Further changes to the EU Trade Mark (“EUTM”) system come into effect on 1 October 2017. These are the next step in the EU’s trade mark reforms, which are aimed at modernising the system to make it technologically up-to-date and compatible with the internet era.
Trade mark owners should consider sound and moving image marks they may now be able to register.
No requirement for EUTMs to be represented graphically
From 1 October 2017, there will be no requirement for EUTMs to be represented graphically. EUTMs will only need to be represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. A sign can be represented in any appropriate form using generally available technology so long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
The intention is to allow more flexibility in the filing of non-traditional marks such as holograms, sounds and motion marks. Sounds and colours are now specifically listed as signs capable of being registered as EUTMs.
This means that it will now be possible to obtain trade mark protection for movement marks by uploading a video file as opposed to a series of images. Sound marks can now be protected by the use of an audio file instead of written musical note. This will widen the types of sound marks that will be available to include those not capable of musical notation – such as the sound of a lion roaring. Combination of sound and movement marks will now be available and 3-D marks could be protected by using moveable 3-D modelling files instead of a series of different static views.
Trade mark owners who have previously had these sorts of marks rejected should be prepared to file from 1 October 2017.
EU Certification Marks
EU certification marks can also be filed after 1 October 2017. These are a unique type of mark that require anyone who uses them to comply with certain established standards. As such, they serve as an indicator of the quality of goods or services rather than their origin. The owner can permit others to use the certification mark for the purpose of guaranteeing that goods or services comply with certain certification requirements. Good examples are the CE mark, which guarantees that the goods comply with European Commission health and safety requirements or the WOOLMARK, which certifies that the goods on which the mark is used are made from 100% wool.
Certification marks complement the EU collective marks system and increase the choices available to businesses to obtain the most appropriate protection for their marks.
Under the new regime, the owner of an EU certification mark will be able to certify certain characteristics of goods or services, which may include: material, mode of manufacture of goods, performances of services, quality or accuracy or other characteristics. However, they cannot be used to indicate the geographical origin of products or services, which remains within the exclusive protection of EU geographic indications. The owner of the EU certification mark will be the party responsible for certifying and monitoring the qualities or characteristics of the goods or services but can’t itself use the mark. They therefore have to submit regulations governing the use of the certification mark within 2 months of the date of filing, including which persons are authorised to use the mark, the characteristics to be certified and how the certifying body is to test those characteristics and to supervise use of the mark. If the owner does not maintain robust procedures, the certification mark may be revoked.
The EU Certification mark has been introduced to counter the imbalance caused by only some EU member states offering national certification marks. There has been no EU-wide certification mark to date despite other countries such as the UK, Australia, USA and Canada having them for many years. Certifying bodies operating across the EU will now find it easier to obtain a single certification mark applicable across the whole of the EU.
Changes to EUTMs made in March 2016
These are the final two changes to affect EUTMs. Most changes to the EUTM regime already took place on 23 March 2016, including:
- name changes from OHIM to EUIPO and CTM to EUTM;
- a change to the EUTM fee structure to make it cheaper to file in 1 or 2 classes but more expensive in 3 or more;
- some changes to EUTM infringement (eg counterfeit goods can now infringe in transit) and defences (e.g. the own name defence now applies only to natural persons); and
- a codification of recent case law so that specifications of EUTMs are interpreted by their literal meaning.
Future changes to national TM systems
The new EU TM Directive requires Member States to implement changes to their national trade marks laws and systems before January 2019. These changes include:
- removal of the requirement for graphical representation for national marks;
- changes to infringement of national TMs (counterfeit goods in transit) and defences (own name defence only applies to natural persons);
- some harmonisation of the application procedures for national marks;
- an option to implement provisions to allow national certification marks (which can include guaranteeing geographic origin);
- an obligation to implement provisions to allow national collective marks. (which can include guaranteeing geographic origin). Collective marks are those that indicate that the goods or services originate from the member of a given association. There are existing provisions for EU collective marks but inconsistent national systems across the EU Member States.
Administrative proceedings are also to be established for national opposition, revocation and invalidity actions by January 2023.
What about the UK and Brexit?
The UK has to make fewer changes than some other Member States to comply with the new TM Directive. For example, the UK already has administrative procedures for opposition, revocation and invalidity actions. It is hoped that the UK will still implement the TM Directive before the January 2019 deadline, despite the uncertainty caused by Brexit and the consequent pressure placed on Parliamentary time. This would at least ensure consistency between the UK and EUTM regimes at the date of any Brexit.