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New EU Trade Mark Regulation

The codified version of the Regulation (EU) 2015/2424 will apply as and from 1 October 2017 23 August 2017

Regulation (EU) 2017/1001, to come into force on 1 October 2017, is a codified version of the European Union Trademark Regulation that includes the changes introduced by Regulation (EU) 2015/2424, which entered into force on 23 March 2016, as part of the “European Union trademark reform package”.

The changes include the graphic representation as optional for EU trademark applications and the introduction of Certification Marks as well as of a number of procedural rules, either new or amended.

Herein will be examined the two main changes regarding the introduction of Certification Mark and the procedural changes.

Download our leaflet “New EU Trade Mark Regulation”

As and from 1 of October 2017, it will become possible to apply this new kind of European Union trade mark.

New EU Trade Mark Regulation

Certification Marks

Definition
The European Union Certification Mark is a trade mark capable of guaranteeing some specific characteristics of goods and services (including “material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics”), which are certified by the proprietor of the mark, and therefore distinguishing the same from those goods and services which have not been so certified.
Certification Marks indicate the compliance of the goods and services bearing them with fixed standards defined by the regulations of use and controlled under the responsibility of the Certification Mark owner.
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.
According to the mentioned EU Certification Marks’ aim as sign of guarantee, an application for the same shall be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a Certification Mark.

Requirements for applying
The Applicant for a Certification Mark will need to include a statement declaring the intention to apply for a European Certification Mark together with the list of goods and services that will be certified by the owner of the mark.
Moreover, the Applicant will be required to submit regulations governing its use, within two months from the filing of the application.
The regulations must specify:

  • The persons authorised to use the mark;
  • The characteristics of goods and services to be certified by the mark;
  • How the certifying body will test those characteristics and supervise the use of the mark;
  • The conditions of the use of the Certification Mark, including sanctions.

Where the regulations governing use are contrary to “ordre public” or EU moral principles, the application for a EU Certification Mark shall be refused.

Limitations
Firstly, Certification Marks can only be owned by a natural or legal person, including institutions or organisations, responsible for certifying and monitoring the qualities or characteristics of the products or services.
This means that the mark owner cannot be involved in any way with a business of production and supply of the goods and services certified and must therefore remain objective third party with respect to the same.

Secondly, Certification Marks can certify the nature of the goods or services for which they are used, but not the geographical origin of a product.

Official Fees
The cost for a Certification Mark application is of EUR 1,500.

Procedural Changes

As and from 1 of October 2017, a number of procedural changes apply aiming to streamline proceedings and increase legal certainty. The same and the related instructions will be embodied in the revised EUIPO Guidelines.
A concise indication of the main changes is provided here below.

Priority
The Applicant who wishes to claim priority of an earlier right must file priority claims simultaneously with the EUTM application and the related documentation in support of priority claims shall be submitted within three months of the filing date.
In the circumstance that the documentations in support of the claims were not in one of the languages of the Office, it will now be optional for the latter to request the translation of the same.
Lastly, the priority claim will not be examined in substance by the Office, but it will be evaluated only if it is relied upon and it is necessary to validate it in proceedings.

Before 1 October 2017 Starting from 1 October 2017
Time of filing Possible late filing (up to two months after the EUTM application date) Must be done together with the EUTM application.
Documentations Must be filed within three months from receipt of the declaration of priority;
If not filed in one of the language of the Office, a translation should be attached.
Must be filed within three months of the filing date;
If not filed in one of the language of the Office, it is optional the request for translation
Examination Priority claims examined in substance ‘Mere’ claim until relied upon.

Acquired distinctiveness as a subsidiary claim
Acquired distinctiveness can now be invoked by the Applicant, either at the start of the application process or later, also as a subsidiary claim, which will become effective only in the circumstance of a negative final decision on inherent distinctiveness. 
In this way, the Applicant will have to provide proofs of acquired distinctiveness only after having exhausted its right of appeal on inherent distinctiveness, without incurring in unnecessary costs.

Opposition/cancellation proceedings
Cancellation and oppositions proceedings’ provisions are mainly aligned, unless when differences are inherent in their specific nature.
The requirements of admissibility and substantiation of the mentioned actions (Article 8 European Union Trade Mark Regulation) have been reformulated in a new order, making clearer the separate ground of geographic indication (para. 6).
The Delegated Regulation introduces framework rules on belated evidence and codifies Office practice on suspension of surrenders and the closure/continuation of pending revocation or invalidity proceedings.

Languages and translation
The certificates of filing, registration and renewal or provisions of relevant law must be submitted in the language of proceedings within the deadline fixed for the substantiation.
All the other evidence of substantiation, such as evidence of acquired distinctiveness or reputation, can be presented in any of the EU languages. The Office, both on its own action or upon justified request by the other party, might require a translation only in the circumstances in which there is a discrepancy with the language of the proceedings.
In addition, the ‘standard of translation’ has been reconsidered in order to foresee the possibility of limiting the translation to those sections of the document stated as relevant by a party.

Boards of Appeal
The Delegated Regulation consolidates provisions relating to the Boards of Appeal previously embodied in different sources: the statement of grounds and of the response, ‘cross appeals’, claims raised and facts or evidence filed for the first time before the Board of Appeal, new absolute grounds raised by the Board of Appeal, expedited proceedings and the organisation and structure of the Boards of Appeal.

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