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

Council Regulation (EC) No. 207-2009 of 26 February 2009 on the Community trade mark.pdf

link:http://www.wipo.int/wipolex/en/text.jsp?file_id=162995

I
(Acts adopted under the EC Treaty/Euratom Treaty whose publication is obligatory)
REGULATIONS
COUNCIL REGULATION (EC) No 207/2009
of 26 February 2009
on the Community trade mark
(codified version)
(Text with EEA relevance)
THE COUNCIL OF THE EUROPEAN UNION,
Having regard to the Treaty establishing the European Community,
and in particular Article 308 thereof,
Having regard to the proposal from the Commission,
Having regard to the opinion of the European Parliament (1),
Whereas:
(1) Council Regulation (EC) No 40/94 of 20 December 1993
on the Community trade mark (2) has been substantially
amended several times (3). In the interests of clarity and
rationality the said Regulation should be codified.
(2) 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. In order to create a market of this kind and
make it increasingly a single market, not only must 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. 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.
(3) For the purpose of pursuing the Community's said
objectives it would appear necessary to provide for
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. The principle of the unitary
character of the Community trade mark thus stated should
apply unless otherwise provided for in this Regulation.
(4) 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. In
order to open up unrestricted economic activity in the
whole of the internal market for the benefit of undertakings,
trade marks should be created which are governed
by a uniform Community law directly applicable in all
Member States.
(5) Since the Treaty has not provided the specific powers to
establish such a legal instrument, Article 308 of the Treaty
should be applied.
(6) The Community law relating to trade marks nevertheless
does not replace the laws of the Member States on trade
marks. It would not in fact appear to be justified to require
undertakings to apply for registration of their trade marks
as Community trade marks. National trade marks continue
to be necessary for those undertakings which do not want
protection of their trade marks at Community level.
(7) The rights in a Community trade mark should not be
obtained otherwise than by registration, and registration
should be refused in particular if the trade mark is not
distinctive, if it is unlawful or if it conflicts with earlier
rights.
24.3.2009 EN Official Journal of the European Union L 78/1
(1) OJ C 146 E, 12.6.2008, p. 79.
(2) OJ L 11, 14.1.1994, p. 1.
(3) See Annex I.
(8) 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, should be absolute in the
case of identity between the mark and the sign and the
goods or services. The protection should apply also in cases
of similarity between the mark and the sign and the goods
or services. An interpretation should be given of the
concept of similarity in relation to the likelihood of
confusion. 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,
should constitute the specific condition for such protection.
(9) It follows from the principle of free movement 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 commercialisation of the
goods.
(10) 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.
(11) 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. Accordingly, it
should be capable of being transferred, subject to the
overriding need to prevent the public being misled as a
result of the transfer. It should also be capable of being
charged as security in favour of a third party and of being
the subject matter of licences.
(12) Administrative measures are necessary at Community level
for implementing in relation to every trade mark the trade
mark law created by this Regulation. It is therefore essential,
while retaining the Community's existing institutional
structure and balance of powers, to provide for an Office
for Harmonisation in the Internal Market (trade marks and
designs) which is independent in relation to technical
matters and has legal, administrative and financial
autonomy. To this end it is necessary and appropriate that
that Office 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.
(13) 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. To that end provision is made for an appeal to lie
from decisions of the examiners and of the various
divisions of the Office. 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. 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.
(14) Under the first subparagraph of Article 225(1) of the EC
Treaty the Court of First Instance of the European
Communities has jurisdiction to hear and determine at
first instance the actions referred to in particular in
Article 230 of the EC Treaty with the exception of those
assigned to a judicial panel and those reserved in the Statute
to the Court of Justice. The jurisdiction which this
Regulation confers on the Court of Justice to cancel and
alter decisions of the Boards of Appeal should accordingly
be exercised at first instance by the Court.
(15) 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.
(16) 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. The provisions
of Council Regulation (EC) No 44/2001 of 22 December
2000 on jurisdiction and the recognition and enforcement
of judgments in civil and commercial matters (1) should
apply to all actions at law relating to Community trade
marks, save where this Regulation derogates from those
rules.
(17) 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. 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 Regulation (EC) No 44/2001
appear appropriate.
(18) 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. However, the
Community budgetary procedure remains applicable as
far as any subsidies chargeable to the general budget of the
European Communities are concerned. Moreover, the
auditing of accounts should be undertaken by the Court
of Auditors.
(19) Measures necessary for the implementation of this
Regulation should be adopted, particularly as regards fees
regulations and an Implementing Regulation, in accordance
with Council Decision 1999/468/EC of 28 June 1999
L 78/2 EN Official Journal of the European Union 24.3.2009
(1) OJ L 12, 16.1.2001, p. 1.
laying down the procedures for the exercise of implementing
powers conferred on the Commission (1),
HAS ADOPTED THIS REGULATION:
TITLE I
GENERAL PROVISIONS
Article 1
Community trade mark
1. A trade mark for goods or services which is registered in
accordance with the conditions contained in this Regulation and
in the manner herein provided is hereinafter referred to as a
‘Community trade mark’.
2. A Community trade mark shall have a unitary character. It
shall have equal effect throughout the Community: it shall not be
registered, transferred or surrendered or be the subject of a
decision revoking the rights of the proprietor or declaring it
invalid, nor shall its use be prohibited, save in respect of the
whole Community. This principle shall apply unless otherwise
provided in this Regulation.
Article 2
Office
An Office for Harmonisation in the Internal Market (trade marks
and designs), hereinafter referred to as ‘the Office’, is hereby
established.
Article 3
Capacity to act
For the purpose of implementing this Regulation, companies or
firms and other legal bodies shall be regarded as legal persons if,
under the terms of the law governing them, they have the
capacity in their own name to have rights and obligations of all
kinds, to make contracts or accomplish other legal acts and to
sue and be sued.
TITLE II
THE LAW RELATING TO TRADE MARKS
SECTION 1
Definition of a Community trade mark and obtaining a
Community trade mark
Article 4
Signs of which a Community trade mark may consist
A Community trade mark may consist of any signs capable of
being represented graphically, particularly words, including
personal names, designs, letters, numerals, the shape of goods
or of their packaging, provided that such signs are capable of
distinguishing the goods or services of one undertaking from
those of other undertakings.
Article 5
Persons who can be proprietors of Community trade marks
Any natural or legal person, including authorities established
under public law, may be the proprietor of a Community trade
mark.
Article 6
Means whereby a Community trade mark is obtained
A Community trade mark shall be obtained by registration.
Article 7
Absolute grounds for refusal
1. The following shall not be registered:
(a) signs which do not conform to the requirements of
Article 4;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications
which may serve, in trade, to designate the kind,
quality, quantity, intended purpose, value, geographical
origin or the time of production of the goods or of
rendering of the service, or other characteristics of the
goods or service;
(d) trade marks which consist exclusively of signs or indications
which have become customary in the current
language or in the bona fide and established practices of
the trade;
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods
themselves;
(ii) the shape of goods which is necessary to obtain a
technical result;
(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 authorised by the
competent authorities and are to be refused pursuant to
Article 6ter of the Paris Convention for the Protection of
Industrial Property, hereinafter referred to as the ‘Paris
Convention’;
24.3.2009 EN Official Journal of the European Union L 78/3
(1) OJ L 184, 17.7.1999, p. 23.
(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 competent authority 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;
(k) trade marks which contain or consist of a designation of
origin or a geographical indication registered in accordance
with Council Regulation (EC) No 510/2006 of 20 March
2006 on the protection of geographical indications and
designations of origin for agricultural products and foodstuffs
(1) when they correspond to one of the situations
covered by Article 13 of the said Regulation and regarding
the same type of product, on condition that the application
for registration of the trade mark has been submitted after
the date of filing with the Commission of the application
for registration of the designation of origin or geographical
indication.
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.
Article 8
Relative grounds for refusal
1. Upon opposition by the proprietor of an earlier trade mark,
the trade mark applied for shall not be registered:
(a) if it is identical with the earlier trade mark and the goods or
services for which registration is applied for are identical
with the goods or services for which the earlier trade mark
is protected;
(b) if because of its identity with, or similarity to, the earlier
trade mark and the identity or similarity of the goods or
services covered by the trade marks there exists a likelihood
of confusion on the part of the public in the territory in
which the earlier trade mark is protected; the likelihood of
confusion includes the likelihood of association with the
earlier trade mark.
2. For the purposes of paragraph 1, ‘earlier trade marks’ means:
(a) trade marks of the following kinds with a date of
application for registration which is earlier than the date
of application for registration of the Community trade
mark, taking account, where appropriate, of the priorities
claimed in respect of those trade marks:
(i) Community trade marks;
(ii) trade marks registered in a Member State, or, in the
case of Belgium, the Netherlands or Luxembourg, at
the Benelux Office for Intellectual Property;
(iii) trade marks registered under international arrangements
which have effect in a Member State;
(iv) trade marks registered under international arrangements
which have effect in the Community;
(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 6bis of the Paris
Convention.
3. Upon opposition by the proprietor of the trade mark, a
trade mark shall not be registered where an agent or
representative of the proprietor of the trade mark applies for
registration thereof in his own name without the proprietor's
consent, unless the agent or representative justifies his action.
4. Upon opposition by the proprietor of a non-registered trade
mark or of another sign used in the course of trade of more than
mere local significance, the trade mark applied for shall not be
registered where and to the extent that, pursuant to the
Community legislation or the law of the Member State governing
that 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.
L 78/4 EN Official Journal of the European Union 24.3.2009
(1) OJ L 93, 31.3.2006, p. 12.
SECTION 2
Effects of Community trade marks
Article 9
Rights conferred by a Community trade mark
1. A Community trade mark shall confer on the proprietor
exclusive rights therein. The proprietor shall be entitled to
prevent all third parties not having his consent from using in the
course of trade:
(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 acts occurring after the date of
publication of a Community trade mark application, which acts
would, after publication of the registration of the trade mark, be
prohibited by virtue of that publication. The court seized of the
case may not decide upon the merits of the case until the
registration has been published.
Article 10
Reproduction of Community trade marks in dictionaries
If the reproduction of a Community trade mark in a dictionary,
encyclopaedia or similar reference work gives the impression that
it constitutes the generic name of the goods or services for which
the trade mark is registered, the publisher of the work shall, at
the request of the proprietor of the Community trade mark,
ensure that the reproduction of the trade mark at the latest in the
next edition of the publication is accompanied by an indication
that it is a registered trade mark.
Article 11
Prohibition on the use of a Community trade mark
registered in the name of an agent or representative
Where a Community trade mark is registered in the name of the
agent or representative of a person who is the proprietor of that
trade mark, without the proprietor's authorisation, the latter shall
be entitled to oppose the use of his mark by his agent or
representative if he has not authorised such use, unless the agent
or representative justifies his action.
Article 12
Limitation of the effects of a Community trade mark
A Community trade mark shall not entitle the proprietor to
prohibit a third party from using in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended
purpose, value, geographical origin, the time of production
of the goods or of rendering of the service, or other
characteristics of the goods or service;
(c) the trade mark where it is necessary to indicate the intended
purpose of a product or service, in particular as accessories
or spare parts,
provided he uses them in accordance with honest practices in
industrial or commercial matters.
Article 13
Exhaustion of the rights conferred by a Community trade
mark
1. A Community trade mark shall not entitle the proprietor to
prohibit its use in relation to goods which have been put on the
market in the Community under that trade mark by the
proprietor or with his consent.
2. Paragraph 1 shall not apply where there exist legitimate
reasons for the proprietor to oppose further commercialisation
of the goods, especially where the condition of the goods is
changed or impaired after they have been put on the market.
24.3.2009 EN Official Journal of the European Union L 78/5
Article 14
Complementary application of national law relating to
infringement
1. The effects of Community trade marks shall be governed
solely by the provisions of this Regulation. In other respects,
infringement of a Community trade mark shall be governed by
the national law relating to infringement of a national trade mark
in accordance with the provisions of Title X.
2. This Regulation shall not prevent actions concerning a
Community trade mark being brought under the law of Member
States relating in particular to civil liability and unfair
competition.
3. The rules of procedure to be applied shall be determined in
accordance with the provisions of Title X.
SECTION 3
Use of Community trade marks
Article 15
Use of Community trade marks
1. If, within a period of five years following registration, the
proprietor has not put the Community trade mark to genuine
use in the Community in connection with the goods or services
in respect of which it is registered, or if such use has been
suspended during an uninterrupted period of five years, the
Community trade mark shall be subject to the sanctions provided
for in this Regulation, unless there are proper reasons for nonuse.
The following shall also constitute use within the meaning of the
first subparagraph:
(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.
2. Use of the Community trade mark with the consent of the
proprietor shall be deemed to constitute use by the proprietor.
SECTION 4
Community trade marks as objects of property
Article 16
Dealing with Community trade marks as national trade
marks
1. Unless Articles 17 to 24 provide otherwise, a Community
trade mark as an object of property shall be dealt with in its
entirety, and for the whole area of the Community, as a national
trade mark registered in the Member State in which, according to
the Register of Community trade marks:
(a) the proprietor has his seat or his domicile on the relevant
date;
(b) where point (a) does not apply, the proprietor has an
establishment on the relevant date.
2. In cases which are not provided for by paragraph 1, the
Member State referred to in that paragraph shall be the Member
State in which the seat of the Office is situated.
3. If two or more persons are mentioned in the Register of
Community trade marks as joint proprietors, paragraph 1 shall
apply to the joint proprietor first mentioned; failing this, it shall
apply to the subsequent joint proprietors in the order in which
they are mentioned. Where paragraph 1 does not apply to any of
the joint proprietors, paragraph 2 shall apply.
Article 17
Transfer
1. A Community trade mark may be transferred, separately
from any transfer of the undertaking, in respect of some or all of
the goods or services for which it is registered.
2. A transfer of the whole of the undertaking shall include the
transfer of the Community trade mark except where, in
accordance with the law governing the transfer, there is
agreement to the contrary or circumstances clearly dictate
otherwise. This provision shall apply to the contractual
obligation to transfer the undertaking.
3. Without prejudice to paragraph 2, an assignment of the
Community trade mark shall be made in writing and shall
require the signature of the parties to the contract, except when it
is a result of a judgment; otherwise it shall be void.
4. Where it is clear from the transfer documents that because
of the transfer the Community trade mark is likely to mislead the
public concerning the nature, quality or geographical 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
transfer has been received by the Office.
L 78/6 EN Official Journal of the European Union 24.3.2009
8. All documents which require notification to the proprietor
of the Community trade mark in accordance with Article 79
shall be addressed to the person registered as proprietor.
Article 18
Transfer of a trade mark registered in the name of an agent
Where a Community trade mark is registered in the name of the
agent or representative of a person who is the proprietor of that
trade mark, without the proprietor's authorisation, the latter shall
be entitled to demand the assignment in his favour of the said
registration, unless such agent or representative justifies his
action.
Article 19
Rights in rem
1. A Community trade mark may, independently of the
undertaking, be given as security or be the subject of rights in
rem.
2. On request of one of the parties, rights mentioned in
paragraph 1 shall be entered in the Register and published.
Article 20
Levy of execution
1. A Community trade mark may be levied in execution.
2. As regards the procedure for levy of execution in respect of a
Community trade mark, the courts and authorities of the
Member States determined in accordance with Article 16 shall
have exclusive jurisdiction.
3. On request of one the parties, levy of execution shall be
entered in the Register and published.
Article 21
Insolvency proceedings
1. The only insolvency proceedings in which a Community
trade mark may be involved are those opened in the Member
State in the territory of which the debtor has his centre of main
interests.
However, where the debtor is an insurance undertaking or a
credit institution as defined in Directive 2001/17/EC of the
European Parliament and of the Council of 19 March 2001 on
the reorganisation and winding-up of insurance undertakings (1)
and Directive 2001/24/EC of the European Parliament and of the
Council of 4 April 2001 on the reorganisation and winding up
of credit institutions (2), respectively, the only insolvency
proceedings in which a Community trademark may be involved
are those opened in the Member State where that undertaking or
institution has been authorised.
2. In the case of joint proprietorship of a Community trade
mark, paragraph 1 shall apply to the share of the joint
proprietor.
3. Where a Community trade mark is involved in insolvency
proceedings, on request of the competent national authority an
entry to this effect shall be made in the Register and published in
the Community Trade Marks Bulletin referred to in Article 89.
Article 22
Licensing
1. A Community trade mark may be licensed for some or all of
the goods or services for which it is registered and for the whole
or part of the Community. A licence may be exclusive or nonexclusive.
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:
(a) its duration;
(b) the form covered by the registration in which the trade
mark may be used;
(c) the scope of the goods or services for which the licence is
granted;
(d) the territory in which the trade mark may be affixed; or
(e) the quality of the goods manufactured or of the services
provided by the licensee.
3. Without prejudice to the provisions of the licensing
contract, the licensee may bring proceedings for infringement
of a Community trade mark only if its proprietor consents
thereto. However, the holder of an exclusive licence may bring
such proceedings if the proprietor of the trade mark, after formal
notice, does not himself bring infringement proceedings within
an appropriate period.
4. A licensee shall, for the purpose of obtaining compensation
for damage suffered by him, be entitled to intervene in
infringement proceedings brought by the proprietor of the
Community trade mark.
5. On request of one of the parties the grant or transfer of a
licence in respect of a Community trade mark shall be entered in
the Register and published.
Article 23
Effects vis-à-vis third parties
1. Legal acts referred to in Articles 17, 19 and 22 concerning a
Community trade mark shall have effects vis-à-vis third parties in
all the Member States only after entry in the Register.
Nevertheless, such an act, before it is so entered, shall have
24.3.2009 EN Official Journal of the European Union L 78/7
(1) OJ L 110, 20.4.2001, p. 28.
(2) OJ L 125, 5.5.2001, p. 15.
effect vis-à-vis third parties who have acquired rights in the trade
mark after the date of that act but who knew of the act at the
date on which the rights were acquired.
2. Paragraph 1 shall not apply in the case of a person who
acquires the Community trade mark or a right concerning the
Community trade mark by way of transfer of the whole of the
undertaking or by any other universal succession.
3. The effects vis-à-vis third parties of the legal acts referred to
in Article 20 shall be governed by the law of the Member State
determined in accordance with Article 16.
4. Until such time as common rules for the Member States in
the field of bankruptcy enter into force, the effects vis-à-vis third
parties of bankruptcy or like proceedings shall be governed by
the law of the Member State in which such proceedings are first
brought within the meaning of national law or of conventions
applicable in this field.
Article 24
The application for a Community trade mark as an object of
property
Articles 16 to 23 shall apply to applications for Community
trade marks.
TITLE III
APPLICATION FOR COMMUNITY TRADE MARKS
SECTION 1
Filing of applications and the conditions which govern them
Article 25
Filing of applications
1. An application for a Community trade mark shall be filed, at
the choice of the applicant:
(a) at the Office;
(b) at the central industrial property office of a Member State
or at the Benelux Office for Intellectual Property. 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 Office for
Intellectual Property, that office shall take all steps to forward the
application to the Office within two weeks after filing. It may
charge the applicant a fee which shall not exceed the
administrative costs of receiving and forwarding the application.
3. Applications referred to in paragraph 2 which reach the
Office more than two months after filing shall be deemed to have
been filed on the date on which the application reached the
Office.
4. Ten years after the entry into force of Regulation (EC)
No 40/94, 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.
Article 26
Conditions with which applications must comply
1. An application for a Community trade mark shall contain:
(a) a request for the registration of a Community trade mark;
(b) information identifying the applicant;
(c) a list of the goods or services in respect of which the
registration is requested;
(d) a representation of the trade mark.
2. The application for a Community trade mark shall be subject
to the payment of the application fee and, when appropriate, of
one or more class fees.
3. An application for a Community trade mark must comply
with the conditions laid down in the Implementing Regulation
referred to in Article 162(1), hereinafter referred to as the
‘Implementing Regulation’.
Article 27
Date of filing
The date of filing of a Community trade mark application shall
be the date on which documents containing the information
specified in Article 26(1) are filed with the Office by the
applicant or, if the application has been filed with the central
office of a Member State or with the Benelux Office for
Intellectual Property, with that office, subject to payment of the
application fee within a period of one month of filing the
abovementioned documents.
Article 28
Classification
Goods and services in respect of which Community trade marks
are applied for shall be classified in conformity with the system
of classification specified in the Implementing Regulation.
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SECTION 2
Priority
Article 29
Right of priority
1. A person who has duly filed an application for a trade mark
in or in respect of any State 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 in
respect of goods or services which are identical with or contained
within those for which the application has been filed, a right of
priority during a period of six months from the date of filing of
the first application.
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 recognised 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 Organisation, paragraphs 1 to 4 shall apply only
in so far as that State, according to published findings, grants, on
the basis of the first filing made at the Office and subject to
conditions equivalent to those laid down in this Regulation, a
right of priority having equivalent effect.
Article 30
Claiming priority
An applicant desiring to take advantage of the priority of a
previous application shall file a declaration of priority and a copy
of the previous application. If the language of the latter is not
one of the languages of the Office, the applicant shall file a
translation of the previous application in one of those languages.
Article 31
Effect of priority right
The right of priority shall have the effect that the date of priority
shall count as the date of filing of the Community trade mark
application for the purposes of establishing which rights take
precedence.
Article 32
Equivalence of Community filing with national filing
A Community trade mark application which has been accorded a
date of filing shall, in the Member States, be equivalent to a
regular national filing, where appropriate with the priority
claimed for the Community trade mark application.
SECTION 3
Exhibition priority
Article 33
Exhibition priority
1. If an applicant for a Community trade mark has displayed
goods or services under the mark applied for, at an official or
officially recognised international exhibition falling within the
terms of the Convention on International Exhibitions signed at
Paris on 22 November 1928 and last revised on 30 November
1972, he may, if he files the application within a period of six
months from the date of the first display of the goods or services
under the mark applied for, claim a right of priority from that
date within the meaning of Article 31.
2. An applicant who wishes to claim priority pursuant to
paragraph 1 must file evidence of the display of goods or services
under the mark applied for under the conditions laid down in
the Implementing Regulation.
3. An exhibition priority granted in a Member State or in a
third country does not extend the period of priority laid down in
Article 29.
SECTION 4
Claiming the seniority of a national trade mark
Article 34
Claiming the seniority of a national trade mark
1. The proprietor of an earlier trade mark registered in a
Member State, including a trade mark registered in the Benelux
countries, or registered under international arrangements having
effect in a Member State, who applies for an identical trade mark
for registration as a Community trade mark for goods or services
which are identical with or contained within those for which the
earlier trade mark has been registered, may claim for the
Community trade mark the seniority of the earlier trade mark in
respect of the Member State in or for which it is registered.
24.3.2009 EN Official Journal of the European Union L 78/9
2. Seniority shall have the sole effect under this Regulation
that, where the proprietor of the Community trade mark
surrenders the earlier trade mark or allows it to lapse, he shall be
deemed to continue to have the same rights as he would have
had if the earlier trade mark had continued to be registered.
3. The seniority claimed for the Community trade mark shall
lapse if the earlier trade mark the seniority of which is claimed is
declared to have been revoked or to be invalid or if it is
surrendered prior to the registration of the Community trade
mark.
Article 35
Claiming seniority after registration of the Community
trade mark
1. The proprietor of a Community trade mark who is the
proprietor of an earlier identical trade mark registered in a
Member State, including a trade mark registered in the Benelux
countries or of an earlier identical trade mark, with an
international registration effective in a Member State, for goods
or services which are identical to those for which the earlier trade
mark has been registered, or contained within them, may claim
the seniority of the earlier trade mark in respect of the Member
State in or for which it was registered.
2. Article 34(2) and (3) shall apply.
TITLE IV
REGISTRATION PROCEDURE
SECTION 1
Examination of applications
Article 36
Examination of the conditions of filing
1. The Office shall examine whether:
(a) the Community trade mark application satisfies the
requirements for the accordance of a date of filing in
accordance with Article 27;
(b) the Community trade mark application complies with the
conditions laid down in this Regulation and with the
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.
Article 37
Examination as to absolute grounds for refusal
1. Where, under Article 7, a trade mark is ineligible for
registration in respect of some or all of the goods or services
covered by the Community trade mark application, the
application shall be refused as regards those goods or services.
2. Where the trade mark contains an element which is not
distinctive, and where the inclusion of that element in the trade
mark could give rise to doubts as to the scope of protection of
the trade mark, the Office may request, as a condition for
registration of said trade mark, that the applicant state that he
disclaims any exclusive right to such element. Any disclaimer
shall be published together with the application or the
registration of the Community trade mark, as the case may be.
3. The application shall not be refused before the applicant has
been allowed the opportunity of withdrawing or amending the
application or of submitting his observations.
SECTION 2
Search
Article 38
Search
1. Once the Office has accorded a date of filing, it shall draw up
a Community search report citing those earlier Community trade
marks or Community trade mark applications discovered which
L 78/10 EN Official Journal of the European Union 24.3.2009
may be invoked under Article 8 against the registration of the
Community trade mark applied for.
2. Where, at the time of filing a Community trade mark
application, the applicant requests that a search report also be
prepared by the central industrial property offices of the Member
States and where the appropriate search fee has been paid within
the time limit for the payment of the filing fee, the Office shall, as
soon as a Community trade mark application has been accorded
a date of filing, transmit a copy thereof to the central industrial
property office of each Member State which has informed the
Office of its decision to operate a search in its own register of
trade marks in respect of Community trade mark applications.
3. Each of the central industrial property offices referred to in
paragraph 2 shall communicate to the Office within two months
as from the date on which it received the Community trade mark
application a search report which shall either cite those earlier
national trade marks or trade mark applications discovered
which may be invoked under Article 8 against the registration of
the Community trade mark applied for, or state that the search
has revealed no such rights.
4. The search reports referred to in paragraph 3 shall be
prepared on a standard form drawn up by the Office, after
consulting the Administrative Board provided for in Article
126(1), hereinafter referred to as ‘the Administrative Board’.
The essential contents of this form shall be set out in the
Implementing Regulation.
5. An amount shall be paid by the Office to each central
industrial property office for each search report provided by that
office in accordance with paragraph 3. The amount, which shall
be the same for each office, shall be fixed by the Budget
Committee by means of a decision adopted by a majority of
three-quarters of the representatives of the Member States.
6. The Office shall transmit without delay to the applicant for
the Community trade mark the Community search report and
any requested national search reports received within the time
limit laid down in paragraph 3.
7. Upon publication of the Community trade mark application,
which may not take place before the expiry of a period of one
month as from the date on which the Office transmits the search
reports to the applicant, the Office shall inform the proprietors
of any earlier Community trade marks or Community trade mark
applications cited in the Community search report of the
publication of the Community trade mark application.
SECTION 3
Publication of the application
Article 39
Publication of the application
1. If the conditions which the application for a Community
trade mark must satisfy have been fulfilled and if the period
referred to in Article 38(7) has expired, the application shall be
published to the extent that it has not been refused pursuant to
Article 37.
2. Where, after publication, the application is refused under
Article 37, the decision that it has been refused shall be
published upon becoming final.
SECTION 4
Observations by third parties and opposition
Article 40
Observations by third parties
1. Following the publication of the Community trade mark
application, any natural or legal person and any group or body
representing manufacturers, producers, suppliers of services,
traders or consumers may submit to the Office written
observations, explaining on which grounds under Article 7, in
particular, the trade mark shall not be registered ex officio. They
shall not be parties to the proceedings before the Office.
2. The observations referred to in paragraph 1 shall be
communicated to the applicant who may comment on them.
Article 41
Opposition
1. Within a period of three months following the publication
of a Community trade mark application, notice of opposition to
registration of the trade mark may be given on the grounds that
it may not be registered under Article 8:
(a) by the proprietors of earlier trade marks referred to in
Article 8(2) as well as licensees authorised 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 authorised 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 43(2).
24.3.2009 EN Official Journal of the European Union L 78/11
3. Opposition must be expressed in writing and must specify
the grounds on which it is made. It shall not be treated as duly
entered until the opposition fee has been paid. Within a period
fixed by the Office, the opponent may submit in support of his
case facts, evidence and arguments.
Article 42
Examination of opposition
1. In the examination of the opposition the Office shall invite
the parties, as often as necessary, to file observations, within a
period set them by the Office, on communications from the
other parties or issued by itself.
2. If the applicant so requests, the proprietor of an earlier
Community trade mark who has given notice of opposition shall
furnish proof that, during the period of five years preceding the
date of publication of the Community trade mark application,
the earlier Community trade mark has been put to genuine use in
the Community in connection with the goods or services in
respect of which it is registered and which he cites as justification
for his opposition, or that there are proper reasons for non-use,
provided the earlier Community trade mark has at that date been
registered for not less than five years. In the absence of proof to
this effect, the opposition shall be rejected. If the earlier
Community trade mark has been used in relation to part only
of the goods or services for which it is registered it shall, for the
purposes of the examination of the opposition, be deemed to be
registered in respect only of that part of the goods or services.
3. Paragraph 2 shall apply to earlier national trade marks
referred to in Article 8(2)(a), by substituting use in the Member
State in which the earlier national trade mark is protected for use
in the Community.
4. The Office may, if it thinks fit, invite the parties to make a
friendly settlement.
5. If examination of the opposition reveals that the trade mark
may not be registered in respect of some or all of the goods or
services for which the Community trade mark application has
been made, the application shall be refused in respect of those
goods or services. Otherwise the opposition shall be rejected.
6. The decision refusing the application shall be published
upon becoming final.
SECTION 5
Withdrawal, restriction, amendment and division of the
application
Article 43
Withdrawal, restriction and amendment of the application
1. The applicant may at any time withdraw his Community
trade mark application or restrict the list of goods or services
contained therein. Where the application has already been
published, the withdrawal or restriction shall also be published.
2. In other respects, a Community trade mark application may
be amended, upon request of the applicant, only by correcting
the name and address of the applicant, errors of wording or of
copying, or obvious mistakes, provided that such correction does
not substantially change the trade mark or extend the list of
goods or services. Where the amendments affect the representation
of the trade mark or the list of goods or services and are
made after publication of the application, the trade mark
application shall be published as amended.
Article 44
Division of the application
1. The applicant may divide the application by declaring that
some of the goods or services included in the original application
will be the subject of one or more divisional applications. The
goods or services in the divisional application shall not overlap
with the goods or services which remain in the original
application or those which are included in other divisional
applications.
2. The declaration of division shall not be admissible:
(a) if, where an opposition has been entered against the
original application, such a divisional application has the
effect of introducing a division amongst the goods or
services against which the opposition has been directed,
until the decision of the Opposition Division has become
final or the opposition proceedings are finally terminated
otherwise;
(b) during the periods laid down in the Implementing
Regulation.
3. The declaration of division must comply with the provisions
set out in the Implementing Regulation.
4. The declaration of division shall be subject to a fee. The
declaration shall be deemed not to have been made until the fee
has been paid.
5. The division shall take effect on the date on which it is
recorded in the files kept by the Office concerning the original
application.
6. All requests and applications submitted and all fees paid
with regard to the original application prior to the date on which
the Office receives the declaration of division are deemed also to
have been submitted or paid with regard to the divisional
application or applications. The fees for the original application
which have been duly paid prior to the date on which the
declaration of division is received shall not be refunded.
7. The divisional application shall preserve the filing date and
any priority date and seniority date of the original application.
L 78/12 EN Official Journal of the European Union 24.3.2009
SECTION 6
Registration
Article 45
Registration
Where an application meets the requirements of this Regulation
and where no notice of opposition has been given within the
period referred to in Article 41(1) or where opposition has been
rejected by a definitive decision, the trade mark shall be
registered as a Community trade mark, provided that the
registration fee has been paid within the period prescribed. If the
fee is not paid within this period the application shall be deemed
to be withdrawn.
TITLE V
DURATION, RENEWAL, ALTERATION AND DIVISION OF
COMMUNITY TRADE MARKS
Article 46
Duration of registration
Community trade marks shall be registered for a period of 10
years from the date of filing of the application. Registration may
be renewed in accordance with Article 47 for further periods of
10 years.
Article 47
Renewal
1. Registration of the Community trade mark shall be renewed
at the request of the proprietor of the trade mark or any person
expressly authorised by him, provided that the fees have been
paid.
2. The Office shall inform the proprietor of the Community
trade mark, and any person having a registered right in respect of
the Community trade mark, of the expiry of the registration in
good time before the said expiry. Failure to give such information
shall not involve the responsibility of the Office.
3. The request for renewal shall be submitted within a period
of six months ending on the last day of the month in which
protection ends. The fees shall also be paid within this period.
Failing this, the request may be submitted and the fees paid
within a further period of six months following the day referred
to in the first sentence, provided that an additional fee is paid
within this further period.
4. Where the request is submitted or the fees paid in respect of
only some of the goods or services for which the Community
trade mark is registered, registration shall be renewed for those
goods or services only.
5. Renewal shall take effect from the day following the date on
which the existing registration expires. The renewal shall be
registered.
Article 48
Alteration
1. The Community trade mark shall not be altered in the
Register during the period of registration or on renewal thereof.
2. Nevertheless, where the Community trade mark includes the
name and address of the proprietor, any alteration thereof not
substantially affecting the identity of the trade mark as originally
registered may be registered at the request of the proprietor.
3. The publication of the registration of the alteration shall
contain a representation of the Community trade mark as
altered. Third parties whose rights may be affected by the
alteration may challenge the registration thereof within a period
of three months following publication.
Article 49
Division of the registration
1. The prop