On 21 April 2015, the European Parliament, the European Council, and the European Commission reached political agreement (in what have become known as the 'trilogue discussions') on the reforms to the
On 21 April 2015, the European Parliament, the European Council, and the European Commission reached political agreement (in what have become known as the 'trilogue discussions') on the reforms to the EU Trade Mark Directive (2008/95/EC) and the relevant Regulation (207/2009/EC) (click here for Press Release). Therefore, we can expect the reform proposals to be formally confirmed by the European Parliament and Council expeditiously now that the relevant bodies are broadly on the same page.
The two main underlying objectives of the trade mark reforms are to foster innovation and economic growth and to ensure that there is coexistence and consistency between different trade mark offices.
The key points of agreement on the trade mark reforms include:
In summary, the legal framework is obtaining an upgrade to account for the further digitisation of the economy and the increased administrative burden demonstrating the need for more efficient practices, though the finer details are yet to be established. Furthermore, and as the Commission's Fact Sheet clarifies, the reforms will produce greater consistency between the Directive and the Regulation.
Also included in the changes are:
Once adopted, EU Member States will have three years to implement the Directive into national law. Most of the Regulation amendments will become effective once adopted, and the remaining Regulation amendments will apply following the implementation of the Directive.
In the meantime, present and future trade mark holders should welcome the modernisation and streamlining planned in the reforms, and they are advised to contact their legal advisors in case of any uncertainty that may arise.
Once the European Parliament and the European Council have formally adopted the package (which is expected to occur in the coming weeks) and once the package's final text is published, we will include an update with further analysis.
The two main underlying objectives of the trade mark reforms are to foster innovation and economic growth and to ensure that there is coexistence and consistency between different trade mark offices.
The key points of agreement on the trade mark reforms include:
- Modernised provisions facilitating the registration of new types of marks (e.g. sound, motion or hologram marks) to support digital branding strategies;
- Significant reductions in EU trade mark fees covering all 28 Member States leading to savings of up to 37%;
- Streamlined registration, revocation, and declaration of invalidity procedures across all trade mark offices in the EU;
- Stronger anti-counterfeit measures on goods in transit through EU territory;
- Increased legal certainty by adapting rules to the modern business environment and clarifying rights and limitations.
In summary, the legal framework is obtaining an upgrade to account for the further digitisation of the economy and the increased administrative burden demonstrating the need for more efficient practices, though the finer details are yet to be established. Furthermore, and as the Commission's Fact Sheet clarifies, the reforms will produce greater consistency between the Directive and the Regulation.
Also included in the changes are:
- The renaming of the OHIM to the European Union Intellectual Property Office (the EU IPO) - there are concerns that the new name may cause confusion given that the UK IPO, for example, administers a broad set of rights aside from just the trade mark and designs work that will be carried out by the EU IPO, but this is a relatively minor point given that the EU IPO should enable rights holders to use its services with greater certainty;
- The introduction of an "offsetting mechanism" which will allow for 5% of the EU IPO's annual revenue to be set aside for covering expenses of national trade mark offices in the EU.
Once adopted, EU Member States will have three years to implement the Directive into national law. Most of the Regulation amendments will become effective once adopted, and the remaining Regulation amendments will apply following the implementation of the Directive.
In the meantime, present and future trade mark holders should welcome the modernisation and streamlining planned in the reforms, and they are advised to contact their legal advisors in case of any uncertainty that may arise.
Once the European Parliament and the European Council have formally adopted the package (which is expected to occur in the coming weeks) and once the package's final text is published, we will include an update with further analysis.