Brands Update

New EUIPO Examination Guidelines for trade marks and designs came into force on 31 March 2022. As previously reported in Brands Update, a key change is the public availability of decisions refusing EUTM applications on absolute grounds. Previously, these decisions were not made public if the EUTM application was withdrawn before the refusal decision became final.

That is no longer the case and refusals will be published the day after their notification. This is important since published decisions could be used against applicants by third parties in the context of disputes. Applicants for marks that may be refused for lack of distinctiveness will need to carefully consider the potential implications of any refusal being made public before filing the application.

In Maxxus Group v Globus Holding, the ECJ held that a German procedural rule requiring applicants to provide evidence and make substantiated submissions in support of an action for revocation for non-use is incompatible with the EU Trade Marks Directive. The ECJ pointed out that the trade mark proprietor has the burden of proving that the mark has been put to genuine use. That does not mean that the applicant for revocation need not provide a full statement of the facts upon which it bases its claims in its application. A mere claim that the mark has not been put to genuine use under the relevant legal provision is sufficient.

In Fabryki Mebli "Forte" v EUIPO, the EU General Court considered the law on when a prior disclosure of a design is deemed to have come to the attention of the relevant circles of the trade and on the burden of proof. The General Court said, "According to the case-law, a design is deemed to have been made available once the party asserting it has proved the events constituting the disclosure. In order to rebut that presumption, the party challenging the disclosure must establish to the requisite legal standard that the circumstances of the case could reasonably prevent those facts from becoming known in the normal course of business to the circles specialised in the sector concerned…".

The evidence of the latter was insufficient in this case. The Court therefore concluded that the prior design had been made available to the public and that the later design lacked individual character in view of it.

In Eos Products v EUIPO, the ECJ has declined permission to appeal the refusal of the registration of the 3D "egg" shape of a lip balm as an EUTM. The application had been filed in classes 3 (non-medicated lip balms etc), 5 (medicated lip balms etc) and 21 (containers for cosmetics etc).

The Board of Appeal and General Court had both held that the shape of the product did not differ sufficiently from the norms and customs of the sector to merit registration, with round and spherical containers being common in the cosmetics market. The ECJ has now refused permission to appeal. This case can be contrasted with the recent Guerlain case where the 3D shape of a lipstick was considered to differ from the norms and customs of the sector and was successfully registered as an EUTM.

The Protocol will enter into force in the Republic of Chile on 4 July 2022. According to WIPO, Chile is the last of the Southern Cone to join the Madrid System and brings the total number of Madrid members to 127 countries.

The EU Commission has adopted its proposal to review the geographical indications (GI) system for wine, spirit drinks and agricultural products. The aim is to increase the uptake of GIs across the EU. The proposal includes:

• Shortened and simplified registration procedure: there will be a single simplified GI registration procedure for EU and non-EU applicants, resulting in a shorter time to registration.
• Increased online protection: there will be increased protection of GIs on the internet (sales via online platforms) and greater protection against bad faith registration and use of GIs as domains.
• More sustainability: it will be possible for producers to include sustainability in their product specifications. 
• Empowered producers' groups: Member States will have to recognise GI producers' groups on request.