MARQUES is pleased to share with Class 46 readers the following recently published decision of the Executive Director of the EUIPO:

Decision concerning communication by electronic means including fax

Decision No EX-17-4 of the Executive Director of EUIPO, of 16 August, 2017 ... sets out the accepted means of electronic communication with the Office including an Annex setting out the technical requirements, size and formats for attachments to electronic filing and communication.

The Decision takes into account the legislative reform changes applying from 1 October 2017 and the changing communications landscape, in particular on the use of fax.

Regarding the use of fax:

*     From 1 October 2017, along with the User Area (e-filing), fax falls within the definition of communication by ‘electronic means’, meaning that the discounted fee for EUTM applications and renewals by electronic means in Annex I EUTMR will apply to fax.

*     From 1 January 2018, however, fax will no longer be accepted for filing EUTM applications or renewals except as a backup system if technical malfunctions prevent e-filing. In such a case applicants can secure a filing date by fax if: (i) for EUTM applications, they resubmit the same application by e-filing within three working days; (ii) for EUTM renewals, they submit the renewal application by fax no more than three working days before the expiry of the initial or extended statutory time limit for renewal

This change recognises the massive shifts away from fax for EUTM applications and renewals (less than 1% and 2% of the totals, respectively), but also recognises the reassurance that fax provides as a ‘backup’ system even for users who have switched to e-filing. Moreover, the change is a further step towards the Office’s objective of becoming fully electronic by the end of the Strategic Plan 2020.

Finally, users are also reminded that, as of and from 1 October 2017, applications for trade marks where the representation has a colour component (including figurative marks) cannot be filed by fax because there are no legal provisions that facilitate the subsequent filing of a representation in colour.

Class 46 will soon publish an update from the MARQUES European Trade Mark Law and Practice Team on all the changes coming into effect on 1 October.