Trevor Little

The European Parliament has adopted its report on the review of the Community Trademark Regulation and recast of the Trademarks Directive, green-lighting proposed amendments on goods in transit. The amendments, which were the subject of heated debate in the European Parliament yesterday, have been welcomed by business and user groups.

A statement issued by business community groups, including the Anti-Counterfeiting Group, the American Chamber of Commerce to the EU (AmChamEU), ICC BASCAP, INTA and MARQUES, welcomed the vote, stating: “Since the Philips/Nokia ruling (C‑446 and 495/09) in 2011, under EU law European Customs can check counterfeit goods transiting through the EU but can only stop them if there is a risk of these goods entering into the Single Market. This means in practice that customs are powerless against counterfeit goods on route to a third country, and must let them go, at the risk of these goods being illegally diverted back into the EU. The new provisions adopted today will allow Customs to stop trademark counterfeit goods even if destined to a country outside the EU, and will not affect the trade of legitimate goods under the EU’s WTO international obligations. Likewise, these provisions ensure that genuine generic medicines will reach their final destination.”

The amended goods in transit proposal in the legislation, supplied to World Trademark Review  by Chrissie Florczyk, director general of the Anti-Counterfeiting Group, reads as follows (changes in bold): “With the aim of strengthening trademark protection and combatting counterfeiting more effectively and without prejudice to WTO rules, in particular Article V of the GATT on freedom of transit, the proprietor of a European trademark should be entitled to prevent third parties from bringing goods into the Customs territory of the Union without being released for free circulation there, where such goods come from third countries and bear without authorisation a trademark which is essentially identical to the European trademark registered in respect of such goods. This shall be without prejudice to the smooth transit of generic medicines, in compliance with the international obligations of the European Union, in particular the ‘Declaration on the TRIPS Agreement and Public Health’ adopted by the Doha WTO Ministerial Conference on November 14 2001.”

Yesterday’s debate on the proposals was a lively one, with goods in transit central to the discussion. Rapporteur Cecilia Wikstrom hit out at the European People's Party (EPP) and Group of the Progressive Alliance of Socialists and Democrats in the European Parliament (S&D) for the late introduction of new amendments on goods in transit, stating: “It is an extreme disappointment that the shadow rapporteur from the S&D and the EPP did not respect the agreement that we had reached. We shook hands on this and I thought this was a done deal… All the work that has been done is being thrown out of the window.”

Commissioner Michel Barnier added: “We want to allow trademark owners to seize counterfeit goods that are passing through their territories. It is unacceptable for the EU to turn into a temporary clearinghouse for counterfeit goods.”

However, in the statement issued from business and user groups today, the political courage of MEPs Marielle Gallo (EPP) and Bernhard Rapkay (S&D), who sponsored the latest transit provisions, were saluted: “With this vote, the European Parliament signals that it is serious about stopping trademark counterfeits to protect consumers everywhere and that the EU should show leadership in the global fight against counterfeiting.”

Another area of discussion in yesterday’s session related to the governance of OHIM, specifically the application of the EU’s common approach to agencies. Barnier commented: “A reform of governance is vital and the common approach to agencies is binding to council and the Commission. We feel the agreement should be applied to the agency because its role is very similar to that of many other EU agencies.”

A divergent view has been expressed by the Hungarian Intellectual Property Office (IPO), which told WTR: “In our opinion the Joint Statement and the Common Approach of the European Parliament, the Council of the EU and the European Commission on decentralised agencies should be applied to OHIM in a flexible manner reflecting the specificities of this agency. The Joint Statement itself stresses that neither that statement, nor the Common approach has any legally binding character, and that the Common Approach is only to be taken into account on the basis of a case-by-case analysis. In addition, the Common Approach states in several cases that justifiable exceptions to that approach can be foreseen in specific cases. OHIM is significantly different from, and, therefore, is not comparable to, any other EU agency in a number of aspects including those of size, budget and competence.” Amongst the aspects the IPO opposes are changing the name of OHIM, the creation of an executive board and changes to the current procedure for appointing the president, president of the Boards of Appeal and chairpersons of the Boards.

All these aspects will doubtless be the subject of scrutiny and debate as the proposals continue on the road to adoption - and further compromises will likely follow. 

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