Regulation No 2424/2015 of the European Parliament and of the Council, dated 16 December 2012, which will enter into force on 1 October 2017, implements various changes to the EU trademarks’ regime. These changes include not only the substantive trademark law, but also the procedural legislation.
Regarding the substantive trademark law, the main changes concern the abolition of the requirement for the graphic representation of trademarks subject to registration and the creation of the European Union certification mark. This means that trademarks without any graphic representation may be applied for and awarded at European Union level, as from October, the 1st of 2017.
The case-law of the European Court of Justice has previously determined that the graphic representation is the visual presentation of the mark's sign, "by means of figures, lines or characters, so that it can be accurately identified"*. In addition, this graphic representation should be "clear, precise, complete on its own, easily accessible, intelligible, durable and objective"**. That is to say, a sign of a mark must be easily perceived by the average consumer by means of graphic representation, at the risk of being refused by the European Union Intellectual Property Office.
Since this requirement has been abolished by the new Regulation, a sign, in order to be registered, is no longer dependent on its graphic representation. Thus, we may have signs that are registered trademarks in the European Union without being graphically represented. However, the question arises as to how these signals can be perceived by consumers and what their legal protection is, since they may not be represented graphically.
The Regulation itself answers this question by establishing the requirement of the "appropriate form" of representation. In other words, although the requirement of graphic representation is extinguished, the requirement of the representation of the sign of the mark remains, so that it can be perceived by any consumer within the European Union. The concept of adequate means any means by which the average consumer can perceive the trademark and, thereby, clearly and correctly identify the origin of the goods and/or services identified with that same trademark. That is, the requirement of representation is fulfilled when said representation is sufficient to meet the purpose of a trademark, which is distinguishing products and/or services of one company from those of another company in the same market.
The new representation requirement now allows for the registration of new types of marks, which could not be previously registered due to the impossibility of graphical representation of their signs, even if the same signs could be represented by other means. In addition, the new wording of the article also allows the protection of new types of trademarks that may arise in the future, as long as they fulfil the established requirements, since it is an open criterion, instead of the previous one.
From the date upon which the Regulation 2424/2015 enters into force, the list of signs which may be protected by means of a trademark registration and the format of the representation to be presented with the application for registration is as follows:
While the first types are relatively obvious, with the representation being made through the presentation of the letters and terms that comprise it, or through the presentation of the image that appears in the sign, there are new modalities of marks which representation is not as simple. In particular, regarding the i. Movement or ii. Holographic marks. In relation to these, the representation is made through a video file or a series of images that demonstrate the movement or the holographic effect in its entirety.
The new requirement for the representation of signs is a breath of fresh air under the EU trademark regime. This change opens doors to several types of marks that were previously not possible to register due to the impossibility of graphic representation. We now have to wait for harmonization to all the Member States of the European Union, so that national brands can also give up the requirement of graphic representation.
In addition to the extinction of the requirement for the graphic representation of distinctive signs, the new EU Trademark Regulation introduces the European Union certification mark. A type of trademark that, until now, existed only in the various national states, without this being reflected in the European Union trademark law.
A certification mark fulfils the function of distinguishing, from the point of view of the consumer, the products or services bearing the certification mark, as regards the subject matter, the way in which the products are manufactured or the provision of services, the quality, the accuracy or any other characteristic, from the other products or services on the market. A certification mark, in parallel with collective marks, is held by an entity which, at the time of filing the application for registration, also submits a regulation establishing i. The conditions of use of the certification mark, ii. The qualities necessary for the products or services to bear this certification mark and iii. The test and supervision measures to be applied by the holder of the certification mark. Furthermore, the same entity, holder of the registration of the certification mark, is responsible for regulating access to the certification mark by any other producing entity with an interest in the same certification.
The European Union certification mark has two essential requirements or restrictions. The first restriction relates to the fact that it is impossible for the entity interested in submitting an application for registration of an EU certification mark to engage in any business activity of supplying or producing goods or providing services of the same kind as certified products or services by the certification mark. This restriction aims to prevent a company from gaining an advantage over its competitors in the market by certifying its own products or services. Secondly, the certification mark may not be used to distinguish products or services solely on the basis of their geographical origin.
The creation of European Union certification marks provides ways of protecting this type of trademark at the community level, allowing its holders, with only one registration, to develop a trademark of this type throughout the European Union, without having to submit applications in the 28 Member States. In addition, it introduces a system parallel to the collective mark in the European Union trademark system.
Finally, the Regulation also introduces a number of procedural measures aimed at speeding up and reducing the bureaucracy in the EU trademark registration procedures.
• *Judgment of 06/05/2003, C-104/01, Libertel, ECLI:EU:C:2003:244, § 28 and 29
• **Judgment of 12/12/2008, C-273/00, Sieckmann, ECLI:EU:C:2002:748, § 46 to 55