EU trademark law is currently undergoing the biggest reform in its history. 1 October 2017 marks another important milestone in the implementation of the EU Trademark Reform Package as a further set of very important amendments will come into force. The main areas of change include the abolishment of the graphical representation requirement for trademarks, the introduction of a certification mark at EU level and a number of procedural changes that aim to streamline proceedings within the EU.
Abolishment of ‘graphical representation’
The upcoming abolishment of the requirement of graphical representation for EU trademarks is among the most significant changes introduced by the reform package. This long-awaited amendment will make it much easier to register non-traditional trademarks. As of 1 October 2017 the requirement to represent a mark ‘graphically’ will no longer apply. It is envisioned that this will enable brand owners to obtain registrations for non-traditional trademarks, such as those protecting sound, colour, shapes and movements, far more easily. To provide an example that demonstrates the impact of the change: Under the current system, sound marks could only be registered when a music notation or a sonogram was provided by the applicant. As of 1 October 2017, this will no longer be required. The practical effect is that sounds may be registered in any appropriate form using generally available technology and need not be represented by graphic means.
Secondary legislation specifies the details and the European Commission has meanwhile adopted a corresponding Implementing Regulation and Delegated Regulation. Article 3 of the EU Trademark Implementing Regulation (EUTMIR) lays down specific rules and requirements for the representation of the different kinds of trademarks, including some technical requirements. It also names whether a description is required to obtain an EU trademark and outlines the format accepted by EUIPO when filing a trademark on or after 1 October 2017.
For sound marks, the Office will now accept a digital sound file (JPEG MP3). The same applies to motion marks where a video file may be submitted (JPEG MP4). A description can be submitted for motion marks but this is optional and no longer mandatory. In addition, the regulation specifies the format requirements for multimedia marks (MP4) and hologram marks (JPEG MP4). Although this upcoming change will provide far more flexibility to brand owners, some non-traditional marks, such as smell marks, will remain problematic to register under the new rules.
EU Certification Mark
In addition to the changes applying for EU trademarks, an EU Certification Mark will be introduced as of 1 October 2017. This new type of trademark at EU level will enable certifying institutions to permit the use of the mark as a sign for goods or services complying with the applicable certification requirements. Certification marks can certify the nature of the goods or services for which they are used. This may include, for example, materials of construction, a method or mode of manufacture of goods or provision of services, accuracy of the goods or services, and any definable characteristic of the goods or services but not the origin of a product since this is covered by Geographic Indications (GIs).
The introduction of EU certification marks will remedy the current inconsistency between national systems and the EU trademark system as not all of the EU Member States allow for certification marks under their national systems. At present, there are a number of territories among the EU member states where national laws do not contain provisions for certification marks. By contrast, other EU Member States such as the UK, France, Spain and Sweden have existing legal frameworks for certification marks.
The new EU certification mark will allow for one certification mark covering all EU Member states. As in other jurisdictions that are familiar with such marks, EU certification marks will not be owned by the supplier of the goods and services but by a body responsible for certifying and monitoring the qualities or characteristics of the products. Once an EU Certification Mark has been granted, the certifying institution will be able to permit adherents to the certification system to use the mark as long as they comply with the certification requirements.
An applicant for an EU certification mark will be required to submit regulations governing its use. These regulations must be submitted to the EU Intellectual Property Office (EUIPO) within two months of the filing of the application. The regulations must specify:
- The conditions for membership
- The characteristics to be certified by the mark
- How the certifying body will test those characteristics and supervise the use of the mark
- The conditions of the use of the mark, including sanctions
The upcoming changes will also bring a number of procedural amendments. These changes are mostly technical and relate inter alia to the filing of priority claims and the establishment of acquired distinctiveness during the registration process of an EU trademark. The changes also cover the admissibility and substantiation for relative grounds and now take into account the separate ground on geographic indications introduced by Art. 8 (6) EUTMR. In addition, provisions applicable to cancellation proceedings are aligned with opposition proceedings and rules applicable to the communication by and with the Office and on the Boards of Appeal level will be changed.
As these further amendments enter into effect on 1 October 2017, brand owners have some time to consider whether new filings for EU trademarks or EU certification marks should be made. Brand owners should in particular evaluate whether the new technical opportunities for the registration of sound, motion, multimedia and hologram marks present a significant opportunity to secure important additional protection of their brand on an EU level. The abolishment of the graphical representation requirement will also apply for national trademark applications in the EU Member states. However, this will require prior implementation into national law. Brand owners should keep an eye on developments within their key jurisdictions of interest.