The European Trade Mark Reform – Phase 2

On 1 October 2017, the second part of the European trade mark reform entered into force, completing the implementation of Regulation (EU) 2015/2424 amending the Community trade mark regulation (EUTMR).

Taking a step back, this is in fact the last part of a much longer reform process that began about 10 years after the adoption of the EU trade mark system in 1996. In 2008, the European Commission published the Communication on an industrial property rights strategy for Europe with the intent to review the current practice and bring the European trade mark system to the next level. Subsequently, in depth studies, a public consultation and an impact assessment followed until the approval, in December 2015, of a new amending Regulation and a Directive to harmonise the laws of Member States.

There are three main changes which will be relevant to international brand owners.

Abolition of graphical representation requirement
The graphical representation requirement no longer applies to the European trade marks. This has been replaced by a broader requirement for a "clear, precise, self-contained, easily accessible, intangible, durable and objective" representation. The reason behind this change is to reflect developments in modern technology and marketing methods, and will allow a wider range of non-traditional trade marks to be capable of registration by the EUIPO (e.g. sounds, motions, multimedia, holograms as well as any other trade mark that can be described in a suitable manner). Member States will have to implement this provision into national trade mark law by January 2019, meaning that the same opportunities will be available to brand owners for national trade mark protection.

Introduction of European Certification Marks
The EUIPO will now accept applications for European certification marks. This kind of mark, already existing in the UK, is intended to certify certain characteristics of goods and services such as the materials, approval or the mode of manufacture. However, certification marks cannot refer to the geographical origin of the goods and services, which remains protected exclusively under through EU geographical indications.

Regulations governing the use of the mark must be filed by the applicant, who will be responsible for monitoring and certifying the characteristics of the goods and services and therefore, will be unable to use the mark for their own business. As a result, invalidation or cancellation actions can now be based on the use of a certification mark by the applicant.

Procedural changes
In an attempt to streamline proceedings and increase legal certainty, the reform has introduced a number of procedural changes, which largely codify established practices of the EUIPO.  The main changes are:

• Online substantiation of oppositions and cancellations from online sources recognised by the EUIPO (e.g. TMView and the national IPO database).
• Acquired distinctiveness as a principal or subsidiary claim. The applicant can exhaust the right of appeal on inherent distinctiveness before being required to prove acquired distinctiveness. The choice between the two types of claim will depend on how quickly the applicant wishes to have its trade mark registered and on the chosen time of filing evidence on acquired distinctiveness that best suits the applicant. In addition, an acquired distinctiveness claim cannot be raised for the first time before the Court of Appeal.
• The simplification of translation requirements. Where the evidence is filed in a non-official language of the proceeding, a translation will be required only where requested by the EUIPO (or the other party).
• Assignment of EU trade marks as a remedy when an agent registers a trade mark without the prior authorisation of the legitimate proprietor. This will be an alternative remedy to invalidating the trade mark which will be prioritised by the EUIPO examiner, unless an absolute ground for invalidity occurs.
• Formal requirements of written evidence in all proceedings (e.g. index and reference to annexes).
• Hand deliveries and post box deposits will no longer be accepted by the EUIPO.
• The EUTMIR and EUTMDR contain transitional provisions that set out when the new procedural rules take effect. As a general rule, both Regulations apply to ongoing proceedings from 1 October 2017 unless otherwise provided.

Additional information is available on the dedicated page of the EUIPO website.

Overall, the reforms appear to have accomplished the goal of adapting the existing trade mark regulation to the digital era. Trade mark holders now have more flexible tools to distinguish their business from those of their competitors and national IP offices in EU Member States have been given the opportunity to align their practices to achieve consistency and predictability for brand owners navigating cross-border EU trade mark issues. Harmonisation will be particularly important in light of Brexit, as the reforms may be the final opportunity for the UKIPO to ensure a higher degree of consistency between EU trade mark offices before the end of Brexit negotiations, which is currently expected to occur in March 2019.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.