EU Trademark Law Reform: Second Set of Changes Enters into Force

While the first stage of the European Union trademark reform, introduced by Regulation (EU) 2015/2424, came into force on March 23, 2016, the second set of changes entered into force on October 1, 2017.

The first stage introduced a new name for the community trademark – European Union Trademark (EUTM), and for the Office for Harmonization in the Internal Market (OHIM), now called the European Union Intellectual Property Office (EUIPO). Many other aspects of the EUTM system were amended, including examination, opposition, cancellation and appeal proceedings and absolute and relative grounds for refusal.

The second stage introduces the remaining part of the amendments, which are mostly technical in nature. In the interest of clarity, a new codified version of the EUTM Regulation (Regulation (EU) 2017/1001) enters into force on the same day, accompanied by two pieces of secondary legislation — Implementing Regulation (EU) 2017/1431 and Delegated Regulation (EU) 2017/1430, containing detailed transitional provisions.

As of October 1, 2017, there are three main areas of change:

1. Removal of Graphical Representation Requirement

The new Regulation amends the definition of an EUTM by removing the graphical representation requirement. The condition ‘graphical’ meant that, previously, the mark had to be represented visually, particularly by images, lines or characters, provided that the representation was clear, precise, self-contained, easily accessible, intelligible, durable and objective (see Judgment of 12 December 2002, CJEU, C-273/00, Ralf Sieckmann v Deutsches Patent-und Markenamt). Although this requirement did not limit trademarks eligible for protection to only visually perceivable signs, it was devised with such signs in mind, complicating the filing of other types of marks and excluding some from protection.

For example, sound marks had to be represented on a musical stave (see Judgment of 27 November 2003, CJEU, C-283/01, Shield Mark Mark BV v Joost Kist h.o.d.n. Memex.) or with a sonogram accompanied by a sound file, according to a later EUIPO practice development, not confirmed by the CJEU. The graphic representation of movement marks had to be accompanied by a description explaining the movement for which protection was sought. Finally, in practice, it was impossible to represent olfactory signs in a sufficiently intelligible, clear, precise or objective graphical manner (see Judgment of 12 December 2002, CJEU, C-273/00, Ralf Sieckmann v Deutsches Patent-und Markenamt). The same applied to taste marks.

The new EUTM definition should make it easier to register a non-traditional trademark as long as its representation is clear, precise and the subject matter can easily be identified. In other words, signs can be represented in any appropriate form using any available technology. This, however, must not be at the expense of legal certainty. The Implementing Regulation (EU) 2017/1431 lists the most popular types of trademarks and their acceptable forms of representation and description. It is now possible to file sound, motion, multimedia and hologram marks by submitting an audio or an audio-visual file. The EUIPO has already determined the file formats it is going to accept.

Nevertheless, because of current technological limitations, it is still uncertain how the system will accommodate registration of smells, tastes, or haptic marks. The Implementing Regulation explicitly prohibits a sample or a specimen as a form of trademark representation.

2. Introduction of EU Certification Marks

While certification marks already exist in some EU countries’ national laws, the new Regulation introduces the registration of certification marks at EU level. These marks are defined as signs of supervised quality and their main function is to attest that the goods or services bearing them comply with certain certification requirements. Any person or certifying organization can determine the certification requirements and apply for a mark. The owner can then permit others to use it and control adherence to the requirements.

According to the Regulation, the EU certification mark must be capable of distinguishing the certified goods or services in respect of their mode of manufacture or performance, material, quality, accuracy or other characteristics. To avoid confusion with geographical indications, the Regulation prohibits the filing of certification marks for the purpose of distinguishing goods or services in respect of their geographical origin. Another limitation, in this case intended to protect competition, is that the applicant must not carry on a business involving the supply of certified goods or services. In other words, the certification mark owner cannot use the mark but can certify others to use it.

Certification requirements must be outlined in regulations that the applicant files within two months from the trademark filing date. The regulations must include:

• rules on the persons eligible to use the mark;

• the characteristics to be certified by the mark;

• how the mark owner is to test those characteristics and to supervise mark use;

• the conditions of mark use; and

• sanctions.

The new Regulation also includes specific rules regarding grounds for refusal, obligation to use, transfer, revocation, invalidity and conversion, and regarding persons eligible to enforce EU certification mark rights.

3. Procedural Changes

Multiple procedural changes in the EUTM system also entered into force on October 1, 2017:

• Cancellation proceedings have been aligned with opposition proceedings as much as possible and the admissibility and substantiation requirements have been reordered for clarity.

• New online substantiation possibilities aim to eliminate paperwork. Namely, materials that are already available online in a source recognized by the EUIPO no longer have to be filed as separate documents. It is sufficient to make reference to the source where they can be accessed. The EUIPO will recognise a number of sources such as national and regional IPO databases and TMview. The change mainly eliminates the need to provide evidence of registered trademarks, GIs or similar signs. However, applicants will still have to provide translations of such documents.

• New language and translation rules also aim to reduce the burden and costs of preparing and filing evidence. Substantiation evidence filed in an official EU language will no longer have to be translated into the proceedings language at all times, but only at the request of the EUIPO. This change does not affect filing, registration and renewal certificates, which still have to be filed or translated into the proceedings language.

• New rules regarding the acceptance of belated evidence are also introduced. Namely, belated evidence must be supplementary and related to the same substantiation requirement. When accepting such evidence, the EUIPO is expected to take into account the stage of the proceedings, how relevant the evidence is for the outcome of the case and whether there are valid reasons for the late submission.

• Another important novelty is the introduction of earlier rights, in both national and European designations of origin or GIs, as relative grounds for refusal of EUTM applications.

• In actions based on EUTM registration by an agent or representative without the proprietor’s consent, it will be possible to request the EUTM assignment instead of its cancellation. Such requests will be examined during the same invalidity proceedings.

• Any withdrawals, restrictions or requests for proof of use must be filed as separate documents, in order to make it easier to find such statements.

• Acquired distinctiveness will be allowed as a subsidiary claim, allowing applicants to exhaust their right to appeal on inherent distinctiveness before having to argue and prove acquired distinctiveness. Currently, applicants can only argue acquired distinctiveness in their observations to an objection. This means that applicants have to gather and file evidence of acquired distinctiveness to use their only opportunity to claim it, even though they have not exhausted their right to appeal on inherent distinctiveness.

• It will not be possible to file priority claims after filing an EUTM application; they must be filed together with the application, although supporting documentation can be filed within three months of the filing date. In addition, EUIPO will no longer examine priority claims during the formalities examination; they will only come into play in subsequent proceedings related to relative grounds.

• EUIPO practices on suspension of surrenders and the closure/continuation of pending revocation or invalidity proceedings will be codified.

• Hand delivery and deposit in a post box at the EUIPO will no longer be available.

Conclusion

The second part of the reform package covers mostly everyday procedural matters and makes it possible to protect a broader range of signs – non-traditional and certification marks. Businesses that wish to protect their audio-visual or non-visual branding have more convenient tools at hand to identify and claim such signs. They may consider filing new applications in order to take advantage of the newly created possibilities. National certification mark owners can now use the European route to file these signs and enjoy protection on the entire EU territory.

In order to facilitate their way through the significant quantity and diversity of substantive and procedural changes brought by the reform, rights holders and their advisors can make use of the detailed EUIPO guidelines and other resources related to the post-reform trademark practice.

By: Dimitar Batakliev

For more information, please contact Dimitar Batakliev at our Bulgaria office.