The EUTM Regulations, they are a-changing

While the Brexit talks rumble on, and while there is still no single clear notion of what exactly the IP landscape may look like at their ultimate conclusion, the European Union has meanwhile been busy implementing the second wave of important reforms to emerge from the memorably-titled "Regulation (EU) 2015/2424 of the European Parliament and of the Council" which, with effect from 1 October this year, have brought in some significant changes to the world of the European Union Trade Mark (EUTM).

The main changes that have been introduced can be summarised as follows.

Acquired Distinctiveness

Acquired Distinctiveness is a term describing the nature of a mark which, although not necessarily inherently distinctive, through its use in the market has "educated" the public at large to understand it to be an indicator of trade origin. Under the new rules, applicants for an EUTM have the option to initially file an application relying on inherent distinctiveness, but if that does not succeed, to subsequently carry out the more time consuming and costly exercise of assembling evidence seeking to prove Acquired Distinctiveness in respect of a significant proportion of the relevant public in the EU.

The option to claim Acquired Distinctiveness at the point of filing OR later in the registration process in this way has obvious advantages in terms of the flexibility and cost-effectiveness of the process for applicants.

Certification Marks

Secondly, a concept already known to domestic UK trade mark law, the Certification Mark, has been introduced into the EUTM regime for the first time. These marks are those which indicate that the goods and services in connection with which they are used are certified by the mark's owner in respect of particular attributes be it quality, materials or nature of manufacture / sourcing. The Certification Mark is typically supported by a set of "rules" for certification and guarantees that the particular attributes being certified have met the standard. However the owner of the certification mark cannot also carry on a business involving the supply of the certified goods or services. Under these new rules, the Intellectual Property Office of the European Union (EUIPO) will not accept applications for certification marks which seek to guarantee geographical origin.

Graphical Representation

Perhaps the most significantly, the requirement for an EUTM to be capable of being "represented graphically" no longer applies from 1 October this year. Those seeking to register a mark as an EUTM must simply be able to show that their mark is represented in a way that is "clear, precise, self-contained, easily accessible, intelligible, durable and objective." This should open up possibilities for more and easier registrations of "non-traditional" marks such as audio marks and even olfactory marks provided that these requirements can be satisfied.

Procedural Changes

If a mark is registered by an agent or representative without the owner's consent, previously the usual remedy for the owner would have been to apply to cancel the mark. This potentially allowed for a vulnerability to 3rd party applications between the "unauthorised" mark being cancelled and the owner making their own application if they wished to do so. From 1 October, the owner in this situation can now seek assignment of the mark to them without the need for the earlier registration to be cancelled.

Priority claims must now be submitted at the time of filing an application with the EUIPO, however documentation in support can then be filed within 3 months. This is a change from the previous rule which said that it was possible to submit a claim for priority within 3 months of filing and the documentation within 3 months of receipt of the declaration of priority.

The overall effect of this set of changes seems to be aimed at streamlining, front-loading and making more certain the existing procedures around applying to register an EUTM. Even after Brexit, and irrespective of where the UK ends up in relation to its dealings with the EUIPO, EUTMs will continue to be an important and powerful part of many businesses' portfolios. These changes, then, are broadly to be welcomed but only time will tell how beneficial they are in practice.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.