Trade marks
Terminology
Most saliently, all references to
“Community” have been replaced with
“European Union”. For example, the
Community Trade Mark has become
the European Union Trade Mark
(EUTM), and the European trade marks
registry, previously known as OHIM, is
now the European Union Intellectual
Property Office (EUIPO).
Graphical representation -
music, sounds and smells
Under the new law, trade marks
must “be represented on the register
in a manner which enables the
competent authorities and the public
to determine the precise subject
matter afforded to its proprietor”. This
replaces the requirement for a trade
mark to be represented “graphically”.
Where before a musical score was
deemed an appropriate graphical
representation of a music mark, the
Office will now accept a digital sound
file. The same applies to motion
marks, where a video file may now be
submitted. While some non-traditional
marks, such as smell marks, will
continue to be problematic under
the new wording, the path has been
cleared for greater registration of
sound and moving images as trade
marks.
Certification trade marks
From 24 September 2017, a new
category of European intellectual
property protection will be available, in
the form of certification trade marks.
A certification mark is designed for use
by authorised entities, and, rather than
identifying goods as those of a single
entity, it guarantees to the relevant
public that the goods or services
possess a particular characteristic,
such as a level of quality, a mode of
manufacture of goods or performance
of services, or that they are made from
a particular material.
For example, the well-known marks
and are examples of
certification marks. Certification marks
are already available in the United
Kingdom, but new applicants will soon
be able to enjoy protection throughout
the EU.
Classification of goods and
services
Where an EU trade mark application
was filed before 22 June 2012 and
specifies a “class heading” in its
entirety, and where the literal meaning
of the terms used in the class heading
would not cover the goods or services
required, the trade mark owner may
file an amendment, which allows
him to specify the exact terms he
intended to protect. These will then
be protected in addition to the literal
interpretation of the class heading
terms. The deadline for making these
amendments is
24 September 2016
.
If you have any concerns on this point
please contact your usual trade mark
attorney.
EU trade mark law reform
A new European Union Trade Mark Directive entered into force on 23 March
2016, introducing significant changes to the EU trade mark framework.
To find out more
contact Martha Murray
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