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Recent Changes to EU Trade Mark Law
04 October 2017 by Leona Ogier

EU Trade Mark Law has changed, to make the EU trade mark system more efficient and consistent overall, and to make it more compatible with the internet era.

From 1 October 2017, changes arising from the EUTMIR, which came into force on 23 March 2016, will apply, along with changes from Secondary legislation adopted on 18 May 2017 in the form of two separate acts, a Delegated Regulation (EUTMDR) and an Implementing Regulation (EUTMIR).

The main changes which came into force in October 2017 are as follows:

Graphical representation

Previously, there was a requirement for trade marks to be represented graphically.  The changes to the law mean that graphical representation is no longer needed, and this has paved the way for new types of marks to be available, such as multimedia marks. It is unlikely that this will lead to a flood of new marks on the Register as the usual hurdles for registration will still have to be overcome, and all marks will have to be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner.

This change is intended to introduce a 'what you see is what you get' system, and should make the EUTM register clearer, more accessible and easier to search.  

Certification marks

As well as filing individual trade marks and collective marks, it will now be possible to file an "EU Certification Mark".  An EU Certification Mark will indicate that goods and services comply with certain supervised quality standards set out in a document called "regulations governing the use", which must be filed with the mark.  Any public or private entity can file an EU Certification mark, as long as they comply with the regulations governing its use. The owner of an EU Certification Mark cannot carry on a business involving the supply of goods or services certified by the mark, and they must make the regulations governing the use of the mark publicly available.   

A number of procedural changes have also been introduced, including the following:

Priority

Priority must now be claimed at the time of filing an application, and cannot be claimed at a later date.  Applicants will have a period of 3 months following filing to submit any documentation in support of the priority claim, and the Office may request a translation of the document if it is not in one of the languages of the Office. Priority claims will no longer be examined at the time of filing and will only undergo a rudimentary formalities check - they will, however, be examined when they are relied upon during later proceedings, such as oppositions.

Acquired distinctiveness

A potentially cost-saving initiative has been introduced, whereby it will be possible to include a subsidiary claim for acquired distinctiveness at either the filing stage or, at the latest, in reply to the first objection. This means that if an application is refused on distinctiveness grounds, it will be possible to use the appeal process before having to incur the costs associated with preparing and filing evidence of acquired distinctiveness. Only if you appeal and if your appeal is unsuccessful would it be necessary to file evidence of acquired distinctiveness.

Online substantiation

The Office will now accept references to databases of national and regional IP offices, as well as references to 'TMView' (a publicly-accessible online facility), as a means of substantiating earlier rights in opposition and cancellation proceedings. The Office will accept references to WIPO's 'Madrid Monitor' database and 'TMView' for EU and national designations of International Registrations. Simply referencing the relevant database is sufficient, and using a hyperlink is optional.

Geographical indications

It will now be possible to rely on geographic indications during opposition and cancellation proceedings.

Languages and translation

It will still be possible to file most types of evidence in any one of the official languages of the EU.  All evidence of substantiation (filing, registration and renewal certificates and provisions of relevant law) will still need to be submitted in the language of the proceedings or translated into the language of the proceedings. Any other type of evidence that is not in the language of the proceedings will only require a translation if requested by the Office, and may only apply to the relevant parts of a document.

Summary

We hope that this brief analysis of the recent changes has been helpful.  If you would like more detailed information (this article does not, of course, provide legal advice) then please get in touch with your usual Forresters attorney - or just contact one of our offices.