EEA EFTA Comment on proposal for a new Trade Mark Directive

The Commission proposal is part of a package of initiatives intended to make trade mark registration systems across the European Union cheaper, quicker, more reliable and more predictable. The proposed reform would improve conditions for businesses to innovate and benefit from more effective trade mark protection against counterfeits, including fake goods in transit through the EU’s territory.

In order to foster innovation and growth by making trade mark systems in Europe more accessible and efficient for businesses, the proposed revision aims to streamline and harmonise registration procedures, modernise existing provisions and increase legal certainty by amending outdated provisions, removing ambiguities, clarifying trade mark rights in terms of their scope and limitations and incorporating the extensive case law of the Court of Justice of the European Union.

In their comments, the EEA EFTA States welcome the aim of the proposal to bring the national trade mark laws of the Member States more in line with each other. However, as cooperation with the Office of Harmonization for the Internal Market (OHIM) is not covered by the EEA Agreement and only national systems exist in the EEA EFTA States, the situation in these States is different to that in the EU. Whilst applicants in the EEA EFTA States must only deal with the procedural rules of the national authority in question, applicants in the EU Member States must potentially deal with different procedural rules for national authorities and the OHIM. The EEA EFTA States therefore hold the view that there is no need to align the procedural rights of national offices. Consequently, the proposed procedural provisions stating that national offices shall limit their ex officio examination of trade marks to absolute grounds of refusal are problematic, as the national offices of Iceland and Norway are required by law to examine on relative grounds.

Furthermore, the EEA EFTA States do not support the inclusion of provisions on trade marks as subjects of property as these provisions may threaten the coherence of national procedural law and civil law and complicate the rules, particularly to the extent that they deviate from common procedural and/or civil law principles.

Read the full comments here.