This is the final article in a series of articles about the impending changes to the Community trade mark system. The first three articles can be accessed here. In this article, we will consider the impact of the reforms on national trade mark systems, which reforms were missing and which reforms may cause issues in practice.
Harmonisation of national law
Whilst some differences between national trade mark law and European trade mark law will still exist following the reforms (for example, third party observations will remain an optional provision under national law), many of the substantive changes will apply to both systems (such as the changes to classification of practice).
Further changes will also be enacted to bring national trade mark systems in line with the current Community trade mark system (such as being able to apply for invalidity on the ground that a registration was applied for in bad faith and oppositions or invalidity actions based on trade marks with a reputation).
Of particular note is the mandatory introduction of “efficient and expeditious” administrative procedures before national registries for oppositions, revocation or invalidity actions. Previously, in some countries such as Spain or Italy, it was only possible to bring a revocation or invalidity action through the courts (which can be cumbersome and expensive). However, whilst the primary changes to national trade mark systems will come into effect on 14 January 2019, countries have been given a 7 year period (that is, until 14 January 2023) to transpose this provision into national law.
The additional harmonisation will help to ensure co-existence and complementarity between the national and European Union trade mark systems. In particular, brand owners will welcome being able to bring invalidity and revocation actions across the European Union via administrative procedures at national registries, rather than having to resort to court proceedings.
Overall, the changes to the Community trade mark system are welcome. However, there are a number of changes which are conspicuously missing from the reforms and, given the drawn out legislative process, it is disappointing that:
- it will still not be possible to file an opposition against an application filed in bad faith and brand owners will be left in the unsatisfactory position of having to wait for bad-faith applications to reach registration before being able to take action;
- further harmonisation between the national and European trade mark systems has not been achieved, in particular regarding national registries objecting to trade mark applications on the basis of prior rights.
In addition, there are a number of drawbacks to the reforms, namely:
- there are a number of vague terms in the reforms which will require interpretation by the Court of Justice of the European Union, including what constitutes “any means” for graphically representing a mark and what constitutes “any characteristic” for the widened technical exclusion. These uncertainties undermine the reforms stated purpose of increasing legal certainty;
- it is not desirable for national courts to have to determine whether counterfeit goods in transit within the European Union would constitute infringement under the foreign law of the country of final destination;
- the reforms may fall short of modernising the trade mark system in relation to non-traditional marks as, whilst the requirement of graphic representation has been removed, the revised technical exclusion may negatively impact the registrability of these marks; and
- the 7 year transition period for national systems to introduce administrative procedures for revocation and invalidity procedures is unduly long and goes against the stated aim of increasing efficiency across national trade mark systems.