On 1 October 2017 the Regulation of the European Parliament and the Council on the European Union Trademark (EUTM) enters into force. The regulation amends some principles of registration of European Union trademarks in the European Union Intellectual Property Office (EUIPO). Moreover, it introduces new types and categories of signs.
The most significant change is the elimination of the requirement to represent signs graphically. After 30 September 2017, signs may be represented in any form, provided that the representation is clear, precise, self-contained, easily accessible, intelligible, durable, and objective. The amendment is related to the new possibility of registering trademarks which may only be represented in electronic form. This category comprises multimedia, motion, and hologram marks. Applicants for such marks should include in the application a film showing the motion or a change of position of a trademark or an audiovisual file containing a combination of image and sound.
According to the EUIPO, the amendments shall increase the transparency of the EU trademark register and make it easier for users to search for trademarks. The EUIPO also expects that the number of oppositions to trademark registrations submitted for formal reasons will drop.
On 1 October 2017 there will appear a new category of trademarks in the system of EU trademarks – EU certification marks. An EU certification mark relates to the guarantee of specific characteristics of certain goods and services. Consequently, applicants for a certification mark must submit regulations detailing how the mark can be used. These regulations should contain the identity of the undertaking authorized to use the mark, the characteristics of the goods or services to be certified, the conditions governing the use of the certification mark, and the testing and supervision measures to be applied by the certification mark owner, including sanctions.
The aim of the regulations is to guarantee that the goods and services bearing a certification mark comply with specific standards set out by the trademark owner, who will also shall be responsible for supervising compliance of the regulations. There are two important limitations for an EU certification mark. First, it cannot be owned by a person carrying out a business involving the supply of the goods and services of the kind certified. Second, it cannot be filed for the purpose of distinguishing goods or services certified in respect of the geographical origin.
“The amendments which are to enter into force provide entrepreneurs with another instrument extending the options of exclusive protection of signs” – says Magdalena Maksimowska, patent & trademark attorney from JWP Patent & Trademark Attorneys. “What is more, it will be much easier to register atypical marks whose registration to date presented technical problems resulting from representation of a sign. New signs will be attractive for businesses in many industry sectors, for example developers of smartphone applications or software, or recording companies. With the assistance of a professional representative, businesses will be able to derive maximum benefit from the changes introduced by the Amending Regulation”.
The amendments, which come into effect in the beginning of October, will also apply to certain trademark registration procedures, in particular methods of communication with the EUIPO. Until the end of 2017 trademark applications and correspondence may be sent via facsimile. From 1 January 2018 the electronic system will be the only effective channel of communication with the EUIPO for filing new trademarks and renewing existing rights.