After some two years of discussions, the European Parliament, Council and Commission have separately issued press releases confirming they have reached a provisional agreement on reforms to modernise EU trade mark law and practice. The changes, which should be put before the Council and the Parliament Legal Affairs Committee for approval in the coming weeks, before a vote of the Parliament expected later this year, will result in a recast Trade Marks Directive (which Member States will have three years to implement into national law) and a revised Community Trade Mark Regulation (where most amendments will take effect on the Regulation entering into force).
First, there are a couple of name changes to get used to: OHIM will become the European Union Intellectual Property Office (EU IPO) and the Community Trade Mark will be re-named the European Union Trade Mark (EUTM).
Overall, there are two aims of the reform package, namely to:
- Foster innovation and economic growth by making trade mark registration systems across the EU more accessible and efficient through lower costs and complexity, increased speed, greater predictability and legal security; and
- Ensure co-existence and complementarity between the trade mark systems, including greater co-operation between the national offices and the EU IPO, and convergence of office practices including common or connected databases and portals for consultation and search purposes.
Of particular interest to brand owners will be the changes to the fees for CTMs (EUTMs). Currently, a CTM application can cover up to three classes of goods and services for the same price of 900 Euros (for an electronic filing). There is a separate class fee for each additional class beyond the third class. The renewal fee is 1350 Euros, again for up to three classes.
The new EUTM fee scheme is set out in a Commission Factsheet. It will be a ‘one-class-per-fee’ system with a separate ‘class’ fee paid for each additional class applied for beyond the first class (rather than the third as at present). The Factsheet confirms an electronic application fee for one class will be 850 Euros (rising to 1050 Euros for three classes) but there are significant savings in relation to renewal fees where the fee to renew in one class will be 850 Euros. As noted by the Commission, this means that businesses looking to renew their marks beyond the initial 10 years will make savings of up to 37% on current fees. As well as the obvious benefit presented by lower application and renewal fees, the one class system should also see a reduction in the ‘congestion’ of the EU trade mark register caused by broad claims.
Alignment of Trade Mark Practices
Brand owners will also particularly welcome changes that mean alignment of important aspects of trade mark practice before the national offices including in relation to filing date requirements, designation and classification of goods, and opposition and cancellation proceedings (subject to the detail of the levels of harmonisation involved).
Other changes of interest include:
- Modernised provisions relating to the registration of new types of trade marks in the digital age
- Streamlined and harmonised registration procedures (including allowing trade mark applications across the EU to be subject to the same filing date) and opposition and cancellation procedures
- Provisions to deal with counterfeit goods in transit through the EU
- Removing certain ambiguities and clarifying the scope and limitations of trade marks
- A new certification mark at the EU level
- Legal and financial framework to foster cooperation between the national offices and the EU IPO and provisions relating to complementarity (including a legal basis to offset Member States’ costs for their contributions to the EU trade mark system).
As with many EU reform projects, the gestation period of the EU trade mark reform process has been lengthy (much of the reason for this being debate over the provisions relating to counterfeit goods). However, now that provisional agreement has been reached, formal agreement is now not far away. We will report in future editions of IP Bulletin on the likely timescale of the various areas of reform.