The European Commission (the Commission) has proposed a number of initiatives aimed at improving trade mark registration systems across the European Union to make them cheaper, quicker, more reliable and more predictable.
The Commission based its recommendations mainly on a study by the Max Planck Institute for Intellectual Property and Competition Law which concluded that the basics of the European trade mark system are solid. The perceived need for modernisation and improvements is largely due to the fact that national trade mark registration in EU countries was harmonised 20 years ago and the Community trade mark (CTM) was created over 15 years ago. There has been no major modification to the regime since then, despite the fact that the business environment has changed significantly during this time. There are also inconsistencies between the two major legislative instruments governing the European trade mark system: the 1994 CTM Regulation (now codified as Regulation 2007/2009/EC) (CTMR) and the 1989 Trade Mark Directive (now codified as Directive 2008/95/EC) (TMD).
The proposed reforms are intended to streamline and harmonise registration procedures and modernise existing provisions across EU countries by:
- Amending outdated provisions.
- Removing ambiguities and clarifying trade mark rights in terms of scope and limitations (partially by incorporating Court of Justice of the European Union case law).
- Facilitating cooperation between national registries and the Office of Harmonization for the Internal Market (OHIM) by developing common tools and putting in place a legal basis for cooperation.
- Improving the means of fighting against counterfeit goods.
- Introducing more flexibility to the fee structures of OHIM and national registries to better meet the needs of businesses.
The reforms are ultimately aimed at recasting the TMD and revising the CTMR and the 1995 Commission Regulation (2869/95) concerning fees payable to OHIM (Fees Regulation). As well as harmonising the rules and criteria for the classification of goods and services and introducing new fee structures for national registries and OHIM, the Commission proposes a new definition of a trade mark and a number of significant procedural changes aimed at reducing costs and delay.
By way of example, in order for a sign to be protectable as a trade mark, it currently must be capable of "graphic representation", a requirement that is outdated in relation to the protection of non-traditional marks. In the case of sound marks, for example, representation by other means, such as by a sound file, would enhance legal certainty as to what is being protected. The proposed new definition of a trade mark does not restrict the permissible means of representation to graphic or visual representation, but is instead broad enough to allow representation by appropriate means, such as technological means, to identify the subject of protection.
At present, OHIM and national registries follow different rules and criteria for the classification of goods and services. The Commission proposes that the designation of goods and services covered by a trade mark application should follow the same rules in all EU countries and be aligned with those applicable to CTMs.
Of particular interest is the proposal to introduce new fee structures whereby the basic application fee for a trade mark for a CTM and all national marks in EU countries would offer protection in only one class, with a separate fee payable for each additional class applied for. Other proposals include revisions to the provisions on bad faith protection of geographical indications and traditional terms, and the abolition of relative grounds examination in all EU countries.
It is predicted that the new legislative proposals will be adopted by Spring 2014, following which EU countries will have two years to transpose the new rules into national law. The majority of amendments to the Regulation will take effect once it enters into force. The revision of the Fees Regulation will follow a different procedure, requiring prior endorsement by the Committee on OHIM fees. The intention is to adopt the amended Fees Regulation before the end of 2013.