The European Commission has published proposals to reform EU trade mark law which, if implemented, would amend the Trade Marks Directive (2008/95/EC), the Community Trade Mark Regulation (207/2009/EC) and the Trade Mark Fees Regulation (2869/95/EC).
Whilst the principal aim of the reforms is to resolve inconsistencies between Community and national regimes, the proposals involve some fairly significant legislative changes, as summarised below.
1. Removal of the requirement to represent marks graphically
The compulsory requirement for marks to be represented graphically will be removed, since advances in technology mean that marks are now capable of taking other forms. Sound clips were used as a clear example, with 'smell marks' also suggested, albeit raising questions regarding how such marks could be represented with sufficient precision to warrant and permit their registration.
2. Improved legislation targeted at combatting counterfeit goods
This will be achieved in two ways:
firstly, by making counterfeit goods that are in transit throughout the EU subject to infringement proceedings, irrespective of whether these goods are to be marketed within the territory.
secondly, by making infringement rules applicable to goods that are ordered via the internet by consumers outside the EU, where the distributor is acting in a commercial capacity.
The number of counterfeit goods imported into the EU is reported to have increased by nearly 15% between 2010 and 2011. Unsurprisingly, the Commission is looking to tackle this problem through the proposed reforms.
3. Revision of the "honest practices" concept
The concept of "honest practices" is to be revised so as to exclude practices which:
i. insinuate that there is a commercial connection between the third party and the proprietor of a trade mark; or
ii. take unfair advantage of, or are detrimental to, the reputation or distinctive character of a mark.
4. Other changes
Other notable proposals include the:
i. renaming of OHIM as the "European Union Trade Marks and Designs Agency";
ii. renaming of the Community trade mark as the "European trade mark;" and
iii. alignment of registration and renewal fees for Community and national marks.
Both the European Parliament and the Council of the EU will need to approve reforms to the Trade Marks Directive and Community Trade Mark Regulation. However, proposals amending the Trade Mark Fees Regulation only require endorsement from the competent committee of fee experts before these are implemented as national law in member states.
The Commission's aim is to adopt the proposals by spring 2014 and to allow EU member states two years to incorporate the necessary changes into national law.
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