The EUIPO has revised its Examination Guidelines for European Union Trade Marks (EUTM) and Registered Community Designs (RCD). The new edition entered into force on 1 March 2021, following the approval of the Executive Director by means of Decision EX-21-1.
Means of Communication:
In relation to means of communication the new guidelines :
• abolish fax as a means of communication , both for the parties and for the Office.
• eComm becomes compulsory for all UserArea account holders.
- Two alternative back-up solutions are made available, one in the UserArea and the second in the form of a file-sharing solution.
A reference to data carriers as a means of submitting annexes to communications has been inserted on ‘Technical specifications for annexes submitted on data carriers’. Main changes are:
• it removes DVDs and CDs as acceptable types of carriers: only USB flash drives, pen drives or similar memory units are accepted;
• it reduces the acceptable size of individual annexes (files) to 20MB;
Electronic applications where the list of goods and services is filed as an annex or filed separately are not considered to be filed electronically and cannot benefit from the specific reduced fee. If the normal fee has not been paid correctly, a filing date objection will be raised. If the fee for paper filing is paid within one month, the filing date will be maintained, otherwise the filing date will be the date of payment.
Absolute grounds for refusal
- Descriptive trade marks (Article 7(1)(c) EUTMR): the Office will object to signs consisting of the name of a color only when it constitutes an objective characteristic, inherent to the nature of that product and intrinsic and permanent with regard to that product or service.
- Shapes or other characteristics that result from the nature of the goods, are necessary to obtain a technical result or give substantial value to the goods (Article 7(1)(e) EUTMR): information other than that relating to the graphic representation alone, such as the perception of the relevant public, can be taken into account to identify the essential characteristics of the sign at issue.
- Acquired distinctiveness through use (Article 7(3) EUTMR): the evidence to be provided to the Office must show that the use in question relates to the essential function of the specific kind of marks.
Unclear and imprecise terms
If the contested mark contains an unclear or imprecise term related to goods and services, the Office will reopen the examination of the classification of the mark. Unclear and imprecise terms can be clarified, inter alia, by a limitation. In the case of earlier marks subject to proof of use, the scope can also be clarified by the evidence submitted, when proof of use is requested.
Proof of Use
- Genuine use: The lack of genuine use is not equivalent to use with the sole intention to maintain rights (‘token use’). It is rather the absence of a sufficient extent of commercial exploitation of the mark in the relevant market.
- Nature of use: Genuine use of collective marks must be assessed in view of their essential function, which is not to identify the identity of the origin but rather to identify that the goods or services come from the members of a collective. However, like individual marks, a collective mark must be used by the members to create or preserve an outlet for the registered goods or services.
‘Communication by electronic means’, all references to fax have been removed.
Representation of the design
No filing date will be accorded to cases of bad quality and non-neutral background (understood to extend to elements external to the design). All other inconsistencies are “formality” deficiencies requiring remedy but retaining the original filing date.
Ex officio change of indication
In order to reduce deficiencies and enable a speedy processing of applications, deficiencies relating to product indications containing an obvious mismatch will be replaced ex oficio by the examiner.
Examination of Design Invalidity Application
The grounds on which the invalidity action is based will be indicated in the application form (“statement of grounds”) but must be supplemented by facts, evidence and arguments for the purposes of admissibility. Where it is not accompanied by such facts, evidence and arguments, a deficiency letter is sent to the invalidity applicant giving him/her a time limit to remedy the deficiencies. If the invalidity applicant fails to remedy the deficiency within the time limit, the application is deemed inadmissible.
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