Home / Publications / New Regulations concerning the European Union Trade...

New Regulations concerning the European Union Trade Mark

Meet The Law

11/8/2017

The Commission Implementing Regulation (EU) 2017/1431 of 18 May 2017 laying down detailed rules for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark, andCommission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96, were published in the Official Journal of the European Union L 205 dated 8th August, 2017.

Commission Implementing Regulation (EU) 2017/1431 of 18 May 2017 introduces a number of specific rules concerning the filing of trade mark applications.

Regulation (EC) No 207/2009 no longer requires the representation of a mark to be graphic, as long as it enables the competent authorities and the public to determine with clarity and precision the subject matter of protection. It is therefore necessary to establish rules concerning the filing of non-traditional trademarks, like for example sound or scent marks.

Therefore, and in order to assure legal certainty, it is determined that the precise subject matter of the exclusive right conferred by the registration is defined by the representation, which, where appropriate, should be complemented by an indication of the type of the mark concerned, and in certain cases by a description of the sign.

In this context, general principles to which the representation of every mark must conform are established, as well as specific rules and requirements for the representation of certain types of trade mark, in accordance with the trade mark's specific nature and attributes.

Having in mind that certain types of trade marks can be represented in electronic format, as their publication using conventional means is no longer suitable, it is provided that the access to the representation of the trade mark by way of a link to the Office's electronic register should be recognized as a valid form of representation of the sign for publication purposes.

For the same reasons the Office shall issue certificates of registration in which the reproduction of the trade mark is substituted by an electronic link.

For its part, Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 envisages to essentially establish mechanisms to assure clarity and legal certainty within the procedures running before the Office.

It is the case of the procedural rules on opposition, which should ensure an effective and efficient and expeditious examination and registration of EU trade mark applications by the Office using a transparent, thorough, fair and equitable procedure.

With the same purpose, the procedural rules governing the revocation and declaration of invalidity of an EU trade mark should be aligned with those applicable to opposition proceedings, retaining only those differences which are required due to the specific nature of revocation and declaration of invalidity proceedings.

Identical attention is given to the amendment of an application for an EU trade mark.

This regulation lays down rules specifying the formal content of a notice of appeal and the procedure for the filing and the examination of an appeal, the formal content and form of the Boards of Appeal's decisions and the reimbursement of the appeal fee, the details concerning the organization of the Boards of Appeal, and the conditions under which decisions on appeals are to be taken by a single member, as well as detailed arrangements for oral proceedings and for the taking of evidence, detailed arrangements for notification by the Office and the rules on the means of communication with the Office, or the details regarding the calculation and duration of time limits.

Both Regulations entered into force on the past 9th August, 2017 and shall apply from the 1st of October, 2017,

Authors

Picture of Jose Luis Arnaut
José Luís Arnaut
Managing Partner
Lisbon
Picture of João Paulo Mioludo
João Paulo Mioludo
Senior Associate
Lisbon