Trevor Little

  • Second swathe of EU reforms are implemented on October 1
  • Multimedia marks possible following graphical representation elimination
  • Moves paves way to expanded protection but challenges remain
     

In just under a week, the second swathe of provisions resulting from the EU reforms package go live. There are a number of changes that practitioners and applicants need to be aware of – not least the axing of the graphical representation requirement for EU trademarks and, with it, the introduction of the ‘multimedia mark’.

On October 1 2017 the second round of reforms are formally implemented, meaning that from that date signs may be represented in any appropriate form using generally available technology – therefore not necessarily by graphic means, provided that the representation is clear, precise, self-contained, easily accessible and objective. Designed to make entries in the register clearer and more accessible, the change creates what the EUIPO describes as a “what you see is what you get” system.

For practitioners, this will be a significant change – albeit one that does provide a more flexible route to representation. As to what the office will accept as representation going forward, Article 3 of the EU Trademark Implementing Regulation lists specific rules and requirements for representing some of the most popular types of trademark in accordance with their specific nature and attributes. On the EUIPO website, the office summarises these as follows:

Type of trademark

Description required?

Format required

Word

No

N/A

Figurative

No

JPEG

Shape

No

JPEG OBJ STL X3D

Position

Optional (previously mandatory)

JPEG

Pattern

Optional

JPEG

Colour (single)

No

JPEG

Colour (combination)

Optional (previously mandatory)

JPEG

Sound

No

JPEG MP3 (max 2 Mb)

Motion

Optional (previously mandatory)

JPEG MP4 (max 20 Mb)

Multimedia

No

MP4 (max 20 Mb)

Hologram

No

JPEG MP4 (max 20 Mb)


For many trademark professionals, the multimedia mark is one that will jump out. This entirely new type of trademark is defined as “a trademark consisting of, or extending to, the combination of image and sound”. This new hybrid mark is enabled by the removal of the graphical representation, providing applicants with the ability to expand protection to reflect the current multi-media world. How revolutionary this is remains to be seen, but the increased flexibility to render marks in applications is to be welcomed.

It is not without challenges though. The first is for examiners to quickly adapt to the new regime and ensure that the introduction of new formats and representations do not elongate or complicate the examination process. Related to this, writing on Lexology, DLA Piper’s Ulrike Grübler and Gaspard Debiesse note that the assessment of a sound or smell mark’s distinctiveness will remain challenging, adding that because the perception of a taste or a smell is subjective and variable, searches of any earlier rights will be problematic. They add: “Copyright law may also clash with trademark law, because trademark offices would not be in a position to assess who is the true author of a shape, a movement, a sound, or a jingle. Finally, the legality of unconventional signs with respect to public order may be an issue.”

Another new right that will come into existence is the certification mark, allowing a certifying institution or organisation to permit adherents to a particular certification system to use the mark as a sign for goods or services complying with the certification requirements. Specifically, it is defined as mark that is “capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified”.

In the current edition of World Trademark Review, the EUIPO provides a deep dive into the upcoming changes practitioners need to prepare for, with a number of procedural changes worth highlighting. Amongst those outlined by the EUIPO are:

  • Priority: Priority claims must be filed together with the EU trademark application (previously, such claims could be made subsequent to filing the application). In cases where documentation in support of the claim is required, such documentation must be filed within three months of the filing date (previously within three months from receipt of the declaration of priority).
  • Acquired distinctiveness as a subsidiary claim: Applicants will have the possibility of invoking Article 7(3) of the EU Trademark Regulation as a subsidiary claim, either at the start of the application process or later.
  • Languages and translation: From October 1 2017, 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 now be required only where requested by the EUIPO – whether for its own purposes or further to a reasoned request by the other party.

Finally, the office has removed obsolete forms of communication from the acceptable means of interaction with the office, so practitioners that still rely on hand delivery and deposits in USPTO post boxes now need to change tact.  Those still relying on faxes will be reassured that the technology does fall within the broad definition of ‘electronic means’. However, eliminating the specific reference to ‘fax’ in the legislation does mean that the EUIPO director can decide the extent to which communications addressed to the EUIPO may be effected by that medium. In short, the days of the fax may be numbered in the near future.

As noted, those seeking more detail can access the EUIPO-authored article in our latest edition, or turn to the office’s own information hub. The changes have been sign-posted for a while but are worth highlighting. Going forward it will be interesting to see how creative brand owners get when making applications for more interactive marks – and how smooth the subsequent examination process is. 

Comments

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RE: “What you see is what you get” – preparing for the imminent second wave of EU reform provisions

The new practice of the Office, that the priority claim is no longer examined in substance at the filing stage, should be changed as soon as possible, otherwise European Trademark Owners and the European economy will be harmed immensely.

Advocate General Niilo Jääskinen confirmed in Case C-190/10:

“It follows that precise determination of the date of filing is a constituent of the Community trade mark system.”

There exists a strong public interest in a correct, reliable and –in substance- examined priority date, which is published in the freely accessible, official EUTM register.

The (European) Economy cannot function when the filing-date/priority-date is not examined by the EUTM during the filing-process.

Trademarks are property laws, which also act as security/credit-interests with banks and other different kind of credit-lenders. They rely on the examined priority-date, with which the property right arises.

The filing date, or when priority is applied for, is a constituent of the EUTM-Register, as is the examination of the trademark-sign itself.

(The concrete suitability of a sign to serve as an indication of the company's origin is a constitutive requirement of trademark protection. For this reason, a sign, which lacks concrete distinctiveness, is excluded from trademark protection.)

The filing date is naturally examined during the filing-procedure, the same must be and is obviously with the priority-date. Because if priority is claimed, the priority is the filing-date.

The trademark-owner or a licensee is a declarative part in the EUTM-register, which doesn’t have to be examined and published: See also C‑163/15

The legislature did not want –inter alia- that the priority is later attempted to deny with fraud or deception in complicated and lengthy proceeding before courts or office procedures.

The examined priority and its publication in the trademark-register has its purpose to record and disclose the emergence of the trademark-right, which is also relevant under/for commercial and corporate law & acitivities, thereby contributing to guaranteeing legal certainty and protecting the property.

Last but not least, I wonder why the fees for EUTM-applications have been increased and, at the same time, important/critical examinations (priority) are reduced.

Erich Auer (www.trademarks.email)

Erich Auer, IVO-KERMARTIN GMBH on 26 Sep 2017 @ 21:11

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