On October 1st new amendments to the EU Trade Mark Regulation (EUTM Regulation), Implementing Regulation (EUTMIR) and Delegated Regulation (EUTMDR) will come into effect across all member states.
Going forward, graphical representation of a mark will no longer be a requirement for EUTM applications. Representation can be in ‘any appropriate form’ provided it is ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective.’ It will now be possible for non-traditional marks such as sound or motion marks to be submitted by audio and video (for example, MP3 or MP4) files. A description is no longer mandatory, although it is optional for certain types of mark. Colour marks are to be represented by submitting a reproduction of the colour and reference to a colour code is now obligatory. Furthermore, whereas currently priority claims can be made within three months of filing of an application, from October priority may only be claimed at the time of filing.
EU certification marks will be introduced. These will differ from ordinary EU marks by indicating the quality of the goods and services covered, not their origin. Applicants will need to submit regulations certifying the characteristics of the goods and services including their material, mode of manufacture (in respect of goods) or mode of performance (in respect of services), their quality and accuracy. Certification of geographical origin of the goods or services cannot be a requirement of the regulations. The regulations will, however, need to certify how the characteristics are to be tested and monitored and which parties are authorised to use the mark.
Applicants will have the option to claim acquired distinctiveness either at the point of filing or (as now) when replying to an absolute grounds objection. If the claim is made on filing it may be as either a principal or subsidiary claim. If the claim is made as a subsidiary claim, inherent distinctiveness may be argued (and, if necessary, appealed) before filing evidence of acquired distinctiveness. This should provide applicants with greater flexibility as it postpones the need to collate evidence (often from multiple EU jurisdictions) until exhaustion of any appeal on inherent distinctiveness.
Arguments and evidence in support of invalidity and revocation proceedings can now be filed at a later date rather than with the application. This brings procedural rules on cancellation into line with opposition proceedings.
Further changes have been made to the format and structure of evidence filed in the course of proceedings. It must now be contained within consecutively numbered annexes. This should allow for greater clarity. When submitting a copy of a trademark registration this can now simply be referenced to the online registers, instead of being submitted as a copy or register extract.