On October 1, 2017, key changes in the Regulation of the European Parliament on amending the EU Trademark Regulation entered into force. The regulation (EU) 2015/2424 has been in effect since March 2016. Below are the key changes the regulation has outlined:

Changes and key points:

1. The requirement for the graphic representation of the trademark is eliminated, thus it is allowed to represent them in any way that is considered appropriate using the technology generally available, and not necessarily by graphic means, provided that the representation is clear, precise, self-sufficient, easily accessible, intelligible, durable and objective.
This gives way to unconventional marks.

2. Trademarks consisting of an earlier registered plant variety designation under Union law or national law, or to international agreements to which the Union or the Member State concerned is a party, which provides for the protection of plant varieties, or which reproduce that name in its essential elements, and which refer to plant varieties of the same species or closely related species.

3. The EU certification marks are created (comparable to the guarantee marks in Spain). The European Union certification mark is defined as a mark which ‘distinguishes the goods or services which the proprietor of the mark certifies in respect of the materials, the way in which the goods are produced or the provision of services, quality, precision or other characteristics, with the exception of geographical origin, of products and services which do not have such certification ‘.

4. Distinctive character acquired with use, as a Subsidiary claim. Applicants may invoke Article 7 (3) as a subsidiary or alternative claim, either at the beginning of the application procedure or thereafter. The advantage of a subsidiary claim is that it only crystallizes in case of definitive negative resolution to the inherent distinctiveness. This allows the applicant to exhaust his right of appeal on ‘distinctive character’ before it is necessary to establish the distinctive character acquired. This will mean that users will not need to incur the expense of collecting and submitting evidence of use, unless necessary.

5. The oppositions and other proceedings may be substantiated by reference to electronic databases (Article 7 (2) AD).

6. Priority claim must be submitted together with the application, not later. The priority claims must be filed together with the MUE application (previously, such claims could be filed once the application has been filed). The supporting documentation of the claim must be submitted within three months from the filing date (previously, three months from receipt of the priority declaration). If this documentation is not in one of the languages of the Office, the Office now has the option of requesting its translation. It will be optional for the Office to request a translation.
Another change in the practice of the Office is that the priority claim is no longer examined in substance. It is still a “simple” claim until invokes and needs to be validated in the procedure.

7. Online presentation of International trademarks based on EU Trademark. International trademarks which are based on an EU trademark can already be processed directly from the brand (E-search).