Strasbourg round-up: European trade marks

Written by Cecilia Wikström, Christian Engström, George Sabin Cutas and Regina Bastos on 27 February 2014 in Special Report
Special Report

Cecilia Wikström, Christian Engström, George Sabin Cutas and Regina Bastos share their views on the outcome of the European trade mark and Trade marks: approximation of the laws of the member states. Recast votes.

Cecilia Wikström is parliament's rapporteur on European trade mark and Trade marks: approximation of the laws of the member states. Recast

The trade mark protection system in Europe generally functions well, but after being in place for two decades there is need for some maintenance work. To ensure effective protection of trade marks, new rules will harmonise some national and EU application procedures and the rights guaranteed by a trade mark.

"Under new rules, trade mark registration will be cheaper, especially for SMEs, as trade marks could be registered for only one product class, instead of three classes"

Updated trade mark legislation would preserve and strengthen the already existing dual system of national and EU trade marks while at the same time ensuring better protection of trade marks by taking into account the new developments of business environment. It will further strengthen the cooperation between national agencies, as well as between national agencies and the European agency.

Under new rules, trade mark registration will be cheaper, especially for SMEs, as trade marks could be registered for only one product class, instead of three classes. In addition, requirement of a "graphic representability" of a trade mark would be removed. This will imply that, for example, to register a sound, instead of submitting a printed sheet music with the trade mark application, an mp3 file of the actual tune could be submitted. The governance of the EU agency in charge of trade marks will also be strengthened and the parliament proposes that the agency be renamed the European Union intellectual property agency to better reflect the broad range of its work.

Parliament worked hard to attempt to reach a conclusion on the dossier in first reading, but unfortunately the other institutions did not match the efforts made by parliament and thus we could not reach an agreement in first reading. The dossier will therefore have to be conclusively decided after the elections.


Christian Engström is parliament's Green/EFA Group rapporteur on European trade mark and Trade marks: approximation of the laws of the member states. Recast

"Keep calm and carry on" is a slogan from World War II that was rediscovered in 2000, and caught the public imagination. A number of private companies started printing the slogan on t-shirts and other items. All was well until 2011, when a British company registered the slogan as a community trademark, and started sending out legal threats ordering people to stop using the slogan.

"In the trade mark package now adopted by the European parliament, we [make] it explicit that it is perfectly legal to use trademarks 'for the purposes of parody, artistic expression, criticism or comment'"

In the trade mark package now adopted by the European parliament, we address this problem by making it explicit that it is perfectly legal to use trademarks 'for the purposes of parody, artistic expression, criticism or comment'. This should hopefully make it easier for artists and entrepreneurs to fight off trademark troll lawyers in the future. So keep calm and carry on using trademarks in culture.

Another issue that was high on the agenda in the discussions to make sure that trade mark law cannot be used to stop shipments of legitimate generic medicines, as has happened in the past. In committee, the rapporteur Cecilia Wikström did an excellent job to create a compromise on this point that had unanimous support, including the EPP and S&D Groups.

But at the very last moment before the vote in plenary, the EPP and S&D decided to go back on their word and table amendments to change their position on goods in transit. According NGOs that work with access to medicine, these amendments may jeopardise legitimate trade in life-saving generic medicines.
This last minute display of political untrustworthiness by the two big groups unfortunately made it impossible for the Pirate Party and the Green Group to vote in favour of the trademark package.


George Sabin Cutas in parliament's international trade committee opinion rapporteur on Trade Mark and Laws of members states relating to trade mark reports

The awaited reform of the European trademarks system will provide increased predictability, fewer procedural complexity and overall more legal certainty to its users. It will also be designed to fight against counterfeiting - a phenomenon that European companies and the European Union are battling against. In 2012, the estimated value of suspected IPR infringing goods that were retained by EU customs reached nearly €1bn, while the purchase of counterfeit goods through the internet appears to crystallize as a growing trend.

"The commission has proposed that trademark owners be able to seize counterfeit goods that transit through the EU. I agree that the European Union cannot become a safe hub for counterfeits"

A trademark is the symbol of the trusted quality of a product or service, and numerous European companies have built recognisable and appreciated trademarks. Counterfeits on the other hand cause damage not only to firms, but also to consumers and society at large, by eroding growth and posing health risks to users.

The commission has proposed that trademark owners be able to seize counterfeit goods that transit through the EU. I agree that the European Union cannot become a safe hub for counterfeits. It is why I welcome the commission's assurances that when carrying on such checks the EU will be abiding by its international obligations. We should keep in mind that article V of the general agreement on tariffs and trade requires members of the WTO to respect the principle of freedom of transit. At the same time, the EU is a signatory of the 'Declaration on the TRIPS (trade related aspects of intellectual property rights) agreement and public health' and cannot hinder the transit of generic medicines.


Regina Bastos is parliament's internal market and consumer protection committee opinion rapporteur on European trade mark and Trade marks: approximation of the laws of the member states. Recast

The European system and national systems of trademarks are now to coexist within a complementary relationship. Two decades after the harmonisation of the legislation in the member states and the creation of the community, the principles underlying the system are still entirely valid.

However, in recent years, we have encountered technological advances that have made the interested parties call for change in order to modernise our current legislation.

"We have proceeded towards a modernisation that will contribute towards creating cheaper, faster, more reliable and more predictable trademark registration systems in the entire European Union and generating more propitious conditions for the innovation of businesses"

As a result of these calls, we have proceeded towards a modernisation that will contribute towards creating cheaper, faster, more reliable and more predictable trademark registration systems in the entire European Union and generating more propitious conditions for the innovation of businesses.

It will also intensify the protection offered to commercial trademarks against falsification, while enhancing the levels of protection of intellectual property, through the simplification of the regime relating to products in transit.

In addition, this modernisation will reinforce the role of national authorities in trademark protection, contribute to the reduction of additional costs of litigation, through the creation of a centre of mediation and arbitrage and assure that the European system and national systems of trademarks are to coexist within a complementary relationship.

On the other hand, with the current legislation, we will also be reinforcing the protection of European consumers by reducing the costs of sourcing, and guaranteeing a level of coherent quality which will force producers to monitor the content of their products and services. The new rules also demand an investment in improving innovation - ultimately strengthening consumer confidence.

By modernising this legislation, we are reinforcing the protection of European trademarks, therefore encouraging innovation, attracting investment, creating new products and services, answering consumer needs and promoting growth and employment.

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