Legal Alerts / 28 Apr 2015

New Step Towards a Reformed European Trademark Regime

On Tuesday 21 April 2015, a further and eagerly anticipated step towards a reformed European trademark regime was achieved as the European Commission, the European Parliament and the Council reached a provisional political agreement on draft rules pertaining to the trademark reform package.

This agreement reforming the legal framework for European trademarks and approximating Member States’ national trademark laws was a result of two year inter-institutional discussion and preparation. Therefore, obtaining a political consensus is an important phase in this process, although there is still work to be done to amend the legislation and bring the contemplated policy into practice. As the next step, the Council and the Legal Affairs Committee of the European Parliament needs to confirm this present agreement before it can be put to a vote in the Parliament, which will likely take place later during the fall 2015.

The modernised draft provisions on trademark registration and protection within the European Union aim to promote economic growth by improving businesses’ conditions to innovate and benefit from a more effective protection against counterfeit goods. Trademark registration systems throughout the European Union are to be made more accessible, efficient, affordable and predictable.

Key issues of the reformation include, for businesses in particular, the following:

• implementing efficient and expeditious administrative procedures pertaining to trademark revocation and declaration of invalidity by national trademark offices;

• additional means for taking action against counterfeit goods, including goods that are only in transit through the EU territory;

• further harmonised and efficient registration procedures in Member States’ trademark offices, answering internationalising SMEs’ need for less burdensome procedures;

• a substantial reduction in European Union trademark fees , combined with a possibility to make EU-level registrations to cover only one product class; and

• renaming the Office for Harmonization in the Internal Market (OHIM) as the “European Union Intellectual Property Office”.

This reform brings several advantages and benefits for trademark proprietors. Due to fee reductions, trademark holders can obtain Community-wide trademark protection more cost efficiently and it seems that the persistent problems in tackling in-transit counterfeit goods tend to subside. Furthermore, and most importantly, national trademark offices’ effective and harmonised procedures improving legal certainty can catalyse and encourage trademark proprietors’ cross-border activities.

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