EU trademark Regulation No 2015/2424

2. Technical changes

 Coming into force 90 days after publication of the Amending Regulation:

In the area of examination proceedings, the main changes are the following:

• The Amending Regulation eliminates the possibility of filing EU trade mark applications through national offices.
• Users will be able to choose whether they want to receive EU search reports and surveillance letters.
• The Amending Regulation clarifies the impact of the revocation of an earlier mark on which a seniority claim is based, which will now depend on the date of effect of the revocation.
• The Amending Regulation introduces in the text of the Regulation the current practice as regards the time period for submitting third-party observations. This should take place before the end of the opposition period or, where an opposition against the trade mark has been filed, before the final decision on the opposition is taken.
• The Amending Regulation also expressly states the Office’s right to re-open the examination of absolute grounds on its own initiative at any time before registration.

In the area of absolute grounds of refusal the main changes are the following:

• Functional signs (e.g. colour or sound) will now be subject to the same prohibitions applied to shape marks.
• The Amending Regulation clarifies the prohibitions related to Protected Designations of Origin (PDO), Protected Geographical Indications (PGI) and other intellectual property titles.
• Elimination of the possibility for users to add disclaimers in trade mark applications in order to overcome future absolute grounds objections.
• The Amending Regulation codifies the current practice as regards invalidity proceedings based on absolute grounds, limiting its examination to the arguments and the grounds provided by the parties.

In the area of designation of goods and services, the main changes are the following:

• The Amending Regulation codifies the existing practice for trade marks filed after the judgment in C-307/10 ‘IP Translator’ (what you see is what you get).
• It extends this practice to trade marks filed before the judgment, giving their owners a transitory six-month period to adjust the specification of their marks to their original intention when they filed them.

As regards opposition and cancellation proceedings, the main changes are the following:

• Changes to the start date for the opposition period against international registrations designating the EU. This period will now start one month after the date of publication.
• The Amending Regulation introduces some changes as regards counterclaims before EU trade mark courts. In this respect, EU trade mark courts will not proceed with the examination of counterclaims until either the interested party or the court have informed the Office of the date on which the counterclaim was filed.
• The Amending Regulation imposes on the Office the obligation to inform the EU trade mark court in question of any previous application for revocation or for a declaration of invalidity filed before the Office.

In the area of relative grounds of refusal the main changes are the following:

• Introduction of a separate specific ground of opposition and cancellation on the basis of Protected Designations of Origin (PDO) and Protected Geographical Indications (PGI).
• Changes in one of the dates for determining the obligation to submit proof of use and determining the relevant period. The relevant date will now be the date of filing or priority date of the contested EU trade mark application rather than the date of its publication.
• A series of clarifications in line with existing practice and case law.

The main changes brought about by the Amending Regulation as regards appeal proceedings are the following:

• Elimination of interlocutory revision in inter partes cases, which should result in a shorter overall duration of appeal proceedings in these cases. This is in line with the aim of streamlining proceedings before the Office and taking into account that interlocutory revision of first-instance decisions in inter partes cases was possible only in very exceptional instances (since it required the agreement of both parties).
• Insertion of certain provisions to clarify and codify existing practice regarding ancillary appeals and the date of effect of Board of Appeal decisions. These decisions take effect once the period to bring an action against them has expired or, if an action has been brought within that period, once it has been dismissed by the General Court or, in the case of further appeal, by the Court of Justice.

Coming into force 21 months after publication of the Amending Regulation:

Elimination of the requirement of graphical representation:

• The Amending Regulation removes the graphical representation requirement. This means that, from 24-09-2017, signs can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
• Ahead of the entry into force of this provision of the Amending Regulation, the Office will provide users with information on the alternative media and formats that are considered to comply with the new provision.

European Union certification trade mark:

• European Union (EU) certification marks are a new type of trade mark at EU level, although they already exist in some national intellectual property systems.
• Certification marks allow a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods or services complying with the certification requirements.

Other procedural changes:

• It will be possible to request the assignment of a trade mark registered in the name of an agent directly before the Cancellation Division of the Office or before an EUTM court as a counterclaim in infringement proceedings.
• Priority claims will be have to be filed together with an application, not subsequently.
• The existing practice in terms of surrenders, in the event that there is a previous application for revocation, is codified.
• There is a new time limit for revocation of decisions and entries in the Register, which will have to be affected (and not just determined) within one year (instead of six months) from the date of the decision or entry.
• Continuation of proceedings will now be applicable to cases where it was previously excluded, in particular in the context of opposition proceedings.

Adapting to the Lisbon Treaty: name changes:

• The terminology of the regulation is adapted to the Lisbon Treaty, with all references to the Community being substituted by references to the European Union or, in some instances, the Union. This means, in particular, that the term ‘Community trade mark’ will now be replaced by ‘European Union trade mark’. Existing Community trade marks and Community trade mark applications will therefore automatically become European Union trade marks and European Union trade mark applications upon the entry into force of the Amending Regulation, and the Community Trade Mark Regulation will now become the European Union Trade Mark Regulation.

Cooperation activities:

• The Amending Regulation introduces a solid legal framework for the existing cooperation between the Office and the offices of the Member States. Another important aspect of the new framework is that it provides for the consultation of user representatives in relation to cooperation projects, in particular in the phases of definition of the projects and the evaluation of their results.