Changes to the European Union Trade Mark Regulation: What You Need to Know

On the 23 March 2016, the amending EU Trade Mark Regulation (EUTMR) entered into force, changing the name of the office from OHIM to the European Union Intellectual Property Office (EUIPO).  It also changed the name of the trade mark from the Community Trade Mark (CTM) to the European Union Trade Mark (EUTM), along with other changes to streamline proceedings and increase legal certainty.

The remaining parts of the EUTMR came into force over the weekend (on 1 October 2017) along with the following secondary legislation:

European Union Trade Mark Implementing Regulation (EUTMIR); and
European Union Trade Mark Delegated Regulation (EUTMDR).
What are the main changes of concern for you?

Removal of the Graphical Representation Requirement

The EUTMR removes the requirement for marks to be represented graphically when filed (which previously presented problems for those wishing to file non-convention applications for sound and smell marks) representation requirement.

From 1 October 2017, signs can be represented in any appropriate technological format provided the representation is ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’.

The EUTMIR also sets out a list of the types of marks that can be filed, as well as specific technical requirements for filing those types of marks (e.g. file size limits, sound marks to be registered with no worded descriptions, etc.).

Some marks can now be filed which couldn’t previously (e.g. multimedia marks) and some categories have been broadened (for instance, pattern marks were previously covered by figurative marks).

This offers more clarity for the trade mark proprietor and any IP advisor that is engaged.   The new changes mean that certain types of trade marks that can only be represented in electronic format are now acceptable – this would mean for instance, that rotating 3D CAD files will likely be accepted for shape marks.

EU Certification Marks

The EUTMR also introduces a new type of mark: EU Certification Marks.  Certification marks exist at national level in some Member States and are used to indicate that goods and services comply with certain requirements of a specific institution or organisation (e.g. that they meet a certain quality).  Such marks must be accompanied by regulations governing their use which need to be submitted within 2 months of filing.  The content required for such subsequent filings are set out in the EUTMIR.

Some of the Procedural Changes

The most exciting change is having ‘acquired distinctiveness’ as a subsidiary claim. ‘Acquired distinctiveness’ can be claimed when a trade mark that is generally considered not to be registrable, due to it lacking distinctiveness, becomes distinctive over time through use.  In short, this would mean a trade mark application (i.e. you) will be required to invest less money and effort pursuing ‘acquired distinctive’ as a stand-alone claim.

Priority must now be claimed when you file the EU trade mark so it’s important to let us know if you require filings of your trade marks in different territories at the outset of your European Union trade mark.  Please speak to us if you think this might apply to you.

In certain cases, online substantiation of oppositions and cancellations is possible.  For this purpose, the office recognises all of the databases of the national and regional EU IP offices– this means evidence can be sent to the EUIPO electronically which will speed up the process.  There are also new provisions on providing belated evidence of substantiation and proof of use.

Transitional provisions set out when the new rules are to take effect.  For more information, you can check the EU IPO website or updates via Twitter #EUIPO0110.

However, in the interim, if you require any advice or clarification with respect to the above changes, you can give us a call on 0207 288 6003 or come and have a chat with us at our office.