EU Trade Mark Reform

The European Parliament, European Council and the European Commission on 21 April 2015 came to an agreement to reform the EU Trade Mark Directive (2008/95/EC) and Regulation (207/2009/EC). This comes after two years of talks, in what was called the “trilogue discussion”.

The objectives of the reform are to ensure greater consistency between national trade mark offices, whilst also accommodating the changes in the digitisation of the economy.

The title “Community trade mark” is set to be replaced with “European Union trade mark” in the reform. This is not the only name change that will be introduced.

The “Office for Harmonisation in the Internal Market” is set to be re-named as the “European Union Intellectual Property Office”. This creatively re-named office will be the sole office of filing for EU trade mark applications. It will also stop carying out searches for earlier trade marks, this means that aplicants will have to rely on their own searches.

The resistibility criteria will no longer include the requirement of “graphic representation”, this was suggested back in 2013 in the Max Planck Institute for Intellectual Property and Competition Law’s report. Signs that cannot be seen will be capable of registration as long as they are able to be represented in a clear and precise manner.

Trade mark holders will be provided with more protection for goods in transit. Customs enforcement will allow the trade mark proprietor to prevent the goods from entering the EU, where a mark is identical or indistinguishable from the trade mark. The holder of the infringing goods will then have to prove that the EU trade mark holder is not entitled to prevent the marketing of the goods.

The new provisions will facilitate a more streamlined process in relation to the registration, refusals and declaration of incompatibility procedures throughout the EU. This update to the legal frame work of trade mark law is thought to be capable to lead of savings of up 37%.

However we are unlikely to see savings over night. Once the Directive is adopted EU Member States will have three years to adapt national law so that it is in line with the new Directive.

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