Charlene Nelson, chartered trade mark attorney from our intellectual property team provides an update on the key changes which have since come into force from last year's new EU Trade Mark Regulation.

The Regulation introduced a number of changes to trade mark practice, some of which did not come into force immediately.    

On 1 October 2017 a number of further key changes came into force. Many of these changes are quite technical but we thought it would be useful to set them out in this article.  The main changes are:

  • Graphical Representation - The graphical representation requirement will not apply to EU trade mark applications filed on or after 1 October 2017.  Practically, this means that trade marks can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. This will mean trade marks which can only be represented electronically such as hologram and motion marks may now be accepted and that non-visual marks such as sound marks will be easier to file.

  • EU Certification Mark - A certification mark has been available in the UK for many years and is now being introduced in the EU. 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. An example of a certification mark is Woolmark which is used to indicate the quality of wool products.

  • Procedural Changes - A number of procedural changes will come into force. The main changes are as follows:

Acquired distinctiveness as a subsidiary claim – trade mark applicants will have the option of making a subsidiary claim for acquired distinctiveness (ie the public have recognised that the mark is a trade mark by virtue of the extensive use and marketing of the mark) at the time of making their application.  This allows applicants to exhaust their rights of appeal on inherent distinctiveness before they are required to prove acquired distinctiveness. This means users do not need to incur the expense of gathering and presenting evidence of use unless it is necessary.

Assignment as a remedy – in a very rare case when an agent or representative registers an EU trade mark without the proprietor's authorisation, the proprietor is now entitled to seek an assignment of the EU trade mark rather than invalidation of the mark.

 Priority claims – these must now be filed with the application. Previously, it was possible to make priority claims after filing.

To learn more please contact Charlene.