On 1 October 2017, the European Union Trade Mark reforms will be implemented. These reforms will have a significant effect on existing trade mark legislation across all EU Member States, including the requirements for trade mark registration and the types of marks available for protection, in addition to the introduction of a range of procedural changes.

No graphical representation requirement

Trade marks are no longer required to be represented graphically in order to be considered registrable. This legislative development is widely significant as it will enable applicants to more easily obtain registered protection for non-conventional marks. For example, sound marks that are not capable of being represented by musical notation will now be able to be protected, through the abolition of the graphical representation requirement, by simply submitting an audio file or a video file for motion marks. Moreover, this reform will enable other non-conventional marks to obtain protection, including colour marks and hologram marks.

EU certification marks

Certification marks serve as indicators of quality of a product as opposed to its origin. Currently, national certifications marks exist in the UK, USA, Canada and Australia, such as Woolmark and the BSI Kitemark. The implementation of the EU certification mark will allow applicants to register and obtain a single certification mark that is applicable across the EU.

Procedural changes

There are various notable procedural changes brought about by the EUTM reforms, including:

(1)   Applicants will now be able to make a claim of acquired distinctiveness if there is an initial finding that the mark lacks inherent distinctiveness. Thus, acquired distinctiveness can now be invoked as a subsidiary claim.

(2)   Priority claims must be filed with trade mark applications. Prior to the reforms, priority claims could be made following the filing of the application. Furthermore, the documentation supporting the claim must be filed within three months of the filing date.

(3)   Outdated forms of communication, such as hand delivery to the European Union Intellectual Property Office (EUIPO) and deposit in a post box, are no longer accepted. This reform encourages electronic means of communication, such as e-filing of trade mark applications. This development of the legislation shows the European Commission’s awareness of the impact of technological advances on office communication.

The new EUTM Directive requires all EU Member States to implement the changes brought about by the reforms to their national trade mark legislation before January 2019.

If you require further information about the European Union Trade Mark Reforms that are due to be implemented on 1 October 2017, or you would like advice on registering a UK trade mark or an EU trade mark, please do not hesitate to contact us.