Overview of the 2024 Edition of the EUIPO Guidelines

The Trademark and Design Guidelines reflect the Office’s trademark and design practice. They are the main point of reference for users of the European Union trademark system and the Community design system, and for professional advisers who want to ensure they have the latest information on the Office’s examination practices. 

The Guidelines are regularly updated to take account of changes in trademark and design laws and regulations, case law or other significant developments and to provide clarifications. Every year, the national trademark offices, users associations and academia are involved in the updating process.

As a member of the Harmonization Committee of ECTA (European Communities Trade Mark Association), LBP’s Dietrich Blumenröhr was once again involved in this consultation.

The 2024 edition of the guidelines came into force on 31 March 2024. The most important changes are listed and explained below:

Part A General Rules, 10 Evidence:

New Section: This new section on Evidence compiles all relevant information and deals with the general provisions on means of evidence for all proceedings before the Office. One of the aims of this new chapter is to help parties understand how the probative value of documentary evidence can be improved and what to avoid when submitting evidence. This new section goes through:

•          2 How to submit evidence: This title explains how to file evidence, taking into account the relevant legal framework and general requirements and recommendations, to ensure that evidence is correctly presented to avoid possible deficiencies or evidence not being taken into account;

•          3 References to other proceedings: This title explains how to correctly refer to evidence submitted in other proceedings as well as to other documents such as decisions of national offices and/or of the Office:

•          4 Specific means of evidence: This title provides detailed information on specific means of evidence that can be adduced such as online evidence, social media, affidavits, annual reports and commercial documentation in general, as well as opinion polls and market surveys. Thorough explanations are given on what the evidence should include to ensure its probative value and that this is as enhanced as possible to better support the claims made. Reference to case-law is made throughout, as well as examples of what pieces of evidence may be more appropriate to prove different legal facts and/or requirements.

•          5 Belated evidence in inter parts proceedings: This title concerns belated evidence in inter parts proceedings, with detailed guidance covering what constitutes belated evidence and how the Office exercises its discretionary power in this sense.

Part B Examination, Section 3 Classification, 4.4 Virtual goods, services in virtual environments and NFTs:

New paragraph: This new point contains the Office practice on the matter as introduced during the latest revision of the Guidelines (i.e. Annex, point 6.25 Downloadable goods and virtual goods), which is further developed regarding the classification of services in virtual environments (in 4.4.2) and NFTs (in 4.4.3) used in relation to goods and services. This takes into account the latest changes to the General Remarks of the Nice Classification as agreed by the WIPO Committee of Experts.

Part B Examination, Section 4 Absolute Grounds for Refusal, 3 Non-distinctive trademarks (Article 7(1)(b) EUTMR), 2 Virtual goods and services in virtual environment:

New paragraph: This new paragraph reflects the practice of the Office regarding the assessment of distinctiveness when virtual goods and services in virtual environment are at stake.

Part B Examination, Section 4 Absolute Grounds for Refusal, 14 Acquired distinctiveness through use (Article 7(3) EUTMR), 8 Assessment of the Evidence:

Full revision and restructure: This point has been revised in parallel with the creation of the new section on Evidence (Part A, General rules, Section 10) which contains horizontal aspect of that subject.

Part C Opposition, Section 2 Double identity and likelihood of confusion, 1 General Principles, 2.3 Article 8(1)(a) and (b) EUTMR: two distinct sets of conditions:

Implementation of recent case-law: New text has been added under this paragraph to explain the Office’s practice following recent case-law (01.02.2023,T- 349/22, HACKER/HACKER SPACE)

Part C Opposition, Section 2 Double identity and likelihood of confusion, 2 Comparison of Good and Services, 5.9 virtual goods versus real-world goods:

New point: This new point provides guidance on how to compare virtual goods and their real-world counterparts.

Part C Opposition, Section 7 Proof of Use, 3.1 Use in the territory where the trade mark is protected:

Implementation of recent case-law: The text has been modified to implement recent case-law that made a clear distinction between place of provision of a service and place of use of the relevant trade mark (13/07/2022, T-768/20, The standard (fig.)  

Part C Opposition, Section 7 Proof of Use, 6.1.2.2 Commercial activity versus promotional activity:

It has been clarified that the use in online or virtual environment only for promoting/facilitating the purchase of the real-world goods cannot establish genuine use of virtual goods.

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Picture: EUIPO