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Changes to EU trade mark regulations

On 23 March 2016, an EU regulation entered into force changing various aspects of EU trade mark law and practice. However, a number of provisions were deferred and enter into force on 1 October 2017. The most important of these are as follows:

1. Changes to what might be registered as an EU trade mark
Until now it has been a limitation of EU (and UK) trade mark legislation that a trade mark must be a sign capable of being represented graphically. This has allowed the registration of three-dimensional marks, colours and colour combinations, and even sound marks. However, it has prevented the registration of some more esoteric signs which brand owners may believe should be protectable by trade mark registration, such as smell and taste marks, or even movement marks or holograms. From 1 October 2017 the requirements will be relaxed. Signs may now be represented in any appropriate form using generally available technology. We expect there to be a period of time in which the boundaries of the new rules are tested. EUIPO has listed some new formats in which trade mark applications may be filed (https://euipo.europa.eu/ohimportal/en/elimination-of-graphical-representation-requirement), including for example MP4 format.

2. Introduction of Certification marks
Certification marks are a kind of trade mark registration for marks used on goods and services to show that they are of an authorised material, mode of manufacture or performance, quality, accuracy etc. A well-known example is the British Woolmark device; another is the Harris Tweed orb logo which has been registered in the UK since 1909. It has been possible to register Certification marks in the UK, and many other territories, for a long time but until now it has not been possible to obtain an EU trade mark registration.
An important feature of certification marks is that the body which carries out certification and owns the certification trade mark registration must not actually carry out business involving the supply of the goods and services of the kind certified.

3. Procedural Changes

Quite a number of amendments to implementing regulations come into force on 1 October 2017. These are generally only important for practitioners. Examples include that priority claims must be made on filing; applicants may invoke acquired distinctiveness as a subsidiary claim (in case the mark is not found inherently distinctive) either at the start of the application procedure or at a later stage; evidence of the use of signs in the course or trade or the contents of relevant national law may be given by submitting internet links; and some kinds of evidence may be filed in any official language of the EU.

Another procedural change of potential significance is that assignment of a trade mark filed by an agent or representative (e.g. distributor) without the proprietor’s authorisation will now be available as a remedy. To date it has only been possible for the proprietor to request invalidation.

These changes represent a further useful development to and modernisation of the EU trade mark scheme.

For further information, please contact a member of our team directly or call +44 (0)131 243 0660.

This entry was posted in Trade Marks.

Trade marks in China: issues to consider

There have been several cases where trade mark registration has been pre-empted by a prospective distributor and it is important to file an application for a trade mark in China sufficiently in advance of supplying a distributor there.

However there can be unexpected complications, even when a timely application has been filed, due to what may be considered by the Chinese Authorities to be potential conflict with existing registrations which may be similar in terms of the mark and the goods of interest.

China has a very restrictive registration system for trade marks and co-existence with earlier registrations is at the discretion of the Chinese Trade Marks Office. It is unlike the system currently in operation in Europe, where registration is allowed notwithstanding similarity with an earlier registration, and it is left to proprietors of any earlier marks to object, if and when they think that to be necessary.

There are also strict requirements with regard to the descriptions and terms that may be used in the specifications, which is a factor in overcoming citations. This type of system is not unique – the United States has a similar one for instance – but once an objection is taken in China it tends to be more difficult to overcome as the Chinese Office can be less open to discussion and argument.

One way of overcoming citations in registration systems of this kind is to seek consent from the proprietors of a cited mark which can work routinely without too much expense, the representatives’ costs of the proprietor relating to the arrangement being paid. However there is a real risk of Chinese companies seeing that as a money-making opportunity and demanding a significant amount of money for the arrangement.

It is useful to obtain a search of the Chinese Register in respect of the mark and goods or services to see whether there is any entry that it likely to be cited against it; in some cases, by doing that (and with the help of Chinese Associates) it is possible to work out a description of goods or services that may be accepted even if potentially conflicting entries exist.

Next steps
If you are considering filing a trademark in China and would like to have an informal chat about the issues involved, give Rowena Bercow a call on 0131 243 0660. We have well-established links with Chinese firms and can offer a complete service including a preliminary search.

This entry was posted in Trade Marks.