INTA has been participating in the overall examination of the EU trademark system since the current review process began in May 2007, when EU Member States stated that there was a need to address the increasing budget surplus of the Office for Harmonization for the Internal Market (OHIM) and to review the overall functioning of the EU trademark system. The “EU system” as such is made up by the EU-wide Community trade mark (CTM) system, currently governed by Regulation 207/2009, and by the national systems of EU Member States, currently harmonized by the Directive 2008/95/EC.
The European Commission – DG Internal Market and Services commissioned a study to evaluate the current functioning of the system and assess improvement and (further) harmonization needs, which was carried out by the Max Planck Institute and published in 2011. In March 2013, the European Commission formally adopted its proposals to review the Regulation and the Directive. The European Parliament and the Council, as co-legislators, are currently reviewing the Commission’s proposals.
Key issues at stake in this review include:
- harmonization of trademark law and practice
- cooperation between OHIM and national trademark offices
- governance and finances of OHIM
- trademark protection (namely how to tackle counterfeit goods in transit).
INTA hopes the review will lead to a more harmonized, modern and efficient trademark system for the benefit of trademark owners and consumers alike. In this respect, the Association has been developing and advocating its policies and positions during all the stages of the process and partnering with other associations and stakeholders as appropriate.
Key events and documents are presented in the chronology below. For more information, contact Hélène Nicora, Policy Officer – Europe, at hnicora@inta.org.
October 2014
On October 20, in the framework of the discussions in trilogue among the European Commission, European Parliament and Council, a joint letter signed by INTA and other associations was sent to representatives from those three EU Institutions.
July 2014
On July 23, the Council adopted its common position on the “trademark package” and mandated the Italian Presidency of the EU to enter negotiations with the European Parliament.
May 2014
The Council published the Presidency Compromise proposals on the Regulation and the Directive. INTA’s comments to these proposals are available upon request to Christina Sleszynska, INTA Europe Representative, at csleszynska@inta.org.
February 2014
The European Parliament adopted its reports on the Community Trade Mark Regulation and Trade Marks Directive during a plenary session on February 25. The new texts included recently-proposed amendments allowing customs to stop counterfeit goods in transit in the EU, which has long been a serious challenge for trademark owners. INTA responded to this positive development by issuing a joint press release with other associations.
February 2014
INTA submitted its comments to the reports adopted by the Legal Affairs Committee in December 2013.
December 2013
On December 17 the Legal Affairs Committee of the European Parliament adopted the reports by Cecilia Wikström MEP on the Directive and the Regulation.
September 2013
INTA submitted its comments to the draft reports by Cecilia Wikström MEP.
July 2013
Cecilia Wikström, Member of the European Parliament (Alliance of Liberals and Democrats for Europe, Sweden) and Rapporteur for the “trademark package”, published her draft reports on the Directive and on the Regulation.
June 2013
INTA has published 
comments on the European Commission’s proposals to revise the Community Trade Mark Regulation and Trade Marks Directive.
March 2013
The European Commission formally adopted its proposals to revise the Community Trade Mark Regulation and Trade Marks Directive. The Commission published the proposed texts and noted that the aim of the legislative package is upgrade, streamline and modernize the current legislation “in order to make the trademark registration systems all over the Union more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security.” The proposals and more information are available on the Commission’s website.
June 2011
INTA submitted written comments to the European Commission after further developing our views on key issues discussed in the MPI report as well as those that have been identified during the course of the overall review.
May 2011
On May 26, INTA participated in a hearing organized by the European Commission to allow stakeholders to share views on ten particular areas in the review, including genuine use, class headings, and simplification measures. Agenda Participants
April 2011
On April 13, representatives of several INTA members and staff met with officials from the European Commission’s Directorate General for the Internal Market (DG MARKT) to discuss the MPI report and offer our views on key issues.
March 2011
The European Commission published MPI’s final report.
December 2010
MPI submitted its final report and recommendations to the European Commission.
November 2010
After approval by the Association’s Board of Directors, INTA’s comprehensive report was sent to the European Commission.
INTA's Policy Development and Advocacy Study on the European Union Trademark Systems
June 2010
INTA participated in the June 8-9 users’ groups hearings, held by MPI in Munich. Key issues discussed include possible further harmonization of EU trademark law, territorial requirements for genuine use of a CTM, the CTM fee structure and class headings.
February – August 2010
INTA’s policy committees formed numerous working groups to address key topics related to the EU trademark systems as part of the Association's internal study. Each group produced a position paper including recommendations on their assigned topics. The papers were then reviewed and voted upon by the responsible policy committee, and were consolidated into a final, single text.
November 2009
MPI asked users’ organizationsfor initial views on the scope of the study and its overall theme, the tender’evaluation questions, and pre-established views/positions on the issues raised.
INTA's Response, submitted January 2010
October 2009
The Max Planck Institute for Intellectual Property, Competition and Tax Law (MPI) in Germany was awarded the European Commission’s contract to carry out the study.
MPI's website with information on the study
July 2009
The European Commission's Directorate General for Internal Market and Services (DG MARKT) published its Letter to Tender.The tender outlined the study’s mission to assess the current state of play of the CTM system and the potential for improvement and future development, and to evaluate the relationship between the CTM and national systems including the need for further harmonization.
June 2009
INTA, AIM, BUSINESSEUROPE, ECTA and MARQUES jointly shared expectations for the study in a letter to the European Commission.
INTA created a Steering Group to assist in coordinating its internal study. The group conducted a preliminary analysis of the legal and procedural issues raised and suggested additional issues that the Association should investigate.
May 2009
INTA began preparations to undertake an internal study on the European trademark systems, in order to be able to respond to requests from the European Commission and other institutions.
October 2008
INTA submitted its response to the September OHIM Administrative Board/Budget Committee joint meeting conclusions.
September 2008
OHIM’s Administrative Board and Budget Committee issued conclusions jointly agreeing upon a “package” deal to recommend to the European Commission to ensure a balanced OHIM budget, which included a proposal to reduce CTM fees and an evaluation on the overall functioning of the trademark system in the EU.
May 2007
Out of concern over the growing OHIM budget, the EU Competitiveness Council issued a statement calling upon the European Commission to immediately propose a reduction of the main CTM fees and also to begin work on a comprehensive study on the overall functioning of the CTM system.