EU Trade Marks: New changes from October 1st

Posted on 08/09/2017 by balder


As our readers know, on 23 March 2016, Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation entered into force.

You were duly informed of those amendments, including the change of the name of the Office and the marks it handles (OHIM became EUIPO and the Community trade marks became European Union trade marks) and the amendment in the official fees and in the terms to request the renewal of European Union Trade marks.

Well, then, new changes are coming into force on 1 October 2017 and they can be grouped into three different groups:

  • It will become possible to file EU Certification marks

    Those marks are new in the European Union but they already exist in other national systems, such as in the Spanish one

    As their name indicates, those certification marks guarantee that the goods/services protected under the mark, and in connection with which they are used, conform to a certain standard, or possess certain qualities. In other words, the certification marks certify that the goods and services comply with regulations governing their use and that those goods and services are controlled under the responsibility of the proprietor of the mark.

  • The graphical representation requirement has been removed

    This means that, from 1 October 2017, signs can be represented in any appropriate form as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

    The EUIPO will now accept multimedia marks, sound marks, motion marks and hologram marks if they are submitted as MP3/MP4 format.

  • Procedural changes

    The most important procedural changes are the following:

    • Priority must now be claimed at the time of filing and it is no longer possible to make the priority claim within a time limit of two months from the filing date
    • Where evidence that concerns earlier rights that are ‘registered’ or the contents of relevant national law is accessible from an online source recognised by the Office, the opponent or cancellation applicant may provide such evidence by making reference to that source. Before the entry into force of the amendments, to substantiate an earlier trade mark application or registration, the opponent or the cancellation applicant had to provide the Office with evidence of its filing or registration with certificates or extracts from official databases.
    • Most types of evidence can be filed in any official language of the EU. Where the language used for evidence of substantiation (except certificates of filing, registration and renewal or provisions of relevant law) is not the language of the proceedings, a translation will now be required only where requested by the Office (of its own motion or upon reasoned request by the other party). Evidence of acquired distinctiveness or reputation would fall within this category. Before the entry into force of the amendments, the means of evidence were only taken into account insofar as a translation into the language of the proceedings had been produced or insofar as the means of evidence were self-explanatory regardless of their textual components.
    • The means of communication by and with the Office have been changed to take account of developments in information technology.

      In particular, hand delivery and deposit in a post box at the Office have been removed and ‘electronic means’ is defined broadly so that it now covers fax , meaning that the discounted fee for EUTM applications and renewals by electronic means in Annex I EUTMR will apply to fax.

      However, from 1 January 2018, fax will no longer be accepted for filing EUTM applications or renewals except as a backup system if technical malfunctions prevent e-filing.

Most of the changes bring real benefits to users of the EUTM system, as they facilitate the proceedings and lower costs. Therefore they are more than welcome by BALDER!!