The TM reform in Europe is submitted to the ‘Ordinary’ legislative procedure, meaning it will becomes a law once the Council and Parliament agrees on EU Commission 's proposal.

So far the EU Parliament and Council agreed on 80% of the content, apparently some of the disagreements are the issues of the goods in transit, governance of OHIM, limitations on TM rights, small consignments.

The second speaker of last Friday 's second morning session was Imre Gonda, Deputy head of TM, model and design department of the Hungarian IP office. He started with a quick reminder of the important events which led to the EU TM reform (ie.: from Council conclusions for the need for reform in 2010 to Max Planck institute Study which lasted 2 years). Then, it covered a couple of concerns for the highlights of the reform.

I-Challenges for the TM'package are territoriality and the different national systems. Due to globalization, brand owners need to protect their rights globally so the legislation should adapt to those needs (i.e.: reputation criteria).  New provisions which apply this extraterritorial aspect are for example: on AB level the descriptiveness in any territory where it is descriptive (concerns are unnecessary burden on national offices, may not comply with Paris Convention provisions, lack of transitional agreements, conversion would become meaningless); for RG, extension of opposition to CTMs registered in bad faith on the basis of non- EU marks (concerns are unforeseeable difficulties like cumbersome evidence taking procedure (genuine use), relevant market, language, would the outcome of negotiations with 3rd country justify the price).

There is a consensus that these amendments will be deleted.

 II-Consent to co-existence and genuine use: how do you time 5 year grace period for genuine use? MARQUES has argued that the date be included in the register. Today there is still no harmony as to treatment of conversions of CTM applications in EU.

III-Regarding private imports provision, the reforms plans to  apply Blomquist v rolex (where the Danish consumer was not part of the proceedings, only HK infringer) which would be aimed at private import of counterfeit goods (consumer not an infringer where he does not act in the course of trade)-UK HR DK AT BE NL would exclude parallel imports.

IV-As regards the new right to prohibit counterfeit goods in transit (art 9 CTMR, 10 TMD), that right is lost if the declarant or holder provides the evidence that the TM owner is not entitled to prohibit placing the goods in the market of final country of destination.

 V-As for the “IP translator” aftermath: there is provision permitting the owner to amend list of goods within 6 months if class heading has been used (this provision was included after MARQUES proposal);  use of general terms being clearly covered by literal meaning (not those who cannot be understood).

Finally, Tove Graulund covered the concerns regarding the fees surplus  (should it go towards cooperation or compensation?) compiled by MARQUES task force.