The Commission gave its opinion on the position of
the Council on the adoption of a Regulation of the European
Parliament and of the Council amending Council
Regulation (EC) No 207/2009 on the Community trade
mark.
The proposal for a Regulation aims at:
- streamlining procedures to apply and register an EU
trade mark;
- modernising and improving the current
provisions;
- establishing an appropriate framework for cooperation
between OHIM and national offices for the purpose of promoting
convergence of practices and developing common tools;
- updating the governance of OHIM;
- adapting Regulation 207/2009 to the Lisbon
Treaty;
- resolving key issues pertaining to the financial
equilibriums within the EU trade mark system.
Despite concerns related to certain budgetary aspects
of the compromise, the Commission can support the compromise
reached, especially those changes which strengthen the position
of trade mark holders and have the effect of providing greater
legal certainty in the application of the law on trade
marks.
The Council's position in first reading encompasses
a significant number of amendments introduced by the European
Parliament, including those required by parallel
changes in Directive 2008/95. These amendments aimed
to:
- complement the transitional period in the Proposal for a Regulation which adjusts the
specifications of EU trade marks filed before the change in
classification practice in the light of the case law of the Court
of Justice by providing safeguards to third parties that had filed
trade mark applications in the meantime;
- set the amount of fees payable to the OHIM
which is currently addressed in Commission
Regulation (EC) No 2869/95 directly in Regulation 207/2009 itself
in the form of an Annex;
- change the name of the agency to "European Union Intellectual Property Office". The
Commission regrets that the new name does not represent the actual
core activity and does not adequately reflect the fact that the
"Office" is an "agency" of the EU. On the other hand, although the
Commission can endorse the idea supported by the co-legislators to
set up a mediation centre within the agency, it would prefer that
its tasks do not extend to arbitration activities.
As regards the new cooperation framework
between national intellectual property offices and the EU agency,
the Commission approved the amendments aiming to:
- make this cooperation mandatory, however, by
giving national offices the possibility to opt-out in certain
circumstances and to ensure a close consultation of trade mark
users on the projects developed in this context;
- increase the maximum amount of budget allocated to
this activity to 15% of the annual revenues of the agency,
while the European Parliament had supported an increase to
20%.
With respect to the governance of the agency,
while the Commission regrets that the Council followed the European
Parliament's view and deleted the provisions in the Proposal for a
Regulation allowing for the setting up of an Executive Board, it
supports the new composition of the Management Board
including a representative of the European Parliament.
As regards the European Parliament amendments not
included in Council position at first reading, the
Commission:
- regretted the deletion of a procedure from the
proposal on the selection and appointment of the Director of OHIM.
It stated that this should not be considered as a precedent for
future reforms of other EU agencies;
- welcomed, on the other hand, the fact that the Council
did neither take on board the European Parliament's proposal to
maintain the current provision in Regulation 207/2009 allowing the
Director of the agency to make proposals to amend the Regulation,
nor to formally attribute the nomination powers to the Director
instead of the Management Board;
- supported the Council's opposition to further
complementing limitations of the effects of a trade mark as
favoured by the European Parliament whilst accepting the final
compromise of adding clarifying language in the relevant recital to
address in particular the issue of fundamental rights and freedoms
including artistic expression;
- supported the Council's deletion of the relevant
provision on the import of small consignments.
As regards the new provisions introduced by the
Council, the Commission:
- agreed on a compromise solution with respect to the
provision on goods in transit, whereby the right to prevent
goods being brought into the EU territory 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;
- supported the Councils position to adopt new
amounts of fees payable to the OHIM (to be set in an Annex to
Regulation 207/2009) with the aim of bringing renewal fees down
to the same level of application fees;
- accepted the addition of a new legal basis to
offset Member States for costs incurred by their national
offices as a functional part of the EU trade mark
system;
- approved the re-introduction of a provision,
originally proposed by the Commission and deleted by the European
Parliament, which permits to transfer a budgetary surplus of the
OHIM to the EU budget. While the Commission fully endorsed the
principle of such a transfer, it regretted that the conditions
established by the Council are likely to heavily limit the scope of
application of this new provision in practice;
- regretted the introduction by the Council of
provisions on the use of implementing acts and on the respective
committee procedures for their adoption as this would require
the use of the ordinary legislative procedure even for small
technical changes.
In a statement on certain budgetary aspects of the
Agreement, the Commission regretted
in particular that the co-legislators have been unable to agree on
one of the key elements of its proposal concerning the budget of
the OHIM: the automatic review of the level of the fees in case of
significant recurrent surplus and the automatic transfer of such
surplus to the EU budget.
The Commission will continue to review the level of
the fees charged by the OHIM in view of proposing to adjust
them as closely as possible to the costs of the services provided
to the industry and of preventing the accumulation of significant
surpluses within the OHIM.
Moreover, in line with the principle of administrative
autonomy, the Commission will pursue all appropriate means to
ensure that these agencies, Institutions and bodies effectively
bear such costs or that they refund the EU budget of these
costs.