Regulation (EU) 2015/2424 amending Council Regulation (EC) No 207/2009 and Commission Regulation (EC) No 2868/95 and repealing Commission Regulation (EC) No 2869/95

Summary:

Regulation (EU) 2015/2424 - adopted by the European Union on 16 December 2015 - which amends Council Regulation (EC) No 207/2009 relating to the Community trade mark.

Further information:

The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC (codified as Directive 2008/95/EC). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 on the Community trade mark (codified as Regulation (EC) No 207/2009) established a stand-alone system for the registration of unitary rights having equal effect throughout the European Union (EU). In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks.

The Communication on Europe 2020 - published by the European Commission in 2010 under the 'Innovation Union' initiative - envisages the modernisation of the framework of trade marks in order to improve framework conditions for business to inovate. In its 2011 IPR Strategy for Europe, the Commission announced a review of the trade mark system in the EU with a view to modernising the system, both at EU and national level, by making it more effective, efficient and consistent overall.

The proposal - adopted by the Commission on 27 March 2013 - aimed at modernising existing provisions, with the following objectives:

• Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies;
• Streamlining procedures to apply for and register a European trade mark;
• Increasing legal certainty by clarifying provisions and removing ambiguities;
• Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools;
• Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU).

This proposal was published as part of a legislative package aimed at reforming and modernising the European Union's trade mark system.The main objective of the package was to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the EU and national trade mark systems.

The European Parliament adopted a negotiating position on 25 February 2014, followed by the Council of the European Union on 23 July. An informal agreement between the co-legislators on a compromise text was reached on 21 April 2015. This was formally endorsed by the Council on 10 November, followed by the Parliament on 15 December. This Regulation changes the OHIM's denomination to European Union Intellectual Property Office (EUIPO). The Regulation entered into force on 23 March 2016.

• Primary Source

Commentary and Analysis

EPRS: Briefing, July 2013: Initial Appraisal of the Commission's Impact Assessment http://www.europarl.europa.eu/thinktank/en/document.html?reference=IPOL-JOIN_NT(2013)508971

EPRS: Briefing, December 2015: The EU Trademark reform package http://www.europarl.europa.eu/thinktank/en/document.html?reference=EPRS_BRI(2015)573887

Fieldfisher: Intellectual Property Blog, 10/02/2016: Key changes concerning the calculation of Community Trade Mark renewal fees in view of the entry into force of Regulation (EU) 2015/2424 https://intellectualpropertyblog.fieldfisher.com/2016/key-changes-concerning-the-calculation-of-community-trade-mark-renewal-fees-in-view-of-the-entry-into-force-of-regulation-eu-20152424

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Official

EUR-Lex: COM(2013)161: Proposal for a Regulation amending Council Regulation (EC) No 207/2009 on the Community trade mark http://eur-lex.europa.eu/legal-content/EN/HIS/?uri=COM:2013:161:FIN

EUR-Lex: SWD(2013)95: Impact assessment http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=SWD:2013:095:FIN

EUR-Lex: SWD(2013)96: Executive summary of the impact assessment http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=SWD:2013:096:FIN

European Parliament: Legislative Observatory: Procedure File for Proposal on EU trade mark https://oeil.secure.europarl.europa.eu/oeil/popups/ficheprocedure.do?lang=en&reference=2013/0088(OLP)

EP: Legislative Train: European Trade Mark http://www.europarl.europa.eu/legislative-train/theme-deeper-and-fairer-internal-market-with-a-strengthened-industrial-base-services-including-transport/file-european-trade-mark/05-2019

Council of the European Union: Press Release, 23/07/2014: Trade marks reform: agreement on Council common position http://www.consilium.europa.eu/uedocs/cms_data/docs/pressdata/en/intm/144127.pdf

Council of the European Union: Press Release, 21/04/2015: Trade marks reform: Presidency secures provisional agreement https://www.consilium.europa.eu/en/press/press-releases/2015/04/21/trade-marks-reform-presidency-secures-provisional-agreement/

Council of the European Union: Press Release, 10/06/2015: Trade marks reform: Council confirms agreement with Parliament https://www.consilium.europa.eu/en/press/press-releases/2015/06/10/trade-marks/

Council of the European Union: Press Release, 10/11/2015: Trade marks reform: Council adopts position at first reading https://www.consilium.europa.eu/en/press/press-releases/2015/11/10/trade-marks-reform-council-adopts-position-first-reading/

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