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EUTM reform: final provisions to come into effect on 1 October

04-09-2017

On 1 October 2017, the last of the reforms introduced by the EU Trademark Reform Package in 2016 will come into effect; in particular, the removal of the requirement for ‘graphic representation’ and the introduction of an EU Certification Mark. These provisions required secondary legislation be put in place, hence the delay.

The trademark reforms were designed to modernise EU trademark law; in particular, to make the process more ‘effective, efficient and cohesive’. The ‘Trademark Reform Package’ introduced important changes for owners of national trademarks within the EU, as well as EU trademarks (EUTMs). The Package contained a new Trademark Directive (that entered into force on 13 January 2016 and must be implemented into national legislation within three years from that date) and the European Union Trademark Regulation (EUTMR). 

The main provisions of the EUTMR were already applicable from the Regulation’s entry into force on 23 March 2016. The last of those provisions - those regarding the removal of the graphical representation requirement, the introduction of the EU Certification Mark and some procedural changes - will come into effect on 1 October 2017.

What changes on 1 October?
If you are currently a holder of an EUTM, you may well already be familiar with the changes introduced by the EUTMR on 23 March 2016: for example, the amended fee system, the extension of the exclusion provision for shape marks to all characteristics, and/or because you filed a so-called article 28 (8) declaration last year. The changes that will apply as of 1 October 2017 and that are relevant to EUTM holders, can be summarised as follows:

  • Removal of the requirement for graphic representation 

The criteria for EUTM registrability will no longer include the requirement for ‘graphic representation’, making it possible to file a trademark to protect a sign in any appropriate form; in other words, using generally available technology (as opposed to the current requirement that the sign must be graphically representable). This should enable IP owners to more easily register non-traditional signs (such as sounds, holograms and multimedia), so long as they can be represented in a manner that is clear and precise (following the criteria set out by the Court of Justice of the EU in the Sieckmann judgement) and fulfil the general requirement of distinctiveness.

With this change, a ‘what you see, is what you get’-system is introduced aiming to make the EUTM register clearer, more accessible and easier to search.  

  • Introduction of an EU Certification Mark

The EU Certification Mark is defined as a mark that is “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.” 

In other words, the EU Certification Mark offers consumers a guarantee that the particular product or service meets specific features. In the Benelux and a number of other EU member states, such a warranty mark is already protected as a ‘collective trademark’, but an equivalent warranty mark was previously not available at EU level. (The EU’s existing ‘collective trademark’ has a different meaning and only concerns the protection of common features of an association's goods or services.) 

In order to qualify for an EU Certification Mark, an applicant must comply with a number of (additional) conditions, including the requirement that a regulation be submitted within two months after filing, stating the characteristics of the goods or services to be certified, the conditions for the use of the relevant EU Certification Mark and the test and surveillance measures taken by the owner of the EU Certification Mark.

The EU Certification Mark could represent an interesting expansion of trademark protection in the EU. For more on this, and for additional insight into law and practice in the EU, please see our article 'Important legal change as of 1 October 2017 for holders of quality marks'.

Apart from the two important changes mentioned above, a number of procedural changes will also come into effect on 1 October; for example, regarding translations, evidence and priority. We will be in touch with customers in due course if these changes impact their EUTM applications or existing trademark portfolio. Please don’t hesitate to contact us if you need any additional advice or support.

Frouke Hekker leads Novagraaf’s Competence Centre. She is based in Amsterdam.