The Push To Harmonise European IP Laws Gathers Momentum

The push to harmonise both the substantive and procedural aspects of European intellectual property laws and to create pan-European rights gathers ever-increasing momentum. New initiatives in the areas of patent, copyright and trade secrets push the boundaries ever further, but in trademark law progress is well ahead of the pack.

In the 2013 edition of this publication, Anna Carboni described what were then the newly minted proposals of the European Commission to modernise and harmonise European trademark law even further by amending both the CTM Regulation (207/2009/EC) and the Trade Marks Directive (2008/95/ EC). Just over two years later, and after a much-debated and highly politicised process, the European Parliament, Council and Commission have announced that a provisional agreement has been reached on European trademark reform.

Fees

A big deal in the reforms is the change in pricing structure for Community Trade Marks (now to be called European Trade Marks). Applicants will now pay on a per-class basis with the fee for an application in one class being lowered to €850, with a renewal fee of €850. This affords applicants a greater degree of flexibility then before and over the long term will amount to a saving of up to 37%. This reduction may well have a detrimental impact on national registration volumes where a business has a degree of European cross-border interaction; however, purely local businesses will still find little reason to choose a European Trade Mark. The quid pro quo for national offices will be an increase in contribution for their handling of European Trade Mark procedures which will amount to between 5% and 10% of the OHIM (now to be called the European Union Intellectual Property Office) budget. In addition, up to 15% of the office's budget will be set aside for national office cooperation projects. Commentators have raised concerns as to the manner in which these contributions will be made, and whether they will ultimately benefit local intellectual property offices rather than national government coffers. The practical reality is that this will be determined at local level and by government departments that ultimately control the budget of their national intellectual property office.

Definition of a trademark

Acknowledging that the scope of signs that function as trademarks has moved on and that express provision needs to be made for non-traditional marks (such as sound, motion or hologram marks), the requirement...