1 January 2011TrademarksAnnick Mottet Haugaard and Fabio Angelini

Laying the foundations of trademark reform

The European Communities Trade Mark Association (ECTA) had a very busy 2010. The association brings together professionals from all the member states of the European Union in the fields of trademarks, designs and related IP rights.

In 2010, one of ECTA’s key aims was to further collaborate to set up the Cooperation Fund and identify the specific projects where it could add expertise to improve the European trademark system.

Therefore, ECTA made some concrete proposals in field 3 relating to information services and field 4 relating to enforcement activities.

Among the projects relating to the communications initiatives, ECTA proposed an information-sharing system, including e-learning modules for national office examiners and others confronted with the prosecution and enforcement of trademark rights.

In particular, it supports a database with free access for the public (and for national examiners) containing all OHIM and national office decisions, as well as a single classification list that is accepted by all national offices and OHIM. It also recommends the creation of ‘minimum standard EU examination guidelines’ that all national offices could agree upon.

Training initiatives are also of great importance. Amongst the ideas suggested by ECTA was the creation of a special group of CTM and RCD experts, specifically educated to help national offices and users to develop a more advanced and competitive environment.

It also seems important to include in such training lectures recent developments in trademark decisions, not only from the Court of Justice and the General Court, but also from national courts, grouping together coherent interpretations and possibly helping to harmonise practice in such areas.

With regard to enforcement activities, ECTA’s proposal aims to set up an electronic tool to facilitate the exchange of data between OHIM, national offices, IP enforcement officers and rights holders, under the existing framework for applying for customs action. IP enforcement officers should have a password-protected webbased tool that contains relevant and visual information in a template structure in the IP officers’ preferred language.

The tool would hold data concerning registered IP rights and information about logistics and products, and would provide country-specific or regionspecific information to the enforcement authorities. Obviously, agents’ or rights holders’ contact details would be shared with the relevant authorities. As such, the database would be kept up to date through tools such as TMview and data that the rights holder would provide through password-protected access.

ECTA also continued to closely follow the Study on the overall functioning of the European Trade Mark system and produced additional comments further to the meetings between the Max Planck Institute for Intellectual Property (MPI) and the users’ organisations in June 2010.

In this context, ECTA organised additional roundtables (six in 2010) in collaboration with OHIM and the national trademark offices to help stakeholders gain a better understanding of the impact of OHIM’s activities and the CTM system in different member states. The roundtables also allowed stakeholders to learn from the experiences of the respective users.

By repeating these roundtables on identical topics in the various EU member states, ECTA wished to demonstrate the obvious interest in both the CTM and national systems being scrutinised, along with the relationship between the two systems. ECTA is convinced that such exercises will contribute to further harmonisation of the systems.

Some of the features of other trademark systems (such as the US system) could also be helpful. Therefore, together with the EU Commission, ECTA organised a separate roundtable in March 2010 to study what particular benchmarking exercise should be adopted.

In May 2010, like other trademark users’ associations, ECTA was concerned about the willingness of the Spanish presidency of the EU to have the Competitiveness Council adopt the conclusions of the review of the trademark system when the Commission’s study had just started. Indeed, the complexity of the issues at stake required that sufficient time was given to consider all the questions raised in the course of the study.

These conclusions should not preempt the recommendations of the MPI nor prematurely restrict the scope for the debate that would ensue among all stakeholders once the MPI recommendations were available. In particular, ECTA was concerned about the proposed establishment of an explicit competence for the role and mission of OHIM to cover the field of enforcement and a possible role in anticounterfeiting for the national trademark offices.

Although in the long term, this may appear to be beneficial, such a role would be a significant departure from the current activities of most trademark offices, given the efforts already being undertaken by other institutions and law enforcement agencies. A thorough analysis must be carried out before any conclusions can be reached. The MPI study is a first step.

“ECTA is an enthusiastic supporter of the protection of GIs at the European level and beyond. The association is dedicated to the protection of signs in the EU and its member states, such as trademarks and designs, including GIs that are designed to ameliorate the quality of different kinds of products (foodstuff, wine and spirit).”

Furthermore, ECTA could hardly accept the creation of a legal basis for distributing to national offices an amount equivalent to 50 percent of the renewal fees. Together with the other users’ organisations, ECTA continued opposing the principle of diverting CTM user-generated fees to national offices. OHIM and the national offices should be self-financing through user fees and those fees should be used only by the offices that receive them. Some national offices do not have financial autonomy and do not have control over their finances. This raises a great concern that the distributed funds could find their way into state budgets and end up covering expenditures unrelated to projects that would benefit the European trademark system.

In addition, the diversion of OHIM renewal fees would amount to a permanent subsidy that will make it difficult for national offices to remain responsive to market requirements and users’ needs. Finally, any such diversion to national offices would put them in a position to vote on the level of fees in which they have a direct interest.

The Commission tender called for further investigation and recommendations on these two points. The Council should not pre-empt the MPI findings and jump to conclusions at this early stage of the process.

The MPI’s report was recently released. It is remarkable not only in its conclusions, which are by and large in line with ECTA’s preliminary observations of early 2010, but also because it is clearly construed around the principle of undistorted competition as a fundamental consideration in European trademark law.

ECTA is aware that, perhaps as a result of increasingly tight economical conditions, recurring worldwide recessions and the increasing aggressive entry of new countries’ economies in the world market, trademark rights are more and more used as anti-competitive instruments rather than fulfilling their role to foster internal growth and more general welfare.

In this regard, the MPI report seems to fairly strike a balance between the interests of all trademark owners and the interests of consumers on matters of great relevance for all trademark stakeholders. For instance, the position that the geographical scope of a CTM should not be one that takes political boundaries into consideration shows that a mechanical approach to an issue of such importance as the extent of the rights conferred by a CTM in a European market of more than 400 million consumers is possibly not one that is suited to strike a fair balance and foster competition.

Similarly, the suggestion that applicants should specifically designate goods or services that are not included under a class heading, demonstrates the willingness to impose some extra burden in view of attaining future benefits in terms of rendering easier and more transparent trademarks’ scope of protection and conducting clearances to find new trademarks for new products or services that may ultimately create new business opportunities and new jobs.

In the same context, the MPI’s recommendation that oppositions based on earlier unregistered rights should be limited to those rights that have a nationwide rather than purely local scope, clearly indicates that in a common market, while there is space and necessity for national registrations, unregistered rights should be curtailed for their capability to be used as unpredictable ambushes that increase the costs, the competitiveness and the predictability of making business in the EU market.

Finally, in light of ECTA’s view that there is a problem with the cluttering of the CTM registry, the MPI proposes that a separate application and renewal class fee should be payable for each class beyond the first to reduce the occupation of classes not really needed.

ECTA is more than ever actively working and participating in this fundamental exercise which will shape the future of EU trademark laws. Notwithstanding the pressure and the short deadlines, ECTA members’ enthusiasm, passion and dedication is so great that there is little doubt that the results will be of great assistance and contribution to the Commission and the parliament.

Besides these two important projects, the European community of trademark practitioners closely followed developments relating to geographical indications (GIs).

ECTA submitted introductory comments on the annex dealing with GIs in a Commission communication on agricultural product quality policy. ECTA is an enthusiastic supporter of the protection of GIs at the European level and beyond. It is dedicated to the protection of signs in the EU and its member states, such as trademarks and designs, including GIs that are designed to ameliorate the quality of different kinds of products (foodstuff, wine and spirit).

ECTA commented that some articles in the annex, including those relating to trademarks, were not drafted exactly in the same way and did not use the same terminology. ECTA is also convinced that it would be appropriate to merge the three regulations, which would contain common articles applicable to the three kinds of protection, and provide separate chapters dealing individually with foodstuff, wine and spirit questions. It is a pity that the recent draft issued by DG AGRI does not take this latter remark into account.

In addition, domain name administrator ICANN’s plan to introduce an unlimited number of new generic top level domain name extensions in an unstructured manner has sparked interest. Together with other trademark associations, ECTA has voiced its concern that such plans could confuse consumers, who depend upon trademarks, and expose trademark owners to unnecessary risk and expense in policing their trademarks.

Many ECTA members believe that it is ICANN’s ‘family’ (registry operators and registrars) who stand to profit from new gTLDs and that they have been driving the process forward despite concerns that the overarching issues (i.e. malicious behaviour, security and stability, economic impact and rights protection) have yet to be adequately addressed.

Furthermore, ECTA has been active on the enforcement side. It replied to the consultation paper on the review of the EU legislation on customs enforcement of IP rights. It made additional comments regarding travellers’ personal allowances, goods in transit and the Anti-Counterfeiting Trade Agreement. ECTA replied also to the consultation paper on the review of the EU enforcement directive by proposing specific modifications in order to ensure a further harmonisation and effective enforcement of IP rights throughout the EU.

Last but not least, thanks to its contribution and active participation during 2009 and 2010, ECTA has seen its nomination as an official observer on OHIM’s Administrative Board and subsequently on its Budget Committee renewed, together with four other non-governmental organisations. Observer status was long overdue.

The 27 EU member states represented on the OHIM Boards considered it important to have the users’ organisations even more actively involved, in particular during board discussions on fee reduction and establishing the Cooperation Fund. Their presence at such a high level should encourage transparency, co-operation and communication with users who are the Community trademark system’s major stakeholders.

Annick Mottet Haugaard is the president of ECTA and a partner at Lydian, where she leads the IP team. She can be contacted at: annick.mottet@lydian.be

Fabio Angelini is the chair of the ECTA Law Committee and a counsel with the De Simone & Partners in Rome. He can be contacted at: fangelini@desimonepartners.com

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk