Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark
Modified by
  • Council Regulation (EC) No 3288/94of 22 December 1994, 31994R3288, December 31, 1994
  • Council Regulation (EC) No 807/2003of 14 April 2003adapting to Decision 1999/468/EC the provisions relating to committees which assist the Commission in the exercise of its implementing powers laid down in Council instruments adopted in accordance with the consultation procedure (unanimity), 32003R0807, May 16, 2003
  • Actconcerning the conditions of accession of the Czech Republic, the Republic of Estonia, the Republic of Cyprus, the Republic of Latvia, the Republic of Lithuania, the Republic of Hungary, the Republic of Malta, the Republic of Poland, the Republic of Slovenia and the Slovak Republic and the adjustments to the Treaties on which the European Union is founded, 12003T, September 23, 2003
  • Council Regulation (EC) No 1653/2003of 18 June 2003amending Regulation (EC) No 40/94 on the Community trade mark, 32003R1653, September 29, 2003
  • Council Regulation (EC) No 1992/2003of 27 October 2003amending Regulation (EC) No 40/94 on the Community trade mark to give effect to the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks adopted at Madrid on 27 June 1989, 32003R1992, November 14, 2003
  • Council Regulation (EC) No 422/2004of 19 February 2004amending Regulation (EC) No 40/94 on the Community trade mark(Text with EEA relevance), 32004R0422, March 9, 2004
  • Actconcerning the conditions of accession of the Republic of Bulgaria and Romania and the adjustments to the Treaties on which the European Union is founded, 12005S, June 21, 2005
  • Council Regulation (EC) No 1891/2006of 18 December 2006amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, 32006R1891(01), December 29, 2006
  • Council Regulation (EC) No 207/2009of 26 February 2009on the Community trade mark(codified version)(Text with EEA relevance), 32009R0207, March 24, 2009
Council Regulation (EC) No 40/94of 20 December 1993on the Community trade mark THE COUNCIL OF THE EUROPEAN UNION, Having regard to the Treaty establishing the European Community, and in particular Article 235 thereof, Having regard to the proposal from the CommissionOJ No C 351, 31. 12. 1980, p. 1 and OJ No C 230, 31. 8. 1984, p. 1., Having regard to the opinion of the European ParliamentOJ No C 307, 14. 11. 1983, p. 46 and OJ No C 280, 28. 10. 1991, p. 153., Having regard to the opinion of the Economic and Social CommitteeOJ No C 310, 30. 11. 1981, p. 22., 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 CommunitiesOJ No L 319, 25. 11. 1988, p. 1 and corrigendum in OJ No L 241, 17. 8. 1989, p. 4., as amended by Decision 93/350/Euratom, ECSC, EEC of 8 June 1993OJ No L 144, 16. 6. 1993, p. 21., 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 Decisions 87/373/EEC of 13 July 1987 laying down the procedures for the exercise of implementing powers conferred on the CommissionOJ No L 197, 18. 7. 1987, p. 33., HAS ADOPTED THIS REGULATION:
Loading ...