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Community trade mark

In order to contribute to the proper functioning of the internal market, it is essential to make available to undertakings Community arrangements for trade marks which offer uniform protection throughout the territory of the European Union. This Regulation establishes the necessary provisions in order to meet this objective.

ACT

Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (Text with EEA relevance).

SUMMARY

This Regulation establishes rules and conditions to be complied with for the granting of Community trade marks.

The law relating to trade marks

Any natural or legal person, including authorities established under public law, may obtain a Community trade mark through registration. This trade mark may consist of any signs capable of being represented graphically (particularly words, personal names, designs, letters, numerals, the shape of goods or of their packaging) provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

The Community trade mark is of unitary character – it produces the same effects throughout the European Union.

It confers on the proprietor exclusive rights, which may prohibit third parties from using the following for commercial purposes:

  • 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;
  • any sign where there exists a likelihood of confusion with another trade mark;
  • 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 use of that sign takes advantage of the repute and distinctive character of the trade mark.

However, the proprietor of the Community trade mark may not prohibit third parties from using the following for commercial purposes:

  • his own name or address;
  • indications concerning characteristics of goods or services such as the kind, quality or quantity;
  • the trade mark where it is necessary to indicate the intended purpose of a product or service, as accessories or spare parts.

The proprietor of the Community trade mark shall be required to make genuine use of it for the five years following registration of the trade mark. If not, they may be subject to sanctions for non-use.

The Community trade mark application

Applicants may file an application for a Community trade mark with:

Applications for Community trade marks shall be filed in one of the official languages of the European Union. The applicant must indicate a second language which shall be a language of the Office (German, English, Spanish, French and Italian) the use of which he accepts as a possible language of proceedings.

Applications filed at central industrial property offices or at the Benelux Office will be sent to the OHIM within two weeks after filing.

The application must contain the following information:

  • a request for the registration of a Community trade mark;
  • information identifying the applicant;
  • a list of the goods or services in respect of which the registration is requested;
  • a representation of the trade mark.

Applicants must also pay a filing fee. Once the documents have been produced and the filing fee has been paid, the application will be given a filing date.

A person who has duly registered a trade mark in one of the States party to the Paris Convention or to the Agreement establishing the World Trade Organisation, or his successors in title, shall enjoy, for the purpose of filing a Community trade mark application for the same trade mark, a right of priority during a period of six months from the date of filing of the first application.

The proprietor of an earlier trade mark registered in a State, who files an identical application for a trade mark intended to be registered as a Community trade mark, may claim the seniority of the earlier trade mark.

Registration procedure

Once the application has been filed, the Office will examine whether it meets all the conditions for the granting of a Community trade mark. Publication of the application will allow third parties opposed to the granting of the trade mark to do so, on the basis of earlier rights, in opposition proceedings.

If the application for a Community trade mark meets all the required criteria and no opposition is either entered or accepted, it is published.

Duration, renewal, alteration and division of Community trade marks

Community trade marks shall be registered for a period of 10 years from the date of filing of the application.

Registration may be renewed for further periods of 10 years. The application for renewal must be filed six months before the validity of the registration comes to an end. Renewal shall take effect from the day following the date on which the existing registration expires.

The trade mark cannot be altered during its validity, or when registration is renewed, except with regard to the name and address of the proprietor and on condition that these do not affect the identity of the trade mark as it has been registered.

The proprietor of the Community trade mark may also divide the registration by means of divisional registrations for certain goods and services.

Surrender, revocation and invalidity

A Community trade mark may be surrendered in respect of some or all of the goods or services for which it is registered. The rights of the proprietor may also be declared to be revoked if:

  • the trade mark has not been subject to genuine use in the European Union for five years;
  • trade mark has become the common name for a product or service;
  • the trade mark is of such a nature as to deceive the public, as to the nature, quality or geographical origin of the goods or services.

The Regulation also establishes grounds for invalidity of the trade mark.

Appeal proceedings

Notice of appeal may be filed in writing within two months after the date of notification of the detrimental decision. It shall have suspensive effect. If the appeal is declared admissible, it is transferred to the Board of Appeal which examines it and rules.

Decisions taken by the Board of Appeal may also be subject to appeal before the Court of Justice in the following cases:

  • lack of competence;
  • infringement of an essential procedural requirement;
  • infringement of the Treaty, of the Regulation or of any rule relating to their application;
  • misuse of power.

The action may be brought by any party to the proceedings within two months of the date of notification of the decision of the Board of Appeal. The Office has a duty to take account of final decisions made by the Court of Justice.

Community collective marks

When an application for registration is filed, it is possible to designate a Community trade mark as being collective. The following are authorised to file Community collective marks – associations of:

  • manufacturers;
  • producers;
  • suppliers of services;
  • traders;

as well as legal persons governed by public law.

Legal action relating to Community trade marks

The provisions of Regulation (EC) No 44/2001 shall apply to proceedings relating to Community trade marks and applications for Community trade marks, as well as to simultaneous and successive actions on the basis of Community trade marks and national trade marks.

Member States must designate the courts that have jurisdiction as regards trade marks. These courts shall have exclusive jurisdiction in all disputes concerning the infringement and validity of Community trade marks.

Conversion into a national trade mark application

The applicant for or proprietor of a Community trade mark may, in certain cases, request the conversion of his Community trade mark application into a national trade mark application.

International registration of marks

International registration allows the proprietor of a trade mark to obtain protection for their mark in several designated countries by introducing a single application directly to their own trade mark Office. This application is sent to the World Intellectual Property Organization (WIPO) in Geneva (Switzerland), which notifies the Offices in the designated countries of the international registration.

The Regulation shall apply to all applications for international registration by virtue of the Madrid Protocol which, since it was signed by the European Union in 2004, makes it possible to:

  • file an international application with the OHIM on the grounds of an application for or registration of a Community trade mark;
  • appoint the European Union in an international application, filed at the International Property Office of a contracting party to the Madrid Protocol (see list of current Members).

The Regulation repeals Regulation (EC) No 40/94.

REFERENCES

Act

Entry into force

Deadline for transposition in the Member States

Official Journal

Regulation (EC) No 207/2009

13.4.2009

-

OJ L78 of 24.3.2009

RELATED ACTS

Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark ( COM(2013) 0161 final - 2013/0088 (COD)) [Not published in the Official Journal].

The proposal to revise Regulation (EC) No 207/2009 aims for a well-targeted modernisation of the existing measures, essentially with a view to:

  • adapting the terminology of the Regulation to the Lisbon Treaty;
  • streamlining procedures to apply for and register a European trade mark;
  • increasing legal certainty by clarifying provisions and removing ambiguities, notably regarding the definition of the European trade mark and the right it confers;
  • establishing an appropriate framework for cooperation between the Office for Harmonisation in the Internal Market (OHIM) and national offices, with the aim of promoting convergence of practices and developing common tools;
  • aligning the legal framework to the measures in the Treaty on the Functioning of the European Union (TFEU) in terms of delegated acts.

Proposal for a Directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (Recast) ( COM(2013) 0162 final - 2013/0089 (COD)) [Not published in the Official Journal].

This initiative forms a package with the proposal to amend Regulation (EC) No 207/2009. Their common objective is to make trade mark registration systems all over the EU more accessible to businesses (especially to SMEs) and efficient in terms of lower costs and complexity, as well as increased speed, greater predictability and enhanced legal security.

More precisely, the proposal to recast the Directive on trade marks addresses the following aims:

  • modernising and improving the provisions of the existing Directive (amending outdated provisions, increasing legal certainty and clarifying trade mark rights);
  • achieving greater approximation of national trade mark laws and procedures with the aim of aligning them with the Community trade mark system;
  • facilitating cooperation between the offices of the Member States and OHIM for the purpose of promoting convergence of practices and the development of common tools, by putting in place a legal basis for this cooperation.

Last updated: 05.02.2014

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