In 2007, the EU Council of Ministers decided there was a need to update the European trade mark system. The Commission took this on board and issued a final report prepared by the Max Planck Institute identifying certain problem areas. Impact assessments carried out for both a review of the Regulation and of the Directive identified two main problems: (a) the divergent provisions of the existing regulatory framework, (b) the low level of cooperation between trade mark offices in the EU. The proposed package contains three initiatives:
- A revision of the 1994 Regulation (codified as 207/2009/EC) governing Community Trade Marks;
- A revision of the 1989 Directive (codified as 2008/95/EC) which is the basis for the Member States' national trade mark laws, such as the Trade Marks Act 1996; and
- A revision of the 1995 Commission Regulation 2869/95 on the fees payable to Office for Harmonisation in the Internal Market (OHIM).
How will the Reform Affect Businesses?
- The initiatives are intended to allow for cheaper, quicker, more reliable and predictable trade mark registration systems. The aim is to improve conditions for businesses to innovate and to benefit from more effective trade mark protection against counterfeits, including fake goods in transit through the EU's territory.
- All trade mark offices in the EU will have a fee structure where a separate “class” fee is paid for each additional product class applied for beyond the first and not the third class.
- The option for filing Community trade marks at national offices will be abolished.
- Class headings may be used to identify goods or services provided they are sufficiently clear and precise. Class headings will be given their literal meaning. Owners of registrations which predate 22 June 2012 and which use class headings can file a declaration to state their intention was to include all goods or services beyond those covered by the literal meaning of the class.
- There will no longer be a requirement for graphic representation as this is outdated and creates legal uncertainty for non-traditional marks. It can be inferred from the draft legislation that colours, shapes and sounds will be successful on application provided they distinguish goods and services and are represented appropriately so that people can see the “precise subject” of protection. For example it is broad enough to allow technological means to identify the subject of protection.
- The Trade Mark Directive is to be revised to include provisions relating to geographical indications, traditional terms for wines and traditional specialities guaranteed as absolute grounds for refusal. This will guarantee that the level of protection afforded to these rights is being applied in a uniform and exhaustive manner in trade mark examination throughout the EU.
- The Commission also proposes to abolish examinations on relative grounds due to the perception that they often constitute an unnecessary barrier to registration as many cited earlier rights are no longer in use. Consequently, this rules out the possible duplication of procedures, and significant delays in the prosecution of applications. This would bring about a significant change in the examination procedures of the Irish Trade Marks Office which currently examines trade mark applications on relative grounds.
- In relation to opposition proceedings, where the proprietor of an earlier Community trade mark is requested to show genuine use, the relevant five year period will be the five years' preceding the date of filing (or the date of priority) of the later Community trade mark, as opposed to the five years' preceding the date of publication.
- The legislation will introduce a bad faith relative ground for opposition where an applicant applies for a trade mark in bad faith which is likely to be confused with an earlier trade mark protected outside the EU.
Dates to be Implemented
The legislative proposals will be transmitted to the European Parliament and the Council for adoption under the codecision procedure. The Commission hopes the proposals will be adopted by Spring 2014 and that EU countries will have to transpose the new rules of the Directive into national law within the following two years.
However, the proposed revision of the Fees Regulation will be implemented sooner. The first meeting of the Committee on OHIM fees will take place before the summer with the aim of adopting the amended Fees Regulation before the end of 2013.