The EU Trademark Reform Package—(Too) Bold a Step Ahead or Back to Status Quo?

BACKGROUND I. OVERVIEW: STRUCTURE AND CONTENT OF EU TRADEMARK LAW II. SELECTED ISSUES FROM THE TRADEMARK REFORM PACKAGE A. Changes concerning procedural law B. Substantive Law 1. Protection requirements a. Graphical Representation b. Absolute Grounds for Refusal-Scope of Examination c. Bad Faith as a Relative Ground for Refusal--Discrimination of Trademark Proprietors in Other Member States? 2. Scope of Protection a. "Double Identity" b. Limitations and exceptions c. Goods in Transit CONCLUDING REMARKS BACKGROUND The European trademark system consists of two components: the Trademark Directive (TMD) (1) and the Community Trademark Regulation (CTMR). (2) The CTMR has established a unitary right extending throughout the Eu, based on registration filed at a central office, the office for Harmonization in the Internal Market (OHIM). The TMD has compelled Member States to harmonize the core rules on substantive requirements and scope of protection in the national systems. The national trademark systems and the Community system are meant to co-exist, without a hierarchical structure giving precedence to one or the other. Having been in existence for about twenty years, (3) the European trademark system is currently due for its first major overhaul. The exercise is triggered not least by the unpredicted success of the CTM: the revenues from registration and renewal fees were much higher than what had been anticipated. As the OHIM is supposed to be self-supporting (4)--without any gains having been envisaged--it became necessary to change the system in order to deal with the surplus. An agreement was therefore reached by the governing bodies of OHIM (5) and was confirmed by the European Council (6) in 2010 (7): that some portion of the annual income should in future be redistributed to the Member States. (8) As the implementation of that scheme requires an amendment of the CTMR, it was further decided that an overall evaluation of the functioning of the European trademark system should be carried out, so as to identify potential problems and lacunae which could be tackled in the same legislative context. As an element in that evaluation, the Max Planck Institute for Intellectual Property and Competition Law in Munich (9) was commissioned to investigate the need for reform. The Study was delivered and published in early 2011 (MPI Study). (10) This was followed by a prolonged phase of internal deliberation by the Commission, which resulted in the March 2013 publication of Commission proposals for amendment of the CTMR (CP-CTMR) (11) and a recast of the TMD (CP-TMD). (12) Although the proposals are of an evolutionary rather than a revolutionary character, the sum of the proposed changes adds up to a major legislative reform. This concerns not least the TMD where the proposals--if adopted--would significantly enhance the current level of harmonization, thereby tightening the accord between the national regimes and the Community system. Both proposals are currently under review by the European Parliament and the Council. In February 2014, the Parliament, in its first reading, (13) suggested several amendments. (14) Similar points were also raised in a compromise text submitted by the Council in May (15) and in a Common Council Position adopted by the Committee of Permanent Representatives (COREPER) on July 23, 2014. (16) Unsurprisingly, the Commission proposals were most vividly criticized where Member States' freedom to organize the national systems according to their own needs and prerogatives is felt to be in jeopardy. As a background to this presentation of the European trademark reform package and the reactions it has evoked so far, Part II briefly presents the structure and main features of European trademark law. Part III reports on selected issues, in particular those that have proved to be controversial. …