All along the trademark tower

ECTA has ramped up its efforts to ensure that IP rights are heard in Brexit negotiations. But this isn’t all the trademark association has been up to in the past year, as Ruta Olmane explains

How are trademark attorneys in Europe reacting to Brexit uncertainty?

Trademark attorneys are a highly-educated group of people who clearly understand that there will be marked changes as a result of Brexit.

But this decision is a result of democracy and nothing has indicated to me that trademark attorneys would not be prepared to respect and follow the basic principles of the EU, ie, that everything done in the EU is founded on treaties, voluntarily and democratically agreed by its member states.

Trademark attorneys expect changes in two main areas: the scope of protection of EU-wide rights in the UK after the exit of the UK, and rights of representation UK trademark attorneys in the EU.

The European Communities Trade Mark Association (ECTA), alongside many other associations, closely follows these processes, although currently we are mostly focused on the analysis of the possible proposals for the best models for transition EU-wide rights.

We trust that the importance of the IP rights will be duly recognised by negotiators on both sides and will not be lost during the transitional period.

It is of utmost importance that the negotiations that would take place between the UK government and the other EU member states, end up with a satisfactory solution to preserve in the UK the existing IP rights granted at EU level.

Currently, I am very proud to see that the European Commission has recognised ECTA’s previous contributions.

The taskforce for the preparation and conduct of the negotiations with the UK under Article 50 invited ECTA to take the lead in coordinating and inviting other stakeholders in the area of trademarks and designs to take part in working group meetings in Brussels, where ECTA and other associations will be able to draw attention of the European Commission to questions and problems in respect of trademarks and designs which should be tackled by negotiations.

ECTA is proud and happy to take active part in this process and aims to find balanced legal solutions and legal certainty in the area of IP rights.

What sorts of results are attorneys looking for in the negotiations? Will European TMs be converted into UK TMs?

ECTA committees have pointed out a number of key issues that are very important and should be touched upon by the negotiations concerning the exit of the UK. ECTA also noted that there are other rights, such as patents, copyright, trade secrets and geographical indications, which deserve attention during the negotiation process.We believe that a cost-effective protection of IP rights is fundamental for sustainable economic growth, jobs creation and for maintaining the welfare state in Europe.

There are several models which are currently analysed and it seems that the Tuvalu and the Montenegro models would be the best options. Also, it would be highly recommended that the World IP Organization should also agree that the same mechanism applies to Madrid marks designating the EU.

However, while we believe that it is helpful to consider such models, we should not be tied to any one such model. What we should seek is legal certainty and minimal costs for proprietors.

Will the UK’s exit in any way weaken the attractiveness of the EU trademark?

I would say that it is far too early to make such conclusions. As we all know, the unified character of EU trademarks allows them to expand automatically when any new member state joins the EU. I consider that EU trademarks are still very attractive for applicants.

This can definitely be confirmed by the recent statistical data of the EU IP Office Statistical Highlights. I have no doubts that EU trademarks will still remain very attractive for many trademark portfolio holders.

With a large part of the European trademark reform package in practice for over a year now, what has the feedback been like from users? What can we expect from the package’s directive, due to be in force by 2019?

The EU trademark system is very efficient, and since its introduction has attracted more and more companies to protect their trademarks through the EU trademark system.

The EU trademark reform package brought some changes, but in general keeps following the established system well. Though there are still several elements of the reform to be unwrapped, such as the implementing and delegated acts to the EU Trademark Regulation, as well as legislative acts transposing the new EU Trademark Directive into national laws.

During the ECTA workshop in Riga in December last year, we heard that national legislators will be quite busy with preparing changes into local law in order to duly transpose the EU Trademark Directive provisions.

Such provisions as the abolition of the requirement of graphic representability for a sign to be registered as a trademark, the expansion and specification of absolute grounds for refusal and invalidity, the redetermination of the moment at which the acquired distinctiveness of the mark must be established, and the specification of relative grounds for refusal and invalidity to cover the extended protection of national and EU trademarks with reputation, among others, were highlighted as the most challenging ones.

It will be also very interesting to see how national legislators will implement the provisions on introduction of administrative procedures for the cancellation and revocation of national trademarks.

What about the Digital Single Market reforms? What has ECTA’s copyright committee been spending most of its time on and why?

The Digital Single Market strategy was adopted on the 6 May 2015 and includes 16 specific initiatives. The European Commission has presented legislative proposals in its attempt to make sure that consumers and creators can make the most of the digital world.
Among the most important initiatives in this context are:

  • The proposal for a Directive on Copyright in the Digital Single Market

  • The proposal for a regulation on ensuring the cross-border portability of online content services in the internal market

  • The proposal for a regulation laying down rules on the exercise of copyright and related rights applicable to certain online transmissions of broadcasting organisations and retransmissions of TV and radio programmes

  • The proposal to implement the Marrakesh Treaty in EU law

ECTA’s copyright committee closely follows all these initiatives and has prepared position papers on the proposal for a Portability Regulation and the review of the Satellite and Cable Directive.

Both position papers were submitted to the European Commission earlier this year. ECTA’s Copyright Committee is actively working on various other tasks, such as a project on adapting the EU copyright exceptions, a project on strengthening the enforcement system, and a project on overlaps between copyright and other IP rights.

At the beginning the March this year, ECTA’s management and the chair of the ECTA copyright committee, Christian Freudenberg, met with the representatives of the directorate general for communications networks, content and technology, known as DG Connect, and discussed further plans and priorities of the DG Connect and possible and necessary inputs from ECTA. The copyright committee has very ambitious plans for this year. IPPro
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