Reform and rebellion in the trademark world

In Insights, Uncategorized

12 August, 2013

This spring, the EU commission published their proposals for a reform of the Council Regulation (EC) No 207/2009 on the Community trade mark and the Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks. An earlier version of the proposals had been leaked ahead of time, but by the time the official proposals were made public they had been changed somewhat.

The proposals have given rise to a great deal of discussion, as they set out to further harmonize the rules for obtaining and enforcing trademark rights in the EU.

The issues with the new proposals stem in large from the fact that the EU is more or less evenly divided on a number of questions. For example, here in Denmark the PTO does not cite third party rights as hindrances, though this is the case for our sister office in Sweden.

Another example is the differences in opposition procedures, with some countries allowing for administrative opposition procedures and other jurisdictions requiring right holders to file a case with the courts if they wish to oppose registration of a potentially infringing trademark.

The new proposals aim to eliminate such discrepancies within the EU, setting out to form a unitary application and registration procedure. For right holders and foreign attorneys, this will eliminate some of the guess work and will likely be seen as a welcome and perhaps logical update. 

For the national PTOs however, there will likely be a considerable increase in workload, especially for those countries who do not currently allow administrative oppositions.

Another major change for the national PTOs is that the proposals in their current form state that trademark applications must be examined in all languages. Compliance with this would require the PTOs to find resources for translators, which may be difficult for the smaller Offices. This worry is increased by the fact that the revenue from community trademark registrations made through OHIM with the new proposals will form part of the EU-budget and will no longer be diverted back to the national PTOs as is the case today.

The suggestion that national trademark applications should be examined in all languages also raises a few issues for right holders and practitioners. Even though it would hinder some of the unfortunate situations we have seen with national registrations of terms which are descriptive in many other languages potentially impeding the free movement of goods in the EU (C-421/04 Matratzen Concord AG v Hukla Germany SA and the OHIMs decision of the Cancellation Division of 7 May 2008 Arnold’s Donut), it would also eliminate the possibility of converting an application for a community trademark to national applications where a term is found to be descriptive in just one of the 28 EU languages. 

It can be argued that the Commission with their proposals has veered too far in one direction in an attempt to ensure that trademark law does not create artificial hindrances to the free movement of goods within in the EU, but overall many of the proposals aim to benefit businesses by creating a more uniform approach to trademarks.

The above is only a few of the questions raised by the proposals for reforms. There are further issues relating to such weighty issues as goods in transit, who is entitled to file applications with the OHIM and even the theoretical discussion of whether or not cooperation is still cooperation if it is forced by a mandatory set of rules and procedures.

The Commission hopes to push through the reforms in relative short time, but given the amount of debate these proposals have generated on all levels of the trademark world, it is unlikely to be a quick and easy fix. At AWAPatent we are working actively within various international legal committees to try and influence the new rules in to the benefit of our clients and we will continue to follow the debate and evolution of the proposals closely.

Mette Bender, Attorney at law

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