The European Union reforms trademark protection

The European Parliament approved two legislative acts key for the EU trademark protection system. Their entering into force will further the harmonisation of national regulations and their adaptation to new challenges posed by progressive digitisation.

On December 16, 2015, the European Parliament adopted two legislative acts essential for further development and consolidation of the trade mark protection system at Community level. Those acts include a regulation of the European Parliament and of the (EU) Council amending the Council Regulation (EC) No 207/2009 on the Community trade mark and a Commission Regulation (EC) No 2868/95 implementing the Council Regulation (EC) No 40/94 on the Community trade mark and repealing the Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) and the Directive of the European Parliament and of the Council (EU) to approximate the laws of the Member States relating to trade marks.

As is clear from the preamble to the Directive, the essential objective pursued by the EU legislative authorities when creating new legislative acts was to assure the co-existence of trade marks systems at national and EU level and the balance between them, being the cornerstone of the EU policy in the scope of intellectual property protection. Moreover, consultations conducted for the purpose of adoption of the new directive has revealed that, despite previous partial harmonisation of national regulations, areas exist where further harmonisation could have a positive influence on competitiveness and economic growth.

As regards the Regulation, it was adopted due to the entry into force of the Treaty of Lisbon, resulting in the introduction of new terminology, which replaces for example the term “Community trade mark” with “a trademark of the European Union”. Moreover, according to the EU legislator, even though many aspects of the Community trade mark protection system, including its basic principles, passed the test of time and still meet the needs and expectations of entrepreneurs, there is a need to modernise and adapt the system to the Internet era. One of the major changes introduced by the new regulations is the lack of requirement of graphical presentation of the trade mark. Instead, they allow to present the mark in any appropriate form, using the generally available technology. The Regulation also provides for changes as regards official fees.

Both legislative acts are soon to be published in the Official Journal of the EU and they are expected to enter into force in March or April 2016.

Author: Magdalena Maksimowska