Further Changes to EU Trade Mark Law - October 2017

EUTMs - What You Need to Know

On 1 October 2017, further key changes will come into force in respect of EU Trade Mark law and procedure.

We summarise the most important points below and how this affects trade mark applicants and practitioners.

1. Representation of an EU trade mark

It will no longer be a requirement for a trade mark to be 'represented graphically' in an EUTM application.

An EUTM may be represented using any "generally available technology", as long as the mark can be reproduced on the register "in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner". This is a welcome and significant change in the law, designed to facilitate protection of unconventional marks, such as sounds, motion/movement marks, multimedia marks and holograms, by filing them in an electronic format.

However, the change will not automatically mean these types of unconventional marks will achieve registration. Applications may still face objections if, for example, the EUIPO considers the mark is not capable of distinguishing the commercial origin of the relevant goods or services; this may be because consumers are not accustomed to viewing such unconventional signs as trade marks, without first having been educated to do so.

2. EU Certification marks

An EU-wide certification mark will be introduced, the purpose of which is to indicate that goods or services conform to particular standards (for example, in terms of their quality, materials from which they are made, or mode of manufacture).

Certifying bodies or institutions will welcome this change, as the cost of obtaining an EU-wide registration is likely to be substantially lower than for registration of a certification mark in each of the individual EU member states. The official fees have been set at Euros 1800 in one class (reduced to Euros 1500 for an online filing).

When filing an application, applicants must submit regulations, detailing the conditions under which the certification mark may be used, including:

• the characteristics of the goods and services to be certified;
• how the certifying body is to test those characteristics; and
• the parties authorised to use the certification mark.

If the regulations are not submitted with the application, the EUIPO will set a two-month term for their submission, failing which the application will be rejected.

Parties interested in applying for an EU certification mark, as soon as the new legislation comes into force, are advised to begin preparation of the regulations at the earliest opportunity, to meet the relevant time scales.

3. Acquired distinctiveness

Applicants will be allowed to pursue a subsidiary claim of acquired distinctiveness after they have exhausted the right of appeal on the inherent registrability of a trade mark.

This is very positive news for applicants faced with "absolute grounds" objections raised by an EUIPO TM examiner (for example, that a mark lacks distinctive character, or is descriptive of the goods or services applied for). Demonstrating acquired distinctiveness across some, or all, of the EU member states can be onerous and expensive, and applicants are often reluctant to go down this route in the first instance, as the costs often outweigh simply arguing the case on appeal.

However, to take advantage of this change, applicants and their representatives must remember to make the subsidiary claim to acquired distinctiveness, at the latest, when replying to the examiner's initial objection.

4. Additional points

A number of procedural changes will be introduced, including

• introduction of a remedy for assigning an EUTM, found to have been registered without justification by an agent, to the true proprietor;
• priority claims must be filed at the time the EUTM application is filed;
• updated procedural rules in oppositions, appeals and cancellations, including new requirements for annexing and labelling of evidence and exhibits and the requirements for language translations are being simplified;
• the possibility of relying on online sources recognised by the EUIPO for substantiation of earlier rights in oppositions and cancellation actions;
• a new time limit (1 year) for revocation / cancellation of EUIPO errors in decisions and on the register;
• the possibility to request a continuation of proceedings for some deadlines previously prohibited (including some terms in opposition proceedings).

If you would like further information or advice, please contact a member of Ashfords' Trade Marks Team on 01392 333947 or at tm@ashfords.co.uk.