The European Commission to the Community Trade Mark (CTM) Regulation and Trade Marks Directive. The primary function is EU member trade-mark laws. This bureaucratic hygiene aim – which resulted in a mixture of trade-mark rights expansion and contraction – stands in contrast to the current, controversial and (in my opinion) heavily pro-holder Canadian bill working its way through the legislative system.
Proposed EU Updates
Click for a detailed summary of the likely legislative updates. The main categorical changes are below, separated by general impact on brand owners.
Positive news for applicants:
- Procedural : Reduced wait times and paperwork will make the registrations . In specific, the opposition wait period will be reduced from nine months to four. CTM trade-mark filing fees will also need to be paid immediately and on a per-class basis.
- Goods in transit: These counterfeit-fighting clauses will allow brand owners to take action when
- Graphical representation: Expanded to be a more general conceptual “bucket” that includes audio, video, and anything capable of “being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to it proprietor.”
Less positive news for applicants:
- Double identity: In the case of identical trade-marks for an identical product or service, the infringement will be limited to the original function only. This reduces the scope of trade-mark protection, which can best be analogized as
- Bad faith: This will be a guaranteed ground for trade-mark refusal, and not just a consideration. If an earlier trade-mark provided outside the European Union is still in use and the applicant is acting in bad faith, the trade-mark will be refused.
- Protection for geographic origin: Trade-marks will be refused if they are , such as for wines. Other examples of these marks are .
Additional housekeeping:
- : “Community trade-mark” will now be known as “European trade-mark,” and “Office for Harmonization in the Internal Market” will be known as the “European Trade Marks and Designs Agency” (EUTMDA).
Comparison with Canadian Reforms
There are a number of similarities between the proposed EU changes and in-process Canadian trade-mark reforms in , particularly with regards to counterfeit reduction. (For in-depth analyses of Bill C-56, please see these IPilogue posts by and .)
There are also some major differences. I believe that the Canadian Bill – from name to content – is as much about optics and the federal government's "tough on crime" agenda as it is intellectual property law, perhaps more so. Thus, I posit the main difference between Canada's and the EU's trade-mark updates is the “motivation to modernize.” The EU reforms generally tend to be more bureaucratic while the Canadian ones are . Flowing from that, it's natural that the EU updates focus on streamlining and harmonization, and provide a balance of favourable and unfavourable changes vis-à-vis rights holders. In contrast, the Canadian changes, in my opinion, are geared largely toward protecting trade-mark rights holders in a way that reinforces the current government’s “tough on crime” agenda. For example, Bill C-56 introduces tougher criminal penalties for trade-mark violators and increased to assess infringement without a clear court oversight mechanism.
EU harmonization is set for adoption in Spring 2014. Canada’s Bill C-56 went through its first reading in March 2013 but a second reading , so it is unclear when Bill C-56 will become law. This is obviously good news, because it gives us all lots of time to plan out trade-mark-legislation-reform-theme parties.
Denise Brunsdon is an IPilogue Editor and a JD/MBA Candidate at Western University.