Some amendments introduced by the amending regulation, which entered into force on 23 March 2016, are applicable already, however, there a number of provisions that will apply from 1 October 2017, as they had to be developed by secondary legislation
This secondary legislation contains on one hand the Implementing Regulation 2017/143, and on the other hand the Delegated Regulation 2017/1430. Both legal instruments are designed to simply the procedures at the EUIPO introducing for example new measures that are most adequate according to the current technological developments.
The main changes that will be applicable from the 1st of October are the following:
1. Elimination of Graphical Representation Requirement
The requirement for a mark to be represented graphically will no longer apply to the new trade mark applications. Therefore, signs can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
This is a significant change that in theory could make it easier to register non-conventional marks, such as multimedia, holograms smell or taste marks especially with advances in technology. However, in practice and according the Office guidelines, It is currently not possible to represent smells or tastes in compliance with article 4 EUTMR, as the subject matter of protection cannot be determined with clarity and precision with generally available technology.
Furthermore, if such marks could avoid the obstacles mentioned above, they may still face objections, for example due to lack of distinctive character, or under the amended article 7(1)(e).
The exclusions relating to shapes marks are contained in Article 7(1)(e) – which does not allow for the registration of signs that consist exclusively of a shape which results from the nature of goods themselves, or which is necessary to obtain a technical result, or which gives substantial value to the goods. These provisions have been extended so that instead of just shape, the wording now refers to the shape, or another characteristic. Thus, we consider that for instance olfactory trade marks will fall under this prohibition since smells can be considered as a susbtancial value of the products.
2. Creation of EU certification marks
While a trade mark acts in general as a commercial origin indicator, a certification mark acts as a quality indicator.
In essence, the main function of this new trade marks is to indicate that the goods and services bearing the mark comply with a given standard set out in the regulations of use and controlled under the responsibility of the certification mark owner. Those regulations, which must be submitted by the applicant for an EU certification mark within two months of the date of filing, need to contain in particular:
- the persons authorised to use the mark
- the characteristics to be certified by the mark,
- how the certifying body is to test those characteristics and to supervise the use of the mark.
- specify the conditions of use of the mark, including sanctions
There are two important limitations for an EU certification mark:
- The owner of an EU certification cannot not carry out a business involving the supply of the goods and services of the kind certified
- The EU certification mark cannot be filed for the purpose of distinguishing goods or services certified in respect of the geographical origin.
3. Procedural changes
The following are some of the most significant changes:
- Priority claims must be filed at the time the EUTM application is filed
- Making acquired distinctiveness a subsidiary claim – which means that evidence of acquired distinctiveness will only have to be provided when a claim to inherent distinctiveness has been rejected and all grounds for appeal exhausted.
- Aligning the procedural rules for revocation and invalidity actions more closely with those for oppositions
- The possibility of relying on online sources recognised by the EUIPO for substantiation of earlier rights in oppositions and cancellation actions
- Relaxation of some of the substantiation and translation requirements
- Amending the rules on means of communication with the EUIPO in accordance with the new available technology
- Introduction of a remedy for assigning an EUTM, found to have been registered without justification by an agent, to the true proprietor;
- Amending the procedural rules for appeals to the Boards of Appeal.
- The imposition of more stringent rules on presenting evidence attached to submissions – including requirements to provide an index of the evidence relied upon.
- New rules on belated evidence of substantiation and proof of use.