A number of changes have been introduced to the EU Trade Mark system over the past few months. These came about due to “Regulation (EU) 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation” (or “the Amending Regulation” for short) entering into force on 23 March 2016. Secondary legislation was required for many of the amendments, and many of those provisions only come into force on 01 October 2017. This bulletin focuses on the changes being introduced October 2017.
That’s the technical jargon out of the way! So, what are we talking about?
In brief, the big changes introduced last year were that OHIM (the Office for Harmonisation of the Internal Market) was renamed the EUIPO (the EU Intellectual Property Office) and with this the CTM (Community Trade Mark) became the EUTM (EU Trade Mark) and consequently the CTMR (CTM Regulations) became the EUTMR. Changes were also made to the calculation of renewal deadlines, shifting from a ‘month-end’ system to a strict ‘anniversary date’ system. Official fees were overhauled, introducing cheaper single-class and two-class applications but increasing the cost of three- (and over) class applications.
The upcoming changes include the removal of the need to depict a mark graphically, the introduction of ‘Certification Marks’ and various procedural changes.
The requirement to represent a Trade Mark graphically is one of the oldest Trade Mark requirements in the world, and is not one we might have expected to have lifted. Trade Marks, traditionally, have been words and logos and have always been depicted graphically for the purposes of being entered onto the register. Trade Mark laws have always been vaguely worded enough to allow all manner of marks, but the biggest barrier to some ‘less typical’ marks being registered has been this requirement that they be graphically represented. Sound marks, colour marks, 3D marks and animated marks have long been sought after by many proprietors, and all manner of guidance and case law has built up around the question of how to graphically represent these. The lifting of this requirement recognises that many Trade Mark registers have moved onto the internet, and are capable of hosting more than just graphics (unlike their printed counterparts). It will be interesting to see how proprietors respond.
The EUIPO have produced a very helpful educational video on these changes: https://youtu.be/S-8dpPzD3Ug
Certification Marks have long been recognised in the UK, and various other EU National offices, for many years. Certification Marks are used to guarantee specific characteristics of certain goods or services. In the UK you might come across Certification Marks such as the ‘BSI Kitemark’ for consumer products and services quality and safety standards, or the International FAIRTRADE mark. The EU introducing EU Certification Marks makes it easier for EU-wide standards to be implemented and governed by independent bodies.
Various procedural changes are being introduced. Hand deliveries and post box deposits will no longer be accepted by the office (note ‘postal mail’ is still accepted). Priority claims must be made at the time of filing, and cannot be made subsequently. Recognised online sources may be relied upon in opposition/cancellation proceedings simply by making reference to them (e.g. pointing the examiner to an entry in a national Trade Mark register, rather than having to provide a copy of that register entry). An EUTM may be assigned to remedy an improper filing by, for example, an agent/representative rather than merely invalidated – this will allow the true and proper owner of that Trade Mark to take over ownership of the EUTM registration which they have opposed/attacked, rather than having the registration removed.
One final procedural change which is not due to come into force until 01 January 2018, is the withdrawal of fax services – applications and renewals will no longer be accepted by fax. We haven’t used fax for a while now, so we don’t expect to feel the effects of this one when it does come in!
If you have any queries or comments, please contact us.
The Amending Regulation of 23 March 2016 can be read in full here.
The Implementing Regulation for those changes can be read in full here.
A detailed overview of changes brought in by the Amending Regulation can be read here.
Details of the lifting of the graphical representation requirement can be found here.
Details of the introduction of EU Certification Marks can be found here.
Details of the various procedural changes brought in can be found here.