After nearly two years of intensive negotiations, today (April 21) the European Institutions (European Parliament, Council and Commission) announced a provisional agreement on the European Trademark reform package.
INTA welcomes a number of aspects of the agreement:
Reduction in CTM renewal fees: the 36% reduction in renewal fees (to €850 for one class, e-filing) is excellent news for brand owners and something that INTA has been advocating for since 2007. The fee reduction will help prevent future accumulation of budget surplus at OHIM (which stands today at almost €500 million)
Goods in transit: provisions will provide new stronger ways to combat counterfeit goods in transit
Classification of goods and services: the agreement adapts the classification system to comply with the IP Translator case and with the Nice system. It will also provide a fair temporary exception for trademark owners to declare the goods and services they wanted to cover when registering their trademarks under different classification rules existing at that time.
The provisional agreement also includes mechanisms to finance cooperation between OHIM and national trademark offices and for “off-setting” any future surplus. Specifically, 5% of OHIM’s annual revenue will be used to cover expenses of national offices for handling activities and procedures involving CTMs; this amount can be increased by another 5% if OHIM accumulates a surplus. INTA will be monitoring this mechanism closely, as trademark owners will be seeking transparency and accountability to ensure that surplus generated from user fees is reinvested in improving the performance and efficiency of the EU trademark system. Even so, the legality of the compensation mechanism remains an open issue.
INTA would have appreciated the inclusion of bad faith as a relative ground for refusal as well as immediate implementation of opposition and cancellation administrative procedures at the national level in all member states (as opposed to the seven year transition period the provisional agreement mandates). Forcing parties to go to through seven more years of expensive and time-consuming court proceedings to oppose or cancel a trademark goes against the goal for efficient and timely administrative procedures.
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 could happen in September 2015.
In the coming weeks, as the full text of the agreement becomes available, INTA will be closely studying all aspects and make its final assessment on the EU Trademark reform. Once adopted, INTA will start working with the relevant authorities on its implementation.
Read more in the following press releases: