Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (Text with EEA relevance)
Modified by
- Treaty betweenthe Kingdom of Belgium, the Republic of Bulgaria, the Czech Republic, the Kingdom of Denmark, the Federal Republic of Germany, the Republic of Estonia, Ireland, the Hellenic Republic, the Kingdom of Spain, the French Republic, the Italian Republic, the Republic of Cyprus, the Republic of Latvia, the Republic of Lithuania, the Grand Duchy of Luxembourg, the Republic of Hungary, the Republic of Malta, the Kingdom of the Netherlands, the Republic of Austria, the Republic of Poland, the Portuguese Republic, Romania, the Republic of Slovenia, the Slovak Republic, the Republic of Finland, the Kingdom of Sweden, the United Kingdom of Great Britain and Northern Ireland(Member States of the European Union)andthe Republic of Croatiaconcerning the accession of the Republic of Croatia to the European Union, 12012J, April 24, 2012
(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 6 ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the "Paris Convention";(i) trade marks which include badges, emblems or escutcheons other than those covered by Article 6 ter 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 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.OJ L 93, 31.3.2006, p. 12 .
(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.
(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 6 bis of the Paris Convention.
(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.
(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.
(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.
(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,
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(a) if, where an application for revocation of rights or for a declaration of invalidity has been entered at the Office against the original registration, such a divisional declaration has the effect of introducing a division amongst the goods or services against which the application for revocation of rights or for a declaration of invalidity is directed, until the decision of the Cancellation Division has become final or the proceedings are finally terminated otherwise; (b) if, where a counterclaim for revocation or for a declaration of invalidity has been entered in a case before a Community trade mark court, such a divisional declaration has the effect of introducing a division amongst the goods or services against which the counterclaim is directed, until the mention of the Community trade mark court's judgment is recorded in the Register pursuant to Article 100(6).
(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.
(a) where the Community trade mark has been registered contrary to the provisions of Article 7; (b) where the applicant was acting in bad faith when he filed the application for the trade mark.
(a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or paragraph 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.
(a) a right to a name; (b) a right of personal portrayal; (c) a copyright; (d) an industrial property right.
(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 51 and 52 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 53(1) applies, by the persons referred to in Article 41(1); (c) where Article 53(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.
(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 68(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 71(2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of those provisions.
(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.
(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.
(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; (b) professional representatives whose names appear on the list maintained for this purpose by the Office. The Implementing Regulation shall specify whether and under what conditions the representatives before the Office must file with the Office a signed authorisation for insertion on the file.
(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 a Member State. Where, in that State, the entitlement is not conditional upon the requirement of special professional qualifications, persons 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 recognised in accordance with the regulations laid down by such State shall not be subject to the condition of having exercised the profession.
(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.
(a) Articles 2 and 4, points 1, 3, 4 and 5 of Article 5 and Article 31 of Regulation (EC) No 44/2001 shall not apply; (b) Articles 23 and 24 of Regulation (EC) No 44/2001 shall apply subject to the limitations in Article 97(4) of this Regulation; (c) the provisions of Chapter II of Regulation (EC) No 44/2001 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.
(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 100.
(a) Article 23 of Regulation (EC) No 44/2001 shall apply if the parties agree that a different Community trade mark court shall have jurisdiction; (b) Article 24 of Regulation (EC) No 44/2001 shall apply if the defendant enters an appearance before a different Community trade mark court.
(a) acts of infringement committed or threatened within the territory of any of the Member States; (b) acts within the meaning of Article 9(3), second sentence, committed within the territory of any of the Member States.
(a) the court other than the court first seized shall of its own motion decline 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.
(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.
(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.
(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.
(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 116(2); (f) he may delegate his powers.
(a) examiners; (b) Opposition Divisions; (c) an Administration of Trade Marks and Legal Division; (d) Cancellation Divisions; (e) Boards of Appeal.
(a) by the authority of the Boards of Appeal set up in accordance with the rules of procedure of the Boards referred to in Article 162(3); or (b) by the Board handling the case.
(a) chair the authority of the Boards of Appeal responsible for laying down the rules and organising the work of the Boards, which authority is provided for in the rules of procedure of the Boards referred to in Article 162(3); (b) ensure the implementation of the authority's decisions; (c) allocate cases to a Board on the basis of objective criteria determined by the authority of the Boards of Appeal; (d) forward to the President of the Office the Boards' expenditure requirements, with a view to drawing up the expenditure estimates.
(a) into a national trade mark application pursuant to Articles 112, 113 and 114; (b) into a designation of a Member State party to the Madrid Protocol or the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 14 April 1891 , as revised and amended (hereafter referred to as the "Madrid Agreement"), provided that on the date when conversion was requested it was possible to have designated that Member State directly under the Madrid Protocol or the Madrid Agreement. Articles 112, 113 and 114 shall apply.
(a) late payment of the registration fee; (b) issue of a copy of the certificate of registration; (c) registration of a licence or another right in respect of a Community trade mark; (d) registration of a licence or another right in respect of an application for a Community trade mark; (e) cancellation of the registration of a licence or another right; (f) alteration of a registered Community trade mark; (g) issue of an extract from the Register; (h) inspection of the files; (i) issue of copies of file documents; (j) issue of certified copies of the application; (k) communication of information in a file; (l) review of the determination of the procedural costs to be refunded.
(a) pursuant to Article 52 if the grounds for invalidity became applicable merely because of the accession of a new Member State; (b) pursuant to Article 53(1) and (2) if the earlier national right was registered, applied for or acquired in a new Member State prior to the date of accession.
Only point 48 of Annex III | |
Only Article 1 | |
Regulation (EC) No 40/94 | This Regulation |
---|---|
Articles 1 to 14 | Articles 1 to 14 |
Article 15(1) | Article 15(1), first subparagraph |
Article 15(2), introductory words | Article 15(1), second subparagraph, introductory words |
Article 15(2), point a | Article 15(1), second subparagraph, point a |
Article 15(2), point b | Article 15(1), second subparagraph, point b |
Article 15(3) | Article 15(2) |
Articles 16 to 36 | Articles 16 to 36 |
Article 37 | — |
Article 38 | Article 37 |
Article 39 | Article 38 |
Article 40 | Article 39 |
Article 41 | Article 40 |
Article 42 | Article 41 |
Article 43 | Article 42 |
Article 44 | Article 43 |
Article 44 | Article 44 |
Articles 45 to 48 | Articles 45 to 48 |
Article 48 | Article 49 |
Article 49 | Article 50 |
Article 50 | Article 51 |
Article 51 | Article 52 |
Article 52 | Article 53 |
Article 53 | Article 54 |
Article 54 | Article 55 |
Article 55 | Article 56 |
Article 56 | Article 57 |
Article 57 | Article 58 |
Article 58 | Article 59 |
Article 59 | Article 60 |
Article 60 | Article 61 |
Article 60 | Article 62 |
Article 61 | Article 63 |
Article 62 | Article 64 |
Article 63 | Article 65 |
Article 64 | Article 66 |
Article 65 | Article 67 |
Article 66 | Article 68 |
Article 67 | Article 69 |
Article 68 | Article 70 |
Article 69 | Article 71 |
Article 70 | Article 72 |
Article 71 | Article 73 |
Article 72 | Article 74 |
Article 73 | Article 75 |
Article 74 | Article 76 |
Article 75 | Article 77 |
Article 76 | Article 78 |
Article 77 | Article 79 |
Article 77 | Article 80 |
Article 78 | Article 81 |
Article 78 | Article 82 |
Article 79 | Article 83 |
Article 80 | Article 84 |
Article 81 | Article 85 |
Article 82 | Article 86 |
Article 83 | Article 87 |
Article 84 | Article 88 |
Article 85 | Article 89 |
Article 86 | Article 90 |
Article 87 | Article 91 |
Article 88 | Article 92 |
Article 89 | Article 93 |
Article 90 | Article 94 |
Article 91 | Article 95 |
Article 92 | Article 96 |
Article 93 | Article 97 |
Article 94(1), introductory wording | Article 98(1), introductory wording |
Article 94(1), first indent | Article 98(1)(a) |
Article 94(1), second indent | Article 98(1)(b) |
Article 94(2) | Article 98(2) |
Article 95 | Article 99 |
Article 96 | Article 100 |
Article 97 | Article 101 |
Article 98 | Article 102 |
Article 99 | Article 103 |
Article 100 | Article 104 |
Article 101 | Article 105 |
Article 102 | Article 106 |
Article 103 | Article 107 |
Article 104 | Article 108 |
Article 105 | Article 109 |
Article 106 | Article 110 |
Article 107 | Article 111 |
Article 108 | Article 112 |
Article 109 | Article 113 |
Article 110 | Article 114 |
Article 111 | Article 115 |
Article 112 | Article 116 |
Article 113 | Article 117 |
Article 114 | Article 118 |
Article 115 | Article 119 |
Article 116 | Article 120 |
Article 117 | Article 121 |
Article 118 | Article 122 |
Article 118 | Article 123 |
Article 119 | Article 124 |
Article 120 | Article 125 |
Article 121(1) and (2) | Article 126(1) and (2) |
Article 121(3) | — |
Article 121(4) | Article 126(3) |
Article 121(5) | Article 126(4) |
Article 121(6) | Article 126(5) |
Article 122 | Article 127 |
Article 123 | Article 128 |
Article 124 | Article 129 |
Article 125 | Article 130 |
Article 126 | Article 131 |
Article 127 | Article 132 |
Article 128 | Article 133 |
Article 129 | Article 134 |
Article 130 | Article 135 |
Article 131 | Article 136 |
Article 132 | Article 137 |
Article 133 | Article 138 |
Article 134 | Article 139 |
Article 135 | Article 140 |
Article 136 | Article 141 |
Article 137 | Article 142 |
Article 138 | Article 143 |
Article 139 | Article 144 |
Article 140 | Article 145 |
Article 141 | Article 146 |
Article 142 | Article 147 |
Article 143 | Article 148 |
Article 144 | Article 149 |
Article 145 | Article 150 |
Article 146 | Article 151 |
Article 147 | Article 152 |
Article 148 | Article 153 |
Article 149 | Article 154 |
Article 150 | Article 155 |
Article 151 | Article 156 |
Article 152 | Article 157 |
Article 153 | Article 158 |
Article 154 | Article 159 |
Article 155 | Article 160 |
Article 156 | Article 161 |
Article 157(1) | Article 162(1) |
Article 157(2), introductory wording | Article 162(2), introductory wording |
Article 157(2)(2) | Article 162(2)(a) |
Article 157(2)(3) | Article 162(2)(b) |
Article 157(2)(5) | Article 162(2)(c) |
Article 157(2)(6) | Article 162(2)(d) |
Article 157(2)(7) | Article 162(2)(e) |
Article 157(2)(8) | Article 162(2)(f) |
Article 157(2)(9) | Article 162(2)(g) |
Article 157(2)(10) | Article 162(2)(h) |
Article 157(2)(11) | Article 162(2)(i) |
Article 157(2)(12) | Article 162(2)(j) |
Article 157(2)(13) | Article 162(2)(k) |
Article 157(2)(14) | Article 162(2)(l) |
Article 157(3) | Article 162(3) |
Article 158 | Article 163 |
Article 159 | Article 164 |
Article 159 | Article 165(1), (2) and (3) |
Article 159 | Article 165(4), initial wording |
Article 159 | Article 165(4)(a) |
Article 159 | Article 165(4)(b) |
Article 159 | Article 165(5) |
— | Article 166 |
Article 160(1) | Article 167(1) |
Article 160(2) | Article 167(2) |
Article 160(3) and (4) | — |
— | Annex I |
— | Annex II |