EU proposals for the reform of the Trade Mark Directive and the Community Trade Mark Regulations
In 2009, the European Commission launched a review of the European trade mark system. A report showed that while the foundations of the system remained valid, there was potential to make it even more effective and user-friendly.
In 2013, the Commission proposed reform of the Trade Mark Directive Directive 2008/95/EC and the Community Trade Mark Regulations (EC) No 207/2009 on the Community trade mark. The objective for this reform package is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for business in terms of lower costs and complexity, increased speed, greater predictability and legal security.
The main features of the package are:
- Significant reductions of the fees for European Union trade marks covering all 28 Member States. The agreed changes will lead to significant savings in particular for businesses that seek protection of their registered European Union trade marks beyond an initial period of 10 years.
- Streamlined, more efficient and harmonised registration procedures across all trade mark offices in the EU. Faster and less burdensome procedures will be a great improvement for successfully growing companies, mainly SMEs, which roll out their business beyond one Member State and seek trade mark protection in multiple national administrations.
- Strengthened means to fight against counterfeits in particular of goods in transit through the EU’s territory. This will prevent abuse of the EU as a distribution hub for illegal fake goods world wide
- Modernised rules and increased legal certainty by adapting trade mark rules to the modern business environment and clarifying trade mark rights and their limitations.
In April 2013, the Intellectual Property Unit carried out a public consultation on the EU proposals. Broadly speaking, the proposals were welcomed as it was generally considered that that they would constitute positive developments from the perspective of the likely business interests in Ireland as it was believed that innovative, export oriented companies require a predictable and consistent legal and regulatory environment across Europe within which they can exploit the competitive advantage of their intellectual property rights (IPR) without undue expense and onerous administrative burden.
Moreover, trade marks were viewed as an important class of IPR for Irish companies and it was believed that the proposals should make it easier and more cost effective for Irish businesses to develop and consequently exploit their brands in a broader manner across the EU
In April 2015, the European Parliament, the Council and the Commission reached a provisional political agreement on this reform. In December 2015, following a process of negotiations between Member States and the EU institutions, the European Parliament and Council approved the European trade mark reform package. The new trade mark Directive and the new European Union trade mark regulation were published in the Official Journal of the European Union on 23 and 24 December 2015 respectively.
Implementation of the EU Trade Mark Directive 2015/2436 in Ireland
In Europe, a trade mark can be registered at national level at the industrial property (IP) offices of Member States, or at EU level as a European trade mark at the European Union Intellectual Property Office (EUIPO).
The transposition of this Directive into Irish law in conjunction with the European Trade Mark Regulation (EU) 2017/1001, (which entered into force on 23 March 2016), aims to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for business in terms of lower costs and complexity, increased speed, greater predictability and legal certainty. The four Statutory Instruments giving effect to the EU reform package introduce new provisions and amend certain existing provisions in Irish trade mark law. They come into effect on 14 January 2019.
- SI No 561 of 2018 European Union (Trade Marks) Regulations 2018
These Regulations, made pursuant to the European Communities Act, 1972, amend and extend certain provisions of the Trade Marks Act 1996 to give statutory effect in the State to Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 amending Directive 2008/95/EC relating to trade marks and to certain provisions of Council Regulation (EU) 2017/1001 of 14 June 2017, on the European Union Trade Mark.
- SI No 562 of 2018 Trade Marks (Amendment) Rules 2018
This Statutory Instrument primarily transposes procedural matters laid down in Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 and thereby amends and extends certain provisions of secondary Irish trade mark legislation namely, the Trade Marks Rules 1996.
- SI No 563 of 2018 European Union (Trade Marks Act,1996) (Community Trade Mark) (Amendment) Regulations 2018
These Regulations amend certain technical provisions in the Community Trade Mark Regulations 2000 (S.I. 229/2000) (“the CTM Regulations”). The amendments are for the purpose of giving effect to technical changes in certain provisions and changes in terminology arising from Regulation (EU) No. 2017/1001 of the European Parliament on the European Union Trade Mark.
- SI No 564 of 2018 Patents, Trade Marks and Designs (Fees) (Amendment) Rules 2018
This Statutory Instrument introduces amendments to the Patents, Trade Marks and Designs (Fees) Rules 2001 (S.I. No. 482 of 2001), including the introduction of a new fee of €125 for the division of a trade mark registration (which is required by Article 41 of the Directive).
Minister Humphreys introduces overhaul of trade mark law aimed at lowering costs and providing greater legal certainty for business
SI No 561 European Union (Trade Marks) Regulations 2018
SI No 562 Trade Marks (Amendment) Rules 2018
SI No 563 Trade Marks Act 1996 (Community Trade Mark)(Amendment) Regulations 2018
SI No 564 Patents, Trade Marks and Designs (Fees)(Amendment) Rules 2018
Guidance Notes on SIs to give effect to Directive (EU) 2015/2436 and Regulation (EU) 2017/1001 on Trade Marks
For ease of reference, a link to the text of EU Directive 2015/2436 and EU Regulation 2017/1001 are provided below.