Jana Bogatz of the European Trade Mark Law and Practice Team discusses the recent EUIPO decision to abolish fax communication for EUTM and RCD procedures.

Earlier this month, the EUIPO’s Executive Director announced by Decision No EX-20-9 the abolition of the fax transmission option as of 1 March 2021.

The abolition as such seemed to have been only a matter of time and inevitable in today’s digital world, in light of EUIPO’s commitment to sustainable business operations, and given that in recent times fax communication has proven to not necessarily still be a smooth, effective and efficient means.

Even so, users of EUIPO trade mark and design protection systems have raised concern about this decision. Without fax, the accessibility to procedures by some categories of less experienced users might become restricted. In addition, not everything of the daily operations before EUIPO can really be dealt with fully electronically, at this moment.

A reconsideration of the actual benefits that would justify still keeping fax among the means of communication with EUIPO might be needed. In the hope that this might happen, readers may wish to familiarise themselves with the following EUIPO instructions.

Default electronic means of communication

As of 1 March 2021, the EUIPO’s User Area will play an even more important and central role. The EUIPO itself will issue notifications by electronic means exclusively via the User Area; there is no opting out option available. Notification is deemed to have taken place on the fifth calendar day following the day on which the notification was placed in the user’s inbox.

Only if electronic means are impossible for technical reasons will the notification from the EUIPO be via post or courier.

Users will also have to communicate with the EUIPO through the User Area alone. In most cases, users are already submitting applications and other communications via uploads to the EUIPO system, and they are familiar with the concept that the time of issuance of the electronic receipt from the EUIPO’s system is considered to be the time of submission of such documents.

For EUTM applications with long specifications of goods or services, which require more space than permitted in the application form, a separate document will now have to be submitted (in an annex, or filed subsequently), triggering corresponding fees for an application not filed by electronic means.

Back-up options

But what happens if the specific e-operation or e-filing tool in the EUIPO’s User Area is not available for any reason? The EUIPO will have a cascade of two different back-up systems in place:

(a) An upload solution: located in the Communications section of the User Area, this is a general upload platform for documents to be sent to the EUIPO in case there is (whether permanently or temporarily due to malfunctions) no specific e-operation facility available in the User Area.

(b) A file-sharing solution outside the User Area: upon request, the EUIPO Information Centre will provide users with access to a secure file-sharing location for document upload as an ultima ratio measure (in case all other methods of communication in the User Area fail).

As ever, however, the devil is in the detail…

Submissions made via back-up solutions (a) or (b) above will be deemed to have arrived at the EUIPO on the upload date. However, in the case of EUTM or RCD applications for registration, the user can only secure the filing date if the application is re-submitted via the default User Area channel within three working days; otherwise it will be deemed never to have been received.

By contrast, in the case of EUTM or RCD renewal requests, the user can only secure the renewal filing date if the request is submitted within the last three working days before the expiry of the renewal (grace) period.

There does not yet seem to be a back-up solution in place if the User Area is unavailable and users have to rely on the ultima ratio external file-sharing solution outside the normal business hours of the EUIPO Information Centre (currently Monday to Friday between 8:30 am and 6:30 pm Spanish time).

Jana Bogatz is a Partner at D Young in Munich and a member of the MARQUES European Trade Mark Law and Practice Team