FAQs Changes applying as and from 1 October 2017
This Frequently Asked Questions section has been prepared based on questions already submitted by our users to our Information Centre.
The questions and answers on this page are divided into four sections: information and resources; elimination of the graphical representation requirement; certification marks; and procedural changes.
Users are invited to consult our main web section on the changes.
As and from 1 October, the trade mark Guidelines of the Office will be fully updated to reflect the changes that will apply as a result of the legislative reform process.
If you have further queries, or if you require more information about the changes that will apply as and from 1 October, please contact us.
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Information and resources
- Where can I find a summary of the main changes that will apply as and from 1 October 2017?
We have prepared a web section with information on the main changes (including procedural changes, the abolition of the graphical representation requirement and EU Certification marks) which can be accessed here. As and from 1 October 2017, our Guidelines for Examination, fully updated to reflect the changes, can be accessed.
- Where can I find the relevant legal texts?
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Elimination of the graphical representation requirement and types of mark - What is the practical impact of the elimination of the graphical representation requirement?
The abolition of the requirement of a graphic representation means that certain types of trade marks that can be represented in electronic format only (e.g. multimedia marks) are now acceptable. It also means that EUTMs that are non-visual (sound marks) or comprise moving images (movement marks) become easier to file by making use of electronic means of reproduction rather than having to rely on graphics. There are several requirements which the representation of an EUTM must still meet. The representation must be in a form that uses generally available technology that can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner. Furthermore, samples or specimens are not allowed.
So, for example, with regard to smells, if the state of the art ever allows smells to be filed by means ‘of generally available technology’, the category ‘other’ could be used for such marks. However, it is difficult to see this happening in the near future. Consequently, the elimination of graphic representation does not have a major impact for such applications.
- What are the new “types” of trade marks?
The EU trade mark Implementing Regulation (EUTMIR) lays down specific rules and requirements for the most popular types of trade marks which are:
TRADE MARK TYPES Word
Colour
(single and combination)Figurative
Sound
Shape
Motion
Position
Multimedia
Pattern
Hologram
Only one is brand new, the multimedia mark, which is defined as “a trade mark consisting of, or extending to, the combination of image and sound.” The other types of marks above include some that have existed as such (e.g. figurative and sound marks), some that previously came within the broader categories (e.g. pattern marks) and 3D marks are now called ‘shape marks’.
The types of trade marks, plus the technical requirements for filing them (the file formats), can be consulted on our website, and as and from 1 October, our e-filing tool is updated to reflect all the types of trade marks.
- Can I claim colour for a figurative mark?
No. As from 1 October 2017, EUIPO does not accept any trade mark description for figurative marks. Likewise, indications of colour will not be taken into account for figurative EUTMs and have no role to play in the EUTM application process. This is in line with the “what you see is what you get” character of the abolition of the graphical representation requirement, which aims to make the trade mark entries on the EUTM Register clearer, more accessible and easier to search for.
As some countries require an indication of colour in writing for the purposes of claiming priority, EUIPO will provide an optional field in the e-filing form where colours can be listed. This description will be visible in the EUTM application form so that users may use it in the countries in question but it will not be examined by the EUIPO nor will it be added to EUTM Register.
- Is the reference to a colour code for the representation of a colour mark (single or combination) obligatory?
Yes. From 1 October 2017, a trade mark consisting exclusively of a single colour or a combination of colours requires a reproduction of the colour and a reference to a generally recognised colour code, such as Pantone, Hex, RAL, RGB or CMYK.
- What role does the description play in colour combination marks?
A trade mark consisting of exclusively of a combination of colours (without contours) requires a reproduction of the colour combination that shows the systematic arrangement of the colour combination in a uniform and predetermined manner. A description detailing the systematic arrangement of the colours may also be added. This description must, however, accord with the representation and shall not extend its scope.
- How do I represent a sound mark after 1 October 2017?
There are two ways to do this; by means of an audio file reproducing the sound or by means of an accurate representation of the sound in musical notation. Other means of representation, including sonograms, the description of the sound in words or onomatopoeia, will not be accepted. Further details on the technical requirements when filing a sound mark application can be found here.
- Which types of mark require a description?
It is no longer obligatory to add a description to any type of trade mark. However, a description remains optional for the position mark, the pattern mark, the colour (combination) mark and the motion mark. It must accord with the representation and shall not extend its scope.
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EU Certification marks - What is an EU certification mark and who can register one?
The certification mark is a third kind of European Union trade mark newly established by the EUTMR, the others being the individual trade mark and the collective trade mark.
A certification mark indicates that goods and services comply with certain supervised quality standards set out in a document called “regulations governing the use” which must be filed with the mark.
The EU certification mark is open to any public or private entity complying with the regulations governing the use. Owners of this kind of mark must not, however, carry on a business involving the supply of goods or services of the kind certified by the mark and the owner must file a declaration that it complies with this requirement.
An EU certification mark costs EUR 1 500 when applied for online. More information on EU certification marks can be found in our dedicated web section.
- What is the difference between an EU collective mark and an EU certification mark?
The EU collective mark indicates that the goods or services protected by that mark originate from members of an association, and may only be used by them.
The EU certification mark, however, is open to any subject complying with the regulation governing its use.
The following table summarises the main differences between individual, collective and certification marks.
Certification
Collective
Individual
Formalities
Expressly applied for as such
Regulations of use
Expressly applied for as such
Regulations of use
If not applied for as certification/ collective
Entitlement
Natural persons
Legal persons
The applicant cannot carry on a business involving the supply of goods and services of the kind certified
Certain associations
Legal persons of public law (natural persons excluded)
Natural persons
Legal persons
Absolute Grounds Examination
Additional requirements
Geographic origin cannot be certified*
Additional requirements
7(1)(c) geographical origin exception
Article 7 in full
Use
Owned by proprietor
Used by certified companies and individuals
Owned by an association
Used by members
Normally owned and used by proprietor
Function
Distinguishes goods and services which are certified by proprietor from non-certified goods and services
Distinguishes goods and services of members’ association
Indication of commercial origin
Fees
EUR 1 500 (if applied for online) for the first class; EUR 50 for the second class and EUR 150 for each subsequent class
EUR 1500 (if applied for online) for the first class; EUR 50 for the second class and EUR 150 for each subsequent class
EUR 850 (if applied for online) for the first class; EUR 50 for the second class and EUR 150 for each subsequent class
* Pursuant to Article 83 EUTMR, an EU certification mark will not be capable of distinguishing goods or services certified in respect of the geographical origin
- When can I apply for an EU certification mark?
Applications can be made any time after 00:00 Central European Summer Time (CEST) on 1 October 2017.
- Can I convert a collective mark to a certification mark?
No. Neither the EUTMR nor the secondary legislation provide for the possibility of converting collective marks to certification marks, if the filing date of the collective mark is before 1 October 2017, therefore, the Office cannot accept any requests to change the kind of mark.
- Do you have any guidance on the requirements and processes for obtaining protection under an EU certification mark?
Article 17 of the EU trade mark Implementing Regulation sets out the content of regulations governing the use of EU certification marks.
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Procedural changes - How can I request that acquired distinctiveness be treated as a subsidiary claim?
Acquired distinctiveness as a subsidiary claim is new under Article 2(2) EUTMIR and has the aim of allowing an applicant to exhaust its right of appeal on “inherent distinctiveness” before being required to prove acquired distinctiveness. From 1 October 2017, this can be done either with the EUTM application, or, at the latest, in reply to the first objection. It cannot be done for the first time before the Boards of Appeal. An option on the efiling form allows applicants to mark acquired distinctiveness as a subsidiary claim.
- When should I file a priority claim?
On and after 1 October 2017, priority claims must be filed on the same date as the EUTM application. Where required, the documentation in support of the claim must be filed within three months of the filing date. Furthermore, if the supporting documentation is not in a language of the Office, it is now optional for the Office to request that it be translated. Applicants should also be aware that on and after 1 October 2017, priority claims are no longer examined in substance at the filing stage. At this point, the Office will only examine whether all formal requirements have been met, namely the number, date and country of the purported first filing, and the availability of official online sources to verify the priority data (or the submission of priority documents and translations).
The current requirement to file a copy of the relevant registration certified by the competent authority has been deleted and Article 6 EUTMIR now merely requires ‘a copy’ of the relevant registration to be submitted. However, under Article 39 EUTMR [ex Article 34 EUTMR], the Executive Director had already relaxed the requirements for the relevant documentation. Therefore, there are no material practice changes regarding seniorities.
- What online sources are accepted by the Office?
The Office recognises all of the databases of the national and regional EU IP offices. TMview is acceptable as a portal through which the national offices are accessed. For GIs, opponents and cancellation applicants can now rely on EU Databases (e.g. E-Bacchus, E-Spirits and E-Door). General references to such databases and sources are sufficient, and the use of a direct hyperlink is optional.
- Has the language regime of the Office changed?
No. An application for a European Union trade mark (EUTM) may still be filed in any of the official EU languages as a first language. Additionally, a second language must be indicated from among the five languages of the Office: English, French, German, Italian and Spanish. This language regime applies throughout the application and examination procedure until registration, except for oppositions and ancillary requests. An opposition or request for cancellation may be filed:
- At the discretion of the opponent/applicant for cancellation in the first or second language of the EUTM application if the first language is one of the five languages of the Office;
- In the second language if the first language is not an Office language.
- What are the new requirements and standards of translation?
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.
- How should I present evidence?
Evidence attached to submissions must be clearly identified, indexed and referenced. The new rules on annexes largely mirror the rules of the General Court (C.2., Schedule of Annexes and C.3., Annexes).
- How has communication with the Office changed?
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 so that it now covers fax and potentially many other types of media. The Executive Director shall determine to what extent and under which technical conditions those media may be used, and users will be informed about any changes in due course;
- Specific mention of ‘tele copier and other technical means’ of communication – which covers faxes – is removed from secondary legislation (but see the previous point on ‘electronic means)’;
- ‘Courier’ has been introduced specifically as a means of communication by and with the Office alongside communications by post.
- Can I still use fax?
- From 1 October 2017, along with the User Area (e-filing), fax falls within the definition of communication by ‘electronic means’, meaning that the discounted fee for EUTM applications and renewals by electronic means in Annex I EUTMR will apply to fax.
- From 1 January 2018, however, fax will no longer be accepted for filing EUTM applications or renewals except as a backup system if technical malfunctions prevent e-filing. In such a case applicants can secure a filing date by fax if: (i) for EUTM applications, they resubmit the same application by e-filing within three working days; (ii) for EUTM renewals, they submit the renewal application by fax no more than within the last three working days before the expiry of the initial or extended statutory time limit for renewal. This is set out in Decision No EX-17-4 of the Executive Director.