New initiatives proposed to improve the effective trade mark protection in the EU

The European Commission presented a package of initiatives to make trade mark registration systems all over the European Union cheaper, quicker, more reliable and predictable. Among them, as regards fees, the Commission is proposing a principle of "one-class-per-fee" that will apply both for Community trade mark applications and for national trade mark applications.

With the aim at improving conditions for businesses to innovate and to benefit from more effective trade mark protection against counterfeits, including fake goods in transit through the EU's territory, the European Commission presented a package of initiatives to make trade mark registration systems all over the European Union cheaper, quicker, more reliable and predictable. In March 2009, EU Council publishes a codified version of Regulation on the Community trade mark.

In particular, the proposed revision would streamline and harmonise registration procedures, including at Member State level, taking the Community trade mark system as a benchmark; Modernise the existing provisions and increase legal certainty by amending outdated provisions, removing ambiguities, clarifying trade mark rights in terms of their scope and limitations and incorporating extensive case law of the Court of Justice; Improve the means to fight against counterfeit goods in transit through the EU’s territory; and facilitate cooperation between the Member States’ offices and the EU trade mark agency – the Office for Harmonisation in the Internal Market (OHIM) - in order to promote convergence of their practices and the development of common tools.

The proposed package contains three initiatives: Recast of the 1989 Directive (now codified as 2008/95/EC) approximating the laws of the Member States relating to trade marks; Revision of the 1994 Regulation (now codified as 207/2009/EC) on the Community trade mark; and Revision of the 1995 Commission Regulation (2869/95) on the fees payable to OHIM.