New EU regulation: the application for an Union trademark becomes digital

A few days ago, a new EU regulation for the filing of Union trade marks came into force. The graphic representation of the trademark in electronic form, electronic publications by the Office and the renunciation of certified copies – the signs stand for digitization.

The aim of the new Trademark and Implementing Regulation (EU) 2018/626 is to clearly and exhaustively define the mandatory indications to be included in an application for a Union trademark. The 20-page regulation specifies the details that in many areas revolve around the digital presentation of the necessary proofs.

Application for a Union trade mark
The application may include a claim that the sign has become distinctive through use within the meaning of Article 7(3) of Regulation (EU) 2017/1001 and an indication as to whether that claim is a principal or an ancillary claim. This claim may also be submitted within the period referred to in the second sentence of Article 42(2) of Regulation (EU) 2017/1001.

Representation of the mark

The graphic representation of the trade mark may be recognised as a valid form of representation of the sign for publication purposes for certain types of trade marks via a link to the electronic register of the European Union Intellectual Property Office (EUIPO). This applies to the following types of marks:

3D marks such as three-dimensional products or containers and packaging or their design (form mark), the mark is represented either by the graphic representation of the form, including computer-generated images or by a photographic image, and can be presented electronically. If the reproduction is not submitted electronically, it may comprise up to six different views.
A trade mark consisting of the special placement or affixing of the trade mark on the goods (position mark) requires a representation that adequately identifies the positioning of the trade mark and the size or proportion in relation to the goods concerned. The elements which are not part of the subject of the registration should preferably be visually excluded by broken or dashed lines.
A design mark, in turn, which consists exclusively of a series of elements that are regularly repeated, requires the representation of the repetition pattern.
A color mark must represent the color using a generally recognized color code, such as Pantone, Hex, RAL, RGB or CMYK. The systematic arrangement of several colors can also be described in this way.
A sound mark is played back via a sound file such as the mp format or through notation.
The relatively new motion mark must display the mark as a video file or with the aid of still images. If still images are used, they can be numbered or supplemented by a description explaining the sequence.
In this context, also mixed image-sound marks, the so called multimedia mark, and the hologram mark are mentioned: both require the representation as video file or suitable full graphic representations.

In principle, digital submission is possible for all trademarks mentioned. The Executive Director of the Office shall determine the formats and size of the relevant electronic file and any other technical specifications. A prerequisite is to register in the User Area of the Office, since secure electronic communication is thus established.
The Office can also use the digitization. The Office may issue certificates of registration in which the representation of the trade mark is replaced by an electronic link. If the representation of the trade mark was filed in the form of an electronic file, the relevant entry shall be made accessible by means of an electronic link to this file upon registration of the trade mark.

If the representation is not submitted electronically, the mark must be reproduced separately from the text sheet of the application on a separate single sheet. This single sheet must contain all relevant views or images of the mark and must not be larger than DIN A4 (29.7 cm high, 21 cm wide). A distance of at least 2.5 cm from all edges must be maintained.

New rules also for translations

The submission of translations can be limited to the parts relevant to the procedure and does not initially need to be certified. However, in cases of doubt, the Office may, within a specified period, require the production of a certified translation corresponding to the source text.