EU trade mark reform: certification marks, abolition of the graphical representation requirement and more

The EU Trademark Regulation was amended in March 2016, but a number of those amendments will actually only start to apply on 1 October 2017.   On this date, a codified version of the EU Trademark Regulation will come into force, as well as two pieces of secondary legislation – an Implementing Regulation and a Delegated Regulation – which supplement the provisions of the EU Trademark Regulation and replace the existing Implementing Regulation.

What are the changes?

The codification of the EU Trademark Regulation means that many of the current Article numbers in the regulation will change.

The two main substantive changes that will start to apply on 1 October 2017 are:

• The abolition of the requirement for trade marks to be represented graphically and the introduction (in the Implementing Regulation) of new representation requirements for different types of marks, e.g. sound marks must be represented by submitting an audio file reproducing the sound or by an accurate representation of the sound in musical notation.
• The creation of EU certification marks – which 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 changes. These include:

• Making acquired distinctiveness a subsidiary claim – which means that evidence of acquired distinctiveness will only have to be provided when a claim to inherent distinctiveness has been rejected and all grounds for appeal exhausted.
• Relaxation of some of the substantiation and translation requirements – in particular to allow a greater reliance on online databases such as TMView.
• Aligning the procedural rules for revocation and validity actions more closely with those for oppositions.
• Amending the procedural rules for appeals to the Boards of Appeal.
• Amending the rules on means of communication with the EUIPO.
• The imposition of more stringent rules on presenting evidence attached to submissions – including requirements to provide an index of the evidence relied upon.
• The abolition of the certification requirement for seniority claims.
• New rules on belated evidence of substantiation and proof of use.

The EUIPO has provided an explanation of the main changes on its website.

What should trade mark owners do?

Owners of some forms of non-traditional marks, such as sound marks, motion marks or position marks, may wish to consider whether to file new applications in accordance with the new representation requirements, as this might provide greater clarity as to the sign that is the subject of protection.

Those organisations who administer certification marks, which may already be protected as such at a national level, will also want to consider whether they should be protecting them as EU certification marks.

Trade mark owners will also need to ensure that they (and their advisors) are aware of and comply with the new procedural rules. The most likely area for error is probably around the more stringent rules on presenting evidence, especially as standard form submissions and evidence relied upon previously may no longer be compliant and will need to be changed.