Netherlands jurisdiction report: EU trademark reform and its effects on practice

Certification mark

One of the main changes is the introduction of a new type of EU trademark. This is the certification mark, which provides a type of guarantee relating to the characteristics of the goods or services. The holder of a certification mark is not allowed to use it for its own goods and services so as to ensure the mark is a guarantee that a certain standard for the goods and services concerned is upheld.

Graphical representation

The graphical representation requirement has been removed. The requirement, which was an absolute ground for refusal, was problematic when it concerned the registration of sound, multimedia, scent and taste marks. Now the registration does not have to be graphically represented but must be in an appropriate form, which is ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’.

This is a lower threshold but it will be interesting to see how the office rules how a taste mark can be registered in a way which is clear, objective, etc.

Acquired distinctiveness

The argument that the disputed EU trademark has acquired distinctiveness can now be invoked later on in the proceedings, not immediately at the time of application. This means that only if there is a negative decision on the inherent distinctiveness which is also upheld in appeal will the applicant have the burden to collect evidence to show it has acquired distinctiveness.

Extensive market research is the usual way to show acquired distinctiveness, but this is time-consuming and costly. Enabling the applicant to wait to carry out this research until the office has found there is no inherent distinctiveness is laudable.

Priority

Priority claims must now be filed together with the EU trademark application. It is no longer possible to file them later in the proceedings. Furthermore the evidence supporting the claim of priority must be filed within three months of filing the application. Therefore it is essential to have a clear view of the potential priority claims before filing the application, as this can no longer be added after the application.

Translation

A translation of evidence must be provided only when the EU Intellectual Property Office (EUIPO) requests this, on its own or upon request of the other party. A translation of the relevant part of the evidence is sufficient; it is not required that the entire document be translated.

Other procedural matters

Evidence must be submitted according to formal requirements. It must be identified and referenced. This is in line with standard Dutch court practices and requirements, and indeed this seems to be the case in most jurisdictions. The communication with the EUIPO focuses on digital communications; hand delivery is no longer allowed and fax is slowly being removed as one of the ways of communication. The move towards digital communications is also in line with the developments in most member states.

Conclusion

The amendments lower the burden of proof on the applicant in the sense that showing acquired distinctiveness can be done later on when it is clear there is no inherent distinctiveness. And the evidence that is used to show the acquired distinctiveness does not have to be translated immediately, but only on request and a translation of the relevant parts of the document is sufficient.

Another practical change is that the priority claim must be made at the time of the application. Apart from these procedural changes it will be interesting to see how the removal of the graphical representation requirement influences how trademarks are applied for.

Michiel Rijsdijk is a partner at Arnold & Siedsma. He can be contacted at: mrijsdijk@arnold-siedsma.com