MONDAY, 9 JANUARY 2012
Commission trade mark roadmap: legal changes expected soon
 The Roadmap of the European Commission's MARKT/D2 lists an initiative, "Revision of the Community Trade Mark Regulation and of the Directive approximating national trade mark law", which is expected to be adopted next month, February 2012.

This non-binding document asks three questions:

(i)   What is the political context of the initiative? 
(ii)  How does it relate to past and possible future initiatives, and to other EU policies?
(iii) What ex-post analysis of the existing policy has been carried out and what results are relevant for this
initiative?

It then addresses them thus:

(i),(ii) In its 2008 "Small Business Act" the Commission committed itself to make the Community Trade Mark 
(CTM) system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe stressed the Commission's commitment to effective and efficient trade mark protection and to a high quality trade mark system. It concluded that it was time for an overall evaluation which could form the basis for future review of the trade mark system in Europe and the further improvement of cooperation between the Office for Harmonization in the Internal Market (OHIM) and National Trade Mark Offices. On the basis of the interim results of the related Commission study, the Competiveness Council adopted on 25 May 2010 conclusions on the future revision of the Trade Mark system in the EU. The Council called on the Commission to present proposals for the revision of, respectively, the CTM Regulation and the Directive approximating the laws of Member States relating to trade marks and flagged up those issues which it would like to see addressed therein. In 2010, in the Communication on Europe 2020 strategy under the Flagship Initiative: “Innovation Union”, the Commission committed to modernise the framework of trade marks in order to improve framework conditions for business to innovate. Finally, in its new IPR strategy for Europe (COM(2011) 287 final), the Commission announced a review of the trade mark system in Europe with a view to modernise the system both at EU and national levels by making it more effective, efficient and consistent as a whole.

(iii) DG MARKT carried out an extensive evaluation of the overall functioning of the trade mark system in Europe. For this purpose, a comprehensive study was commissioned in November 2009 to an external contractor and completed in early 2011. The aim of the study was to identify potential areas for improvement, streamlining and future development of the trade mark system as a whole including both at Community and at national level. The study also established the potential for enlarging the scope of cooperation between the Office for Harmonization in the Internal Market (OHIM) and National Trade Mark Offices. The final results of the study serve as basis for the proposal for revision of the CTM Regulation and the TM Directive.

A further question is then posed: What are the main problems which this initiative will address? This is answered as follows:

The consultation and evaluation process has revealed that the current system functions well overall but contains 
a number of deficiencies and limitations. The present level of harmonisation between national trade mark laws, 
as well as with the CTM system,  is not considered to be  sufficient.  Main problems  are due to the optional 
provisions in the Trade Mark Directive and  to  the fact that the Directive does not cover procedural aspects. 
Users are overwhelmingly in favour of  further harmonisation and of  an alignment of the CTM and national 
systems as many of these shortcomings indeed relate to and/or are caused by the differences in regimes in the 
EU.  Furthermore,  beyond the limits of harmonisation by legislation, there has been little progress also in 
harmonisation by non-legislative means, aimed at enhancing convergence in practices, tools and decision 
making at IP offices in the EU. Consequently, the existing differences resulting from the legislative framework 
are further accentuated in practice. However, any administrative cooperation between OHIM and IP offices of 
Member States which is prerequisite for the functioning of the whole system is seriously obstructed by a lacking 
appropriate legal framework and missing incentives for cooperation, in particular as regards financial means.
The current situation does not only negatively affect trade mark users, in terms of effectiveness and efficiency of 
available services, but also the IP offices themselves

The document then goes on to ask
  • Who will be affected by it?
  • Is EU action justified on grounds of subsidiarity?
  • Why can Member States not achieve the objectives of the proposed action sufficiently by themselves?
  • (Necessity Test)
  • Can the EU achieve the objectives better? (Test of EU Value Added)
  • What are the main policy objectives?
  • Do the objectives imply developing EU policy in new areas?
  • What are the policy options being considered? 
  • What legislative or 'soft law' instruments could be considered? 
  • How do the options respect the proportionality principle?
  • What are the benefits and costs of each of the policy options?
  • Could any or all of the options have significant impacts on (i) simplification, (ii) administrative burden and (iii) on 
  • relations with other countries, (iv) implementation arrangements? And (v) could any be difficult to transpose for 
  • certain Member States?
  • Will an IA [initial assessment] be carried out for this initiative and/or possible follow-up initiatives?
  • When will the IA work start?
  • When will you set up the IA Steering Group and how often will it meet?
  • What DGs will be invited?
  • Is any of options likely to have impacts on the EU budget above €5m? 
  • If so, will this IA serve also as an ex-ante evaluation, as required by the Financial regulation? If not, provide
  • information about the timing of the ex-ante evaluation
  • What information and data are already available? Will existing impact assessment and evaluation work be
  • used? 
  • What further information needs to be gathered, how will this be done (e.g. internally or by an external
  • contractor), and by when? 
  • What is the timing for the procurement process & the contract for any external contracts that you are
  • planning (e.g. for analytical studies, information gathering, etc.)?
  • Is any particular communication or information activity foreseen? If so, what, and by when
  • Which stakeholders & experts have been or will be consulted, how, and at what stage?
From this it can be seen that, whether the right answers emerge or not, the Commission doesn't miss too many questions!
Posted by: Jeremy Phillips @ 21.36
Tags: EU trade mark law reform,
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