The definition of an EU trade mark has just changed - and a new unitary EU right has been created

On 01 October 2017, further key changes came into force in respect of EU trade mark law and practice in the implementation of the EU Trade Mark Reform Package, which kicked off last year.

There are three main aspects of change:

  • the definition of a trade mark has been altered to remove the requirement for graphical representation
  • a new type of mark - EU Certification Marks - has been introduced, and
  • various procedural changes are afoot, including in respect of priority claims, acquired distinctiveness claims, and translation of documents.

The requirements for an EU trade mark have changed

  • The "graphical representation" requirement no longer applies when filing an EU trade mark application.
  • Signs can now be represented in any appropriate form using generally available technology, provided the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective (the Sieckmann criteria). For example, this will mean that sound marks, which would have previously been represented graphically by way of musical notation, can now be uploaded to online trade mark application forms as audio files (MP3/JPEG) (in practice the EUIPO has been putting sound files on its website for a while)
  • The registration certificates of such non-traditional marks will also look different - a web link to the online registration will appear instead of a graphical representation.
  • The change, though more practical, is unlikely to have a big impact on:
    • the number of EU trade mark applications given that applicants will still be required to overcome the distinctiveness hurdle, which can often prove more challenging than that of graphical representation (eg a sound mark may be considered too simple or too long to denote origin), and/or
    • the types of marks applied for - eg smell, taste and touch marks will still struggle to be protected as trade marks and will likely continue to rely on alternative methods of protection such as copyright, design and/or trade secrets.

A new type of trade mark: EU Certification Marks

  • The EUIPO has introduced a new EU “certification” mark which will serve to guarantee specific characteristics of certain goods and services.
  • The essence of a certification mark will be the “regulations of use”, which must be filed within two months of an application for such a mark and must set out, amongst other things:
    • the characteristics of the goods or services to be certified, such as "the material, mode or manufacture of goods or performance of services, quality or accuracy" (but not the geographic origin)
    • the conditions governing the use of the certification mark, and
    • the testing and supervision measures to be applied by the certification mark holder.
  • It is the responsibility of the certification mark holder to monitor and control use of the mark as per the regulations submitted with the application.
  • The official fee for an application for an EU Certification Mark in one class is €1,500 (online).

A few procedural changes of which to be aware

There are a number of minor and more significant procedural changes coming into effect as of 01 October 2017. The main changes affecting trade mark practitioners are outlined below.

  • priority claims must be filed at the time of application (as opposed to subsequently) with supporting documents being filed within three months of the filing date, and
  • a priority claim will no longer be substantively examined by the Office at the time of the application. Instead, it will remain a mere claim unless and until it is relied upon in proceedings, at which point it will be validated.
Acquired distinctiveness
  • applicants now have the possibility of invoking Article 7(3) EUTMR as a "subsidiary or alternative claim", either at the start of the application process or, at the latest, in response to the Office’s initial objection to the application
  • this is an important benefit to applicants as it allows them fully exhaust their right of appeal on inherent distinctiveness before asserting a fall-back position of acquired distinctiveness if they wish.
  • this change may potentially:
    • encourage more applications, particularly by those who consider their mark to be on the lower end of the distinctiveness spectrum, and
    • avoid unnecessary time and costs in preparing evidence where a sign is eventually accepted for registration on the basis of inherent distinctiveness.
Substantiation of earlier rights
  • Online substantiation of rights (eg registered trade marks, certain signs used in the course of trade and geographical indications) from online sources recognised by the Office is now possible. Such online sources include national and regional EU (IP) registries as well as TMView.
Languages and translation
  • Where the documentation to substantiate rights is not in the language of the proceedings, a translation will now only be required if requested by the Office (either themselves or via a reasoned request by the other party)
  • This provision does not apply to filing receipts, registration and renewal certificates or extracts of relevant law, which must still be submitted in the language of the proceedings within the time limit set for substantiation.
  • Additionally, by Article 25 EUTMIR the Office will allow limited translations of documents or parts thereof to the extent that they cover the relevant sections.

This document (and any information accessed through links in this document) is provided for information purposes only and does not constitute legal advice. Professional legal advice should be obtained before taking or refraining from any action as a result of the contents of this document.