The final texts of the proposed new Trade Mark Directive and Community Trade Mark Regulation have been published by the Council of the European Union, marking the first significant change to the harmonised trade mark regime introduced over 20 years ago.

The new regime seeks to improve trade mark law and practice across member states through:

  • Increased harmonisation of  rules;
  • Introducing measures to protect brand owners rights relating to counterfeit goods in transit;
  • Modernized provisions to facilitate registration of new types of trade marks;
  • Increased co-operation between the Office for Harmonisation in the the Internal Market (the “OHIM”) and national trade mark offices; and
  • Changes to the governance and finances of the OHIM.

While the cost of trade mark registration will be reduced under the new regime, additional class fees will be introduced for applications and renewals in order to discourage trade marks owners from filing and maintaining overly broad trade mark specifications. The OHIM will also be renamed as the “European Union Intellectual Property Office”.

It is expected that the current draft Regulation will come into force in the second quarter of 2016. Once the draft Directive is formally adopted, member states will have three years in which to transpose its provisions into national law.

The proposed regime will improve trade mark protections for all companies regardless of their size, market or geographical presence. For this reason, the package is expected to increase incentives for innovation by enhancing legal certainty and predictability, limiting the risks of litigation and providing a level playing field for all European businesses.