The Commission gave its opinion on the position
of the Council on the adoption of a Directive of the European
Parliament and of the Council to approximate the laws of the Member
States relating to trade marks (recast).
The Proposal to recast the Directive - and of the parallel
proposal for the amendment of the Regulation on the Community
trade mark - aims at:
- modernising and improving the current provisions of
Directive 2008/95, by amending
outdated provisions to take account of the entry into force of the
Lisbon Treaty, 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 for the purpose
of making them more consistent with the EU trade mark
system;
- facilitating cooperation between the offices of the
Member States and OHIM for the
purpose of promoting convergence of practices and the development
of common tools, by putting in place a legal basis for this
cooperation.
The position of the Council reflects the provisional
political agreement reached by the Council, the JURI Committee of
the European Parliament and the Commission in informal tripartite
discussions on 21 April 2015. The Council position meets the
main aims of the Commission's initial proposal. The Commission
therefore supports the text.
The Council's position in first reading encompasses
almost all main amendments introduced by the European
Parliament, such as:
- the removal of the obligation for Member States'
national offices to examine absolute grounds for refusal in all
jurisdictions and languages of the Union, and;
- the deletion of the provision giving guidance as to
when use of a trade mark by a third party should not be considered
in accordance with honest practices. All those amendments can be
endorsed by the Commission as being reasonable.
The Council also adopted the amendments from
the Parliament which concern:
- the deletion of the proposed confinement of the
so-called "double identity" rule – regulating protection
against the use of identical signs for identical goods or services
– to cases which affect the origin function of a trade
mark;
- the maintenance of the option for Member States to
examine relative grounds for refusal of its own motion as favoured
by the European Parliament. The Commission regrets the missed
opportunity to remove such option in order to ensure a level
playing field for businesses in the Union;
- allowing a notice of opposition and a request for
revocation or for a declaration of invalidity to be filed on the
basis of one or more earlier rights and be directed against a part
or the totality of the goods or services applied for or
registered.
The Council did not include in its position at first
reading the Parliament’s amendments which sought
to:
- limit the scope of the proposed new provision on the
import of small consignments to counterfeit goods implied an
inappropriate restriction of already existing rights conferred by a
trade mark. It was therefore decided to delete the proposed
provision
- limit the effects of a trade mark as favoured by the
European Parliament. The Council accepted though the insertion in
the relevant recital concerning the resale of genuine goods of
clarification in relation to, the use of trade marks for the
purpose of artistic expression, and the need for the Directive to
be applied in a manner that ensures the full respect for
fundamental rights and freedoms.
As regards the new provisions introduced in the
Council position, the Commission accepted the compromise
solution with respect to the provision on goods in transit,
whereby the right to prevent goods being brought into the Member
State where the trade mark is registered shall lapse if the
declarant/holder of the goods is able to show before the competent
court that the trade mark proprietor is not entitled to prohibit
the placing of the goods on the market of the country of final
destination.
Lastly, the Commission regretted that the Council
further did not endorse the mandatory introduction of a so-called
"one-class-per-fee system" at national level but opted for
an optional regime only. The Commission regrets that decision but
can accept it as part of the package.