically represented” anymore, which potentially permits the registration of scent, sound, taste and colour; marks and designations of Origin and Geographical Indicators will be barred from trade mark registration. In addition, the reform was used for codification of case law of the Court of Justice of the European Union (ECJ). In the IP Translator decision a clear and precise description of products and services to be protected by the trade mark registration was requested by the ECJ. Whereas in the past this protection covered all the products and services included in the class heading which was chosen by the trade mark owner, the protection is now limited to the list of goods and services as indicated in the file request. For some trade mark owners, not modifying the description of the products and services may lead to a limitation of the economic and legal value of their trade mark. This amendment of the law of trade marks reflects precisely how important it is not only for potential trade mark owners to know the law, but also for those that are already registered.

The European Union Trade Mark and Brexit

Following the UK's vote in 2016 to leave the EU, many businesses that own EUTMs covering the UK will need to consider filing national trade marks in the UK to protect their key assets in the British Isles. The actual consequences of Brexit for those brand-owners after the withdrawal from the EU will depend on the outcome of the UK government's negotiations with the EU. The rights and obligations following the EUTM are made for members of the European Union. Whether they can be grandfathered to take effect in the UK is uncertain at this stage. For companies on the market in the EU and the UK, it is definitely time to review their trade mark portfolio carefully and consider whether they ought to file for supplemental UK protection soon as a back-up to ensure continuous protection of their portfolio.