New EU trademark reforms in force starting on October 1st, 2017
The EU trademark reform is a relevant advancement in administrative practice. Its goal is to make the system more efficient, clearer and more harmonized.
Since October 1st, Regulation (EU) 2017/1001 of the European Parliament and the Council of June 14th, 2017 on the European Union trademark has entered into full force.This new regulation consolidates the most important changes in the regulation to date and is effectively adapted to the new challenges for “unconventional” trademarks, which are becoming increasingly common.
The most relevant modifications of the regulation to become effective this month are:
1. The elimination of the requirement that the trademark have a graphical representation: starting on October 1st, rights over a trademark will always be over “what is seen” in the application as long as the representation is clear, accurate and complete in and of itself, easily accessible, intelligible, lasting, and objective. For some kinds of trademarks (position, for example) the Office recommends including a description, but this will no longer be mandatory. “Hologram”, “sound” or “multimedia” are perfectly (a priori) registrable as EU trademarks. For example, in accordance with existing technology, MP3 and MP4 files will be accepted.
2. The European certification trademark is created. Until now, only member states had this trademark. Starting on October 1st, any non-natural person may own a trademark certifying the quality of the products and/or services they produce or market to third parties. This must always be established by drafting a use regulation to the effect.
3. Procedural changes will be applied to different aspects, such as:
- the demand for priority which, from now on, must always be made along with the submission of the application
- a trademark’s acquisition of distinctive character as a subsidiary or secondary pretension, which must be requested after the trademark’s date of submission.
- geographical indications are considered a relative cause of action in oppositions and annulment proceedings.
- provisions on opposition or cancellation proceedings are harmonized.
- it will not be mandatory to translate proofs of use to the procedural language if the documents are in any of the official EU languages, unless this is expressly requested, etc.
- the “hand delivery” and “in the Office’s mailbox” delivery options are eliminated.
Part of this Regulation entered into force already on March 23rd, and included some changes:
- The European Union Intellectual Property Office (EUIPO) is the current name of what was until then known as the Office for Harmonization in the Internal Market (OHIM)
- The name of the Office’s administrative trademark was changed from “community trademark” to “European Union trademark”.
- The fee system applicable to the trademarks changed. Some amounts were reduced and the structure of the application fees was changed by eliminating the single fee for three classes.
- Changes were also introduced into the examination proceedings, third-party observations, opposition, annulment and appeal.