In July, the Committee of Permanent Representatives (COREPER) agreed on a
Council common position for the modernization of the trade mark system. It asked the incoming Italian presidency of the Council to start negotiations with the European Parliament and reach an agreement on the remaining details.
The Italian secretary in charge of European Affairs, Sandro Gozi, said: “The package outlines an efficient trade mark system, including measures against counterfeiting and it is therefore vital to support businesses, foster growth, as well as protect European consumers. An important element is the focus on goods in transit through the EU.”
The latest development follows the presentation of the reform package by the Commission in April 2013 and the European Parliament’s adoption of its position in February this year.
Throughout the discussions, the two issues on which most attention has been focused are the treatment of goods in transit and how to spend OHIM’s financial surplus.
The amended text of Article 9(5) of the
Regulation, as passed in February, says that without prejudice to WTO rules the owner of a European trade mark "shall also be entitled to prevent all third parties from bringing goods, in the context of commercial activity, into the customs territory of the Union withouöt being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trade mark which is identical to the European trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark".
Recital 18 states that this should be without prejudice to "the smooth transit of generic medicines" in compliance with the Doha Declaration.
There is parallel language in the amended Directive regarding national trade marks.
Tove Graulund, who chairs the MARQUES EU Trademark Reform Task Force, said: "MARQUES continues to have concerns about how to deal with the surplus. In particular, we have reservations about the lack of checks and balances in the latest proposal."
The Task Force will discuss the reforms further in Copenhagen and will make further contributions to the negotiations.
At the Annual Conference, on
Friday morning at 11:45, Carsten Albrecht of FPS Fritze Wicke Seelig will chair a session on European trade mark reform. Cecilia Wikström, member of the European Parliament, and Imre Gonda, deputy head of the trade mark, model and design department at the Hungarian IP Office, will take part, along with Ian Lowe of Nabarro and Tove Graulund.
Issue 044
Mette Andersen of The LEGO Group will be taking part in a discussion on digital branding with Peter O’Byrne of The Body Shop and Lydia Gobena of Fross Zelnick Lehrman & Zissu during the MARQUES Annual Conference in Copenhagen. In this interview, she talks about LEGO’s brand, describes her own role and provides some tips for those visiting Copenhagen.
MARQUES is monitoring the latest developments on reform of the EU Trade Marks Directive and Community Trade Mark Regulation, with important developments expected before the end of this year. The reforms will be discussed during the Annual Conference in Copenhagen.
OHIM and the IP Academy of the EU Observatory on Infringements of IP Rights are hosting two webinars on 4th September, one on the OHIM website and one on the new OHIM Guidelines.
MARQUES is hosting Judges Meetings and Coexistence Agreement Workshops in Bucharest, Vienna, London, Helsinki, The Hague, Milan, Lima, Asuncion and Mexico City over the next few months.
A case involving Land Rover in Switzerland, one concerning Porto in Portugal and changes to design law in the UK are just a few of the topics being discussed on the MARQUES blogs in the past month.
