EU Moving Toward New Trade-Mark Regime

EU Moving Toward New Trade-Mark Regime

The European Commission has proposed amendments to the Community Trade Mark (CTM) Regulation and Trade Marks Directive. The primary function is to harmonize EU member trade-mark laws. This bureaucratic hygiene aim – which resulted in a mixture of trade-mark rights expansion and contraction – stands in contrast to the current, controversial and (in my opinion) heavily pro-holder Canadian bill working its way through the legislative system.

Proposed EU Updates

Click here for a detailed summary of the likely legislative updates. The main categorical changes are below, separated by general impact on brand owners.

Positive news for applicants:

  • Procedural streamlining: Reduced wait times and paperwork will make the registrations more efficient and less costly. In specific, the opposition wait period will be reduced from nine months to four. CTM trade-mark filing fees will also need to be paid immediately and on a per-class basis.
  • Goods in transit: These counterfeit-fighting clauses will allow brand owners to take action when fake goods enter any part of the EU regardless of whether or not they are to be released for sale.
  • Graphical representation: Expanded to be a more general conceptual “bucket” that includes audio, video, and anything capable of “being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to it proprietor.”

Less positive news for applicants:

  • Double identity: In the case of identical trade-marks for an identical product or service, the infringement will be limited to the original function only. This reduces the scope of trade-mark protection, which can best be analogized as limiting the trade-mark’s “field of gravity.”
  • Bad faith: This will be a guaranteed ground for trade-mark refusal, and not just a consideration. If an earlier trade-mark provided outside the European Union is still in use and the applicant is acting in bad faith, the trade-mark will be refused.
  • Protection for geographic origin: Trade-marks will be refused if they are traditional designations by origin, such as for wines. Other examples of these marks are Dijon mustard or Darjeeling tea.

Additional housekeeping:

  • Nomenclature: “Community trade-mark” will now be known as “European trade-mark,” and “Office for Harmonization in the Internal Market” will be known as the “European Trade Marks and Designs Agency” (EUTMDA).

Comparison with Canadian Reforms

There are a number of similarities between the proposed EU changes and in-process Canadian trade-mark reforms in Bill C-56, The Combating Counterfeit Products Act, particularly with regards to counterfeit reduction. (For in-depth analyses of Bill C-56, please see these IPilogue posts by Ryan Heighton and Adam Stevenson.)

There are also some major differences. I believe that the Canadian Bill – from name to content – is as much about optics and the federal government's "tough on crime" agenda as it is intellectual property law, perhaps more so. Thus, I posit the main difference between Canada's and the EU's trade-mark updates is the “motivation to modernize.” The EU reforms generally tend to be more bureaucratic while the Canadian ones are more political. Flowing from that, it's natural that the EU updates focus on streamlining and harmonization, and provide a balance of favourable and unfavourable changes vis-à-vis rights holders. In contrast, the Canadian changes, in my opinion, are geared largely toward protecting trade-mark rights holders in a way that reinforces the current government’s “tough on crime” agenda. For example, Bill C-56 introduces tougher criminal penalties for trade-mark violators and increased power to border guards to assess infringement without a clear court oversight mechanism.

EU harmonization is set for adoption in Spring 2014. Canada’s Bill C-56 went through its first reading in March 2013 but a second reading has not yet been set, so it is unclear when Bill C-56 will become law. This is obviously good news, because it gives us all lots of time to plan out trade-mark-legislation-reform-theme parties.

Denise Brunsdon is an IPilogue Editor and a JD/MBA Candidate at Western University.