Following two years of discussions, the Commission, the European Parliament and the Council have provisionally announced a trade mark reform and harmonisation package. The proposed reforms have a dual aim – to encourage innovation and growth by lowering costs, increasing speed of registration and providing increased legal certainty; and ensuring greater cooperation between OHIM and national trade mark offices.
The reform package proposes to recast the 1989 Directive1 (which provided for a degree of harmonisation in relation to national trade marks) to further align registration procedures between member states and to revise the 1994 Regulation2 (which created Community Trade Marks (“CTM”s) and the supervisory body, the Office for Harmonisation in the Internal Market). The changes to the 1994 Regulation would include renaming CTMs as European Trade Marks and renaming OHIM as the European Union Intellectual Property Office; creating EU-wide certification marks and providing for increased complementarity between the re-named EU IPO and national IP offices.
The specific measures proposed as part of the reform package include:
- Changes to the fee structure for CTMs– under the proposed reform fees for CTM applications will be levied per class, rather than including up to three classes as standard. This measure is aimed at creating savings for businesses applying for and renewing trade marks but also seems likely to encourage businesses to think more carefully about the number of classes for which they register and renew their trade marks.
- Provision for new types of trade marks such as sound, motion and hologram marks which are likely to become increasingly relevant in the digital age. It will be interesting to see whether the wider scope for registration of trade marks will also lead to increased registrations of unusual types of trade marks which are currently allowed butdifficult to obtain in practice, e.g. trade marks for colours.
- Increased harmonisation of registration procedures, filing date requirements, standards for the designation and classification of goods and services and opposition and cancellation procedures. The proposals also envisage the development of common search tools and databases to aid increased cooperation between national IP offices and the EU IPO. It is hoped that these measures will make it easier for businesses to oppose trade mark applications and to seek revocation or invalidity of existing registrations through the national IP offices without the need to go to court.
- Finally, the proposal includes measures to combat counterfeit goods especially in relation to goods which are in transit through the EU. This development will be of great interest to rights holders seeking to combat counterfeiting, as it will significantly increase the volume of worldwide trade which is subject to EU trade mark enforcement measures.
Overall, it is hoped that the proposals will improve the situation for both national trade mark and CTM holders, with a particular focus on increased access to trade mark protection for SMEs and measures aimed at making the EU internal market more competitive and attractive to businesses. The proposed reforms are still to be formally confirmed by the European Parliament and the Council, however as all three EU institutions were involved in these discussions, it is expected that they will be confirmed without major changes.