COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT pursuant to Article 294(6) of the Treaty on the Functioning of the European Union concerning the position of the Council on the adoption of a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, amending Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)
Date: 2015-11-24
Institutions: Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs, European Commission
Subjects: EU trade mark, European Union Intellectual Property Office, brand name, designs and models, registered trade mark, trade-mark law

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   EUROPEAN COMMISSION  Brussels, 24.11.2015  COM(2015) 589 final 2013/0088 (COD)   COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT  pursuant to Article 294(6) of the Treaty on the Functioning of the European Union  concerning the position of the Council on the adoption of a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, amending Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (Text with EEA relevance)  
 
 
2013/0088 (COD) 

COMMUNICATION FROM THE COMMISSION 
TO THE EUROPEAN PARLIAMENT 

pursuant to Article 294(6) of the Treaty on the Functioning of the European Union 

concerning the 

position of the Council on the adoption of a Regulation of the European Parliament and 
of the Council amending Council Regulation (EC) No 207/2009 of 26 February 2009 on 
the Community trade mark, amending Commission Regulation (EC) No 2868/95 
implementing Council Regulation (EC) No 40/94 on the Community trade mark, and 
repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for 
Harmonization in the Internal Market (Trade Marks and Designs) 

(Text with EEA relevance) 

1. 

BACKGROUND 

Date of transmission of the proposal to the European Parliament and 
to the Council 
(document COM(2013) 0161 final – 2013/0088 COD): 

27 March 2013 

Date  of  the  opinion  of  the  European  Economic  and  Social 
Committee: 

11 July 2013 

Date of the opinion of the European Data Protection Supervisor 

4 February 2014 

Date of the position of the European Parliament, first reading: 

25 February 2014 

Date of adoption of the position of the Council: 

10 November 2015 

2. 

OBJECTIVE OF THE PROPOSAL FROM THE COMMISSION 

Considered together as  a package, the  main common objective of the Commission  proposal 
for a Regulation of the European Parliament and of the Council amending Council Regulation 
(EC) No 207/2009 on the Community trade mark, amending Commission Regulation (EC) No 
2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and 
repealing  Commission  Regulation  (EC)  No  2869/95  on  the  fees  payable  to  the  Office  for 
Harmonization in the Internal Market (Trade Marks and Designs) (COM(2013) 0161 final  – 
2013/0088  (COD))  (Proposal  for  a  Regulation)    and  of  the  parallel  proposal  to  recast  the 
Directive is to  foster  innovation and growth  by making trade mark systems in  Europe  more 
accessible,  efficient  and  effective  for  businesses  in  terms  of  lower  costs  and  complexity, 
increased speed, greater legal certainty and better protection against counterfeiting 

Specifically, the Proposal for a Regulation aims at: 

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streamlining procedures to apply and register an EU trade mark;  

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– 

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3.1 

modernising and improving the current provisions, by amending outdated provisions, 
increasing legal certainty by clarifying provisions and removing ambiguities. 

establishing an appropriate framework for cooperation between OHIM and national 
offices  for  the  purpose  of  promoting  convergence  of  practices  and  developing 
common tools; 

updating the governance of OHIM;  

adapting Regulation 207/2009 to the Lisbon Treaty; 

resolving  key  issues  pertaining  to  the  financial  equilibriums  within  the  EU  trade 
mark system. 

COMMENTS ON THE POSITION OF THE COUNCIL 

General comments 

The  position  of  the  Council  reflects  the  provisional  political  agreement  reached  by  the 
Council,  the  JURI  Committee  of  the  European  Parliament  and  the  Commission  in  informal 
tripartite  discussions  on  21  April  2015.  This  political  agreement  was  confirmed  by  the 
Council on 13 July 2015. The adoption of the Council's first reading position and the plenary 
vote in Parliament mid of December 2015 should lead to the final adoption of the text in early 
second  reading.  Despite  concerns  related  to  certain  budgetary  aspects  of  the  compromise, 
which  are  addressed  in  an  annexed  statement,  the  Commission  supports  the  compromise 
reached, which improves the existing situation in particular in terms of trade mark law.  

3.2 

Comments on the amendments adopted by the European Parliament 

3.2.1.  European  Parliament  amendments  included  in  full,  in  part  or  in  principle  in 

Council's position at first reading 

The  Council's  position  in  first  reading  encompasses  a  significant  number  of  amendments 
introduced  by  the  European  Parliament,  including  those  required  by  parallel  changes  in 
Directive 2008/95. 

In relation to trade mark law, The Council accepted to complement the transitional period in 
the Proposal for a Regulation which adjusts the specifications of EU trade marks filed before 
the  change  in  classification  practice  in  the  light  of  the  case  law  of  the  Court  of  Justice  by 
providing safeguards to third parties that had filed trade mark applications in the meantime. 
The Commission can support this approach. 

The Council also endorsed the Parliament's proposal to set the amount of fees payable to the 
OHIM which is currently addressed in Commission Regulation (EC) No 2869/95 directly in 
Regulation 207/2009 itself in the form of an Annex. This is acceptable for the Commission. 

Concerning the role and functioning of OHIM, the Parliament's amendments broadly agreed 
by  the  Council  include  the  change  of  name  of  the  agency  to  "European  Union  Intellectual 
Property  Office".  While  the  Commission  can  accept  this  in  the  spirit  of  compromise,  it  is 
regrettable  that  the  new  name  does  not  represent  the  actual  core  activity  and  does  not 
adequately reflect the fact that the "Office" is an "agency" of the EU. On the other hand, the 
Commission can endorse the idea supported by the co-legislators to set up a mediation centre 
within  the  agency,  but  similarly  to  the  Council,  prefers  that  its  tasks  do  not  extend  to 
arbitration activities. 

As regards the new cooperation framework between national intellectual property offices and 
the EU agency, the Council accepted to make this cooperation mandatory, however, by giving 
national  offices  the  possibility  to  opt-out  in  certain  circumstances.  The  Council  also 

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subscribed to the Parliament's request to ensure a close consultation of trade mark users on the 
projects developed in this context. In addition, the Council agreed to increase the maximum 
amount of budget allocated to this activity to 15% of the annual revenues of the agency, while 
the EP had supported an increase to 20%. The Commission fully endorses those adaptations. 

With respect to the governance of the agency, while the Commission regrets that the Council 
followed  the  European  Parliament's  view  and  deleted  the  provisions  in  the  Proposal  for  a 
Regulation allowing for the setting up of an Executive Board, it supports the new composition 
of the Management Board including a representative of the European Parliament. 

3.2.2.  European Parliament amendments not included in Council position at first reading 

The  co-legislators  failed  to  agree  on  a  new  procedure  to  select  and  appoint  the  Director  of 
OHIM, in line with existing practices in the vast majority of other EU agencies, and therefore 
deleted  the  provision  in  the  Proposal  for  a  Regulation.  The  Commission  deplores  this 
outcome,  which  should  not  be  considered  as  a  precedent  for  future  reforms  of  other  EU 
agencies.  

On  the  other  hand,  the  Commission  welcomes  the  fact  that  the  Council  did  neither  take  on 
board  the  European  Parliament's  proposal  to  maintain  the  current  provision  in  Regulation 
207/2009 allowing the Director of the agency to make proposals to amend the Regulation, nor 
to formally attribute the nomination powers to the Director instead of the Management Board.  

With  respect  to  trade  mark  law,  and  in  line  with  the  approach  taken  on  the  proposal  for  a 
recast  of  Directive  2008/95,  the  Commission  supports  the  Council's  opposition  to  further 
complementing  limitations  of  the  effects  of  a  trade  mark  as  favoured  by  the  European 
Parliament. It can however accept the final compromise of adding clarifying language in the 
relevant recital to address in particular the issue of fundamental rights and freedoms including 
artistic expression.  

As  in  the  case  of  the  proposal  for  a  recast  of  Directive  2008/95,  the  Commission  further 
supports the Council's deletion of the relevant provision on the import of small consignments 
in the light of the case law of the Court of Justice.  

3.3 

New provisions introduced by the Council and the Commission's position 

In  line  with  the  approach  followed  on  the  proposal  for  a  recast  of  Directive  2008/95,  the 
Council  agreed  on  a  compromise  solution  with  respect  to  the  provision  on  goods  in  transit, 
whereby  the  right  to  prevent  goods  being  brought  into  the  EU  territory  shall  lapse  if  the 
declarant/holder of the goods is able to show before the competent court that the trade mark 
proprietor is not entitled to prohibit the placing of the goods on the market of the country of 
final  destination.  While  preserving  the  core  objective  of  the  Commission's  proposal  to 
establish  efficient  and  effective  means  to  combat  the  ever-growing  streams  of  counterfeit 
goods passing through the Union, this amendment strikes an appropriate balance between the 
need  to  ensure  an  effective  enforcement  of  trade  mark  rights  and  the  political  necessity  to 
provide safeguards in order not to unduly hamper the free flow of goods in the rare situations 
where trade mark rights belong to different parties outside the EU. The solution proposed by 
the Council can therefore be endorsed by the Commission. 

The  Council  adopted  new  amounts  of  fees  payable  to  the  OHIM  (to  be  set  in  an  Annex  to 
Regulation  207/2009)  with  the  aim  of  bringing  renewal  fees  down  to  the  same  level  of 
application  fees.  The  Commission  very  much  supports  that  approach,  which  would  lead  to 
savings of up to 37%, in particular for renewal fees of businesses that seek protection of their 
EU trade mark beyond an initial period of 10 years.  

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The  Council  added  a  new  legal  basis  to  offset  Member  States  for  costs  incurred  by  their 
national  offices  as  a  functional  part  of  the  EU  trade  mark  system.  The  Commission  had 
originally  only  proposed  a  funding  mechanism  enabling  OHIM  to  finance  common 
cooperation  projects  by  means  of  grants  but  can  accept  this  amendment  as  part  of  the  final 
compromise between the co-legislators.  

The Council re-introduced a provision, originally proposed by the Commission and deleted by 
the European Parliament, which permits to transfer a budgetary surplus of the OHIM to the 
EU budget.  While the Commission  fully  endorses the principle of such  a transfer,  it regrets 
that  the  conditions  established  by  the  Council  are  likely  to  heavily  limit  the  scope  of 
application of this new provision in practice. 

Finally,  the  Council  introduced  provisions  on  the  use  of  implementing  acts  and  on  the 
respective  committee  procedures  for  their  adoption.  In  that  context  it  was  necessary  to 
incorporate a large number of technical rules currently contained in Commission Regulation 
(EC)  No  2868/95,  Commission  Regulation  (EC)  No  2869/95,  and  Commission  Regulation 
(EC) No 216/96 in the text of the Regulation. The Commission regrets that from a practical 
point of view as this will require the use of the ordinary legislative procedure even for small 
technical changes.  

4. 

CONCLUSION 

Despite concerns related to certain budgetary aspects of the compromise, which are addressed 
in  the  annexed  statement,  the  Commission  can  support  the  compromise  reached,  especially 
those  changes  which  strengthen  the  position  of  trade  mark  holders  and  have  the  effect  of 
providing greater legal certainty in the application of the law on trade marks.  

5. 

STATEMENT BY THE COMMISSION 

The Commission takes note of the agreement reached between the European Parliament and 
the Council on the reform of the EU trade  mark system. In view of  the added  value of this 
reform for the users of the EU trade mark system, the Commission has decided to support it, 
as in balance, the overall agreement significantly improves the existing situation in particular 
in  terms  of  trade  mark  law.  This  is  despite  its  concerns  on  certain  budgetary  aspects  of  the 
agreement. 

The Commission regrets in particular that the co-legislators have been unable to agree on one 
of the key elements of its proposal concerning the budget of the OHIM: the automatic review 
of the level of the fees in case of significant recurrent  surplus  and  the automatic transfer of 
such surplus to the EU budget. Indeed, while the level of the fees will be fixed in the EU trade 
mark regulation, the transfer of "substantive" surplus will remain submitted to the discretion 
of  the  Budget  Committee  of  the  OHIM  (vote  at  2/3  majority).  The  Commission  recalls  that 
such transfer would have taken place only after all types of use of the resources available as 
provided  by  the  basic  act  have  been  satisfied,  including  the  offsetting  of  central  industrial 
property offices and other concerned authorities of Member States for the costs that they incur 
in ensuring the smooth functioning of the European Union Trade Mark System.  

The Commission will continue to review the level of the fees charged by the OHIM in view of 
proposing  to  adjust  them  as  closely  as  possible  to  the  costs  of  the  services  provided  to  the 
industry and of preventing the accumulation of significant surpluses within the OHIM, in line 
with  the  rules  applicable  to  all  agencies  which  have  been  agreed  with  the  European 
Parliament and the Council. 

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The  Commission  stresses  that  fully  self-financed  agencies,  such  as  the  OHIM,  as  well  as 
Institutions  and  bodies  with  budgetary  autonomy  financed  outside  the  EU  budget,  should 
support the full cost of their staff, including the costs for the schooling of the children of their 
staff  in  the  European  schools.  In  line  with  the  principle  of  administrative  autonomy,  the 
Commission will pursue all appropriate means to ensure that these agencies, Institutions and 
bodies effectively bear such costs or that they refund the EU budget of these costs. 

The Commission stresses that, as regards the procedure of pre-selection and appointment of 
the Executive Director, any upcoming reform of OHIM should fully align with the principles 
of the Common Approach. 

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