European IP Helpdesk

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Bulletin No. 3 Trademark

In the European Union, national and EU trademark laws have long coexisted. While several past changes in EU law have brought about a first harmonisation of trademark law in Europe, a new Directive has aimed to further intensify harmonisation and update existing trademark laws amongst EU Member States. The revised EU Trade Mark Directive 2015/2436 was required to be implemented into national law by 14 January 2019.

In the following interview, the immediate past President of the European Communities Trade Mark Association (ECTA), Sozos-Christos Theodoulou, assesses the benefits of the Directive for SMEs and expounds his opinion on the status quo of trademark law in the European Union.

A little recap: key changes resulting from the Trademark Directive

From your point of view, what major changes has the Trademark Directive brought about?

This question may be better answered from a national perspective. Indeed, each Member State had different legislations and practices before, so the changes are also different. Nevertheless, I believe it may be securely stated that one of the most important changes all over the EU has been the abolition of the graphical representation requirement. This opened the door to many novel types of trademarks, such as marks

comprising sounds, smells, moving images, holograms and multimedia. Further, the fight against counterfeiting has been reinforced, through strengthening the provisions relating to stopping counterfeit goods in transit. Another novelty in many Member States is the introduction of certification marks. There are many other changes, but these three stand out, in my opinion.

How do brand owners benefit, especially SMEs?

If we focus on the above main changes alone, it is obvious that brand owners are now able to protect not only their traditional trademarks that existed before (word marks, device marks, combinations of the two, colour marks, etc.), but also other important marks in line with the progress of technology and new market requirements. Innovation is encouraged in this way and SMEs may benefit from relatively low costs. As for the seizure of counterfeit goods in transit, this will clearly enable brand owners to prevent illegal commerce that passes through EU territory, a fact that will by extension also provide safety and protection to the end consumers in third countries. Lastly, certification marks will allow for better quality products to circulate in the marketplace and increase the revenue of the relevant SMEs.

Do you still see shortcomings, things that could have been addressed differently? And, if so, why?

Each piece of legislation presents advantages and disadvantages. If one examines the articles of the

Directive one by one, it is likely that quite a few things could be improved. However, people must not forget that legal texts are the result of multiple reviews, discussions and negotiations of politicians, especially between Member States, so personally, I believe that we should be happy with what has been achieved by the new Directive. After all, the big bet is on the way Member States will apply the new Directive at a national level. And not to forget the EU is regularly reviewing its texts anyway, so any eventual shortcomings could be spotted in a timely manner and remedied in the near future.

Where are we today?

The deadline for EU member states to implement the Directive was 14 January 2019. However, many member states were not able to meet this deadline why?

Although nowadays we are almost done, you are perfectly right in bringing this up, as many Member States had indeed not implemented the Directive by the prescribed deadline, but also for quite some time after that. Well, the main reason behind this fact is that, as already stated above, each country used to have different legislations and, consequently, different needs, as to what had to be changed, abolished or introduced in its own legislation. Further, the legislative review processes differ among Member States, so it can take longer for some than for others.

What is the actual state of play today?

It is not easy to follow the state of play in each Member State and even the EU Commission is trying hard to stay in the loop. Because of my geographical area of expertise, I personally know that Greece was among the last to pass a national implementing law last March and that Cyprus was the penultimate Member State to do so, only last June! Romania has been the last to recently enact its national implementing legislation.

What is your view on the transposition process? What do you think were the major challenges the individual states were/have been facing in implementing the Directive into national law?

At the end of the day, this is the most important question one has to ask! In our experience, many EU legislative texts are continuously transposed into national legislation, at a fast pace and without the necessary local consultation. Obviously, the right way to go would be for each Member State to set up specialised committees, consisting of authorities’ representatives and legal professionals, who should review the proposed texts in detail and make specific comments. These should then be debated and taken into serious consideration by the respective national Parliaments, before a final vote on adopting the law is taken. According to information from reliable channels, it would seem that a few Member States (luckily, a minority) were in a hurry to vote on their new national laws, so as to simply not face fines from the EU! In my opinion, even after the formal transposition has taken place, all Member States should review the texts, under the EU Commission’s supervision.

To sum up, the implementation of the new EU Trademark Directive must be seen as an opportunity to modernise the relevant national legislation, according to the needs of the new era and with a clear view to the future, as Intellectual Property is a field that must constantly keep up with technological progress.

EU Trademark Directive: Modernising National Legislations with a Clear View to the Future

Partner, The Law Offices of Dr Christos A. Theodoulou LLC, Cyprus and ECTA President from 2018–2020, Sozos-Christos Theodoulou (CY)