National trade mark registration in the EU Member States was harmonised 20 years ago and the unitary Community trade mark was created more than 15 years ago. Since then, there have not been any major modifications. The business environment, however, has changed significantly over the past two decades.
- The harmonisation effort at the time has been limited (focused on a restrictive number of substantive rules), formal requirements and procedures left non-harmonised.
- There is inconsistency between the two legislative instruments, the Trade mark Directive and the Community Trade Mark Regulation.
The package concerns two instruments :
- A recast of the 1989 Directive (now codified as 2008/95/EC) approximating the laws of the Member States relating to trade marks : At present, the Directive ensures that national trade marks are subject to the same conditions when registered at Member States’ Industrial Property offices and enjoy the same protection. Apart from modernising current provisions, and adding other rules of substantive law, inter alia, concerning the protection of geographical indications, the commercial exploitation of trade marks (e.g. licensing) and the registration of collective marks, the recast Directive will in future also align important procedural aspects of the registration procedure (e.g. filing date requirements, requisite standards for the designation and classification of goods and services, opposition and cancellation procedures before the national IP offices).
- A revision of the 1994 Regulation (now codified as 207/2009/EC) on the Community trade mark : Alongside and linked to the national trade mark systems, the Regulation created the first EU-wide unitary IP right, the Community trade mark (CTM) - in future to be referred as 'European Union trade mark' (EUTM) - which is granted by the EU trade mark Agency in Alicante, Spain, currently called 'Office for Harmonisation in the Internal Market' (OHIM) and in future named 'European Union Intellectual Property Office'. Beyond the modernisation and streamlining of existing provisions, the revised Regulation will, inter alia, include a new set of rules allowing for the registration of certification marks at EU level, a legal base to foster convergence projects between the Agency in Alicante and national IP offices, and list in an annex all the amounts of fees to be paid in future to the Agency.