Verbatim report of proceedings

Tuesday, 21 September 2010 - Strasbourg

16. Use of Community trade marks in the internal market (debate)

  President. – Τhe next item is the Commission statement on the use of Community trademarks in the internal market.

  Michel Barnier, Member of the Commission. – (FR) Madam President, ladies and gentlemen, trademarks are of real importance in modern commerce. They enable the origin of products and services to be identified, they guarantee a constant level of quality, and they convey the image of the business. Access to the Community trademark is an issue for the development of our businesses and for the fight against counterfeiting.

You are concerned at the decisions taken by certain national trademark offices. These decisions would seek to limit the use of the Community trademark by invoking a requirement under which the use of a Community trademark in only one Member State would not constitute genuine use thereof. I should like to thank those Members who have drawn the Commission’s attention to this matter, which we are following very closely.

The great merit of the Community trademark is, in fact, to offer all businesses, including small and medium-sized enterprises, an effective means of protecting their trademarks at European level. Until now, the rule that all genuine use of a Community trademark by the owner is sufficient, regardless of where in the Union it is used, has always been considered by its users as one of its principal advantages. This rule is consistent with the unitary character of the Community trademark. It is also consistent with the very principle of the single market. Any new restriction on the use of the Community trademark could therefore have serious consequences for the fight against counterfeiting, which will be one of the particular subjects – and I point this out to Parliament again – of the draft Single Market Act, and of the Commission’s commitment to an action plan against piracy and counterfeiting.

What are these consequences? First, the introduction of a new requirement that could put a brake on the fight against trademark infringements. The Community trademark is an effective weapon in the fight against counterfeiting, as I have just said, because it provides unfailing protection across the whole of the Union and at all of its external frontiers. It is indispensable for enabling the seizure of counterfeit goods – which are currently being imported in massive amounts from third countries – under the Community customs regulations at the external frontiers of our Union.

Besides, the introduction of such a requirement could make access to the Community trademark more difficult for small and medium-sized enterprises and for start-ups. These companies often operate at national level and do not begin exporting, and expanding their activities cross-border, until their business has proved itself to be successful. It could thus become more difficult for these businesses to grow, if they were no longer in a position to obtain and use a Community trademark before expanding their activities. This would also be contrary to a number of our policies that rightly seek to encourage the development of small and medium-sized enterprises which, I remind you, constitute 95% of all European businesses.

Ladies and gentlemen, this is why I want to confirm to you, or assure you, that my services will follow these developments in the Member States very closely. At this stage, we are confident that the national courts will not uphold these decisions, which we feel do not comply with the unitary character of the Community trademark and with the principles of the single market, as I have already said.

  Małgorzata Handzlik, on behalf of the PPE Group. – (PL) I am extremely pleased that despite the late hour, we have, today, the opportunity to hear the Commission statement on the use of Community trademarks in the internal market. It was my political group, the Group of the European People’s Party (Christian Democrats), which initiated this idea. As you well know, Commissioner, this matter is particularly important to the members of the Committee on the Internal Market and Consumer Protection and the Committee on Legal Affairs.

The PPE Group has always been convinced that the internal market began with the concept of removing barriers between Member States, and we have made it our aim to fight for the removal of more of these barriers. This, too, was the idea behind establishment of the Community trademark. The advantage of the system is, among others, a guarantee to businesses of uniform protection across the Union. Geographical differences ought not to play a large role in this regard. Businesses do, after all, operate in a single European market. Therefore, it is with anxiety that we view the decisions made by some national offices for intellectual property protection.

I welcome, therefore, your declaration, Commissioner, that in the opinion of the Commission, these decisions are in contravention of the principles upon which the common market is built. My political group is going to watch further development of the situation and will support measures which are based on a Union approach and serve the interests of businesses. Finally, I would like to ask the Commissioner what options are available if the jurisdiction of Member States does not share the approach represented by the Commission. In your opinion, might it be essential, in order to clarify the situation, to revise the Council regulation on the common trademark and the directive on the harmonisation of Member States’ legislation on trademarks?

  Marc Tarabella, on behalf of the S&D Group. – (FR) Madam President, Commissioner, the Community trademark, established 16 years ago now, has enabled us to fight effectively against counterfeit goods and to offer consumers the guarantee of a quality product throughout the European Union.

Community trademark protection is the same in every country in the European Union, whether we are talking about protection of the trademark itself, of the products and services with respect to which rights are claimed, or of the owner. What is more, it is a genuine solution for the single market: it costs little and is particularly suitable for small and medium-sized enterprises, as you made clear, Commissioner.

It is therefore a real step forward, as in a single market, only a Community trademark can guarantee really widespread protection. What is more, its ease of administration and favourable cost make the Community trademark the ideal instrument for extended protection in Europe. It is equally an important tool for the markets and customs supervisory authorities.

On 14 September, the Court of Justice of the European Union found that a sign consisting of the shape of goods necessary to obtain a technical result cannot be registered as a Community trademark. This was its response to the application of the Lego company, which had requested registration of its toy brick as a Community trademark. The Court therefore rejected its appeal, thereby demonstrating that the use of the Community trademark must be strictly controlled.

This decision by the Court sheds light on the new challenges that must be faced by Regulation (EC) No 40/94 on the Community trademark. Would it not be judicious for the European Commission to update this regulation in view of new technological developments, notably the development of the Internet and globalisation? One can never overemphasise that the primary objective of this regulation is, above all, the guarantee provided to consumers of a quality product and of complete, clear and comprehensible information throughout the European Union.

  Cecilia Wikström, on behalf of the ALDE Group. – (SV) Madam President, Commissioner, I am pleased that we are able to have this important debate this evening, despite the late hour. One of the biggest advantages of the European Union is that it has provided, and continues to provide, vast opportunities for us to lower the thresholds and open up trade between the countries of Europe. This will generate the prosperity and growth that our continent so desperately needs, particularly after the economic crisis.

Europe will not become strong in the 21st century through initiatives from us politicians. We need to accept, to a greater extent, the truth that growth is created by companies and entrepreneurs. Europe can only be strengthened by entrepreneurs and by them having good opportunities to establish companies that can grow, employ people and be profitable. This particular system of the Community trademark is a very effective way of tearing down barriers to trade and generating growth. Particularly for small and medium-sized enterprises, which we want to be able to grow and become larger, it is crucial to be able to enjoy trademark protection throughout the European Union without inconvenience and bureaucracy.

It is therefore with great concern that I have received information that Member States, as far as I can tell, completely contrary to their obligations, are trying to introduce a requirement that a Community trademark should only be granted if it is used in several countries. It should, clearly, be sufficient for a trademark to be used in one Member State in order for that trademark to be protected throughout the EU.

The action of these Member States is a serious threat to the Community trademark system, and I hope, Commissioner, that you will deal with those Member States that are trying to introduce this new criterion and are jeopardising the chances of having effective trademark protection throughout the European Union.

  Malcolm Harbour, on behalf of the ECR Group. – Madam President, on behalf of my group and also as the Chairman of the Committee on the Internal Market and Consumer Protection, I want to thank the Commissioner very much indeed for making it absolutely clear that the behaviour of the two trademark offices concerned – in Benelux and in Hungary – is absolutely unacceptable.

I emphasise that very strongly, because this is clearly an attack on the fundamental principles of the internal market. I am pleased that all colleagues here have spoken in support of the decisions that the Commissioner will make. I would say, from a practical point of view first of all, that it is a remarkable coincidence that both those trademark offices are operating in the country of the current Presidency and the next Presidency.

The first thing my committee intends to do – and I will make sure it happens – is that, when the Minister for the Internal Market (and indeed the Hungarian Minister, from January onwards) comes to my committee, we will make sure that we ask this question and ask them to go directly to their trademark offices and say this is not acceptable.

Why is it not acceptable? Because it is a fundamental attack on the basic principle of the internal market that there should be no discrimination of any kind on companies, wherever they operate in a single uniform unitary market. In this case, it is even worse, because this proposal – or proposed actions, if they were to be upheld – actually discriminates against small enterprises as opposed to larger enterprises. It is small enterprises that will be most affected by this because they may register a new trademark for a product across the European Union – taking advantage, by the way, of a fantastic internal market revolution and a very cost-effective way of protecting their intellectual property. It may take them more than five years to get that product into the marketplace – and what would they find? When they come to the Hungarian market, they would find that the Hungarian trademark office has given their trademark away to someone else. This is absolutely not acceptable.

I cannot understand why it is that, after all the time that we have had the Office for Harmonisation in the Internal Market (the trademark office) in operation, we suddenly find these two trademark offices doing this. Perhaps it is because the cost of registering a European trademark has come down, because they are operating it so efficiently.

Of course, these two trademark offices, in trying to sustain these objections to allowing people to register trademarks, will be requiring the companies concerned to register in their own jurisdictions. This is naked self-interest on behalf of these organisations. It cannot be allowed to stand. It is fundamentally against the principles of the European Union and, by the way, it also undermines – as the Commissioner rightly says – a major priority for this Commission, which is innovation, getting new products into the market and making the internal market work better.

  Zuzana Roithová (PPE). – (CS) I very much welcome the fact that the Commission will, within one year, modernise the Community regulation on trademarks in such a way that it simplifies and reduces the cost of registering trademarks, in other words, protection for the trade names of companies, the names of their products and so on. This is an additional instrument for combating counterfeits.

Personally, I value the fact that the Commission has undertaken to include the proposal to create European trademark protection in the regulation, as I have been supporting this for some years. Today, it is possible to abuse certified product quality marks and safety marks with impunity. For example, in third countries, dealers attach our CE trademark to products for their national markets, which do not meet our standards at all.

There is a need to protect certified marks. We are guaranteeing product standards for consumers, and we are not only protecting businesses against unfair competition but also opening up the possibility of expanding our standards by licensing other businesses. Such protection is possible without additional costs and institutions, because it is possible just to expand the registration powers of the Office for Harmonisation in the Internal Market in Alicante to include certified marks.

  Seán Kelly (PPE). – Madam President, I note we are pretty unanimous in what has been said. Obviously, the development of Community trademarks is a natural extension of the development of the internal market and it offers great scope for developing trade for SMEs, helping to stop counterfeiting and piracy, etc. So it is difficult to see how anyone could object to it. In particular, all political pressure, and possibly sanctions, must be brought to bear on Member States who are not embracing it, to bring them to their senses in this regard.

On the wider front, I would say also that Community trademarks and similar initiatives help to bring the European Union closer to its citizens and make it more relevant for the development of business within the European Union.

Finally, I would just like to say I am also looking forward to the development of the Europe-wide patent, and the sooner that can happen the better.

  Michel Barnier, Member of the Commission. – (FR) Madam President, as Mrs Wikström said, it is quite late to be discussing this topic, but I nevertheless believe it to be an important topic, in common with everyone else who has spoken.

The Chair, Mr Harbour, reminded us to what extent the European trademark has been a proof of identity and a source of protection for businesses. It has also protected innovation.

I therefore believe, as Mr Kelly has just said, that we must go yet further, towards other forms of protection, and that is why, Mr Kelly, we and the Belgian Presidency shall act with determination to finally complete the project of the European patent.

Therefore, I say to Mr Harbour that, for all the reasons he and others have pointed out, the Commission will not allow one of the key elements of the internal market to be unravelled. Furthermore, as you also said, Mr Harbour, if we were to allow this unravelling, based on these quasi-protectionist temptations in one country or another, to happen, it would be small and medium-sized enterprises that would be the first victims.

We are therefore determined to say ‘No’ to these temptations, for all the reasons you have mentioned. From that point of view, I should like to thank Mrs Handzlik and her group for having demonstrated vigilance and expressed that vigilance in asking this question.

Mrs Wikström, like Mr Tarabella, reminded us what the Community trademark means for businesses, and of how it is consistent with the single market. I should like to confirm that, as Mr Tarabella wishes, within the framework of this revising objective, we are on course to modernise the current system.

Following the Lego decision, which you referred to, Mr Tarabella, it is clear that the regulation on the Community trademark must be brought up to date. We are on that course with a concern that you yourself expressed to take into account the consequences of modern means of technology and, obviously, of the Internet in this review, this update. It is in this spirit that we shall update and revise this regulation.

I should also like to thank Mrs Roithová for having mentioned competition, as I did myself; competition that would, moreover, be increased if we were again to be heading towards a fragmentation of trademarks. We must show resistance, we must be capable of cracking down on or preventing the entry of products. To this end, the action plan that I shall be presenting in a few weeks’ time against counterfeiting and piracy will include this desire to train personnel from the various Member States at our external borders, and to strengthen the technical means at our disposal to combat counterfeiting and piracy.

I also believe that there must be a bilateral effort, particularly with the countries from which these counterfeit goods come, and the plan of action that I shall propose to you will therefore contain more positive measures for cooperating with certain third countries and helping them to adopt their own trademark policies and policies for combating counterfeiting.

Finally, Mrs Handzlik asked me an important question: what would happen if the national courts upheld the position taken by their national trademark offices? At the time of speaking, we are not there yet. We must first of all wait, and not prejudge the outcome of the cases before the national courts. What is more, as I told you, I am confident that these courts will themselves rectify the situation. The possibility of infringement proceedings, which was just mentioned, will be borne in mind, but only in the light of the outcome of the appeals that have been entered.

These are the answers, Madam President, to this important problem, which is one of the key constituents of the internal market, and I should like to say so at this point when, together with you and the Council, we are preparing to give a boost to the internal market, to reinforce it, to give it a more specific approach for the benefit of small and medium-sized enterprises and of our citizens.

It is certainly not at this point that we shall accept this unravelling based on the Community trademark issue.

  President. – The debate is closed.