Since 1st October, 2017 the second part of the reform has applied to European Union trademarks provided for in Regulation (EU) 2015/2424, dated 16th December, 2015.
The Regulation had already introduced some significant modifications: the OHIM became EUIPO, Community trademarks became European Union trademarks, a new system of duties was established and various procedural changes had also been introduced, especially concerning procedures for the objection and cancellation of trademarks.
This second part of the reform was developed in the Implementing Regulation and in the Delegated Regulation. Here, we refer to the end of a trademark’s requirement for graphical representation (1), the new certification mark (2), and several procedural changes (3).
1. The end of the requirement for graphical representation of a trademark
In order to further simplify the filing of trademarks, marks may henceforth be “represented in any appropriate form using the commonly available technology”. The requirement for graphical representation is thus abrogated, but only on condition that the representation is recognisable. Indeed, it is in the interests of both the applicant and the Office to have a specific basis on which to be able to clearly identify the mark to be protected and in particular, to avoid a rejection of registration on grounds of form.
In Rule 3 of the European Union Trademark Implementing Regulation, the essential requirements for representation are listed, according to which the trademark should be verbal, aural, positional, holographic, etc.
Concerning figurative marks, claims for colours are not possible. It is therefore appropriate to file one’s trademark in a way that clearly represents the desired colour, with a reference to a Pantone-type colour code. The principle, “what you see is what you get” being reinforced, any scanned or handwritten representations of mediocre quality will be avoided.
On its site, EUIPO provides a clear list of the required formats (JPEG, MP3 or MP4), according to the type of mark:
2. The new certification mark
This reform, dated 1st October, 2017, introduces a new type of European trademark: the certification mark. This is defined in Article 74(a) of Regulation (EU) 2015/2424 dated 16th December, 2015 as that “which distinguishes the goods or services for which the material, the way in which the products are produced or the services supplied, the quality, precision or other characteristics with the exception of geographical origin, are certified by the proprietor of the mark in relation to the goods or services which do not qualify for such certification”. This type of trademark guarantees the use of the mark in relation to the certification standards defined by the applicant.
Any legal or natural person may proceed to file a certification mark “provided that such person does not carry on a business involving the supply of goods or services of the kind certified”. In other words, the applicant must be a certifying body authorising the use of this mark by third parties as a “quality label” for the certified product or services.
It is also important to distinguish certification marks regarding geographical indications, for which a new reform is currently under discussion.
This new type of mark is not completely unknown in national systems. Thus, it is possible in France, for example, to proceed with filing a collective certification mark, but these conditions for existence and inspection are tightly framed by Article L. 715-2 of the Intellectual Property Code. Therefore, the filing of such a mark is reserved for legal persons and its usage “is indeed [systematically] available to all persons distinct from its owner”, as long as they demonstrate the commercialisation of “products or services which meet the conditions set out by that Regulation” and are inspected. It may be declared invalid at the request of any interested party and most notably, in a request lodged with the Public Prosecutor. In the event of the dissolution of the applicant, it is the State Counsel who will decree the conditions for its transfer. The public order, so precious to the French, is at issue. This is reminiscent, for example, of the LABEL ROUGE [Red Label] trademark, filed on behalf of the French State by the Minister for Agriculture and authorised for use by persons offering products and services, which conform to the standards of quality and inspection defined for the Label. Based on the above, it follows that this type of mark deviates from the definition of a trademark in the classic sense, which enables the consumer to distinguish its precise origin, namely the company or individual offering the products and services being claimed for.
Some doubts therefore arise on the part of the French regarding the effectiveness of this new type of mark and there is the fear that the consumer may be misled due to the absence of regulation over the entities authorised to file such a mark. Moreover, the outcome of this lack of regulation may be observed in Germany, where there are over a thousand labels of varying degrees of reliability, although consumer associations have gone as far as creating classification portals for certifications.
In an attempt to avoid deviation, EUIPO has imposed rather strict conditions. Therefore, it may be noted that the filing of a European Union collective mark has two months from the date of filing to submit regulations for the use of a certification mark. The following must be indicated in these regulations:
- The persons or types of person authorised to use the mark;
- The characteristics certified by the mark;
- The manner in which the entity will proceed to verify characteristics;
- The manner in which the entity will proceed to monitor use of the mark;
- Precise conditions for use;
- Sanctions in the event of failure to comply with the standards of use.
Furthermore, the fees for filing amount to 1,500 EUR for a request submitted by electronic means.
3. Procedural changes
A large number of procedural changes may be observed, which will require especially close attention from owners of trademarks and their advisors.
a. Applications for a priority claim subsequent to filing are no longer possible
As from 1st October, 2017, the priority of an earlier national trademark must be requested in conjunction with the filing of a European Union trademark. In return, the Office has extended the deadline for submitting supporting documents by one month. The proprietors shall therefore have three months to send documentary evidence for claims.
b. Opposition, annulment or revocation proceedings
Changes have been made regarding the provision of proof of use, with consequences that will surely be time-consuming for advisors. In the context of opposition, annulment or revocation proceedings, these must be presented in a clearly identifiable way and in a separate document, referenced in a list attached to the legal argument.
A certain relaxation of the regulations may be observed in relation to language, namely that evidence concerning the filing, registration or renewal of earlier rights, as well as any other piece of legislation, must be translated into the language of the proceedings. For all other evidence, translation is not obligatory, or at least not in full, if the Office does not require it. This will certainly alleviate the burden and cost invested in these proceedings by parties.
It should also be noted that a discretionary power is granted to EUIPO in the context of evidence submitted late.
Still with an emphasis on simplification, especially concerning annulment and revocation procedures, the reform dated 1st October, 2017 aligns the provisions applying to these procedures with opposition proceedings, naturally preserving the specificities of the nature of the proceedings themselves. Moreover, it may be observed that the transfer of a mark is currently possible as an alternative to the annulment of a mark.
The Office has however toughened the rules on the suspension of proceedings by demanding justification enclosed with requests. This is especially to counter extensive abuses. What is more, this request must not exceed six months, which may nevertheless be extended to a maximum of two years at the joint request of the parties.
c. Other changes
The Office will also apparently clarify the tasks of members of Boards of Appeal by regrouping different sources, thus enhancing the efficiency of the appeals process and legal certainty.
Finally, EUIPO reaffirms its intention to modernise by abolishing delivery by hand and the submission of documents to the Office by post. Transmission by fax certainly seems to be partially accepted, but electronic communication is preferred.
This reform still leaves some uncertainty concerning implementation, especially concerning the certification mark. It will therefore be interesting to see how it evolves in practice over the coming months.
Authors: Marie-Avril Roux & Marine Milochau (LL.M. intelectual property law)