so-called trilogue of the European Council, Commission and
struck a deal on reforms to trade mark protection in
Europe. As we
reported yesterday, the substance of the reforms is
probably less than many trade mark users hoped, and the latter
stages of the negotiations were characterised by debates about
money. There is also a lot of detail that still needs to be
Having said that, initial reaction to the agreement among
trade mark groups has been cautiously positive. INTA President
J Scott Evans (right)
blogged that the Association "welcomes a number of aspects
of the agreement" including the reduction in renewal fees, the
provisions on goods in transit and the implementation of the IP
Translator decision on classification of goods and services.
But he added that there were elements of the deal that INTA
would be monitoring.
Tove Graulund of Graulund Consulting, who chairs the MARQUES
trade mark reform task force, added that elements of the
agreement showed that users’ concerns had been
listened to, in particular the plans to ensure all EU IP
offices have administrative proceedings for trade mark
cancellation and the financial incentive to apply for a CTM in
just one class, rather than three.
However, EU member states have also got much of what they
wanted from the negotiations. Notably, once the reform is
implemented, at least €5 of every €100 received in
fees by OHIM (which will be renamed the EU IP Office) will be
"offset" to national offices to promote trade mark
harmonisation. If OHIM continues to run at a significant
surplus, this could increase to €10 in every €100. A
further €15 in every €100 is earmarked for
cooperation projects. That adds up to some nice extra revenue
for national IP offices.
mean everyone is happy? The answer is that there is probably
enough in the deal, based on what we have been told about it so
far, to ensure the remaining formalities will be passed and it
will lead to changes to trade mark practice in Europe.
That will end a process that began more than five years ago,
with the Max Planck study (see our
topic page for all the ups and downs of the process). But
it will mark the beginning of another phase, which will be
characterised by adaptation and observation.
Those who will have to adapt are trade mark practitioners
and IP offices in Europe, though some countries will see bigger
changes than others. And in truth for many trade mark owners
and applicants the changes will be relatively minor and will
have little impact on their day-to-day practice.
Meanwhile, trade mark users groups will be monitoring
closely what happens to the money. The principle of diverting
money away from OHIM was widely opposed, but that battle is now
lost. Instead, users (some of whom are observers on
OHIM’s Board) will want to see evidence that the
money is staying in the IP system and being used to improve
services for trade mark owners. IP offices in member states are