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January 2019 Editorial: European trade mark law, Quo Nunc Vadis?
Five years ago, I had the pleasure of writing a guest editorial on European trade mark law after UK Prime Minister David Cameron’s speech about the future of Europe and Britain’s place in that future1. He said that the single market in the European Union (EU) was crucial, but that not everything could be harmonized. Cameron advocated a flexible, adaptable and open Union. At that time, it was difficult to imagine that Europe would be in the situation it is now. At the time of writing this editorial, we are sitting on the Brexit rollercoaster and nobody really knows which turn it will take. Currently the debate is held hostage by the discussions on the Irish border: an important border not only in light of recent history, but at the same time the “only” the border between 1% (Republic of Ireland) and 0.4% (Northern Ireland) of all inhabitants of the current EU. It is beyond doubt that the Brexit rock when it was thrown into the EU pond, flooded the debate over the island of Ireland, but it is even more fascinating to see where the ripples ended, e.g. in the trade mark world.
Key Brexit concerns should include a smooth transition, avoiding a situation where current EU trade mark owners would lose their rights in any part of what is now the EU. It would not be in the interest of businesses and consumers if on 29 March 2019 at 11 pm (UK time), or shortly thereafter, trade mark owners lost their rights in e.g. the UK, merely because of Brexit. Counterfeiters and grabbers should not be given the chance to abuse the chaos resulting from Brexit. The same goes for other similar IP rights and e.g. rights to the .eu domain name, which can only be owned by an EU entity. However, such a key concern has been overshadowed by the discussion of legal representation before the Court of Justice and the General Court of the EU and the EUIPO. This is perhaps important to those who make a living out of this, including myself, but it is not what it should be about. Of course, the practitioners in the remaining member states (the EU 27) see business opportunities when native English-speaking UK solicitors are losing their EU privileges. As a result, the latter are en masse joining the Irish bar, leading to stricter rules on admission to the Irish bar. Talk about ripples!
I sincerely hope we can put all this to bed as soon as possible and concentrate on the issues that are really important to EU trade mark law. Five years ago I said that there are two areas in trade marks which the EU and its institutions should be concerned about - what Cameron called “a lack of democratic accountability and consent”: (1) The role of the CJEU in the creation of trade mark law; and (2) the inability of the EU to distinguish in its legislation between counterfeits and other infringements.
Taking a helicopter view, I regret to say that not much has changed in this respect. After the thorough Max Planck Study on the overall functioning of the European Trade Mark System, in my view only little from this study has ended up in the EU trade mark reform, except for a practical solution to deal with goods in transit to repair the undesired situation created in Nokia and Philips2. Many members of the European Parliament may not have fully appreciated the issues at hand, which I understand, but it is a missed opportunity not to reduce the democratic deficit and thus still leaving it up to the CJEU to fully shape the future of EU trade mark law. It forces the CJEU to come up with creative interpretations, which often raise more new questions than the CJEU had to answer. The CJEU’s recent decision in Mitsubishi3, is a clear example to me.
Many in the EU regret seeing the UK as their North Sea neighbour leaving the EU, also because the EU will then miss the constructive criticism from the UK on its functioning.
Willem Leppink; European trade mark law, Quo Vadis?, Journal of Intellectual Property Law & Practice, Volume 8, Issue 5, 1 May 2013, Pages 337–338, https://doi.org/10.1093/jiplp/jpt039
Joined cases C-446/09 and C-495/09, Judgment of 1 December 2011, Philips and Nokia, ECLI:EU:C:20 11:796
Court of Justice of the European Union (CJEU), Judgment in Mitsubishi v Duma, C-129/17, EU: C: 2018: 594, 25 July 2018 and Willem Leppink, Arnoud Martens, Martijn Poulus; How not using a trade mark becomes use of a trade mark, Journal of Intellectual Property Law & Practice, Volume 13, Issue 12, 1 December 2018, Pages 925–927, doi:10.1093/jiplp/jpy152.