Chapter 4. Geographical scope

AuthorOffice for Harmonization in the Internal Market
ProfessionEuropean Commission
Pages49-51

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The purpose of this Chapter is to provide information on the geographical scope of Community trade marks and the Community design and on the entitlement to file a CTM and a RCD.

Previously, only persons listed in Article 5 CTMR were able to own a CTM. According to the new Article 5 of CTMR, which entered into force on 10 March 2004, any natural or legal person, including authorities established under public law, may be proprietors of a CTM.

Since former Article 5 CTMR does not apply anymore, table 4) b) which was included in the second edition, is left out.

The same principle applies to the RCD. Any natural person or legal entity from any country in the world may file an application for a Registered Community Design.

The issue of geographical scope arises in several contexts under the CTMR. The question is on which territory (this word being used here not as a terminus technicus, but in a purely geographical sense) a Community trade mark is valid ("geographical scope" sensu strictu). The CTMR also uses the terms "in the Community" and "nationals of a Member State".

The geographical scope of the CTMR and CDR defines the territory where pending applications (provisional protection) and registered CTMs and RCDs are valid and can (only) be infringed and enforced, i.e. in respect of which territory a CTM or RCD court may pronounce remedies like injunction or border measures. In practice, although not in theory, it coincides with the meaning of the term "in the Community", which is used in the CTMR in the following contexts: The CTM must be used "in the Community", use in other territories not being taken into account (Article 15 CTMR). Exhaustion of rights takes place "in the Community" (Article 13 CTMR). A territory which is not "in the Community" is not "a part of the Community" and is not to be taken into account for the assessment of absolute grounds for refusal (Article 7 (2) CTMR). 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 (Article 22 (1)). Persons not having domicile or place of business "in the Community" need to be represented (Article 88 (2) CTMR) and may not act directly through their employees (Article 88 (3) CTMR). Persons who want to represent third parties before the Office must have their place of business (or in the case of Article 89 (1) (b) at least their employment) "in the Community" (Article 89 (1) (a), (2) (b) CTMR).

The same rules apply to an international registration designating the European Community for example a trade mark which is the subject of an international registration designating the EC must be put to genuine use in the Community (Article 155 CTMR).

The term "in the Community" is used in CDR in relation to the: exhaustion of rights of the product placed on the market "in the Community" (Article 21 CDR). Persons not having a domicile or place of business "in the Community" need to be represented (Article 77 (2) CDR) and may not act directly through their employees (Article 77 (3) CDR).

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Persons who want to represent third parties before the Office must have their place of business or employment "in the Community" (Articles 89 (2)(b) CTMR, 78 (4)(b) CDR).

The geographical scope of the CTMR and CDR is the territory on which the CTMR and CDR, as the Community Regulations, are applicable. This is in principle governed by the relevant provisions in the EC Treaty, in particular its Article 299 (former Article 227).

In addition, national law of a Member State may provide that a CTM or RCD confer the same rights as a national trade mark or design registered in that Member State on its territory. In other words, a Member State may extend the effects of a CTM and/or RCD to territories which are not covered by the CTMR, CDR or EC Treaty. Any such rule does not, however, have the effect that the CTMR or CDR become applicable on that territory. The Member States which have enacted provisions of this kind are e.g. France and United Kingdom.

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Member State Geographical scope - Scope of the CTMR and CDR (identical to the notion of 'in the Community')
Austria The Republic of Austria
Belgium The Kingdom of Belgium
Cyprus The Republic of Cyprus
Czech Republic The Czech Republic
Denmark The Kingdom of Denmark, not including Greenland and the Faeroe Islands
Estonia The Republic of Estonia
Finland The Republic of Finland
France The French Republic, including the overseas departments: Martinique, Guadeloupe, Réunion, Guyana. Not included are the following territories: New Caledonia, Wallis and Futuna, French Polynesia, French Southern and Antarctic Territories, Mayotte (Article L. 811-4 FR-CPI)
Germany The Federal Republic of Germany
Greece The Hellenic Republic
Hungary The Republic of Hungary
Ireland The Republic of Ireland
Italy The Italian Republic
Latvia The Republic of Latvia
Lithuania The Republic of Lithuania
Luxembourg The Grand Duchy of Luxembourg
Malta The Republic of Malta
Netherlands The Kingdom of the Netherlands in Europe
Poland The Republic of Poland
Portugal The Portuguese Republic (including the Azores and Madeira)
Slovakia The Slovak Republic
Slovenia The Republic of Slovenia
Spain The Kingdom of Spain (including the Canary Islands, Ceuta and Melilla)
Sweden The Kingdom of Sweden
United Kingdom The United Kingdom of Great Britain and Northern Ireland (Great Britain consisting of England, Scotland, Wales); Gibraltar. The Channel Islands and the Isle of Man are not included.
Bulgaria The Republic of Bulgaria
Romania The Republic of Romania

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