October 01, 2017: Next wave of changes brought by the EU Trademark Regulation

As posted earlier in our post from 10 April 2017 , the second part of changes regarding the new EU Trademark Regulation (Regulation (EU) 2015/2424) will come into force on 1 October 2017, as the changes had to be made through secondary legislation. The secondary legislation consists of the Implementing Regulation laying down detailed rules for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark and the Delegated Regulation supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96.It is now time to take a closer look to the relevant changes.  

I. What are the changes?

The changes of the next phase may be divided in three categories: 

1: Changes regarding the graphical representation and different types of marks,

2: The new EU Certification Marks,

3: Procedural changes.

II: Graphical representation

“What you see is what you get” will be the new underlying principle regarding trademarks from the beginning of October 2017. A sign must be represented in any appropriate form, by means of generally available technology. The requirements for the presentation are that it is clear, precise, self-contained, easily accessible, intelligible, durable as well as objective. This, in the future, should increase legal certainty and reduce objections based on formality reasons. As there are various forms for trademarks and their main function is to indicate the source of origin, this change may allow more imaginative trademarks to be registered. Furthermore, descriptions for marks will be optional. To see the most popular forms as well as required formats, please visit here.

III. EU Certification Marks

EU Certification Mark is a whole new type of mark in the EU. The EU Certification Mark is defined as mark that is

 “capable of distinguishing goods or services which are certified by the proprietor  of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.”

The EU Certification Mark should not be mixed up with geographical indications, although they both relate to the guarantee of a specific characteristic of a product. Thus, a Certification Mark cannot be filed in order to distinguish the goods and services in respect of geographical origin.

EU Certification Marks ensure that the goods and services comply with a given standard set out in the regulations of use and are controlled under the responsibility of the certification mark owner. The regulations of use are the core of a certification mark, and must be filed within 2 months. These include in particular, the characteristic of goods and services at hand, the conditions governing the use of the mark as well as the testing and supervision measures to be applied by the certification mark owner. For more detailed information on the new EU Certification Marks, please visit here. 

IV. Procedural changes

There are several procedural changes that come into force starting 1 October 2017. The EUIPO has collected a short overview of the most significant changes. It should be emphasized that this is not an exhaustive list. The detailed information can be found under the Implementing Regulation (EU) 2017/1431, as well as the Delegated Regulation (EU) 2017/1430.

After 1 October 2017, it is no longer possible to claim priority after the application but, it must be filed already together with the application. After the application, supporting documents must be filed within three months of the filing date, instead of the previously applied three months from receipt of the declaration of priority.

In addition, there are changes concerning the acquired distinctiveness of a mark. Article 7(3) EUTMR can now be invoked at the start or later during the process, which practically reduces unnecessary expenses regarding gathering and presenting evidence. 

When it comes to opposition and cancellation proceedings, the requirements of admissibility and substantiation for relative grounds’ have been reorganized in order to gain clarity. In addition, geographical indications have been taken under the Article 8(6) EUTMR. Belated evidence, as well as Office practice on suspension of surrenders and the closure/continuation of pending revocation or invalidity proceedings has been codified.

Furthermore, starting from October 2017, the EUIPO accepts evidence from online sources recognized by the office in regard to registered rights. This smoothens down the procedures, as reference can be made to an online source. What is more, not regarding certificates of filing, registration and renewal or provisions of relevant law, if the language used for evidence of substantiation is not the language of proceedings, translation is needed only if requested by the Office.

Also, a whole new process regarding trademarks has been added to the EUTMR Article 21(2)(a). The new procedure allows the proprietor of a mark to demand the assignment of the respective trademark in such case, that an agent or other representative has registered an EU Trademark without the consent of a proprietor.

As the Office has entered the internet era, the means of communication with the office will change to better utilize information technology. Hand delivery and deposit to postbox will not be available anymore, and tele copier and other technical means’ of communication – which covers faxes – has been removed from secondary legislation. However, faxes may be used as back up when specific requirements are fulfilled.

In addition, some clarifications have been made regarding the Boards of Appeal, mostly concerning the content of the statement of grounds and of the response, ‘cross appeals’, claims raised and facts or evidence filed for the first time before the Board of Appeal, new absolute grounds raised by the Board of Appeal, expedited proceedings and the organization and structure of the Boards of Appeal.

Both the EUTMIR and the EUTMDR apply from 1 October 2017, and include transitional provisions. As a main rule, both Regulations apply to ongoing proceedings from 1 October 2017 unless otherwise provided. However, as always, there are some exemptions. In order to get a better insight what are the transitional provisions regarding different situations, please see all transitional provisionals.