The implementation of the ambitious EU Trade Mark Reform Package goes into its next round. While the amended EU Trade Mark Regulation already came into force on 23 March 2016, some provisions, which had to be developed by secondary legislation, will only apply from 1 October 2017.
This is a summary of the most important changes, which includes the removal of the graphical representation requirement for EUTMs, the introduction of EU certification marks, and several notable procedural changes.
Abolition of the graphical representation requirement One of the most important changes in the EUTM Reform Package is the abolition of the requirement for graphical representation, previously a fundamental requirement for registration of marks. This change aims to facilitate the registration process for non-traditional trade marks, such as sound marks, movement marks or multimedia marks.
What does it mean in practice? This means that signs can now be represented in any appropriate form using generally available technology provided that the “representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.” This new “what you see is what you get system” is meant to increase legal certainty and reduce the objection rate for formality objections. The European Commission has also adopted secondary legislation, namely an Implementing Regulation (https://ec.europa.eu/info/law/better-regulation/initiatives/c-2017-3224) and Delegated Regulation (https://ec.europa.eu/info/law/better-regulation/initiatives/c-2017-3212), which sets out these changes in greater detail. Article 3 EU Trade Mark Implementing Regulation (EUTMIR) specifies the (technical) requirements for the representation of the different types of trade marks, sets the acceptable formats and whether a description is required to obtain an EUTM when filing a trade mark on or after 1 October 2017. With these changes, brand owners will have greater (technological) flexibility when applying for non-traditional trade marks at the European Union Intellectual Property Office (EUIPO) since the Office will now accept various digital files, such as digital sound files (JPEG, MP3) or video files (JPEG, MP4). While a description can still be provided, this is now optional. It is now also possible to register “pattern” trade marks, which have to be represented by ‘a reproduction showing the pattern of repetition.’ Trade mark owners should take this opportunity to review their portfolio and decide whether these changes may allow them to register additional important trade marks. Having said that, some non-traditional marks, such as smell marks, will remain a challenge to register. BAKER MCKENZIE 3 EU Certification Marks The amended EUTM Regulation also introduced certification marks at the EU level. Certification marks are already known to several national systems but from 1 October 2017 it will now also be possible to obtain these on an EU level. EU certification trade marks are not owned by the actual manufacturer or supplier of the goods and services covered by the mark but by a separate body (the certifying institution) which is responsible for certifying and monitoring that the goods and services provided under the certification mark comply with certain quality standards. Unlike collective marks, certification marks are open to any public or private entity and the certifying body will be able to permit adherence to the certification system, provided that the members comply with the regulation governing its use. The latter has to be filed by the owner of the certification mark together with the certification mark or two months after its filing date. The governing regulation of a EU certification trade mark also includes information such as use conditions, conditions for membership in the certification scheme, the characteristics to be certified, as well as testing and supervision measures. Notable procedural changes Acquired distinctiveness as a subsidiary claim: Acquired distinctiveness can now be filed as a subsidiary claim, so that it will only be triggered if there is a negative final decision on inherent distinctiveness of a trade mark. This is good news for applicants, who do not need to incur the expense of gathering and presenting evidence of use unless it is necessary. The claim can be made either together with the EUTM application (the EUIPO’s e-filing form will allow applicants to mark acquired distinctiveness as a subsidiary claim), or in reply to the first objection in an official letter (Article 2(2) EUTMIR). Claiming priority: Claims for priority must now be made together with the EUTM application, and the supporting documents have to be submitted within three months from the application date. If the supporting documents are not in one of the languages of EUIPO, the office may request a translation (Article 4 EUTMIR). Presentation of evidence: New formal requirements for written evidence in all proceedings have been introduced. Evidence must be presented in annexes, clearly identified, indexed and referenced (including number of pages). Failure to do so may result in EUIPO seeking correction of the deficiency, or the evidence may be set aside (Article 55 EUTMDR). Referrals to online sources: Substantiation of earlier rights by referring to certain recognized online resources (including online databases of national and regional EU IP offices, EUIPO databases and TMview) is now possible (Article 7(3) and 16 (1)(c) EUTMDR). Language and translation rules: As previously, most evidence of substantiation (except certificates of filing, registration and renewal or provisions of relevant law) may be filed in any language of the EU. However, if another language than the language of the proceeding is used, a translation will now only be required where specifically requested by EUIPO, either ex officio or upon reasoned request by the other party. This requirement will apply, for instance, to evidence acquired distinctiveness or reputation. Certificates of filing, registration and renewal or provisions of relevant law must however still be submitted in the language of the proceeding (or translated). Simplified translation rules have also been introduced, and a translation may now be limited to the relevant parts of a document (Article 24-26 EUTMIR). All of the changes have been included to the newest edition of the EUIPO Guidelines which are already available on the EUIPO’s website.