Revision of the Revision of the European Trade Mark European Trade Mark system system 20 June 2013 20 June 2013
Context and preparatory works Context and preparatory works � 2008 + 2008 + 2011 IPR Strategy Communication 2011 IPR Strategy Communications s � � Max Planck Study Max Planck Study � � Stakeholder dialogue Stakeholder dialogue � � Impact Assessment Impact Assessment � � 2012 Council Conclusions 2012 Council Conclusions �
Max Planck Study Max Planck Study � November 2009 November 2009: : contract contract; ; March 2011 March 2011: : publication of Final Report publication of Final Report � � Basic features of the European TM system Basic features of the European TM system – – characterised by the characterised by the � coexistence of the CTM and national TM protection – coexistence of the CTM and national TM protection – have proven have proven themselves in practice and no major legislative amendments or reforms themselves in practice and no major legislative amendments or re forms are necessary are necessary � C C onvergence of laws and practices in the EU is necessary onvergence of laws and practices in the EU is necessary in order for TM in order for TM � protection to continue to be an essential element in the competitive market protection to continue to be an essential element in the competi tive market economy of the EU. economy of the EU. � Update and further develop the system as a whole with a particul Update and further develop the system as a whole with a particular focus in ar focus in � increasing its overall coherence and increasing its overall coherence and reinforcing the principle of reinforcing the principle of coexistence . coexistence .
Impact Assessment (I) Impact Assessment (I) � IA fundamentals: � IA fundamentals: � CTM law does not replace CTM law does not replace MS's MS's TM laws but provides additional legal TM laws but provides additional legal � framework for TM protection throughout the entire EU framework for TM protection throughout the entire EU � Coexistence does not mean that CTM and national systems merely Coexistence does not mean that CTM and national systems merely exist in exist in � parallel but that they should complement each other harmoniously, that is, in , that is, in parallel but that they should complement each other harmoniously a way that allows each system to attain its specific purpose. a way that allows each system to attain its specific purpose. � 2 problems identified: 2 problems identified: � divergences of law (missing substantive & lack of any procedural rules) rules) divergences of law (missing substantive & lack of any procedural 1. 1. insufficient level of cooperation between OHIM and national offices ces insufficient level of cooperation between OHIM and national offi 2. 2. (vague legal base, insufficient technical and financial capacity) ) (vague legal base, insufficient technical and financial capacity
Impact Assessment (II): Objectives Impact Assessment (II): Objectives General objective: To modernise the trade mark system in Europe, thereby thereby � � General objective: To modernise the trade mark system in Europe, enhancing EU companies' competitiveness by enhancing EU companies' competitiveness by Improving accessibility accessibility of TM systems = decrease costs; increase speed and of TM systems = decrease costs; increase speed and Improving � � predictability predictability Providing legal certainty Providing legal certainty for all businesses in the EU for all businesses in the EU � � Ensuring coexistence and coexistence and complementarity complementarity between EU and national systems between EU and national systems Ensuring � � Specific objectives: � Specific objectives: � Increase convergence of the TM Directive with the CTM Regulation Increase convergence of the TM Directive with the CTM Regulation � � Increase level of cooperation between OHIM and national trade mark offices Increase level of cooperation between OHIM and national trade ma rk offices � � Operational objectives: � � Operational objectives: Achieving greater approximation of trade mark procedures and substantive Achieving greater approximation of trade mark procedures and sub stantive � � issues issues Providing adequate regulatory incentive for cooperation Providing adequate regulatory incentive for cooperation � � Technical cooperation capacity building at national TM offices Technical cooperation capacity building at national TM offices � � Secure long term financing for cooperation activities. Secure long term financing for cooperation activities. � �
Council Conclusions of 25 May 2010 on the future revision Council Conclusions of 25 May 2010 on the future revision of the Trade Mark System in the European Union of the Trade Mark System in the European Union the introduction of a specific provision to define the framework for cooperation the introduction of a specific provision to define the framewo rk for cooperation - - between the OHIM and national offices, between the OHIM and national offices, - - � - making explicit that harmonization of practice and tools is an - making explicit that harmonization of practice and tools is an aim which all aim which all � trade mark offices in the EU should pursue, trade mark offices in the EU should pursue, - the establishment of a clear legal basis for the involvement o the establishment of a clear legal basis for the involvement of the OHIM in f the OHIM in � � - enforcement- -related activities, including the fight against counterfeiting, related activities, including the fight against counterfeiting, enforcement - the creation of a legal basis for distributing an amount equiv the creation of a legal basis for distributing an amount equivalent to 50% of alent to 50% of � - � OHIM’ OHIM ’s s renewal fees to the National Offices in accordance with fair, e renewal fees to the National Offices in accordance with fair, equitable quitable and relevant distribution criteria, and which will be used for purposes closely urposes closely � and relevant distribution criteria, and which will be used for p � related to the protection, promotion and/or enforcement of trade marks, related to the protection, promotion and/or enforcement of trade marks, - amendments and other measures, aimed at supporting the complem amendments and other measures, aimed at supporting the complementary entary � � - relationship between the Community and national trade mark systems. ms. relationship between the Community and national trade mark syste � �
Legislative proposals egislative proposals L Revision of Regulation 207/2009 on the Revision of Regulation 207/2009 on the Community trade mark Community trade mark Recast of Directive 2008/95 approximating the Recast of Directive 2008/95 approximating the laws of the Member States relating to trade laws of the Member States relating to trade marks marks Revision of Commission Regulation 2869/95 Revision of Commission Regulation 2869/95 adjusting fees payable to OHIM adjusting fees payable to OHIM
1. Changes Changes 1. � Both instruments � Both instruments � Definition of a trade mark Definition of a trade mark (Art 4 CTMR, 3 TMD) (Art 4 CTMR, 3 TMD) – – graphical graphical � representation replaced by being represented in a manner which representation replaced by being represented in a manner which enables the competent authorities and the public to determine the e enables the competent authorities and the public to determine th precise subject of protection afforded to its proprietor precise subject of protection afforded to its proprietor � Rights conferred by a trade mark Rights conferred by a trade mark (Art 9 and 9a CTMR, 10 and (Art 9 and 9a CTMR, 10 and � 11 TMD), e.g. as regards goods brought into the customs territory: y: 11 TMD), e.g. as regards goods brought into the customs territor improving the means to fight counterfeiting by allowing/clarifying ng improving the means to fight counterfeiting by allowing/clarifyi possibility of seizure of counterfeit goods in transit goods in transit or shipped to or shipped to possibility of seizure of counterfeit end consumers end consumers
2. Changes 2. Changes � Directive Directive � � Protection of geographical indications and Protection of geographical indications and � geographical terms geographical terms � Protection of trade marks with reputation Protection of trade marks with reputation � � Trade marks as objects of property Trade marks as objects of property (transfer, (transfer, � licensing, rights in rem rem, levy of execution and , levy of execution and licensing, rights in insolvency) insolvency) � Collective marks Collective marks �
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