In 2015 we started blogging about major reforms to the EU trade mark system that were due to take place in the following years. The first wave of reforms came into effect on 23 March 2016 and our comments can be found here. On 1 October 2017, the second wave will enter into force. The key changes are summarised below:
Legislation: Regulation (EU) 2017/1001 on EU trade marks will replace Regulation (EC) 207/2009. Two pieces of secondary legislation, a Delegated Regulation and an Implementing Regulation, will also enter into force.
Graphical Representation: EU trade marks will no longer need to be represented graphically, provided they can be reproduced using generally available forms of technology in a clear enough manner that the scope of protection can be determined. For example, an MP3 file would be acceptable for a sound mark.
Certification Marks: Certification marks will be capable of registration under EU trade mark law. This would bring the EU trade mark system in line with national offices such as the UK. Certification marks are signs which indicate that goods and services meet certain standards as defined by a certifying body. An example is the Woolmark logo, shown below, which indicates that a product is made of 100% pure new wool. The creation of EU certification marks will be a welcome change for certifying bodies, especially in light of the recent CJEU decision in the Gözze v VBB case (see our blog here). It is recommended that certifying bodies review their portfolios and consider taking advantage of this change.
- Priority Claims: Priority claims will have to be made at the time of filing, with supporting documents to follow within three months of the filing date. Further, priority claims will no longer be examined in substance. They will remain mere "claims" until they are relied upon in proceedings and it becomes necessary to validate them.
Acquired Distinctiveness: Applications may include a primary or secondary claim that the mark concerned has acquired distinctiveness. If a primary claim is made, the EUIPO examiner will make a decision on inherent distinctive and, if inherent distinctiveness is lacking, acquired distinctiveness. If a secondary claim is made, it will only come into play if there is a negative final decision on inherent distinctiveness. An applicant may therefore exhaust its right of appeal on inherent distinctiveness before it is required to prove acquired distinctiveness. A primary claim may be changed to a secondary claim (and vice versa) but this must be done no later than in the reply to the first examination report.
Substantiation of prior rights in opposition and cancellation proceedings: It will be possible to prove the existence of a prior registered trade mark right by referring to an online source recognised by the EUIPO. For instance, if an opponent relies on a prior registered UK trade mark, the right can be substantiated by referring to the "UK Intellectual Property Office database". All of the databases of the national IP offices within the EU are recognised sources.
Late filed evidence of substantiation of prior rights: The EUIPO will have a discretionary power to accept evidence of substantiation after the relevant deadline has passed. This will only apply to evidence that: (i) supplements material filed within the relevant deadline; and (ii) relates to the same substantiation requirement. In deciding whether to exercise its discretion, the EUIPO must consider the stage of proceedings, whether the late evidence is relevant to the outcome of the case and whether there are valid reasons for the delay. This provision codifies the EUIPO's current practice.
Presentation of evidence: There will be a new provision requiring evidence attached to submissions to be structured and presented in a prescribed manner which mirrors the EU General Court rules.
These changes are not the end of the story, however. EU member states still have until January 2019 and January 2023 to implement the new Trade Mark Directive aimed at harmonizing national laws. In particular, the requirement for member states to introduce mandatory office proceedings for cancellation actions must be implemented by January 2023. Although the UK Intellectual Property Office already handles cancellation actions, this is not the case in all member states.
It remains to be seen whether the UK will implement the Trade Mark Directive before January 2019, but it is hoped that this will happen so that the national UK and EU trade mark systems are harmonized upon Brexit.
If you have any questions regarding how your trade mark portfolio will be affected by these changes, please get in touch with your usual trade mark contact, or one of the authors.
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