On 23 March 2016, the Amending Regulation entered into force, introducing various more or less significant amendments to the existing European Union trademark system, which are to take effect at different points in time. So far, most notably the Office for the Harmonization of the Internal Market (OHIM) was renamed European Union Intellectual Property Office (EUIPO) and trademark owners now hold an EUTM (European Union Trademark) rather than the former CTM (Community Trademark).
While the codification of the trademark practice established by ECJ judgment C-307/10 – “IP Translator” (what you see is what you get) still ties up valuable resources at the EUIPO, the second wave of changes arising from the Amending Regulation is just around the corner. These changes to the European Union Trademark Regulation (EUTMR) will be accompanied by revised versions of the European Union Trademark Implementation Regulation (EUTMIR) and the European Union Trademark Delegated Regulation (EUTMDR). The upcoming changes, which will apply from 1 October 2017, can be divided roughly into three main areas:
- The introduction of EU certification marks
- The abolishment of the graphical representation requirement for trademarks
- The introduction of various amendments of procedural rules in relation to oppositions, cancellations and appeal
In a nutshell the changes involve the following:
The introduction of the EU certification mark
This type of trademark already exists in some European jurisdictions, and from 1 October 2017 it will also become available on an EU level. Certification marks serve to indicate that goods and services comply with the certification requirements of a certifying institution or organization. They are a sign of supervised quality.
One prerequisite for the filing of a certification mark will be the submission of regulations governing the use of such marks within two months of the day of filing.
Costs for the filing are €1,800 with a rebate of €300 for online filings.
While the procedure of application, functioning and purpose of EU certification marks essentially resembles that of the existing EU collective mark system, three major differences seem particularly noteworthy:
- EU certification marks will be available only to entities that do not carry on a business involving the supply of goods and services of the kind that is certified.
- EU certification marks will not allow certifying the geographical origin of goods and services.
- Legitimate users of an EU certification mark (other than its proprietor) will not be entitled to take action against infringers of the EU certification mark. This capacity will rest entirely with the EU certification mark proprietor and any person specifically authorized by the proprietor to that effect.
The abolishment of the graphical representation requirement for Trademarks
The removal of the graphical representation requirements is possibly the most notable of the upcoming amendments. Starting from 1 October 2017, signs will no longer need to be able to be represented graphically. Instead, according to the new EUTMIR, EUTMs may be represented
“in any appropriate form using generally available technology, as long as it can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner, so as to enable the competent authorities and the public to determine with clarity and precision the subject-matter of the protection afforded to its proprietor.”
The new EUTMR and EUTMIR thus leave room for the introduction of new technologies.
Further, according to the new EUTMIR, audio files (in the .mp3-format) and video files (in the .mp4-format) may be used for representation of marks. This will significantly simplify the representation of sound marks or motion marks. For sound marks, so far representation could be achieved only through musical notation or – exceptionally as a result of case law – sonograms coupled with an audio file. The representation of motion marks was limited to a series of pictures.
The new means of representation will also for the first time allow to obtain protection for so called “hologram marks” showing a holographic effect and “multimedia marks” consisting of both video and audio elements.
In the same vein of simplifying the EUTM application procedure, EUTMIR now officially recognizes “pattern marks” (previously covered by figurative marks) as a new type of marks. 3D-marks may now be represented via a 3D-file (in the .stl-, .obj- or .x3d-format).
This decidedly liberal approach to grant trademark protection to all sorts of marks is likely to trigger increased application activities in the next few months. To date, less than 200 sound marks have been registered as EUTMs, being represented via musical notation (the majority) and the rest with sonograms (with arguable intelligibility). Multi-media marks so far have not been recognized.
Considering increasing online distribution and multimedia entertainment, thanks to the new system it is to be expected that sound marks and multi-media marks will prove to be very appealing to rights owners and marketing specialists.
Introduction of various amendments to procedural rules in relation to oppositions, cancellations and appeal
To name just a few, the procedural changes include:
- The introduction of substantiation of registered earlier rights by referring to ex officio recognized online sources
- The introduction of a strict deadline for filing of priority claims, i.e. any priority claims must be filed together with and at the time of the filing of the EUTM application
- Allowing acquired distinctiveness as a subsidiary claim, granting the applicant the chance to exhaust the right of appeal on inherent distinctiveness before being required to prove acquired distinctiveness
- The codification of the EUIPO’s discretion regarding belated evidence of substantiation and the proof of use
- The simplification of the translation requirements
- The assignment of an EUTM as a remedy in certain cases
- Formal requirements regarding the structure and format of written evidence introduced in all proceedings
- The abolishment of the EUIPO’s practice to accept hand-deliveries and post box deposits
Both the new EUTMIR and the new EUTMDR contain further details and transitional provisions determining the gradual inception of all changes.
NB: According to the EUIPO’s Official Statements, the EUIPO Guidelines will be fully updated as of 1 October 2017 in order to reflect all relevant changes..