Interview with Oscar Mondejar, Head of the Legal Practice Service EUIPO
Your role and responsibilities at the EUIPO
I work as the Head of the Legal Practice Service at EUIPO’s International Cooperation and Legal Affairs Department.
The LPS is in charge of defining the practice of the Office in trademarks and designs matters. This is regularly done through the updating of our Guidelines, a living document which is drafted, under LPS coordination, by different experts across the Office. Part of these Guidelines specifically covers EUIPO’s practice on trademarks which conflict with a protected geographical indication.
Brief overview of the EU TM Reform
The EU TM reform has brought about a number of changes with the aim of making the system more modern and agile. It does not represent a revolution but an evolution. The amendments introduced by the legislative reform affects issues related to substantive law, proceedings, fees, governance, etc.
As is well known, the new EU TM Regulation (EUTMR) entered into force in March 2016. Beyond the changes enacted by the basic Regulation, there are further amendments which will be introduced in next October through the Implemented and the Delegated Acts, and which mainly relate to procedural issues.
Main changes affecting the foodstuffs sector: protection of GIs (absolute and relative grounds) and certification marks
The new EUTMR affects indeed the foodstuffs (and wines and spirits) sector. The intention of the legislator has been to put in place a efficient system of protection of PGIs through a comprehensive and systematic set of provisions which cover both the absolute grounds for refusal (as is known: the prohibitions for registration that EUIPO must examine ex officio), as well as the relative grounds (i.e., oppositions against a EUTM application based on an earlier PGI/PDO).
In respect of the absolute grounds for refusal, the new Regulation foresees explicitly the conflicts that a EU trade mark may have with a geographical indication, a traditional term for wine (TTW) or a traditional speciality guaranteed (TSG). As said, one of the most important features of the new legal framework is that it is comprehensive and systematic. It is comprehensive because we have now, for the first time, specific provisions in our EUTMR governing the conflicts between a EUTM and a PGI/TTW/TSG. While the PGIs were already contained in the former Regulation, this was not the case for TTWs and TSGs. The consequence is that EUIPO’s examiners have now a concrete, all-encompassing mandate in the EUTMR to check whether or not a TM application conflicts with any of those categories.
Similarly, it is also comprehensive because the new EUTMR lists the different instruments under which a PGI/TTW/TSG can be protected: international agreements, EU Regulations and national legislation.
In that regard, this is also why we say that the new provisions are systematic. The legislator has used again the technique of remission to the lex specialis which was already contained in the former Regulation. In other words, while the EUTMR provisions set out the obligation to check whether or not there is a conflict between a TM and a PGI/TTW/TSG, the material law which is applicable, and which defines the different scenarios of conflict, is contained in the specific instruments, for instance Regulation (EU) 1151/2012. This technique certainly brings some advantages in terms of coherence, but also certain challenges for our examiners, namely the use of concepts (‘evocation’, ‘comparable products’, etc.) which are not commonly used in Trade Mark Law.
In contrast, and as regards the relative grounds for refusal, the changes are not that relevant. In essence, the new EUTMR codifies as a separate ground the oppositions which are based on an earlier PGI which, importantly, is not subject to the requirement of use.
Finally, it is worth noting that the new Regulation also introduces the certification mark in the EUTM system. The impact in the foodstuffs sector will nevertheless be limited because these signs cannot certify ‘geographical origin’. The idea under this exclusion is to prevent an overlapping with the existing PGIs and PDOs.
How the new rules about the protection of GIs impact on the EUIPO practice in the examination of absolute and relative grounds
The changes which have been introduced by the new Regulation were already anticipated by EUIPO’s practice. Some time ago, we amended our Guidelines and instructed our examiners to apply directly the EU Regulations on PGIs, precisely in the sense that the new provisions set out now. Also, we already took into account GIs protected not only under those EU Regulations but also by international agreements. In that sense, EUIPO already examined whether or not a trade mark constitutes an evocation of a PGI, etc. Therefore, in practical terms, there will not be major changes in respect of EUIPO’s practice in this field, with two exceptions. One is that EUIPOs examiners also take into account now possible conflicts with TTWs and TSGs. Another one is that national GIs for non-agricultural products come now into the scenario of absolute grounds.
The new category of certification marks: requirements, restrictions (not suitable to certify the geographical origin) and potential issues
As said, we believe that the impact of the new certification mark in the foodstuffs sector will be limited. We are now drafting our Guidelines about this type of trade mark and a number of interesting issues are under discussion. Just to mention a few ones: its function, how to assess its distinctive character in an opposition, etc. On the technical side, there also exist some open questions, for example, the way in which the certified characteristics must be reflected in the regulation of use, the controls to be implemented by the owner, etc. Another interesting issue directly relates to the transposition of the Directive by Member States, since the prohibition of certifying a geographical origin does not appear in said instrument.
