10 November 2017

EU trade mark reform

A number of important changes to the EU trade mark regime came into force on 1 October 2017. This article provides a brief summary of the most significant of those changes.

The removal of the graphical representation requirement

Previously, in order for a trade mark to be registrable, it had to be possible to represent the mark graphically; however, this is no longer the case. Now, any form of representation will be accepted provided that it is clear, precise, self-contained, easily accessible, intelligible, durable and objective. This change should make it easier to register some non-traditional trade marks, e.g. the sound of a cat (since it will be possible to file a clip of the sound – such as an MP3 file).

The birth of the EU Certification mark

The EU certification mark is a new type of trade mark at EU level. It acts as a sign of supervised quality by guaranteeing certain specific characteristics of the goods or services carrying the mark (as opposed to functioning as a badge of origin as a traditional trade mark does). The proprietor of an EU certification mark can allow third parties to use the mark provided that the goods or services at issue comply with the certification requirements and regulations of use. It is important to note that a certification mark cannot be used to certify the geographical origin of goods and services.

Changes to priority claims

If wishing to effectively backdate an EU trade mark application by filing a claim of priority from a suitable earlier trade mark application or registration, it is now necessary to make the priority claim at the time of filing (or later on that same day). Any supporting documentation must be submitted within three months of the filing date of the trade mark application claiming priority. A priority claim will no longer be examined in substance by the EU Intellectual Property Office at the time of filing, it will remain just a claim until it is relied upon (for example in trade mark opposition proceedings).

Acquired distinctiveness as a subsidiary claim

If concerned that an EU trade mark application might be refused on the basis that it is not inherently distinctive, it is now possible to make a subsidiary or alternative claim (either at the start of the application process or later) that the mark has acquired distinctive character through use. If this is made as a subsidiary claim, it will only become relevant if there is a negative final decision on whether or not the mark is inherently distinctive. This means that it is now possible to exhaust the right of appeal on inherent distinctiveness before falling back on a claim that the mark has acquired distinctive character if the appeal is not successful.

Assignment of an EU Trade Mark as a remedy

If an agent or representative registers a trade mark without the proprietor’s permission and cannot justify why it has done so, it is now possible for the trade mark to be assigned to its rightful proprietor (previously the only remedy was for the trade mark to be cancelled).

Other procedural changes

  • The online substantiation of registered trade mark rights that arebeingrelieduponinopposition proceedings has been made easier:extractsfromthedatabases of the national and regional EU Intellectual Property offices, and/ orthemulti-jurisdictionaldatabase TMview will be accepted as evidence that such registrations exist.
  • It is no longer possible to suspend inter partes trade mark proceedings in one-year increments. Now, suspensions are granted for a maximum period of 6 months at any one time and there is a two- year cap on the total maximum suspension period that can be obtained. (The cooling-off period is not affected by these changes.)
  • The EU Intellectual Property Office will no longer accept hand delivered documentsand/or documents deposited in a physical post box at the Office.
  • Finally, from 1 January 2018, fax will no longer be an acceptable means for filing EU trade mark applications or renewal requests, except as a backup system if technical malfunctions prevent online filing.