From 1 October, significant changes to the EU trade mark regime will open up a number of opportunities for brand owners to obtain protection for new types of marks, including multimedia and certification marks. The changes follow the reforms to the EUTM that took effect in March 2016, and include a number of substantive and procedural revisions.
Marks will no longer require graphic representation
It will be possible to apply for EU trade marks without any graphical representation. This means that trade marks which can only be represented electronically may be accepted (e.g. multimedia marks) and that non-visual marks (e.g. sound marks) will be easier to file. All marks will still be subject to the usual examination of whether they are distinctive in relation to the relevant goods and services.
Whilst the graphical representation requirement will go, and marks can be represented in any appropriate form using generally available technology, they must be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner which enables the public to identify what is protected with clarity and precision.
The new non-exhaustive list of available types of mark includes:
- Word marks – as previously, word marks will be shown in standard script without graphic features.
- Figurative marks – also known as logo or device marks. A change here is that colours no longer have to be specified when filing an application.
- Shape marks – 3D marks including containers and packaging. These marks can also include word or figurative elements.
- Position marks – marks consisting of the specific way in which a mark is placed on a product.
- Pattern marks – marks consisting exclusively of a set of elements which are repeated regularly.
- Colour marks – a change here is a requirement to refer to a generally recognised colour code (e.g. Pantone).
- Sound marks – it will now be possible to submit an audio file (or, as previously, musical notation).
- Motion marks – marks consisting of a movement or a change in the position of the elements of the mark. An example would be Sony's registration for a red ribbon of liquid turning into the Sony Ericsson logo.
- Multimedia marks – marks consisting of the combination of image and sound.
- Hologram marks – marks consisting of elements with holographic characteristics.
- Other marks – given advances in technology and branding practices, the list of marks includes an 'other' category, provided there is suitable technology to represent such marks. One example of an 'other' mark would be Apple's application to register its store layout. Smells or taste marks would also be categorised as 'other' marks – for now they are likely to remain unregistrable, but this may change in the future if there is suitable technology to represent such marks.
New EU certification mark
It will be possible to apply for an EU certification mark (some Member States already provide for national certification marks). A certification mark is one filed with a set of quality standards which govern use of the mark. It indicates that goods and services provided under the mark comply with those standards e.g. the Fairtrade mark or the British Kite mark.
Any public or private entity can apply for a certification mark as long as they do not have a business which supplies the kinds of goods and services certified by the mark. Certification marks cannot be filed in relation to certification concerning a geographic location.
A certification mark differs from a collective mark – which is already available as an EU mark – in that a collective mark indicates goods or services provided by members of an association.
Procedural changes
The reforms also bring in some useful procedural changes. For example, applicants will be able to claim a mark has acquired distinctiveness – i.e. through extensive use of the mark – as an alternative claim to inherent distinctiveness. This will allow appeals on inherent distinctiveness to be exhausted before having to incur the expense of preparing evidence of acquired distinctiveness.