New EUTM regulation applies from 1 October 2017
In March 2016, The European Parliament’s and the Council’s changes of the earlier European trademark tegulation came into force, which - among other things - resulted in the change of name for OHIM (Office of Harmonization in the Internal Market) to EUIPO (European Union Intellectual Property Office). In addition, the trademark fee system was modified, since applicants went from paying a basic fee including a maximum of three Nice classes to paying one fee for each individual Nice class.
From 1 October 2017, another string of changes of the trademark regulation will come into force, and the previous regulation will be replaced entirely by the new. The idea is to create a more similar trademark system and ensure due process for European trademark owners.
The purpose of the changes
Briefly stated, the EU trademark regulation has been updated to adjust the common European trademark system. The mentioned changes have been discussed for a long time, and they are the culmination of a process started back in 2008, where the European Commission made an evaluation of the European trademark system. The purpose of the changes, both the previous changes and the ones that will take effect from 1 October 2017, is to build on the European Trademark system by making it more effective, available and homogeneous, and by adjusting it to the internet era.
These things have been attempted by making adjustments on both the materiel, the administrative and the procedural substances of the trademark protection.
Below, we give you an overview of some of the important changes from 1 October 2017, which will have a significant impact on both national level and on a common European level. You can read our article about the previous changes here.
A few of the most important changes
Graphical representation no longer a requirement
Up until now, obtaining protection of a trademark required the applicant to file a graphical representation of the mark, in order to make it possible to identify the mark sufficiently and prove the object of protection. This requirement has made it difficult to register non-graphical marks such as sounds, movements, tastes and smells.
With the new regulation, a freshly filed trademark application no longer requires a graphical representation of the mark - instead, it will be permitted to represent the trademark in any other available way, as long as it is possible for the authorities to clarify the precision of the mark. Some criteria should, however, still be fulfilled; the mark must be clear, precise, independent, easy available, understandable, permanent and objective.
The EUIPO has not yet decided what kind of non-graphical medias and formats will be permitted to register a trademark, but will decide on the matter before October, where the regulation comes into force.
From 1 October 2017, besides the regular trademark, a new type of trademark will be introduced - the EU-certification mark. This type of trademark aims at the characteristics of the goods and services, and it indicates that goods and services with this kind of mark fulfil a certain standard.
The interesting thing about this type of trademark is that the owner of the mark will not necessarily be the ones using the mark, but instead a public body or a private entity, whose members will be able to use the certification mark and thereby indicate that their goods or services fulfil the requirements to make use of the mark. The owner of the mark is then required to examine the goods and services, for which the certification mark is used, and must make sure that the requirements for using the mark are fulfilled by the members.
The general purpose of the EU-certification mark is to give consumers a way of easily assessing goods and services by their manufacturing method, selection of material, quality etc. A similar system is already known to the Danish consumers, as Danish trademark owners have been able to use collective marks such as “Dansk Fisk” (in English: “Danish Fish”) and “Anbefalet af Dyrenes Beskyttelse” (in English: “Recommended by the Association for Protection of Animals”) for a while.
The basic fee for a certification mark filed by electronic means is currently set to EUR 1.500.
The implementation of the new trademark regulation has been a long time coming, but with the changes mentioned above we’re close to the end. There’s still a few pieces to fit in the puzzle, but – hopefully – this will have been sorted out by the end of next month.
If you’re unsure of the consequences of the new regulation for your trademark, or you have questions in general about trademark protection, feel free to contact us.