The “European trademark system” is a dual system, made up of the EU-wide trademark system and the national systems of EU Member States. The EU trademark reform consists of the revision of several elements:
- A recast of the 1989 Directive (2008/95/EC) approximating the laws of the Member States relating to national trademarks,
- A revision of the 1994 Regulation (207/2009/EC) on the Community trademark, which established the first EU-wide unitary IP right in the EU granted by the Office for Harmonization in the Internal Market (OHIM), now called the European Union Intellectual Property Office -EUIPO.
- A revision of the 1995 Commission Regulation (2869/95) on the fees payable to the EUIPO.
The text of the new EU Trade Mark Regulation
(EU) 2015/2424 can be found here
. It also captures the fees payable to the EUIPO. The text of the new Directive to approximate the laws of the Member States relating to trade marks (EU)2015/2436 (the Trade Marks Directive
) can be found here
Looking for an easy way to tell the differences between the former and new EUTMR?
EU Trade Mark Reform
The amalgamated text above highlights changes that entered into force on March 23, 2016 as well as those that enter into force on October 1, 2017 in convenient color-coding. This document was assembled by Alexander von Mühlendahl, attorney-at-law with Bardehle Pagenberg in Munich, Germany, and formerly Vice-President of the European Union Intellectual Property Office (previously known as OHIM).
The Regulation entered into force on March 23, 2016, with a few exceptions for some provisions to enter into force on October 1, 2017. Member States have until January 15, 2019 to implement the Directive into their national legislations and up to January 15, 2023 to introduce administrative cancellation proceedings. Secondary legislation, consisting of a Commission Delegated Regulation and an Implementing Regulation will soon be adopted and provide further details on the implementation of the trademark system.
For more information on the content of the reform, see the INTA blog
and the EU Trademark Reform Series
articles in the Bulletin
Background: consultations, legislative process and INTA advocacy work
INTA has been participating in the overall examination of the EU trademark system since the current review process began in May 2007, when EU Member States stated that there was a need to address OHIM’s increasing budget surplus and to review the overall functioning of the EU trademark system. The European Commission commissioned a study to evaluate the current functioning of the system and assess improvement and (further) harmonization needs, which was carried out by the Max Planck Institute and published in 2011. In March 2013, the European Commission formally adopted its proposals to review the Regulation and the Directive. The European Parliament and the Council, as co-legislators, have reviewed the proposals and adopted compromise texts, which were published in the Official Journal of the EU on December 23 and 24, 2015.
INTA, through various committees, has developed and advocated its policies and positions during all the stages of the law-making process and partnered with other associations and stakeholders as appropriate. INTA advocated for a more harmonized, modern and efficient trademark system for the benefit of trademark owners and consumers alike. INTA is now monitoring the implementation of the new legislation.
Key events and documents are presented in the chronology below. For more information, contact Hélène Nicora, Representative Officer – Europe, at firstname.lastname@example.org.
On September 15, INTA submitted comments to the Portuguese National Institute of Industrial Property
on the draft bill for the partial amendment of the Portuguese Industrial Property Code, aimed at implementing the EU Trade Marks Directive.
On July 18, INTA submitted comments to the Spanish Patent and Trademark Office
on the draft bill to implement the EU Trade Marks Directive.
On June 26, INTA submitted comments to the EUIPO
on its draft Guidelines for Trade Mark Examination Practice.
On May 18, The European Commission adopted the secondary legislation on the EU Trade Mark reform, which consists of an Implementing Regulation
and a Delegated Regulation
. If the European Parliament and the Council do not raise any objections, these will then be published in the Official Journal of the EU and enter into force on October 1, 2017.
On February 24, INTA submitted comments to German Federal Ministry of Justice and Consumer Protection
on its draft act to implement the EU Trade Marks Directive (known as “MaMoG”)
On October 4, the European Commission published the draft Implementing Regulation of the European Union Trade Mark Regulation (EUTMR). This “Implementing Regulation” is designed to lay down detailed rules for implementing certain provisions of the EUTMR. The draft is open to comments until November 1. Shortly after, on October 10, the European Commission published the draft Delegated Regulation, open to comments until November 7. INTA is putting together comments to both texts via its relevant committees.
On April 26, INTA and other associations signed a joint statement
raising concerns with the proposed draft guidelines by the European Commission – DG Taxation and Customs Union regarding counterfeit goods in transit to implement the EU trademark reform. This joint statement was sent to relevant officials in the European Commission, the EUIPO and the European Anti-Fraud Office (OLAF).
On December 24, the final text
of the Regulation was published in the Official Journal of the European Union. The Regulation will enter into force on March 23, 2016, with a few exceptions for some provisions to enter into force on October 1, 2017.
On December 23, the final text
of the Directive was published in the Official Journal of the European Union (Click here
). Member States will now have up to three years to implement the Directive into their national legislations and up to January 15, 2023 to introduce administrative cancellation proceedings and a few other provisions.
On December 15, the European Parliament adopted the Council’s position on the Directive and the Regulation with a majority of 577 to 88 votes for the Directive and 516 to 142 for the Regulation. INTA welcomed the adoption and will continue to follow all developments and closely monitor the implementation of the reform as it enters into force.
On November 10, the European Council (in its Economic and Financial Affairs meeting) adopted
the texts of the new Regulation and Directive (following their publication on October 28 – see below). The European Parliament is planning to follow suit in mid-December.
On October 28, the latest (and hopefully final) texts on the new Regulation and Directive were published by the European Council. The Council’s position on the Regulation can be found here and for the Directive here. These texts will have to be endorsed both by the Council and the European Parliament, which is expected to happen before the end of the year. The texts are also available in the various language versions from the Council’s website here.
The Council also published Statements of Reasons for the Regulation here and for the Directive here.
On June 10, the Council’s Permanent Representatives Committee approved compromise draft texts for the Regulation and for the Directive, negotiated with the European Parliament and Commission. The compromise texts were published on the Council’s website. On June 16, the European Parliament’s Legal Affairs Committee followed suit. The compromise texts are being revised by lawyer-linguists over the summer before final adoption by the Council and the Parliament in plenary expected to take place in Autumn.
On April 21, the European Commission, Parliament and Council announced a provisional agreement on the “trademark package” following the final trilogue discussion. This provisional deal will require prior endorsement by the European Council and the European Parliament Legal Affairs Committee before being put to a vote in the full European Parliament. This is expected to happen in September 2015.
On April 8, a joint letter signed by INTA and other user associations was sent to selected Members of the European Parliament’s Legal Affairs Committee, European Commission officials and Member State representatives to oppose proposals to divert OHIM funds and surplus to activities unrelated to trademarks and designs.
On March 10, a joint email signed by INTA and other associations was sent to selected Members of the European Parliament’s Legal Affairs Committee to express concern about proposals to divert OHIM funds and surplus to activities unrelated to trademarks and designs. This is part of INTA’s advocacy efforts on the ongoing review of EU trademark legislation.
On December 17, the Italian Presidency of the Council and the European Parliament issue a joint declaration announcing the postponement of the trilogue discussions to 2015. The joint declaration notes that an agreement has already been reached on many issues “including notably the treatment of goods in transit and small consignments.”
On October 20, in the framework of the discussions in trilogue among the European Commission, European Parliament and Council, a joint letter signed by INTA and other associations was sent to representatives from those three EU Institutions.
On July 23, the Council adopted its common position on the “trademark package” and mandated the Italian Presidency of the EU to enter negotiations with the European Parliament.
The Council published the Presidency Compromise proposals on the Regulation and the Directive. INTA’s comments to these proposals are available upon request to Christina Sleszynska, INTA Europe Representative, at email@example.com.
The European Parliament adopted its reports on the Community Trade Mark Regulation and Trade Marks Directive during a plenary session on February 25. The new texts included recently-proposed amendments allowing customs to stop counterfeit goods in transit in the EU, which has long been a serious challenge for trademark owners. INTA responded to this positive development by issuing a joint press release with other associations.
INTA submitted its comments to the reports adopted by the Legal Affairs Committee in December 2013.
On December 17 the Legal Affairs Committee of the European Parliament adopted the reports by Cecilia Wikström MEP on the Directive and the Regulation.
INTA submitted its comments to the draft reports by Cecilia Wikström MEP.
Cecilia Wikström, Member of the European Parliament (Alliance of Liberals and Democrats for Europe, Sweden) and Rapporteur for the “trademark package”, published her draft reports on the Directive and on the Regulation.
INTA has published comments on the European Commission’s proposals to revise the Community Trade Mark Regulation and Trade Marks Directive.
The European Commission formally adopted its proposals to revise the Community Trade Mark Regulation and Trade Marks Directive. The Commission published the proposed texts and noted that the aim of the legislative package is upgrade, streamline and modernize the current legislation “in order to make the trademark registration systems all over the Union more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security.” The proposals and more information are available on the Commission’s website.
INTA submitted written comments to the European Commission after further developing our views on key issues discussed in the MPI report as well as those that have been identified during the course of the overall review.
On May 26, INTA participated in a hearing organized by the European Commission to allow stakeholders to share views on ten particular areas in the review, including genuine use, class headings, and simplification measures. Agenda Participants
On April 13, representatives of several INTA members and staff met with officials from the European Commission’s Directorate General for the Internal Market (DG MARKT) to discuss the MPI report and offer our views on key issues.
The European Commission published MPI’s final report.
MPI submitted its final report and recommendations to the European Commission.
After approval by the Association’s Board of Directors, INTA’s comprehensive report was sent to the European Commission.
INTA's Policy Development and Advocacy Study on the European Union Trademark Systems
INTA participated in the June 8-9 users’ groups hearings, held by MPI in Munich. Key issues discussed include possible further harmonization of EU trademark law, territorial requirements for genuine use of a CTM, the CTM fee structure and class headings.
On May 25, the European Council adopted Conclusions on the future revision of the trademark system in the EU which, among others points, called on the European Commission to present proposals to review the Community Trade Mark Regulation and the trade marks Directive.
February – August 2010
INTA’s policy committees formed numerous working groups to address key topics related to the EU trademark systems as part of the Association's internal study. Each group produced a position paper including recommendations on their assigned topics. The papers were then reviewed and voted upon by the responsible policy committee, and were consolidated into a final, single text.
MPI asked users’ organizationsfor initial views on the scope of the study and its overall theme, the tender’evaluation questions, and pre-established views/positions on the issues raised.
INTA's Response, submitted January 2010
The Max Planck Institute for Intellectual Property, Competition and Tax Law (MPI) in Germany was awarded the European Commission’s contract to carry out the study.
MPI's website with information on the study
The European Commission's Directorate General for Internal Market and Services (DG MARKT) published its Letter to Tender.The tender outlined the study’s mission to assess the current state of play of the CTM system and the potential for improvement and future development, and to evaluate the relationship between the CTM and national systems including the need for further harmonization.
INTA, AIM, BUSINESSEUROPE, ECTA and MARQUES jointly shared expectations for the study in a letter to the European Commission.
INTA created a Steering Group to assist in coordinating its internal study. The group conducted a preliminary analysis of the legal and procedural issues raised and suggested additional issues that the Association should investigate.
INTA began preparations to undertake an internal study on the European trademark systems, in order to be able to respond to requests from the European Commission and other institutions.
INTA submitted its response to the September OHIM Administrative Board/Budget Committee joint meeting conclusions.
OHIM’s Administrative Board and Budget Committee issued conclusions jointly agreeing upon a “package” deal to recommend to the European Commission to ensure a balanced OHIM budget, which included a proposal to reduce CTM fees and an evaluation on the overall functioning of the trademark system in the EU.
Out of concern over the growing OHIM budget, the EU Competitiveness Council issued a statement calling upon the European Commission to immediately propose a reduction of the main CTM fees and also to begin work on a comprehensive study on the overall functioning of the CTM system.