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IP Information & News

29 September 2017

Changes to the EU Trade Mark Regulation

 
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A whole host of rather exciting provisions are due to come in to force from 01 October 2017 and as always, we at UDL have the low-down on the most relevant changes to the legislation protecting EU trade marks.

Recap

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 in to 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 01 October 2017.

Summary of Changes to Come in to Force from 01 October 2017

 • Graphical Representation
The requirement for your mark to be represented ‘graphically’ will no longer apply as from 01 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 ‘multi-media’ marks, may be accepted by the EUIPO, provided they meet these formal requirements.

• Certification Marks
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 is 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 is 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.

• Acquired Distinctiveness
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 have been educated in to perceiving it as an indicator of trade origin. This claim is particularly useful to Applicant’s for marks which, on their face, are not inherently distinctive. From 01 October 2017, an applicant will have the option of first exploring the possibility of registering their mark on the basis of its inherent distinctiveness before turning to the more onerous and costly task of proving that their mark has acquired a distinctive character in respect of a significant proportion of the relevant public in the EU.

Other Notable Procedural Changes

-Priority Claims
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 3 months of the filing date. It was previously possible to submit priority claims within 3 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.

Comment

There are quite a few changes due to come in to force as from 01 October 2017 and it will be interesting to see how effective they will 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 feel free to contact a member of our Trade Marks and Domain Names Group.