The Future of the Community Trade Mark
In April the European Commission, the European Parliament and the EU Council reached provisional political agreement on a European trade mark reform package. The proposals have now been published in full and will overhaul both the 1989 Directive approximating the laws of the Member States relating to trade marks and the 1994 Regulation on the Community trade mark.
The changes to both the Regulation and the Directive will modernise current provisions and also add new substantive law. For example, the Directive will now include provisions concerning the protection of geographical indications and the registration of collective marks. It will also align important procedural aspects of the registration. The revised Regulation will include a new set of rules allowing for the registration of certification marks at EU level, and revise the existing fee levels.
Highlights of the most interesting changes for users of the system include:
- The Community trade mark is in future to be called the ‘European Union trade mark’
- OHIM is to be renamed the ‘European Union Intellectual Property Office’
- The requirement of ‘graphic representability’ will be removed; this will increase the scope of registerability with regard to certain non-traditional marks, such as sounds, provided they can be represented ‘to determine the clear and precise subject matter’ to be protected
- Protection of geographical indications and traditional terms will be enhanced
- A separate "class" fee payable for each additional product class applied for beyond the first
- A proportionate decrease of the application fee and, significant falls in renewal fees
- For example, an applicant filing in 1 class, will pay an official application fee of E850 and a renewal fee of E850; a reduction of E550 from the current fees of E900 and E1350 respectively. However, for a three class application, official filing fees rise by E50
- Provisions to allow proprietors of EU trade marks to stop the affixing of an infringing mark to goods
- More effective means provided to fight against counterfeit goods, in particular when they are in transit through the Union
- Streamlined and harmonised registration procedures, ensuring trade mark applications across the EU will be subject to the same filing date and other formality requirements
- Opposition, revocation and validity actions must be provided for by all national IP offices concerned without need to go to court (i.e. faster and less costly)
The political agreement still needs to be formally confirmed by the European Parliament and the Council, which is expected in the coming weeks. After formal adoption of the package, EU countries will have three years to transpose the recast Directive into national law. Most of the amendments to the Regulation will come into effect with its entry into force 90 days after its publication in the EU Official Journal, while the remainder will apply only once the necessary secondary legislation has been enacted.