AMENDED EU TRADE MARK REGULATION

What will change on October 1, 2017 ?

After the entry into force of a first part of the Amending Regulation (EU) No. 2015/2424 on 23 March 2016, a second set of changes to the EU trade mark Regulation (EC) No. 207/2009  will be applicable as from October 1, 2017.

Hereunder, we provide an overview of the most important changes.

  1. Trade mark application 
  • Representation of the trade mark

A trade mark shall 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 The former requirement of graphical representation has been withdrawn from the Regulation.

The omission of the graphic representation requirement, allows that new types of formats can be used to represent the trade mark, such as mp3 and mp4 files.

  • New types of trade marks

Further, in addition to the traditional word, figurative, shape and sound marks, some new types of trade marks are officially introduced:

  • position mark
  • pattern mark
  • colour mark
  • motion mark
  • multimedia mark
  • hologram mark
  • Priority claim

The priority must be claimed at the moment of filing the EUTM application and can no longer be claimed after the application was filed. The documentation in support of the priority claim may be filed within 3 months of the date the claim was submitted.

  • Acquired distinctiveness as a subsidiary claim

The application may include a claim that the sign has acquired distinctive character through use, as well as an indication of whether this claim is meant as a principal or subsidiary one. When an applicant choses to invoke acquired distinctiveness as a subsidiary claim, the EU trade mark application will first be examined on its inherent distinctiveness. Only when there is a negative final decision on the inherent distinctiveness of the sign applied for, the applicant will have to gather and present evidence of acquired distinctiveness through use.

  1. Certification marks

Besides the existing individual and collective trade marks, the certification mark is introduced.

An EU certification mark 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 proprietor of an EU certification mark cannot be carrying on a business involving the supply of goods or services of the kind certified.

Regulations governing use of the certification mark must be filed within 2 months of the application. These regulations shall specify inter alia:

  • the persons authorized to use the mark,
  • the characteristics to be certified by the mark,
  • the conditions of use of the mark
  • how the certifying body is to test those characteristics and to supervise the use of the mark

III. Oppositions and invalidations

  • New opposition and invalidity ground

The owner of an designation of origin or a geographical indication submitted prior to the application date of the EU trade mark or the date of the priority claimed, shall from now on have the right to file an opposition provided that its designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.

  • Suspension of proceedings

Suspension of the proceedings for a period not exceeding six months is granted at the request of both parties in inter partes proceedings. This suspension may be extended upon a request of both parties up to a total maximum of two years, instead of the three years formerly.

  1. Language of supporting documents

From October 1, 2017 on, most supporting documents to be used in written proceedings before the Office – such as evidence of use or acquired distinctiveness – may be filed in any official language of the Union. Where the language of such documents is not the language of the proceedings, translation will now only be required at the request of the Office or upon reasoned request by the other party, after which a translation into the language of the proceedings should be submitted within a specified period.

Certificates of filing, registration and renewal or provisions of relevant law, must be continued to be translated into the language of proceedings within the initial time limit.

Also, where a party has indicated that only parts of a document are relevant, the translation may be limited to those parts.

At your service

The modifications listed above are just a summary of the main changes introduced by the Amending Regulation. Nevertheless, we will not fail to inform you in every separate case of the particularities and nuances of each of these or other changes, including the applicable transitional regime.

After the entry into force of a first part of the Amending Regulation (EU) No. 2015/2424 on 23 March 2016, a second set of changes to the EU trade mark Regulation (EC) No. 207/2009  will be applicable as from October 1, 2017.

Hereunder, we provide an overview of the most important changes.

  1. Trade mark application 
  • Representation of the trade mark

A trade mark shall 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 former requirement of graphical representation has been withdrawn from the Regulation.

The omission of the graphic representation requirement, allows that new types of formats can be used to represent the trade mark, such as mp3 and mp4 files.

  • New types of trade marks

Further, in addition to the traditional word, figurative, shape and sound marks, some new types of trade marks are officially introduced:

  • position mark
  • pattern mark
  • colour mark
  • motion mark
  • multimedia mark
  • hologram mark
  • Priority claim

The priority must be claimed at the moment of filing the EUTM application and can no longer be claimed after the application was filed. The documentation in support of the priority claim may be filed within 3 months of the date the claim was submitted.

  • Acquired distinctiveness as a subsidiary claim

The application may include a claim that the sign has acquired distinctive character through use, as well as an indication of whether this claim is meant as a principal or subsidiary one. When an applicant choses to invoke acquired distinctiveness as a subsidiary claim, the EU trade mark application will first be examined on its inherent distinctiveness. Only when there is a negative final decision on the inherent distinctiveness of the sign applied for, the applicant will have to gather and present evidence of acquired distinctiveness through use.

  1. Certification marks

Besides the existing individual and collective trade marks, the certification mark is introduced.

An EU certification mark 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 proprietor of an EU certification mark cannot be carrying on a business involving the supply of goods or services of the kind certified.

Regulations governing use of the certification mark must be filed within 2 months of the application. These regulations shall specify inter alia:

  • the persons authorized to use the mark,
  • the characteristics to be certified by the mark,
  • the conditions of use of the mark
  • how the certifying body is to test those characteristics and to supervise the use of the mark

III. Oppositions and invalidations

  • New opposition and invalidity ground

The owner of an designation of origin or a geographical indication submitted prior to the application date of the EU trade mark or the date of the priority claimed, shall from now on have the right to file an opposition provided that its designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.

  • Suspension of proceedings

Suspension of the proceedings for a period not exceeding six months is granted at the request of both parties in inter partes proceedings. This suspension may be extended upon a request of both parties up to a total maximum of two years, instead of the three years formerly.

  1. Language of supporting documents

From October 1, 2017 on, most supporting documents to be used in written proceedings before the Office – such as evidence of use or acquired distinctiveness – may be filed in any official language of the Union. Where the language of such documents is not the language of the proceedings, translation will now only be required at the request of the Office or upon reasoned request by the other party, after which a translation into the language of the proceedings should be submitted within a specified period.

Certificates of filing, registration and renewal or provisions of relevant law, must be continued to be translated into the language of proceedings within the initial time limit.

Also, where a party has indicated that only parts of a document are relevant, the translation may be limited to those parts.

At your service

The modifications listed above are just a summary of the main changes introduced by the Amending Regulation. Nevertheless, we will not fail to inform you in every separate case of the particularities and nuances of each of these or other changes, including the applicable transitional regime.