Procedural changes

Overview

Priority claims must be filed together with the EUTM application (before, such claims could be made subsequent to filing the application). The documentation in support of the claim must be filed within three months of the filing date (previously within three months from receipt of the declaration of priority). If the latter documentation is not in a language of the Office, it is now optional for the Office to request a translation of such documentation.

A further change in the practice of the Office is that the priority claim is no longer examined in substance. It remains as a ‘mere’ claim until it is relied upon and it is necessary to validate it in proceedings.

Overview

Applicants will have the possibility of invoking Article 7(3) as a subsidiary or alternative claim, either at the start of the application process or later. The advantage to of a subsidiary claim is that it only crystallises if there is a negative final decision on inherent distinctiveness. This allows the applicant to exhaust its right of appeal on inherent distinctiveness before it is required to prove acquired distinctiveness. This will mean that users do not need to incur the expense of gathering and presenting evidence of use unless it is necessary.

Overview

The requirements of admissibility and substantiation for relative grounds’ actions have been reordered for clarity and to take into account the separate ground on geographic indications introduced by Article 8(6) EUTMR. Provisions applicable to cancellation proceedings are aligned with opposition proceedings except where differences are justified by their different nature. The EUTMDR introduces framework rules on belated evidence and codifies Office practice on suspension of surrenders and the closure/continuation of pending revocation or invalidity proceedings.

Overview

A clear example of adapting to the internet era is where evidence that concerns earlier rights that are ‘registered’ (e.g. registered trade marks, certain signs used in the course of trade or geographical indications), or the contents of relevant national law, is accessible from an online source recognised by the Office, the opponent or cancellation applicant may provide such evidence by making reference to that source .

For this purpose, the Office ‘recognises’ all of the databases of the national and regional EU IP offices, and TMview is acceptable as a portal through which the national offices may be ‘accessed’.

Overview

As and from 1 October 2017, most types of evidence can continue to be filed in any official language of the EU. Where the language used for evidence of substantiation (except certificates of filing, registration and renewal or provisions of relevant law) is not the language of the proceedings, a translation will now be required only where requested by the Office – of its own motion or upon reasoned request by the other party. Evidence of acquired distinctiveness or reputation would fall within this category.

However, evidence of substantiation (certificates of filing, registration and renewal or provisions of relevant law) must still be submitted in the language of the proceedings (or translated into this language) within the time limit set for substantiation.

Furthermore, the ‘standard of translation’ under Article 25 EUTMIR is less demanding than previously. Where a party has indicated that only parts of the document are relevant, the translation may be limited to those parts.

These changes bring real benefits to users of the EUTM system. They facilitate economy, simplification and lower costs all round.

Overview

Where an agent or representative registers an EUTM without the proprietor’s authorisation, the proprietor is now entitled to demand the assignment of the EUTM (unless said agent or representative justifies his or her actions). Previously, the remedy for the proprietor under the EUTMR was to invalidate the EUTM.

This new assignment process under Article 21(2)(a) of the EUTMR will follow the same procedural path as invalidity proceedings based on Article 60 EUTMR. For actions commencing on or after 1 October 2017, assignment will be an alternative remedy to invalidating a trade mark. For such actions, the invalidity applicant can join the request for assignment with a request for invalidation on other grounds in the same invalidity action. In such cases, the Office will examine the request for assignment first (except where there is a valid absolute ground for invalidity under Article 59(1)(a) EUTMR, in which case that ground will be examined first).

Overview

The means of communication by and with the Office have been changed to take account of developments in information technology. In particular:

• Obsolete forms of communication have been removed, namely, hand delivery and deposit in a post box at the Office;
• ‘Electronic means’ is defined broadly. Decision No EX-17-4 of the Executive Director concerning communication by electronic means, determines to what extent and under which technical conditions those media may be used.
• Courier’ has been introduced specifically as a means of communication by and with the Office alongside communications by post.
• The entry into force of the Decision of the Executive Director No EX 20 9 brought an important change to the Office’s official means of communication. Fax is no longer a means to communicate with the EUIPO from 1 March 2021. The decision has been driven by the fact that fax is no longer reliable from a technical point of view, and the aim to provide state-of-the-art communication tools to our users.

Overview

The EUTMDR consolidates provisions relating to the Boards of Appeal that were previously spread across various sources including Commission Regulation (EC) No 216/96 (Rules of Procedure of the Boards of Appeal). The principal clarifications and changes relate to the content of 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.

Overview

Both the EUTMIR and the EUTMDR apply from 1 October 2017. However, specific provisions continue to apply to certain proceedings that had been initiated before that date until the conclusion of those proceedings. Consequently both Regulations contain detailed transitional provisions that set out when the new procedural rules apply to proceedings. As a rule, both Regulations apply to ongoing proceedings from 1 October 2017 unless otherwise provided. Find all the transitional provisions on this table.

The following summary may be of particular interest: