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.