Focus on European trade mark law: the Max Planck Institute Study
By Birgit Clark, Trade Mark Attorney at Berwin Leighton Paisner LLP - email: Birgit.Clark@blplaw.com
On 8 March 2011 the European Commission published the ‘Study on the
Overall Functioning of the European Trade Mark System’ (the Study) by the
Max Planck Institute for Intellectual Property and Competition Law (MPI).
Background
The Study was commissioned in 2009 as ‘a contribution to the European
Commission’s overall evaluation of the functioning of the trade mark system in
Europe’ and it is expected that it could have far reaching effects on the
European trade mark system, including a review of the Community Trade Mark
Regulation (CTMR) and the Trade Mark Directive (TMD).
While the Commission does not have to follow the proposals set out in the
study, consultations took place between the Commission and the MPI at the
drafting stages and trade mark practitioners, academics and industry groups
alike are analysing the recommendations published in this 278 pages long
document. Initial reactions from industry journals, blogs and seminars, such as
the Marques Class 46 seminar held in London on 5 April 2011, indicate that
some recommendations are viewed as more controversial than others.
The purpose of the Study is ‘to provide the Commission with an in-depth
assessment of the overall functioning of the trade mark system in Europe as a
whole including both at the Community and at the national level’. Having a
particular focus on the ‘benefit of users’, the Study further aims ‘to establish the
potential for an enhanced cooperation between the OHIM and the national
offices’ and includes extensive user surveys, statements of user associations as
well as information from the national trade mark offices which it combines with
an often inspired legal analysis.
Birgit Clark is
Trade Mark Attorney
at Berwin Leighton
Paisner LLP.
Birgit deals with all
trade mark issues.
She has substantial
experience in dealing with UK and
Community Trade Marks and in managing
international portfolios, covering matters
such as clearance searches, filings,
prosecution and maintenance of marks. She
also has extensive experience in relation to
opposition work before the UK and
Community Trade Mark offices.
Birgit holds a Doctorate in Law from the
University of Tübingen and an LL.M. from
the University of Aberdeen. She writes
extensively in the field of intellectual
property law in both English and her native
German and is team member of both the
MARQUES Class 46 and IPKat weblogs.
Birgit is also a qualified solicitor (England
and Wales) and a German qualified attorney
at law (Rechtsanwalt).
Proposals
It is impossible to comment on all recommendations set out in this thoroughly
researched and detailed study. Below is a selection of those proposals that have so far received the most attention.
OHIM’s fee structure and issue of ‘cluttering’
On the perennial question of OHIM’s fees, the Study takes the view that there is no need to change the overall fee structure.
Notably that there is no need to adjust the fees for an opposition, cancellation, or appeal. However, the Study proposes that a
separate application and renewal class fee should be payable for each class beyond the first (and not the third as is currently the
situation). It does ‘not propose this for purposes of adjusting any imbalances in the fee structure, but rather for purposes of
reducing unwarranted claims for goods or services not really required by the proprietor of the mark’, so-called ‘cluttering’ of the
register. To avoid such ‘cluttering’ the Study furthermore proposes that a general requirement should be introduced that
registration of a Community Trade Mark (CTM) requires an intent of use (even though that intent would have to be realised only
after the expiry of the 5 year grace period). These proposals and the issue of ‘cluttering’ have already attracted initial reactions:
while some observers believe that the abandonment of the ‘three classes for one’ fee would have a de-cluttering effect on the
state of the registers, others strongly disagree and believe that there is no statistical evidence to support that these proposals
would serve to de-clutter the register.
Distribution of OHIM’s fee income
As regards to the distribution of OHIM’s fee income, the Study recommends that 50% of this income should be distributed to the
national trade mark offices to be used on trade mark matters. The respective share allocated to the respective office would, inter
alia, be determined by taking the numbers of national and international trade marks into account that are filed and granted by the
national offices, as well as their volume of work.
Relative grounds of refusal, opposition deadline and priority claims
While 48% of trade mark proprietors were in favour of OHIM examining relative grounds of refusal, the study nonetheless
recommends that OHIM’s current approach should remain unchanged, particularly since OHIM did not have the resources to
consider conflicts between earlier registrations and later filed applications. Similarly, while about a quarter of trade mark proprietors
were in favour of changing the opposition deadline from currently three to two months, the Study does not perceive this as enough
to change OHIM’s current procedure. Concerning proof in priority claims, the Study states that the present system of "confining the
examination to requiring the necessary documentation for inclusion in the files and the congruence between what is documented
and what is claimed" should be maintained, in order to keep administrative costs down.
Consistency of decision making and classification practice
Another main theme of the Study is the question of consistency. In this context the Study identified that there was room for
improving the consistency of decision making at the national offices as well as OHIM. The Study also addressed the related issue
of classification which is currently assessed by the Court of the European Union in the IP TRANSLATOR case. OHIM’s current
practice considers the complete class headings for a class of the international classification as encompassing all the goods or
services falling into that class, even if the goods or services are not specifically included in the specification and may not actually
fall under any of the generic terms used in the class headings. This is contrast to the practice adopted by some national offices,
including the UK IPO. The Study proposes that a common approach should be adopted by which some ‘generic’ terms would be
acceptable per se, whereas goods or services that do not clearly fall under a respective class heading would have to be specially
listed in the specification. This is another controversial suggestion and observers have already questioned how this system could
work in practice.
Well-known marks and marks with a reputation
As regards to well-known marks and marks with a reputation, the Study recommends that a mark ‘fulfilling the criteria for extended
protection based on reputation should at the same time also be considered a well-known mark’ in the sense of Article 6bis Paris
Convention. This is another potentially contentious point bearing in mind that this would extend protection against unfair use to
unregistered marks which some observers believe might not sit easily with some national laws.
Graphical representation
The Study recommends that the requirement of graphical representation should be deleted from the wording of the relevant
provisions of the TMD and CTMR to allow for the development of new ways of representation which may be equally informative
and reliable. However, the Study stresses that this should not detract from the level of legal security prescribed in the European
Court of Justice’s decision in Sieckmann (C-273/00) in relation to non traditional marks, such a sound marks. The Study
recommends that appropriate wording should be included in the relevant provisions as well as in the Preambles of the TMD and
CTMR.
Genuine Use and ‘co-existence proposal’
Another recommendation of the Study, which has attracted comments, relates to the question of ‘genuine use’, which is another
matter currently before by the European Court of Justice in ONEL/OMEL. The Study suggests that genuine use should be
assessed on ‘a case-by-case basis taking into account the criteria already developed by the European Court of Justice’ but that
there should be no requirement that a CTM be used than more than one member state. In this context, the Study somewhat
controversially proposes a ‘co-existence’ rule between CTMs and younger national marks under certain limited circumstances
whereby a conflicting earlier CTM, which has been registered for a period of at least 15 years and which was only been used to a
minimal extent in a part of the Community which is ‘remote’ from the relevant member state. This suggestion has come as surprise
to many observers with some calling it “unexpected” and “unclear”, whereas others approve of the general idea behind this
proposal.
Acquired distinctiveness
As regards to the question of acquired distinctiveness of so-called ‘non-traditional’ marks (e.g. shape of product and colour marks)
the Study takes the view that General Court’s current practice, which requires that acquired distinctiveness must be established
separately for each member state, ‘makes it extremely difficult’ to obtain a trade mark registration. In light of this the Study
proposes that acquired distinctiveness should focus at the whole territory of the EU.
Counterfeiting
The Study not only foresees potential future competencies for OHIM when it comes to the issue of counterfeiting but also
addresses the interpretation of the term “infringing goods” which is currently assessed by the European Court of Justice in Phillips
and Nokia (C-446 and C-495). ‘Regardless of the outcome of that judgment, the Study proposes to clarify that use in the relevant
territories (those of Member States as well as that of the Community) includes use anywhere in the territory of the Member State
or the European Union, thus including use in custom-freezones’, which would be a departure from current practice. Moreover, the
Study further recommends that use of trade marks on goods in transit should be infringing ‘if the goods are counterfeit goods in the
definition of the TRIPS Agreement, and if they would be infringing in the country of transit (or in the European Union) and in the
country of destination’.
Comment
It should be borne in mind that the above proposals a currently just that, mere proposals. However, while the European
Commission is not bound by the recommendation in the Study, it will be interesting to see which of the Study’s recommendations
will be adopted. There is a chance that European trade mark law may change quite considerably in the not so distant future.
Link to the Study