Opinion of the European Economic and Social Committee on the "Proposal for a Council Regulation amending Regulation (EC) No 40/94 on the Community trade mark" (COM(2002) 767 final — 2002/0308 (CNS))
Date: 2003-05-14
Institutions: European Economic and Social Committee
Subjects: EU trade mark, European Union Intellectual Property Office, operation of the Institutions, trade-mark law

3.9.2003

EN

Official Journal of the European Union

C 208/7

Moreover, the SMO is well aware that, in the immediate future,
priority will be given to matters linked with, for example, the
accession of the new Member States, revision of the Treaties,
Europe’s increased role on the world stage (Lisbon 2000),
subsidiarity and simplification and food safety.

The SMO has already produced discussion documents on all
these matters and on many others of key importance, to which
the reader is referred for further information.

8. Appendices

The following documents are attached:

— opinions drawn up by the SMO between October 2000

and September 2002;

— details of hearings and conferences organised by the SMO

between October 2000 and September 2002;

— the PRISM report of 1 December 2002.

Brussels, 14 May 2003.

The President

of the European Economic and Social Committee

Roger BRIESCH

Opinion of the European Economic and Social Committee on the ‘Proposal for a Council
Regulation amending Regulation (EC) No 40/94 on the Community trade mark’

(COM(2002) 767 final — 2002/0308 (CNS))

(2003/C 208/02)

On 17 January 2003, the Council decided to consult the European Economic and Social Committee,
under Article 262 of the Treaty establishing the European Community, on the above-mentioned proposal.

The Section for the Single Market, Production and Consumption, which was responsible for preparing
the Committee’s work on the subject, adopted its opinion on 4 April 2003. The rapporteur was
Mrs Sánchez Miguel.

At its 399th plenary session on 14 and 15 May 2003 (meeting of 14 May), the European Economic and
Social Committee unanimously adopted the following opinion.

1.

Introduction

1.1.
As a unitary system of protection in the European
market, the European trade mark represented in legal terms a
just
major improvement over national trade marks, not
because it simplified the acquisition of exclusive rights over
distinctive marks for products and services, but also because it
brought benefits for the market and for consumers and users.

and users to trust certain brands, though not always to the
same extent. We nevertheless believe that this dual objective
of establishing an exclusive right of the trade mark proprietor
and identifying products and services is effectively achieved
with the Community trade mark.

1.2.
The Community trade mark has had a significant
impact on completion of the European single market. Making
Community products and services readily identifiable has
promoted the free circulation of goods. Compliance with
European safety regulations has made it easier for consumers

1.3.
The Commission and the Office for Harmonisation in
the Internal Market (OHIM) have together monitored the
development and impact of the Community trade mark so
that improvements can be made and the best possible results
achieved.
it has frequently consulted the
Member States and organisations concerned.

In this context

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The result is the present amendment to Regulation
1.4.
(EC) No 40/94 (1), which is intended (i)
to improve the
functioning of the OHIM and (ii) to adapt the system to cope
with the possible consequences of accession of new members
with different legal systems.

— division of the application and the registration by introdu-
cing two new articles that simplify and facilitate the
division of the Community trade mark so that it can be
used as a distinctive mark for more than one product or
service.

2. Substance of the proposal

the effectiveness of

The proposed amendment basically concerns pro-
2.1.
cedures. The purpose is to rectify those shortcomings that
limit
the instruments introduced by
Regulation (EC) No 40/94, and to improve the formalities for
applicants for the Community trade mark. However, there are
other changes that affect the recognition and protection of the
distinctive mark. Hence it is necessary to bear in mind the
possible overall impact of the proposal.

2.2.2.
Changes designed to improve the functioning of the
Boards of Appeal, and above all to cut the length of appeals.
These include:

— appointment of Board of Appeal members by the OHIM

Administrative Board;

— possibility for the position of chairman of the appeals
department to be taken by a chairman of the Boards of
Appeal;

The proposed procedural changes can be classified

2.2.
under three headings:

— possibility in certain cases for appeals to be decided by a

single member;

Those that concern registration of the Community
2.2.1.
trade mark, which deal mainly with issues relating to the
process by which a distinctive mark is authorised as a
Community trade mark; the most important are:

— absolute grounds for refusal;

— relative grounds for refusal;

— presentation of the application;

— revision of decisions in ex parte or inter partes cases;

— revocation of decisions;

— apportionment of costs;

— continuation of proceedings;

— request for conversion;

— counterclaims.

— taking decisions in an enlarged Board.

2.2.3.
Abolishing of certain fees that do not provide the
Office with real revenue, but make the procedure more
cumbersome.

The other

2.3.
important issues:

amendments proposed concern two

Extending proprietorship of the Community trade
2.3.1.
mark by abolishing the requirement
third country
nationals who are not members of the Paris Convention or the
WTO may only be proprietors if their country of origin has a
reciprocal arrangement with the Member States.

that

2.3.2.
The searching system, which is to be abolished
because it does not add any real value to the Community trade
mark system.

2.2.1.1.
changes have implications beyond the registration process:

It should be noted that two of the procedural

3. General comments

— effects on the proceedings for insolvency of a Community
trade mark proprietor, which are adapted in line with
Regulation (EC) No 1346/2000 (2);

( 1) OJ L 349, 31.12.1994.
( 2) OJ L 160, 30.6.2000.

3.1.
The Committee welcomes the content of the amend-
ments proposed to Regulation (EC) No 40/94. Their objective
is not just to adapt the administrative procedure for registering
the Community trade mark to the new requirements of
enlargement. It therefore considers it necessary to state its
views on the other issues that are part of the package of
amendments presented.

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3.2.

Proprietors of the trade mark

3.2.1. M o r e f l e x i b i l i t y

The Commission proposes to increase flexibility by abolishing
the principle of reciprocity for proprietors of trade marks from
third countries who wish to have access to the Community
trade mark. Generally speaking the proposal benefits trade
mark proprietors and their representatives by giving them the
possibility to claim priority for an earlier Community trade
mark, revocation of decisions based on material errors,
continuation of proceedings in certain situations or clarifi-
cation of costs.

3.2.2.

P o t e n t i a l p r o b l e m s

implemented. It is therefore difficult for the EESC to take a
position on the above-mentioned proposal because infor-
mation is lacking on the criteria that will have to be met for
recognition as a representative.

3.4.3.
At all events the EESC believes that the Commission
should assess the different options currently existing in some
Member States, e.g. passing an examination, administrative
authorisation based on special qualifications, or entry on a list
It should be borne in
provided by the Member States.
mind that at present conditions are not uniform, and the
Commission must therefore take a position on the matter.

One possibility, apart

3.4.3.1.
from the Implementing
Regulation, would be to adopt codes of conduct, as proposed
by the Commission, which would enable representatives to
comply on a voluntary basis, without entailing any increase in
costs or administrative work, and would make it easier for the
system to operate uniformly in all the Member States.

This flexibility is not reflected in the freedom of choice of
proprietors of distinctive marks. A problem may arise when
the proprietor of a geographical indication or designation of
origin applies to register this as a Community mark. Because
this is one of the grounds for absolute refusal set out in
Article 7, such proprietors are prevented, often for national
reasons, from being allowed to use the mark although it
genuinely differentiates their products and services.

3.5.
From the EESC’s point of view, the issue most relevant
to the proposed reform is the abolition of the search system.
The reason given in clause (4) of the preamble to the proposal
is that ‘it does not add any real value to the Community
system, but rather results in exorbitant costs, slows down the
procedure and causes other problems’.

3.3.
One aspect which has given rise to different interpret-
ations and decisions by the courts is the expression ‘of more
than mere local significance’ in Article 8(4) of the Regulation.
It is therefore suggested that the new legal text define exactly
what is meant by ‘local’ in this context.

3.5.1.
The differences between national practice, together
with the fact that some countries (Germany, France and Italy)
currently do not participate in the search system, could be one
reason for abolishing it. The OHIM’s links with national offices
are limited, and the outcome is not always satisfactory given
that the content of searches is not uniform.

3.4.

Legal representatives

3.5.2.
Furthermore, the cost of the search report would
double, from EUR 270 to EUR 592 per request after enlarge-
ment, according go the OHIM’s calculations.

3.4.1.
The Commission report looked at how the represen-
tation system works, highlighting the obstacles that currently
exist to the free movement of services. To satisfy this right it is
necessary to facilitate access throughout the internal market
for people representing clients before the OHIM. The proposal
would make it possible for professional representatives not to
have to maintain their place of work in the Member State in
which they are entitled to represent the interests related to
trade marks, but to obtain in one Member State the power to
act in all of them.

Although the changes introduced with respect to
3.4.2.
representation are simplifications, the final
terms will be
determined by the Commission when the Regulation is

3.5.3.
Notwithstanding the above comments, the EESC
thinks that the Commission should consider two important
questions:

1)

2)

the potential effects of abolishing the search system on
SMEs, which can only defend their trade marks through
the opposition procedure;

the impact on consumers, in so far as the situation may
arise where a Community trade mark co-exists alongside
national trade marks.

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3.5.4.
The EESC feels that a less radical solution than
abolishing the search system should have been found. For
instance, the possibility might have been considered of volun-
tary implementation based on a request from the applicant,
who would bear the cost, especially since the EESC believes
that SMEs are discriminated against compared with large
businesses which can afford private searches.

would grant the EU equal rights to other signatory states.
The Council is currently blocking EU accession, which was
proposed in 1996. As a result, the Community trade mark
does not have international protection vis-à-vis our competi-
tors, which diminishes its status on the international market.
Furthermore, if the Community does sign the protocol, the
Regulation would have to be amended again.

3.6.
Another point which gives rise to unnecessary conflict-
ing interpretation and is obviously pointless, is the expression
‘and if rectifying the error is more in the public interest than
not doing so’ in Article 77a of the Regulation; it is therefore
suggested that this be deleted.

3.7.
Articles 127(2), 129(2) and 130(2) of the Regulation
should, wherever ‘a single member’ is mentioned, stipulate that
this person ‘must be legally qualified’. Indeed — given that the
Regulation already expresses the appropriate concern for ‘at
least one member [to be] legally qualified’, in the event of
decisions being made by a group — it does not make sense, in
the event of decisions being made ‘by a single member’, for
this member not to be legally qualified, especially on a Board
of Appeal (Article 130(2)).

An issue not covered by the amendments to the
3.8.
Regulation on the Community trade mark is how it relates to
international treaties, especially the Madrid Protocol, which

3.9.
Finally, the Committee would point out that there are
two main challenges facing the Community trade mark. First,
enlargement of the internal market to 25 Member States,
which means that more resources — both human and material
— are needed for the OHIM. And second, the use of new
technologies for all Community registers; although this would
facilitate access to information contained in the registers, it is
important to bear in mind that protection systems must be
employed to maintain the legal security of the register contents.

4.
In conclusion, the Committee reiterates that the flexibility
the proposed amendments are intended to achieve should not
result in a decrease in the legal certainty that the Community
trade mark guarantees, particularly for SMEs. For this reason
the EESC considers that the deletion of Article 39 should not
be defended solely on economic grounds. Moreover, the
Community trade mark has an added value in so far as it
certifies that a production system abides by Community rules
and standards, which guarantee the quality of products and
services for European consumers.

Brussels, 14 May 2003.

The President

of the European Economic and Social Committee

Roger BRIESCH