Preparing for 23 March and the European Union Trade Mark

This name will disappear on 23 March 2016 so are we ready for the change? The page that the soon to be European Union Intellectual Property Office has created is here.

Although there is a new Harmonisation Directive the approach taken for our favourite CTMR 207/2009 is that it is amended so we need a consolidated version. I haven't found one yet. Will we still call it CTMR for old time's sake?

The simple things we need to do is change the name of OHIM  which becomes European Union Intellectual Property Office and community trade mark becomes European Union trade mark. What is the consensus for the abbreviations: EU IPO and EU TM is my choice. European Union TM is officially sanctioned in Art 1(2) of the amending regulation.

Not much will change about day to day filing except that you will have to decide whether you want to receive the search of earlier rights on the Community Trade Mark Register Register of EU Trade Marks . This is now known as an EU search report but it still only covers EU TMs. You can say you don't want it but they have to create it even if you don't want it because they are still sending out those pesky surveillance notices. We are now allowed to opt out of receiving them though and I shall be looking at how to do that, especially where I am the representative for one and two letter logos.

Graphic representation is now (well with effect from 1 October 2017 and we can expect the EU IPO to tell us what representations are acceptable)  not essential and there is plenty of hot air about the possibilities of registering non-traditional EU TMs. Forget it. They also amended Art 7(1)e so you cannot register:

‘(e) signs which consist exclusively of:
(i) the shape, or another characteristic, which results from the nature of the goods themselves;
(ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii) the shape, or another characteristic, which gives substantial value to the goods;’

Now Arnold J had a go at the Taxi CTM not long back and at paragraph 215 of his judgement killed it under  the substantial value provision. The same has to be the case for the smell of perfumes. Even if the representation is not graphic it is still required to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. I don't know of any self-contained sound representations. Even a recording needs something to play it and the sound file also needs to be easily accessible and durable - quite a challenge. My best advice is stick with registration for traditional marks.

The amendments allow for Certification EU TMs but these points of the Regulation will not apply until 1 October 2017 so we have more time to prepare for those.

We have already seen the benefit of the reduced renewal fees when renewing EU TMs that were due to expire after 23 March.

Thinking of Brexit, the provisions on representation  Art 93(1)b now simply says

(b) professional representatives whose names appear on the list maintained for this purpose by the Office.

If UK representatives are on that list they will still be there after Brexit so the old campaigners should be able to continue to represent. The requirement for representation is also amended so that it is only applicants outside the European Economic Area who need representation as opposed to outside the Community. Its possible, but uncertain, that the UK will stay in the Economic Area. This is the area for free movement of people and that is a big issue for many LEAVE voters who might feel betrayed if we stayed in the EEA and were simply told what to do by Brussels without any say in the negotiations.

A lot more of  the changes are less likely to affect our daily lives, but there are a lot of them so we might be surprised.