Proposed changes to the European trademark framework, including amendments to the Community Trademark Regulation (207/2009), a recasting of the Trademarks Directive and an overhaul of the filing fees regime, were recently launched to much fanfare. As trademark practitioners digest the proposals, attention naturally turns to the likely timeframe for change. However, delegates at the ECTA annual conference were told that there are still hurdles to overcome – not least achieving consensus over the “serious disagreement” on “important aspects of the package” from some member states.
WTR has previously reported on the European Commissions proposals, and the upcoming issue of the magazine (available online to subscribers later this week) presents full analysis of, and industry reaction to, the documents. Speaking at the ECTA annual conference in Bucharest, Tomás Eichenberg, principal administrator, directorate general internal market and services, Unit D2 Industrial Property at the European Commission, provided an insight into the commission’s rationale for the proposed legislative package, pointing to its role in both fostering innovation and growth and developing interoperability between the European and national trademark systems: “We believe it is important to support the ongoing convergence exercise that OHIM and the national offices are undertaking.”
Turning to the proposed fee changes, Eichenberg outlined two potential benefits. The first is the contribution it will make towards budgetary goals: “With the one-class-per-fee proposal we took into account the diminished scope of trademark protection we are offering in the future as the application will only cover one class not three. We also had to preserve the balance between the CTM and national systems and meet the requirement of a balanced OHIM budget”.
The second potential benefit relates to clutter on the register. To what degree clutter exists is a much debated topic. There are those who feel it is not a problem, those who argue it is a significant obstacle to clearing marks and those who feel certain sectors face a particular issue (one such being Myrtha Hurtado Rivas, global head of trademarks, domain names and copyright at Novartis, who stated: “Our [first] challenge in the pharmaceuticals industry is finding available marks and the second is then getting approval from health authorities. The trademark register is pretty much cluttered in Class 5 and it is a challenge to come up with a new name.”)
As to the commission’s perspective, it would seem potential clutter is a concern. Eichenberg noted: “We felt it would be wise to implement measures that don’t contribute to the cluttering of the register. We believe that, as long as we don’t put too much intervention in the system by placing obstacles, there is an argument for a system of ‘one fee per class’. We believe that applicants will only pay for those classes that best serve their business needs and the system would discourage them from pursuing unnecessarily broad protection.”
There is still some way to go before the proposals become reality and a big influence on progress will be national offices, whose public voice on the legislative package has been relatively quiet to date. While he notes that “the commission is very committed to pushing the package ahead” and “the European Parliament very much shares the commission’s desire”, he admitted that there are concerns being voiced by national offices: “The situation in the council will be more complicated – some member states seriously disagree with important aspects of the package and we must see to what extent we can achieve agreement.” One such aspect is the new set of fee structures, with Eichenberg acknowledging: “They remain extremely critical on the ideas we have for implementing a move to a ‘one class per fee’ system, as member states are concerned about further measures that drive a reduction in fee levels and could lead to further migration to OHIM registrations from member states.”
Another potential challenge for national offices was outlined by Beate Schmidt, president of the German Federal Patent Court and former director at OHIM. She agreed that there is much to be discussed and sympathised with national offices. On the proposal to extend the examination of grounds of non-registrability to the situation of other member states than those where the application for registration was filed, she stated: “I agree with the criticism of this – it is practically impossible for national offices to do all this to the required quality. This will be a significant challenge and be a complete change to their current practice. The commission is giving a ‘mission impossible’ to national offices.”
Providing a national office perspective, Petre Ohan, director of the department of appeals, strategy and marketing at the Romanian Patent and Trademark Office, welcomed the “the important work carried out on the proposals” but argued that they “leave very few options for member states”. For instance, on the proposed abolition of relative grounds examinations he warned: “We experienced this switch a few years ago and it was a very difficult transition. I feel this change must be made by offices at the right time, not by order.”
Ultimately, it is clear that the debate over the proposals has some way to go. That said, given the differing opinions, the European Commission has clearly identified the need to take a pro-active role and seems in determined mood, with Eichenberg concluding: “An important aspect of the package are efforts to facilitate cooperation between the offices in Europe, and to bring OHIM and national offices closer together. That is why we propose a clear framework for cooperation and the convergence of practices and common tools… We believe that cooperation should be mandatory to achieve a common approach and we are confident that we can realise the functionality of this important and essential project.”