Trevor Little

The European Parliament has today approved the European trademark reform package, meaning that both amendments to the Community Trademark Regulation (207/2009) and the new trademark directive will progress to publication in the Official Journal of the European Union. With the legislative process effectively over, the reforms should be completed by mid-2016. 

We have covered the content of the reform package at some length (both on the blog and, in longer form, in World Trademark Review magazine). Briefly, the changes mean that OHIM will be renamed the EU Intellectual Property Office, with the Community trademark renamed the EU trademark (EUTM). For the latter, the requirement of graphic representation will be removed from the criteria for registration, meaning that a sign can be represented in any appropriate form using generally available technology. The ‘one class per fee’ principle will also become a reality, an ‘offsetting mechanism’ will be created to cover national office expenses incurred as a result of handling Community trademark procedures, and offices will adapt the designation and classification of goods and services to comply with recent EU case law (in conformity with the Nice Classification).

In a media statement released after today’s vote, the rapporteur of the reform package, Cecilia Wikström, noted: “The parliament has consistently kept the users of the system at the forefront of the discussion and we are glad to see a system that will provide a lot of added value for users. The reforms that we are now agreeing to will not imply a revolution of the European trademark system but will bring the legislation in line with the times we are living in. The new rules will allow better protection for rights holders through a strengthening of both the national and European trademark systems. At the same time we have safeguarded public interests such as the right of parody and the access to generic medicines for developing countries".

The reforms have taken a long time – and a lot of intense behind-the-scenes negotiating – to reach today’s vote. Last month we reported that the European Union Council had adopted its position at first reading, in a vote that saw the Netherlands abstain (reflecting its “grave concerns” regarding the proposed provisions on goods in transit, which it argued “will introduce the possibility to detain goods on account of possible infringement of a national or EU trademark, where those goods are merely in transit through EU territory”) and the United Kingdom come out in opposition of adoption of the draft regulation (stating that it cannot support the diversion of fees accumulated from trademark-related activities to the general EU budget).

That paved the way for today’s parliament session and, while the UK voted against the adoption in the Council vote, in a statement supplied to World Trademark Review, the UK’s IP minister, Baroness Neville Rolfe, welcomed today’s ballot: "Every business has a trademark. It is important that businesses understand the need to register their marks to get the best protection for their brand and reputation. A reformed European trademark system will deliver real benefits for trademark users and the UK has been a key partner throughout negotiations. The changes to the directive and the regulation should increase legal certainty and clarity for businesses looking to register and enforce their trademark rights in Europe. The convergence of trademark practices and processes throughout the EU will [also] create a more robust and streamlined system fit for the digital age… In 2016 we will be seeking the views on how we should make changes to UK laws to reflect the directive."

In terms of next steps, following the Parliament vote, the legislative process is effectively over, and the texts will be published in the Official Journal. The directive and regulation will then enter into force 20 and 90 days, respectively, after publication. The reform will thereby be completed by mid-2016. For practitioners who have followed the twists and turns over the past few years, as well as the offices that will be affected by the legislation, it is now time to focus on the impact of the changes, rather than speculate on, and negotiate over, just what these may be.

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