On March 27 2013 the European Commission published a press release announcing the reform of the European trademark regime, amending both the EU Trademarks Directive (2008/95/EC) and the EU Community Trademark Regulation (207/2009). One of the key issues dealt with by the proposals relates to goods in transit.
The main aim of the reform is to promote innovation and economic growth by making the trademark system more accessible, more efficient and less expensive.
The Proposal for a Directive of the European Parliament and of the Council (2013/0089) is intended to recast the EU First Trademarks Directive (89/104/EEC, codified as the Trademarks Directive). The proposal would:
- modernise and improve existing provisions, in particular regarding the definition of a 'trademark' and the issue of counterfeit products in transit;
- achieve greater approximation of substantive law, in particular regarding collective marks;
- align principal procedural rules, notably by obliging member states to provide for an administrative procedure to challenge the validity of a trademark registration before their offices; and
- facilitate cooperation between offices.
The Proposal for a Regulation of the European Parliament and of the Council (2013/0088) is intended to amend the Community Trademark Regulation. It would:
- adapt terminology, in particular by changing 'Community trademark' to 'European trademark';
- take a common approach on EU decentralised agencies;
- streamline procedures;
- increase legal certainty by adopting the same rules as those provided by the proposal for a directive; and
- establish a framework for cooperation between the agencies and member state offices.
The proposals must be adopted by the European Parliament and the Council, according to the co-decision procedure.
Finally, the proposal would also amend EU Regulation 2869/95 regarding the taxes to be paid to the Office for Harmonisation in the Internal Market.
One of the key issues dealt with by the proposals is goods in transit. 'Goods in transit' means goods originating from countries outside the European Union and destined for sale in countries outside the European Union, without any suspicion that they are intended to be sold in the European Union.
The issue of goods in transit has been a hot topic in Europe for several years, in particular since the Philips/Nokia judgment (European Court of Justice (ECJ), December 1 2011, C-446/09 Philips and C-495/09 Nokia). In this decision the ECJ held that:
"goods coming from a non-member State which are imitations of goods protected in the European Union by a trade mark right or copies of goods protected in the European Union by copyright, a related right or a design cannot be classified as 'counterfeit goods' or 'pirated goods' within the meaning of those regulations merely on the basis of the fact that they are brought into the customs territory of the European Union under a suspensive procedure."
Thus, the owner of trademark rights in the European Union cannot take action against goods in transit in the European Union unless it can prove a suspicion that the goods are intended to be sold on the EU market.
Many have wondered whether EU law should be amended in order to enable the owner of a trademark registered in the European Union to prevent the use of goods in transit without authorisation.
In this context, the proposals aim to resolve the issue by introducing the following provisions:
- Recital 22 of the proposed directive and Recital 18 of the proposed regulation:
"With the aim of strengthening trade mark protection and combatting counterfeiting more effectively, the proprietor of a registered trade mark should be entitled to prevent third parties from bringing goods into the customs territory of the Member State without being released for free circulation there, where such goods come from third countries and bear without authorization a trade mark which is essentially identical to the trade mark registered in respect of such goods."
- Article 10.5 of the proposed directive and Article 9.5 of the proposed regulation:
"The proprietor of a registered trade mark shall also be entitled to prevent all third parties from bringing goods, in the context of commercial activity, into the customs territory of the Member State where the trade mark is registered without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorization a trade mark which is identical to the trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark."
These provisions include a broad prohibition on third parties' use of goods in transit bearing a trademark without authorisation. It will thus be important to follow the adoption of the proposals by the European Parliament and the Council in order to see whether these provisions will be amended.
For further information on this topic please contact Xavier Buffet Delmas or Camille Pecnard at Hogan Lovells by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email (email@example.com or firstname.lastname@example.org).