EUTM Enhancements – 1 October 2017

A number of changes affecting European Union Trade Marks (EUTMs) came into force on 1 October 2017. Overall, these changes are a positive development and are being welcomed by brand owners and IP lawyers alike. A brief summary of the changes is detailed below.

1. No Requirement for Graphical Representation

One of the most dramatic changes that have been introduced is that EUTMs are no longer required to be graphically represented. Marks can now be represented in any appropriate form using generally available technology as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.The aim behind removing the graphical representation requirement is to reduce the number of formality objections against EUTMs, increase legal certainty and also make it easier to search for EUTMs on the Register. Colours are now specifically listed as marks that can be registered as EUTMs. Evidence that the EUIPO is making a determined effort to keep up with the ever-changing IT & IP landscape is the fact that motion, sound and hologram marks can now all be filed in MP3 and MP4 format on the Register.The EUIPO’s decision to take a less rigid approach towards the filing of non-traditional marks is good news for brand proprietors. Trade Mark owners who have previously had a non-traditional mark refused registration by the EUIPO should consider filing a new application for their mark.

2. EU Certification Trade Marks

As of 1 October 2017, EU certification marks can now be filed. These are a new type of trade mark at EU level but have been available at a national level in many countries (including Ireland) for a number of years. Certification marks are different to regular trade marks because goods or services supplied under the mark must adhere to certain quality standards or regulations set by the relevant certifying body. It is the certifying body who owns the mark rather than the producer or supplier of the goods and services. A certification mark cannot be owned by anyone involved in an enterprise that supplies the type of goods or services being certified. Regulations of use must be filed within two months of filing the certification mark application.

These regulations must describe the characteristics of the goods or services being certified, the conditions governing the use of the certification mark and how the certifying body is to test and supervise the measures to be applied by the certification mark owner. A certification mark cannot be filed for the purpose of distinguishing goods or services certified in respect of the geographical origin. For example, “Clare Island Salmon” or “Waterford Blaa” would not be registrable as certification marks.

3. Procedural Changes

There are also a number of procedural changes which came into effect on 1 October: These Codify previous Practice, aim to modernise the EUTM system, and are to be welcomed.

  • EUTM applicants now have the opportunity of invoking acquired distinctiveness as a subsidiary claim, either at the beginning of the application process or at the latest, in reply to the examiner’s first objection (it cannot be claimed for the first time in appeal proceedings).
    A subsidiary claim means that the Office will only decide on acquired distinctiveness if they find that the mark is not inherently distinctive. The Office will make two separate decisions at different points in time. The first decision will hold whether the mark is inherently distinctive. If the mark is found to be lacking inherent distinctive character and that decision becomes final, the Office will then subsequently examine the claim of acquired distinctiveness and issue a separate decision. The advantage of a subsidiary claim is that it only crystallises if there is a negative final decision on inherent distinctiveness. This allows the applicant to exhaust its right of appeal on inherent distinctiveness before it is required to prove acquired distinctiveness. This will mean that users do not need to incur the expense of gathering and presenting evidence of use unless it is necessary.
  • In Opposition proceedings, where evidence of substantiation is not filed in the language of the proceedings, a translation will only be necessary if the EUIPO specifically requests one or upon a reasoned request by the other party. However, evidence of substantiation consisting of certificates of filing, registration and renewal or provisions of national law must still be submitted in the language of the proceedings or translated.
  • Written evidence in all EUIPO proceedings must now be clearly identified, indexed, annexed and referenced.
  • Where a representative or agent registers an EUTM without the consent of the proprietor, the proprietor can now demand that the EUTM be assigned (unless the representative or agent can vindicate their actions). Previously, the only remedy available to the proprietor under the former legislation was to invalidate the EUTM.
  • It is now possible to substantiate earlier rights from online sources that are recognised by the EUIPO such as TMView and the databases of EU national intellectual property offices.
  • Priority must now be claimed at the same time the EUTM application is filed. Previously, priority could be claimed after the application was filed. Any documentation supporting the claim of priority must be filed within three months of the filing date.

Contributors: Mary Bleahene and Adam Flynn