Whiff of TM reform for EU, as Council views anti-counterfeiting role for OHIM, local offices

The air of Europe is redolent with the heady scent of amendment to European trade mark law, says the IPKat. This is not just a matter of prophecy, but rather the dropping of a heavy hint by the Council of the European Union -- the Council conclusions of 25 May 2010 on the future revision of the Trade Mark system in the European Union (2010/C 140/07) have just been published on the online version of the Official Journal of the European Union on Saturday 29 May.

In this heart-warming document in which it notes various heads of progress, the Council calls on the Commission to present proposals for the revision of those recently-enacted consolidations and re-enactments, Council Regulation 207/2009 on the Community trade mark, and Directive 2008/95/EC approximating the laws of the Member States relating to trade marks. Says this document

"The revision should include in particular:

— the introduction of a specific provision to define the framework for cooperation between the OHIM and the National Offices, making explicit that harmonization of practice and tools is an aim which all trade mark offices in the EU should pursue [Do rules of law regarding genuine use constitute "practice and tools"? If so, it's a pity the document doesn't get a bit more specific] and that efforts in this area should be supported and facilitated by the OHIM with the active involvement of its Administrative Board [a cynic might say that some national offices need more than a uniform approach -- perhaps a straitjacket?],

— the establishment of a clear legal basis for the involvement of the OHIM in enforcement-related activities, including the fight against counterfeiting, in particular through fostering its cooperation with the National Offices, in accordance with their national competences, and the European Observatory on Counterfeiting and Piracy [What will this mean? The establishment of yet more databases? More travel and dinners? Or is there something particular that the Council has in mind? This Kat would like to see OHIM and the National Offices focus on their current role, but with more resources and meaningful practical cooperation for the various enforcement agencies],

— the creation of a legal basis for distributing an amount equivalent to 50% of OHIM's renewal fees to the National Offices in accordance with fair, equitable and relevant distribution criteria [fair and equitable? Now, there's a challenge ...], to be defined in a way which would guarantee, inter alia, a minimum amount for each Member State, as well as the introduction of appropriate mechanisms which have due regard to the financial arrangements applicable to individual National Offices, to ensure that these funds will be available to the National Offices and will be used for purposes closely related to the protection, promotion and/or enforcement of trade marks, including combating counterfeiting,

— amendments and other measures, where appropriate, aimed at supporting the complementary relationship between the Community and national trade mark systems,

— measures to make Directive 2008/95 ... to approximate the laws of the Member States relating to trade marks ... more consistent with Council Regulation ... 207/2009 ... on the Community trade mark ... and thus to further contribute to reducing areas of divergence within the trade mark system in Europe as a whole [Divergence per se isn't the problem, so much as the difficulties faced by businesses in having to make allowances for them. Handled correctly, this suggestion should be warmly welcomed]".

The IPKat wonders whether the Council and its advisers really understand how the trade mark system works nationally and across the European Union as a whole, and what they expect from the diligent administrators and blameless legal scholars who populate the continent's rights-granting organisations.