European Union: European Trade Mark October 2017 - Summary For Professionals

Last Updated: 30 October 2017
Article by Rebecca Atkins

European Trade Mark Reform – Further changes which came into force on 1 October 2017

In March 2016 we reported on the various changes to the European Union Trade Mark Regulation, many of which came into force on 23 March 2016. On 1 October 2017, further changes were brought in, and new secondary legislation has also come into force, in the form of a European Union Trade Mark Delegated Regulation and a European Trade Mark Implementing Regulation. Many of the changes simply codify or modernise the EUIPO's previous practice and procedures. A summary of the main areas affected is set out below:

Types of trade mark

The list of specific types of mark has been extended and now includes word, figurative, shape (including appearance), colour, sound, position, pattern, motion, multimedia, and hologram.

Graphical Representation

The requirement to file a graphical representation of the mark has been removed and marks can now be represented in any appropriate format using generally available technology. This removes one of the hurdles for non-traditional trade marks such as position, sound, motion, multimedia and hologram marks which can now be represented by a JPEG, MP3 or MP4 file alone, as appropriate, provided that the representation is clear, precise, selfcontained, easily accessible, intelligible, durable and objective. Of course, such non-traditional trade marks must still satisfy the requirement for distinctiveness and so it is still likely to be difficult to protect many of these types of trade marks. It still does not appear possible in practice to register smell, taste and tactile/texture marks, as they cannot adequately be represented using currently available technology (specimens are not acceptable).

Descriptions are no longer permitted for most types of mark and are optional for colour combination, position and movement marks. It is also no longer possible to include colour claims, other than for single and combination colour marks, although marks filed in colour will be deemed to be protected in that particular colour format. For colour marks, an indication of the colour code is now a formal requirement.

EU Certification Marks

This is a new type of EU trade mark, although certification marks already exist at a national level in some EU member states, including the United Kingdom.

The purpose of a European Union certification mark is to indicate/guarantee that the goods and services bearing the mark comply with a particular standard (e.g. material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics) set out in the regulations for use. The registered proprietor of the certification mark is responsible for ensuring compliance with the regulations. The role of the proprietor is to act as an independent body and, as such, it is precluded from carrying out a business involving the supply of the goods and services of the kind certified or using the mark itself for the certified goods or services.

An application for an EU certification mark must include regulations. governing the use of the mark. The regulations can be filed up to two months after the initial application (Article 17 EUTMIR details the information that must be included in them). The application fees for EU certification marks are higher than those for normal EUTM applications, and the registration process is likely to take longer due to the requirement that regulations are examined and accepted.

Procedural changes

Claim of acquired distinctiveness

Acquired distinctiveness can now be claimed on a subsidiary basis, either at the start of the application process or in reply to the first objection. If a subsidiary claim is made, it would only become necessary to submit evidence of acquired distinctiveness after a final decision has issued on inherent distinctiveness. This means that evidence of acquired distinctiveness will only have to be compiled and relied on once inherent distinctiveness arguments have been exhausted, which might avoid the expense of gathering and presenting evidence of use. A claim of acquired distinctiveness cannot be made for the first time before the Board of Appeal.

Priority claims

Priority claims must be filed at the same time as the application but will now only be examined as to formalities (i.e. date, country, registration number). The validity of priority claims will only be examined in the course of opposition or cancellation proceedings.

Assignment of an EUTM as a remedy in principal/agent disputes

Instead of a declaration of invalidity, proprietors of a trade mark registered by an agent or representative without their consent (Article 6 septies of the Paris Convention) can now request an assignment of the EUTM in cancellation proceedings, in order to reclaim a trade mark from an agent or distributor.

Substantiation of earlier rights from online sources

When relying on registered rights or provisions of national law, which are accessible from an online source recognised by the Office, the opponent or cancellation applicant may provide such evidence by simply making reference to that source.


Various changes have been made to the structure and presentation of evidence. In particular, a detailed index of appendices must be attached and all pages must be numbered.

The Office now has some discretion to accept belated evidence provided it is supplementary to the evidence already filed.


Now limited to a maximum of two years and will be granted for periods of 6 months (the previous practice allowing three year-long suspensions).

Languages and Translations

It will now only be necessary to translate evidence of substantiation (other than certificates of filing, registration, renewal and provisions of national law) into the language of proceedings where requested by the Office or the other party. This includes evidence of use, reputation and acquired distinctiveness.

However, certificates of filing, registration and renewal or provisions of relevant law must still be submitted in the language of the proceedings (or translated into this language) within the time limit set for substantiation.

Communication with the Office

Hand delivery and post-box deposits are no longer permitted as a means of filing. Applications for marks where the representation has a colour component (including figurative marks) can no longer be filed by fax because there are no legal provisions that facilitate the subsequent filing of a representation in colour.

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 efiling.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions