REVISIONS AND UPDATES IN THE EUIPO 2022 DRAFT TRADEMARK & DESIGNS GUIDELINES
177.000. That is the number of trademark applications that the European Trademark and Design Office (EUIPO) received last year.
Each and everyone of these applications must be checked, to ensure they meet the formal and legal requirements. Just as all opposition and invalidity proceedings must be monitored and decided upon.
Since the EUIPO was founded in 1996, the office has developed an extensive set of trade mark and design guidelines, currently over 2000 pages. They ‘exist to improve the coherence, predictability and quality of Office decisions.’ and contain valuable information (both practical and legal) for trademark owners and their representatives.
The Trademark and Design Guidelines are revised and updated almost regularly. The draft guidelines of the 2022 edition are now available online for comments and suggestions from stakeholders.
As always, we have reviewed the draft guidelines. Not unlike the yearly adaptations in previous editions of the guidelines, the proposed amendments consist mainly of clarifications and updates of procedural formalities that are certainly relevant for professional representatives, but in general of less importance to individual trademark holders.
We have summarized a few items and proposed alterations that might interest you as a trademark holder. Some proposed changes regard specific branches, others may appeal to all trademark owners, i.e. the new chapters, explanations and examples concerning the so-called ‘new types of marks’, e.g. position marks, pattern marks, color combination marks, multimedia marks, hologram marks and motion marks.
New types of marks
The ‘new types of marks’ all have their own idiosyncrasies. Some quotes from the draft about new marks and their similarity with other signs, to give you an impression:
Motion marks: “The verbal and/or figurative elements might appear only for a certain amount of time in the representation of the mark and then disappear or be transformed into another element. Elements that lead to similarity between the signs must appear for a sufficient amount of time to enable consumers to perceive/recognize them.”
Sound marks, case law example: “Both sound marks consist exclusively of the sound of a dog or dogs barking. Therefore, as the barking of the dogs sounds similar, the marks are aurally similar to a certain extent.”
Multimedia marks: “Moreover, where a graphically depicted verbal element is accompanied by a sung or spoken verbal element, the latter could affect the pronunciation of the graphically depicted verbal element. However, depending on the particular case, it cannot be excluded that the graphically depicted verbal element in a multimedia mark would still be pronounced according to the pronunciation rules of the corresponding relevant public.”
Case law example: “The earlier mark consists of the pronunciation of the verbal element ‘bananas’, whereas the contested mark consists of an image of bananas. Therefore, the marks are conceptually identical.”
With regard to the proposed changes concerning the ‘new types of marks’, the draft guidelines refer in almost all of the proposed new sections and chapters on this topic to the Common Communication on New Types of Marks (CP11), as drafted by the trade mark offices of the Euro-pean Union, in the framework of the European Union Intellectual Proper-ty Network.
Use of the mark as it is registered and the use in a different form
Another interesting issue in the draft guidelines concerns the rewording and update of the chapter about the use of the mark as it is registered and the use in a different form. “The purpose of this provision is to allow the proprietor, in the commercial exploitation of the mark, to make variations in the mark that, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services In accordance with the purpose of that provision, where the mark used in trade differs from the form in which it was registered, the difference must be such that the two can still be regarded as broadly equivalent.”
(…) “When assessing genuine use of a trade mark, it must be taken into account that trademarks are used in a commercial context, on products, packaging, information and advertising materials, etc. They are normally used together with other product information, marketing messages, decorative elements and often with other marks (individual, collective or certification marks) or geographical indications and related symbols. Therefore, verifying whether the mark was used ‘as registered’ may prove to be a challenging exercise.
This updated section about the use of trademarks contains many, some-times remarkable, cases and ‘invented examples’ that illustrate the policy of the EUIPO with regard to the use of registered trademark.
In the draft guidelines, the office emphasizes even more its intention to be transparent and that it will make its decisions publicly available upon their notification, irrespective of the fact whether the decisions have become final.
Several draft guideline changes
With regard to the classification of food additives and food supplements, the draft guidelines suggest some changes with regard to the definitions.
“Food additives, on the one hand, are substances added to food for non nutritional purposes to improve the colour, flavour, preservation, etc. Food additives should in principle be classified according to the function group they belong to.”
“Food supplements, on the other hand, are dietetic substances taken to supply nutrients to augment those provided by a regular diet. They are concentrated sources of nutrients (i.e. minerals and vitamins) or other substances with a nutritional or physiological effect that are usually marketed in ‘dose’ form such as pills, tablets, capsules and liquids in measured quantities.”
“Veterinary, medical or nutritional supplements, such as trace elements, antioxidants, amino acids, minerals or vitamins, are meant to sustain or improve the health of humans or animals and are therefore proper to Class 5.”
Changes in the wording of the text
Several amendments are suggested with regard to chemicals, pharmaceuticals, cosmetics and the comparison of goods and services. The suggested alterations mainly concern the wording of the text.
No changes regarding INN codes
No changes are suggested with regard to topic of INN codes (International non-proprietary names.
Draft guidelines refer to CP12 document
With regard to trademarks with a reputation, the draft guidelines refer to the relatively new CP12 document of the the European Union Intellectual Property Network. “Although CP12 relates principally to evidence submitted in appeal proceedings, certain parts, for example that referring to evidence originating from the Internet, provide useful and relevant guidance in general.” Inter alia, that:
“As a consequence of the growing importance of information technologies and the Internet to personal, social and economic life, parties are increasingly relying on evidence originating from the Internet to show the use and reputation of their marks.”
“Before all, it must be clarified that a mere reference to a website (even if by a direct hyperlink) where the Office can find further information is insufficient. Online evidence may only take the place of physical evidence where it concerns the filing or registration of the earlier rights, or the contents of the relevant national law to the extent it is accessible online from a source recognized by the Office. This option is not contemplated in the law for other evidence. Furthermore, external hyperlinks cannot guarantee the continued secure availability and stability of the content they link to.”
“Evidence showing the presence of the earlier trade mark on the Internet may help establish that trade mark’s reputation. If the earlier trade mark has a significant presence on the Internet (evidenced by the number of subscribers to accounts dedicated to this trade mark on social networks, or the number of visitors to blogs mentioning this trade mark), this may help assess the knowledge of the trade mark by the public concerned and may therefore support a finding of reputation.”
“The nature of materials originating from the Internet raises the question of reliability of that evidence as it may be difficult to establish the actual content available on the Internet and the date or period of time this content was in fact made available to the public.”
As said, the proposed amendments in the draft guidelines consist main-ly of clarifications and updates of procedural formalities, not unlike the yearly adaptations in previous editions of the guidelines. Although the proposed updates and clarifications are certainly relevant for professional representatives, they will be in general of little consequence to individual trademark holders. Once adopted, the Guidelines will enter into force during the first half of 2022. We will continue to follow the drafting procedure and will inform you about further interesting developments If you have any questions, please let us know.