Operation Scuttle!

The IPKat recently received this note from his respected and learned friend Alexander von Mühlendahl (Attorney-at-Law, Bardehle Pagenberg, Munich, and former Vice-President of the Office for Harmonisation in the Internal Market). Since it concerns a matter of substantial importance, the IPKat is pleased to give it maximum publicity. It reads as follows:

"A "Cold" Revision of the Community Trade Mark Regulation

The author of this note learned recently, a few weeks ago, from an article in a German law journal that the European Commission was on its way to proposing or adopting a proposal for a revised version of the Community Trade Mark Regulation, for the sake of what is called "Better Regulation" in euphemistic Brussels language.

One purpose of this exercise is said to be to renumber all Article numbers from the Regulation which have been added over time, and amend the succeeding Articles as well. In our case this would mean that Article 44a becomes Article 45, Article 45 becomes Article 46 etc, the other "a" Articles being Article 48a, Article 77a, Article 78a, Article 118a, and Article 159a. Another purpose is, perhaps, to improve or in any event review and “harmonise” the language versions of the Regulation.

The same activity may apply to the Implementing Regulation, which also has an occasional “a”-Rule, and other legislative acts in the filed of Community trade marks, and perhaps also other acts in which we are particularly interested, such as the Community Design Regulation or the Community Plant Varieties Regulation.

During a recent meeting (of the Madrid Working Party's 5th Session) in Geneva (5 to 9 May 2008) it was indeed confirmed by the Commission representative there present that the matter -- in the hands of the Commission's Legal Service -- was far advanced and about to be concluded. I expressed some surprise, mentioning that I had become aware of this project -- which seems to have a long history -- only very recently. It seems that by now OHIM knows or knew about the proposal, but certainly during my time at OHIM (which ended in October 2005) I was not aware of the project. ECTA representatives at the recent Geneva meeting were as much unaware of the project as INTA representatives and those of other NGOs.

We may have different views of the benefits of such nettoyage, the author not being among the friends of such an exercise. There may also be a distinction between Directives, which must be implemented in national law, and Regulations, and a "re-codification" may be useful or even necessary when the underlying act has been changed many times.

But the Community Trade Mark Regulation is different. It is directly applicable in all Member States, and the changes have been very few. We have lived with Articles 6bis, 6ter, 6quater, 6quinquies, 6sexies, and 6septies (and others) of the Paris Convention, and Articles 3ter or 4bis (and others, including Article 9sexies) of the Madrid Agreement, without any damage to the legibility or utility of the Convention. We could easily live with the "a" Articles in the CTMR for many years to come, the more so now that the Commission has promised to undertake a general review of the European trade mark system, which may lead to new legislative proposals in due time.

The bureaucratic "obstacles" that a Regulation presents with a few "a" Articles may be easily removed by simply re-numbering the legislative act. This neglects however the impressive bureaucratic and administrative consequences of this "cleaning" exercise, when we consider the need to review and revise guidelines, practice notes, standard forms, standard texts at all levels: OHIM, national offices, courts, lawyers and trade mark attorneys in all 27 Member States and abroad. And this is not to mention the task of reprinting the otherwise unchanged text, the many mistakes that will exist or be made until new editions of books, commentaries etc. have issued. "Cui bono?"

What is disturbing also is the manner of going forward with this program. It seems that the NGOs were not informed, and even less consulted, about this legislative activity. I am also not aware of any "impact analysis" that should be carried out by the Commission before undertaking such an activity.

The project should be scuttled. The work may be advanced in Brussels, but there still is time to put some sticks into the spokes of the Brussels wheels and stop the train. The Community Trade Mark Regulation can be changed only by unanimous vote, and the users of the system should be in a position to influence their governments so that the adoption of the envisaged changes may still be blocked".

Although the IPKat is an extremely tidy and well-ordered Kat, he has never been an advocate of change -- even if it means tidying up -- for its own sake. He is entirely in sympathy with the plea to leave things exactly as they are, at least until such time as the legislation in question is so heavily revised and amended that it is better to start the numbering afresh. Merpel agrees: it's a real hassle having to persuade students that you've given them the right number when they've got out-of-date text books ...