New Regulation (EU) No. 2017/1001 on the European Union Trade Mark: changes applying 1 October 2017
Regulation (EU) No. 2015/2424 of the European Parliament and the Council, amending Regulation (EC) No. 207/2009 on the Community Trade Mark, was published on 16 December 2015.
On 23 March 2016 it entered into force in part and implied some changes with immediate effects, such as:
- The name of the Office switched from Office for Harmonization in the Internal Market (OHIM) to European Union Intellectual Property Office (EUIPO).
- The name of the trade mark administered by the Office changed from “Community trade mark” to “European Union trade mark”.
- The fee system for trade marks varied: some amounts decreased and the structure of the application fees was modified, in such a way that a single fee for three classes disappeared.
- Changes to examination proceedings, observations by third-parties, opposition, cancellation and appeal, absolute and relative grounds were also introduced.
Some provisions of the Regulation No. 2015/2424 did not enter into force at that time, as they had to be developed by secondary legislation. This being made, they will apply as from 1 October 2017. The main changes are the following:
- The requirement for a mark to be represented graphically will no longer apply to trade mark applications. This means that any appropriate form of representation using generally available technology will be acceptable, provided that the representation be clear, precise, self-contained, easily accessible, intelligible, durable and objective. For example, according to the available technology, MP3 and MP4 files will now be accepted.
- EU certification marks are introduced. A certification mark it the one “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.”
- Procedural changes are also being introduced, for instance when claiming Paris Convention priority, which must now be claimed only at the time of filing the application; acquired distinctiveness, which could now be claimed either at the start of the application process or later in the examination process; geographic indications, which have been introduced as a separate relative ground for opposition and cancellation; evidence submitted to the EUIPO should now meet set formal requirements, including being clearly identified and referenced; it will be no longer mandatory to translate evidence to the language of the proceedings If the documents are in one of the official languages of the EU, etc.
These changes in the administrative and examination practices are aimed at improving clarity, efficiency and consistency.
On 14 June 2017, Regulation (EU) No. 2017/1001 of the European Parliament and Council on the European Union, a codified version containing the full text of the legislative reform, was published. I will fully enter into force on 1 October 2017.
You will find the new text in the different EU official languages following this link: