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