3 Changes to the EU Trade Mark Regime: What Applicants Need to Know

Changes to the Regulation on the EU Trade Mark came into effect on 1 October, 2017 that alter the process of registering trade marks. These changes aim to harmonize trade mark practices across the European Union while increasing legal certainty and clarity for trade mark applicants. In particular, applicants should note three key changes that may provide them greater ease and flexibility, among other potential benefits.

1. Graphical representation in applications for trade marks are no longer required. Applicants can now choose the best way to represent the goods and services that they are applying to trade mark. This change aims to:
   – Simplify the application process for trade mark users
   – Reduce the number of rejected trade mark applications
   – Facilitate the registration of unusual marks, such as sounds and smells
2. A certification mark is now available at the EU level. Previously, certification marks existed only at the national level. The EU-certification mark certifies specific characteristics of goods and services and indicates compliance with the applicable regulation standards. The introduction of the EU-certification mark provides an additional option for trade mark applicants. For more details, please see “New EU-Certification Mark Added to IP Armory”
3. Several new procedural rules apply to applicants. In particular, applicants should be aware that they:

Must file priority claims alongside an EU trade mark application.
Applicants must then file supporting documentation for the application within three months of the application filing date

May claim acquired distinctiveness either at the start of an application or after a decision on the inherent distintiveness has been made.

Can use assignment as an alternative remedy to invalidating a trade mark.
A mark’s proprietor can now apply for an assignment along with an invalidation request when the agent or representative applies for registration of a mark in its own name, without the mark’s proprietor’s authorisation.

These changes will modernise the trade mark regime across the European Union and could lead to an increase in applications for “non-traditional” trade marks. Latham will continue to provide updates on developments related to how the current EU system integrates these new provisions.

This post was prepared with the assistance of Caroline Omotayo in the London office of Latham & Watkins.