November 06, 2020

Developments of the CP8 Common Practice and cooperation projects of EUIPO

Throughout recent years, experts from national and regional IP offices of the EU have collaborated extensively to allow for a more unified approach to common practices in IP.

The European Union Intellectual Property Office, for example, has taken steps to improve uniformity in relation to the use of a mark which is different in form to an originally registered mark. The common practice document was published on October 15, 2020 and a full copy of the document is available here.

This was part of a wider convergence of practices program, which was introduced to allow for the assessment of possible changes that may be made to a mark between registration and use of the same.

The uniform application of assessment of modifications will allow for trademark applicants and holders to be clear on the criteria of assessment. Modifications may include adjustments to the mark itself, additions to the mark, or removing elements of the mark. However, such adjustments shall not form distinctive and visually dominant elements.

The assessment of the modified mark will ensure security and clarity for trademark owners and legal professionals, who will be able to rely on the assessment to prove the use of the mark if requested. Such evidence is needed during opposition and the recently enforced trademark revocation proceedings.

The European Cooperation Project of EUIPO has also led to the Estonian Patent Office (EPA) developing an accelerated procedure service, aiming to allow a trademark registration decision to be issued within 3 to 4 weeks from filing the corresponding application. The procedure became available on October 12, 2020 and is applicable only for word, figurative and shape marks, excluding certification and collective marks. In the case of figurative and shape marks, a list of colours is not provided by the service.

In order to make use of the accelerated procedure, applicants must file electronically through the e-services portal of the Patent Office. This portal was specifically developed and offered by the EUIPO to the national and regional intellectual property offices of the EU for the filing of fast track applications.

To be entitled for fast-track registration, the following requirements should be observed additionally to the above mentioned:

- the application shall not contain a priority claim;
- the application must not exceed 60 names of applicable goods and services which shall be selected from the list provided by the e-services portal. Acceptable names can be searched in the harmonised database TMclass;
- the state fee for the application must be paid within 3 days from filing the application.

The implemented regulations and services demonstrate a global effort in the IP field to ensure cooperation and efficiency for applicants and lawyers alike. With an increase in reliability and certainty comes a higher level of confidence in IP operations, thus encouraging further filings.

Author: Danielle Carvey