The second phase of the EU trade mark reform process took effect on 1 October 2017, the EU Intellectual Property Office (EUIPO) has announced, with the entry into force of the codified EU Trade Mark Regulation, (EU) 2017/1001, the Implementing Regulation, (EU) 2017/1431, and the Delegated Regulation, (EU) 2017/1430.
What is the background to the new legislative provisions in respect of EU trade marks, which came into force on 1 October 2017?
The background to the new legislative provisions which came into force on 1 October 2017 started over nine years ago. The amendments to Regulation (EC) 207/2009 were introduced by Regulation (EU) 2015/2424 (Amending Regulation) and subsequently codified by Regulation (EU) 2017/1001. The catalyst was the European Commission’s communication of 16 July 2008 on the Industrial Property Rights Strategy for Europe. This document announced the Commission’s intention to carry out a comprehensive evaluation of the European trade mark system, not only at a European level but from the perspective of its interrelationship with, and functioning at, a national level.
Following the communication, the Max Planck Institute for Intellectual Property and Competition Law carried out and published its ‘Study on the overall functioning of the European trade mark system’ in March 2011. The outcome of this, and a subsequent public consultation and impact assessment, was the draft Directive (EU) 2015/2436 (Amending Directive) and the Amending Regulation in March 2013. Following scrutiny by relevant organisations, the Council and the European Parliament approved both drafts at the end of 2015. While the Amending Directive came into force on 13 January 2016 (and Member States have until 15 January 2019 to implement it), the Amending Regulation has come into force in two tranches. The first tranche came into force on 23 March 2016, with the second tranche came into force on 1 October 2017.
What are the benefits of the introduction of the EU certification mark?
A certification mark performs a particular role which, until its introduction in the Amending Regulation, had not existed at an EU level. Those familiar with the UK trade mark system, and certain other trade mark systems within the EU, will be aware that such marks are used to indicate that goods or services comply with the certification requirements of a certifying institution or organisation.
Therefore, while a certification mark has much in common with a collective mark (which has been available at EU level for some time), clearly the principal benefit is the ability to protect marks of this type at an EU level for the first time.
The more specific benefits that flow from the creation of this new EU right, in many respects align with the benefits of any unitary EU right.
In this case, they include
- a more cost effective and efficient way to obtain certification mark protection within and throughout the EU, particularly given the more onerous requirement to provide governing regulations on the use of the mark which must accompany such applications
- giving the proprietor of an EU certification mark not only EU-wide rights, but EU-wide remedies, opening up the possibility of European-wide remedies from a single national court (in appropriate circumstances)
- the possibility of obtaining certification protection which covers, and is applicable in, a national EU state which does not specifically allow for the national protection of certification marks presently
What will the impact be in practice of the removal of the graphical representation requirement for trade mark applications?
The practical impact of the move from the previous reference of ‘graphical representation’ to ‘clarity and precision’ in what is protected, is difficult to gauge at this stage. Trade mark owners and professionals will have to wait until relevant issues arise and are decided by the European Union Intellectual Property Office (EUIPO) and the courts. In theory, the practical impact should not be too great as the new wording puts into legislation principles that have been developed and/or acknowledged by the courts for some time. However, given that it is now possible for a trade mark to be represented ‘in any appropriate form using generally available technology’, provided that it can be easily reproduced in the EUIPO’s trade mark register, there will be applications which push the boundaries of what is permissible.
For many of those who have considered the amended requirements, it is clear that their greatest impact is likely to be in respect of non-traditional trade marks. However, as the reforms expanded the grounds on which an application can be refused, many non-traditional marks may still struggle to make it through to registration.
In keeping with the desire for the trade mark system to be a ‘what you see is what you get’ register, Regulation (EU) 2017/1431 (Implementing Regulation) sets out specific rules and requirements for the representation of ten types of trade marks. The first five are existing types of marks, while the second five are new.
- colour (either single or combination)
It is also worth noting that national registries will be watching carefully as to the interpretation of the requirement for ‘clarity and precision’ by the EUIPO, as there is a requirement for national registries to implement this at national level by mid-January 2019. The UK will continue with the implementation process, despite the fact that Brexit is due to occur in March 2019.
What are the key procedural changes that apply from 1 October 2017?
There are many procedural changes as a result of the Amending Regulation and Implementing Regulation. These procedural changes relate not only to EU trade mark applications, but related opposition and cancellation proceedings. At the heart of these changes is a desire to modernise the EU trade mark system making it more user-friendly and cost- effective.
Some of the key procedural changes are as follows:
- the requirements for making specific types of trade mark application (principally relating to non-traditional trade marks) will require further thought given the specific requirements set out in Article 3 of the Implementing Regulation
- hand delivery and post-box deposits are abolished as a means of submitting documents to the EUIPO
- priority claims must now be made at the time of filing an EU trade mark application (although such claims will no longer be examined)
- in respect of seniority claims, a simple copy, rather than a certified copy, of the relevant registration is now sufficient for a valid seniority claim
- translation requirements have been simplified—most notably, where the language used for evidence substantiation is not the language of the proceedings, translations will now only be required where requested by the EUIPO or a reasonable request by the other party
- the substantiation process in opposition and cancellation actions has been simplified (principally, where rights can be easily located on official online databases, it will be sufficient to provide a link or way in which to identify the source, rather than the source itself)
- there are a number of amendments to the structure and presentation of evidence which are now in line with General Court requirements (including changes within opposition proceedings and to suspension practice)
- inherent distinctiveness arguments can be pursued alone through to the appeal stage, and an acquired distinctiveness claim can be brought
- where an agent or representative registers an EU trade mark without the proprietor’s authorisation, the proprietor is now entitled to demand the assignment of the EU trade mark (previously the only remedy was invalidation, with the proprietor then needing to file a new application)
Are there any other points of interest worth mentioning here?
The recent European trade mark reforms which affect both EU and national systems are to be welcomed. They broadly acknowledge that the EU trade mark system has functioned well, while at the same time looking to address and meet the needs of modern businesses embracing technological advances. The central thrust of the changes is to bring greater efficiency and consistency. These objectives are achieved by codifying certain practices and bringing into legislation findings and observations by the EU and national trade mark courts, and users of the EU trade mark system. As part of the ever-increasing efficiency of the EU trade mark system, the further reductions in fees payable to the EUIPO, particularly significant in the case of renewals and the adoption of a one-class-per-fee system, will hopefully further encourage businesses to seek trade mark protection.
Will Sander is both a solicitor and UK and European chartered trade mark and design attorney. His practice covers the protection, monitoring and exploitation of IP in the UK, Europe and globally. Will has advised a broad range of clients from small and medium sized enterprises to household names on commercial, corporate and litigation matters covering trade mark law, patent law, design law, copyright law, and the use and protection of confidential information and know-how. Will has a particular interest in trade marks and designs. This includes the management of IP portfolios, availability, searching,m oppositions, cancellations, invalidity and revocation actions, and infringement matters in the UK, Europe and around the world.
Interviewed by Kate Beaumont The views express by our Legal Analysis interviewees are not necessarily those of the proprietor.This article was first published on Lexis®PSL on 13 October 2017.