Rapporten voorgestelde harmonisatie EU merkenrecht
Rapport over de voorgestelde Gemeenschapsmerkregeling, 16 januari 2014, A7-0031/2014. - Harmonisatierichtlijn voor merkenrecht, A7-0032/2014 
Wetgeving [***I Ordinary legislative procedure (first reading)]. Gemeenschapsmerkenrecht wordt EU merkenrecht. OHIM wordt 'EU IP Agency'. Governancegerelateerde zaken. Samenwerkingsmogelijkheden openhouden. Taksen en gedelegeerde wetgeving. Handhavingsmaatregelen. Inhoud:
p. 5 Draft EU Parliament Legislative Resolution
p. 90 Explanatory Statement
p. 95 Opinion of Committee on Legal Affairs on the Use of Delegated Acts
p. 138 Opinion of Committee on International Trade
p. 145 Opinion of Committee on The Internal Market and Consumer Protection
Summary 0031/2014: The long-awaited proposal for a review of the trade mark system in Europe was presented by the Commission in late March 2013 after having worked on the proposal over a period of several years. Your rapporteur is committed to working hard in order to adopt these proposals during the current legislature but wants to remind that the limited time available will not make this an easy task. The quality of the legislative process can not be compromised with and the opportunity that this revision presents to modernise the trade mark system in Europe should not be lost in order to arrive at an expedient agreement between the institutions. Nevertheless, your rapporteur has received broad support in the committee for legal affairs for an ambitious time table. The limited time that has been available to draft this report in the light of this time table will imply that this report covers most of the main issues where there is need of amendments on the commission proposal. However, your rapporteur reserves the right to come back at a later stage with additional amendments and proposals on topics that have not been included in this report.
The community trade mark system and OHIM has existed for over 15 years and it is reasonable to do a review of the existing rules to improve a system which has been a great success. During these years OHIM has grown into a well functioning and effective agency with a clear view of its mission to assist the trade mark and design community in Europe. The addition of new tasks such as the Observatory on infringements of intellectual property rights and the databases on orphan works is a proof of the trust placed in the Agency both by the co-legislators and by the commission.
The current review requires, in the view of your rapporteur, that changes to the governance of OHIM be made with a view to guaranteeing the continued independence, user-friendliness and competence that has characterised the Agency so far.
It is important to note that the Agency is neither purely a Member State, Commission nor Parliament agency but an agency of the European Union. As such some changes to the governance, notably through the guidance offered by the Common Approach on Decentralised Agencies, should be made.
The issue of the fees for European trade marks ties in closely with the capacity of the Agency to perform its duties. Here your rapporteur will thus argue that this is an issue so closely related with the core governance of the Agency and the capacity of the Agency to perform its tasks that it must be regulated in the basic act rather than through a delegated act.
On substantive law matters the Commission has proposed a number of changes, most of which your rapporteur agrees with, although there is still room for improvements.
Summary 0032/2014: The directive harmonising certain aspects of trade mark law of the Member States of the
European Union has existed for over 20 years. The present review provides an opportunity to learn from best practices and further strengthen the harmonizing aspects of substantive trade mark law and procedures used by national trade mark offices.
Your rapporteur wants to make clear from the start that this review should have as its foremost guiding principle the preservation and strengthening of the dual-level system of trade mark protection in Europe. The business community in the European Union consists of over 20 million companies with vastly differing needs. The trade mark system should be simple and flexible enough to give the users of the system access to a protection that suits their needs.
Some users want to seek the protection only in one Member State whilst some want to seek unitary protection in the 28 member states of the Union. It should however be noted that there are also many users that depend on using the national system for protection in several different Member States. This could for example be the case for users that are not able to get
an EU trade mark because of prior existing rights in one or several Member States. It could also be the very conscious choice of a company active in a small number of countries or in a border region.
In order to assist these users which are relying on the services of multiple national offices for their protection it is reasonable to harmonize procedures so that the users are not forced to deal with completely different procedural approaches in the different Member States where they wish to seek protection. Although the fees, notably at OHIM, make up an important
component of the choice of strategy for where a trade mark is registered, there are many other factors at play as well.
The focus on implementing best practices for procedures and substantive law should be to make national trade mark systems more attractive for users. For this reason it would also be reasonable to harmonize a number of additional procedural aspects that would improve the situation for users protecting their trade marks in multiple national offices.
Whilst having a generally positive outlook on harmonization it also has to be noted that some of the proposals of the Commission go too far in that they disregard the territorial nature of the protection offered. Other proposals need clarifications to ensure that important features, notably to SMEs, are preserved.
Examination of absolute grounds, Article 4(2)
This is the most obvious case where the proposal from the Commission goes to far and your rapporteur suggests deleting this provision in its entirety. The results of keeping this provision would be that the examination before a national office would be no different from the examination before the Agency. As the right awarded by a national office only concerns the territory of that Member State it would not be appropriate to require examination on absolute grounds with respect to territories which will not be covered by the trade mark anyway.
Ex officio examination of relative grounds
A number of national offices in the European Union still perform ex officio examinations of relative grounds. The Commission has presented a good case underlining the complications that this procedure entails for applicants of the system, due for example to considerable delays. It should however be noted that many offices that have abolished the ex officio examination of relative grounds still provide (ex officio) their applicants with searches and search results with regards to earlier rights as well as notifications to proprietors of earlier rights of applications that may conflict with their rights. Your rapporteur considers it perfectly possible to preserve the option for national offices to provide this examination, and combine it with the well founded proposal by the Commission to not let these examinations block the application procedure for the applicant
Enforcement measures
The Commission has proposed to introduce a provision on imports where only the consignor acts for commercial purposes and where the recipient is for example an individual citizen. Given the need to stop counterfeits the provision is welcome but it should be limited to counterfeit products.
The Commission has further proposed a provision on goods in transit. Although there is a need to stop counterfeit products entering the European internal market the proposal would also hamper legitimate international trade. Your rapporteur would thus suggest a number of changes in order to ensure a more balanced proposal.
Administrative simplification
In the view of your rapporteur there would still be room for additional proposals to strengthen the attractiveness of the national trade mark system by simplifying some procedural rules. Parties to a proceeding before a national office should for instance not be forced to designate an official address within this Member State.
