On the 1st of October 2017, the second major wave of reforms to the EU Trade Mark (EUTM) system took place following earlier reforms in 23rd March 2016.
Summary of the 2016 EUTM reforms
Last year’s reforms changed the name of EU agency responsible for the registration of EUTMs from the Office for Harmonisation in the Internal Market (OHIM), to what is now known as the European Union Intellectual Property Office (EUIPO). It also changed the name of the trade mark the EUIPO administered, from the Community Trade Mark (CTM) to the European Union Trade Mark (EUTM). These changes came along with other reforms to streamline proceedings and increase legal certainty.
The new reforms introduced on the 1st October 2017
Modifications to the EUTM were completed this weekend when new secondary legislation, the EUTM Implementing Regulation (EUTMIR) and the EUTM Delegated Regulation (EUTMDR), came into force. The introduction of this secondary legislation brings with it a series of further changes to EUTM system and these may be summarised as:
1) Graphical representation;
2) EU certification trade marks; and
3) Procedural changes.
The graphic representation requirement has been replaced with a requirement for “clarity and precision”. It is now possible for a trade mark to be represented “in any appropriate form using generally available technology”, provided that it could be easily reproduced in the register. Hence, it follows that certain trade marks may now be accepted in electronic format (such as a sound or video files) as long as they are “clear, precise, self-contained, easily accessible, objective, durable and intelligible”.
The EUTMIR lists new categories of trade marks as well as rules and requirements for the representation of the most popular types of trade marks. The list below shows the types of trade marks and in what file format they may be represented:
– Figurative – JPEG
– Pattern – JPEG
– Shape – JPEG, OBJ, STL, X3D
– Position – JPEG
– Colour (single or combination) – JPEG
– Sound – MP3, JPEG
– Multimedia – MP4
– Motion – JPEG, MP4
– Hologram – JPEJ, MP4
This development will most likely increase the number trade mark applications as rights holders seek to protect their marks more rigorously.
EU certification trade marks
Certification marks are established in the UK but are new as a EU-wide right. These are signs which indicate that goods and services meet certain standards as defined by a certifying body. Examples of certification marks include the ‘Woolmark’ logo, which indicates that a product is made of 100% wool and the British Standard ‘Kite Mark’ logo, which is used to identify products where safety is paramount such as crash helmets and smoke alarms.
The introduction of certification marks to the EU is seen as positive following the recent decision of Gözze v VBB, where the CJEU ruled that the use of a sign as a label of quality did not amount to genuine use of an individual EUTM. Hence, it’s expected that certifying bodies will review their portfolios and take advantage of this change.
There are also a number a procedural changes introduced. These changes aim to make the EUTM system more modern, user friendly and cost-effective. Examples of these changes include the simplification of translation requirements, and the abolition of hand delivery and post-box deposits as means of submitting documents to EUIPO, details of which can be found via the EUIPO website here.