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Proposals for a Revision of EU Trade Mark Legislation

On 27th March 2013 the European Commission adopted proposals for a revision of EU trade mark legislation. The aim of the proposal is to provide for quicker, cheaper and more reliable trade mark registration across the EU; this in turn will improve conditions for businesses to innovate and grow.

The proposals contain 3 initiatives;

1. A revision of the current Trade Mark Directive (TMD)
2. A revision of the current Community Trade Mark Regulation (CTMR)
3. A revision of the current Trade Mark Fees Regulation (TMFR) on the fees payable to the Office for Harmonisation in the Internal Market (OHIM).

What is a Trade Mark?

The OHIM describes a trade mark as ‘a sign which serves to distinguish the goods and services of one organisation from those to another’. 

A trade mark has 3 main functions;

1. It identifies the origins of goods and services;
2. It guarantees consistent quality by showing an organisation’s commitment to consumers and users;
3. Finally, it is a form of communication and a basis for marketing and advertising

When you register a trade mark you need to indicate for which goods and/or services your trade mark will be used.
A trade mark is a powerful asset of a company to protect its brand and image; therefore the registration of trademarks is crucial in preventing others from using it.

Background to the Proposals

In Europe trade marks can be registered at national level at the Industrial Property (IP) office of individual Member States or at EU level as a Community Trade Mark (CTM).
For the past 20 years there has been a harmonisation of national trade mark registration across the EU and for the past 15 years national and CTM rights have been co-existing.

The CTM is a trade mark that once registered at the OHIM, is valid across all 27 EU Member States. The CTM system provides for one time registration, at a reasonable cost and will be valid for 10 years before having to be renewed.
In the last 15 years 1 million CTM’s have been registered demonstrating its popularity and its importance to the European economy. Due to the CTM’s growing popularity, the Commission have felt it necessary to modernise the current legislation.

Outline of the Proposals

The Commission have proposed draft revisions to the current Directive and Regulation together with changes to the fee levels under the Trade Mark Fee Regulation. The objectives of the proposal are to;

- Streamline and harmonise registration procedures within the OHIM and national registries.
- Improving the legislation by amending outdated provisions, removing ambiguities, clarifying trade mark rights in terms of their scope and limitations, and incorporating European case law.
- Improving provision for combating counterfeit goods that are in transit through the EU.
- Facilitating co-operation between national registries and OHIM.

The proposals will also look to bring the law applicable to national trade marks in line with that of CTMs together with the alignment of rules and procedures.

In relation to fees, the Commission is proposing a principle of ‘one class per fee’ that will apply to both CTM and national trade mark applications. Currently, within a CTM application (and some national registrations) applicants need to include 3 classes of goods and services to cover their trade mark. This encourages applicants to include classes that hold no commercial interest to them and for which the trade mark will never be used.

The new system will allow a trade mark to be registered in one product class only resulting in large savings for businesses across the EU. This will allow businesses, especially small medium sized enterprises, to apply for a trade mark tailored to their specific business needs at a cost that covers their individual needs only.

Next steps

The revision of the Trade Mark Directive and the Community Trade Mark Regulation will require the approval of the European Parliament and Council under the co-decision procedure. The Commission hopes to adopt the measures by Spring 2014 and the Member States will have two years to transpose the new Directive and Regulation into national law.
The revision of the Trade Mark Fees Regulation will be adopted by the Commission as an ‘implementing act’. This will only require approval from a committee of fee experts from the 27 Member States. Certain EU measures require uniform implementation across the EU and therefore the Commission has authority to adopt ‘implementing acts’ relating to the implementation of such measures. The first meeting of the committee will take place before summer with the aim of adopting the amended fees regulation by the end of 2013.

Web Links

• Proposal for a Regulation amending Council Regulation (EC) No 207/2009 on the Community Trade Mark
• Directive to approximate the laws of the Member States relating to Trade Marks
• Impact Assessment

About the author

Published: Monday 3rd June 2013
Categorised: Corporate Law

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