Next month, some important amendments introduced by Regulation EU no. 2015/2424 – which we have already discussed here on this blog – to EU trademark law, governed by Regulation EC no. 207/2009, will enter into force.

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Below is a summary of the most significant changes.

  • Abolishment of the graphical representation requirement

Thanks to the abolishment of this requirement, it will be possible to register non-traditional trademarks such as sound, motion and scent trademarks, which cannot be easily represented graphically. In fact, any sign that is “clear, precise, self-contained, easily accessible, intelligible, durable and objective” can be registered as an EU trademark, by using any available technology.

In particular, EU Trademark Implementing Regulation (“EUTMIR”) – as modified in May 2017 in light of the amendments introduced by Regulation EU no. 2015/2424 – provides that, for instance, digital sound files can be filed with the EUIPO in the sound trademarks registration proceeding and video files or series of sequential static images highlighting movement can be filed in the motion trademarks registration proceeding. No indication is provided for the registration of scent trademarks, which seem to be tricky.

This Regulation, then, provides new ways to register colour and three-dimensional trademarks: in fact, with reference to the first ones, it will be possible to indicate, in addition to the graphic representation, the relevant standard colour code; to the second ones, it will be possible to file 3D files reproducing them.

  • Trademarks and designations of origin and geographical indications have the same degree of protection

The prior registration of designations of origin and geographical indications will be considered as cause to hinder the subsequent registration of an identical or similar trademark, with the consequence that it will be possible to oppose those trademarks by enforcing these kinds of IP rights.

  • Introduction of EU certification trademarks

A new type of trademark will be introduced, i.e. the so-called certification trademark, which actually already exists in some EU States. These trademarks can be registered for goods and/or services certificated by the respective owner when they have specific characteristics meeting the requirements necessary for the certification concerning materials, methods of manufacture, quality, precision or other characteristics (but not origin of goods, given that, as we know, specific IP rights exist for such particular characteristics).

The use of such trademarks will only be possible as long as the goods and/or services at issue will keep the characteristics for which they have been certified. In order to register a certification trademark, it will be necessary to file with the EUIPO, within two months of the trademark application filing, the relevant regulation of use designating the persons authorised to use it, its certified characteristics and how to verify and monitor such characteristics.