Owners of registered IP rights and pending IP applications in the EU‎ should carefully consider the complexities of the incoming regime.

By Deborah J. Kirk and Terese Saplys

On 28 September 2020, the UK government made the Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (IP Regulations 2020), which amend the intellectual property (IP) regime in the UK to reflect Brexit-related changes once the transition period ends. The IP Regulations 2020 overlap somewhat complexly with existing UK and EU IP rights. In particular, exhaustion of rights principles seem to have fallen into a lacuna and as a result parallel importation from the UK into the EU may be significantly impacted. Owners of existing registered IP rights and pending IP applications under EU law should carefully consider the incoming legislation to inform their ongoing business operations.

By Deborah Kirk

Changes to the Regulation on the EU Trade Mark came into effect on 1 October, 2017 that alter the process of registering trade marks. These changes aim to harmonize trade mark practices across the European Union while increasing legal certainty and clarity for trade mark applicants. In particular, applicants should note three key changes that may provide them greater ease and flexibility, among other potential benefits.

  1. Graphical representation in applications for trade marks are no longer required. Applicants can now choose the best way to represent the goods and services that they are applying to trade mark. This change aims to:
    – Simplify the application process for trade mark users
    – Reduce the number of rejected trade mark applications
    – Facilitate the registration of unusual marks, such as sounds and smells
  2. A certification mark is now available at the EU level. Previously, certification marks existed only at the national level. The EU-certification mark certifies specific characteristics of goods and services and indicates compliance with the applicable regulation standards. The introduction of the EU-certification mark provides an additional option for trade mark applicants. For more details, please see “New EU-Certification Mark Added to IP Armory
  3. Several new procedural rules apply to applicants. In particular, applicants should be aware that they:

By Deborah Kirk

European Union (EU) trademark law is currently undergoing significant reform, with the most recent change of particular relevance to certification mark holders or to those interested in applying for certification marks.

The EU-certification mark, introduced on 1 October 2017, widens the categories of trade mark protections that are available at the EU-level. The new mark adds to the collective trade mark and the individual trade mark that were already available at EU-level.

The new mark acts as a badge of quality for consumers; the proprietor of the mark is responsible for certifying that the goods and services applied for comply with the applicable regulatory standards.