europe-flags-slider-2
29 September 2017Trademarks

Latest EU trademark reforms: what you need to know

On Sunday, October 1, the second batch of reforms to the EU trademark system will come into force.

The first wave of changes took place in March last year, with the implementation of the new trademark regulation (2015/2424).

Combined with the trademark directive (2015/2436), the changes sought to harmonise different national registration procedures, simplifying the process of securing IP protection.

The latest changes are below:

  1. Removal of graphical representation

One of the major changes is the removal of the requirement of graphical representation for EU trademarks (EUTMs).

The result is that marks can be represented in any appropriate form, as long as the representation is “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

Sounds and colours are now explicitly registrable under the trademark rules.

In a WIPR article on the reforms, Imogen Fowler, partner in Hogan Lovells’ Alicante office, said she was not convinced this change will have “an enormous impact”.

But some have suggested that the floodgates will open up to many new and different types of non-conventional trademarks.

  1. EU certification mark

The EU certification mark will allow a certifying institution or organisation to permit parties adhering to the certification system to use the mark as a sign for goods and services, as long as they comply with the certification requirements.

Some EU countries previously allowed certification marks, although a number of them (including Germany) did not.

“Brand owners may well like to take advantage of this new type of EU-wide mark,” said Fowler. “Certification marks are already available in the UK. Now brand owners will be able to enjoy protection across the EU.”

  1. Procedural changes

The changes will also bring a number of procedural amendments into force, relating to the filing of priority claims and the enforcement of acquired distinctiveness.

Applicants looking to take advantage of the priority system currently have two months after filing to submit their priority claim.

Under the new rules, priority claims must be included in the application at the time of filing.

Applicants will also be able to invoke article 7(3) of the 2009 regulation as a subsidiary or alternative claim, either at the start of the application process or later.

Other procedural changes can be found here.

Next steps

Revocation of invalidity proceedings will have to be allowed before each country’s trademark office, although the deadline for implementation is not until January 2023.

In some countries, petitioners can’t file a cancellation before the trademark office and instead have to go to court, which involves a full legal action and significant costs.

Opposition and administrative proceedings for revocation or declaration of invalidity must also be provided for by EU member states.

Under the reforms, the disputes have to be brought before the national courts but the member states have several years to introduce these changes, with the deadline for the provision of opposition proceedings being January 2019.

Ulrike Grübler, partner in DLA Piper’s Hamburg office, said: “This will make life a lot easier when it’s introduced, even for those well trained in EU trademark systems.

“Obviously the intention of the reforms was to further harmonise trademark law, in particular various procedural rules, but it’s still not fully harmonised.”

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox

Today’s top stories:

PGA will not ‘putt up’ with copyright infringement

Mars dog treat case dismissed

Illegal content online needs ‘forceful’ reply: European Commission

Trump announces IP professor in latest judicial nominations

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Trademarks
16 December 2015   The European Parliament approved widespread reforms to the trademark system yesterday, December 15.
Trademarks
4 December 2017   David Stone, partner at Allen & Overy, is not convinced that the new EU certification regime will see a rush of people applying for registrations.