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Further EU Trade Mark Reform Measures – 1st October 2017

Further EU Trade Mark Reform Measures – 1st October 2017

20/09/17

A second wave of EU Trade Mark reform measures will shorty become effective; the EU Trade Mark Regulation was amended in March 2016 and the secondary legislation package consisting of Regulation (EU) 2017/1001 and Commission Implementing Regulation (EU) 2017/1431 will come into force on 1st October.  The amendments make further, beneficial changes to the system, the most significant of which concern ‘graphic representation’ and the introduction of ‘certification’ trade marks.

Graphic Representation

The requirement that a trade mark must be represented graphically on the application form, has been abolished for all trade marks filed from 1st October 2017.  In accordance with the new provisions a sign may be represented on the register in any appropriate form using generally available technology (and thus not necessarily by graphic means) as long as the representation is clear, precise, self-contained, easily accessible, intelligible and durable so as to enable the competent authorities and the public to determine with clarity and precision the subject matter of the protection afforded to its proprietor [CIR (EU) 2017/1431].  This provision should enable and encourage  trade mark owners to formally protect a far broader range of signs in the EU, for example sound marks (or combinations of sounds), position marks, colours, olfactory marks, movement marks, combinations of sound and image and holograms.  The list of potential types of mark is not exhaustive.

Whilst there can be no absolute guarantees that applications to register non-traditional marks will succeed, this amendment will offer hope to brand owners that have been frustrated by the ‘graphic representation’ requirement.

Certification Trade Marks

From 1st October 2017, it will be possible to apply to register an EU ‘certification’ trade mark.  A certification mark must be 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.  Use of the mark certifies the presence of the particular characteristic concerned.  Therefore certification marks differ from “ordinary” trade marks, which distinguish the goods and services of one particular party from those of other parties and it is not used by the proprietor of the mark itself, but by authorised users.

Whilst brand owners have been used to the concept of UK certification marks, the ability to file applications for EU certification marks is likely to be welcomed and will be of interest to organisations throughout many industries.

Further Procedural Changes

Acquired Distinctiveness

Supporting an application for registration with evidence of ‘acquired distinctiveness’ may now be the subject of a principle or subsidiary claim, made only after all grounds for appeal have been exhausted.

Cancellation Proceedings

For the sake of greater clarity, consistency, efficiency and legal certainty, the procedural rules governing cancellation actions have been aligned with those applicable to opposition proceedings, wherever possible.

Presentation of Evidence

Evidential materials referred to in submissions must be clearly indexed in the submissions.

For further details of these and the other changes to the EU Trade Mark system which will enter into force on 1st October 2017, please contact one of our Trade Mark Attorneys.