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an evaluation of the EU trademark system by the EU commission the EU trademark
texts have been amended. These amendments cover the Trade mark Directive (TMD)
and the European Union Trade mark Regulation (EUTMR). Member States have up
until 14 January 2019 to transpose the relevant provisions of the Trade mark
directive however the changes brought about through the EUTMR are already in
force with the latest batch of amendments coming into force on 1st
October 2017.


most noteworthy amendments include:

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New terminology which has been in force since 2016, and has changed the
Community Trade Mark (CTM), Community Trade Mark Regulation (CTMR) and Office
for Harmonization in the Internal Market (OHIM) to European Union Trade Mark
(EUTM), European Union Trade Mark Regulation (EUTMR) and European Union
Intellectual Property Office (EUIPO) respectively.


Non-Graphical representations: Article
4 of the regulation has removed the graphical representation requirement
resulting in the following text:


trademark may consist of any signs, in particular words, including personal
names, or designs, letters, numerals, colors, the shape of goods or of the
packaging of goods, or sounds, provided that such signs are capable of:


the goods or services of one undertaking from those of other undertakings;
represented on the register in a manner which enables the competent
authorities and the public to determine the clear and precise subject
matter of the protection afforded to its proprietor.”


opens up new avenues for trademark registrations which should not be confined to just the traditional word
mark or figurative logo format, at least for registrations at EUTM level, (the
provisions of the local Chapter 416 are still to be amended to reflect the
directive’s provisions). This follows a
codification excerise of previous CJEU case law known as the Sieckmann criteria
which held that trade mark representations should be: “clear, precise,
self-contained, easily accessible, intellgibile, durable and objective. The new
system is reffered to by the EUIPO as a what you see is what you get system
which is meant to facilitate searches on the EUTM register and increase legal certainty
for its users. Naturally the EUIPO register and search tools are expected to
adapt and improve following the possiblity of new registrations.


Applicants should also be interested to note that multimedia trade marks
can now be filed through a simple upload of an mp4 file with no description
required which should further expand the avenues of registration for dynamic
and animated signs.


Trade mark classification of Goods and
The IP translator case has also been
incorporated in EUTMR’s article 28 which means that the wording of the relevant
trade mark classes of goods and services are to be interpreted literally. The
class headings of the Nice Classification system must still be used however
these have to correspond to the requirement under Article 28(2) and 28(3):


(2) The
goods and services for which the protection of the trade mark is sought shall
be identified by the applicant with
sufficient clarity and precision to enable the competent authorities and
economic operators, on that sole basis, to determine the extent of the
protection sought.


For the purposes of paragraph 2, the general indications included in the class
headings of the Nice Classification or other general terms may be used,
provided that they comply with the requisite standards of clarity and precision
set out in this Article.


have to ensure that the goods and services they claim are now specifically
worded to their particular subject matter, this may involve a more detailed
inspection of the particular use in the course of trade requirement and the
specific activities for which the applied for trade mark is put to use. You can
get in touch with us to ensure your trade mark registration and consequently
your brand is protected in the best possible manner through an accurate draft
of the goods and services specifications.


Absolute Grounds of Refusal: The
wording of Article 7(1)(e) has been amended to reflect a wider exclusion
following the removal of the graphical representation requirement in Article 4.
Article 7(1)(e) now reads as follows:


signs which consist exclusively of:


the shape, or another characteristic,
which results from the nature of the goods themselves;

the shape, or another characteristic,
of goods which is necessary to obtain a technical result;

the shape, or another characteristic,
which gives substantial value to the goods;


new addition of the term characteristic further widens the scope of the
exclusion under Article 7 which may pose an additional difficulty to the
registration of non-traditional marks which may be seen to have been
facilitated on face value through the removal of the graphical representation
requirement. Possible registrations of colour marks, combination marks and even
smell marks may be negatively affected with the introduction of “another
characteristic” wording exclusion and urgent CJEU interpretation on this point
is required. Such registration may
not be able to show their sign is distinctive if the feature for which
protection is being sought can be classified as being essential to the product
itself and may not even reach the distintive stage since the marks will be
rejected on absolute grounds. Until further clarification on this point,
potential applicants interested in registering a non-traditional mark should
choose to register such signs in combination with other elements which are not
excluded under Article 7(1)(e).

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