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Proposals for Amendments by the European Commission of the European Trade Mark Law

Xavier Buffet Delmas

11 April 2013
The European Commission published a press release announcing a reform of the European trade mark regime, amending both the European directive n°2008/95/EC to approximate the laws of the Member States relating to trade marks and the regulation n°207/2009 on the Community trade mark (I). One of the key issues dealt by these proposals relates to goods in transit (II). 

I. General comments on the proposals

The European Commission published on 27 March 2013 a press release announcing a reform of the trade mark regime, implying a revision of the system in force. The main target is to promote the innovation and the economic growth, by making the trade mark system more accessible, more efficient and less expensive.

The proposal for a directive of the European Parliament and of the Council n°2013/0089 (COD) of 27 March 2013 intends to recast Directive n°89/104/EEC of the Council of 21 December 1988, codified as Directive n°2008/95/EC to approximate the laws of the Member States relating to trade marks. This proposal intends to: (i) modernise and improve existing provisions, in particular regarding the definition of a trade mark and the issue of counterfeit products in transit, (ii) achieve greater approximation of substantive law, in particular regarding collective marks, (iii) achieve alignment of principal procedural rules, by notably obliging Member States to provide for an administrative procedure to challenge the validity of a trade mark registration before their offices, and (iv) facilitate cooperation between offices.

The proposal for a regulation of the European Parliament and of the Council n°2013/0088 (COD) of 27 March 2013 intends to amend Council Regulation (EC) n°207/2009 of 26 February 2009 on the Community trade mark. This proposal provides: (i) to adapt terminology, in particular by changing "Community trade mark" to "European trade mark", and to have a Common approach on Union decentralised agencies, (ii) to streamline procedures, (iii) to increase legal certainty, by adopting the same rules as those provided within the proposal for a directive, (iv) to have a framework for cooperation between the Agencies and Member State offices.

The proposals for a directive and for a regulation will have to be adopted by the European Parliament and the Council according to the codecision procedure.

Finally, the project also implies an amendment of Regulation n°2869/95 regarding the taxes to be paid to the OHIM.

II. Specific comments on the issue of goods in transit

One of the keys issues dealt by the above mentioned proposals relates to goods in transit.

"goods in transit" means goods coming from countries outside the EU, and intended to be sold in countries outside the EU, without any suspicion that they are intended to be sold in the EU.

The issue of goods in transit is a hot topic across Europe for several years and in particular since the Philips/Nokia judgment (European Court of Justice ("ECJ"), Judgment of 1 December 2011, Cases C-446/09 Philips and C-495/09 Nokia). In this decision, the ECJ has ruled in particular that "goods coming from a non-member State which are imitations of goods protected in the European Union by a trade mark right or copies of goods protected in the European Union by copyright, a related right or a design cannot be classified as ‘counterfeit goods’ or ‘pirated goods’ within the meaning of those regulations merely on the basis of the fact that they are brought into the customs territory of the European Union under a suspensive procedure".

It results from the position of the ECJ that the owner of trademark rights in the EU cannot take action against goods in-transit in the EU, unless it is shown that there are suspicions that these goods are intended to be sold on the EU market.

Therefore, many people now wonder whether it would be possible to amend European law in order to enable the proprietor of a trade mark registered within the European Union ("EU") to prevent the use of goods in transit without authorization.

In this context, the above proposals tend to solve the issue by introducing the following provisions:

-       Recital 22 of the proposed directive and Recital 18 of the proposed regulation: "With the aim of strengthening trade mark protection and combatting counterfeiting more effectively, the proprietor of a registered trade mark should be entitled to prevent third parties from bringing goods into the customs territory of the Member State without being released for free circulation there, where such goods come from third countries and bear without authorization a trade mark which is essentially identical to the trade mark registered in respect of such goods".

-       Article 10.5 of the proposed directive and 9.5 of the proposed regulation: "The proprietor of a registered trade mark shall also be entitled to prevent all third parties from bringing goods, in the context of commercial activity, into the customs territory of the Member State where the trade mark is registered without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorization a trade mark which is identical to the trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark".

These provisions thus include a broad prohibition of third parties' use of in-transit goods bearing a trade mark without authorization. It will thus be important to follow the adoption of the proposals by the European Parliament and the Council in order to see whether these provisions will be amended.

Xavier Buffet Delmas

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