The full applicability of the reform of the European Union trade mark system
Published on 28th Sep 2017
On 1 October 2017, the latest reforms shall apply to the trade mark system of the European Union including the expansion of the concept of trade marks, the creation of a new type of trade mark and certain procedural changes.
On 6 July came into force Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June on the European Union trade mark (the “EU Trade Mark Regulation“), which codifies the previous Regulation of 2009 on the community trade mark and its successive reforms, including the modifications introduced by regulatory provision of 16 December 2015. Although Regulation 2015/2424 of 16 December 2015 introduced reforms (among others, changes to examination, opposition and nullity proceedings, modifications in the grounds for refusal of registration, in the classification of goods and services and in the appeals, as well as terminology substitutions) which are applicable since 23 March 2016, it is true that the implementation of other modifications of interest has been deferred until 1 October 2017.
The three main areas in which the modifications applicable as of 1 October 2017 can be classified are (a) not requiring the graphical representation of trade marks; (b) the creation of a new category of trade marks, and (c) certain procedural aspects.
It should be noted that the EU Trade Mark Regulation introduces developments in a concept crucial to the regulation such as the signs that may constitute a trade mark. The regulation eliminates the requirement of graphic representation and, therefore, the concept of trade mark acquires a greater dimension that enables the inclusion of distinctive signs which, being non-conventional, could not be registered and protected until today. With this, the legislator gives support to various decisions from the Court of Justice of the European Union which has concluded that signs that are not visually perceptible cannot per se be excluded from the concept of trade mark. The regulatory reform is not trivial, as it adapts the legal provisions to new marketing strategies of companies allowing that perceptible signs by means of senses such as smell, touch, taste, or hearing are capable of constituting a registered trade mark, provided that the available technological means allow a clear, accurate, complete, easily accessible, intelligible, durable and objective representation. Without underestimating the effort made by the European legislator to increase the protection of a greater number of distinctive signs, it can be expected that the representation of some of these signs (for example, those perceptible by smell) generate some type of confusion and legal uncertainty.
In an effort to adapt the European Union trade mark system to certain systems of Member States, from 1 October a public or private person will be able to apply for the registration of certification marks. This new type of trade marks will permit its owner distinguish certain products or services from those of a third party because their materials, manufacturing procedure, quality, accuracy or other type of characteristics (with the exception of the geographical origin) have been certified on the basis of certain standards established in the regulations of use. To obtain the registration of a certification mark, the applicant should submit the regulations of use for the goods or services to be certified, which will include, among others, the characteristics of the goods or services and the testing and supervision procedures to which the goods or services will be subject to, as well as the conditions governing the use of the mark.
Among the major procedural changes, claiming the right of priority –the right of benefiting from a prior trade mark application date– must be filed by the applicant at the time of the EU trade mark application without permitting from 1 October that this right is claimed subsequently. Another new development is that the applicant of a trade mark can invoke in a subsidiary manner, either at the time of application or at any time during the registration process, the acquired distinctiveness of the sign in order to avoid the economic and time costs to prove such distinctiveness. The adaptation of the regulation to the new technologies is clear because users are able to consult the prior trade mark rights through electronic sources of the European Union Intellectual Property Office (the “EUIPO“), and due to the fact that the EUIPO has modified its means of communication. In addition, the language requirements are more lax under the EU Trade mark Regulation, since it is allowed to present most types of evidence in any of the official languages of the European Union and its translation is only required if so requested by the EUIPO.
Although we should await the first reactions generated by the reform of the regulation, it is undeniable that the EU Trade Mark Regulation is a renovated legal framework, coherent and unified, that aims to provide economic operators greater legal security at the time of adapting to the new technologies, which will allow the adoption of an agile and simple trade mark system for all the agents involved.
