On 1 October 2017, several changes came into effect in relation to EU trade marks. The Intellectual Property “Unjustified Threats” Act is also now force. We summarise the key points.

1. Abolition of the ‘graphical representation’ requirement

Under the old rules, trade marks had to be represented graphically. This requirement presented problems when it came to non-traditional trade marks such as depicting colour and sound marks. Prior to the change in the law, it was also problematic for rights holders defending these types of marks. For example, in Glaxo v Sandoz, which we reported on last year, the mark was considered to be non-compliant with the old rules.

Trade marks can now be represented in any appropriate form using generally available technology, as long as the representation is “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. Notable methods of representing an EU trade mark which are now acceptable are MP3 files for sound marks, and MP4 files for holograms, multimedia, or motion marks. This is good news for rights holders seeking to protect unconventional trade marks.

2. Introduction of EU certification trade marks

An EU certification mark denotes that particular goods or services conform to a certain quality or standard, such as a ‘CE’ mark or a ‘woolmark’. It will now be possible to register a certification across all EU member states, rather than individual jurisdictions. Applicants for certification marks must submit regulations of use within two months of the application. This will regulate the use and testing of the goods or services by the certifying body.

It is important to note that certification marks cannot be owned by a person carrying out a business involving the supply of the goods and services of the kind certified. The certification body permits the rights holder to use the certification mark only. As such, this will be of great importance to certifying bodies with an interest across several EU member states.

3. The Intellectual Property (Unjustified Threats) Act 2017

The rules around unjustified or “groundless” threats have changed. As under the old law, the new Act prevents intellectual property rights holders from making unjustified threats of infringement proceedings which affect the commercial interests of a party. The aim of the Act is to harmonise groundless threats provisions across trade marks, patents and design rights. It does not extend to passing off, copyright or the misuse of confidential information.

Now, any party in the supply chain that is affected by the threat can bring an action against the ‘threatener’ under the Act. However, the exceptions under the Act have been extended. For example, to include “importing for disposal goods bearing the mark”. It is also worth noting that IP rights holders can now threaten primary infringers with secondary infringement. By way of reminder, secondary infringement in trade marks and designs can be related to retail and / or distribution.

As before, rights holders need to be careful and take advice before sending cease and desist letters. They must be carefully worded and only be sent if there is a genuine infringement case. As before, the justification defence still remains which prevents the aggrieved party bringing an action if there is or would be an infringement.