Robert Guthrie, Chair of the MARQUES European Trade Mark Law and Practice Team, brings news of a Common Communication on the representation of new types of trade marks:

A Common Communication on the representation of new types of marks was published by the European Trade Mark & Design Network on 4 December.

The Common Communication sets out how each national office, the Benelux Office and the EUIPO plan to implement the removal of the graphic representation requirement from EU trade mark law and in particular what new types of marks and what electronic file formats they plan to accept.

As most Member States have not yet finalised their national legislation through which the new Trade Mark Directive will be implemented the Communication itself points out that it:

serves merely as a compilation to inform about the understanding reached among the Member States IPOs and has no legally binding effect on the national legislative procedure of the Member States. Nor shall it be read and interpreted as containing specific undertakings by Member States that would limit their freedom to make their own choices within the framework of the provisions of the new Trade Mark Directive.

MARQUES understands that one of the key drivers behind the preparation and adoption of the Common Communication is to try and ensure that the implementation of the removal of the graphic representation requirement is harmonised, as much as possible, with the approach already adopted in the EUTM Implementing Regulation and by the EUIPO.

MARQUES is supportive of this aim, so that brand owners can apply and register the same types of marks using the same electronic file formats across the EU.

MARQUES members and other interested readers might like to note the following aspects of the Common Communication:

• The intention is that it is updated regularly, as the positions of the national offices advance, with the first update scheduled for 1 June 2018.
• Almost all national offices (and the Benelux Office) have indicated that they intend to follow the definitions for the various types of marks that are set out in Article 3 of the EUTM Implementing Regulation – Word, Figurative, Shape, Position, Pattern, Colour, Sound, Motion, Multimedia, Hologram and Other – and accept all of these types of marks. The only exceptions are Denmark (which has not confirmed its position) and the UK (which has indicated that it will accept such marks but that it regards trade mark type as an aid to administration and does not seek to define types per se).
• Almost all national offices have indicated that they will accept (at least) the following electronic file formats: Sound (JPEG, MP3), Motion (JPEG, MP4), Multimedia (MP4), Hologram (JPEG, MP4). The exceptions are Denmark, the UK and Slovakia (which have not confirmed their position). Several offices have indicated that they will also accept other electronic file formats.

Robert Guthrie is a partner of Osborne Clarke in London and chairs the MARQUES ETMLP Team.