EU Council formally endorses trademark package
The European Council has formally endorsed a series of reforms to the EU trademark system.
Its approval follows a provisional agreement between the council, European Commission and Parliament on reforms including a reduction in Community trademark (CTM) renewal fees.
On Tuesday, June 16, the European Parliament’s Committee on Legal Affairs will vote on the reforms before they head to the full parliament.
One of the key proposals in the package is the reduction in CTM renewal fees from €1,500 ($1,681) to €850 for electronic filing and from €1,500 to €1,000 for paper filing.
Trade associations such as the International Trademark Association and Marques had been concerned about the surplus generated at the Office for Harmonization in the Internal Market (OHIM) and had made suggestions for the way it could be used.
OHIM’s current annual budget is €190 million, and it has a surplus of around €300 million.
In the ‘trilogue’ discussions, the label for the meetings between the council, commission and parliament, there had been suggestions that the surplus would be used for services unrelated to intellectual property.
But the proposed package would see the surplus used to enhance cooperation between OHIM and national IP offices. Also included in the package are stronger measures to tackle counterfeit goods-in-transit.
A statement on the EU council website said: “The reform of the current system will improve conditions for businesses to innovate and to benefit from more effective trademark protections against counterfeits, including fake goods in transit through the EU’s territory.
“The new legal framework is also aimed at making trademark registration systems throughout the EU more accessible and efficient for businesses in terms of low costs and complexity, increased speed, greater predictability and legal certainty,” the council added.
Mary Bagnall, partner at law firm Charles Russell Speechlys, said some lawyers are split on lower CTM fees.
“Of course trademark owners are always going to welcome low fees, but on the other hand low fees can encourage more filing and 'over protection'. With the current system, for example, there can be a tendency to apply for additional classes just because three classes cost the same as one, rather than because they are really needed.
“Ultimately, that clutters the register and makes it more difficult for others to find marks which are clear to use,” she added. “There is a balance to be struck and the emphasis on reducing renewal fees significantly will be welcome."
