TOWARDS THE MODERNISATION OF THE EUROPEAN TRADE MARK SYSTEM
On 27 March 2013, the European Commission presented a number of initiatives to modernise the European trade mark system.
The proposals intend to revise:
- The 1989 Directive harmonising the laws of the Member States regarding trade marks, codified by Directive 2008/95/EC;
- The 1994 Regulation on the Community trade mark codified by Regulation 207/2009;
- And the Commission's 1995 Regulation relating to fees to be paid to the OHIM (the European Union's agency in charge of the registration of trade marks and designs).
The guidelines for this reform are: the simplification and harmonisation of registration procedures, as well as the consolidation of the intellectual property rights a trade mark confers.
Firstly, changes in terminology should be noted. The term "Community trade mark" will be replaced by "European trade mark", and the OHIM will be called the "European Union Trade Marks and Designs Agency".
1) Fee reduction
The proposed system provides for a reduction in fees to be paid for trade mark registration applications and renewals. Currently, the registration of a national or Community trade mark is automatic for three classes. In the revised system, each national trade mark office in the EU will be obliged to apply a "one-class-per-fee" system, which will allow for registration in a single class or additional classes, as applicable.
This new "made-to-measure" system will better meet your actual requirements. Protection will therefore become more accessible and less costly.
2) The modernisation and simplification of registration systems
With a view to modernising current laws, the Commission proposes the suppression of the "graphic representation" of the sign requirement for trade mark registrations. This will favour access to the protection of "non-conventional" trade marks, such as sound marks. Non-graphic, technology-based representation (for example, a sound file) will be sufficient as long as it allows for more precise identification of the mark. The removal of this condition improves legal security and enhances the flexibility to the registration process.
Furthermore, along with the removal of the current search system, the development of improved tools for anteriority searches has been planned. The objective is to expedite the registration process and increase legal security.
3) Stronger anti-counterfeiting regulation
With regard to the fight against counterfeiting, the Commission proposes a review of the Court of Justice of the European Union's current case law on goods in transit. According to the Court's case law, goods that transit within the European Union but do not originate from the EU cannot be considered to infringe (CJEU, 1 December 2011, Philips v. Nokia).
In the revised system, goods in transit within the EU may be subject to infringement proceedings. Furthermore, this right to initiate legal proceedings against merchandise in transit but not sold within the EU covers all preparatory steps such as packaging, labelling and other similar actions. This is a major move forward in the fight against infringers outside of the EU.
4) Implementation of revocation and invalidity proceedings
The proposed Directive provides for the implementation of an administrative proceeding to oppose the validity of a trade mark in all Member States. This will allow for the initiation of an action for revocation or invalidity directly before the national trade mark offices. This is a major innovation in France as today only judicial courts have jurisdiction over this type of legal action.
This new procedure will allow for a more effective and rapid defence at a lower cost of your registered trade marks and those pending registration.
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These legislative proposals must be adopted by the European Parliament and Council in accordance with the co-decision procedure. They should become effective in 2014.
With regard to the Regulation covering fees to be paid, only the approval of the Commission is required - in the form of an implementing act – once the Regulation is approved by the committee that has competence over fees to be paid to the OHIM. According to the EU's official website (Europa.eu), the revised Regulation should be adopted before the end of the year.
Contact: Béatrice DAUBIN