EU trademark reform could become a reality before Christmas

Cecilia Wikström, a member of the European Parliament and rapporteur of the EU trademark reform package, has told the MARQUES annual conference that the revamped EU trademark system could become a reality before Christmas.

Wikström noted that the European Parliament and Council had been presented with the proposals in 2013, and that she had started “working at an accelerated pace” with the shadow rapporteurs. However, consensus proved difficult to achieve, as “we have to agree on every single comma in the text”. Moreover, with the European parliamentary elections taking place in May this year, “the issue was put into the freezer” over the course of the elections

The process has restarted, but the new members of Parliament need time to review their positions and Wikström is the only member left from the previous mandate. However, at the MARQUES conference she remained positive: “Until we have had the first few meetings, I won’t be able to give any clear timeframes on when we will start negotiations or have a final decision on the package – but I think that if everyone gets their acts together, we could conclude before Christmas.”

Nevertheless, with regard to the new members of Parliament, Wikström recognised that “a large number are nationalists who do not want to find common ground and harmonise laws”. So far, the Parliament and Council have agreed on 80% of the content, but Wikström identified some issues that will likely be the subject of intense debate, such as the treatment of goods in transit and the Office for Harmonisation in the Internal Market (OHIM) fees surplus.

Concluding her presentation, Wikström noted:“These reforms happen only every 15 to 20 years, so it’s important that we get them right.”

The issue of the OHIM surplus was tackled during the same session by panellist Tove Graulund, chair of the MARQUES EU Trademark Reform Taskforce. MARQUES’s position is that fees should be set at a level which ensures a balanced OHIM budget and Graulund argued that there must be a focus on what OHIM should be doing with fees in the future. Graulund believes that projects should directly benefit the European Union and its member states, as well as users. Importantly, she criticised the idea that cooperation fund levels will be set by OHIM’s Administrative Board, “as many of its members are from national offices. They are experts, but they also have a vested interest. Perhaps the distribution should be handled by an independent body”.

Graulund further criticised the proposed funding levels. In June the Greek presidency’s compromise proposal to the EU Trademark Directive and the EU Community Trademark Regulation stated that OHIM should provide financial support for projects of interest “to the extent this is necessary to ensure the effective participation of industrial property offices... That financial support may take the form of grants. The total amount of funding shall not exceed 10% of the yearly income of the office”.

The proposed Article 139(3)(a) stated that 10% of OHIM’s yearly income would also be distributed to member states.

Graulund noted that MARQUES strongly objects to Article 139, stating that the latter 10% is proposed to be distributed to member states, rather than the national offices or other national bodies dealing with IP rights. There would thus be a loss of control over user fees.