11. COMMUNITY TRADE MARK REGULATION
(24181)
5114/03
COM(02) 767
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Draft Council Regulation amending Regulation (EC) No. 40/94 on the Community Trade Mark.
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| Legal base: | Article 308 EC; consultation; unanimity
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| Document originated: | 27 December 2002
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| Deposited in Parliament: | 15 January 2003
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| Department: | Trade and Industry
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| Basis of consideration: | EM of 30 January 2003
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| Previous Committee Report: | None
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| To be discussed in Council: | No date set
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| Committee's assessment: | Legally and politically important
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| Committee's decision: | Cleared
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Background
11.1 A unitary system for the protection of trade marks
throughout the European Community was established by Council Regulation
(EC) No. 40/94 of 20 December 1993 (the Community Trade Mark Regulation
— CTMR).[21] The
CTMR operates alongside national trade mark laws, so that a trade
mark may be registered under either national law or the CTMR or
both. The CTMR system is administered by the Office for Harmonisation
in the Internal Market (OHIM) based in Alicante, Spain. OHIM is
managed by a President appointed by the Council who has responsibility
for its operations. OHIM is also supervised by an Administrative
Board composed of one representative from each Member State together
with a representative of the Commission.
11.2 Around 41,000 applications for registration are
made to OHIM each year, a total which exceeds initial expectations.
The Commission is required by Article 39(7) of the CTMR to submit
a report on the functioning of the system of searching (for prior
conflicting trade marks) and to do so during the first five years
of the operations of OHIM. The Commission has also reviewed the
rules relating to the representation of trade mark owners and
applicants before OHIM, but makes no recommendations for any change.
These reviews have led the Commission to prepare a number of proposals
for amendments to the CTMR.
The proposal for amendments to the CTMR
11.3 The Commission proposal would make amendments to
Article 5 (persons who can be proprietors of Community trade marks),
Article 39 (national searches), Article 89 (representation before
OHIM), and Articles 130 and 131 (appointment of members of Board
of Appeal), as well as making a number of minor procedural changes.
11.4 In its present form, Article 5 of the CTMR provides
that nationals of third countries which are not members of the
Paris Convention or the World Trade Organisation may become proprietors
of a Community trade mark only if a published Commission decision
has confirmed that the third country in question accords the same
trade mark protection to nationals of all Member States as it
does to its own nationals. The amendment proposed for Article
5 would abolish this requirement of reciprocity, and also any
requirement relating to the nationality of the trade mark owner.
A community trade mark may therefore be owned by any natural person
or any legal person, including 'authorities established under
public law'.
11.5 The Commission proposal would delete Article 39
of the CTMR. In its present form, Article 39 provides for searches
for prior conflicting marks to be carried out by those Member
States which have opted for a system of national searching in
relation to Community trade mark applications. The Commission
points out that this system has proved expensive, and has slowed
down the Community registration procedure. The Commission also
points out that some Member States[22]
have not taken part in the system, and that it is estimated that
extending each search report to cover twelve new Member States
would more than double the present cost of registration. The Commission
concludes that the least harmful of the alternatives would be
to delete Article 39.
11.6 With regard to representation of applicants before
the OHIM, the Commission does not propose any fundamental change.
However, the Commission notes that problems have arisen where
a practitioner who moves to another Member State finds that he
is no longer entitled to represent clients before the central
industrial property body of his former Member State. The Commission
therefore proposes a minor amendment to Article 89 of the CTMR
to make it clear that a practitioner is entitled to appear before
the OHIM if he is entitled to appear before the central industrial
property body of any Member State. By virtue of this amendment,
a change of place of residence or employment would no longer have
implications for entitlement to appear before the OHIM.
11.7 Amendments are proposed to Articles 130 and 131
dealing with the appointment and functions of members of the Boards
of Appeal. It is proposed that members of the Boards of Appeal,
including their Chairmen, should be appointed by the Administrative
Board of the OHIM, rather than by the Council, as at present.
No change is proposed to the arrangements whereby a member of
a Board of Appeal may only be removed on application to the Court
of Justice. It is also proposed that a single member of a Board
of Appeal may take decisions in a limited class of cases, where
a principle has already been established in the Board's practice.
The Government's view
11.8 In her Explanatory Memorandum of 30 January 2003,
the Minister for Competition, Consumers and Markets at the Department
of Trade and Industry (Miss Melanie Johnson) explains that the
Government supports the proposed changes, because it believes
they will allow the OHIM to improve the quality of its service,
to reduce its costs and to provide a more flexible process for
applicants for Community trade marks.
11.9 The Minister explains that the abolition of the
requirement for reciprocity under Article 5 CMTR will be particularly
advantageous to businesses based in UK dependent territories,
as it will allow applications for Community trade marks to be
made from such territories.
11.10 In relation to the provisions on national searches
for prior conflicting trade marks, the Minister points out that
not all national offices conduct such searches and that the service
is therefore incomplete and of an unreliable quality. The Minister
explains that the proposal would abolish this procedure and would
leave users free to decide if they wish to commission such searches
from a commercial source.
11.11 The Minister comments that the proposed arrangements
for making appointments to the Boards of Appeal would maintain
the principle that it is for Member States to take the decision
whilst increasing the chances of appointments being made solely
on merit. The Minister also comments that the minor procedural
changes for registering a Community trade mark do not have any
policy implications.
11.12 In making her regulatory impact assessment of the
proposals, the Minister comments that they will be beneficial
to business in terms of potential cost savings, improved services
and improved access to the Community trade mark registration system
for some UK territories. The Minister points out that an applicant
would be able to decide not to conduct any search prior to registration,
and would then save around _270. This would affect about 6,000
UK based applicants a year.
Conclusion
11.13 We thank the Minister for her Explanatory Memorandum.
It is apparent that the proposed amendments will improve the efficiency
of the Community trade mark regime, and will be beneficial to
UK applicants.
11.14 We have no questions to put to the Minister
and are content to clear the document.
21 OJ
No. L 11, 14.01.94, pp.1-36. Back
22 i.e.
France, Germany and Italy. Back
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