On 27 March 2013 the European Commission proposed various modifications to the Community Trademark Regulation and the Directive to harmonize the national provisions regarding trademarks. The proposal is based on the Study on the Overall Functioning of the European Trademark System published 8 March 2011 by the Max Planck Institute for Intellectual Property and Competition Law in Munich. The Max Planck Institute noted in its study certain problems such as a lack of cooperation between trademark offices in the EU and a divergence with respect to national provisions. Further it was pointed out further that procedural aspects are not covered by the Directive and substantive legal aspects are covered only insufficiently. Moreover, the rules regarding the cooperation between the Office for Harmonization in the Internal Market (OHIM) and the national offices in the Community Trademark Regulation are vague at best. The result is significant legal uncertainty and an inconsistent framework for companies within the EU.

The main aims of the proposal

The aim of the Commission’s proposals therefore is to modernize the trademark system in Europe; improve access to the trademark systems; increase legal certainty; and to ensure the coexistence and complementarity of national trademarks and Community trademarks. In this respect the trademark-related procedures and the substantive legal questions would be harmonized, the registration procedure all over the EU would become more efficient and cheaper, cooperation would be facilitated as well as capacities for technical cooperation in the national trademark offices, and a longlasting financing of cooperation measures would be ensured. Hereby the Commission hopes to strengthen the competitiveness of companies by creating better conditions for innovation and more effective trademark protection especially against counterfeits.

The proposed revisions

The main modifications proposed by the Commission concerning the Community Trademark Regulation are:

  • The terminology of the Lisbon Treaty should be adopted and the term “Community trademark” changed to “European trademark”.
  • With respect to the fees, a “one-classper- fee” system should be applied (this is also proposed for the Trademark Directive and therefore for national trademarks). The fee per class would be reduced at the same time. The Commission hopes that companies will only apply for trademark protection according to their actual business needs and then only have to pay the individual fee for what they need.
  • The procedure regarding the application and registration of a Community trademark would be tightened. Therefore, the current option to submit a Community trademark application at the national trademark offices will be abolished. Moreover, when submitting the application applicants would already have to show that filing fees have been paid. This would allow the office to start with the examination of the application right away. The publication of the application would take place earlier, as the current one-month period starting from communication of the search results will be dropped. The deadline for filing an opposition to an international registration would be changed. Article 156 of the Community Trade Mark Regulation (CTMR) would be changed so that the period between the date of publication pursuant to Article 152(1) CTMR and the beginning of the period for opposition to the international registration is shortened to one month.
  • Legal certainty would be improved by amending outdated provisions and removing ambiguities. In this respect it has to be pointed out that the Commission proposes that the requirement of “graphic representation” in Article 4 CTMR be abolished. Hereby, the Commission hopes to create more flexibility and higher legal certainty.
  • With respect to the rights conferred by a Community trademark the Commission plans to amend Article 9 CTMR by clarifying that infringement claims are without prejudice to earlier rights. This is in line with Article 16(1) of the TRIPS Agreement. Moreover, it is planned to clarify that in cases of both double identity pursuant to Article 9(1)(a) CTMR, and similarity pursuant to Article 9(1)(b) CTMR, it is only the indication of origin function which matters. Furthermore, the use of a protected trademark as a trade name or company name will be regarded as an infringing act if the requirement of a use for goods or services is met.
  • With respect to consignments from commercial suppliers the Commission proposes that it should be clarified that goods may not be imported into the EU even if only the consigner is acting for commercial purposes. Thus, the Commission wants to make sure that a trademark owner has the right to prevent businesses from importing goods located outside the EU which have been sold, offered, shipped or advertised to private persons, and to discourage the ordering and sale of counterfeit goods over the Internet.
  • The Commission also finds it necessary – as a reaction to the transshipment cases which courts have been struggling with – to include a European provision which entitles right holders to prevent third parties from bringing goods to which a third party trademark is attached, into the customs territory of the European Union, irrespective of whether they will be released in the EU for free circulation.
  • Finally it proposes provisions allowing proceedings against the distribution and sale of labels and packaging or similar items which may subsequently be combined with illicit products.

The introduction of many of the proposals by the Commission would be advantageous for current or potential trademark owners within the EU. They would also make the system more homogeneous vis-à-vis domestic offices. It remains to be seen if these proposals will be introduced more or less in the way they have now been proposed once they have gone through the European legislative process.