Having regard to the Treaty establishing the European Community, and in particular Article 235 thereof,
Having regard to the proposal from the Commission(1),
Having regard to the opinion of the European Parliament(2),
Having regard to the opinion of the Economic and Social Committee(3),
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 Communities(1), as amended by Decision 93/350/Euratom, ECSC, EEC of 8 June 1993(2), 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 Commission(1),
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.
(a) nationals of the Member States; or
(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; or
(c) nationals of States which are not parties to the Paris Convention who are domiciled or have their seat or who have real and effective industrial or commercial establishments within the territory of the Community or of a State which is party to the Paris Convention; or
(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.
2. With respect to the application of paragraph 1, stateless persons as defined by Article 1 of the Convention relating to the Status of Stateless Persons signed at New York on 28 September 1954, and refugees as defined by Article 1 of the Convention relating to the Status of Refugees signed at Geneva on 28 July 1951 and modified by the Protocol relating to the Status of Refugees signed at New York on 31 January 1967, shall be regarded as nationals of the country in which they have their habitual residence.
3. Persons who are nationals of a
State covered by paragraph 1 (d) must prove that the trade mark for which an
application for a Community trade mark has been submitted is registered in the
State of origin, unless, according to published findings, the trade marks of
nationals of the Member States are registered in the State of origin in question
without proof of prior registration as a Community trade mark or as a national
trade mark in a Member State.
(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 origin.
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.
(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;
(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 law of the Member State governing that sign:
(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.
(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.
(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.
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.
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.
2. The following shall also constitute use within the meaning of para graph1:
(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.
(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.
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.
2. On request of one of the parties,
rights mentioned in paragraph 1 shall be entered in the Register and
published.
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.
2. Where a Community trade mark is
involved in bankruptcy or like proceedings, on request of the competent national
authority an entry to this effect shall be made in the Register and
published.
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.
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.
(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 one month after filing shall be deemed withdrawn.
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.
(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 140.
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.
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.
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.
2. Article 34 (2) and (3) shall
apply.
(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 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.
2. The application may not be
refused before the applicant has been given the opportunity to withdraw his
application or submit his observations.
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.
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.
2. Where, after publication, the
application is refused under Articles 37 and 38, the decision that it has been
refused shall be published upon becoming final.
2. The observations referred to in
paragraph 1 shall be communicated to the applicant who may comment on
them.
(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.
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.
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.
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.
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.
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.
(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;
(d) if the proprietor of the trade mark no longer satisfies the conditions laid down by Article 5.
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.
(a) where the Community trade mark has been registered in breach of the provisions of Article 5 or of Article 7;
(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.
(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 conterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to the national law governing the protection of any other earlier right an in particular:
(a) a right to a name;
(b) a right of personal portrayal;
(c) a copyright;
(d) an industrial property right.
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.
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.
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.
(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.
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-use, 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 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. The decision revoking the rights
of the proprietor of the Community trade mark or declaring it invalid shall be
entered in the Register upon becoming final.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
(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.
2. The Office may disregard facts or
evidence which are not submitted in due time by the parties
concerned.
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.
(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.
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 29 (1) and 42 (1).
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.
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.
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.
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.
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.
(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.
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
Regulation. 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
effec-
tive industrial or commercial
establishment within the Community.
(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.
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 employment. 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.
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.
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.
(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.
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.
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.
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.
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 (3), (4), (5) and (6) 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.
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.
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.
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.
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.
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.
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.
(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.
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.
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.
(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. Where:
the Community trade mark application is deemed to be withdrawn or is refused by a decision of the Office which has become final,
the Community trade mark ceases to have effect as a result of a decision of the Office which has become final or as a result of registration of surrender of the Community trade mark,
the Office shall notify to the applicant or proprietor 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 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 is withdrawn or on which the registration of the Community trade mark expires.
6. Where the Community trade mark ceases to have effect as a result of a decision of a national 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.
7. The effect referred to in Article
32 shall lapse if the request is not filed in due time.
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
conversion may be requested in accordance with Article 108 (1), whether the
request has been filed within the period laid down in Article 108 (4), (5) or
(6), as the case may be, and whether the conversion fee has been paid. If these
conditions are fulfilled, the Office shall transmit the request to the central
industrial property offices of the States specified therein. At the request of
the central industrial property office of a State concerned, the Office shall
give it any information enabling that office to decide as to the admissibility
of the request.
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.
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.
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.
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.
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.
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.
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 15 days of
the day on which the party concerned first became aware of the act in question.
The Commission shall take a decision within one month. If no decision has been
taken within this period, the case shall be deemed to have been
dismissed.
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.
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.
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 President and to the Commission where it
considers that this is necessary.
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.
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.
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.
(a) Examiners;
(b) Opposition Divisions;
(c) an Administration of Trade Marks and Legal Division;
(d) Cancellation Divisions;
2. An Opposition Division shall
consist of three members. At least one of the members must be legally
qualified.
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.
2. A Cancellation Division shall
consist of three members. At least one of the members must be legally
qualified.
2. A Board of Appeal shall consist of three members. At least two of the members must be legally qualified.
1. The members, including the chairmen, of the Boards of Appeal 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 body which appointed them, takes a decision to this effect. Their term of office shall be renewable.
2. The members of the Boards of Appeal shall be independent. In their decisions they shall not be bound by any instructions.
3. The members of the Boards of
Appeal may not be examiners or members of the Opposition Divisions,
Administration of Trade Marks and Legal Division or Cancellation
Divisions.
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.
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.
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, and, to the extent necessary, a subsidy entered against a specific
Heading of the general budget of the European Communities, Commission
Section.
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.
2. The Budget Committee shall give a
discharge to the President of the Office in respect of the implementation of the
budget.
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
141.
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:
1. alteration of the representation of a Community trade mark;
2. late payment of the registration fee;
3. issue of a copy of the certificate of registration;
4. registration of the transfer of a Community trade mark;
5. registration of a licence or another right in respect of a Community trade mark;
6. registration of a licence or another right in respect of an application for a Community trade mark;
7. cancellation of the registration of a licence or another right;
8. alteration of a registered Community trade mark;
9. issue of an extract from the Register;
10. inspection of the files;
11. issue of copies of file documents;
12. issue of certified copies of the application;
13. communication of information in a file;
14. review of the determination of the procedural costs to be refunded.
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 141.
2. The representative of the Commission shall submit to the Committee a draft of the measures to be taken. The Committee shall deliver its opinion on the draft within a time limit which the chairman may lay down according to the urgency of the matter. The opinion shall be delivered by the majority laid down in Article 148 (2) of the Treaty in the case of decisions which the Council is required to adopt on a proposal from the Commission. The votes of the representatives of the Member States within the Committee shall be weighted in the manner set out in that Article. The chairman shall not vote.
The Commission shall adopt the measures envisaged if they are in accordance with the opinion of the Committee.
If the measures envisaged are not in accordance with the opinion of the Committee, or if no opinion is delivered, the Commission shall, without delay, submit to the Council a proposal relating to the measures to be taken. The Council shall act by a qualified majority.
If, on the expiry of a period of
three months from the date of referral to the Council, the Council has not
acted, the proposed measures shall be adopted by the Commission, save where the
Council has decided against the measures by a simple majority.
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.
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; 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.
(1) OJ No C 351, 31. 12. 1980, p. 1 and OJ No C 230, 31. 8. 1984, p. 1.
(2) OJ No C 307, 14. 11. 1983, p. 46 and OJ No C 280, 28. 10. 1991, p. 153.
(3) OJ No C 310, 30. 11. 1981, p. 22.
(1) OJ No L 319, 25. 11. 1988, p. 1 and corrigendum in OJ No L 241, 17. 8. 1989, p. 4.
(2) OJ No L 144, 16. 6. 1993, p. 21.
(1) OJ No L 197, 18. 7. 1987, p. 33.
(1) OJ No L 208, 24. 7. 1992, p. 1.