Changes at the EUIPO from 1 October 2017

(co-written by Emma Watts (secretary) and Laura Trapnell (partner)

Changes at the EUIPO

For clients with an EU trade mark, we blog to update you on some of the changes that the EUIPO is implementing from 1 October 2017 onwards.

Certification Marks

The EU are introducing a new category of marks called Certification Marks. Certification Marks are a new kind of trade mark at EU level, although they have existed in certain national level systems in the EU (including in our own UK IPO) for some years.

The European Union certification mark is defined as a 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 essence, a EU certification mark relates to the guarantee of specific characteristics of certain goods and services.

It indicates that the goods and services bearing the mark comply with a given standard set out in the regulations of use and controlled under the responsibility of the certification mark owner, irrespective of the identity of the undertaking that actually produces or provides the goods and services at issue and actually uses the certification mark.

Applicants for certification marks have to include a statement in their applications to the effect that they are applying for an EU certification mark.

The regulations of use constitute the essence of the certification mark. These must be filed within two months of the application and need to contain, in particular:

• the characteristics of the goods or services to be certified;
• the conditions governing the use of the certification mark;
• the testing and supervision measures to be applied by the certification mark owner.

There are two important limitations for an EU certification mark. First, it cannot be owned by a person carrying out a business involving the supply of the goods and services of the kind certified. The owner of a certification mark is precluded from using the mark for the certified goods or services covered. Second, it cannot be filed for the purpose of distinguishing goods or services certified in respect of the geographical origin.

Certification marks should be applied for the goods and services that will be certified by the owner of the mark. The list of goods and services of an EU certification mark applied for must also be included in the regulations of use.
A certification mark costs EUR 1 500 if applied for by electronic means.

Elimination of Graphical Representation Requirement

The graphical representation requirement will no longer apply and signs can be represented in any appropriate form as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. They are aspiring to create a “what you see is what you get” system to make entries more accessible and easier to search for.

The following table lays out the types of trade mark, their representation, whether a description is required and the format required by the EUIPO when filing:

Procedural Changes

Priority:

Priority claims must be filed together with the EUTM application (before, such claims could be made subsequent to filing the application). The documentation in support of the claim must be filed within three months of the filing date (previously within three months from receipt of the declaration of priority). If the latter documentation is not in a language of the Office, it is now optional for the Office to request a translation of such documentation.

A further change in the practice of the Office is that the priority claim is no longer examined in substance. It remains as a ‘mere’ claim until it is relied upon and it is necessary to validate it in proceedings.

Acquired distinctiveness as a subsidiary claim:

Applicants will have the possibility of invoking Article 7(3) as a subsidiary or alternative claim, either at the start of the application process or later. The advantage to of a subsidiary claim is that it only crystallises if there is a negative final decision on inherent distinctiveness. This allows the applicant to exhaust its right of appeal on inherent distinctiveness before it is required to prove acquired distinctiveness. This will mean that users do not need to incur the expense of gathering and presenting evidence of use unless it is necessary.

Opposition/cancellation proceedings:

The requirements of admissibility and substantiation for relative grounds’ actions have been reordered for clarity and to take into account the separate ground on geographic indications introduced by Article 8(6) EUTMR. Provisions applicable to cancellation proceedings are aligned with opposition proceedings except where differences are justified by their different nature. The EUTMDR introduces framework rules on belated evidence and codifies Office practice on suspension of surrenders and the closure/continuation of pending revocation or invalidity proceedings.

Online substantiation:

A clear example of adapting to the internet era is where evidence that concerns earlier rights that are ‘registered’ (e.g. registered trade marks, certain signs used in the course of trade or geographical indications), or the contents of relevant national law, is accessible from an online source recognised by the Office, the opponent or cancellation applicant may provide such evidence by making reference to that source.

For this purpose, the Office ‘recognises’ all of the databases of the national and regional EU IP offices, and TMview is acceptable as a portal through which the national offices may be ‘accessed’.

Languages and translation:

As and from 1 October 2017, most types of evidence can continue to be filed in any official language of the EU. 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 Office – of its own motion or upon reasoned request by the other party. Evidence of acquired distinctiveness or reputation would fall within this category.

However, evidence of substantiation (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.

Furthermore, the ‘standard of translation’ under Article 25 EUTMIR is less demanding than previously. Where a party has indicated that only parts of the document are relevant, the translation may be limited to those parts.

These changes bring real benefits to users of the EUTM system. They facilitate economy, simplification and lower costs all round.

Communication with the office:

The means of communication by and with the Office have been changed to take account of developments in information technology. In particular:

• Obsolete forms of communication have been removed, namely, hand delivery and deposit in a post box at the Office;
• ‘Electronic means’ is defined broadly so that it now covers fax and potentially many other types of media. The Executive Director shall determine to what extent and under which technical conditions those media may be used;
• Specific mention of ‘tele copier and other technical means’ of communication – which covers faxes – is removed from secondary legislation (but see the previous point on ‘electronic means)’;
• Courier’ has been introduced specifically as a means of communication by and with the Office alongside communications by post.

Structure and presentation of evidence: Articles 55 EUTMDR (which mirrors the General Court rules) introduces formal requirements on the structure and format of evidence attached to submissions and requires that such evidence must be clearly identified and referenced. If parties fail to do this, the Office may invite them to remedy such deficiencies. Non-compliance could result in evidence, or part of it, being set aside.

Boards of Appeal:

The EUTMDR consolidates provisions relating to the Boards of Appeal that were previously spread across various sources including Commission Regulation (EC) No 216/96 (Rules of Procedure of the Boards of Appeal). The principal clarifications and changes relate to the content of the statement of grounds and of the response, ‘cross appeals’, claims raised and facts or evidence filed for the first time before the Board of Appeal, new absolute grounds raised by the Board of Appeal, expedited proceedings and the organisation and structure of the Boards of Appeal.

If you would like more information on the above changes, or if you have an enquiry about European Trade Marks, please email Laura Trapnell.

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