New EUIPO Examination Guideliness

On 1 March 2021 (Decision EX21-1), the new revised edition of the EUIPO Examination Guidelines for European Union Trademarks and Registered Community Designs entered into force. Among other amendments, they implement the Director’s Decisions EX-20-9 on communication by electronic means and EX-20-10 concerning technical specifications for annexes submitted on data carriers.

Regarding “Communication by electronic means“, the most important modification is the suppression of the fax as a means of communication, becoming the User Area the mandatory means of communication.

For the purposes of time limits, notifications will be deemed to have been made on the fifth calendar day following the date on which the Office deposited the document in the user’s mailbox.

In the event of a malfunction during the electronic transmission through the User Area, two alternative electronic back-up measures are provided: (i) a general upload platform in the communications section of the User Area or (ii) a file-sharing solution outside the User Area; the Office will provide the account holder with access to a secure file-sharing location.

As regards the technical specifications to be met by annexes submitted on data carriers, important changes are also introduced:

– DVD and CD are excluded as acceptable types. Only USB flash drives, pen drives or similar memory units are accepted.

– The acceptable size of the annex is reduced: it must be up to 20 MB.

– the content of a data carrier becomes part of the electronic copyright file and, as such, the original data carrier can be deleted five years after receipt.

As regards absolute grounds for refusal (Art. 7(1) of the EUTMR) some important modifications or clarifications are also introduced.

As regards descriptive trademarks (Art. 7(1)(c) of the EUTMR), it has been included as a ground for refusal the fact of a trademark consisting of the name of a colour, if it constitutes a characteristic “inherent” to the nature of the goods and “intrinsic and permanent” in relation to that product or service (Case T 423/18, “Vita” dated 7 May 2019).

As regards the ground for refusal in Article 7(1)(e) of the EUTMR consisting of shapes or other characteristics imposed by the nature of the goods or necessary to obtain a technical result, or which add substantial value to the goods, clarifications are introduced in the two-step system for determining whether the sign consists exclusively of the shape of goods or other characteristics necessary to obtain a technical result, including elements that can be taken into account at each step.

Regarding Article 7(1)(f) EUTMR, the concept of “good customs” is clarified as a reference to fundamental moral norms and values accepted by a given society at a given time. Such values and norms may evolve over time and vary in space (27/02/2020, C 240/18 P, Fack Ju Göhte, EU:C:2020:118, § 39).

As for Article 7(1)(j) EUTMR, concerning the conflict of trademarks with designations of origin and geographical indications, it includes relevant changes such as that a trade mark may be objected to on the basis of a GI applied for which has not yet been registered.

If the trademark applicant does not submit observations or does not remedy the objection, the Office will suspend the registration procedure until the GI is registered.

Furthermore, GIs from non-EU countries protected under the Lisbon System will form the basis for objections as from the date of entry into force of the “Geneva Act”. The EU became a contracting party to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (the “Geneva Act”) pursuant to Council Decision (EU) 2019/1754.

With regard to Article 7(3) of the EUTMR (distinctiveness acquired through use) it is included as a rule for its assessment that such a definition must be made in the light of the essential function of trademarks (24/09/2019, T-13/18, Crédit Mutuel, EU:T:2019:673, § 142).

For collective marks, specific absolute grounds for refusal are also introduced.

Thus, for collective marks, it is introduced as a ground for refusal the fact of being misleading as to the character or the meaning of the mark (i) because it gives the impression that it is available for use by anyone meeting certain standards (ii) because it conveys a strong certification message (e.g. it makes it look like a certification mark) (iii) because it consists of a GI or a logo included in the GI product specification.

Several amendments are also introduced concerning the opposition procedure, cancellation and registration operations, as well as for the registered Community Design. Read more about it:

Article by Teresa Gonzalez.

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