What you see is what you get – New EU trade mark regulation.

In a bid to streamline processes and facilitate cooperation between Members States, European trade mark law has been going through the biggest reform since the introduction of the 1989 Trade Marks Directive (2008/95/EC) and the 1994 Community Trade Mark Regulation (207/2009/EC).

On 23 March 2016, Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community Trade Mark Regulation No 207/2009 entered into force, bringing a wide variety of changes to European trade mark law. The most prominent were the change of name of the Office to the European Union Intellectual Property Office (EUIPO) and the change from the Community Trade Mark (CTM) to the EU Trade Mark (EUTM).

Although most of these reforms are already in force, there are some additional important changes which will be introduced as of 1October 2017 of which one should be aware, as follows:

  1. The elimination of the requirement for the graphical representation of a trade mark

  2. The introduction of the EU certification mark

  3. Diverse procedural changes

1. At present, trade marks need to be represented graphically by means of lines, images or characters. Trade mark applications that do not meet this criterion are subject to rejection.

Especially olfactory, colour and sound marks were often subject to rejection due to the lack of graphical representation.

From 1 October 2017 this requirement no longer shall no longer apply, and any form of representation will be accepted, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. Figurative marks, shape marks and position marks can be filed by submitting a jpg file without description. Colour marks, consisting of either a single colour or a combination of colours, can now be represented by means of a simple jpg file without a description, though it will be obligatory to include an indication of the colour(s) by reference to a generally recognised colour code (e.g. a Pantone code). It will also be possible to file multimedia trade marks by means of a mp4 file without a description, and sound marks can be filed with either a jpg or mp3 file without further description.

The EUIPO calls it a ‘what you see is what you get’ system, which aspires to make the trade mark entries on the EUTM Register clearer, more accessible and easier to search for. The objective is to increase legal certainty for users and reduce the objection rate for formality objections. Trade mark professionals are sceptical as to whether this will lead to more clarity rather than confusion and more disputes. It will also be interesting to observe how the EUIPO register and search tools will be adapted to the new forms of filing, in order to be able to deliver useful and comprehensive results.

The question of how an olfactory mark can be represented in a clear, precise, self-contained, easily accessible, intelligible and objective form is apparently not yet resolved. It will depend mainly on the technical development of affordable devices that can capture and reproduce scents in such a way that they remain unaltered in time and are still accessible through the EUIPO register. Without graphical representation or description, olfactory marks and also colour marks, face the additional hurdle of objectiveness, as the perception of scent or colour is individual and depends on the sensory capacity of the recipient.

In spite of the many as yet unresolved questions, the new way of representing EU Trade Marks clearly meets the needs of a developing market and its new means of marketing that we have seen in recent years, facilitating the possibility of a more sensory approach to branding.

2. The introduction of the EU certification mark is intended to further harmonize trade mark law throughout Europe, as some countries already provide for the registration of certification marks, whilst others don´t.

A certification mark has the purpose of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from goods and services which are not so certified. In other words, it is an indicator that the goods and services bearing the certification mark possess certain characteristics or qualities.

The geographical origin of goods or services, however, remains an exception and is not a characteristic that can be the subject of a certification mark.

The specific characteristics of the goods or services to be certified are laid out in the regulations of use that need to be filed within two months of filing the application for registration of an EU Certification mark. It is the responsibility of the certification mark owner to ensure that the regulations of use are adhered to.

Due to its nature, a certification mark cannot be owned by a person who is a supplier or producer of the goods or services to be certified.

3. Probably the most significant procedural change for applicants is that a priority claim under a EUTM application will no longer be examined by the Office, but will remain a mere claim until it is asserted in a proceeding and needs to be substantiated.

From 1 October onwards, priority claims must be filed together with the EUTM application. The submission of priority claims subsequent to filing will no longer be possible. The documentation in support of the priority claim must then be filed within three months of the filing date.

Please do not hesitate to contact the trade mark experts at Dehns if you are interested in filing a trade mark or if you need assistance with updating your portfolio in line with these reforms.