In our article of February 2016, we reported on some approved changes to EU trade mark legislation that would affect both EU-wide trade mark rights, and national trade mark rights in EU member states. Some of these changes entered into force immediately, and others required further legislation to be enacted.
The last of the changes affecting EU-wide trade mark rights are set to come into effect on 1 October 2017, and herald new opportunities for brand owners seeking to establish and enforce their trade mark rights throughout the EU.
Of these changes, those that we consider to be most relevant to our clients are discussed below.
Applications for EU trade marks will no longer be required to contain a graphical representation of the mark. As of 1 October 2017, the mark can represented in any appropriate form using generally available technology, provided that the representation is deemed to be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
In theory, this could pave the way for an increased uptake in the filing of non-traditional marks such as sounds, which may now be represented with an MP3 file (inter alia), and moving images/holograms, which may be represented with an MP4 file (inter alia).
Such marks will still need to meet the other requirements for registration, however, including that the mark be capable of indicating the commercial origin of the goods and services, which can pose a particular obstacle for less traditional types of mark.
It will be possible to obtain an EU-wide certification mark for the first time. Certification marks indicate to the public that the goods or services in relation to which they are used comply with certain quality standards or possess a particular characteristic. Registration of a certification mark means that the owner can authorise others to use it, where they are able to demonstrate that their goods have the requisite qualities. This should prove a welcome development for those involved in the administering and supply of certified goods and services, and EU consumers alike.
EU trade mark procedure
A number of changes affecting the administration of EU trade marks are to be introduced, many of which serve to enhance the efficiency of proceedings at the EU Intellectual Property Office (the “EUIPO”).
For instance, where certain information relevant to proceedings is available online, parties will be able to simply refer the EUIPO to the relevant source, rather than providing the information in full. The rules on translation of evidence into official EU languages are also to be relaxed in certain circumstances.
Some changes will also affect the examination of trade marks. In particular, where a trade mark is refused on the basis that it is not inherently distinctive of the goods and services applied for, an applicant can currently respond by arguing against this finding, and/or by filing evidence to support that the mark has acquired distinctive character through use. Many applicants wish to pursue both of these claims, and up to now it had been necessary to do so concurrently. Under the new legislation, however, the applicant may exhaust its right of appeal on the issue of inherent distinctive character, before pursuing an alternative claim that the mark has acquired distinctive character. In some cases this will result in cost savings as there tends to be a high evidential burden in establishing acquired distinctive character.