The EU trade mark regulation (EU) 2015/2424 was amended on 23 March 2016. Some changes to the codified version of the EU trademark regulation (n° 2017/1001) as well as two pieces of secondary legislation (Implementing regulation (n° 2017/1431) and Delegated regulation (n° 2017/1430) came into force on 1rst October 2017.
One of the major changes to the regulation consists of the elimination of the requirement for trade marks to be represented graphically. This will allow signs to be represented 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, durable and objective (Article 10 of the EUTMR, codifying Sieckmann case-law). The Office will provide users with information on the alternative media and formats that are considered to comply with the new provision. Furthermore, Article 3 of the Implementing regulation introduces new representation requirements for non-traditional types of marks.
The amending regulation introduces a new EU trade mark type called ‘certification marks’ (Article 83 EUTMR). These are marks that do not indicate trade origin but rather that goods or services have been certified by the proprietor as having certain characteristics.
There are also a large number of procedural rules that have been amended.
Thus, it is possible to claim the distinctiveness of a mark acquired by use as a subsidiary claim. This means that proof of distinctiveness acquired through use should only be provided when the mark has not been accepted as inherently distinctive. From a practical point of view, the filing form has been adapted in this way so that it can be claimed primarily that the mark is distinctive per se and, in the alternative, that the mark has acquired its distinctive character by way of use (Article 2.2 Implementing regulation).
In the area of fees, the amending Regulation introduces the following changes: a new one-fee-per-class system for application and renewal fees and an overall decrease in fees payable to the Office (ex: 850 euros for the electronic filing of an EU trademark in a class of goods or services and 900 euros for two classes).
In regards to evidence, there is now an imposition of more constricted rules on presenting evidence attached to submissions, this includes providing an index of the evidence relied upon (Article 55 Delegated regulation).
The reform acknowledges the success of the existing EU trade mark system, confirming that its main principles have stood the test of time and continue meeting business needs and expectations, but seeks to build on this success by making it more effective, efficient and consistent as a whole and adapting it to the Internet era. Trade mark owners and their advisors will need to ensure that they are aware of and comply with these new requirements and procedural rules.
Natalia Moya Fernandez, with the participation of Hélène Khindria
Read also :
Changements apportés par le Règlement (UE) 2015/2424 modifiant le Règlement sur la marque communautaire
Propriété intellectuelle – Technologies de l’information : lettre d’information septembre 2017
