Procedural changes

Procedural changes

As and from 1 October 2017, a number of procedural changes apply.

All changes will be reflected in the revised Guidelines. A summarised overview of some of the main changes is provided on this page; users are reminded that this is not an exhaustive list. Please note that the Office’s Guidelines remain the main point of reference for users of the European Union trade mark system and professional advisers who want to make sure that they have the latest information on EUIPO’s examination practices.

Type of change
Priority Show Hide

Overview

Priority claims must be filed together with the EUTM application (before, such claims could be made subsequent to filing the application). The documentation in support of the claim must be filed within three months of the filing date (previously within three months from receipt of the declaration of priority). If the latter documentation is not in a language of the Office, it is now optional for the Office to request a translation of such documentation.

A further change in the practice of the Office is that the priority claim is no longer examined in substance. It remains as a ‘mere’ claim until it is relied upon and it is necessary to validate it in proceedings.

Acquired distinctiveness as a subsidiary claim Show Hide

Overview

Applicants will have the possibility of invoking Article 7(3) as a subsidiary or alternative claim, either at the start of the application process or later. The advantage to of a subsidiary claim is that it only crystallises if there is a negative final decision on inherent distinctiveness. This allows the applicant to exhaust its right of appeal on inherent distinctiveness before it is required to prove acquired distinctiveness. This will mean that users do not need to incur the expense of gathering and presenting evidence of use unless it is necessary.

Opposition/cancellation proceedings Show Hide

Overview

The requirements of admissibility and substantiation for relative grounds’ actions have been reordered for clarity and to take into account the separate ground on geographic indications introduced by Article 8(6) EUTMR. Provisions applicable to cancellation proceedings are aligned with opposition proceedings except where differences are justified by their different nature. The EUTMDR introduces framework rules on belated evidence and codifies Office practice on suspension of surrenders and the closure/continuation of pending revocation or invalidity proceedings.

Online substantiation Show Hide

Overview

A clear example of adapting to the internet era is where evidence that concerns earlier rights that are ‘registered’ (e.g. registered trade marks, certain signs used in the course of trade or geographical indications), or the contents of relevant national law, is accessible from an online source recognised by the Office, the opponent or cancellation applicant may provide such evidence by making reference to that source .

For this purpose, the Office ‘recognises’ all of the databases of the national and regional EU IP offices, and TMview is acceptable as a portal through which the national offices may be ‘accessed’.

Languages and translation Show Hide

Overview

As and from 1 October 2017, most types of evidence can continue to be filed in any official language of the EU. Where the language used for evidence of substantiation (except certificates of filing, registration and renewal or provisions of relevant law) is not the language of the proceedings, a translation will now be required only where requested by the Office – of its own motion or upon reasoned request by the other party. Evidence of acquired distinctiveness or reputation would fall within this category.

However, evidence of substantiation (certificates of filing, registration and renewal or provisions of relevant law) must still be submitted in the language of the proceedings (or translated into this language) within the time limit set for substantiation.

Furthermore, the ‘standard of translation’ under Article 25 EUTMIR is less demanding than previously. Where a party has indicated that only parts of the document are relevant, the translation may be limited to those parts.

These changes bring real benefits to users of the EUTM system. They facilitate economy, simplification and lower costs all round.

Assignment of EUTM as a remedy Show Hide

Overview

Where an agent or representative registers an EUTM without the proprietor’s authorisation, the proprietor is now entitled to demand the assignment of the EUTM (unless said agent or representative justifies his or her actions). Previously, the remedy for the proprietor under the EUTMR was to invalidate the EUTM.

This new assignment process under Article 21(2)(a) of the EUTMR will follow the same procedural path as invalidity proceedings based on Article 60 EUTMR. For actions commencing on or after 1 October 2017, assignment will be an alternative remedy to invalidating a trade mark. For such actions, the invalidity applicant can join the request for assignment with a request for invalidation on other grounds in the same invalidity action. In such cases, the Office will examine the request for assignment first (except where there is a valid absolute ground for invalidity under Article 59(1)(a) EUTMR, in which case that ground will be examined first).

Communication with the Office Show Hide

Overview

The means of communication by and with the Office have been changed to take account of developments in information technology. In particular:

  • Obsolete forms of communication have been removed, namely, hand delivery and deposit in a post box at the Office;
  • ‘Electronic means’ is defined broadly so that it now covers fax and potentially many other types of media.  Decision No EX-17-4 of the Executive Director concerning communication by electronic means, determines to what extent and under which technical conditions those media may be used (see also section below on the use of fax).
  • Specific mention of ‘tele copier and other technical means’ of communication – which covers faxes – is removed from secondary legislation (but see the previous point on ‘electronic means)’;
  • Courier’ has been introduced specifically as a means of communication by and with the Office alongside communications by post.

Use of fax as a means of electronic communication
While fax remains an important means of communications for the Office in many areas, for certain tasks its use is now marginal -  less than 1% of EUTM applications and about  2% of EUTM renewals are filed by fax. The legislative reform takes account of this changing communications landscape and the use of fax for EUTM applications or renewals will be affected in several ways :

  • From 1 October 2017, along with the User Area (e-filing), fax falls within the definition of communication by ‘electronic means’, meaning that the discounted fee for EUTM applications and renewals by electronic means in Annex I EUTMR will apply to fax.
  • From 1 January 2018, however, fax will no longer be accepted for filing EUTM applications or renewals except as a backup system if technical malfunctions prevent e-filing. In such a case applicants can secure a filing date by fax if: (i) for EUTM applications, they resubmit the same application by e-filing within three working days; (ii) for EUTM renewals, they submit the renewal application by fax no more than three working days before the expiry of the initial or extended statutory time limit for renewal. This is set out in Decision No EX-17-4  of the Executive Director (Annex).
  • From 1 October 2017, applications for marks where the representation has a colour component (including figurative marks) cannot be filed by fax because there are no legal provisions that facilitate the subsequent filing of a representation in colour.
 
 
Boards of Appeal Show Hide

Overview

The EUTMDR consolidates provisions relating to the Boards of Appeal that were previously spread across various sources including Commission Regulation (EC) No 216/96 (Rules of Procedure of the Boards of Appeal). The principal clarifications and changes relate to the content of the statement of grounds and of the response, ‘cross appeals’, claims raised and facts or evidence filed for the first time before the Board of Appeal, new absolute grounds raised by the Board of Appeal, expedited proceedings and the organisation and structure of the Boards of Appeal.

Transitional Provisions Show Hide

Overview

Both the EUTMIR and the EUTMDR apply from 1 October 2017. However, specific provisions continue to apply to certain proceedings that had been initiated before that date until the conclusion of those proceedings. Consequently both Regulations contain detailed transitional provisions that set out when the new procedural rules apply to proceedings. As a rule, both Regulations apply to ongoing proceedings from 1 October 2017 unless otherwise provided. Find all the transitional provisions on this table.

The following summary may be of particular interest:

New rules on:

Apply to

  • Content of the EUTM application
  • Representation of the EUTM
  • Types of mark
  • Priority

Applications for an EUTM entered on or after 01/10/2017.

EUTMIR

  • Certificate of registration

EUTMs registered on or after 01/10/2017.

EUTMIR

  • Languages and Translations

Supporting documents or translations entered on or after 01/10/2017.

EUTMIR

  • Substantiation and examination of oppositions/invalidity
  • Online substantiation
  • Belated evidence

Proceedings for which the adversarial part started on or after 01/10/2017.

EUTMDR

  • Appeals

Appeals entered on or after 01/10/2017.

EUTMDR

  • Structure and presentation of evidence

Where the period for presentation of the evidence started on or after 01/10/2017.

EUTMDR

  • Notifications by the Office and communication with the Office

Notifications and communication made on or after 01/10/2017.

EUTMDR

  • Suspension of proceedings

Suspensions requested or imposed by the Office on or after 01/10/2017.

EUTMDR

As and from 1 October 2017, there will be three main areas of change. Click on each section to get full details:

The contents of this section are for general information and awareness of the EU trade mark regulation. They are not legally binding.
We strongly recommend that all users or potential users refer to Regulation (EU) No 2015/2424, available in all EU languages.
Please note that the Office’s Guidelines remain the main point of reference for users of the European Union trade mark system and professional advisers who want to make sure that they have the latest information on EUIPO’s examination practices.

Information relating to the changes which entered into force on 23 March 2016 can be found here.

Page last updated 08-09-2017