The Council adopted its position in first reading
regarding reform of the trademarks system. This reform
includes a proposal for a directive to approximate the laws of the
Member States on trademarks as well as a parallel proposal amending the Regulation on the
Community trademark.
The recast of the Directive has the following
objectives:
- modernising and improving the existing provisions of
the Directive, by increasing legal certainty and clarifying trade
mark rights in terms of their scope and limitations;
- achieving greater approximation of national trade mark
laws and procedures with the aim of making them more consistent
with the Community trade mark system;
- facilitating cooperation between the offices of the
Member States and the Office for Harmonisation in the Internal
Market (Trade marks and Designs) (OHIM).
The common position on the adoption of a directive
approximating the laws of the Member States on trade marks aims to
foster and create a well-functioning internal market and to
facilitate the registration, administration and protection of
trademarks in the Union to the benefit of growth and
competitiveness.
For the purpose of making trademark registrations
throughout the Union easier to obtain and administer, the new
Directive aligns the principal procedural rules in the area of
trademark registration in the Member States to the EU trade mark
system. Registered trademarks should benefit from the same
protection in all Member States.
The conditions for obtaining and continuing to hold a
registered trademark be, in general, identical in all Member
States. Accordingly, the common position:
- lists examples of signs which are capable of
constituting a trade mark, provided
that such signs are capable of distinguishing the goods or services
of one undertaking from those of other undertakings. The sign
should be capable of being represented in a manner which is clear,
precise, self-contained, easily accessible, intelligible, durable
and objective. A sign should therefore be permitted to be
represented in any appropriate form using generally available
technology, and thus not necessarily by graphic means, as long as
the representation offers satisfactory guarantees to that
effect;
- list the grounds for refusal or invalidity concerning
the trade mark itself in an exhaustive manner, including the absence of any distinctive character,
or concerning conflicts between the trade mark and earlier
rights.
Amongst the main points in the common position, the
following should be noted:
- preservation of the right of Member States to decide
whether to conduct examinations for refusal on relative grounds ex
officio;
- introduction of an explicit provision ensuring that
trade mark rights cannot be invoked against prior rights on the
mark;
- extension of trade mark protection to cover the use of
the mark in trade or company names;
- clarification that the trade mark owner may prevent
the use of his trade mark in comparative advertising where such
comparative advertising does not satisfy the requirements of
Article 4 of Directive 2006/114/EC;
- the right of trade mark holders to prevent the
distribution and sale of labels and packaging and of similar items
which may subsequently be used in relation to infringing goods or
services;
- the extension of the absolute grounds for refusal to
cover designations of origin, geographical indications, traditional
terms for wine, traditional specialities guaranteed and plant
variety rights;
- the extension of the relative grounds for refusal to
cover designations of origin and geographical
indications;
- harmonisation of national law regulating: (i) the
degree of protection of trade marks with reputation; (ii) trade
marks as objects of property, such as transfers or licensing; (iii)
Guarantee or Certification marks and Collective marks;
- harmonisation of national law regarding designation
and classification of goods and services covered by a trade mark in
accordance with the case law of Court of Justice;
- the establishment of an efficient and expeditious
administrative procedure before each national office for opposing
the registration of a trade mark application on the basis of
relative grounds;
- harmonisation of national law regarding the "non use"
defence in opposition proceedings and in proceedings seeking a
declaration of invalidity;
- the establishment of an efficient and expeditious
administrative procedure before each national office for revocation
or declaration of invalidity of a trade mark;
- lastly, clarification that the right to prevent third
countries goods into the customs territory of Member States will
lapse if the declarant or the holder of the goods in question
proves that the trade mark holder is not entitled to prohibit the
placing of the goods on the market in the country of final
destination.