ECTA Round Table on 3D Printing and IPRs – Update on the Trade Marks Legislative Package (Event Review – Part I)
by Pedro Malaquias
On 11 March, ECTA – The European Communities Trade Mark Association hosted in Brussels a Round Table on 3d Printing and Intellectual Property Rights. The event was also a chance to have the European Commission presenting an update on the trade marks legislative package. This post is a report of the presentation made by Michael Koenig, Deputy Head of Unit, Industrial Property, DG GROW – Internal Market, Industry, Entrepreneurship and SMEs, which dealt with this last issue.
The event started with a welcome speech by Sozos-Christos Theodoulou, ECTA’s Vice-President, who made a short presentation about ECTA, whose task is to ‘promote the knowledge and professionalism of members and owners alike in the fields of trade marks, designs and related rights, within the European Union’ and invited the audience to attend ECTA’S 34th Annual Conference. This event will take place from Wednesday 10 June to Saturday 13 June 2015, in Hamburg, Germany. Further details and registration form can be found at the website of the event.
After this short presentation, the floor was given to Mr Koenig, who, as mentioned, was invited to provide an update on the status of the trade marks legislative package. For further information on the revision of the EU trade mark system – including the revision proposals for Community trade mark Regulation and Trade mark Directive –, see here.
Although this package does not constitute a revolution, it is still a real reform, which aims to improve the system and further harmonise national laws so that the national routes for trade mark registration remain attractive to companies that use both the national and EU trade mark system. As such, the process for its approval requires a lot of work and time (and controversy – for a recent position from MARQUES on the topic, see here).
Speaking of his personal impressions and with the disclaimer that what was being said could not be understood as the Commission’s official position, Mr Koenig stated that the legislative process is coming to an end and that after 4 trilogues, he expected that only more would be needed to close the file. As such, a final document should be expected around Easter and in any case during the Latvian Presidency of the Council of the EU.
The presentation was divided in three parts. The first section dealt with the Commission proposals that had not been accepted so far and that had little chance of reaching the final text. The first reference was to the harmonisation of the ex officio examination of whether a trade mark application is eligible for registration. Under article 41 of the Directive (proposal), this examination would not cover relative grounds. However, it seems that this area will remain excluded from harmonisation.
The second area where an agreement between the legislators seems impossible concerns the harmonisation of the fee structure (article 44). Although the Community Trade Mark system will be changed to a one fee per class system, the system applicable to national trade marks will remain at the discretion of Member States.
The second part of the presentation dealt with the semi-formal agreements that been concluded between the EU institutions in the last trilogue. Mr Koenig explained that a compromise had been found in respect of the Commission’s proposal for goods in transit. Trade Mark proprietors will be entitled to prevent third parties from bringing goods into the customs territory of the Member State without being released for free circulation there, where such goods come from third countries and bear without authorization a trade mark which is essentially identical to the trade mark registered in respect of such goods. However, a safe guard was introduced allowing the person shipping the goods (with burden of proof) to establish in court that the trade mark holder does not have a right to block the marketing of the goods in the target country.
A positive outcome was also reached in respect of the importing of goods into the EU where it is only the consignor who acts for commercial purposes. Although the provision in the initial proposal has been removed, it is considered that the solution proposed by the Commission is now part of the EU acquis as a result of the Court of Justice of the European Union decision in Blomqvist v Rolex.
Full agreements seems also to have been obtained in respect of the provisions allowing proceedings against the distribution and sale of labels and packaging or similar items which may subsequently be combined with illicit products. An explicit rule covering this activity will now be included in the Regulation and the Directive.
The proposal of the Commission for the modernisation of the definition of a European trade mark has also been accepted and, hence, the requirement of ‘graphic representability’ will no longer exist. It is hoped that this paves the way for a more open system.
Another area of agreement concerns the designation and classification of goods and services, following the decision in the IP Translator case. As a result, the literal meaning understanding will find its way into the legislation. However, doubts remain in respect of the timing and transition period of these rules.
Finally, the proposals concerning filling date and requirements for trade marks applications, non-use as defence in infringement proceedings, administrative opposition procedures, certification trade marks and harmonisation of the protection of geographical indications have been agreed and will find its way towards the final text.
The last part of the presentation was dedicated to what is still open for discussion. As referred to, some uncertainty remains in respect of the timing aspect and transition period that might be established in relation to the designation and classification of goods and services, following the decision in the IP Translator case. The Commission proposed a transition regime allowing trade mark holders to clarify during a very limited period their intentions when they filed a trade mark following a general and published practice by the office. As recognized by Mr Koenig, this solution is not without hooks. It implies a huge administrative exercise and might be prejudicial to third parties who did rely in one or another interpretation. However, the Commission still sees it as the fairest option. The two co-legislators have very different views, with the Council opposing it and the European Parliament requiring only slight changed to the Commission proposal.
Another pending matter relates to the possibility of opposing trade mark applications filed in bad faith. In particular, it is being debated the possibility of owners of trade marks registered outside Fortress Europe resorting to this relative ground of refusal. Mr Koenig explained that the introduction of this provision could also serve as a way to export a similar ruling to other jurisdictions. Once again, the European Parliament seems to support the Commission’s proposal, while the Council has rallied against it.
One reform that was not part of the Commission proposal, but that the European Parliament suggested was the introduction of a freedom of speech limitation in trade mark rights. The preliminary proposal maintained the possibility of referencing a trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, but the European Parliament intends to go further by introducing a non-exhaustive list of accepted conducts, where parody and criticism would be included. The Council and the Commission seem rather hesitant. According to Mr Koening, these could result in legal uncertainty as, on the one hand, the understanding of parody could vary between Member States and, on the other hand, acts that are not in the course of trade, nor related to commercial activities should remain outside the scope of trade mark law.
Also under debate is the procedure for revocation or declaration of invalidity. The Commission proposed that along the right to go to court, Member States provide for an administrative procedure to challenge the validity of a trade mark registration before their offices. The Commission remains optimistic on the acceptance of this proposal even if a longer transition period might be needed.
The proposal on the reduction of fees is still open to discussion. Although there seems to be an agreement towards the reduction of the fees, it is unlikely that the commission proposal is fully accepted. There is however hope for a middle ground compromise.
Finally, some uncertainty remains in respect of the provisions relating to the governance of OHIM and the budgetary surpluses that have been accumulated by the agency. Under the Commission proposal, these should flow mainly into cooperation projects. However, the Council understands that the system as to be looked as a whole and the contribution of the Member States towards the system should not be ignored. As such, the Member States have defended that some of the money should flow back to their IP offices. Mr Koening noted that if the system is to be seen as a whole, not only the Member States, but also the CJEU should be compensated for its activity in the trade mark field. This is possibly the most intricate problem, which seems only likely to be solved in the last moment through a political compromise.
After some questions from the audience, the first part of the event came to an end. It was followed by a Round Table on 3d Printing and Intellectual Property Rights, which will be the topic of a future post.
 For a guide to the legislative procedure in the EU, see the Guide to Codecision and Conciliation, available at http://www.europarl.europa.eu/code/information/guide_en.pdf. See also http://www.europarl.europa.eu/aboutparliament/en/0081f4b3c7/Law-making-procedures-in-detail.html.
 Case C‑98/13 Blomqvist v Rolex SA  ETMR 25.
 Case C-307/10 IP Translator ECLI:EU:C:2012:361.
 Case C-307/10 IP Translator ECLI:EU:C:2012:361.