The EU Presidency has issued a ‘compromise proposal’ for the Directive of the European Parliament and the Council to approximate the laws of the Member States relating to trade marks. 

The release suggests that discussions on the Directive in the Council Working Group are now advancing and it is considered unlikely that there will be significant changes to the proposal at this late stage.  That said, the proposal refers to a number of options where there are issues yet to be agreed.The UK Intellectual Property Office has said that it expects discussions on the proposal to take place before Christmas; hence, the request for comments to be sent in by 13 December to the European Parliament and Commission or directly to the IPO at europeanTradeMarkReform@ipo.gov.uk.   

Once further discussions have taken place, the Council of the Member States, the Commission and the European Parliament will talk further with a view to producing a final draft.

Inevitably with such an important piece of legislation that will need to be implemented across the EU in all Member States, there has already been a great deal of discussion regarding the proposed changes.Certainly, the intentions and direction of the proposals, which first came about as a result of the Max Planck review, are not considered to be completely transparent.

We understand that there is a tight timeframe in place for responsible rapporteur Cecilia Wikström (Swedish Member of the European Parliament) to have the proposed changes implemented in light of the European Parliament elections due to take place in May 2014. If the changes are not implemented promptly, this could cause a lengthy set-back.The current codified Directive was implemented on 22 October 2008.

The proposal is part of the package of changes (also set to include a revised EU trade mark Regulation) that was announced by the European Commission earlier this year with a view to making EU-wide trade mark registration systems “cheaper, quicker, more reliable and predictable”.  The proposal includes a specific reference to making the Directive more consistent with the Regulation (including replicating the absolute and relative grounds for refusal) and reducing the areas of divergence within the trade mark system in Europe as a whole, whilst maintaining national trade mark protection as an option for Applicants.It states that a desirable outcome would be that Offices of Member States cooperate with each other to promote convergence

The specific proposed changes are wide ranging from a requirement for all Member States to examine applications on absolute grounds for refusal to amendments to the graphical representation requirements and the proposed renaming of OHIM as the European Union Trade Marks and Designs Agency (EUTMDA). One particularly strong theme in the proposal is the proposed strengthening of protection against counterfeits.