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.
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...