EU Trade Mark Reforms: the Answers You’ve Been Looking For

19-05-2018

EU Trade Mark Reforms: the Answers You’ve Been Looking For

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Since the second wave of EU trade mark reforms were introduced in October 2017, several questions have come up time and again. Dimitris Botis, Deputy Director of Legal Affairs in the International Cooperation and Legal Affairs Department at the European Union Intellectual Property Office, gives Ed Conlon the answers.

To what extent can nontraditional trademarks be registered in the European Union? It’s one of several questions rights owners have repeatedly asked the European Union Intellectual Property Office (EUIPO) since October 2017, when several reforms to the EU trade mark (EUTM) system came into effect.

Before these changes took effect, a number of other provisions had already been operational since March 2016. That’s because the new EU Trade Mark Regulation (EUTMR) came into force in March 2016, with two of the main changes at the time concerning nomenclature: the Office for Harmonization in the Internal Market became the EUIPO, and the Community trade mark became the EUTM.

Then, months later, in October 2017, the EUTMR brought more changes. These additional amendments had to be developed by “secondary legislation” in the form of a European Union Trade Mark Delegated Regulation and a European Trade Mark Implementing Regulation (EUTMIR). Both legislative acts aimed at further detailing and implementing the EUTMR. 

Graphical Representation

The removal of the need to represent a trademark graphically in an application was a cornerstone of the October 2017 reforms.

Dimitris Botis, Deputy Director of Legal Affairs in the International Cooperation and Legal Affairs Department at EUIPO says that the change eliminates a previous barrier to registration and means that certain types of trademarks that can be represented only in electronic format (e.g., multimedia marks) are now acceptable.

“It also means that EUTMs that are non-visual (sound marks) or comprise moving images (motion marks) become easier to file by making use of sound or video files rather than having to rely on still graphics,” he adds.

However, an EUTM must still be represented in a form that uses generally available technology that can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable, and objective manner, says Mr. Botis.

“One question that has come up over the past few months is whether the elimination of the graphical representation requirement facilitates smell marks. The answer is ‘not immediately’,” he says. 

That said, he adds, if “generally available technology” one day allows smells to be represented in a clear, precise, self-contained, easily accessible, intelligible, durable, and objective manner, there would be no legal barrier and the category “other” could be used to file such marks.

“However, it is difficult to see this happening in the near future,” he suggests.

New Marks

The second commonly posed question concerns what new types of trademarks are available and how they can be represented. 

Mr. Botis explains that, of the types of trademarks specifically named in the EUTMIR (see Table 1 for more details), only one is new—the multimedia mark. The others already existed per se or within broader categories. 3D marks have been renamed “shape marks,” he adds.

 

Table 1: Types of trademarks and requirements

Type of trademark

Description required?

Format required

Word

No

N/A

Figurative

No

JPEG

Shape

No

JPEG; OBJ; STL; X3D

Position

Optional

JPEG

Pattern

Optional

JPEG

Color (single)

No

JPEG

Color (combination)

Optional (previously mandatory)

JPEG

Sound

No

JPEG, MP3 (max 2 Mb)

Motion

Optional (previously mandatory)

JPEG, MP4 (max 20 Mb)

Multimedia

No

MP4 (max 20 Mb)

Hologram

No

JPEG, MP4 (max 20 Mb)

 

Certification Marks

Trademark owners have also been asking about the impact of the new certification mark, which is the first new EU-wide IP right administered by EUIPO since the registered Community design was introduced in 2003.

EUIPO says such marks indicate that the goods and services bearing that mark comply with a given standard set out in the regulations of use and controlled under the responsibility of the certification mark owner, “irrespective of the identity of the undertaking that actually produces or provides the goods and services at issue and actually uses the certification mark.”

Mr. Botis explains that EUIPO has already received about 100 applications, “quite a few of which were filed on or around October 1,” showing that people were waiting for the system to be introduced.

Priority

Changes to priority claims are the next focus of interest. Such claims must now be filed on the same date as the EUTM application, and, where required, documentation in support of the claim must be filed within three months of the filing date.

According to Mr. Botis, if the supporting documentation is not in a language of the office, it is now optional for the office to request that it be translated.

In addition, priority claims are no longer examined in substance at the filing stage. At this point, the office will examine only whether all formal requirements have been met, namely the number, date and country of the purported first filing, and the availability of official online sources to verify the priority data (or the submission of priority documents and translations).

Online Sources

Users have also been asking which online sources are accepted by EUIPO for the purposes of substantiating earlier rights, says Mr. Botis.

He explains that the office recognizes all the databases of the national and regional EU IP offices, with TMview (a trademark search tool) being acceptable as a portal through which the national offices are accessed.

For geographical indications, opponents and cancellation applicants can now rely on EU databases (E-Bacchus, E-Spirits and E-Door), he explains, adding that general references to such databases and sources are sufficient and the use of a direct hyperlink is optional.

Translation

Mr. Botis says that users have also been asking about the new requirements for and standards of translation.

He explains that in opposition and invalidity proceedings, where the language of the evidence of substantiation (except certificates of filing, registration and renewal or provisions of relevant law) is not the language of the proceedings, a translation will now be required only where requested by the office—either through its own motion or after a “reasoned request” by the other party. Evidence of acquired distinctiveness or reputation would fall within this category.

“However, evidence of substantiation (certificates of filing, registration and renewal or provisions of relevant law) must still be submitted in the language of the proceedings (or translated into this language) within the time limit set for substantiation,” he adds.

Communication

The final popular query concerns how communication with the office has changed.

Mr. Botis explains that because modernizing the EUTM system was at the heart of the reforms, “obsolete forms of communication have been removed.” These include hand delivery and deposit in a post box at the office.

Also, he says, since January 1, 2018, the office does not accept EUTM applications and renewals by fax, “except as a backup system if technical malfunctions prevent the use of e-filing.”

For More Information

While the above questions are the main queries that users have raised, other questions may arise. For further information requests, EUIPO can be contacted at information@euipo.europa.eu. Mr. Botis will be on a panel in Session CM21 The Fate of Color Per Se Marks in Europe on Monday from 11:45 am to 1:00 pm.

INTA, INTA 2018, EUIPO, Dimitris Botis, EU trademark reforms, trademark, graphical representation, certification marks, priority,

WIPR