The second wave of modifications generated by the amended European Trade Mark Regulation (EMR) applies starting with October 1, 2017. In addition to the changes relative to the procedure rules in relation with the contradictions, the cancellations and the appeals, the main amendments for the deponants are the following:
(i) introduction of the UE certification marks;
(ii) suppression of the graphic representation requirement for the European trade marks.
In this respect, pursuant to Article 3 of the European Trade Mark Regulation (EMR), [...] the mark should be permitted to be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective [...].
We are talking about a major evolution in terms of what shall be facilitated or accepted from now on with regard to the registration of the following types of trade marks next to the verbal and figurative trade marks:
| *of form: |
Previously called tridimensional mark, this mark consists in or extends to a tridimensional form, including the containers, the packaging, the product itself or its appearance. |
 |
| *sonorous: |
by attaching an audio file reproducing the sound or by a reliable representation of the sound by musical score; |
 |
| *of movement: |
mark that consists in or extends into a movement or change of positions of the mark elements. A video file or [...] a series of sequential fixed images indicating the movement or the change of position that could be numbered and supplied; |
 |
| * hologram: |
mark composed of elements having holographic characteristics and the supply of a video file or a graphic or photographic reproduction containing the views necessary for the sufficient identification of the complete holographic effect shall be requested. |
 |
| * of position: |
mark characterized by the specific way it is placed or affixed on a product.... We are talking about communicating a reproduction duly identifying the mark position and its dimension or proportion in relation to the concerned products. The elements that are not subject to the registration are “visually ignored, preferably by the presence of discontinuous or dotted lines”. |
 |
| *of pattern: |
mark that consists exclusively in regularly repeated elements. The representation requires “a reproduction indicating the pattern repetition”. |
 |
| *of colors: |
mark formed of a sole color or a combination of colors without contour. A code of color is thus mandatory, such as Pantone, Hex, RAL, RGB or CMYK. |
 |
| * multi media: |
mark consisting in or extending to a combination of image and sound and an audiovisual file including the image and sound combination must be supplied. For the moment, there is no registration of this type of the indexed trade marks, this is a novelty brought by the amended regulation. |
With regard to the olfactory trade marks, if the state of the art equipment allows registering odors with the help of “generally available technology” and by using category “Other” for this type of marks, the elimination of the graphic representation has no major impact on these requests.
Our legal experts are at your disposal for bringing you additional information that you need and we will certainly keep you informed with regard to the disputes that might appear pursuant to the application of these new provisions.
Bérénice AUBERT
French and European Trademaks attorney
