Almost 25 years after the adoption of the Trade Marks Directive, harmonizing national trade mark law throughout the EU (now codified as Directive 2008/95/EC, hereinafter the "Directive"), and almost 20 years since the adoption of the Community Trade Mark Regulation (now codified as Regulation 207/2009/EC, hereinafter the "CTMR"), the European Commission has issued proposals to improve both instruments.
The proposals are based on a thorough study of the European trade mark system carried out by the Max Planck Institute for Intellectual Property and Competition Law between November 2009 and February 2011, at the Commission's request. Many of the proposed changes are likely to be adopted, in view of the thoroughness of the study and the fact that it was conducted by a reputable independent party. As some of these changes could have significant effects in practice, a short overview of the most relevant suggested amendments is provided below.
1. General remarks
Max Planck Institute concluded that the European trade mark system, which is characterised by the coexistence of national and Community trade marks, is generally sound and meets business needs but could be improved.
Accordingly, the Commission's proposals are not intended to completely overhaul the system but rather to upgrade, streamline and modernise the current legislation so as to improve trade mark registration throughout the EU. The goals are to enhance accessibility, efficiency and legal certainty, reduce complexity, and lower costs.
2. Proposed changes to the Community trade marks system and OHIM
2.1. Updated terminology
In light of the Lisbon Treaty, it is suggested that the Community trade mark be renamed the European trade mark and OHIM the European Union Trade Marks and Designs Agency.
2.2. Changes to substantive law
2.2.1. Definition of a trade mark
The definition of a trade mark will no longer require that the sign be "capable of being represented graphically". Rather, the new definition states that a sign must merely be capable of "being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor". This will facilitate the registration of non-traditional marks. Furthermore, the definition specifically covers "colours as such" and "sounds".
2.2.2. Absolute grounds for refusal
It is suggested to add the following absolute grounds for refusal to the existing list:
- prior designations of origin, geographical indications, protected traditional terms for wine and traditional specialities and protected plant varieties; and
- terms which, if translated or transcribed into any script or official language of a Member State, would be descriptive.
2.2.3. Scope of protection
i) The provision on trade marks enjoying a reputation will be extended to cover situations in which the goods or services concerned are identical or similar, so as to take into account the Court of Justice's interpretation of this provision.
ii) The following are added to the list of acts which a trade mark holder may prohibit:
- making use of a sign as a trade or company name, when such use is made for the purpose of distinguishing goods or services as to their commercial origin;
- making use of a sign in comparative advertising that does not meet the requirements set forth in Directive 2006/114/EC.
iii) In order to combat counterfeiting, Community trade mark holders will be able to take action against the distribution and sale of labels, packaging and similar items which may subsequently be combined with infringing goods.
iv) In the context of suspensive customs procedures, the proposal suggests shifting the onerous burden of proof imposed by the CJEU on right holders. Rather than having to establish that goods in transit will eventually enter the EU, a trade mark holder will be entitled to prevent third parties from bringing goods into the EU customs territory in the context of a commercial activity, even if the goods remain in transit. Further, a trade mark holder will be able to object to the introduction into the EU of small consignments of infringing goods, even if only the sender is acting in the course of trade.
v) The limitations on trade mark rights are set out more clearly, e.g. the right to use one's name is restricted to personal names. The proposed regulation clarifies when third-party use should not be deemed in line with fair trade practices.
2.2.4. Description of goods and services and class headings
In the wake of the CJEU's ruling in IP Translator (C-307/10) the proposal provides that the description of goods and services must be sufficiently clear and precise; general terms will be deemed to include goods and services clearly covered by their literal meaning. For Community trade marks applied for before 22 June 2012, there will be an option to amend the description.
2.3. Filing practice
i) All Community trade mark applications should be filed with OHIM. Filing before national offices, such as the Benelux Office for Intellectual Property, will no longer be possible.
ii) Searches by OHIM and optional searches at national level will be abolished.
iii) Community trade mark fees will be due immediately upon filing, per class, in order to discourage overly broad filings that clutter up the registry.
3. Proposed changes at national level
The abovementioned suggested changes to substantive law in the Community trade mark system are also applicable to national trade marks. In addition, a series of amendments is proposed in order to achieve greater harmonisation and facilitate cooperation between national offices and OHIM.
i) The proposed directive makes the protection of prior designations of origin, geographical indications, protected traditional terms for wine and traditional specialities, and protected plant varieties compulsory.
ii) The optional protection currently afforded trade marks with a reputation will become mandatory. Trade marks with a reputation already benefit from heightened protection in the Benelux.
iii) The relative grounds for refusal (as opposed to absolute grounds for refusal) taken into account by 12 Member States to refuse registration will be abolished. This issue does not affect the Benelux, as the Benelux Office for Intellectual Property does not take into consideration relative grounds for refusal.
iv) It will become mandatory to provide for opposition and cancellation proceedings before the national trade mark office. In the Benelux, opposition proceedings are conducted before the Benelux Office for Intellectual Property while cancellation proceedings must be brought before the national courts.
v) The classification rules will be the same as for Community trade marks, and the fees will also be per class. In the Benelux, the base fees currently cover three classes.
4. Next steps
The proposals will be submitted to the European Parliament and the Council for adoption pursuant to the co-decision procedure. The timetable is uncertain, but they are expected to be adopted in the first half of next year. The new regulation will take effect once it enters into force. The Member States will have two years to transpose the new directive into national law.
