News & Publications
REFORM OF BRAND SYSTEMS IN EUROPE
REFORM OF BRAND SYSTEMS IN EUROPE
Concerned about the news and in order to take the lead to better meet the requirements of its clients, Cabinet LECOMTE & PARTNERS participated in the conference of Hugues Barème, Deputy Director of the BOIP, organized by the Luxembourg Chamber of Commerce on the theme of "Reforming Trademark Systems in Europe". Indeed, the modernization of the EU Trademark Regulation has reached a new phase with new measures in force since October 1st, 2017. Those measures are focused on three main axes: the graphic representation, the EU certification trademark and some procedural changes. As for the measures within the European Union Directive, they will be subject to a transposition into national law, at the latest on January 14th, 2019. Here are the main poles of this reform.
Since October 1st, 2017, the graphic representation requirement for a sign is no longer in effect and is replaced by a representation that is "clear, precise, distinct, easily accessible, intelligible, durable and objective".
This modification responds to the saying "what we see is what we get" or "WYSIWYG".
Holograms trademarks, the Graphics Interchange Format (better known by the acronym GIF) will be therefore more easily filed including the acceptance of non-JPEG format, such as MP4, MP3, X3D. Thus, a link to the publicly accessible electronic file in the Office's register is now recognized as a valid form of presentation for the purposes of the publication and issue of registration certificates.
Another change relating to the filing of a trademark is that the principle of specialty is not only confirmed, but is even hardened since there is now an obligation of precision.
THE EU CERTIFICATION MARK
The certification trademark is established at the European level and its purpose is to indicate that the goods or services designated by the mark comply with the certification criteria of an institute or a certification body. It is thus distinguished from the collective mark because it designates a certain quality of products and services.
The applicant will have to include in his application a declaration that his filing relates to a certification mark. The fees for a certification mark application are 1,500 euros if the application is made electronically.
Geographical location certifications are excluded.
First of all, the ways of communication with the European Office such as delivery by hand and deposit in a postal box at the Office are no longer available. The use of fax is still possible for some procedures but tends to disappear little by little. Consequently, and in order to adapt to today's ways of communication, Internet is the most preferably used, particularly via the Users Area.
Other changes that will take place are: the priority claim must now be filed at the time of the trademark application, the necessary documents must be filed within 3 months from the date of filing and no longer after the receipt of the declaration of priority. Translation of documents is now optional. This last point is explained because the priority claim is no longer a substantive condition. However, it can always be raised by the opposing party during a dispute.
Likewise, with the exception of certificates of deposit, registration and renewal, all other evidentiary documents will no longer necessarily have to be translated unless requested by the Office or the other party.