The agreement between the so-called trilogue was announced on April 21 following two years of discussions on the reform of the EU Trade Marks Directive and CTM Regulation and how to deal with OHIM’s accumulated surplus. (See the statements from the Commission, Council and Parliament.)
“We welcome all the work that has gone into this agreement, and look forward to seeing the tangible benefits for trade mark owners that should result from it,” said Uwe Over, Chair of the MARQUES Council.
He added: “The MARQUES EU Trade Mark Reform Task Force, as well as the External Relations Officer and others, have worked hard to raise issues of concern to trade mark owners over the past five years. We are pleased to see that the EU institutions have taken on board our views on these important issues.”
Benefits for trade mark owners
The details of the changes have yet to be published and MARQUES will monitor these in due course. “The Task Force has one important job remaining, and that is to scrutinise the actual proposals once they are circulated,” said Uwe.
However, based on the provisional announcement, there are a number of positive developments that correspond to points that MARQUES argued for:
1. Reduced fees, including reduced renewal fees, and a one-class system.
2. Increased clarity in lists of goods and services, based on the IP Translator decision. “This will encourage applicants to be more clear and precise and alongside with the one-class system lists will be clearer which is to the benefit of third parties as well,” said Tove Graulund, who chairs the MARQUES Task Force.
3. Formalisation of the drive for increased harmonisation. In particular, the agreement mentions a “maximum” amount for funding – something that MARQUES had argued for.
4. Administrative procedures by national offices for revocation or declaration of invalidity. This will benefit trade mark owners, especially smaller companies, who cannot afford to go to court to attempt to invalidate registered marks.
5. Improved rules on goods-in-transit, which should enable rights owners to take more effective action against goods suspected to infringe trade marks.
Further scrutiny
A number of other points in the agreement will require further clarification and scrutiny, including the so-called offsetting mechanism to deal with OHIM’s accumulated surplus and the modernised rules and increased legal certainty promised.
Regarding the surplus, Uwe said: “MARQUES’ view remains that fees paid by trade mark users should remain within the IP system and not be diverted to other parts of government. This will be something that we will continue to monitor, including in our capacity as observer on the OHIM Administrative Board and Budget Committee.”
Tove added: “Trade mark owners will welcome the progress made on harmonising protection and procedures in Europe. We have heard that some Member States have asked for a seven-year transition period on administrative invalidation procedures. Until we see the text, we hope that this is hearsay. Surely it must be possible to implement sooner than that, and we would definitely ask the relevant Member States to implement as soon as at all possible. This is a significant step forward for users who are looking to clear marks and have easier access to removing non-used marks.”
MARQUES is also monitoring the review of the design system in Europe, which is underway and is expected to include a survey of users during the next few months. The MARQUES Designs Team will provide more information when it is available.
Issue 052
MARQUES has provisionally welcomed the agreement announced by the European Parliament, Council and Commission on trade mark reform, which incorporates many changes that MARQUES and other users associations had called for, and looks forward to examining the agreed texts in detail when they are available
For this month’s interview, James Nurton spoke to David Goldring, MARQUES Treasurer and one of the founders of the association
Design patent abuse in Ukraine, Louis Vuitton in the General Court and a Kit Kat case in Portugal are among the issues discussed on the MARQUES IP blogs in the past month
WIPO is hosting a Madrid System Users’ Meeting on Sunday 3rd May during the 137th INTA Annual Meeting in San Diego
OHIM will be demonstrating its global trade mark and design tools and solutions, such as TMview, TM class and the Enforcement Database at the INTA Annual Meeting in San Diego