In March 2016, Regulation (EU) 2015/2424 (Amending Regulation) made significant amendments to the European Union Trade Mark Regulation (Council Regulation (EC) No. 207/2009). A number of provisions came into effect in March 2016. 

Additional changes came into effect on 1 October 2017. The main changes include:

  • the abolishment of the requirement to graphically represent trade marks
  • the introduction of an EU certification mark, and
  • certain procedural changes which should simplify the European trade mark regime

Graphical representation

The registration process for non-traditional trade marks will be simplified with the removal of the requirement that a mark must be capable of graphical representation. This means that brand owners of odour marks and sound marks should find it much easier to comply with registration requirements. The representation of the mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. Colours and sounds will now be subject to the same prohibitions that apply to shape marks. This includes the colours or sounds which are not required for a technical result or those colours and sounds that do not add substantial value to the goods or services for which they are being used. An example of a sound mark currently registered as an EU trade mark is the signature Nokia ringtone which was represented by way a graphical representation of the musical score.

EU certification marks

Certification marks allow businesses adhering to an institution or organisation's certification system to use the mark to signify compliance of their goods and services. These marks are useful as they can signify the minimum quality of goods or services provided by the business. 

The body or institution aiming to register their certification mark must submit the regulations governing its use within two months of an application being filed. If this deadline is not met, the application will be rejected. These regulations must specify:

  • the characteristics of the goods or services to be certified
  • how the certifying body is to test those characteristics, and
  • the conditions governing the use of the certification mark

A certification mark cannot be applied for by a business supplying the certified goods or services. In addition, a certification mark cannot be filed for the purpose of distinguishing goods or services in respect of geographical location. An example of an Irish registered certification mark is the following mark which certifies registered craft butchers:

Procedural changes

Procedural changes to be aware of include:

  • Priority claims must now be filed at the same time as the application.
  • Provisions relating to cancellation proceedings have been aligned with opposition proceedings, where possible.
  • 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 only be required when requested by the European Union Intellectual Property Office (EUIPO). Other parties to the proceedings may request a translation if appropriate.
  • The appeals process has been consolidated and clarified.

In addition, where a mark may not be inherently distinctive at the outset, applicants can claim acquired distinctiveness through use at the start of the application or later on in the application process. This can be done as a subsidiary or an alternative claim to inherent distinctiveness. This means an applicant can wait until a decision is made on inherent distinctiveness before using resources to try and prove acquired distinctiveness.

Evidence submitted to the EUIPO must satisfy set requirements, including being clearly identified and referenced.

Conclusion

The introduction of these amendments is a good opportunity for brand owners to review their trade mark portfolios. They should assess the potential to register trade marks such as sounds, motion/movement marks, multimedia marks and holograms. In addition, anyone interested in applying for an EU certification mark should prepare the accompanying regulations at the earliest opportunity so that the time limitations are met.

Overall, these amendments are greatly welcomed as efforts to streamline and simplify the EU trade mark regime.

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.