Having regard to the Treaty establishing the European Community, and in particular Article 235 thereof,
Having regard to the proposal from the Commission12,
Having regard to the opinion of the European Parliament13,
Having regard to the opinion of the Economic and Social Committee14,
Whereas it is desirable to promote throughout the Community
a harmonious development of economic activities and a continuous and balanced
expansion by completing an internal market which functions properly and offers
conditions which are similar to those obtaining in a national market; whereas
in order to create a market of this kind and make it increasingly a single market,
not only must be barriers to free movement of goods and services be removed
and arrangements be instituted which ensure that competition is not distorted,
but, in addition, legal conditions must be created which enable undertakings
to adapt their activities to the scale of the Community, whether in manufacturing
and distributing goods or in providing services; whereas for those purposes,
trade marks enabling the products and services of undertakings to be distinguished
by identical means throughout the entire Community, regardless of frontiers,
should feature amongst the legal instruments which undertakings have at their
disposal;
Whereas action by the Community would appear to be necessary
for the purpose of attaining the Community’s said objectives; whereas such action
involves the creation of Community arrangements for trade marks whereby undertakings
can by means of one procedural system obtain Community trade marks to which
uniform protection is given and which produce their effects throughout the entire
area of the Community; whereas the principle of the unitary character of the
Community trade mark thus stated will apply unless otherwise provided for in
this Regulation;
Whereas the barrier of territoriality of the rights conferred
on proprietors of trade marks by the laws of the Member States cannot be removed
by approximation of laws; whereas in order to open up unrestricted economic
activity in the whole of the common market for the benefit of undertakings,
trade marks need to be created which are governed by a uniform Community law
directly applicable in all Member States;
Whereas since the Treaty has not provided the specific powers
to establish such a legal instrument, Article 235 of the Treaty should be applied;
Whereas the Community law relating to trade marks nevertheless
does not replace the laws of the Member States on trade marks; whereas it would
not in fact appear to be justified to require undertakings to apply for registration
of their trade marks as Community trade marks; whereas national trade marks
continue to be necessary for those undertakings which do not want protection
of their trade marks at Community level;
Whereas the rights in a Community trade mark may not be obtained
otherwise than by registration, and registration is to be refused in particular
if the trade mark is not distinctive, if it is unlawful or if it conflicts with
earlier rights;
Whereas the protection afforded by a Community trade mark, the
function of which is in particular to guarantee the trade mark as an indication
of origin, is absolute in the case of identity between the mark and the sign
and the goods or services; whereas the protection applies also in cases of similarity
between the mark and the sign and the goods or services; whereas an interpretation should be given of the concept of
similarity in relation to the likelihood of confusion; whereas the likelihood
of confusion, the appreciation of which depends on numerous elements and, in
particular, on the recognition of the trade mark on the market, the association
which can be made with the used or registered sign, the degree of similarity
between the trade mark and the sign and between the goods or services identified,
constitutes the specific condition for such protection;
Whereas it follows from the principle of free flow of goods
that the proprietor of a Community trade mark must not be entitled to prohibit
its use by a third party in relation to goods which have been put into circulation
in the Community, under the trade mark, by him or with his consent, save where
there exist legitimate reasons for the proprietor to oppose further commercialization
of the goods;
Whereas there is no justification for protecting Community trade
marks or, as against them, any trade mark which has been registered before them,
except where the trade marks are actually used;
Whereas a Community trade mark is to be regarded as an object
of property which exists separately from the undertakings whose goods or services
are designated by it; whereas accordingly, it must be capable of being transferred,
subject to the overriding need to prevent the public being misled as a result
of the transfer. It must also be capable of being charged as security in favour
of a third party and of being the subject matter of licences;
Whereas administrative measures are necessary at Community level
for implementing in relation to every trade mark the trade mark law created
by this Regulation; whereas it is therefore essential, while retaining the Community’s
existing institutional structure and balance of powers, to establish an Office
for Harmonization in the Internal Market (trade marks and designs) which is
independent in relation to technical matters and has legal, administrative and
financial autonomy; whereas to this end it is necessary and appropriate that
it should be a body of the Community having legal personality and exercising
the implementing powers which are conferred on it by this Regulation, and that
it should operate within the framework of Community law without detracting from
the competencies exercised by the Community institutions;
Whereas it is necessary to ensure that parties who are affected
by decisions made by the Office are protected by the law in a manner which is
suited to the special character of trade mark law; whereas to that end provision
is made for an appeal to lie from decisions of the examiners and of the various
divisions of the Office; whereas if the department whose decision is contested
does not rectify its decision it is to remit the appeal to a Board of Appeal
of the Office, which is to decide on it; whereas decisions of the Boards of
Appeal are, in turn, amenable to actions before the Court of Justice of the
European Communities, which has jurisdiction to annul or to alter the contested
decision;
Whereas under Council Decision 88/591/ECSC, EEC, Euratom of
24 October 1988 establishing a Court of First Instance of the European Communities15
, as amended by Decision 93/350/Euratom, ECSC, EEC of 8 June 199316
, that Court shall exercise at the first instance the jurisdiction conferred
on the Court of Justice by the Treaties establishing the Communities - with
particular regard to appeals lodged under the second subparagraph of Article
173 of the EC Treaty - and by the acts adopted in implementation thereof, save
as otherwise provided in an act setting up a body governed by Community law;
whereas the jurisdiction which this Regulation confers on the Court of Justice
to cancel and reform decisions of the appeal courts shall accordingly be exercised
at the first instance by the Court in accordance with the above Decision;
Whereas in order to strengthen the protection of Community trade
marks the Member States should designate, having regard to their own national
system, as limited a number as possible of national courts of first and second
instance having jurisdiction in matters of infringement and validity of Community
trade marks;
Whereas decisions regarding the validity and infringement of
Community trade marks must have effect and cover the entire area of the Community,
as this is the only way of preventing inconsistent decisions on the part of
the courts and the Office and of ensuring that the unitary character of Community
trade marks is not undermined; whereas the rules contained in the Brussels Convention
of Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters
will apply to all actions at law relating to Community trade marks, save where
this Regulation derogates from those rules;
Whereas contradictory judgments should be avoided in actions
which involve the same acts and the same parties and which are brought on the
basis of a Community trade mark and parallel national trade marks; whereas for
this purpose, when the actions are brought in the same Member State, the way
in which this is to be achieved is a matter for national procedural rules, which
are not prejudiced by this Regulation, whilst when the actions are brought in
different Member States, provisions modelled on the rules on lis pendens and
related actions of the abovementioned Brussels Convention appear appropriate;
Whereas in order to guarantee the full autonomy and independence
of the Office, it is considered necessary to grant it an autonomous budget whose
revenue comes principally from fees paid by the users of the system; whereas
however, the Community budgetary procedure remains applicable as far as any
subsidies chargeable to general budget of the European Communities are concerned;
whereas moreover, the auditing of accounts should be undertaken by the Court
of Auditors;
Whereas implementing measures are required for the Regulation’s
application, particularly as regards the adoption and amendment of fees regulations
and an Implementing Regulation; whereas such measures should be adopted by the
Commission, assisted by a Committee composed of representatives of the Member
States, in accordance with the procedural rules laid down in Article 2, procedure
III (b), of Council Decision 87/373/EEC of 13 July 1987 laying down the procedures
for the exercise of implementing powers conferred on the Commission17
, HAS ADOPTED THIS REGULATION:
12OJ
C 351, 31.12.1980, p. 1 and OJ C 230, 31.8.1984, p. 1.
13OJ C 307, 14.11.1983,
p. 46 and OJ C 280, 28.10.1991, p. 153.
14OJ C 310, 30.11.1981,
p. 22.
15OJ L 319, 25.11.1988, p. 1 and corrigendum
in OJ L 241, 17.8.1989, p. 4.
16OJ L 144, 16.6.1993,
p. 21.
17 OJ L 197, 18.7.1987,
p. 33.
TITLE I: GENERAL
PROVISIONS
Article 1: Community trade mark
1. A trade mark for goods or services which is registered in accordance with
the conditions contained in this Regulation and in the manner herein provided
is hereinafter referred to as a Community trade mark.
2. A Community trade mark shall have a unitary character.
It shall have equal effect throughout the Community: it shall not be registered,
transferred or surrendered or be the subject of a decision revoking the rights
of the proprietor or declaring it invalid, nor shall its use be prohibited,
save in respect of the whole Community. This principle shall apply unless otherwise
provided in this Regulation.
Article 2: Office
An Office for Harmonization in the Internal Market
(trade marks and designs), hereinafter referred to as "the Office",
is hereby established.
Article 3: Capacity to act
For the purpose of implementing this Regulation, companies
or firms and other legal bodies shall be regarded as legal persons if, under
the terms of the law governing them, they have the capacity in their own name
to have rights and obligations of all kinds, to make contracts or accomplish
other legal acts and to sue and be sued.
TITLE II: THE
LAW RELATING TO TRADE MARKS
SECTION 1: DEFINITION OF A COMMUNITY TRADE MARK
OBTAINING A COMMUNITY TRADE MARK
Article 4: Signs of which a Community trade mark may consist
A Community trade mark may consist of any signs capable
of being represented graphically, particularly words, including personal names,
designs, letters, numerals, the shape of goods or of their packaging, provided
that such signs are capable of distinguishing the goods or services of one undertaking
from those of other undertakings.
Article 5: Persons who can be proprietors of Community trade marks
Any natural or legal person, including authorities established under public
law, may be the proprietor of a Community trade mark18.
18 Amended by Council
Regulation (EC) No 422/2004.
Article 6: Means whereby a Community trade mark is obtained
A Community trade mark shall be obtained by registration.
Article 7: Absolute grounds for refusal
1. The following shall not be registered:
(a) signs which do not conform to the requirements of Article 4;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves; or
(ii) the shape of goods which is necessary to obtain a technical result; or
(iii) the shape which gives substantial value to the goods;
(f) trade marks which are contrary to public policy or to accepted principles of morality;
(g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;
(h) trade marks which have not been authorized by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention;
(i) trade marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the appropriate authorities to their registration has been given;
(j) trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin19;
(k) trade marks which contain or consist of a designation of origin or a geographical indication registered in accordance with Regulation (EEC) No 2081/92 when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication 20.
2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
3. Paragraph 1 (b), (c) and (d) shall not apply if the
trade mark has become distinctive in relation to the goods or services for which
registration is requested in consequence of the use which has been made of it.
19Added by Council Regulation
(EC) No 3288/94.
20Added by Council Regulation
(EC) No 422/2004.
Article 8: Relative grounds for refusal
1. Upon opposition by the proprietor of an earlier trade mark, the trade mark
applied for shall not be registered:
(a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;
(b) if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
2. For the purposes of paragraph 1, "Earlier trade marks" means:
(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:
(i) Community trade marks;
(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Trade Mark Office;
(iii) trade marks registered under international arrangements which have effect in a Member State;
(iv) trade marks registered under international arrangements which have effect in the Community21;
(b) applications for the trade marks referred to in subparagraph (a), subject to their registration;(c) trade marks which, on the date of application for registration of the Community trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State, in the sense in which the words "well known" are used in Article 6 bis of the Paris Convention.
3. Upon opposition by the prorietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor's consent, unless the agent or representative justifies his action.
4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign22:
(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
5. Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
21Added by Council Regulation (EC) No 1992/2003. In force since 1 October 2004.
22 Amended by Council Regulation (EC) No. 422/2004.
(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
(b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.
2. The following, inter alia, may be prohibited under paragraph 1:
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
(c) importing or exporting the goods under that sign;
(d) using the sign on business papers and in advertising.
3. The rights conferred by a Community trade mark shall
prevail against third parties from the date of publication of registration of
the trade mark. Reasonable compensation may, however, be claimed in respect
of matters arising after the date of publication of a Community trade mark application,
which matters would, after publication of the registration of the trade mark,
be prohibited by virtue of that publication. The court seized of the case may
not decide upon the merits of the case until the registration has been published.
Article 10: Reproduction of Community trade
marks in dictionaries
If the reproduction of a Community trade mark in a dictionary, encyclopaedia
or similar reference work gives the impression that it constitutes the generic
name of the goods or services for which the trade mark is registered, the publisher
of the work shall, at the request of the proprietor of the Community trade mark,
ensure that the reproduction of the trade mark at the latest in the next edition
of the publication is accompanied by an indication that it is a registered trade
mark.
Article 11: Prohibition on the use of a Community trade mark registered in the
name of an agent or representative
Where a Community trade mark is registered in the name of the agent or representative
of a person who is the proprietor of that trade mark, without the proprietor
s authorization, the latter shall be entitled to oppose the use of his mark
by his agent or representative if he has not authorized such use, unless the
agent or representative justifies his action.
Article 12: Limitation of the effects of a Community trade mark
A Community trade mark shall not entitle
the proprietor to prohibit a third party from using in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts,
provided he uses them in accordance with honest practices
in industrial or commercial matters.
Article 13: Exhaustion of the rights conferred by a Community trade mark
1. A Community trade mark shall not entitle the proprietor to prohibit its use
in relation to goods which have been put on the market in the Community under
that trade mark by the proprietor or with his consent.
2. Paragraph 1 shall not apply where there exist legitimate
reasons for the proprietor to oppose further commercialization of the goods,
especially where the condition of the goods is changed or impaired after they
have been put on the market.
Article 14: Complementary application of national law relating to infringement
1. The effects of Community trade marks shall be governed solely by the provisions
of this Regulation. In other respects, infringement of a Community trade mark
shall be governed by the national law relating to infringement of a national
trade mark in accordance with the provisions of Title X.
2. This Regulation shall not prevent actions concerning a Community trade mark being brought under the law of Member States relating in particular to civil liability and unfair competition.
3. The rules of procedure to be applied shall be determined
in accordance with the provisions of Title X.
SECTION 3: USE OF COMMUNITY TRADE
MARKS
Article 15: Use of Community trade marks
1. If, within a period of five years following registration,
the proprietor has not put the Community trade mark to genuine use in the Community
in connection with the goods or services in respect of which it is registered,
or if such use has been suspended during an uninterrupted period of five years,
the Community trade mark shall be subject to the sanctions provided for in this
Regulation, unless there are proper reasons for non-use.
2. The following shall also constitute use within the meaning of paragraph 1:
(a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;
(b) affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes.
3. Use of the Community trade mark with the consent of
the proprietor shall be deemed to constitute use by the proprietor.
SECTION 4: COMMUNITY TRADE MARKS
AS OBJECTS OF PROPERTY
Article 16: Dealing with Community trade marks as national trade marks
1. Unless Articles 17 to 24 provide otherwise, a Community
trade mark as an object of property shall be dealt with in its entirety, and
for the whole area of the Community, as a national trade mark registered in
the Member State in which, according to the Register of Community trade marks:
(a) the proprietor has his seat or his domicile on the relevant date; or
(b) where subparagraph (a) does not apply, the proprietor has an establishment on the relevant date.
2. In cases which are not provided for by paragraph 1, the Member State referred to in that paragraph shall be the Member State in which the seat of the Office is situated.
3. If two or more persons are mentioned in the Register
of Community trade marks as joint proprietors, paragraph 1 shall apply to the
joint proprietor first mentioned; failing this, it shall apply to the subsequent
joint proprietors in the order in which they are mentioned. Where paragraph
1 does not apply to any of the joint proprietors, paragraph 2 shall apply.
Article 17: Transfer
1. A Community trade mark may be transferred, separately
from any transfer of the undertaking, in respect of some or all of the goods
or services for which it is registered.
2. A transfer of the whole of the undertaking shall include the transfer of the Community trade mark except where, in accordance with the law governing the transfer, there is agreement to the contrary or circumstances clearly dictate otherwise. This provision shall apply to the contractual obligation to transfer the undertaking.
3. Without prejudice to paragraph 2, an assignment of the Community trade mark shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment; otherwise it shall be void.
4. Where it is clear from the transfer documents that because of the transfer the Community trade mark is likely to mislead the public concerning the nature, quality or geogaphical origin of the goods or services in respect of which it is registered, the Office shall not register the transfer unless the successor agrees to limit registration of the Community trade mark to goods or services in respect of which it is not likely to mislead.
5. On request of one of the parties a transfer shall be entered in the Register and published.
6. As long as the transfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the Community trade mark.
7. Where there are time limits to be observed vis-à-vis the Office, the successor in title may make the corresponding statements to the Office once the request for registration of the transfert has been received by the Office.
8. All documents which require notification to the proprietor
of the Community trade mark in accordance with Article 77 shall be addressed
to the person registered as proprietor.
Article 18: Transfer of a trade mark registered in the name of an agent
Where a Community trade mark is registered
in the name of the agent or representative of a person who is the proprietor
of that trade mark, without the proprietor's authorization, the latter shall
be entitled to demand the assignment in his favour of the said registration,
unless such agent or representative justifies his action.
Article 19: Rights in rem
1. A Community trade mark may, independently of the undertaking, be given as
security or be the subject of rights in rem.
2. On request of one of the parties, rights mentioned
in paragraph 1 shall be entered in the Register and published.
Article 20: Levy of execution
1. A Community trade mark may be levied
in execution.
2. As regards the procedure for levy of execution in respect of a Community trade mark, the courts and authorities of the Member States determined in accordance with Article 16 shall have exclusive jurisdiction.
3. On request of one the parties, levy of execution shall
be entered in the Register and published.
Article 21: Insolvency proceedings23
1. The only insolvency proceedings in which a Community trade mark may be involved are those opened in the Member State in the territory of which the debtor has his centre of main interests.
However, where the debtor is an insurance undertaking or a credit institution as defined in Directives 2001/17/EC24 and 2001/24/EC25 , respectively, the only insolvency proceedings in which a Community trademark may be involved are those opened in the Member State where that undertaking or institution has been authorised.
2. In the case of joint proprietorship of a Community trade mark, paragraph 1 shall apply to the share of the joint proprietor.
3. Where a Community trade mark is involved in insolvency proceedings, on request of the competent national authority an entry to this effect shall be made in the Register and published in the Community Trade Marks Bulletin referred to in Article 85.
23Amended by Council
Regulation (EC) No 422/2004.
24Directive 2001/17/EC
of the European Parliament and of the Council of 19 March 2001 on the reorganisation
and winding-up of insurance undertakings (OJ L 110, 20.4.2001, p. 28).
25Directive 2001/24/EC
of the European Parliament and of the Council of 4 April 2001 on the reorganisation
and winding up of credit institutions (OJ L 125, 5.5.2001, p. 15).
Article 22: Licensing
1. A Community trade mark may be licensed for some or all of the goods or services
for which it is registered and for the whole or part of the Community. A licence
may be exclusive or non-exclusive.
2. The proprietor of a Community trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to its duration, the form covered by the registration in which the trade mark may be used, the scope of the goods or services for which the licence is granted, the territory in which the trade mark may be affixed, or the quality of the goods manufactured or of the services provided by the licensee.
3. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a Community trade mark only if its proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period.
4. A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in infringement proceedings brought by the proprietor of the Community trade mark.
5. On request of one of the parties the grant or transfer
of a licence in respect of a Community trade mark shall be entered in the Register
and published.
Article 23: Effects vis-à-vis third parties
1. Legal acts referred to in Article 17, 19 and 22 concerning
a Community trade mark shall only have effects vis-à-vis third parties
in all the Member States after entry in the Register. Nevertheless, such an
act, before it is so entered, shall have effect vis-à-vis third
parties who have acquired rights in the trade mark after the date of that act
but who knew of the act at the date on which the rights were acquired.
2. Paragraph 1 shall not apply in the case of a person who acquires the Community trade mark or a right concerning the Community trade mark by way of transfer of the whole of the undertaking or by any other universal succession.
3. The effects vis-à-vis third parties of the legal acts referred to in Article 20 shall be governed by the law of the Member State determined in accordance with Article 16.
4. Until such time as common rules for the Member States
in the field of bankruptcy enter into force, the effects vis-à-vis
third parties of bankruptcy or like proceedings shall be governed by the law
of the Member State in which such proceedings are first brought within the meaning
of national law or of conventions applicable in this field.
Article 24: The application for a Community trade mark as an object of property
Articles 16 to 23 shall apply to applications for Community
trade marks.
TITLE III:
APPLICATION FOR COMMUNITY TRADE MARKS
SECTION 1: FILING OF APPLICATIONS AND
THE CONDITIONS WHICH GOVERN THEM
Article 25: Filing of applications
1. An application for a Community trade mark shall be filed, at the choice of
the applicant,
(a) at the Office; or
(b) at the central industrial property office of a Member State or at the Benelux Trade Mark Office. An application filed in this way shall have the same effect as if it had been filed on the same date at the Office.
2. Where the application is filed at the central industrial property office of a Member State or at the Benelux Trade Mark Office, that office shall take all steps to forward the application to the Office within two weeks after filing. It may charge the applicant a fee which shall not exceed the administrative costs of receiving and forwarding the application.
3. Applications referred to in paragraph 2 which reach the Office more than two month after filing shall be deemed to have been filed on the date on which the application reached the Office26 .
4. Ten years after the entry into force of this Regulation,
the Commission shall draw up a report on the operation of the system of filing
applications for Community trade marks, together with any proposals for modifying
this system.
26 Amended by Council
Regulation (EC) No. 422/2004.
Article 26: Conditions with which applications must comply
1. An application for a Community trade mark shall contain:
(a) a request for the registration of a Community trade mark;
(b) information identifying the applicant;
(c) a list of the goods or services in respect of which the registration is requested;
(d) a representation of the trade mark.
2. The application for a Community trade mark shall be subject to the payment of the application fee and, when appropriate, of one or more class fees.
3. An application for a Community trade mark must comply
with the conditions laid down in the implementing Regulation referred to in
Article 157 27.
27Number of the Article changed by Council Regulation (EC) No 1992/2003. In force since 1 October 2004.
Article 27: Date of filing
The date of filing of a Community trade mark application
shall be the date on which documents containing the information specified in
Article 26 (1) are filed with the Office by the applicant or, if the application
has been filed with the central office of a Member State or with the Benelux
Trade Mark Office, with that office, subject to payment of the application fee
within a period of one month of filing the abovementioned documents.
Article 28: Classification
Goods and services in respect of which Community trade marks are applied for
shall be classified in conformity with the system of classification specified
in the Implementing Regulation.
SECTION 2: PRIORITY
Article 29: Right of priority
1. A person who has duly filed an application for a trade mark in or for any
State party to the Paris Convention or to the Agreement establishing the World
Trade Organization, or his successors in title, shall enjoy, for the purpose
of filing a Community trade mark application for the same trade mark in respect
of goods or services which are identical with or contained within those for
which the application has been filed, a right of priority during a period of
six months from the date of filing of the first application28.
2. Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements shall be recognized as giving rise to a right of priority.
3. By a regular national filing is meant any filing that is sufficient to establish the date on which the application was filed, whatever may be the outcome of the application.
4. A subsequent application for a trade mark which was the subject of a previous first application in respect of the same goods or services, and which is filed in or in respect of the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing of the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
5. If the first filing has been made in a State which
is not a party to the Paris Convention or to the Agreement establishing the
World Trade Organization, paragraphs 1 to 4 shall apply only in so far as that
State, according to published findings, grants, on the basis of a first filing
made at the Office and subject to conditions equivalent to those laid down in
this Regulation, a right of priority having equivalent effect.
28Article 29 (1) and
(5) amended by Council Regulation (EC) No 3288/94.
Article 30: Claiming priority
An applicant desiring to take advantage of the priority
of a previous application shall file a declaration of priority and a copy of
the previous application. If the language of the latter is not one of the languages
of the Office, the applicant shall file a translation of the previous application
in one of those languages.
Article 31: Effect of priority right
The right of priority shall have the effect that
the date of priority shall count as the date of filing of the Community trade
mark application for the purposes of establishing which rights take precedence.
Article 32: Equivalence of Community filing with national filing
A Community trade mark application which has been accorded a date of filing
shall, in the Member States, be equivalent to a regular national filing, where
appropriate with the priority claimed for the Community trade mark application.
SECTION 3: EXHIBITION PRIORITY
Article 33: Exhibition priority
1. If an applicant for a Community trade mark has displayed goods or services
under the mark applied for, at an official or officially recognized international
exhibition falling within the terms of the Convention on International Exhibitions
signed at Paris on 22 November 1928 and last revised on 30 November 1972, he
may, if he files the application within a period of six months from the date
of the first display of the goods or services under the mark applied for, claim
a right of priority from that date within the meaning of Article 31.
2. An applicant who wishes to claim priority pursuant to paragraph 1 must file evidence of the display of goods or services under the mark applied for under the conditions laid down in the Implementing Regulation.
3. An exhibition priority granted in a Member State or
in a third country does not extend the period of priority laid down in Article
29.
SECTION 4: CLAIMING
THE SENIORITY OF A NATIONAL TRADE MARK
Article 34: Claiming the seniority of a
national trade mark
1. The proprietor of an earlier trade mark registered in
a Member State, including a trade mark registered in the Benelux countries, or
registered under international arrangements having effect in a Member State, who
applies for an identical trade mark for registration as a Community trade mark
for goods or services which are identical with or contained within those for which
the earlier trade mark has been registered, may claim for the Community trade
mark the seniority of the earlier trade mark in respect of the Member State in
or for which it is registered.
2. Seniority shall have the sole effect under this Regulation that, where the proprietor of the Community trade mark surrenders the earlier trade mark or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered.
3. The seniority claimed for the Community trade mark
shall lapse if the earlier trade mark the seniority of which is claimed is declared
to have been revoked or to be invalid or if it is surrendered prior to the registration
of the Community trade mark.
Article 35: Claiming seniority after registration
of the Community trade mark
1. The proprietor of a Community trade mark who is the
proprietor of an earlier identical trade mark registered in a Member State,
including a trade mark registered in the Benelux countries, or of a trade mark
registered under international arrangements having effect in a Member State,
for identical goods or services, may claim the seniority of the earlier trade
mark in respect of the Member State in or for which it is registered29.
2. Article 34 (2) and (3) shall apply.
29Amended by Council
Regulation (EC) No 422/2004.
TITLE IV: REGISTRATION PROCEDURE
SECTION 1: EXAMINATION OF APPLICATIONS
Article 36: Examination of the conditions of filing
1. The Office shall examine whether:
(a) the Community trade mark application satisfies the requirements for the accordance of a date of filing in accordance with Article 27;
(b) the Community trade mark application complies with the conditions laid down in this Regulation and with the conditions30 laid down in the Implementing Regulation;
(c) where appropriate, the class fees have been paid within the prescribed period.
2. Where the Community trade mark application does not satisfy the requirements referred to in paragraph 1, the Office shall request the applicant to remedy the deficiencies or the default on payment within the prescribed period.
3. If the deficiencies or the default on payment established pursuant to paragraph 1 (a) are not remedied within this period, the application shall not be dealt with as a Community trade mark application. If the applicant complies with the Office s request, the Office shall accord as the date of filing of the application the date on which the deficiencies or the default on payment established are remedied.
4. If the deficiencies established pursuant to paragraph 1 (b) are not remedied within the prescribed period, the Office shall refuse the application.
5. If the default on payment established pursuant to paragraph 1 (c) is not remedied within the prescribed period, the application shall be deemed to be withdrawn unless it is clear which categories of goods or services the amount paid is intended to cover.
6. Failure to satisfy the requirements concerning the claim to priority shall result in loss of the right of priority for the application.
7. Failure to satisfy the requirements concerning the
claiming of seniority of a national trade mark shall result in loss of that
right for the application.
30Amended by Council
Regulation (EC) No 422/2004.
Article 37: Examination of the conditions relating to the entitlement of the
proprietor
31Deleted by Council
Regulation (EC) No 422/2004.
Article 38: Examination as to absolute grounds
for refusal
1. Where, under Article 7, a trade mark is ineligible for
registration in respect of some or all of the goods or services covered by the
Community trade mark application, the application shall be refused as regards
those goods or services.
2. Where the trade mark contains an element which is not distinctive, and where the inclusion of said element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, the Office may request, as a condition for registration of said trade mark, that the applicant state that he disclaims any exclusive right to such element. Any disclaimer shall be published together with the application or the registration of the Community trade mark, as the case may be.
3. The application shall not be refused before the applicant
has been allowed the opportunity of withdrawing or amending the application
or of submitting his observations.
SECTION 2: SEARCH
Article 39: Search 32
[The following wording of the Article
applies until its amendment will enter into force, which will
be on 10 March 2008.]
1. Once the Office has accorded a date of filing to a Community
trade mark application and has established that the applicant satisfies the
conditions referred to in Article 5, it shall draw up a Community search report
citing those earlier Community trade marks or Community trade mark applications
discovered which may be invoked under Article 8 against the registration of
the Community trade mark applied for.
2. As soon as a Community trade mark application has been accorded a date of filing, the Office shall transmit a copy thereof to the central industrial property office of each Member State which has informed the Office of its decision to operate a search in its own register of trade marks in respect of Community trade mark applications.
3. Each of the central industrial property offices referred to in paragraph 2 shall communicate to the Office within three months as from the date on which it received the Community trade mark application a search report which shall either cite those earlier national trade marks or trade mark applications discovered which may be invoked under Article 8 against the registration of the Community trade mark applied for, or state that the search has revealed no such rights.
4. An amount shall be paid by the Office to each central industrial property office for each search report provided by that office in accordance with paragraph 3. The amount, which shall be the same for each office, shall be fixed by the Budget Committee by means of a decision adopted by a majority of three-quarters of the representatives of the Member States.
5. The Office shall transmit without delay to the applicant for the Community trade mark the Community search report and the national search reports received within the time limit laid down in paragraph 3.
6. Upon publication of the Community trade mark application, which may not take place before the expiry of a period of one month as from the date on which the Office transmits the search reports to the applicant, the Office shall inform the proprietors of any earlier Community trade marks or Community trade mark applications cited in the Community search report of the publication of the Community trade mark application.
7. The Commission shall, five years after the opening of the Office for the filing of applications, submit to the Council a report on the operation of the system of searching resulting from this Article, including the payments made to Member States under paragraph 4, and, if necessary, appropriate proposals for amending this Regulation with a view to adapting the system of searching on the basis of the experience gained and bearing in mind developments in searching techniques.
The new text which will apply from
10 March 2008:
1. Once the Office has accorded a date of filing, it shall draw up a Community
search report citing those earlier Community trade marks or Community trade
mark applications discovered which may be invoked under Article 8 against the
registration of the Community trade mark applied for.
2. Where, at the time of filing a Community trade mark application, the applicant requests that a search report also be prepared by the central industrial property offices of the Member States and where the appropriate search fee has been paid within the time-limit for the payment of the filing fee, the Office shall, as soon as a Community trade mark application has been accorded a date of filing, transmit a copy thereof to the central industrial property office of each Member State which has informed the Office of its decision to operate a search in its own register of trade marks in respect of Community trade mark applications.
3. Each of the central industrial property offices referred to in paragraph 2 shall communicate to the Office within two months as from the date on which it received the Community trade mark application a search report which shall either cite those earlier national trade marks or trade mark applications discovered which may be invoked under Article 8 against the registration of the Community trade mark applied for, or state that the search has revealed no such rights.
4. The search reports referred to in paragraph 3 shall be prepared on a standard form drawn up by the Office, after consulting the Administrative Board. The essential contents of this form shall be set out in the Implementing Regulation provided for in Article 157(1).
5. An amount shall be paid by the Office to each central industrial property office for each search report provided by that office in accordance with paragraph 3. The amount, which shall be the same for each office, shall be fixed by the Budget Committee by means of a decision adopted by a majority of three-quarters of the representatives of the Member States.
6. The Office shall transmit without
delay to the applicant for the Community trade mark the Community search report
and any requested national search reports received within the time limit laid
down in paragraph 3.
7. Upon publication of the Community
trade mark application, which may not take place before the expiry of a period
of one month as from the date on which the Office transmits the search reports
to the applicant, the Office shall inform the proprietors of any earlier Community
trade marks or Community trade mark applications cited in the Community search
report of the publication of the Community trade mark application.
32Amended by Council
Regulation (EC) No 422/2004.
2. Where, after publication, the application is refused
under Article 38, the decision that it has been
refused shall be published upon becoming final
33Amended by Council
Regulation (EC) No 422/2004.
34Amended by
Council Regulation (EC) No 422/2004. This amendment has already entered into
force. However 39 (7) refers to the new Article 39, which comes into force on
10 March 2008. Until this date it should be read as 39 (6).
SECTION 4: OBSERVATIONS BY THIRD PARTIES AND OPPOSITION
Article 41: Observations by third parties
1. Following the publication of the Community trade mark
application, any natural or legal person and any group or body representing
manufacturers, producers, suppliers of services, traders or consumers may submit
to the Office written observations, explaining on which grounds under Article
7, in particular, the trade mark shall not be registered ex officio. They shall
not be parties to the proceedings before the Office.
2. The observations referred to in paragraph 1 shall be
communicated to the applicant who may comment on them.
Article 42: Opposition
1. Within a period of three months following the publication
of a Community trade mark application, notice of opposition to registration of
the trade mark may be given on the grounds that it may not be registered under
Article 8:
(a) by the proprietors of earlier trade marks referred to in Article 8 (2) as well as licensees authorized by the proprietors of those trade marks, in respect of Article 8 (1) and (5);
(b) by the proprietors of trade marks referred to in Article 8 (3);
(c) by the proprietors of earlier marks or signs referred to in Article 8 (4) and by persons authorized under the relevant national law to exercise these rights.
2. Notice of opposition to registration of the trade mark may also be given, subject to the conditions laid down in paragraph 1, in the event of the publication of an amended application in accordance with the second sentence of Article 44 (2).
3. Opposition must be expressed in writing and must specify
the grounds on which it is made. It shall not be treated as duly entered until
the opposition fee has been paid. Within a period fixed by the Office, the opponent
may submit in support of his case facts, evidence and arguments.
Article 43: Examination of opposition
1. In the examination of the opposition the Office shall
invite the parties, as often as necessary, to file observations, within a period
set them by the Office, on communications from the other parties or issued by
itself.
2. If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8 (2) (a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community.
4. The Office may, if it thinks fit, invite the parties to make a friendly settlement.
5. If examination of the opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the Community trade mark application has been made, the application shall be refused in respect of those goods or services. Otherwise the opposition shall be rejected.
6. The decision refusing the application shall be published
upon becoming final.
SECTION 5: WITHDRAWAL, RESTRICTION,
AMENDMENT AND DIVISION35 OF THE APPLICATION
35Amended by Council
Regulation (EC) No 422/2004.This amendment shall apply when the necessary implementing
measures have been adopted.
Article 44: Withdrawal, restriction and
amendment of the application
1. The applicant may at any time withdraw his Community trade
mark application or restrict the list of goods or services contained therein.
Where the application has already been published, the withdrawal or restriction
shall also be published.
2. In other respects, a Community trade mark application
may be amended, upon request of the applicant, only by correcting the name and
address of the applicant, errors of wording or of copying, or obvious mistakes,
provided that such correction does not substantially change the trade mark or
extend the list of goods or services. Where the amendments affect the representation
of the trade mark or the list of goods or services and are made after publication
of the application, the trade mark application shall be published as amended.
Article
44a: Division of the application36
1. The applicant may divide the application by declaring that some of the goods or services included in the original application will be the subject of one or more divisional applications. The goods or services in the divisional application shall not overlap with the goods or services which remain in the original application or those which are included in other divisional applications.
2. The declaration of division shall not be admissible:
(a) if, where an opposition has been entered against the original application, such a divisional application has the effect of introducing a division amongst the goods or services against which the opposition has been directed, until the decision of the Opposition Division has become final or the opposition proceedings are finally terminated otherwise;
(b) during the periods laid down in the
Implementing Regulation.
3. The declaration of division must comply with the provisions set out in the
Implementing Regulation.
4. The declaration of division shall be subject to a fee. The application shall
be deemed not to have been made until the fee has been paid.
5. The division shall take effect on the date on which it is recorded in the files kept by the Office concerning the original application.
6. All requests and applications submitted and all fees paid with regard to the original application prior to the date on which the Office receives the declaration of division are deemed also to have been submitted or paid with regard to the divisional application or applications. The fees for the original application which have been duly paid prior to the date on which the declaration of division is received shall not be refunded.
7. The divisional application shall
preserve the filing date and any priority date and seniority date of the original
application.
36Article 44a inserted
by Council Regulation (EC) No 422/2004.This amendment shall apply when the necessary
implementing measures have been adopted.
2. The Office shall inform the proprietor of the Community trade mark, and any person having a registered right in respect of the Community trade mark, of the expiry of the registration in good time before the said expiry. Failure to give such information shall not involve the responsibility of the Office.
3. The request for renewal shall be submitted within a period of six months ending on the last day of the month in which protection ends. The fees shall also be paid within this period. Failing this, the request may be submitted and the fees paid within a further period of six months following the day referred to in the first sentence, provided that an additional fee is paid within this further period.
4. Where the request is submitted or the fees paid in respect of only some of the goods or services for which the Community trade mark is registered, registration shall be renewed for those goods or services only.
5. Renewal shall take effect from the day following the
date on which the existing registration expires. The renewal shall be registered.
Article 48: Alteration
1. The Community trade mark shall not be altered in the register
during the period of registration or on renewal thereof.
2. Nevertheless, where the Community trade mark includes the name and address of the proprietor, any alteration thereof not substantially affecting the identity of the trade mark as originally registered may be registered at the request of the proprietor.
3. The publication of the registration of the alteration
shall contain a representation of the Community trade mark as altered. Third
parties whose rights may be affected by the alteration may challenge the registration
thereof within a period of three months following publication.
Article
48a: Division of the registration38
1. The proprietor of the Community trade mark may divide the registration by declaring that some of the goods or services included in the original registration will be the subject of one or more divisional registrations. The goods or services in the divisional registration shall not overlap with the goods or services which remain in the original registration or those which are included in other divisional registrations.
2. The declaration of division shall not be admissible:
(a) if, where an application for revocation of rights or for a declaration of invalidity has been entered against the original registration, such a divisional declaration has the effect of) if, where an application for revocation of rights or for a declaration of invalidity has been entered against the original registration, such a divisional declaration has the effect of introducing a division amongst the goods or services against which the application for revocation of rights or for a declaration of invalidity is directed, until the decision of the Cancellation Division has become final or the proceedings are finally terminated otherwise;
(b) if, where a counterclaim for revocation or for a declaration of invalidity has been entered in a case before a Community trade mark court, such a divisional declaration has the effect of introducing a division amongst the goods or services against which the counterclaim is directed, until the mention of the Community trade mark court's judgement is recorded in the Register pursuant to Article 96(6).
3. The declaration of division must comply
with the provisions set out in the Implementing Regulation.
4. The declaration of division shall be subject to a fee. The declaration shall
be deemed not to have been made until the fee has been paid.
5. The division shall take effect on the date on which it is entered in the Register.
6. All requests and applications submitted and all fees paid with regard to the original registration prior to the date on which the Office receives the declaration of division shall be deemed also to have been submitted or paid with regard to the divisional registration or registrations. The fees for the original registration which have been duly paid prior to the date on which the declaration of division is received shall not be refunded.
7. The divisional registration shall preserve the filing date and any priority date and seniority date of the original registration.
38Article 48a inserted
by Council Regulation (EC) No 422/2004.This amendment shall apply when the necessary
implementing measures have been adopted.
TITLE VI: SURRENDER, REVOCATION AND
INVALIDITY
SECTION 1: SURRENDER
Article 49: Surrender
1. A Community trade mark may be surrendered in respect of
some or all of the goods or services for which it is registered.
2. The surrender shall be declared to the Office in writing by the proprietor of the trade mark. It shall not have effect until it has been entered in the Register.
3. Surrender shall be entered only with the agreement
of the proprietor of a right entered in the Register. If a licence has been
registered, surrender shall only be entered in the Register if the proprietor
of the trade mark proves that he has informed the licensee of his intention
to surrender; this entry shall be made on expiry of the period prescribed by
the Implementing Regulation.
SECTION 2: GROUNDS FOR REVOCATION
Article 50: Grounds for revocation
1. The rights of the proprietor of the Community trade mark
shall be declared to be revoked on application to the Office or on the basis of
a counterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor s rights in a Community trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;
(b) if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered;
(c) if, in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services;
2. Where the grounds for revocation of rights exist in
respect of only some of the goods or services for which the Community trade
mark is registered, the rights of the proprietor shall be declared to be revoked
in respect of those goods or services only.
SECTION 3: GROUNDS FOR INVALIDITY
Article 51: Absolute grounds for invalidity
1. A Community trade mark shall be declared invalid on application
to the Office or on the basis of a counterclaim in infringement proceedings,
(a) where the Community trade mark has been registered contrary to the provisions of Article 739 ;
(b) where the applicant was acting in bad faith when he filed the application for the trade mark.
2. Where the Community trade mark has been registered in breach of the provisions of Article 7 (1) (b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
3. Where the ground for invalidity exists in respect of
only some of the goods or services for which the Community trade mark is registered,
the trade mark shall be declared invalid as regards those goods or services
only.
39 Amended by Council
Regulation (EC) No 422/2004.
Article 52: Relative grounds for invalidity
1. A Community trade mark shall be declared invalid on application
to the Office or on the basis of a counterclaim in infringement proceedings:
(a) where there is an earlier trade mark as referred to in Article 8 (2) and the conditions set out in paragraph 1 or 5 of that Article are fulfilled;
(b) where there is a trade mark as referred to in Article 8 (3) and the conditions set out in that paragraph are fulfilled;
(c) where there is an earlier right as referred to in Article 8 (4) and the conditions set out in that paragraph are fulfilled.
2. A Community trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right, and in particular:
(a) a right to a name;
(b) a right of personal portrayal;
(c) a copyright;
(d) an industrial property right.
under the Community legislation or national law governing
the protection40.
3. A Community trade mark may not be declared invalid where the proprietor of a right referred to in paragraphs 1 or 2 consents expressly to the registration of the Community trade mark before submission of the application for a declaration of invalidity or the counterclaim.
4. Where the proprietor of one of the rights referred to in paragraphs 1 or 2 has previously applied for a declaration that a Community trade mark is invalid or made a counterclaim in infringement proceedings, he may not submit a new application for a declaration of invalidity or lodge a counterclaim on the basis of another of the said rights which he could have invoked in support of his first application or counterclaim.
5. Article 51 (3) shall apply.
40Amended by Council
Regulation (EC) No 422/2004.
Article 53: Limitation in consequence of
acquiescence
1. Where the proprietor of a Community trade mark has acquiesced,
for a period of five successive years, in the use of a later Community trade mark
in the Community while being aware of such use, he shall no longer be entitled
on the basis of the earlier trade mark either to apply for a declaration that
the later trade mark is invalid or to oppose the use of the later trade mark in
respect of the goods or services for which the later trade mark has been used,
unless registration of the later Community trade mark was applied for in bad faith.
2. Where the proprietor of an earlier national trade mark as referred to in Article 8 (2) or of another earlier sign referred to in Article 8 (4) has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith.
3. In the cases referred to in paragraphs 1 and 2, the
proprietor of a later Community trade mark shall not be entitled to oppose the
use of the earlier right, even though that right may no longer be invoked against
the later Community trade mark.
SECTION 4: CONSEQUENCES
OF REVOCATION AND INVALIDITY
Article 54: Consequences of revocation and
invalidity
1. The Community trade mark shall be deemed not to have had,
as from the date of the application for revocation or of the counterclaim, the
effects specified in this Regulation, to the extent that the rights of the proprietor
have been revoked. An earlier date, on which one of the grounds for revocation
occurred, may be fixed in the decision at the request of one of the parties.
2. The Community trade mark shall be deemed not to have had, as from the outset, the effects specified in this Regulation, to the extent that the trade mark has been declared invalid.
3. Subject to the national provisions relating either to claims for compensation for damage caused by negligence or lack of good faith on the part of the proprietor of the trade mark, or to unjust enrichment, the retroactive effect of revocation or invalidity of the trade mark shall not affect:
(a) any decision on infringement which has acquired the authority of a final decision and been enforced prior to the revocation or invalidity decision;
(b) any contract concluded prior to the revocation or
invalidity decision, in so far as it has been performed before that decision;
however, repayment, to an extent justified by the circumstances, of sums paid
under the relevant contract, may be claimed on grounds of equity.
SECTION 5: PROCEEDINGS IN THE OFFICE IN RELATION TO REVOCATION
OR INVALIDITY
Article 55: Application for revocation or
for a declaration of invalidity
1. An application for revocation of the rights of the proprietor
of a Community trade mark or for a declaration that the trade mark is invalid
may be submitted to the Office:
(a) where Articles 50 and 51 apply, by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the law governing it has the capacity in its own name to sue and be sued;
(b) where Article 52 (1) applies, by the persons referred to in Article 42 (1);
(c) where Article 52 (2) applies, by the owners of the earlier rights referred to in that provision or by the persons who are entitled under the law of the Member State concerned to exercise the rights in question.
2. The application shall be filed in a written reasoned statement. It shall not be deemed to have been filed until the fee has been paid.
3. An application for revocation or for a declaration
of invalidity shall be inadmissible if an application relating to the same subject
matter and cause of action, and involving the same parties, has been adjudicated
on by a court in a Member State and has acquired the authority of a final decision.
Article 56: Examination of the application
1. In the examination of the application for revocation of
rights or for a declaration of invalidity, the Office shall invite the parties,
as often as necessary, to file observations, within a period to be fixed by the
Office, on communications from the other parties or issued by itself.
2. If the proprietor of the Community trade mark so requests, the proprietor of an earlier Community trade mark, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his application, or that there are proper reasons for non-use41, provided the earlier Community trade mark has at that date been registered for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. If, at the date on which the Community trade mark application was published, the earlier Community trade mark had been registered for not less than five years, the proprietor of the earlier Community trade mark shall furnish proof that, in addition, the conditions contained in Article 43 (2) were satisfied at that date. In the absence of proof to this effect the application for a declaration of invalidity shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect only of that part of the goods or services.
3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8 (2) (a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community.
4. The Office may, if it thinks fit, invite the parties to make a friendly settlement.
5. If the examination of the application for revocation of rights or for a declaration of invalidity reveals that the trade mark should not have been registered in respect of some or all of the goods or services for which it is registered, the rights of the proprietor of the Community trade mark shall be revoked or it shall be declared invalid in respect of those goods or services. Otherwise the application for revocation of rights or for a declaration of invalidity shall be rejected.
6. A record of the Office's decision
on the application for revocation of rights or for a declaration of invalidity
shall be entered in the Register once it has become final42
.
41 Note: the preceding
words “provided the earlier Community trade mark has at that date been registered
for non-use” appear to be redundant.
42Amended by Council
Regulation (EC) No 422/2004.
TITLE VII: APPEALS
Article 57: Decisions subject to appeal
1. An appeal shall lie from decisions of the examiners, Opposition
Divisions, Administration of Trade Marks and Legal Devision and Cancellation Divisions.
It shall have suspensive effect.
2. A decision which does not terminate proceedings as
regards one of the parties can only be appealed together with the final decision,
unless the decision allows separate appeal.
Article 58: Persons entitled to appeal and to be parties
to appeal proceedings
Any party to proceedings adversely affected by a decision may appeal. Any other
parties to the proceedings shall be parties to the appeal proceedings as of
right.
Article 59: Time limit and form of appeal
Notice of appeal must be filed in writing at the Office
within two months after the date of notification of the decision appealed from.
The notice shall be deemed to have been filed only when the fee for appeal has
been paid. Within four months after the date of notification of the decision,
a written statement setting out the grounds of appeal must be filed.
Article 60: Revision of decisions
in ex parte cases
1. If the party which has lodged the
appeal is the sole party to the procedure, and if the department whose decision
is contested considers the appeal to be admissible and well founded, the department
shall rectify its decision43 .
2. If the decision is not rectified within one month after
receipt of the statement of grounds, the appeal shall be remitted to the Board
of Appeal without delay, and without comment as to its merit.
43Amended by Council
Regulation (EC) No 422/2004.
Article 60a:
Revision of decisions in inter partes cases 44
1. Where the party which
has lodged the appeal is opposed by another party and if the department whose
decision is contested considers the appeal to be admissible and well founded,
it shall rectify its decision.
2. The decision may only be rectified if the department whose decision is contested notifies the other party of its intention to rectify it, and that party accepts it within two months of the date on which it received the notification.
3. If, within two months of receiving the notification referred to in paragraph 2, the other party does not accept that the contested decision is to be rectified and makes a declaration to that effect or does not make any declaration within the period laid down, the appeal shall be remitted to the Board of Appeal without delay, and without comment as to its merit.
4. However, if the department whose decision
is contested does not consider the appeal to be admissible and well founded
within one month after receipt of the statement of grounds, it shall, instead
of taking the measures provided for in paragraphs 2 and 3, remit the appeal
to the Board of Appeal without delay, and without comment as to its merit.
44 Article 60a inserted
by Council Regulation (EC) No 422/2004.
Article 61: Examination of appeals
1. If the appeal is admissible, the Board of Appeal shall
examine whether the appeal is allowable.
2. In the examination of the appeal, the Board of Appeal
shall invite the parties, as often as necessary, to file observations, within
a period to be fixed by the Board of Appeal, on communications from the other
parties or issued by itself.
Article 62: Decisions in respect of appeals
1. Following the examination as to the allowability of the
appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may
either exercise any power within the competence of the department which was responsible
for the decision appealed or remit the case to that department for further prosecution.
2.
If the Board of Appeal remits the case for further prosecution to the department
whose decision was appealed, that department shall be bound by the ratio decidendi
of the Board of Appeal, in so far as the facts are the same.
3. The decisions of the Boards of Appeal shall take effect
only as from the date of expiration of the period referred to in Article 63
(5) or, if an action has been brought before the Court of Justice within that
period, as from the date of rejection of such action.
Article 63: Actions before the Court
of Justice
1. Actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals.
2. The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power.
3. The Court of Justice has jurisdiction to annul or to alter the contested decision.
4. The action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision.
5. The action shall be brought before the Court of Justice within two months of the date of notification of the decision of the Board of Appeal.
6. The Office shall be required to take the necessary
measures to comply with the judgment of the Court of Justice.
TITLE VIII: COMMUNITY
COLLECTIVE MARKS
Article 64: Community collective marks
1. A Community collective mark shall be a Community trade
mark which is described as such when the mark is applied for and is capable of
distinguishing the goods or services of the members of the association which is
the proprietor of the mark from those of other undertakings. Associations of manufacturers,
producers, suppliers of services, or traders which, under the terms of the law
governing them, have the capacity in their own name to have rights and obligations
of all kinds, to make contracts or accomplish other legal acts and to sue and
be sued, as well as legal persons governed by public law, may apply for Community
collective marks.
2. In derogation from Article 7 (1) (c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks within the meaning of paragraph 1. A collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name.
3. The provisions of this Regulation shall apply to Community
collective marks, unless Articles 65 to 72 provide otherwise.
Article 65: Regulations governing use of
the mark
1. An applicant for a Community collective mark must submit
regulations governing its use within the period prescribed.
2. The regulations governing use shall specify the persons
authorized to use the mark, the conditions of membership of the association
and, where they exist, the conditions of use of the mark including sanctions.
The regulations governing use of a mark referred to in Article 64 (2) must authorize
any person whose goods or services originate in the geographical area concerned
to become a member of the association which is the proprietor of the mark.
Article 66: Refusal of the application
1. In addition to the grounds for refusal of a Community
trade mark application provided for in Articles 36 and 38, an application for
a Community collective mark shall be refused where the provisions of Article 64
or 65 are not satisfied, or where the regulations governing use are contrary to
public policy or to accepted principles of morality.
2. An application for a Community collective mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a collective mark.
3. An application shall not be refused if the applicant,
as a result of amendment of the regulations governing use, meets the requirements
of paragraphs 1 and 2.
Article 67: Obervations by third parties
Apart from the cases mentioned in Article 41, any person,
group or body referred to in that Article may submit to the Office written observations
based on the particular grounds on which the application for a Community collective
mark should be refused under the terms of Article 66.
Article 68: Use of marks
Use of a Community collective mark by any person who has
authority to use it shall satisfy the requirements of this Regulation, provided
that the other conditions which this Regulation imposes with regard to the use
of Community trade marks are fulfilled.
Article 69: Amendment of the regulations
governing use of the mark
1. The proprietor of a Community collective mark must submit
to the Office any amended regulations governing use.
2. The amendment shall not be mentioned in the Register if the amended regulations do not satisfy the requirements of Article 65 or involve one of the grounds for refusal referred to in Article 66.
3. Article 67 shall apply to amended regulations governing use.
4. For the purposes of applying this Regulation, amendments
to the regulations governing use shall take effect only from the date of entry
of the mention of the amendment in the Register.
Article 70: Persons who are entitled to bring an action for infringement
1. The provisions of Article 22 (3) and (4) concerning the rights of licensees
shall apply to every person who has authority to use a Community collective
mark.
2. The proprietor of a Community collective mark shall
be entitled to claim compensation on behalf of persons who have authority to
use the mark where they have sustained damage in consequence of unauthorized
use of the mark.
Article 71: Grounds for revocation
Apart from the grounds for revocation provided for in Article 50, the rights
of the proprietor of a Community collective mark shall be revoked on application
to the Office or on the basis of a counterclaim in infringement proceedings,
if:
(a) the proprietor does not take reasonable steps to prevent the mark being used in a manner incompatible with the conditions of use, where these exist, laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register;
(b) the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in Article 66 (2);
(c) an amendment to the regulations governing use of the
mark has been mentioned in the Register in breach of the provisions of Article
69 (2), unless the proprietor of the mark, by further amending the regulations
governing use, complies with the requirements of those provisions.
Article 72: Grounds for invalidity
Apart from the grounds for invalidity provided for in Articles 51 and 52, a
Community collective mark which is registered in breach of the provisions of
Article 66 shall be declared invalid on application to the Office or on the
basis of a counterclaim in infringement proceedings, unless the proprietor of
the mark, by amending the regulations governing use, complies with the requirements
of those provisions.
TITLE
IX: PROCEDURE
SECTION 1: GENERAL PROVISIONS
Article 73: Statement of reasons on which decisions are
based
Decisions of the Office shall state the reasons on which
they are based. They shall be based only on reasons or evidence on which the
parties concerned have had on opportunity to present their comments.
Article 74: Examination of the facts by the Office of its own motion
1. In proceedings before it the Office shall examine the
facts of its own motion; however, in proceedings relating to relative grounds
for refusal of registration, the Office shall be restricted in this examination
to the facts, evidence and arguments provided by the parties and the relief
sought.
2. The Office may disregard facts or evidence which are
not submitted in due time by the parties concerned.
Article 75: Oral proceedings
1. If the Office considers that oral proceedings would
be expedient they shall be held either at the instance of the Office or at the
request of any party to the proceedings.
2. Oral proceedings before the examiners, the Opposition Division and the Administration of Trade Marks and Legal Division shall not be public.
3. Oral proceedings, including delivery of the decision,
shall be public before the Cancellation Division and the Boards of Appeal, in
so far as the department before which the proceedings are taking place does
not decide otherwise in cases where admission of the public could have serious
and unjustified disadvantages, in particular for a party to the proceedings.
Article 76: Taking of evidence
1. In any proceedings before the Office, the means of giving
or obtaining evidence shall include the following:
(a) hearing the parties;
(b) requests for information;
(c) the production of documents and items of evidence;
(d) hearing witnesses;
(e) opinions by experts;
(f) statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up.
2. The relevant department may commission one of its members to examine the evidence adduced.
3. If the Office considers it necessary for a party, witness or expert to give evidence orally, it shall issue a summons to the person concerned to appear before it.
4. The parties shall be informed of the hearing of a witness
or expert before the Office. They shall have the right to be present and to
put questions to the witness or expert.
Article 77: Notification
The Office shall, as a matter
of course, notify those concerned of decisions and summonses and of any notice
or other communication from which a time limit is reckoned, or of which those
concerned must be notified under other provisions of this Regulation
or of the Implementing Regulation, or of which notification has been ordered
by the President of the Office.
Article
77a: Revocation of decisions45
1. Where the Office has made an entry in
the Register or taken a decision which contains an obvious procedural error
attributable to the Office, it shall ensure that the entry is cancelled or the
decision is revoked. Where there is only one party to the proceedings and the
entry or the act affects its rights, cancellation or revocation shall be determined
even if the error was not evident to the party.
2. Cancellation or revocation as referred to in paragraph 1 shall be determined,
ex officio or at the request of one of the parties to the proceedings, by the
department which made the entry or took the decision.
Cancellation or revocation shall be determined within six months from the date
on which the entry was made in the Register or the decision was taken, after
consultation with the parties to the proceedings and any proprietor of rights
to the Community trade mark in question that are entered in the Register.
3. This Article shall be without prejudice to the right of the parties to submit
an appeal under Articles 57 and 63, or to the possibility, under the procedures
and conditions laid down by the Implementing Regulation referred to in Article
157(1), of correcting any linguistic errors or errors of transcription and obvious
errors in the Office's decisions or errors attributable to the Office in registering
the trade mark or in publishing its registration.
45 Article 77a inserted
by Council Regulation (EC) No 422/2004.This amendment shall apply when the necessary
implementing measures have been adopted.
Article 78: Restitutio in integrum
1. The applicant for or proprietor of a Community trade
mark or any other party to proceedings before the Office who, in spite of all
due care required by the circumstances having been taken, was unable to observe
a time limit vis-à-vis the Office shall, upon application, have
his rights re-established if the non-observance in question has the direct consequence,
by virtue of the provisions of this Regulation, of causing the loss of any right
or means of redress.
2. The application must be filed in writing within two months from the removal of the cause of non-compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time limit. In the case of non-submission of the request for renewal of registration or of non-payment of a renewal fee, the further period of six months provided in Article 47 (3), third sentence, shall be deducted from the period of one year.
3. The application must state the grounds on which it is based and must set out the facts on which it relies. It shall not be deemed to be filed until the fee for re-establishment of rights has been paid.
4. The department competent to decide on the omitted act shall decide upon the application.
5. The provisions of this Article shall not be applicable to the time limits referred to in paragraph 2 of this Article, Articles 42 (1) and (3) and Article 78a46.
6. Where the applicant for or proprietor of a Community trade mark has his rights re-established, he may not invoke his rights vis-à-vis a third party who, in good faith, has put goods on the market or supplied services under a sign which is identical with or similar to the Community trade mark in the course of the period between the loss of rights in the application or in the Community trade mark and publication of the mention of re-establishment of those rights.
7. A third party who may avail himself of the provisions of paragraph 6 may bring third party proceedings against the decision re-establishing the rights of the applicant for or proprietor of a Community trade mark within a period of two months as from the date of publication of the mention of re-establishment of those rights.
8. Nothing in this Article shall limit the right of a
Member State to grant restitutio in integrum in respect of time limits provided
for in this Regulation and to be observed vis-à-vis the authorities of
such State.
46 Amended by Council
Regulation (EC) No 422/2004.
Article
78a: Continuation of proceedings47
1. An applicant for or proprietor of a Community trade mark or any other party
to proceedings before the Office who has omitted to observe a time limit vis-à-vis
the Office may, upon request, obtain the continuation of proceedings, provided
that at the time the request is made the omitted act has been carried out. The
request for continuation of proceedings shall be admissible only if it is presented
within two months following the expiry of the unobserved time limit. The request
shall not be deemed to have been filed until the fee for continuation of the
proceedings has been paid.
2. This Article shall not be applicable to the time limits laid down in Article
25(3), Article 27, Article 29(1), Article 33(1), Article 36(2), Article 42,
Article 43, Article 47(3), Article 59, Article 60a, Article 63(5), Article 78,
Article 108, or to the time limits laid down in this Article or the time limits
laid down by the Implementing Regulation referred to in Article 157(1) for claiming
priority within the meaning of Article 30, exhibition priority within the meaning
of Article 33 or seniority within the meaning of Article 34 after the application
has been filed.
3. The department competent to decide on
the omitted act shall decide upon the application.
4. If the Office accepts the application, the consequences of having failed
to observe the time limit shall be deemed not to have occurred.
5. If the Office rejects the application,
the fee shall be refunded.
47Article 78a inserted by Council Regulation
(EC) No 422/2004.This amendment shall apply when the necessary implementing
measures have been adopted.
Article 79: Reference to general principles
In the absence of procedural provisions in this Regulation,
the Implementing Regulation, the fees regulations or the rules of procedure
of the Boards of Appeal, the Office shall take into account the principles of
procedural law generally recognized in the Member States.
Article 80: Termination of financial obligations
1. Rights of the Office to the payment of a fee shall be
extinguished after four years from the end of the calendar year in which the
fee fell due.
2. Rights against the Office for the refunding of fees or sums of money paid in excess of a fee shall be extinguished after four years from the end of the calendar year in which the right arose.
3. The period laid down in paragraphs 1 and 2 shall be
interrupted in the case covered by paragraph 1 by a request for payment of the
fee and in the case covered by paragraph 2 by a reasoned claim in writing. On
interruption it shall begin again immediately and shall end at the latest six
years after the end of the year in which it originally began, unless, in the
meantime, judicial proceedings to enforce the right have begun; in this case
the period shall end at the earliest one year after the judgement has acquired
the authority of a final decision.
SECTION 2: COSTS
Article 81: Costs
1. The losing party in opposition proceedings, proceedings
for revocation, proceedings for a declaration of invalidity or appeal proceedings
shall bear the fees incurred by the other party as well as all costs, without
prejudice to Article 115 (6), incurred by him essential to the proceedings,
including travel and subsistence and the remuneration of an agent, adviser or
advocate, within the limits of the scales set for each category of costs under
the conditions laid down in the Implementing Regulation.
2. However, where each party succeeds on some and fails on other heads, or if reasons of equity so dictate, the Opposition Division, Cancellation Division or Board of Appeal shall decide a different apportionment of costs.
3. The party who terminates the proceedings by withdrawing the Community trade mark application, the opposition, the application for revocation of rights, the application for a declaration of invalidity or the appeal, or by not renewing registration of the Community trade mark or by surrendering the Community trade mark, shall bear the fees and the costs incurred by the other party as stipulated in paragraphs 1 and 2.
4. Where a case does not proceed to judgment the costs shall be at the discretion of the Opposition Division, Cancellation Division or Board of Appeal.
5. Where the parties conclude before the Opposition Division, Cancellation Division or Board of Appeal a settlement of costs differing from that provided for in the preceding paragraphs, the department concerned shall take note of that agreement.
6. On request the registry of the Opposition Division
or Cancellation Division or Board of Appeal shall fix the amount of the costs
to be paid pursuant to the preceding paragraphs. The amount so determined may
be reviewed by a decision of the Opposition Division or Cancellation Division
or Board of Appeal on a request filed within the prescribed period.
6. The Opposition Division or Cancellation
Division or Board of Appeal shall fix the amount of the costs to be paid pursuant
to the preceding paragraphs when the costs to be paid are limited to the fees
paid to the Office and the representation costs. In all other cases, the registry
of the Board of Appeal or a member of the staff of the Opposition Division or
Cancellation Division shall fix the amount of the costs to be reimbursed on
request. The request is admissible only within two months of the date on which
the decision for which an application was made for the costs to be fixed became
final. The amount so determined may be reviewed by a decision of the Opposition
Division or Cancellation Division or Board of Appeal on a request filed within
the prescribed period48.
48 Amended by Council
Regulation (EC) No 422/2004.This amendment shall apply when the necessary implementing
measures have been adopted.
Article 82: Enforcement of decisions fixing the amount of costs
1. Any final decision of the Office fixing the amount of
costs shall be enforceable.
2. Enforcement shall be governed by the rules of civil procedure in force in the State in the territory of which it is carried out. The order for its enforcement shall be appended to the decision, without other formality than verification of the authenticity of the decision, by the national authority which the Government of each Member State shall designate for this purpose and shall make known to the Office and to the Court of Justice.
3. When these formalities have been completed on application by the party concerned, the latter may proceed to enforcement in accordance with the national law, by bringing the matter directly before the competent authority.
4. Enforcement may be suspended only by a decision of
the Court of Justice. However, the courts of the country concerned shall have
jurisdiction over complaints that enforcement is being carried out in an irregular
manner.
SECTION 3: INFORMATION
OF THE PUBLIC AND OF THE OFFICIAL AUTHORITIES OF THE MEMBER STATES
Article 83: Register of Community trade marks
The Office shall keep a register to the known as the Register
of Community trade marks, which shall contain those particulars the registration
or inclusion of which is provided for by this Regulation or by the Implementing
Regulation. The Register shall be open to public inspection.
Article 84: Inspection of files
1. The files relating to Community trade mark applications which have not yet
been published shall not be made available for inspection without the consent
of the applicant.
2. Any person who can prove that the applicant for a Community trade mark has stated that after the trade mark has been registered he will invoke the rights under it against him may obtain inspection of the files prior to the publication of that application and without the consent of the applicant.
3. Subsequent to the publication of the Community trade mark application, the files relating to such application and the resulting trade mark may be inspected on request.
4. However, where the files are inspected pursuant to
paragraph 2 or 3, certain documents in the file may be withheld from inspection
in accordance with the provisions of the Implementing Regulation.
Article 85: Periodical publications
The Office shall periodically publish:
(a) a Community Trade Marks Bulletin containing entries made in the Register of Community trade marks as well as other particulars the publication of which is prescribed by this Regulation or by the Implementing Regulation;
(b) an Official Journal containing notices and information
of a general character issued by the President of the Office, as well as any
other information relevant to this Regulation or its implementation.
Article 86: Administrative cooperation
Unless otherwise provided in this Regulation or in national laws, the Office
and the courts or authorities of the Member States shall on request give assistance
to each other by communicating information or opening files for inspection.
Where the Office lays files open to inspection by courts, Public Prosecutors
Offices or central industrial property offices, the inspection shall not be
subject to the restrictions laid down in Article 84.
Article 87: Exchange of publications
1. The Office and the central industrial property offices
of the Member States shall despatch to each other on request and for their own
use one or more copies of their respective publications free of charge.
2. The Office may conclude agreements relating to the exchange or supply of
publications.
SECTION 4: REPRESENTATION
Article 88: General principles of representation
1. Subject to the provisions of paragraph 2, no person shall be compelled to
be represented before the Office.
2. Without prejudice to paragraph 3, second sentence, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial estab lishment in the Community must be represented before the Office in ac cordance with Article 89 (1) in all proceedings established by this Regulation, other than in filing an application for a Community trade mark; the Implementing Regulation may permit other exceptions.
3. Natural or legal persons having their domicile or principal
place of business or a real and effective industrial or commercial estab lishment
in the Community may be represented before the Office by an employee, who
must file with it a signed authorization for insertion on the files, the details
of which are set out in the Implementing Regulation49.
An employee of a legal person to which this paragraph applies may also represent
other legal persons which have economic connections with the first legal person,
even if those other legal persons have neither their domicile nor their principal
place of business nor a real and effective industrial or commercial establishment
within the Community.
4. The Implementing Regulation shall
specify whether and under what conditions an employee must file with the Office
a signed authorization for insertion on the file50.
49Amended by Council
Regulation (EC) No 422/2004.This amendment shall apply when the necessary implementing
measures have been adopted.
50Amended by Council
Regulation (EC) No 422/2004.This amendment shall apply when the necessary implementing
measures have been adopted.
Article 89: Professional representatives
1. Representation of natural or legal persons before the
Office may only be undertaken by;
(a) any legal practitioner qualified in one of the Member States and having his place of business within the Community, to the extent that he is entitled, within the said State, to act as a representative in trade mark matters; or
(b) professional representatives whose names appear on the list
maintained for this purpose by the Office. Representatives acting before
the Office must file with it a signed authorization for insertion on the files,
the details of which are set out in the Implementing Regulation. The
Implementing Regulation shall specify whether and under what conditions the
representatives before the Office must file with the Office a signed authorization
for insertion on the file51.
2. Any natural person who fulfils the following conditions may be entered on the list of professional representatives:
(a) he must be a national of one of the Member States;
(b) he must have his place of business or employment in the Community;
(c) he must be entitled to represent natural or legal persons
in trade mark matters before the central industrial property office of the Member
State in which he has his place of business or employment52.
Where, in that State, the entitlement is not conditional upon the requirement
of special professional qualifications, per sons applying to be entered on the
list who act in trade mark matters before the central industrial property office
of the said State must have habitually so acted for at least five years. However,
persons whose professional qualification to represent natural or legal persons
in trade mark matters before the central industrial property office of one of
the Member States is officially recognized in accordance with the regulations
laid down by such State shall not be subject to the condition of having exercised
the profession.
3. Entry shall be effected upon request, accompanied by a certificate furnished by the central industrial property office of the Member State concerned, which must indicate that the conditions laid down in paragraph 2 are fulfilled.
4. The President of the Office may grant exemption from:
(a) the requirement of paragraph 2 (c), second sentence, if the applicant furnishes proof that he has acquired the requisite qualification in another way;
(b) the requirement of paragraph 2 (a) in special circumstances.
5. The conditions under which a person may be removed
from the list of professional representatives shall be laid down in the Implementing
Regulation.
51 Amended by Council
Regulation (EC) No 422/2004.This amendment shall apply when the necessary implementing
measures have been adopted.
52Amended by Council
Regulation (EC) No 422/2004.This amendment shall apply when the necessary implementing
measures have been adopted.
TITLE X: JURISDICTION
AND PROCEDURE IN LEGAL ACTIONS RELATING TO COMMUNITY TRADE MARKS
SECTION 1: APPLICATION OF THE CONVENTION ON JURISDICTION AND ENFORCEMENT
Article 90: Application of the Convention on Jurisdiction and Enforcement
1. Unless otherwise specified in this Regulation, the Convention on Jurisdiction
and the Enforcement of Judgments in Civil and Commercial Matters, signed in
Brussels on 27 September 1968, as amended by the Conventions on the Accession
to that Convention of the States acceding to the European Communities, the whole
of which Convention and of which Conventions of Accession are hereinafter referred
to as the "Convention on Jurisdiction and Enforcement", shall apply
to proceedings relating to Community trade marks and applications for Community
trade marks, as well as to proceedings relating to simultaneous and successive
actions on the basis of Community trade marks and national trade marks.
2. In the case of proceedings in respect of the actions and claims referred to in Article 92:
(a) Articles 2, 4, 5 (1), (3), (4) and (5) and Article 24 of the Convention on Jurisdiction and Enforcement shall not apply;
(b) Articles 17 and 18 of that Convention shall apply subject to the limitations in Article 93 (4) of this Regulation;
(c) the provisions of Title II of that Convention which
are applicable to persons domiciled in a Member State shall also be applicable
to persons who do not have a domicile in any Member State but have an establishment
therein.
SECTION 2: DISPUTES CONCERNING THE INFRINGEMENT AND VALIDITY
OF COMMUNITY TRADE MARKS
Article 91: Community trade mark courts
1. The Member States shall designate in their territories as limited a number
as possible of national courts and tribunals of first and second instance, hereinafter
referred to as "Community trade mark courts", which shall perform
the functions assigned to them by this Regulation.
2. Each Member State shall communicate to the Commission within three years of the entry into force of this Regulation a list of Community trade mark courts indicating their names and their territorial jurisdiction.
3. Any change made after communication of the list referred to in paragraph 2 in the number, names or territorial jurisdiction of the courts shall be notified without delay by the Member State concerned to the Commission.
4. The information referred to in paragraphs 2 and 3 shall be notified by the Commission to the Member States and published in the Official Journal of the European Communities.
5. As long as a Member State has not communicated the
list as stipulated in paragraph 2, jurisdiction for any proceedings resulting
from an action or application covered by Article 92, and for which the courts
of that State have jurisdiction under Article 93, shall lie with that court
of the State in question which would have jurisdiction ratione loci and ratione
materiae in the case of proceedings relating to a national trade mark registered
in that State.
Article 92: Jurisdiction over infringement and validity
The Community trade mark courts shall have exclusive jurisdiction:
(a) for all infringement actions and - if they are permitted under national law - actions in respect of threatened infringement relating to Community trade marks;
(b) for actions for declaration of non-infringement, if they are permitted under national law;
(c) for all actions brought as a result of acts referred to in Article 9 (3), second sentence;
(d) for counterclaims for revocation or for a declaration
of invalidity of the Community trade mark pursuant to Article 96.
Article 93: International jurisdiction
1. Subject to the provisions of this Regulation as well
as to any provisions of the Convention on Jurisdiction and Enforcement applicable
by virtue of Article 90, proceedings in respect of the actions and claims referred
to in Article 92 shall be brought in the courts of the Member State in which
the defendant is domiciled or, if he is not domiciled in any of the Member States,
in which he has an establishment.
2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.
3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat.
4. Notwithstanding the provisions of paragraphs 1, 2 and 3:
(a) Article 17 of the Convention on Jurisdiction and Enforcement shall apply if the parties agree that a different Community trade mark court shall have jurisdiction;
(b) Article 18 of that Convention shall apply if the defendant enters an appearance before a different Community trade mark court.
5. Proceedings in respect of the actions and claims referred
to in Article 92, with the exception of actions for a declaration of non-infringement
of a Community trade mark, may also be brought in the courts of the Member State
in which the act of infringement has been committed or threatened, or in which
an act within the meaning of Article 9 (3), second sentence, has been committed.
Article 94: Extent of jurisdiction
1. A Community trade mark court whose jurisdiction is based on Article 93 (1)
to (4) shall have jurisdiction in respect of:
- acts of infringement committed or threatened within the territory of any of the Member States,
- acts within the meaning of Article 9 (3), second sentence, committed within the territory of any of the Member States.
2. A Community trade mark court whose jurisdiction is
based on Article 93 (5) shall have jurisdiction only in respect of acts committed
or threatened within the territory of the Member State in which that court is
situated.
Article 95: Presumption of validity - Defence as to the merits
1. The Community trade mark courts shall treat the Community trade mark as valid unless its validity is put in issue by the defendant with a counterclaim for revocation or for a declaration of invalidity.
2. The validity of a Community trade mark may not be put in issue in an action for a declaration of non-infringement.
3. In the actions referred to in Article 92 (a) and (c)
a plea relating to revocation or invalidity of the Community trade mark submitted
otherwise than by way of a counterclaim shall be admissible in so far as the
defendant claims that the rights of the proprietor of the Community trade mark
could be revoked for lack of use or that Community trade mark could be declared
invalid on account of an earlier right of the defendant.
Article 96: Counterclaims
1. A counterclaim for revocation or for a declaration of invalidity may only
be based on the grounds for revocation or invalidity mentioned in this Regulation.
2. A Community trade mark court shall reject a counterclaim for revocation or for a declaration of invalidity if a decision taken by the Office relating to the same subject matter and cause of action and involving the same parties has already become final.
3. If the counterclaim is brought in a legal action to which the proprietor of the trade mark is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the conditions set out in national law.
4. The Community trade mark court with which a counterclaim for revocation or for a declaration of invalidity of the Community trade mark has been filed shall inform the Office of the date on which the counterclaim was filed. The latter shall record this fact in the Register of Community trade marks.
5. Article 56 (2) to (5)53 shall apply.
6. Where a Community trade mark court has given a judgment which has become final on a counterclaim for revocation or for invalidity of a Community trade mark, a copy of the judgment shall be sent to the Office. Any party may request information about such transmission. The Office shall mention the judgment in the Register of Community trade marks in accordance with the provisions of the Implementing Regulation.
7. The Community trade mark court hearing a counterclaim
for revocation or for a declaration of invalidity may stay the proceedings on
application by the proprietor of the Community trade mark and after hearing
the other parties and may request the defendant to submit an application for
revocation or for a declaration of invalidity to the Office within a time limit
which it shall determine. If the application is not made within the time limit,
the proceedings shall continue; the counterclaim shall be deemed withdrawn.
Article 100 (3) shall apply.
53Amended by Council
Regulation (EC) No 422/2004.
Article 97: Applicable law
1. The Community trade mark courts shall apply the provisions of this Regulation.
2. On all matters not covered by this Regulation a Community trade mark court shall apply its national law, including its private international law.
3. Unless otherwise provided in this Regulation, a Community
trade mark court shall apply the rules of procedure governing the same type
of action relating to a national trade mark in the Member State where it has
its seat.
Article 98: Sanctions
1. Where a Community trade mark court finds that the defendant has infringed
or threatened to infringe a Community trade mark, it shall, unless there are
special reasons for not doing so, issue an order prohibiting the defendant from
proceeding with the acts which infringed or would infringe the Community trade
mark. It shall also take such measures in accordance with its national law as
are aimed at ensuring that this prohibition is complied with.
2. In all other respects the Community trade mark court
shall apply the law of the Member State to which the acts of infringement or
threatened infringement were committed, including the private international
law.
Article 99: Provisional and protective measures
1. Application may be made to the courts of a Member State,
including Community trade mark courts, for such provisional, including protective,
measures in respect of a Community trade mark or Community trade mark application
as may be available under the law of that State in respect of a national trade
mark, even if, under this Regulation, a Community trade mark court of another
Member State has jurisdiction as to the substance of the matter.
2. A Community trade mark court whose jurisdiction is
based on Article 93 (1), (2), (3) or (4) shall have jurisdiction to grant provisional
and protective measures which, subject to any necessary procedure for recognition
and enforcement pursuant to Title III of the Convention on Jurisdiction and
Enforcement, are applicable in the territory of any Member State. No other court
shall have such jurisdiction.
Article 100: Specific rules on related actions
1. A Community trade mark court hearing an action referred to in Article 92,
other than an action for a declaration of non-infringement shall, unless there
are special grounds for continuing the hearing, of its own motion after hearing
the parties or at the request of one of the parties and after hearing the other
parties, stay the proceedings where the validity of the Community trade mark
is already in issue before another Community trade mark court on account of
a counterclaim or where an application for revocation or for a declaration of
invalidity has already been filed at the Office.
2. The Office, when hearing an application for revocation or for a declaration of invalidity shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is adready in issue on account of a counterclaim before a Community trade mark court. However, if one of the parties to the proceedings before the Community trade mark court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings pending before it.
3. Where the Community trade mark court stays the proceedings
it may order provisional and protective measures for the duration of the stay.
Article 101: Jurisdiction of Community trade mark courts of second instance
- Further appeal
1. An appeal to the Community trade mark courts of second instance shall lie
from judgments of the Community trade mark courts of first instance in respect
of proceedings arising from the actions and claims referred to in Article 92.
2. The conditions under which an appeal may be lodged with a Community trade mark court of second instance shall be determined by the national law of the Member State in which that court is located.
3. The national rules concerning further appeal shall
be applicable in respect of judgments of Community trade mark courts of second
instance.
SECTION 3: OTHER
DISPUTES CONCERNING COMMUNITY TRADE MARKS
Article 102: Supplementary provisions on the jurisdiction of national courts
other than Community trade mark courts
1. Within the Member State whose courts have jurisdiction
under Article 90 (1) those courts shall have jurisdiction for actions other
than those referred to in Article 92, which would have jurisdiction ratione
loci and ratione materiae in the case of actions relating to a national
trade mark registered in that State.
2. Actions relating to a Community trade mark, other than
those referred to in Article 92, for which no court has jurisdiction under Article
90 (1) and paragraph 1 of this Article may be heard before the courts of the
Member State in which the Office has its seat.
Article 103: Obligation of the national court
A national court which is dealing with an action relating to a Community trade
mark, other than the action referred to in Article 92, shall treat the trade
mark as valid.
SECTION 4: TRANSITIONAL PROVISION
Article 104: Transitional provision relating to the application of the Convention
on Jurisdiction and Enforcement
The provisions of the Convention on Jurisdiction
and Enforcement which are rendered applicable by the preceding Articles shall
have effect in respect of any Member State solely in the text of the Convention
which is in force in respect of that State at any given time.
(a) the court other than the court first seized shall of its own motion de cline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical goods or services. The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested;
(b) the court other than the court first seized may stay its proceedings where the trade marks concerned are identical and valid for similar goods or services and where the trade marks concerned are similar and valid for identical or similar goods or services.
2. The court hearing an action for infringement on the basis of a Community trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical national trade mark valid for identical goods or services.
3. The court hearing an action for infringement on the basis of a national trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical Community trade mark valid for identical goods or services.
4. Paragraphs 1, 2 and 3 shall not apply in respect of
provisonal, including protective, measures.
SECTION 2: APPLICATION OF NATIONAL
LAWS FOR THE PURPOSE OF PROHIBITING THE USE OF COMMUNITY TRADE MARKS
Article 106: Prohibition of use of Community trade marks
1. This Regulation shall, unless otherwise provided for, not affect the right
existing under the laws of the Member States to invoke claims for infringement
of earlier rights within the meaning of Article 8 or Article 52 (2) in relation
to the use of a later Community trade mark. Claims for infringement of earlier
rights within the meaning of Article 8 (2) and (4) may, however, no longer be
invoked if the proprietor of the earlier right may no longer apply for a declaration
that the Community trade mark is invalid in accordance with Article 53 (2).
2. This Regulation shall, unless otherwise provided for,
not affect the right to bring proceedings under the civil, administrative or
criminal law of a Member Sate or under provisions of Community law for the purpose
of prohibiting the use of a Community trade mark to the extent that the use
of a national trade mark may be prohibited under the law of that Member State
or under Community law.
Article 107: Prior rights applicable to particular localities
1. The proprietor of an earlier right which only applies
to a particular locality may oppose the use of the Community trade mark in the
territory where his right is protected in so far as the law of the Member State
concerned so permits.
2. Paragraph 1 shall cease to apply if the proprietor of the earlier right has acquiesced in the use of the Community trade mark in the territory where his right is protected for a period of five successive years, being aware of such use, unless the Community trade mark was applied for in bad faith.
3. The proprietor of the Community trade mark shall not
be entitled to oppose use of the right referred to in paragraph 1 even though
that right may no longer be invoked against the Community trade mark.
SECTION 3: CONVERSION INTO A NATIONAL TRADE MARK APPLICATION
Article 108: Request for the application of national procedure
1. The applicant for or proprietor of a Community trade
mark may request the conversion of his Community trade mark application or Community
trade mark into a national trade mark application
(a) to the extent that the Community trade mark application is refused, withdrawn, or deemed to be withdrawn;
(b) to the extent that the Community trade mark ceases to have effect.
2. Conversion shall not take place:
(a) where the rights of the proprietor of the Community trade mark have been revoked on the grounds of non-use, unless in the Member State for which conversion is requested the Community trade mark has been put to use which would be considered to be genuine use under the laws of that Member State;
(b) for the purpose of protection in a Member State in which, in accordance with the decision of the Office or of the national court, grounds for refusal of registration or grounds for revocation or invalidity apply to the Community trade mark application or Community trade mark.
3. The national trade mark application resulting from the conversion of a Community trade mark application or a Community trade mark shall enjoy in respect of the Member State concerned the date of filing or the date of priority of that application or trade mark and, where appropriate, the seniority of a trade mark of that State claimed under Article 34 or 35.
4. In cases where a Community trade mark application is deemed to be withdrawn, the Office shall send to the applicant a communication fixing a period of three months from the date of that communication in which a request for conversion may be filed.
5. Where the Community trade mark application is withdrawn or the Community trade mark ceases to have effect as a result of a surrender being recorded or of failure to renew the registration, the request for conversion shall be filed within three months after the date on which the Community trade mark application has been withdrawn or on which the Community trade mark ceases to have effect.
6. Where the Community trade mark application is refused by decision of the Office or where the Community trade mark ceases to have effect as a result of a decision of the Office or of a Community trade mark court, the request for conversion shall be filed within three months after the date on which that decision acquired the authority of a final decision 54.
7. The effect referred to in Article 32 shall lapse if
the request is not filed in due time.
54Art. 108 (4) (5) (6)
amended by Council Regulation (EC) No 422/2004.
Article 109: Submission, publication and transmission of the request for conversion
1. A request for conversion shall be filed with the Office
and shall specify the Member States in which application of the procedure for
registration of a national trade mark is desired. The request shall not be deemed
to be filed until the conversion fee has been paid.
2. If the Community trade mark application has been published, receipt of any such request shall be recorded in the Register of Community trade marks and the request for conversion shall be published.
3. The Office shall check whether
the conversion requested fulfils the conditions set out in this Regulation,
in particular Article 108(1), (2), (4), (5) and (6), and paragraph 1 of this
Article, together with the formal conditions laid down in the Implementing Regulation.
If these conditions are fulfilled, the Office shall transmit the request for
conversion to the industrial property offices of the Member States specified
therein55.
55Amended by Council
Regulation (EC) No 422/2004.
Article 110: Formal requirements for conversion
1. Any central industrial property
office to which the request for conversion is transmitted may obtain from the
Office any additional information concerning the request enabling that office
to make a decision regarding the national trade mark resulting from the conversion56.
2. A Community trade mark application or a Community trade mark transmitted in accordance with Article 109 shall not be subjected to formal requirements of national law which are different from or additional to those provided for in this Regulation or in the Implementing Regulation.
3. Any central industrial property office to which the request is transmitted may require that the applicant shall, within not less than two months:
(a) pay the national application fee;
(b) file a translation in one of the official languages of the State in question of the request and of the documents accompanying it;
(c) indicate an address for service in the State in question;
(d) supply a representation of the trade mark in the number
of copies specified by the State in question.
56Amended by Council
Regulation (EC) No 422/2004.
TITLE XII: THE OFFICE
SECTION 1: GENERAL PROVISIONS
Article 111: Legal status
1. The Office shall be a body of the Community. It shall have legal personality.
2. In each of the Member States the Office shall enjoy the most extensive legal capacity accorded to legal persons under their laws; it may, in particular, acquire or dispose of movable and immovable property and may be a party to legal proceedings.
3. The Office shall be represented by its President.
Article 112: Staff
1. The Staff Regulations of officials of the European Communities, the Conditions
of Employment of other servants of the European Com munities, and the rules
adopted by agreement between the Institutions of the European Communities for
giving effect to those Staff Regulations and Conditions of Employment shall
apply to the staff of the Office, without prejudice to the application of Article
131 to the members of the Boards of Appeal.
2. Without prejudice to Article 120, the powers conferred
on each Institution by the Staff Regulations and by the Conditions of Employment
of other servants shall be exercised by the Office in respect of its staff.
Article 113: Privileges and immunities
The Protocol on the Privileges and Immunities of the European Communities shall
apply to the Office.
Article 114: Liability
1. The contractual liability of the Office shall be governed
by the law applicable to the contract in question.
2. The Court of Justice shall be competent to give judgment pursuant to any arbitration clause contained in a contract concluded by the Office.
3. In the case of non-contractual liability, the Office shall, in accordance with the general principles common to the laws of the Member States, make good any damage caused by its departments or by its servants in the performance of their duties.
4. The Court of Justice shall have jurisdiction in disputes relating to compensation for the damage referred to in paragraph 3.
5. The personal liability of its servants towards the
Office shall be governed by the provisions laid down in their Staff Regulations
or in the Conditions of Employment applicable to them.
Article 115: Languages
1. The application for a Community trade mark shall be filed in one of the official
languages of the European Community.
2. The languages of the Office shall be English, French, German, Italian and Spanish.
3. The applicant must indicate a second language which shall be a language of the Office the use of which he accepts as a possible language of proceedings for opposition, revocation or invalidity proceedings.
If the application was filed in a language which is not one of the languages of the Office, the Office shall arrange to have the application, as described in Article 26 (1), translated into the language indicated by the applicant.
4. Where the applicant for a Community trade mark is the sole party to proceedings before the Office, the language of proceedings shall be the language used for filing the application for a Community trade mark. If the application was made in a language other than the languages of the Office, the Office may send written communications to the applicant in the second language indicated by the applicant in his application.
5. The notice of opposition and an application for revocation or invalidity shall be filed in one of the languages of the Office.
6. If the language chosen, in accordance with paragraph 5, for the notice of opposition or the application for revocation or invalidity is the language of the application for a trade mark or the second language indicated when the application was filed, that language shall be the language of the proceedings.
If the language chosen, in accordance with paragraph 5, for the notice of opposition or the application for revocation or invalidity is neither the language of the application for a trade mark nor the second language indicated when the application was filed, the opposing party or the party seeking revocation or invalidity shall be required to produce, at his own expense, a translation of his application either into the language of the application for a trade mark, provided that it is a language of the Office, or into the second language indicated when the application was filed. The translation shall be produced within the period prescribed in the implementing regulation. The language into which the application has been translated shall then become the language of the proceedings.
7. Parties to opposition, revocation, invalidity or appeal
proceedings may agree that a different official language of the European Community
is to be the language of the proceedings.
Article 116: Publication; entries in the Register
1. An application for a Community trade mark, as
described in Article 26 (1), and all other information the publication of which
is prescribed by this Regulation or the implementing regulation, shall be published
in all the official languages of the European Community.
2. All entries in the Register of Community trade marks shall be made in all the official languages of the European Community.
3. In cases of doubt, the text in the language of the
Office in which the application for the Community trade mark was filed shall
be authentic. If the application was filed in an official language of the European
Community other than one of the languages of the Office, the text in the second
language indicated by the applicant shall be authentic.
Article 117: Translation Centre57
The translation services required for the functioning of
the Office shall be provided by the Translation Centre of the Bodies of the
Union once this begins operation.
57This title does
not form part of the official text.
Article 118: Control of legality
1. The Commission shall check the legality of those acts of the President of
the Office in respect of which Community law does not provide for any check
on legality by another body and of acts of the Budget Committee attached to
the Office pursuant to Article 133.
2. It shall require that any unlawful acts as referred to in paragraph 1 be altered or annulled.
3. Member States and any person directly and personally
involved may refer to the Commission any act as referred to in paragraph 1,
whether express or implied, for the Commission to examine the legality of that
act. Referral shall be made to the Commission within one
month58 of the day on which the party
concerned first became aware of the act in question. The Commission shall take
a decision within three59
months. If no decision has been taken within this period, the case shall be
deemed to have been dismissed.
58Amended by Council
Regulation (EC) No 422/2004.
59Amended by Council
Regulation (EC) No 422/2004.
Article 118a: Access to documents60
1. Regulation (EC) No 1049/2001 of the European Parliament and of the Council
of 30 May 2001 regarding access to European Parliament, Council and Commission
documents61 shall apply to documents held by
the Office.
2. The Administrative Board shall adopt the practical arrangements for implementing
Regulation (EC) No 1049/2001 within six months of entry into force of Regulation
(EC) No 1653/2003 of 18 June 2003 amending Regulation (EC) No 40/94 on the Community
trade mark 62.
3. Decisions taken by the Office pursuant to Article 8 of Regulation (EC) No
1049/2001 may give rise to the lodging of a complaint to the Ombudsman or form
the subject of an action before the Court of Justice of the European Communities,
under the conditions laid down in Articles 195 and 230 of the Treaty respectively.
60Article 118a added
by Council Regulation (EC) No 1653/2003.
61OJ L 145, 31.5.2001,
p. 43.
62 OJ L 245, 29.9.2003,
p. 36.
SECTION 2: MANAGEMENT
OF THE OFFICE
Article 119: Powers of the President
1. The Office shall be managed by the President.
2. To this end the President shall have in particular the following functions and powers:
(a) he shall take all necessary steps, including the adoption of internal administrative instructions and the publication of notices, to ensure the functioning of the Office;
(b) he may place before the Commission any proposal to amend this Regulation, the Implementing Regulation, the rules of procedure of the Boards of Appeal, the fees regulations and any other rules applying to Community trade marks after consulting the Administrative Board and, in the case of the fees regulations and the budgetary provisions of this Regulation, the Budget Committee;
(c) he shall draw up the estimates of the revenue and expenditure of the Office and shall implement the budget;
(d) he shall submit a management report to the Commission, the European Parliament and the Administrative Board each year;
(e) he shall exercise in respect of the staff the powers laid down in Article 112 (2);
(f) he may delegate his powers.
3. The President shall be assisted by one or more Vice-Presidents.
If the President is absent or indisposed, the Vice-President or one of the Vice-Presidents
shall take his place in accordance with the procedure laid down by the Administrative
Board.
Article 120: Appointment of senior officials
1. The President of the Office shall be appointed by the Council from a list
of at most three candidates, which shall be prepared by the Administrative Board.
Power to dismiss the President shall lie with the Council, acting on a proposal
from the Administrative Board.
2. The term of office of the President shall not exceed five years. This term of office shall be renewable.
3. The Vice-President or Vice-Presidents of the Office shall be appointed or dismissed as in paragraph 1, after consultation of the President.
4. The Council shall exercise disciplinary authority over
the officials referred to in paragraphs 1 and 3 of this Article.
SECTION 3: ADMINISTRATIVE BOARD
Article 121: Creation and powers
1. An Administrative Board is hereby set up, attached to
the Office. Without prejudice to the powers attributed to the Budget Committee
in Section 5 " budget and financial control" the Administrative Board
shall have the powers defined below.
2. The Administrative Board shall draw up the lists of candidates provided for in Article 120.
3. It shall fix the date for the first filing of Community trade mark applications, pursuant to Article 143 (3).
4. It shall advise the President on matters for which the Office is responsible.
5. It shall be consulted before adoption of the guidelines for examination in the Office and in the other cases provided for in this Regulation.
6. It may deliver opinions and requests for information
to the Presidnt and to the Commission where it considers that this is necessary.
Article 122: Composition
1. The Administrative Board shall be composed of one representative of each
Member State and one representative of the Commission and their alternates.
2. The members of the Admini strative Board may, subject
to the pro visions of its rules of procedure, be assisted by advisers or experts.
Article 123: Chairmanship
1. The Administrative Board shall elect a chairman and
a deputy chairman from among its members. The deputy chairman shall ex officio
replace the chairman in the event of his being prevented from attending to his
duties.
2. The duration of the terms of office of the chairman
and the deputy chairman shall be three years. The terms of office shall be renewable.
Article 124: Meetings
1. Meetings of the Administrative Board shall be convened
by its chairman.
2. The President of the Office shall take part in the deliberations, unless the Administrative Board decides otherwise.
3. The Administrative Board shall hold an ordinary meeting once a year; in addition, it shall meet on the initiative of its chairman or at the request of the Commission or of one-third of the Member States.
4. The Administrative Board shall adopt rules of procedure.
5. The Administrative Board shall take its decisions by a simple
majority of the representatives of the Member States. However, a majority of
three-quarters of the representatives of the Member States shall be required
for the decisions which the Administrative Board is empowered to take under
Article 120 (1) and (3). In both cases each Member State shall have one vote.
6. The Administrative Board may invite observers to attend its meetings.
7. The Secretariat for the Ad ministrative Board shall
be provided by the Office.
SECTION 4: IMPLEMENTATION OF PROCEDURES
Article 125: Competence
For taking decisions in connection with the procedures
laid down in this Regulation, the following shall be competent:
(a) Examiners;
(b) Opposition Divisions;
(c) an Administration of Trade Marks and Legal Division;
(d) Cancellation Divisions;
(e) Boards of Appeal.
Article 126: Examiners
An examiner shall be responsible for taking decisions on
behalf of the Office in relation to an application for registration of a Community
trade mark, including the matters referred to in Articles 36, 37, 38 and 66,
except in so far as an Opposition Division is responsible.
Article 127: Opposition Divisions
1. An Opposition Division shall be responsible for taking decisions on an opposition
to an application to register a Community trade mark.
2. An Opposition Division shall consist of three members.
At least one of the members must be legally qualified.
2. The decisions of the Opposition
Divisions shall be taken by three-member groups. At least one member shall be
legally qualified. In certain specific cases provided for in the Implementing
Regulation, the decisions shall be taken by a single member63.
63Amended
by Council Regulation (EC) No 422/2004.This amendment shall apply when the necessary
implementing measures have been adopted.
Article 128: Administration of Trade Marks and Legal Division
1. The Administration of Trade Marks and Legal Division
shall be responsible for those decisions required by this Regulation which do
not fall within the competence of an examiner, an Opposition Division or a Cancellation
Division. It shall in particular be responsible for decisions in respect of
entries in the Register of Community trade marks.
2. It shall also be responsible for keeping the list of professional representatives which is referred to in Article 89.
3. A decision of the Division shall be taken by one member.
Article 129: Cancellation Divisions
1. A Cancellation Division shall be responsible for taking
decisions in relation to an application for the revocation or declaration of
invalidity of a Community trade mark.
2. A Cancellation Division shall consist of three members.
At least one of the members must be legally qualified.
2. The decisions of the Cancellation Divisions shall be
taken by three-member groups. At least one member shall be legally qualified.
In certain specific cases provided for in the Implementing Regulation, the decisions
shall be taken by a single member64.
64Amended by Council
Regulation (EC) No 422/2004. This amendment shall apply when the necessary implementing
measures have been adopted.
Article 130: Boards of Appeal
1. The Boards of Appeal shall be responsible for deciding on appeals from decisions
of the examiners, Opposition Divisions, Administration of Trade Marks and Legal
Division and Cancellation Divisions.
3. In order to determine the special cases which fall under the jurisdiction
of the enlarged Board, account should be taken of the legal difficulty or the
importance of the case or of special circumstances which justify it. Such cases
may be referred to the enlarged Board:
(a) by the authority of the Boards of Appeal set up in accordance with the rules of procedure of the Boards referred to in Article 157(3), or
(b) by the Board handling the case.
4. The composition of the enlarged Board and the rules on referrals to it shall be laid down pursuant to the rules of procedure of the Boards referred to in Article 157(3).
5. To determine which specific cases fall
under the authority of a single member, account should be taken of the lack
of difficulty of the legal or factual matters raised, the limited importance
of the individual case or the absence of other specific circumstances. The decision
to confer a case on one member in the cases referred to shall be adopted by
the Board handling the case. Further details shall be laid down in the rules
of procedure of the Boards referred to in Article 157(3)65.
65 Amended by Council
Regulation (EC) No 422/2004. In force since 27 December 2004 (s. OJ L362, 09.12.2004,
p. 16).
Article 131: Independence
of the members of the Boards of Appeal
1. The President of the Boards of
Appeal and the chairmen of the Boards shall be appointed, in accordance with
the procedure laid down in Article 120 for the appointment of the President
of the Office, for a term of five years. They may not be removed from office
during this term, unless there are serious grounds for such removal and the
Court of Justice, on application by the institution which appointed them, takes
a decision to this effect. The term of office of the President of Boards of
Appeal and the chairmen of the Boards may be renewed for additional five-year
periods, or until retirement age if this age is reached during the new term
of office.
The President of the Boards of Appeal shall, inter alia, have managerial and organisational powers, principally to:
(a) chair the authority of the Boards of
Appeal responsible for laying down the rules and organising the work of the
Boards, which authority is provided for in the rules of procedure of the Boards
referred to in Article 157(3);
(b) ensure the implementation of the authority's decisions;
(c) allocate cases to a Board on the basis of objective criteria determined by the authority of the Boards of Appeal;
(d) forward to the President of the Office the Boards' expenditure requirements, with a view to drawing up the expenditure estimates.
The President of the Boards of Appeal shall chair the enlarged Board.
Further details shall be laid down in the rules of procedure of the Boards referred to in Article 157(3).
2. The members of the Boards of Appeal shall be appointed by the Administrative Board for a term of five years. Their term of office may be renewed for additional five-year periods, or until retirement age if that age is reached during the new term of office.
3. The members of the Boards of Appeal may not be removed from office unless there are serious grounds for such removal and the Court of Justice, after the case has been referred to it by the Administrative Board on the recommendation of the President of the Boards of Appeal, after consulting the chairman of the Board to which the member concerned belongs, takes a decision to this effect.
4. The President of the Boards of
Appeal and the chairmen and members of the Boards of Appeal shall be independent.
In their decisions they shall not be bound by any instructions.
5. The President of the Boards of Appeal and the chairmen
and members of the Boards of Appeal may not be examiners or members of the Opposition
Divisions, Administration of Trade Marks and Designs and Legal Division or Cancellation
Divisions66 .
66Amended by Council Regulation (EC) No 422/2004. In force since 27 December 2004 (s. OJ L362, 09.12.2004, p. 16).
Article 132: Exclusion and objection
1. Examiners and members of the Divisions set up within
the Office or of the Boards of Appeal may not take part in any proceedings if
they have any personal interest therein, or if they have previously been involved
as representatives of one of the parties. Two of the three members of an Opposition
Division shall not have taken part in examining the application. Members of
the Cancellation Divisions may not take part in any proceedings if they have
participated in the final decision on the case in the proceedings for registration
or opposition proceedings. Members of the Boards of Appeal may not take part
in appeal proceedings if they participated in the decision under appeal.
2. If, for one of the reasons mentioned in paragraph 1 or for any other reason, a member of a Division or of a Board of Appeal considers that he should not take part in any proceedings, he shall inform the Division or Board accordingly.
3. Examiners and members of the Divisions or of a Board of Appeal may be objected to by any party for one of the reasons mentioned in paragraph 1, or if suspected of partiality. An objection shall not be admissible if, while being aware of a reason for objection, the party has taken a procedural step. No objection may be based upon the nationality of examiners or members.
4. The Divisions and the Boards of Appeal shall decide
as to the action to be taken in the cases specified in paragraphs 2 and 3 without
the participation of the member con cerned. For the purposes of taking this
decision the member who withdraws or has been objected to shall be replaced
in the Division or Board of Appeal by his alternate.
SECTION 5: BUDGET AND FINANCIAL CONTROL
Article 133: Budget Committee
1. A Budget Committee is hereby set up, attached to the Office. The Budget Committee
shall have the powers assigned to it in this Section and in Article 39 (4).
2. Articles 121 (6), 122, 123 and 124 (1) to (4), (6) and (7) shall apply to the Budget Committee mutatis mutandis.
3. The Budget Committee shall take its decisions by a
simple majority of the representatives of the Member States. However, a majority
of three-quarters of the representatives of the Member States shall be required
for the decisions which the Budget Committee is empowered to take under Articles
39 (4), 135 (3) and 138. In both cases each Member State shall have one vote.
Article 134: Budget
1. Estimates of all the Office's revenue and expenditure
shall be prepared for each financial year and shall be shown in the Office's
budget, and each financial year shall correspond with the calendar year.
2. The revenue and expenditure shown in the budget shall be
in balance.
3. Revenue shall comprise, without prejudice to other
types of income, total fees payable under the fees regulations, total fees payable
under the Madrid Protocol referred to in Article 140 for an international registration
designating the European Communities and other payments made to Contracting
Parties to the Madrid Protocol, and, to the extent necessary, a subsidy entered
against a specific heading of the general budget of the European Communities,
Commission section67.
67Amended by Council Regulation (EC) No 1992/2003. In force since 1 October 2004.
Article 135: Preparation of the budget
1. The President shall draw up each year an estimate
of the Office s revenue and expenditure for the following year and shall send
it to the Budget Committee not later than 31 March in each year, together with
a list of posts.
2. Should the budget estimates provide for a Community subsidy, the Budget Committee shall immediately forward the estimate to the Commission, which shall forward it to the budget authority of the Communities. The Commission may attach an opinion on the estimate along with an alternative estimate.
3. The Budget Committee shall adopt the budget, which
shall include the Office's list of posts. Should the budget estimates contain
a subsidy from the general budget of the Communities, the Office's budget shall,
if necessary, be adjusted.
Article 136 : Audit and control68
1. An internal audit function shall be set up within the Office, to be performed
in compliance with the relevant international standards. The internal auditor,
appointed by the President, shall be responsible to him for verifying the proper
operation of budget implementation systems and procedures of the Office.
2. The internal auditor shall advise the President on dealing with risks, by
issuing independent opinions on the quality of management and control systems
and by issuing recommendations for improving the conditions of implementation
of operations and promoting sound financial management.
3. The responsibility for putting in place internal control systems and procedures
suitable for carrying out his tasks shall lie with the authorising officer.
68Amended by Council
Regulation (EC) No 1653/2003.
Article 137: Auditing of accounts
1. Not later than 31 March in each year the President shall transmit to the
Commission, the European Par liament, the Budget Committee and the Court of
Auditors accounts of the Office's total revenue and expenditure for the preceding
financial year. The Court of Auditors shall examine them in accordance with
Article 188c of the Treaty.
2. The Budget Committee shall give a discharge to the President of the Office
in respect of the implementation of the budget.
Article 138: Financial provisions
The Budget Committee shall, after consulting the Court of Auditors of the European
Communities and the Commission, adopt internal financial provisions specifying,
in particular, the procedure for establishing and implementing the Office s
budget. As far as is compatible with the particular nature of the Office, the
financial provisions shall be based on the financial regulations adopted for
other bodies set up by the Community.
Article 139: Fees regulations
1. The fees regulations shall determine in particular the amounts of the fees and the ways in which they are to be paid.
2. The amounts of the fees shall be fixed at such a level as to ensure that the revenue in respect thereof is in principle sufficient for the budget of the Office to be balanced.
3. The fees regulations shall be adopted and amended in
accordance with the procedure laid down in Article 15869
.
69Number of the Article changed by Council Regulation (EC) No 1992/2003. In force since 01 October 2004.
TITLE
XIII: INTERNATIONAL REGISTRATION OF MARKS70
70New Title XIII added by the Council Regulation (EC) No 1992/2003. In force since 01 October 2004.
SECTION 1: GENERAL PROVISIONS
Article 140: Application of provisions
Unless otherwise specified
in this title, this Regulation and any regulations implementing this Regulation
adopted pursuant to Article 158 shall apply to applications for international
registrations under the Protocol relating to the Madrid Agreement concerning
the international registration of marks, adopted at Madrid on 27 June 1989 (hereafter
referred to as 'international applications' and 'the Madrid Protocol' respectively),
based on an application for a Community trade mark or on a Community trade mark
and to registrations of marks in the international register maintained by the
International Bureau of the World Intellectual Property Organisation (hereafter
referred to as 'international registrations' and 'the International Bureau',
respectively) designating the European Community.
SECTION 2: INTERNATIONAL REGISTRATION ON THE BASIS OF APPLICATIONS
FOR A COMMUNITY TRADE MARK AND OF COMMUNITY TRADE MARKS
Article 141: Filing
of an international application regulations
1. International applications
pursuant to Article 3 of the Madrid Protocol based on an application for a Community
trade mark or on a Community trade mark shall be filed at the Office.
2. Where an international application is filed before the mark on which the
international registration is to be based has been registered as a Community
trade mark, the applicant for the international registration must indicate whether
the international registration is to be based on a Community trade mark application
or registration. Where the international registration is to be based on a Community
trade mark once it is registered, the international application shall be deemed
to have been received at the Office on the date of registration of the Community
trade mark.
Article 142: Form and contents of the international application
1. The international
application shall be filed in one of the official languages of the European
Community, using a form provided by the Office. Unless otherwise specified by
the applicant on that form when he files the international application, the
Office shall correspond with the applicant in the language of filing in a standard
form.
2. If the international application is filed in a language which is not one
of the languages allowed under the Madrid Protocol, the applicant must indicate
a second language from among those languages. This shall be the language in
which the Office submits the international application to the International
Bureau.
3. Where the international application is filed in a language other than one
of the languages allowed under the Madrid Protocol for the filing of international
applications, the applicant may provide a translation of the list of goods or
services in the language in which the international application is to be submitted
to the International Bureau pursuant to paragraph 2.
4. The Office shall forward the international application to the International
Bureau as soon as possible.
5. The filing of an international application shall be subject to the payment
of a fee to the Office. In the cases referred to in the second sentence of Article
141(2), the fee shall be due on the date of registration of the Community trade
mark. The application shall be deemed not to have been filed until the required
fee has been paid.
6. The international application must fulfil the relevant conditions laid down
in the Implementing Regulation referred to in Article 157.
Article 143: Recordal in the files
and in the Register
1. The date and number
of an international registration based on a Community trade mark application,
shall be recorded in the files of that application. When the application results
in a Community trade mark, the date and number of the international registration
shall be entered in the register.
2. The date and number of an international registration based on a Community
trade mark shall be entered in the Register.
Article 144: Request for territorial
extension subsequent to the international registration
A request for territorial
extension made subsequent to the international registration pursuant to Article
3ter(2) of the Madrid Protocol may be filed through the intermediary of the
Office. The request must be filed in the language in which the international
application was filed pursuant to Article 142.
Article 145: International feeson
Any fees payable to
the International Bureau under the Madrid Protocol shall be paid direct to the
International Bureau.
SECTION 3: INTERNATIONAL REGISTRATIONS DESIGNATING THE
EUROPEAN COMMUNITY
Article 146: Effects of international
registrations designating the European Community
1. An international
registration designating the European Community shall, from the date of its
registration pursuant to Article 3(4) of the Madrid Protocol or from the date
of the subsequent designation of the European Community pursuant to Article
3ter(2) of the Madrid Protocol, have the same effect as an application for a
Community trade mark.
2. If no refusal has been notified in accordance with Article 5(1) and (2) of
the Madrid Protocol or if any such refusal has been withdrawn, the international
registration of a mark designating the European Community shall, from the date
referred to in paragraph 1, have the same effect as the registration of a mark
as a Community trade mark.
3. For the purposes of applying Article 9(3), publication of the particulars
of the international registration designating the European Community pursuant
to Article 147(1) shall take the place of publication of a Community trade mark
application, and publication pursuant to Article 147(2) shall take the place
of publication of the registration of a Community trade mark.
Article 147: Publication
1. The Office shall
publish the date of registration of a mark designating the European Community
pursuant to Article 3(4) of the Madrid Protocol or the date of the subsequent
designation of the European Community pursuant to Article 3ter(2) of the Madrid
Protocol, the language of filing of the international application and the second
language indicated by the applicant, the number of the international registration
and the date of publication of such registration in the Gazette published by
the International Bureau, a reproduction of the mark and the numbers of the
classes of the goods or services in respect of which protection is claimed.
2. If no refusal of protection of an international registration designating
the European Community has been notified in accordance with Article 5(1) and
(2) of the Madrid Protocol or if any such refusal has been withdrawn, the Office
shall publish this fact, together with the number of the international registration
and, where applicable, the date of publication of such registration in the Gazette
published by the International Bureau.
Article 148: Seniority
1. The applicant for an international registration designating the European
Community may claim, in the international application, the seniority of an earlier
trade mark registered in a Member State, including a trade mark registered in
the Benelux countries, or registered under international arrangements having
effect in a Member State, as provided for in Article 34.
2. The holder of an international registration designating the European Community
may, as from the date of publication of the effects of such registration pursuant
to Article 147(2), claim at the Office the seniority of an earlier trade mark
registered in a Member State, including a trade mark registered in the Benelux
countries, or registered under international arrangements having effect in a
Member State, as provided for in Article 35. The Office shall notify the International
Bureau accordingly.
Article 149: Examination as to absolute
grounds for refusal
1. International registrations
designating the European Community shall be subject to examination as to absolute
grounds for refusal in the same way as applications for Community trade marks.
2. Protection of an international registration shall not be refused before the
holder of the international registration has been allowed the opportunity to
renounce or limit the protection in respect of the European Community or of
submitting his observations.
3. Refusal of protection shall take the place of refusal of a Community trade
mark application.
4. Where protection of an international registration is refused by a decision
under this Article which has become final or where the holder of the international
registration has renounced the protection in respect of the European Community
pursuant to paragraph 2, the Office shall refund the holder of the international
registration a part of the individual fee to be laid down in the implementing
Regulation.
Article 150: Search
1. Once the Office has
received a notification of an international registration designating the European
Community, it shall draw up a Community search report as provided for in Article
39(1).
2. As soon as the Office has received a notification of an international registration
designating the European Community, the Office shall transmit a copy thereof
to the central industrial property office of each Member State which has informed
the Office of its decision to operate a search in its own register of trade
marks as provided for in Article 39(2).
3. Article 39(3) to (6) shall apply mutatis mutandis71.
4. The Office shall inform the proprietors of any earlier
Community trade marks or Community trade mark applications cited in the Community
search report of the publication of the international registration designating
the European Community as provided for in Article 147(1).
71Amended by Council
Regulation (EC) No 422/2004.
Article 151: Opposition
1. International registration
designating the European Community shall be subject to opposition in the same
way as published Community trade mark applications.
2. Notice of opposition shall be filed within a period of three months which
shall begin six months following the date of the publication pursuant to Article
147(1). The opposition shall not be treated as duly entered until the opposition
fee has been paid.
3. Refusal of protection shall take the place of refusal of a Community trade
mark application.
4. Where protection of an international registration is refused by a decision
under this Article which has become final or where the holder of the international
registration has renounced the protection in respect of the European Community
prior to a decision under this Article which has become final, the Office shall
refund the holder of the international registration a part of the individual
fee to be laid down in the implementing Regulation.
Article 152: Replacement of a Community
trade mark by an international registration
The Office shall, upon
request, enter a notice in the Register that a Community trade mark is deemed
to have been replaced by an international registration in accordance with Article
4bis of the Madrid Protocol.
Article 153: Invalidation of the
effects of an international registration
1. The effects of an
international registration designating the European Community may be declared
invalid.
2. The application for invalidation of the effects of an international registration
designating the European Community shall take the place of an application for
a declaration of revocation as provided for in Article 50 or for invalidation
as provided for in Article 51 or Article 52.
Article 154: Conversion of a designation
of the European Community through an international registration into a national
trade mark application or into a designation of Member States
1. Where a designation
of the European Community through an international registration has been refused
or ceases to have effect, the holder of the international registration may request
the conversion of the designation of the European Community:
(a) into a national trade mark application pursuant to Articles 108 to 110 or
(b) into a designation of a Member State party to the Madrid Protocol or the
Madrid Agreement concerning the international registration of marks, adopted
at Madrid on 14 April 1891, as revised and amended (hereafter referred to as
the Madrid Agreement), provided that on the date when conversion was requested
it was possible to have designated that Member State directly under the Madrid
Protocol or the Madrid Agreement. Articles 108 to 110 shall apply.
2. The national trade mark application or the designation of a Member State
party to the Madrid Protocol or the Madrid Agreement resulting from the conversion
of the designation of the European Community through an international registration
shall enjoy, in respect of the Member State concerned, the date of the international
registration pursuant to Article 3(4) of the Madrid Protocol or the date of
the extension to the European Community pursuant to Article 3ter(2) of the Madrid
Protocol if the latter was made subsequently to the international registration,
or the date of priority of that registration and, where appropriate, the seniority
of a trade mark of that State claimed under Article 148.
3. The request for conversion shall be published.
Article 155: Use of a mark subject
of an international registration
For the purposes of
applying Article 15(1), Article 43(2), Article 50(1)(a) and Article 56(2), the
date of publication pursuant to Article 147(2) shall take the place of the date
of registration for the purpose of establishing the date as from which the mark
which is the subject of an international registration designating the European
Community must be put to genuine use in the Community.
Article 156: Transformation
1. Subject to paragraph
2, the provisions applicable to Community trade mark applications shall apply
mutatis mutandis to applications for transformation of an international registration
into a Community trade mark application pursuant to Article 9quinquies of the
Madrid Protocol.
2. When the application for transformation relates to an international registration
designating the European Community the particulars of which have been published
pursuant to Article 147(2), Articles 38 to 43 shall not apply.
TITLE XIV72 : FINAL PROVISIONS
72 Numbers of the Title and Articles changed by Council Regulation (EC) No 1992/2003. In force since 01 October 2004.
Article 157:
Community implementing provisions
1. The rules implementing this Regulation shall be
adopted in an Implementing Regulation.
2. In addition to the fees provided for in the preceding Articles, fees shall
be charged, in accordance with the detailed rules of application laid down in
the Implementing Regulation, in the cases listed below:
3. The Implementing Regulation and the rules of procedure
of the Boards of Appeal shall be adopted and amended in accordance with the
procedure laid down in Article 15873.
*Deleted by Council Regulation (EC) No 422/2004. The former text: alteration of the representation of a Community trade mark.
**Deleted by Council
Regulation (EC) No 422/2004. The former text: registration of the transfer of
a Community trade mark.
73Number of the Article changed by Council Regulation (EC) No 1992/2003. In force since 01 October 2004.
Article 158:
Establishment of a committee and procedure for the adoption of implementing
regulations74
1. The Commission shall be assisted by a committee
referred to as the Committee on Fees, Implementation Rules and the Procedure
of the Boards of Appeal of the Office for Harmonisation in the Internal Market
(trade marks and designs).
2. Where reference is made to this Article, Articles 5 and 7 of Decision 1999/468/EC75
shall apply. The period laid down in Article 5(6) of Decision 1999/468/EC shall
be set at three months.
3. The committee shall adopt its rules of procedure.
74Amended by Council Regulation (EC) No 807/2003.
75OJ No L 184, 17.7.1999,
p. 23.
Article 159:
Compatibility with other Community legal provisions
This Regulation shall not affect Council Regulation
(EEC) No 2081/9276 on the protection of geographical
indications and designations of origin for agricultural products and foodstuffs
of 14 July 1992, and in particular Article 14 thereof.
76OJ No L 208, 24.7.1992,
p. 1.
Article 159a 77:
Provisions relating to the enlargement of the Community78
1. As from the date of accession of the Czech Republic,
Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia and Slovakia
(hereinafter referred to as "new Member State(s)"), a Community trade mark registered
or applied for pursuant to this Regulation before the date of accession shall
be extended to the territory of those Member States in order to have equal effect
throughout the Community.
2. The registration of a Community trade mark which is under application at
the date of accession may not be refused on the basis of any of the absolute
grounds for refusal listed in Article 7(1), if these grounds became applicable
merely because of the accession of a new Member State.
3. Where an application for the registration of a Community trade mark has been
filed during the six months prior to the date of accession, notice of opposition
may be given pursuant to Article 42 where an earlier trade mark or another earlier
right within the meaning of Article 8 was acquired in a new Member State prior
to accession, provided that it was acquired in good faith and that the filing
date or, where applicable, the priority date or the date of acquisition in the
new Member State of the earlier trade mark or other earlier right precedes the
filing date or, where applicable, the priority date of the Community trade mark
applied for.
4. A Community trade mark as referred to in paragraph 1 may not be declared
invalid:
– pursuant to Article 51 if the grounds for invalidity became applicable merely
because of the accession of a new Member State,
– pursuant to Article 52(1) and (2) if the earlier national right was registered,
applied for or acquired in a new Member State prior to the date of accession.
5. The use of a Community trade mark as referred to in paragraph 1 may be prohibited
pursuant to Articles 106 and 107, if the earlier trade mark or other earlier
right was registered, applied for or acquired in good faith in the new Member
State prior to the date of accession of that State; or, where applicable, has
a priority date prior to the date of accession of that State.
77 Number of the Article
changed by Council Regulation (EC) No 422/2004.
78 This article has entered
into force on 01 May 2004.
Article160:
Entry into force
1. This Regulation shall enter into force on the
60th day following that of its publication in the Official Journal of the European
Communities.
2. The Member States shall within three years following entry into force of
this Regulation take the necessary measures for the purpose of implementing
Articles 91 and 110 hereof and shall forthwith inform the Commission of those
measures.
3. Applications for Community trade marks may be filed at the Office from the
date fixed by the Administrative Board on the recommendation of the President
of the Office.
4. Applications for Community trade marks filed within three months before the
date referred to in paragraph 3 shall be deemed to have been filed on that date.
This Regulation shall be binding in its entirety and directly applicable in
all Member States.
Done at Brussels, 20 December 1993.
For the Council
The President
A. BOURGEOIS
Statement by the Council and the Commission
on the seat of the Office for Harmonization in the Internal Market (trade marks
and designs)
In adopting the Regulation on the Community Trade Mark, the Council
and the Commission note:
• that the representatives of the Governments of the Member States, meeting
at Head of State and Government level on 29 October 1993, decided that the Office
for Harmonization in the Internal Market (trade marks and designs) should have
its seat in Spain, in a town to be determined by the Spanish Government,
• that the Spanish Government has designated Alicante as the seat of the Office.
ANNEX
THE COUNCIL OF THE EUROPEAN UNION,
Having regard to the Treaty establishing the European Community, and in particular Article 235 thereof,
Having regard to the proposal from the Commission,
Having regard to the opinion of the European Parliament 1,
Whereas the Agreement establishing the World Trade Organization (hereinafter, the 'WTO Agreement`) was signed on behalf of the Community; whereas the Agreement on Trade-Related Aspects of Intellectual Property Rights (hereinafter, the 'TRIPs Agreement`), annexed to the WTO Agreement, contains detailed provisions on the protection of intellectual property rights whose purpose is the establishment of international disciplines in this area in order to promote international trade and prevent trade distortions and friction due to the lack of adequate and effective intellectual property protection;
Whereas in order to ensure that all relevant Community legislation is in full compliance with the TRIPs Agreement, the Community must take certain measures in relation to current Community acts on the protection of intellectual property rights; whereas these measures entail in some respects the amendment or modification of Community acts; whereas these measures also entail complementing current Community acts;
Whereas Regulation (EC) No 40/94 creates the Community trade mark 2; whereas Article 5 of Regulation (EC) No 40/94 defines the 'Persons who can be proprietors of Community trade marks` by referring notably to the Paris Convention for the protection of industrial property and requires reciprocal national treatment from countries which are not parties to the Paris Convention; whereas Article 29 of Regulation (EC) No 40/94, concerning the right of priority, also needs to be amended in this respect; whereas in order to comply with the national treatment obligation in Article 3 of the TRIPs Agreement, these provisions should be modified to ensure that nationals of all WTO Members, even if the Member in question is not a party to the Paris Convention, receive a treatment no less favourable than that accorded to nationals of Community Member States;
Whereas Article 23 (2) of the TRIPs Agreement provides for the refusal or invalidation of trade marks which contain or consist of false geographical indications for wines and spirits without the condition that they are of such a nature as to deceive the public, a new subparagraph (j) has to be added to Article 7 (1) of Regulation (EC) No 40/94,
HAS ADOPTED THIS REGULATION:
Article 1
Regulation (EC) No 40/94 is amended as follows:
1. Article 5 (1) (b) shall be replaced by the following:
'(b) nationals of other States which are parties to the Paris Convention for
the protection of industrial property, hereinafter referred to as 'the Paris
Convention`, or to the Agreement establishing the World Trade Organization;
`
2. Article 5 (1) (d) shall be replaced by the following:
'(d) nationals, other than those referred to under subparagraph (c), of any
State which is not party to the Paris Convention or to the Agreement establishing
the World Trade Organization and which, according to published findings, accords
to nationals of all the Member States the same protection for trade marks as
it accords to its own nationals and, if nationals of the Member States are required
to prove registration in the country of origin, recognizes the registration
of Community trade marks as such proof.`
3. In Article 7 (1) after subparagraph (i) the following shall
be added:
'(j) trade marks for wines which contain or consist of a geographical indication
identifying wines or for spirits which contain or consist of a geographical
indication identifying spirits with respect to such wines or spirits not having
that origin.`
4. Article 29 (1) shall be replaced by the following:
'1. A person who has duly filed an application for a trade mark in or for any
State party to the Paris Convention or to the Agreement establishing the World
Trade Organization, or his successors in title, shall enjoy, for the purpose
of filing a Community trade mark application for the same trade mark in respect
of goods or services which are identical with or contained within those for
which the application has been filed, a right or priority during a period of
six months from the date of filing of the first application.`
5. Article 29 (5) shall be replaced by the following:
'5. If the first filing has been made in a State which is not a party to the
Paris Convention or to the Agreement establishing the World Trade Organization,
paragraphs 1 to 4 shall apply only in so far as that State, according to published
findings, grants, on the basis of the first filing made at the Office and subject
to conditions equivalent to those laid down in this Regulation, a right of priority
having equivalent effect.`
[amendments have been included in text above]
Article 2
This Regulation shall enter into force on 1 January 1995.
It shall be applicable as of 1 January 1996.
This Regulation shall be binding in its entirety and directly applicable in all Member States.
Done at Brussels, 22 December 1994.
For the Council
The President
H. SEEHOFER
1 Opinion delivered on 14 December 1994 (not
yet published in the Official Journal).
2 OJ No L 11,
14. 1. 1994, p. 1.
Council Regulation (EC) No 807/2003 of 14 April 2003
THE COUNCIL OF THE EUROPEAN UNION,Having regard to the Treaty establishing the European Community,
and in particular Articles 93, 94, 269, 279 and 308 thereof,
Having regard to the proposal from the Commission1,
Having regard to the opinion of the European Parliament2,
Having regard to the opinion of the Economic and Social Committee3,
After consulting the Court of Auditors concerning Council Regulation (EEC, Euratom)
No 1553/89 of 29 May 1989 on the definitive uniform arrangements for the collection
of own resources accruing from value added tax4,
Whereas:
(1) Council Decision 1999/468/EC of 28 June 1999 laying down the procedures
for the exercise of implementing powers conferred on the Commission5
has replaced Decision 87/373/EEC6.
(2) In accordance with the Statement of the Council and of the Commission7
on Decision 1999/468/EC, the provisions relating to committees which assist
the Commission in the exercise of its implementing powers, provided for in application
of Decision 87/373/EEC, should be adapted in order to bring align them with
the provisions of Articles 3, 4 and 5 of Decision 1999/468/EC.
(3) The aforesaid Statement indicates the methods for adapting the committee
procedures, which is automatic provided that this does not affect the nature
of the committee provided for in the basic act.
(4) The time limits set in the provisions to be adapted must remain in force.
Wherever there is no specific time limit laid down for adopting the implementing
measures, the time limit should be set at three months.
(5) The provisions of the instruments providing for recourse to the type I committee
procedure established by Decision 87/373/EEC must therefore be replaced by provisions
referring to the advisory procedure laid down in Article 3 of Decision 1999/468/EC.
(6) The provisions of the instruments providing for recourse to type IIa and
IIb committee procedures established by Decision 87/373/EEC must be replaced
by provisions referring to the management procedure provided for in Article
4 of Decision 1999/468/EC.
(7) The provisions of the instruments providing for recourse to type IIIa and
IIIb committee procedures established by Decision 87/373/EEC must be replaced
by provisions referring to the regulatory procedure provided for in Article
5 of Decision 1999/468/EC.
(8) This Regulation aims purely at aligning committee procedures. The name of
the committees relating to these procedures has, where appropriate, been amended,
HAS ADOPTED THIS REGULATION:
Article 1
With regard to the advisory procedure, the instruments listed in Annex I shall
be adapted, in accordance with that Annex, to follow the corresponding provisions
of Decision 1999/468/EC.
Article 2
With regard to the management procedure, the instruments listed in Annex II
shall be adapted, in accordance with that Annex, to follow the corresponding
provisions of Decision 1999/468/EC.
Article 3
With regard to the regulatory procedure, the instruments listed in Annex III
shall be adapted, in accordance with that Annex, to follow the corresponding
provisions of Decision 1999/468/EC.
Article 4
References to provisions of the instruments in Annexes I, II and III shall be
construed as being made to these provisions as adapted by this Regulation.
References made, in this Regulation, to the former names of committees shall
be construed as being made to the new names.
Article 5
This Regulation shall enter into force on the twentieth day following that of
its publication in the Official Journal of the European Union.
This Regulation shall be binding in its entirety and directly applicable in
all Member States.
Done at Luxembourg, 14 April 2003.
For the Council
The President
A. Giannitsis
1OJ C 75 E, 26.3.2000,
p. 448.
2Opinion of 11 March
2003 (not yet published in the Official Journal).
3OJ C 241, 7.10.2002,
p. 128.
4OJ L 155, 7.6.1989,
p. 9.
5OJ L 184, 17.7.1999,
p. 23.
6OJ L 197, 18.7.1987,
p. 33.
7OJ C 203, 17.7.1999,
p 1.
ANNEX I…
ANEX II…
ANNEX III
REGULATORY PROCEDURE
List of instruments falling under the regulatory procedure adapted to the corresponding
provisions of Decision 1999/468/EC in accordance with the following amendments:
1. …
48. Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade
mark.
Article 141 shall be replaced by the following:
Establishment of a committee and procedure for the adoption of implementing
regulations
1. The Commission shall be assisted by a committee referred to as the Committee on Fees, Implementation Rules and the Procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (trade marks and designs).
2. Where reference is made to this Article, Articles 5 and 7
of Decision 1999/468/EC (*) shall apply.
The period laid down in Article 5(6) of Decision 1999/468/EC shall be set at
three months.
3. The committee shall adopt its rules of procedure.
(*) OJ L 184, 17.7.1999, p. 23.
[amendments have been included in the text above]
Act concerning the
conditions of accession of the Czech Republic...
(Official Journal L 236 , 23/09/2003 P. 0342 – 0342 In force since
1 May 2004)
C. INDUSTRIAL PROPERTY RIGHTS
I. COMMUNITY TRADE MARK
31994 R 0040: Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ L 11, 14.1.1994, p. 1), as amended by 31994 R 3288: Council Regulation (EC) No 3288/94 of 22.12.1994 (OJ L 349, 31.12.1994, p. 83).
The following Article is inserted after Article 142:
142a ….[the article has been included in text above]
Council Regulation
(EC) No 1653/2003 of 18 June 2003
THE COUNCIL OF THE EUROPEAN UNION,
Having regard to the Treaty establishing the European Community,
and in particular Article 308 thereof,
Having regard to the proposal from the Commission1,
Having regard to the opinion of the European Parliament2,
Having regard to the opinion of the Court of Auditors3,
Whereas:
(1) With the entry into force of Council Regulation (EC, Euratom) No 1605/02
of 25 June 2002 on the Financial Regulation applicable to the general budget
of the European Communities4, the concept of
centralised ex ante financial control was replaced by more modern control and
audit systems.
(2) The Office for Harmonization in the Internal Market should have control
and audit systems comparable with those of the Community institutions.
(3) The general principles and limits governing right of access to the documents
provided for in Article 255 of the Treaty have been laid down by Regulation
(EC) No 1049/2001 of the European Parliament and of the Council of 30 May 2001
regarding public access to European Parliament, Council and Commission documents5.
(4) When Regulation (EC) No 1049/2001 was adopted, the three institutions agreed
in a joint declaration that the agencies and similar bodies should implement
rules conforming to those of that Regulation.
(5) Appropriate provisions should therefore be included in Regulation (EC) No
40/94 of 20 December 1994 on the Community trade mark6
to make Regulation (EC) No 1049/2001 applicable to the Office for Harmonization
in the Internal Market, as should a provision relating to appeals against a
refusal of access to documents.
6) Regulation (EC) No 40/94 should therefore be amended accordingly,
HAS ADOPTED THIS REGULATION:
Article 1
Regulation (EC) No 40/94 is hereby amended as follows:
1. The following Article shall be inserted:
Article 118a
Access to documents
1. Regulation (EC) No 1049/2001 of the European Parliament and of the Council
of 30 May 2001 regarding access to European Parliament, Council and Commission
documents (*) shall apply to documents held by the Office.
2. The Administrative Board shall adopt the practical arrangements for implementing
Regulation (EC) No 1049/2001 within six months of entry into force of Regulation
(EC) No 1653/2003 of 18 June 2003 amending Regulation (EC) No 40/94 on the Community
trade mark (**).
3. Decisions taken by the Office pursuant to Article 8 of Regulation (EC) No
1049/2001 may give rise to the lodging of a complaint to the Ombudsman or form
the subject of an action before the Court of Justice of the European Communities,
under the conditions laid down in Articles 195 and 230 of the Treaty respectively.
(*) OJ L 145, 31.5.2001, p. 43.
(**) OJ L 245, 29.9.2003, p. 36.';
2. Article 136 shall be replaced by the following:
Article 136
Audit and control
1. An internal audit function shall be set up within the Office, to be performed
in compliance with the relevant international standards. The internal auditor,
appointed by the President, shall be responsible to him for verifying the proper
operation of budget implementation systems and procedures of the Office.
2. The internal auditor shall advise the President on dealing with risks, by
issuing independent opinions on the quality of management and control systems
and by issuing recommendations for improving the conditions of implementation
of operations and promoting sound financial management.
3. The responsibility for putting in place internal control systems and procedures
suitable for carrying out his tasks shall lie with the authorizing officer.'
[amendments have been included in text above]
Article 2
This Regulation shall enter into force on the first day of the month following
that of its publication in the Official Journal of the European Union.
This Regulation shall be binding in its entirety and directly applicable in
all Member States.
Done at Luxembourg, 18 June 2003.
For the Council
The President
G. Drys
1OJ C 331 E, 31.12.2002, p. 75.
2Opinion delivered on
27.3.2003 (not yet published in the Official Journal).
3OJ C 285, 21.11.2002,
p. 4.
4OJ L 248, 16.9.2002,
p. 1, with Corrigendum in OJ L 25, 30.1.2003, p. 43.
5OJ L 145, 31.5.2001,
p. 43.
6OJ L 11, 14.1.1994,
p. 1. Regulation as last amended by Council Regulation (EC) No 3288/94 (OJ L
349, 31.12.1994, p. 83).
Council Regulation (EC) No 1992/2003 of 27 October 2003
THE COUNCIL OF THE EUROPEAN UNION,
Having regard to the Treaty establishing the European Community, and in particular
Article 308 thereof,
Having regard to the proposal from the Commission1,
Having regard to the opinion of the European Parliament2,
Having regard to the opinion of the European Economic and Social Committee3,
Whereas:
(1) Regulation (EC) No 40/944 (the Community
trade mark Regulation), which is based on Article 308 of the Treaty, is designed
to create a market which functions properly and offers conditions which are
similar to those obtaining in a national market. In order to create a market
of this kind and make it increasingly a single market, the said Regulation created
the Community trade mark system whereby undertakings can, by means of one procedural
system, obtain Community trade marks to which uniform protection is given and
which produce their effects throughout the entire area of the European Community.
(2) The Diplomatic Conference for the conclusion of a Protocol relating to the
Madrid Agreement concerning the international registration of marks adopted
the Protocol relating to the Madrid Agreement concerning the international registration
of marks (hereafter referred to as the Madrid Protocol) on 27 June 1989, at
Madrid.
(3) The Madrid Protocol was adopted in order to introduce certain new features
into the system of the international registration of marks existing under the
Madrid Agreement concerning the international registration of marks of 14 April
1891 as amended (hereafter referred to as the Madrid Agreement)5.
(4) As compared to the Madrid Agreement, the Madrid Protocol introduced, in
its Article 14, as one of the main innovations the possibility that an intergovernmental
organisation which has a regional office for the purpose of registering marks
with effect in the territory of the organisation may become party to the Madrid
Protocol.
(5) The Madrid Protocol entered into force on 1 December 1995 and became operational
on 1 April 1996 and the Community trade mark system also became operational
on the latter date.
(6) The Community trade mark system and the international registration system
as established by the Madrid Protocol are complementary. Therefore, in order
to enable firms to benefit from the advantages of the Community trade mark through
the Madrid Protocol and vice versa, it is necessary to allow Community trade
mark applicants and holders of such trade marks to apply for international protection
of their trade marks through the filing of an international application under
the Madrid Protocol and, conversely, holders of international registrations
under the Madrid Protocol to apply for protection of their trade marks under
the Community trade mark system.
(7) Moreover, the establishment of a link between the Community trade mark system
and the international registration system under the Madrid Protocol would promote
a harmonious development of economic activities, will eliminate distortions
of competition, will be cost efficient and will increase the level of integration
and functioning of the internal market. Therefore, the accession of the Community
to the Madrid Protocol is necessary in order for the Community trade mark system
to become more attractive.
(8) For the above reasons, the Council, acting on a proposal from the Commission
6, approved the Madrid Protocol and authorised
the President of the Council to deposit the instrument of accession with the
Director-General of the World Intellectual Property Organisation (WIPO) as from
the date on which the Council has adopted the measures which are necessary to
give effect to the accession of the European Community to the Madrid Protocol.
This Regulation contains these measures.
(9) These measures should be incorporated in the Community trade mark Regulation
through the inclusion of a new title on "International registration of
marks". For this reason, the legal basis of this proposal should be the
same as the legal basis of the Community trade mark Regulation, i.e. Article
308 of the Treaty.
(10) Furthermore, it is necessary to provide for rules applying to the filing
of an international application at the International Bureau of WIPO through
the intermediary of the Office for Harmonisation in the Internal Market (trade
marks and designs) (the Office).
(11) Where an international application is filed, on the basis of a Community
trade mark application, in a language other than one of the languages allowed
under the Madrid Protocol for the filing of international applications, the
Office should make its best efforts to arrange for the translation of the list
of goods or services into the language indicated by the applicant in order for
the application to be forwarded to the International Bureau in time to maintain
the date of priority.
(12) There is nothing in the Madrid Protocol or in the Regulations adopted under
the Madrid Protocol which would determine the language regime to be applied
by the Office when processing an international application or an international
registration.
(13) Finally, the rules and procedures relating to international registrations
designating the European Community should, in principle, be the same as the
rules and procedures which apply to Community trade mark applications and the
protection of Community trade marks. According to this principle, international
registrations designating the European Community should be subject to examination
as to absolute grounds for refusal, searches in the Register of Community trade
marks and the registers of trade marks of those Member States which have informed
the Office of their decision to operate such a search and should be subject
to opposition in the same way as published Community trade marks. Likewise international
registrations designating the European Community should be subject to the same
rules on use and invalidation as Community trade marks. Furthermore the designation
of the European Community through international registrations may be converted
into national trade mark applications or into the designation of Member States
which are party to the Madrid Protocol or the Madrid Agreement where the designation
of the European Community through such international registrations is refused
or ceases to have effect,
HAS ADOPTED THIS REGULATION:
Article 1
Regulation (EC) No 40/94 is hereby amended as follows:
[Amendments have been included in text above - marked green.]
Article 2
This Regulation shall enter into force on the date on which the Madrid Protocol
enters into force with respect to the European Community. The date of entry
into force of this Regulation shall be published in the Official Journal of
the European Union.
This Regulation shall be binding in its entirety and directly applicable in
all Member States.
Done at Luxembourg, 27 October 2003.
For the Council
The President
A. Matteoli
1 OJ C 300, 10.10.1996,
p. 11.
2OJ C 127, 2.6.1997,
p. 251.
3OJ C 89, 19.3.1997,
p. 14.
4OJ L 11, 14.1.1994,
p. 1. Regulation as last amended by Regulation (EC) No 1653/2003 (OJ L 245,
29.9.2003, p. 36).
5The Madrid Agreement
concerning the international registration of marks as revised last at Stockholm
on 14 July 1967 and as amended on 2 October 1979.
6Commission proposal
for a Council Decision approving the accession of the European Community to
the Protocol relating to the Madrid Agreement concerning the international registration
of marks, adopted at Madrid on June 27, 1989 (OJ C 293, 5.10.1996, p. 11).
Council
Regulation (EC) No 422/2004 of 19 February 2004
THE COUNCIL OF THE EUROPEAN UNION,
Having regard to the Treaty establishing the European Community, and in particular Article 308 thereof,
Having regard to the proposal from the Commission,
Having regard to the opinion of the European Parliament1,
Having regard to the opinion of the European Economic and Social Committee2,
Whereas:
(1) Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark3, set up a unitary system of protection of trade marks throughout the Member States via Community registration. This system has generally fulfilled users' expectations satisfactorily. It has also had a positive effect on the effective achievement of the internal market.
(2) The functioning of the system has made it possible to identify other aspects which could clarify and further supplement it, thereby making it possible to improve the effectiveness of the system, increase the value it adds and anticipate, as of now, the consequences of additional members in future, without it being necessary to change the substance of the system, which has proven itself to be perfectly valid with regard to the objectives set.
(3) The Community trade mark system should be made accessible to all, without any requirement of reciprocity, equivalence and/or nationality. This would also encourage trade on the world market. Such requirements make the system complex, inflexible and ineffective. In addition, in the context of the new Community design system, the Council took a flexible line on this question.
(4) In order to rationalise the procedure, the search system should be amended. It should remain compulsory for Community trade marks, but it should be made optional, subject to the payment of a fee, for searches in the trade mark registers of the Member States which notified their own decision to carry out such a search. Furthermore, measures should be provided with a view to improving the quality of the search reports, ensuring greater uniformity by using a standard form and laying down their essential contents.
(5) Certain measures should be taken in order to give the Boards of Appeal additional means of speeding up their decisions and improving their operation.
(6) The experience acquired in the application of the system highlighted the possibility of improving certain aspects of the procedure. Consequently, certain points should be amended and others inserted in order to offer users a higher-quality product which is still competitive,
HAS ADOPTED THIS REGULATION:
Article 1
[Amendments have been included in text above - marked blue.]
Article 2
1.This Regulation shall enter into force
on the day following that of its publication in the Official Journal of the
European Union.
2. Points 11 to 14, 21, 23 to 26 and 32 to 36 of Article 1 shall apply from
a date which shall be laid down by the Commission and published in the Official
Journal of the European Union, when the necessary implementing measures have
been adopted.
3. Point 9 of Article 1 shall apply from 10 March 2008. This Regulation shall be binding in its entirety and directly applicable in all Member States.
Done at Brussels, 19 February 2004.
For the Council
The President
M. McDowell
1Opinion delivered on
23 September 2003 (not yet published in the Official Journal).
2OJ C 208, 3.9.2003,
p. 7.
3OJ L 11, 14.1.1994, p. 1. Regulation as last amended by Regulation (EC) No 1992/2003 (OJ L 296, 14.11.2003, p.1.