Reforms to the European Union Trade Mark Law (Part Two)
The EU Trade Mark Regulation was amended in March 2016, with a number of changes due to come into effect on 1 October 2017. Of particular significance is the abolition of the requirement for trade marks to be represented graphically in EUTM applications, the creation of the EU certification mark, and some procedural amendments.
The requirement that a trade mark must be graphically represented in an EUTM application will no longer apply as of 1 October 2017. Instead, a trade mark can be represented in any appropriate form using generally available technologies, as long as it can be reproduced in a clear, precise, self-contained, easily accessible, intelligible, durable, and objective manner. The representation must enable third parties to determine with clarity and precision what is being protected.
In practice, this change should make it easier for applicants applying for some non-traditional trade marks, reduce the number of objections, increase legal certainty, and reflect the current state of technology. For example, motion and hologram marks may now be represented by video files and multimedia marks by audio-visual files.
Nevertheless, caution must be exercised where an EUTM application for a non-traditional mark is intended to be used as the basis for an international application under the Madrid Protocol system. In particular, audio and video files are currently not acceptable under the Madrid system. Consequently, in such cases, it is advisable to continue to use traditional forms of representing the mark, for example musical notation to depict a sound mark or a series of still sequential images for motion marks.
Tactile, smell, and taste marks will still not be accepted by the EUIPO. Such marks do not comply with the Regulation in that they cannot be reproduced in a clear, precise, self-contained, easily accessible, intelligible, durable, and objective manner.
This is a new kind of trade mark at the EU level. Its function is to guarantee that the goods or services that have been certified contain specific characteristics and to distinguish them from goods or services that have not been so certified. These characteristics may relate to the material, mode of manufacture of goods or performance of services, quality, accuracy, or other characteristics. There is an important exception in that such marks may not distinguish on the ground of geographical origin and an application on that basis will be rejected.
Regulations governing use of the mark must be submitted together with the application or within two months of filing. There are rules on what the regulations must contain, including: information on the characteristics of the goods or services to be certified; conditions governing the use of the mark, including sanctions; and how the certifying body is to test those characteristics and supervise the use of the certification mark.
The owner of an EU certification mark has a ‘duty of neutrality’ and may not carry out a business involving the supply of goods or services of the kind certified. Violation of this duty will lead to an application being refused or a registration being vulnerable to revocation.
Further, an application for an EU certification mark will be refused if it is misleading as to the character or meaning of the mark. The former would apply where consumers would see it not as a certification mark but as an individual or collective mark. The latter may arise where there is a contradiction between the message conveyed by the mark itself and the specification of use of the mark as set out in the regulations.
A large number of procedural changes will also come into force. Some of the more important ones include:
On the other hand, a subsidiary claim will be subject to a decision on inherent distinctiveness. This means that the application will be considered on the basis of inherent distinctiveness first and, in the event of a refusal, the applicant may exhaust its right of appeal on that point only. Where a final negative decision is issued on the ground of inherent distinctiveness, the subsidiary claim of acquired distinctiveness will then be considered. The examiner will set a deadline for the applicant to submit evidence in support of its claim. The key advantage of this approach is that the applicant will not be required to invest a substantial amount of time and resources to prepare and submit evidence of use of its mark unless and until it is necessary.
The time allowed for suspensions has also been shortened. A period of six months will be granted for each request, up to a maximum of two years in total over the course of the proceedings.
Please feel free to speak to a member of our Trade Mark team for further advice regarding any of the changes.