On 16 October 2009 the European Commission awarded a contract for the preparation of a study on the overall functioning of the trade mark system in Europe to the Max Planck Institute for Intellectual Property and Competition Law. The Study has now been published and has been made available through the website of the European Commission: http://ec.europa.eu/internal_market/indprop/tm/index_en.htm
The purpose of the study was to assess the current state of play of the Community trade mark system and to identify potential areas for improvement and future development to the benefit of the stakeholders. Furthermore the study evaluates the national trademark systems of the Member States and the relation and interaction (coexistence and cooperation) between the European and domestic systems, including the need for further harmonization. The results of the study should serve as a basis for the future review of the European trademark system as a whole and should enable the European Commission to propose amendments in the relevant European legislation: the Community Trademark Regulation and the Trademark Directive and at a later stage also the Enforcement Directive.
The Study introduces an in-depth legal analysis based on fact findings revealed in the course of the user survey, statements of the major relevant user trademark associations such as ECTA and INTA and information provided by the national trademark offices. Considering the current legal provisions, the case law developed by the European Court and the stakeholders' opinions, the legal analysis outlines the issues and implies proposals for supplementation of the legal provisions.
The proposals concern inter alia:
- Aligning of the provisions of the CTMR and the TMD by making the currently optional provisions in the Directive - mandatory;
- Remedies available in cases of infringement of CTMs under the CTMR;
- National filing of CTMs;
- Fees and Fee structure, distribution of OHIM funds to national offices;
- Approximation of seniority and priority;
- Prerequisites and scope of protection for well-known marks;
- Graphical representability of a sign;
- Assessment of the distinctive character of colours per se and shapes determining the commercial value of goods;
- The moment for determining the requirements of distinctiveness, absence of descriptiveness and genericness.
Accordingly the study suggests the necessary changes in the respective articles of the CTMR and the TMD.
It is expected that the European Commission will present the proposals for amendment of the trademark legislature to the European Parliament and the Council of Ministers in the second half of 2011. In the best case scenario the amendments shall be adopted before the end of 2012.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.