THURSDAY, 21 SEPTEMBER 2017
31st Annual Conference - Thursday morning
It was a packed morning at the Annual Conference, with an update on the EUTM legal reforms coming into effect on 1st October, and a look at some of the key issues, followed by a discussion on protecting corporate identities and advertising by means other than trade mark rights.
In a presentation entitled “Legal Reform: The Final Dash”, Dimitris Botis of EUIPO provided a comprehensive guide to the new Regulations and decisions taking effect on 1st October. As he said, the changes involve the moving around of certain provisions and addition of new provisions, so practitioners will need to get used to them quickly.
The most important changes include the abolition of the graphical representation requirement for EUTMs. The primacy of the representation should make the registry clear, accessible and easy to search, said Dimitris: What you see is what you get.
Article 3 includes a non-exhaustive list of the 10 most popular trade mark types, including five new types (position, pattern, motion, multimedia and hologram). Dimitris said the “permissive approach” allows various means of representation for sound, motion, multimedia and hologram marks.
Types of marks not specified are smell, taste and tactile/texture marks – it remains to be seen how these will be represented, but the rules say samples are not acceptable.
Another change that he highlighted was Article 2 of the new Act, which allows acquired distinctiveness to be made as a subsidiary claim.
Practitioners should also be aware that, under the new Delegated Regulation, if you make an electronic filing, you have to tick a box for “proof of use request” etc. A few small things have changed with regard to suspensions and oral proceedings: for example, a new procedural requirement says that evidence included in annexes must be clearly numbered and listed in an index.
Faxes will be partly phased out for trade mark filings and renewals from 1st January 2018 – fewer than 1% of applications are filed by fax at the moment. As part of a transitional measure, users can still send faxes as long as they are followed up by an electronic communication within three days.
There are also new rules on appeals. “I strongly recommend you read the transitional measures if you have pending proceedings before the Office,” said Dimitris.
Simon Malynicz QC of Three New Square focused on three aspects of the changes.
First, he addressed the representation of colour combinations – the new rules, dangers and pitfalls of using descriptions. The Heidelberger requirement that they “must be systematically arranged in a predetermined and uniform way” is not clear, and is being considered by the General Court in the Red Bull case (T-101/15), he said. What is clear is that “the representation is now the boss,” said Simon. Descriptions are almost optional: for a colour mark, you need to include a colour reference – but do you need anything more? Simon’s main tip was: “Keep your descriptions to an absolute minimum – be very careful about using any descriptive language.”
Second, Simon provided a UK perspective on certification marks ahead of the new EU right. He discussed a case from 1967 involving Stilton cheese and one from 2000 for Legal Aid, which addressed questions about certification and descriptiveness. Lessons include that the mark doesn’t have to expressly indicate it’s a certification mark; the rules may change; and the public don’t necessarily need to know who the proprietor is. “It’s somewhat Kafkaesque … in fact there’s a very low take up [of certification marks] in the UK,” said Simon. Clarification may come from the General Court in the pending Halloumi case, he added.
Simon’s third topic was the change regarding acts of agents or representatives. He noted that there is “a dearth of case law” on this topic, and there are questions such as: who is the agent or representative, and what is the mark – can it be a similar mark or the same mark for different services? Some of these questions are pending in Case T-7/17 John Mills v EUIPO (the Magic Minerals case).
The panel, which was moderated by Kasper Frahm of Plesner Law Firm, unsurprisingly prompted quite a few questions about the pending reforms.
Non-trade mark protection
Slogans, fonts, adverts – they are source identifiers, but are they trade marks? That was the question addressed by Andreas Lubberger of Lubberger Lehment, Sally Britton of Mishcon de Reya, Julia Matheson of Finnegan and Coral Toh of Spruson & Ferguson in a session moderated by Jesse Hofhuis of Hofhuis Alkema Groen.
“In Germany, we have a traditional concept of the unity of signs, which incorporates trade marks and trade names,” said Andreas. “The concept of trade names is very broad, and is created by use and distinctiveness.” He discussed several decisions from Germany on comparative advertising, and set out the standards that courts expect from advertisers, as well as discussing defamation of brands and parasitic copying of advertising slogans.
In the UK, there are five options for tackling this issue, said Sally: passing off, malicious falsehood and defamation, copyright, designs and Advertising Standards Agency complaints. She discussed how each of these could be used to tackle adverts such as PETA’s campaigns and the Dismaland theme park. “There are various routes you can take, but there is the opportunity for some comparative advertising in the UK,” she concluded.
“From a US perspective, everything except copyright falls under trade mark law, which is a subset of unfair competition law,” said Julia. Trade dress is very broad, and can include product packaging and configuration. “In the US people can get away with things that would be impermissible elsewhere; courts are much less willing to grant relief.” For trade dress, the devil is in the details, she said: do consumers actually identify it as a source identifier? That is one reason why litigation, including surveys, can be very expensive. There is also a high bar to show actual consumer recognition. Copyright is another option but offers a narrower scope of protection. “Cases are fact-specific and there are few judgments on the merits,” said Julia, who highlighted the Two Pesos, Katiroll, Apple Store, Blue Nile and Conference Archives cases. One dispute to watch is Louis Vuitton Malletier v My Other Bag at the US Supreme Court.
There are few cases in China, said Coral, partly for cultural reasons: “It’s not considered honourable to criticise other people’s products.” But there is a concept of “unhealthy social influence” in several pieces of legislation, including the Trade Marks Law and Advertising Law. Cases normally arise when a party is trying to take commercial advantage. Shop layout, décor, uniforms and even look-and-fee can be protected under the Anti-Unfair Competition Law, but it may be hard to prove as there is a high threshold. Two recent cases under the Law are the STIHL and Guangzhou Pharmaceutical (Red Can) cases.
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WEDNESDAY, 20 SEPTEMBER 2017
31st Annual Conference, Prague - Wednesday afternoon
This afternoon’s first session focused on cultural differences in trade mark enforcement, and featured several in-house counsel with broad experience of protecting brands worldwide.
Leo Longauer of Swarovski, Daniel Zohny of FIFA, Giordano Cardini of Soremartec and Katherine Tsang of Diageo along with Eni Ashihara of YKI Patent and Trademark Attorneys in Japan took part in a panel discussion moderated by Tobias Cohen Jehoram of De Brauw Blackstone Westbroek.
In a wide-ranging discussion, they talked about the importance of having breadth and diversity in their in-house teams. Diageo’s team look after brands in 180 countries and have counsel in five continents. Soremartec’s IP team has 20 people, who speak 30 to 40 languages between them.
Having team members with local expertise and language skills helps avoid problems arising from cultural misunderstandings, said the speakers. For example, the approach taken towards counterfeiters might be different in Europe compared to China, and there might be local rules and customs that it is important to be aware of. During the discussion, Emi Ashihara discussed conflicts between Japanese-language and English-language marks, including the controversial FRANK MIURA decision, ZEXSS v ZEISS and DOUBLE NELPRESS v NESPRESSO.
The panellists also talked about what qualities they look for in local counsel, and which stereotypes are untrue. For example, in the UK, is there limited protection for lookalikes and is litigation very expensive? In Italy, is there high protection for IP owners and long-winding litigation? In China, are decisions random and is effective enforcement difficult?
Finally, they looked at what impact the legal culture can have on litigation strategy. Among the conclusions were that: law, procedure and scope of protection differ widely; knowledge of local (legal) culture always helps; act glocal; take a tailored approach; and it is essential for in-house and local counsel to be open, know the business and think laterally and proactively.
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WEDNESDAY, 20 SEPTEMBER 2017
31st Annual Conference, Prague - Wednesday morning
Chair of the MARQUES Council Gregor Versondert of Procter & Gamble opened this year's Conference in Prague, noting that it is the third biggest Annual Conference. It is the second time MARQUES has held the Conference in Prague - we were last here in 2005.
Gregor introduced Josef Kratochvil, President of the Czech Republic Industrial Property Office, to perform the Opening Ceremony. In a short speech, Mr Kratochvil summarised the history of IP in the Czech Republic, going back to the 1859 Trade Mark Act, and highlighted some notable Czech brands such as Pilsner Urquell.
Looking to the future, he said the Czech Republic has already started to revise its Trade Mark Act to comply with the revised EU Directive. A draft is expected to be published by the end of this year, to be debated in Parliament in 2018.
Mr Kratochvil said "trade mark protection will develop further", with new types of trade marks and greater cooperation against counterfeiting. But he warned about the danger of misleading invoices: the Czech Office is working with banks and property owners to tackle this problem. MARQUES also has a Task Force devoted to this issue.
Cultural trends in brands
In the first panel session, keynote speaker Ruben Mosblech of Interbrand provided a history of branding. Brands have evolved from an indiction of identification to one of value now to one of experience, he said. "All products and services are much more directed at the consumer, and what he or she can experience in the product," he added, and then asked: what comes next? The answer is "The Age of You", which has been called the "Mecosystem". This means personalisation, tailored advertising and predictive intelligence.
A recent example of how culture can have an impact on branding is Jio in India, a new and innovative brand that added 50 million new consumers in 83 days, making it the fastest-growing ever. Brands that have successfully adapted to global cultural changes include Starbucks, Nike, IKEA and McDonald’s.
"Brands are cultural assets," Ruben concluded. For example, Juventus went from being a football club to a global icon, built around its black and white colours and the idea of being "fearless".
What is the difference between trade marks and brands, asked Gregor Vos of Brinkhof in the next presentation. He focused on European history and ideas of individuality. In the 1970s the European Court of Justice ruled in favour of free trade in a number of cases, and in 1996 OHIM (now EUIPO) was created.
Thanks to the internet and globalisation, brands became universal: "In Europe this was made possible by the harmonisation of the internal market - and trade marks." In response, he said, now there is a return to local brands - for example, in the Netherlands there are more local breweries than ever, as the big beer brands have become consolidated.
Gregor contrasted the “unitarian” approach taken by the CJEU (in cases such as Silhouette, Pago and Onel) with a less unitarian approach evident in Matratzen, DHL/Chronopost, Be Impulsive, Combit/Commit and most recently the General Court ruling in KitKat, which said that distinctiveness acquired through use must be shown in all the Member States concerned. "These are very exciting times for EU culture and EU trade marks,” concluded Gregor.
Cara Boyle of Fross Zelnick Lehrman & Zissu provided a US perspective, describing culturally imposed restrictions on trade mark use ranging from prohibition to marijuana. While several US states now permit the sale of marijuana, it remains illegal at the federal level and the USPTO will not grant trade mark registrations for marijuana products.
Examples of geopolitical issues influencing brands include the Havana Club case, and more recently TIKI Brands’ statement emphasising that its torches are not associated with the Charlottesville marches.
The most recent high-profile dispute involving a clash between culture and brands was The Slants case, where the US Supreme Court ruled in Matal v Tam that the bar on disparaging trade marks was not compatible with the First Amendment.
Censored marks – public policy and morals
Introducing a panel on what she called the “dark and dirty side of trade marks” Gabriela Taugwalder of Wild Schnyder said countries have various restrictions on marks that are immoral, scandalous, against public policy, vulgar etc. But who decides what is not acceptable? Should it be examiners, offices, courts, international panels or the public? “There are various traps that need to be kept in mind … what may be perceived as scandalous, immoral or disparaging is likely to shift over time.” And what role should factors such as humour, satire and freedom of expression play?
Gabriela introduced a quiz for attendees, in which they could vote on whether they thought certain marks should be registrable or not, via the MARQUES app.
Kate Swaine of Gowling WLG reviewed various cases in Europe, “We are entirely inconsistent on matters of religion – no surprise there,” she said. In the Netherlands, for example, SHIVA was registered for pornography services. It’s not just religion that divides us, added Kate: “We Europeans are as inconsistent in our approach to sex as we are to religion,” as decisions on registration of sexual references demonstrate.
Things get even more complicated in Russia, where there is a long list of restrictions on trade marks. One notable refusal was Kompromat.ru for media services. “In recent years the prevailing mood in Russia shows a high sensitivity to religion and Orthodox values, and that has an impact on the registrability of trade marks,” said Kate. TROITSA (Trinity) was registered as a mark for beer, but later rejected for whisky.
In the US, there is a question about whether the Supreme Court’s ruling on disparaging marks in Matal v Tam will be extended to immoral marks. There have been many applications to register racy marks at the USPTO: one was COMFYBALLS which was refused for mens’ underwear but granted for ladies’ underwear.
Francine Tan of Francine Tan Law Corporation provided a perspective on Singapore and Japan. “In Singapore we are a very conservative society, and issues of race and religion are very sensitive topics,” she said. Rejected applications include BASTARD, JESUS and BUDDHA TO BUDDHA but EARL GREY BUDDHA, GOLDEN SHOWER and SEXUAL FLAVOURS have been accepted. “Brand owners should expect objections where marks could harm inter-ethnic relations,” said Francine.
Japan is a more homogeneous society, and examiners take account of “common social wisdom” in deciding whether a mark is immoral or contrary to social norms. In the Champagne Tower case, the trade mark was rejected based on public order grounds. Applications for KILL and BURGLAR have also been refused, but there are numerous registrations including the word FUCK.
In Iran, rules on morality are strict and penalties may include execution, said Bahia Alyafi of Alyafi IP Group, but in the absence of guidelines examiners decisions are inconsistent and unpredictable. “What are the standards? We don’t know!” said Bahia.
Saudi Arabia is similarly strict, and depends on examiners’ views, leading to some unexpected decisions. NUITS ET CONFIDENCES was accepted but ROUGE NOCTURNE rejected. What is clear is that alcoholic drinks, pork products, bars, night clubs and the Red Crescent are not registrable; everything else is uncertain.
In the UAE, registrability may depend on who the applicant is – as the application for The Koran Information Centre suggests. In another case, NAKED PIZZA obtained a registration for N-K-D PIZZA: this was accepted as not being scandalous. “You can be creative and file the mark, and see if they will accept it or not,” said Bahia.
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TUESDAY, 19 SEPTEMBER 2017
Jeremy Phillips receives Goldring Award
Class 46 founder and MARQUES Social Media Coordinator Jeremy Phillips (right) was tonight presented with the second annual David Goldring Volunteer Award at the Annual Conference in Prague.
The Award was established last year in memory of David Goldring, who supported MARQUES for many years, notably as Treasurer. The first award was presented in David's memory to his wife, Dee, at last year's Annual Conference.
Presenting the award this evening, MARQUES Chair Gregor Versondert paid tribute to Jeremy's long and influential career in IP, and his significant contribution to MARQUES.
On receiving the award, Jeremy noted that he had attended the very first MARQUES conference in Vienna with David Goldring, when they had both been young practitioners.
Jeremy added that one of his grandsons now plays football at David's old club, and he regularly sees the plaque that commemorates David's contribution there.
The 31st Annual Conference kicked off today with a Leadership Meeting this morning, followed by the Team meetings this afternoon. The Welcome Reception took place in the Hilton Hotel ballroom and featured Czech-themed food and entertainment.
Class 46 will bring further updates from the Conference during the week.
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TUESDAY, 19 SEPTEMBER 2017
CJEU addresses trade marks and PDOs in Port Charlotte judgment
Paulo Monteverde of the MARQUES Geographical Indications Team reports on last week’s interesting decision from the CJEU in the "Port Charlotte" case:
Following several appeals and cross-appeals, on 14th September 2017, the EU Court of Justice confirmed the General Court decision which concluded that “Port Charlotte” is not an evocation of the Protected Denomination of Origin (PDO) PORTO or PORT (Case C-56/16 P).
The Court of Justice also held that the body of legal rules applicable to the protection of PDOs for wines is exclusively and exhaustively laid down in Regulation no. 1234/2007.
Background to the case
The Scottish company Bruichladdich Distillery Co. Ltd. (BD) filed a trade mark application for “Port Charlotte”, for alcoholic beverages, in 2006.
In 2011, after Instituto dos Vinhos e do Porto, IP (IVDP) filed an application with the EUIPO for a declaration that the mark was invalid; BD then limited the list of goods to whisky.
IVDP’s application was rejected by the EUIPO and, as a consequence, IVDP appealed to the General Court. However, the General Court confirmed the compatibility of the contested mark with the PDO “Port”.
Both the EUIPO and IVDP appealed this decision.
The EUIPO appeal addressed the controversy of whether or not the body of legal rules applicable to the protection of PDOs for wines is exclusively and comprehensively laid down in Regulation no. 1234/2007.
IVDP’s appeal included three sets of arguments:
Advocate General’s Opinion
The Advocate General expressed the view that the General Court’s judgment should be set aside and the decision of the EUIPO should be annulled.
As to the controversy of whether or not the body of legal rules applicable to the protection of a PDO for wines is exclusively and comprehensively laid down in Regulation no. 1234/2007, the Advocate General’s opinion was that EU law is comprehensive in this regard. To sustain that conclusion, the Advocate General recalled that the procedure to grant a wine a PDO takes into consideration national legislation; in fact, with regard to wines, it was because PDO Port already benefited from protection under Portuguese law as “quality wines produced in specific regions”, that, once Portugal forwarded that information to the Commission, it was automatically protected under Regulation no. 1234/2007. In any case, national provisions cease to apply once PDO status is granted under Regulation no. 1234/2007.
The Advocate General addressed IVDP’s argument that “Port Charlotte” derives unfair advantage from Port PDO’s reputation, by concluding that irrespective of the meaning of “Port” in different languages, the PDO cannot be left without protection. Furthermore, given the proximity of products (alcoholic beverages), targeted at the same type of public and using the same distribution networks, the PDO Port cannot be used, on its own or with other words, as a trade mark for these products, as otherwise the trade mark owner is likely to derive unfair advantage from the reputation of the PDO.
Finally, concerning the evocation claim, the Advocate General reminded that the prohibition of evocation is not necessarily linked to the likelihood of confusion by the public (since the General Court had concluded that this was not a case of evocation, due to the fact that it had found no likelihood of confusion between the products at stake). In this case, the Advocate General found that “Port Charlotte” may evoke the wines protected by the Port PDO, in the mind of a reasonably well informed and observant European consumer.
Decision by the Court of Justice
The Court of Justice considered that the body of legal rules applicable to the protection of a PDOs for wines is exclusively and exhaustively laid down in Regulation no. 1234/2007. The conclusion about the exhaustive nature of regulation and on the consequent preclusion of protection to PDOs under national law results from the following reasoning:
Although it is true that the system of protection established by Regulation No 1234/2007 is not identical to that provided for by Regulation No 510/2006, the General Court was right in holding that those two systems were, essentially, the same in nature, since their objectives and characteristics were similar.
If the Member States were permitted to allow their producers to use, within their national territories, one of the indications or symbols which are reserved, under Regulation No 1234/2007, for designations registered under that regulation, on the basis of a national right which could meet less strict requirements than those laid down in that regulation for the products in question, the risk is that that assurance of quality, which constitutes the essential function of rights conferred pursuant to Regulation No 1234/2007, could not be guaranteed;
Since the decision to register a designation may be taken by the Commission only if the Member State concerned has submitted to it an application for that purpose and such an application may be made only if the Member State has checked that it is justified. The national registration procedures are therefore incorporated in the decision-making procedure at EU level and constitute an essential part thereof. They cannot exist outside the EU system of protection. Article 118f(7) of Regulation No 1234/2007, a provision essentially identical to Article 38(7) of Regulation No 479/2008, provides that Member States may, on a transitional basis only, grant national protection to a name until a decision on the application for registration is taken by the Commission.
A provision of that kind would be rendered redundant if the Member States were able to retain their own systems of protection for designations of origin and geographical indications for the purposes of Regulations No 1234/2007 and No 479/2008 and have them coexist with that resulting from those regulations.
Accordingly, Article 118s of Regulation No 1234/2007, a provision which is essentially identical to Article 51 of Regulation No 479/2008, provides for a transitional system of protection, the aim of which is to maintain, for reasons of legal certainty, the protection of wine names already provided for prior to 1st August 2009 under national law. That transitional system of protection is, as is apparent from the wording of Article 118s(1) of Regulation No 1234/2007, organised at EU level pursuant to Regulation No 1493/1999 and granted automatically to wine names already protected under, inter alia, that latter regulation.
Furthermore, Article 118s(4) of Regulation No 1234/2007 provided that, until 31st December 2014, that automatic protection of wine names could be cancelled by the Commission, acting on its own initiative, if those wine names did not meet the conditions laid down in Article 118b of that Regulation. Such a transitional system of protection for existing designations of origin and geographical indications would be pointless if the system of protection for such names which is provided for by Regulation No 1234/2007 were not exhaustive in nature, implying that the Member States retained in any event the ability to maintain them for an indefinite period.
The Court of Justice therefore concluded that the General Court erred in law in holding, in the judgment under appeal, that the protection conferred on protected designations of origin and geographical indications under Regulation No 1234/2007, provided that they are ‘earlier rights’ within the meaning of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) and Article 53(2)(d) of that Regulation, “may be supplemented by the relevant national law granting additional protection”.
The Court of Justice also concluded to be correct the General Court’s assessment that the relevant public, namely the average consumer in the European Union with at least a basic knowledge of English or a Romance language, will understand the sign PORT CHARLOTTE as designating a harbour named after a person called Charlotte, without making a direct link with the designation of origin ‘Porto’ or ‘Port’ or a port wine, is a factual assessment and cannot, as such and since IVDP has not established that there was a manifest distortion of evidence which is capable of affecting that assessment, be reviewed on appeal. It is the Court’s view there are not enough facts showing that that “Port Charlotte” derives unfair advantage from Port PDO’s reputation and evokes the products protected under the PDO
The Court of Justice also considered that even though the term ‘port’ forms an integral part of the contested mark, the average consumer, even if he is of Portuguese origin or speaks Portuguese, in reaction to a whisky bearing that mark, will not associate it with a port wine covered by the designation of origin in question. That assessment is confirmed by the not insignificant differences between the respective features of a port wine and a whisky in terms of, inter alia, ingredients, alcohol content and taste, of which the average consumer is well aware. Thus, the Court of Justice concluded that “Port Charlotte” is not an evocation of PORT or PORTO.
Paulo Monteverde is a partner at Baptista, Monteverde & Associados in Lisbon and a member of the MARQUES GI Team
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THURSDAY, 14 SEPTEMBER 2017
Questionnaires on Convergence and Legislative Reform Roadshow
Thanks to MARQUES External Relations Officer Alessandra Romeo for bringing news of some important forthcoming and ongoing activities at the EUIPO:
Questionnaires on Convergence – Deadline Extended
User Associations were invited to contribute to the new CP8 and CP9 convergence projects and the CP1 and CP2 benefit analyses by submitting their responses to questionnaires on the topics. The deadline to fill in the questionnaires has been extended until 31st October 2017.
Download the questionnaires at the following links:
Legislative Reform Roadshow
The EUIPO, in collaboration with national IP offices, is organising workshops on the Legal Reform throughout Europe. Users will get information on the practice changes entering into force on 1st October 2017 as a result of the new Implementing and Delegated Regulations. Furthermore, users will learn about the impact of the changes on online tools.
The workshops will take place in Alicante, Brussels, Helsinki, London, Madrid, Milan, Munich, Paris, Rome, The Hague and Warsaw (click on chart above to go to the registration page).
In addition, there is a webinar on Changes to the Guidelines on 26th September.
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WEDNESDAY, 13 SEPTEMBER 2017
EU trade mark reform round 2: changes on 1st October
There are important changes affecting EU trade marks coming into force on 1st October. Members of the MARQUES European Trade Mark Law & Practice Team have been monitoring these changes and providing input on them. Chair Robert Guthrie and Vice-Chair Petra Goldenbaum provide a guide for Class 46 readers:
The EU Trade Mark Regulation was amended in March 2016, but a number of those amendments will only start to apply on 1st October 2017. On this date, a codified version of the EU Trade Mark Regulation will come into force, as well as two pieces of secondary legislation – an Implementing Regulation and a Delegated Regulation – which supplement the provisions of the EU Trade Mark Regulation and replace the existing Implementing Regulation.
The MARQUES European Trade Mark Law & Practice Team reviewed the EU Commission’s initial drafts of the Implementing Regulation and the Delegated Regulation and provided comments on the same. Copies of MARQUES’ comments are available on the EU Trade Mark Reform Task Force page of the MARQUES website.
What are the changes?
The codification of the EU Trade Mark Regulation means that many of the current Article numbers in the regulation will change. The two main substantive changes that will start to apply on 1st October 2017 are:
• The abolition of the requirement for trade marks to be represented graphically and the introduction (in the Implementing Regulation) of new representation requirements for different types of marks, eg sound marks must be represented by submitting an audio file reproducing the sound or by an accurate representation of the sound in musical notation.
• The creation of EU certification marks – which are marks that do not indicate trade origin but rather that goods or services have been certified by the proprietor as having certain characteristics.
There are also a large number of procedural changes. These include:
• Making acquired distinctiveness a subsidiary claim – which means that evidence of acquired distinctiveness will only have to be provided when a claim to inherent distinctiveness has been rejected and all grounds for appeal exhausted.
• Relaxation of some of the substantiation and translation requirements – in particular to allow a greater reliance on online databases such as TMView.
• Aligning the procedural rules for revocation and validity actions more closely with those for oppositions.
• Amending the procedural rules for appeals to the Boards of Appeal.
• Amending the rules on means of communication with the EUIPO.
• The imposition of more stringent rules on presenting evidence attached to submissions – including requirements to provide an index of the evidence relied upon.
• The abolition of the certification requirement for seniority claims.
• New rules on belated evidence of substantiation and proof of use.
The EUIPO has provided an explanation of the main changes on its website.
Many of the above changes will give rise to significant changes in the Office Guidelines and MARQUES’s European Trade Mark Law & Practice Team has reviewed these changes and provided comments and suggestions to the EUIPO.
What do trade mark owners and their advisors need to do?
Owners of some forms of non-traditional marks, such as sound marks, motion marks or position marks, may wish to consider whether to file new applications in accordance with the new representation requirements, as this might provide greater clarity as to the sign that is the subject of protection.
Those organisations who administer certification marks, which may already be protected as such at a national level, will also want to consider whether they should be protecting them as EU certification marks.
Trade mark owners and their advisors will also need to ensure that they are aware of and comply with the new procedural rules. The most likely area for error is probably around the more stringent rules on presenting evidence, especially as standard form submissions and evidence relied upon previously may no longer be compliant and will need to be changed.
Robert Guthrie is a partner of Osborne Clarke and chair of the MARQUES European Trade Mark Law and Practice Team. Petra Goldenbaum is counsel at CMS Hasche Sigle, Vice-Chair of the Team and head of the Trade Mark Reform Sub-Team
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