EU parliament approves proposed changes to trademark regulation

European Union

The European Parliament has approved the European Commission's proposal to amend the Community Trademark Regulation (see European Union one step closer to amended trademark law). Because the commission is not bound to consider the changes suggested by the the European Committee on Legal Affairs and the Internal Market's report on the proposal, the last hurdle is the unanimous adoption of the proposal by the European Council of Ministers.

The commission's proposal aims to improve the Community trademark system's efficiency, especially in view of the accession of new member states. It plans to:

  • abolish the requirement of nationality, reciprocity or equivalence to apply for registration in order to establish a more flexible approach to the Community system;

  • abolish the search system operated by the Office for Harmonization in the Internal Market (OHIM) on existing prior rights;

  • give the OHIM's administrative board competence to appoint members of the boards of appeal - including the chairman - while giving the latter competence to allocate cases and guarantee that the boards' decisions are consistent;

  • create an enlarged board as well as allow decisions under the authority of a single member of a board of appeal;

  • simplify the conditions for professional representation of trademark owners at the OHIM so that the only two conditions are that the representative is: (i) a resident in an EU member state; and (ii) entitled to represent a trademark owner before the central industrial property office of a member state;

  • amend certain points of procedure to:

    • allow opposition to registration pursuant to EU regulations other than trademark regulations (eg, enable proprietors of Community designs to oppose the registration of a Community trademark);

    • allow division of Community trademark applications and registrations;

    • allow the revision of inter partes decisions; and

    • enable the OHIM to revoke ex officio decisions on the grounds of certain procedural errors.

Florian Schwab, Boehmert & Boehmert, Munich

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