Revision of the Revision of the European Trade Mark European Trade - - PowerPoint PPT Presentation
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
2008 + 2011 IPR Strategy Communication 2011 IPR Strategy Communications s
Max Planck Study
Stakeholder dialogue
Impact Assessment
2012 Council Conclusions
November 2009: : contract contract; ; March 2011 March 2011: : publication of Final Report publication of Final Report
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 re themselves in practice and no major legislative amendments or reforms forms are necessary are necessary
Convergence of laws and practices in the EU is necessary
in order for TM protection to continue to be an essential element in the competi protection to continue to be an essential element in the competitive market tive market economy of the EU. economy of the EU.
Update and further develop the system as a whole with a particular focus in ar focus in increasing its overall coherence increasing its overall coherence and and reinforcing the principle of reinforcing the principle of coexistence coexistence. .
IA fundamentals:
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 exist in exist in parallel but that they should complement each other harmoniously parallel but that they should complement each other harmoniously, that is, in , that is, in 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:
1. 1.
divergences of law (missing substantive & lack of any procedural divergences of law (missing substantive & lack of any procedural rules) rules)
2. 2.
insufficient level of cooperation between OHIM and national offi insufficient level of cooperation between OHIM and national offices ces (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 enhancing EU companies' competitiveness by enhancing EU companies' competitiveness by
Improving accessibility accessibility of TM systems = decrease costs; increase speed and
predictability predictability
Providing legal certainty 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
Specific objectives:
Increase convergence of the TM Directive with the CTM Regulation
Increase level of cooperation between OHIM and national trade mark offices rk offices
Operational objectives:
Achieving greater approximation of trade mark procedures and substantive stantive issues issues
Providing adequate regulatory incentive for cooperation
Technical cooperation capacity building at national TM offices
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
the introduction of a specific provision to define the framework for cooperation rk for cooperation
between the OHIM and national offices,
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 of the OHIM in f the OHIM in enforcement enforcement-
related activities, including the fight against counterfeiting,
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 related to the protection, promotion and/or enforcement of trade related to the protection, promotion and/or enforcement of trade marks, marks,
amendments and other measures, aimed at supporting the complementary entary relationship between the Community and national trade mark syste relationship between the Community and national trade mark systems. ms.
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
Both instruments
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 th enables the competent authorities and the public to determine the e precise subject of protection afforded to its proprietor precise subject of protection afforded to its proprietor
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 territor 11 TMD), e.g. as regards goods brought into the customs territory: y: improving the means to fight counterfeiting by allowing/clarifyi improving the means to fight counterfeiting by allowing/clarifying ng possibility of seizure of counterfeit possibility of seizure of counterfeit goods in transit goods in transit or shipped to
end consumers end consumers
Directive
Protection of geographical indications and geographical terms geographical terms
Protection of trade marks with reputation
Trade marks as objects of property (transfer, (transfer, licensing, rights in licensing, rights in rem rem, levy of execution and , levy of execution and insolvency) insolvency)
Collective marks
Directive
Designation and classification of goods and services, including including use and interpretation of class headings use and interpretation of class headings
Ex officio examination – – limited to absolute grounds for refusal limited to absolute grounds for refusal
Mandatory administrative opposition procedure
Mandatory administrative cancellation procedure cancellation procedure
Rules on duration of protection and renewal duration of protection and renewal
Fees – – "one "one-
class-
per-
fee" system, allowing more targeted registration per product class for a proportionate fee registration per product class for a proportionate fee
Regulation
Filing of applications (Art 25 CTMR) (Art 25 CTMR) – – filing via filing via national offices abolished national offices abolished
Filing date (Art 27 CTMR) (Art 27 CTMR) – – obligation to pay the fee
linked with the filing of the application (one linked with the filing of the application (one-
month period abolished) period abolished)
Searches (Art 38 and 155 CTMR) (Art 38 and 155 CTMR) – – current search current search regimes abolished to be replaced by modern IT tools regimes abolished to be replaced by modern IT tools
Observations by 3rd parties (Art 40 CTMR) Art 40 CTMR) – – extension of the filing period extension of the filing period
New Art 123c CTMR
Mandatory cooperation between National Offices and OHIM to promote convergence of practices and and OHIM to promote convergence of practices and tools, coordinated by OHIM tools, coordinated by OHIM
Defined areas of activity (flexibility)
Up to 10% of annual Agency Agency income (= 17 income (= 17 – – 20 20 million) million)
Terminology:
OHIM → → European Union Trade Mark and Design Agency European Union Trade Mark and Design Agency
Administrative Board → → Management Board Management Board
President of the Office → → Executive Director of the Agency Executive Director of the Agency
OHIM's governance rules: governance rules:
Role of the Management Board, e.g.:
Powers of the appointing authority
Formal adoption of the annual and multi-
annual work programme (including strategy
international programme (including strategy
international cooperation) and of the annual report cooperation) and of the annual report
Formalisation of existing practices