EU trade mark law reforms 2017

In March 2016, we advised you of the changes brought in by Regulation (EU) 2015/2424 amending Council Regulation (EC) No. 207/2009 (a link to our summary of those changes can be found at the end of this article). We now bring to your attention some of the more significant changes that came into effect from October 2017.

Representation of a trade mark

A sign can be represented in any available technology. Examples of types of trade marks are listed as: word, figurative, shape, position, pattern, colour, sound, motion, multimedia and hologram.

Subsidiary claim to acquired distinctive character

On filing an application or, at the latest, in response to the first objection, the applicant can claim that the sign has acquired distinctive character. This can be a principal or subsidiary claim. A subsidiary claim means that the applicant will not have to incur the time and effort in preparing evidence to support the claim until it has exhausted its right of appeal on inherent registrability.

Consistency in contentious proceedings

Both invalidity and revocation proceedings will align with opposition proceedings. This means that an applicant in an invalidation action will not have to prepare all the observations and evidence upfront as this can be filed within the adversarial part of the proceedings.

Substantiation of earlier rights

Earlier rights relied upon in opposition or invalidation actions can be substantiated by reference to a recognised online source.

Proof of use

Provision has been made for the EUIPO to exercise its discretion in accepting evidence for proof of use after the expiry of the time limit.

Suspension periods

Suspension will now be granted for periods of six months up to a maximum of two years, in comparison with the previous one year periods that were permitted for up to three years.

Written evidence

New rules are introduced that seek to mirror the rules of the General Court. Completion of evidence in a ready-to-file format is likely to be more time consuming in order to comply with these rules.

Board of Appeal

New rules will come into force which provide clarification on the content of statement of grounds of appeal and the response, ‘cross-appeals’, claims and facts which are raised before the Board of Appeal for the first time.

Legal references

The full name of the new regulation is: Regulation (EU) 2017/2001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark.

Secondary legislation in which some of the changes are confirmed takes the form of the Commission Implementing Regulation (EU) of 18.5.2017 and the Commission Delegation Regulation (EU) of 18.5.2017.

Certification marks

EU certification marks have been introduced. A certification mark is a mark that distinguishes goods or services that have been certified by the proprietor as having certain characteristics. This differs from a collective trade mark which is a mark that is capable of distinguishing the goods and services of the members of a particular association. EU collective marks have been in existence since EU trade marks were introduced.