If implemented, the proposals will also introduce certification marks, remove the requirement for graphical representation of a CTM, and shift the burden of proof in goods-in-transit cases to the holder of the goods.
The changes are set to be recommended as part of the Commission's review of the trade mark system in Europe, which is expected to recommend changes to the Community Trade Mark Regulation, Trade Marks Directive and Fees Regulation.
The long-awaited proposals have not yet been published, but Managing IP has seen the latest drafts which are believed to be close to final.
Among the changes to be recommended to the CTM Regulation are:
• Requirement for graphical representation to be replaced by "represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor" (Article 4). The Commission believes this will provide more flexibility, while retaining legal certainty for applications such as sound marks.
• The use of general terms of the Nice Classification to cover all goods or services clearly covered by the literal meaning of the term (Article 28). This implements the recent IP Translator decision.
• Burden of proof in cases where there is suspicion that goods in transit will be placed on the EU market to be switched to the holder of the goods from the trade mark owner (Article 9). The Commission says this is the only workable solution to the issues arising in the Philips and Nokia transhipment cases.
• Abolition of the option to file ETMs at national offices (Article 25).
• One-month period for payment of application fee abolished (Article 27).
• National searches abolished (Articles 38 and 155).
• Third parties to be able to file observations immediately (Article 40).
• Various changes to be made to rights conferred by an ETM, regarding rights conferred without prejudice to prior rights, use as a trade or company name, use in comparative advertising and consignments from commercial suppliers (Article 9).
• Introduction of certification marks (Article 74b to 74k). The Commission says this will fill a gap at the EU Level. The Commission is also proposing changes to CTM application and renewal fees.
Once the Commission's proposals are formally published, there is expected to be further consultation. They will have to be approved by EU member states before they can come into effect.
Neither the Commission nor OHIM would comment to Managing IP ahead of official publication.
