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EUTM reform – the sequel

Fans of the EU trade mark (EUTM) will all have enjoyed last year’s trade mark reform package, which starred the notorious Section 28(8) declarations. But did you know that the sequel is released on October 1 this year, and will feature changes affecting examination, oppositions and appeals?

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The trailer for “EUTM reform – the sequel” was adopted by the European Commission last Thursday, in the form of the Commission Implementing Regulation and Commission Delegated Regulation. These are due to be published officially by the end of July and will apply from October 1.

This so-called secondary legislation sets out the rules for the reforms that come into effect on that date, as Tomás Eichenberg of the European Commission explained in a session at the INTA Annual Meeting yesterday.

Of most immediate interest to trademark applicants will likely be the new rules on how to apply for non-traditional trademarks following the abolition of the graphical representation requirement. Eichenberg said the rules are designed to provide “flexibility” explaining: “You can still represent your trademark graphically.” EUIPO has provided guidance on formats that will be accepted (see illustration).

He added that the Delegated Regulation will promote consistency: “It will make office procedures more predictable.” Also on May 17, as part of a codification exercise, the Commission approved a final text for the EUTM Regulation, which comprises 212 articles. That text, which Eichenberg described as “an important new piece of legislation”, is expected to be published in the next few weeks.

The EUIPO is already working on a new version of its Guidelines, taking into account the changes coming in October, and a draft was published last week, as Michael Hawkins of Noerr explained. These address everything from the procedural changes to fee amounts, the renewal date and the filing of priority claims through to the written evidence requirements and the new EU certification mark. An important change, said Hawkins, is that acquired distinctiveness through use may be invoked as a subsidiary claim. “That will hopefully allow the case to be heard first on inherent distinctiveness and if that doesn’t succeed then on acquired distinctiveness,” he said.

There are also important reforms to opposition, cancellation and appeal proceedings, said Hawkins: “There are some interesting changes at all levels of the Office.”

If all that does not sate your appetite for trademark reform, then András Jókutí of the Hungarian IP Office previewed the next instalment, which will see national offices implementing the changes required by the EU Trade Mark Directive over the next few years.

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