Introduction
| Author | Office for Harmonization in the Internal Market |
| Profession | European Commission |
| Pages | 7-9 |
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The 3d edition of the brochure contains an updated version of the chapters already contained in the 2nd and 1st edition (published in 2002 and 1999) and, moreover, includes information regarding the Community design and the list of national design laws.
The chapter "Content of national and Community search reports" (chapter 13) has been deleted, since the Article 39 (Search) CTMR had been amended by virtue of Council Regulation (EC) 422/2004. As a result, the Office will continue to issue search reports provided by each Member State of the European Union that has agreed to search CTMs against national registers, until 10 March 2008. After that date, in accordance with the amended Article 39, the Office will only provide search reports from the various national offices (set out in a standard form prepared by the Office) upon request of the applicant at the time of filing the CTM application and upon payment of the appropriate search fee within the time limit for paying the filing fee. The Office will, however, continue to issue a search report containing details of earlier CTM applications and registrations.
The Community trade mark has a unitary character and has unitary effect throughout the European Community. It is registered and administered centrally by the Office for Harmonization in the Internal Market (Trade Marks and Designs). However, neither the Community trade mark system nor the Office in Alicante exist in isolation from the national law and the national industrial property offices of the Member States of the European Community, including Benelux trade mark law and the Benelux Office for Intellectual Property.
Firstly, each applicant for a Community trade mark has the choice of filing his application either directly at the Office in Alicante or at a national office, which then has to forward the application to Alicante.
Secondly, the Community Trade Mark Regulation at times abstains from governing all questions and expressly refers to national law. To give some examples: The Community trade mark courts, which are competent for infringement actions, are national courts which the Member States have to designate. The sanctions for infringement of a CTM are dealt with in the CTMR only rudimentarily (Articles 14 and 98 CTMR).
Thirdly, and even more important, the express aim of the Community legislator was not to abandon the national trade mark systems, but that they should continue to exist alongside and parallel to the CTM system. The fifth recital of the CTMR expressly states that the Community law relating to trade marks does not replace the laws of the Member States on trade marks, and that it would in fact appear to be unjustified to require undertakings to obtain a Community trade mark. This necessitated legal rules on the coexistence of the CTM and national trade marks. To give some examples: A CTM or CTM application which has failed may be converted into national trade mark applications of the Member States (Article 108 to 110 CTMR). A CTM may benefit from the seniority of an earlier national trade mark registered in or for a Member State (Articles 34 and 35 CTMR). Both national trade marks and Community trade marks must be taken into account against each other as earlier rights and relative grounds for refusal.
Thus, there are a number of legal "interfaces" to national trade mark systems, including the Benelux trade mark law.
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The purpose of this brochure is to provide both the users of the Community trade mark system and the users of the national trade mark systems with comprehensive information on those interfaces, in the form of easily referenced synoptic tables.
The Council Regulation No 6/2002 on Community designs was adopted on 12 December 2001 and entered into force on 6 March 2002.
A Community design right is directly enforceable in each Member State and is obtained either by way of registration upon application to the OHIM (RCD) or automatically by way of publication of the design (UCD). An UCD can be registered within a period of twelve months (grace period) from publication. The advantages for the right holder of a RCD are a longer duration of protection (maximum 25 years whereas for UCD it is 3 years) and a different type of protection. Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs does not contain provisions concerning the introduction of an unregistered design right in Member States. However, since such provision already exists in some of the Member States, the Directive sets out that its provisions are without prejudice for national unregistered design rights. The Community design has equal effect throughout the Community.
The number of legal "interfaces" of the Community design to national design systems, including the Benelux design law, is small. The Community design courts, which are national courts (Article 80 CDR), are competent for infringement actions. Pursuant to Article 71 CDR the designated national authorities are competent for the enforcement of final decisions of the Office fixing the amount of costs.
On 1st May 2004, ten countries became new Members of the European Union. The countries are Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovak Republic and Slovenia. This has affected the CTM and RCD systems, being the first EU enlargement since the launch of the Community trade mark and Community Design systems.
All CTM registrations and applications filed (or claiming priority) before 1 May 2004 were automatically extended to the ten new Member States as from the date of accession. No fee was payable, no request for an extension was needed and there was no translation to be carried out for the applications filed before 1 May 2004. The same applied for RCD registrations and applications filed before the date of accession.
The extended CTMs and RCDs were "grandfathered" by this accession. This means that they cannot be cancelled on the basis of grounds, either absolute or relative, that exist only because of accession of new Member States.
If an automatically extended CTM is descriptive or purely generic in a new Member State, the CTM proprietor is not able to forbid the use of its mark by a third party in the State concerned in view of the defences set out in Article 12 of the CTMR. Further, if the CTM is contrary to public policy or morality in one of the new States, its use can be prohibited in that Member State under Article 106(2) of the Regulation. In addition, the proprietor of a relevant earlier right (filed before 1 May 2004), in, for example, Slovakia, should be in a position to seek to prevent the use of the automatically extended CTM in Slovakia on thePage 9 basis of Article 106. If the prior right exists only at a more local level, then Article 107 may apply.
Accordingly, while the extension of existing CTM rights to the new Member States was automatic, the right to use the CTM in those will depend on the existence (or otherwise) of prior, national or local trade mark rights.
RCD applications filed before accession will not be examined for non-registrability grounds which became applicable because of accession (Article 110a (2) CDR).
CTM and RCD applications with a filing or priority date of 1 May 2004 or later, will have effect in all Member States and will be treated in the usual way, i.e. it is possible to raise absolute or relative (for CTM) grounds of objection that are applicable in any of the Member States. Accepted CTM and RCD applications will also be published in all the languages of the European Union. Further, the usual rules applying to, for example, seniority claims and conversion of a CTM application or registration apply in the new Member States after their accession.
The same rules apply to Bulgaria and Rumania as of 1 January 2007 as well as to any other further accessions.
The information in this publication has been assembled with the greatest of care. Nevertheless, there may be inaccuracies, not only due to the structure of national legislation which is sometimes disperse and difficult to interpret, but also due to recent amendments, as the relevant legislation of Member States relating to the CTM and RCD systems is relatively new and often still in the process of being adopted or completed. Although the Office consulted the national authorities of the Member States prior to publication of this brochure, any possible inaccuracies are attributable to the Office alone. We should be grateful for any comments or corrections.
Users should keep in mind that this brochure cannot replace consultation of the official legal texts for each Member State, nor is it intended to replace qualified legal advice. On the contrary, it should serve as a tool for access to such further consultation or advice.
