On 23rd March 2016, Regulation No. 2015/2424 of the European Union came into force introducing amendments on the Community trade mark regulation. This regulation modified among others: the name of the office which was renamed as the European Union Intellectual Property Office; the name of the trade mark, which was renamed as the European Union trade mark; and the fee system for trademarks.
On the other hand, the regulation contained several provisions that will come into force on the 1st October 2017 which had to be developed by secondary legislation. These provisions were finally developed by the Commission Implementing Regulation (EU) 2017/1431 laying down detailed rules for implementing certain provisions of the Regulation on the European Union trade mark, and the Delegated Regulation of the Commission (EU) 2017/1430 supplementing the Regulation on the European Union trademark.
The main areas of change introduced by both regulations are the following:
- Graphical representation and types of trade mark
- European Union certification marks
- Procedural changes
Graphical representation shall cease to be required and signs can be represented in any appropriate form using generally available technology, but the representation must be clear, precise, complete, easily accessible, intelligible, durable and objective.
The objective of this modification is to increase legal certainty for users and reduce the objection rate due to formalities. In order to do this, article 3 of the implementing regulation establishes different norms and specific requirements for filing the most popular types of trademark, including technical requirements.
The following table is a summary of the technical requirements for the most popular types of trademarks:
|
Type of Trade Mark |
Is a description needed? |
Required format |
|
Word |
No |
N/A |
|
Figurative |
No |
JPEG |
|
Shape |
No |
JPEG OBJ STL X3D |
|
Position |
Optional |
JPEG |
|
Pattern |
Optional |
JPEG |
|
Colour (single) |
No |
JPEG |
|
Colour (combination) |
Optional |
JPEG |
|
Sound |
No |
JPEG MP3 (max. 2 Mb) |
|
Motion |
Optional |
JPEG MP4 (max. 20 Mb) |
|
Multimedia |
No |
MP4 (max. 20 Mb) |
|
Hologram |
No |
JPEG MP4 (max. 20 Mb) |
The new certification marks of the European Union, are a new type of mark capable of distinguishing goods or services in respect of material, mode of manufacture of goods or performance of services, quality accuracy or other characteristics.
The certification mark indicates that the goods and services comply with a given standard set out in the regulations of use and are controlled under the responsibility of the certification mark owner.
Applicants for certification marks have to file the regulations of use of the certification mark, within 2 months of the application, and they should include:
- 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 mark owner.
On the other hand, the regulation includes a series of limitations that the mark owner will have to comply with:
- The certification mark owner will not carry out a business activity involving the kind being certified.
- The certification mark cannot be filed for the purpose of distinguishing goods or services regarding its geographical origin.
Finally, the following are the major changes regarding the procedure for the application of the European Union trade mark:
- Priority claims must be filed together with the trade mark application;
- Subsidiary or alternative claims can be issued at the start of the application process or later;
- The requirements of admissibility and substantiation in actions of opposition/cancellation have been restructured in order to make them clearer;
- Supporting documentation may be provided online;
- Most types of evidence can be filed in any official language of the EU. A translation will only be required when requested by the office;
- Means of communication with the office have been modernised;
- Provisions regarding the Boards of Appeal have been consolidated in one legal text.
Pedro Blanco
Vilá Abogados
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