The amended EU Trade Mark Regulation came into force on 23rd March 2016. A number of provisions, which had to be developed by secondary legislation, will apply from 1st October 2017
Here is an overview of the main changes:
Graphical representation of a mark is no longer required
The requirement for a mark to be represented graphically will no longer apply to trade mark applications filed from 1st October 2017. From then, any appropriate form of representation using generally available technology will be acceptable. For example, MP3 and MP4 files will now be accepted for sound, motion, multimedia, and hologram marks.
The aim is to reduce formality objections, increase legal certainty, and make the European Union Trade Mark (EUTM) register clearer, more accessible, and more easily searchable for users. With that in mind, other existing criteria will still apply, meaning that representations will still need to be clear, precise, self-contained, accessible, intelligible, durable, and objective.
EU certification marks are being introduced
Certification marks have existed in the UK and other European jurisdictions for many years and are now being introduced at EUTM level.
Certification marks guarantee that goods or services provided under that mark either meet a particular standard or possess particular characteristics, as defined by the certification mark owner and set out in the regulations governing use of the certification mark.
As in the UK, EU certification marks cannot be owned by any person or business involved in the supply of the goods or services that the mark certifies. Furthermore, EU certification marks cannot be filed for the purpose of certifying the geographical origin of goods and services.
The introduction of EUTM certification marks is a welcome accompaniment to the long-standing EUTM collective mark regime. It means that the EUTM system now offers the full range of trade mark categories and is consistent with many other European jurisdictions, including the UK.
Procedural changes are being made in a number of areas
We set out below an overview of the main procedural changes:
- Priority must now be claimed at the time of filing the EUTM application and supporting documentation filed within three months of the application. Previously it was possible to make priority claims post-filing.
- Acquired distinctiveness can be claimed either at the start of the application process or later in the examination process. This means that an applicant can wait until a final decision is made on inherent distinctiveness before claiming acquired distinctiveness.
- Online substantiation of earlier rights from recognised sources (including EU IP databases and TMview) is now acceptable.
- Geographic indications have been introduced as a separate relative ground for opposition and cancellation.
- Evidence submitted to the EUIPO now has to meet set formal requirements, including being clearly identified and referenced. This is in line with UK requirements, and with our standard practice.
- Translations of evidence (other than certificates of filing, registration and renewal, or provisions of relevant law) into the language of the EUIPO proceedings will only be required where requested by the EUIPO, and can be limited to relevant parts of the document only. Other parties to the proceedings can request submit requests for translation of evidence where appropriate.