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Changes to EU Trade Mark Practice in October 2017

Keltie LLP

K2 IP Limited

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IMG_8533-1On 1 October 2017 a number of important changes to EU Trade Mark Practice will take effect.

Here is what you need to know:

  1. Removal of the Graphical Representation Requirement

Trade marks will no longer be required to be ‘represented graphically’ in a EUTM application. 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.

The aim of the provision is to make trade mark entries on the EUTM Register clearer, more accessible and easier to search for, while reducing the rate of formal objections. The significant change should make it easier to register non-traditional marks, such as sounds, motion/movement marks, multimedia marks and holograms, by filing them in an electronic format such as MP3, MP4 and JPEG.

  1. Introduction of EU Certification Marks

Certification marks are a new type of trade mark at EU level, although they already exist in some other territories, including the UK. Certification marks can be used to indicate that goods and services bearing the mark comply with standards or requirements set by a certifying institution or organisation.

Essentially, they act as a guarantee of specific characteristics of certain goods and services; for example, their quality, materials from which they are made, performance of services or mode of manufacture. However, it is important to note that they cannot be used to indicate the geographical origin of goods or services. Further, they cannot be owned by a business of person involved in the provision of the goods or services being certified.

The regulations of use, which must be filed within two months of the application, constitute the substance of the certification mark. They need to contain:

  • the characteristics of the goods or services to be certified
  • the conditions governing the use of the certification mark
  • the testing and supervision measures to be applied by the certification mark owner

Parties interested in applying for an EU certification mark are advised to begin preparing their regulations of use at the earliest opportunity in order to meet the relevant time scales. If the two month term for submission is missed, the application will be rejected.

  1. Acquired Distinctiveness as a Subsidiary Claim

Applicants will be allowed to pursue a subsidiary claim of acquired distinctiveness either at the start of the application process or (at the latest) when filing the initial response to the Examiner’s absolute grounds objection (i.e. an objection that the mark lacks distinctive character or is descriptive of the goods/services concerned).

The advantage of a subsidiary claim is that it only crystallises if there is a negative final decision on inherent distinctiveness. This allows the applicant to exhaust its right of appeal on inherent distinctiveness before it is required to prove acquired distinctiveness.

Previously, applicant’s were obliged to file their claims (and evidence) of acquired distinctiveness when first responding to the Examiner’s objection. The change will mean that the costs of gathering and presenting evidence of use will not need to be incurred unless it is absolutely necessary.

  1. Procedural Changes

A number of procedural changes will be introduced including:

  • Assignment of EUTM as a remedy, for marks found to have been registered without justification by an agent – this remedy returns them to the true proprietor;
  • Priority claims must be included in the EUTM application at the time of filing (no longer a 2 month period after filing to submit a priority claim);
  • Evidence submitted to the EUIPO now has to meet set formal requirements, including being clearly labelled, annexed and referenced;
  • Online substantiation of earlier rights from recognised sources in oppositions and cancellation actions (including national and regional EU IP databases and TMview) is now acceptable;
  • Errors in decisions and on the register now face a time limit of 1 year before they are revoked or cancelled;
  • Disclaiming elements of a trade mark in order to overcome objections will no longer be allowed.

Amelia Skelding 13 September 2017

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