The Community Trade Mark
2. The Community Trade Mark - Basics :
References to the respective Articles of the European Council Regulation (EC) No. 40/94 (CTMR) and Rules of the Commission Regulation (EC) No. 2868/95 of December 13, 1995 (CTMR) which are forming the legal basis for the registration of Community trade marks may be found in the top right corner at the beginning of each chapter.
2.1 What is a Community Trade Mark?
[Art.4,R.10]
The Community trade mark has its name from the fact that it offers protection for a trade mark throughout the entire European Community, nowadays designated more correctly as European Union. Thus, the Community trade mark porovides the possibility of protecting a trade mark in all countries of the EU by filing only one application. It is neither necessary nor possible to designate any specific countries.
[Art.28, Rule 2]
A Community trade mark can be filed for goods as well as for services. It is possible for one application to cover different classes of goods or services. The international classification system of the Nice Agreement has been adopted for the filing of Community trade marks.
A sign must mainly meet two conditions in order to be registrable as Community trade mark. Firstly, a sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. Secondly, it must be possible to represent the sign in graphic form. Signs capable of being represented graphically may be words, invented or belonging to a known language, or:
* personal names,
* signatures,
* letters, numerals,
* acronyms, logos,
* slogans,
* designs, figures and pictographs (also in colour),
* portraits of people,
* collections of words or graphical elements and signs associating verbal and graphical signs, e.g. labels,
* three dimensional trade marks such as the shapes of goods or of their packaging,
* colours or colour combinations, or
* sound marks, in particular musical phrases.
Some signs are exempt from registration. These are discussed in the chapter on absolute grounds for refusal of a trade mark registration.
2.2 Historical perspective
The necessity for a uniform European trade mark became apparent soon after the establishment of the European Community with the Treaty of Rome in 1957. As early as 1964, a first draft for a "Convention on European Trade Mark Law" was issued. Nevertheless, the first palpable proposal for a Community trade mark did not appear until 1980.
The free flow of goods among the members of the European Community was one of the fundamental freedoms stated in the Treaty of Rome. However,incongruencies in individual national trade mark laws posed a threat to the principle by potentially discriminating against different applicants and proprietors of trade marks in the Member States.
The first step in solving this problem was to harmonize the national laws of the Member States. This was achieved by the "First Council Directive to Approximate the Laws of the Member States Relating to Trade Marks" (89/104/EEC), which is known as the First Directive". The First Directive sets forth a common definition of trade marks and establishes absolute and relative grounds for refusal of registration and cancellation of national trade marks. However, it leaves EU Member States to develop their own procedures for registration and maintenance of national trade marks. In this respect, the First Directive has stopped short of a complete harmonization of the national trade mark laws, but must nevertheless be seen in association with the following Regulation for which it has prepared the ground.
The second step towards greater harmonization in accordance with the Treaty of Rome was the introduction of the Community trade mark. The legal basis for the Community trade mark was set out in:
* the European Council Regulation (EC) No. 40/94 of December 20, 1993 on the Community trade mark (effective March 15, 1994), referred to as CTMR, and
* the Commission Regulation (EC) No. 2868/95 of December 13, 1995 (effective April 1, 1996) implementing Council Regulation (EC) No. 40/94 on the Community trade mark, referred to as CTMR.
The CTMR goes beyond standardization by establishing an alternative to the conventional national trade mark registration.
Since 1996 it is possible to register a trade mark for all the Member States of the EU with one single application submitted to a central office. As such, the Community trade mark coexists with national trade mark, which may, however, inhibit the registration of a Community trade mark. The Community trade mark has proven to be a great success, with the cumulative number of applications approaching 600,000 in 2007 (cf.Table 1).
Table 1: Statistics on the number of Community trade mark applications
Year No. Applications
1996 43,144
1997 27,280
1998 31,634
1999 41,295
2000 57,383
2001 48,911
2002 45,231
2003 57,697
2004 58,980
2005 64,797
2006 77,460
2007 (until April) 21,385
______________________________
1996-2007 575,197
______________________________
The position of the Community trade mark as a fully established legal institution is unchallenged and has significance for all areas of European economic interaction. With recent developments like the ccession of the EU to the Madrid Protocol and the expansion of the EU to new Member States, that shall be discussed in more detail below, the importance of the Community trade mark continues to grow.
2.3 Legal Basis of the Community Trade Mark
The legal basis of the Community trade mark is laid down in the 14 Titles and 160 Articles of the Council Regulation (EC) No. 40/94 on the Community trade mark (in the following denoted as CTMR abbr. for Community Trade Mark ulation), which was adopted by the Council of Ministers of the European Union on December 20, 1993, after more than 13 years of negotiations. Additional provisions can be found in the implementing rules of the CTMR.
Recent important amendments to these two main Regulations of the Community trade mark have been made to accommodate for EU expanson and in the accession of the European Community to the Madrid Protocol. Both topics will be discussed in depth in the following chapters.
Amendments based on the Madrid Protocol:
* Commission Regulation No. 782/2004 amending the implementing Commission Regulation (EC) No. 2868/95.
* Commission Regulation No. 781/2004 amending the Regulation No. 2869/95 concerning fees.
* Commission Regulation No. 1992/2003 amending the Council Regulation (EC) No. 40/94.
Amendment based on EU expansion:
* Insertion of Article 142a on EU expansion into the Council Regulation (EC) No. 40/94.
Further important amendments:
* Commission Regulation No. 422/2004 significant clarifications of the Council Regulation (EC) No. 40/94.
* Commission Regulation No. 1042/2005 of 29 June 2005 amending Regulation (EC) No. 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Desigtns).
* Commission Regulation No. 1041/2005 of 29 June 2005 amending Regulation (EC) No. 2868/95 implementing Council Regulation (EC) No. 40/94 on the Community trade mark.
2.4 The "Community Trademark Office" OHIM
[Art.2]
The authority administrating in practice the Community trade marks, i.e. the "Community Trade Mark Office", is the "Office for the Harmonisation in the Internal Market (trade marks and designs)", also called "Office for Harmonisation" or abbreviated "OHIM". It was established by Article 2 of the CTMR. Initially, proposals were made to call the office "European Trademark Office". However, in 1993 the term Office for the Harmonisation in the Internal Market (trade marks and designs) was chosen in order to make clear that the Office would also be responsible for designs. The official abbreviation of the Office is OHIM and it will thus be referred to as the OHIM in this brochure.
Regarding Community trade marks, the OHIM is responsible for all stages of a Community trade mark, from the examination of the registrability of a sign as Community trade mark to opposition or cancellation proceedings initiated by third parties, as well as the renewal of a Community trade mark. It also manages the Community trade mark Register where details regarding a Community trade mark are recorded and kept available for inspection by the public.
The OHIM is a body of the EU and it is located in Alicante, Spain. It has an independent legal personality and is represented and managed by its president. The OHIM is responsible for balancing its budget from its own revenue, which is derived mainly from registration and renewal fees.
The following are bodies of the OHIM:
* Examining Divisions,
* Opposition Divisions,
* Cancellation Divisions,
* Trade mark Administration and Legal Divisions, and
* Boards of Appeal.
Even though examiners are integrated in Examining Divisions for organizational reasons, the CTMR provides for the jurisdiction of individual examiners in registration proceedings. However, applications may and usually will be considered by several examiners.
The Opposition and Cancellation Divisions are composed of three members. At least one member of each Division has to be legally trained.
The jurisdiction of the Administration and Legal Divisions covers those areas that do not fall into the jurisdiction of the examiners or the Opposition or Cancellation Divisions.
Decisions of the Examining, Opposition, Cancellation, Legal and Administration Divisions may be brought before the Boards of Appeal of the OHIM whose decisions may ultimately be brought before the courts of the EU. Each Board of Appeal has three members, namely one chairperson and two further members. At least two of the members of the Board have to be legally trained. The members of the Board are independent and are not bound by instructions in their decision making.
2.5 Competent Courts for Community Trade Marks
The jurisdiction of courts regarding Community trade mark cases is split between national courts of each Member State as Community trade mark courts and the EU courts.
2.5.1 Community Trade Mark Courts
[Art.92]
The Member States must designate national courts as so called Community trade mark courts. These courts decide in cases concerning infringement of Community trade marks or compensation and to some extent cases regarding the validity of Community trade marks.
Community trade mark courts have exclusive jurisdiction for:
* all infringement actions,
* actions concerning a declaration of non-infringement, if these are permitted under national law,
* all actions brought with respect to compensation claims arising from a published, but not yet registered Community trade mark application (cf.Art.9), and
* counterclaims for revocation or for a declaration of invalidity of a Community trade mark (cf.Art.96).
In most cases, an action can be brought before the national Community trade mark court in the Member State in which the defendant is domiciled or has an establishment. If neither is the case, the action may be brought before the court of the Member State in which the plaintiff is domiciled or has an establishment. Otherwise, the action may be brought before the courts in Spain where the OHIM is located.
The Community trade mark court will apply the procedural law of its Member State and as the material law the provisions of the CTMR or, on matters that are not covered by the CTMR, the applicable national law.
The enforcement of decisions of Community trade mark courts in different Member States can be effected according to the Council Regulation (EC) No. 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.
2.5.2 European Union Courts
The European Union courts, i.e. the European Court of First Instance and the European Court of Justice are responsible for overseeing the legality of the OHIM's decisions.
For example, decisions of the OHIM Boards of Appeal may be contested before the European Court of First Instance. The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power.
Ultimately, decisions of the European Court of First Instance may be appealed before the European Court of Justice within two months after notification of the decision of the European Court of First Instance. However, proceedings before the European Court of Justice are limited to points of law.
Further, national courts including Community trade mark courts may refer cases to the European Court of Justice for preliminary rulings regarding the harmonization or European jurisprudence and the interpretation of European law or regulations like the First Directive. Thus, the European Union courts play an important role in applying and interpreting the CTMR and the national trade mark laws and are therefore important for the harmonization of trade mark law in Europe.
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