A whole host of rather exciting provisions are due to come in to force from 1 October 2017 and as always, we have the low-down on the most relevant changes to the legislation protecting EU trade marks.
Just in case you missed it, the attractively titled ‘Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015’ came into force on 23 March 2016. This ‘amending regulation’ changed a number of provisions contained within the EU Trade Mark Regulation on that date, including the name of the EU trade mark registry from the ‘Office for Harmonization in the Internal Market’ (OHIM) to the ‘European Union Intellectual Property Office’ (EUIPO). After much anticipation, the EU legislature have now released the second wave of changes, which are due to come in to effect from 1 October 2017.
The requirement for your mark to be represented ‘graphically’ will no longer apply as from 1 October 2017. Instead, applicants will simply be required to ensure that their mark is represented in a manner which is “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. This basically means that non-graphical marks, such as audio-visual ‘multimedia’ marks, may be accepted by the EUIPO, provided they meet these formal requirements.
These types of marks already exist in several EU countries (including the UK), but until now were absent from the system of protection for EU trade marks. A certification mark, as the name suggests, is designed to indicate that the goods and services in connection with which it’s used are certified by the owner of the mark in respect of certain characteristics such as material, mode of manufacture and quality. In other words, a certification mark guarantees that certain characteristics of goods and services meet a given standard set by the owner. It’s worth noting, however, that the owner of the certification mark cannot carry on a business involving the supply of the certified goods and services. In addition, the EUIPO will not accept applications for certification marks which seek to certify the geographical origin of goods and services.
EU trade mark applicants will be able claim acquired distinctiveness as a subsidiary claim either at the point of filing their application or later on in the registration process. The term ‘acquired distinctiveness’ refers to a case where a sign has been used in the marketplace to such an extent that the public has been educated to perceive it as an indicator of trade origin. This claim is particularly useful to applicants for marks which, at face value, are not inherently distinctive. From 1 October 2017, an applicant will have the option of first exploring the possibility of registering a mark on the basis of its inherent distinctiveness before turning to the more onerous and costly task of proving that the mark has acquired a distinctive character in respect of a significant proportion of the relevant public in the EU.
Other notable procedural changes:
These will now need to be submitted at the time of filing the application at the EUIPO. The documentation in support of the claim may however be filed within three months of the filing date. It was previously possible to submit priority claims within three months of the date of filing and the documentation within three months from the receipt of the declaration of priority.
Assignment as a remedy
Where an agent or representative registers an EU trade mark without the owner’s consent, the owner previously could only apply to invalidate the mark. Under the new rules, the aggrieved owner will be able to demand that the mark be assigned to them, thus avoiding the need to cancel the mark on the EUIPO register.
Online substantiation of earlier registered rights
The EUIPO will now recognise the contents of national and regional EU Intellectual Property Office databases for the purposes of substantiating earlier registered rights. This also includes the online ‘TMview’ portal through which EU national and regional databases may be accessed.
There are quite a few changes due to come into force from 1 October 2017 and it will be interesting to see how effective they’ll be in streamlining proceedings and increasing legal certainty. If you have any questions regarding these changes and the effects they may have with respect to your EU branding strategy, please get in touch.