Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (Text with EEA relevance)

• Published date: 24 December 2015
• Subject Matter: Intellectual, industrial and commercial property
• Official Gazette Publication: Official Journal of the European Union, L 341, 24 December 2015

2015R2424 — EN — 24.12.2015 — 000.004

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►B REGULATION (EU) 2015/2424 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (Text with EEA relevance) (OJ L 341 24.12.2015, p. 21)

Corrected by:

►C1	Corrigendum, OJ L 071, 16.3.2016, p. 322 (2015/2424)
►C2	Corrigendum, OJ L 110, 26.4.2016, p. 4 (2015/2424)
►C3	Corrigendum, OJ L 267, 30.9.2016, p. 1 (2015/2424)

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▼B

REGULATION (EU) 2015/2424 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

of 16 December 2015

amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)

(Text with EEA relevance)

Article 1

Regulation (EC) No 207/2009 is amended as follows:

(1) In the title, ‘Community trade mark’ is replaced by ‘European Union trade mark’.

(2) The term ‘Community trade mark’ is replaced by ‘European Union trade mark (“EU trade mark”)’ in Article 1(1); and elsewhere in the Regulation, it is replaced by ‘EU trade mark’ and any necessary grammatical changes are made.

(3) Throughout the Regulation, the term ‘Community trade mark court’ is replaced by ‘EU trade mark court’ and any necessary grammatical changes are made.

(4) The term ‘Community collective mark’ is replaced by ‘European Union collective mark (“EU collective mark”)’ in Article 66(1); and elsewhere in the Regulation, it is replaced by ‘EU collective mark’ and any necessary grammatical changes are made.

(5) Throughout the Regulation, except in the cases referred to in points (2), (3) and (4), the words ‘Community’, ‘European Community’ and ‘European Communities’ are replaced by ‘Union’ and any necessary grammatical changes are made.

(6) Throughout the Regulation, the term ‘President of the Office’ and all references to that President are replaced by ‘Executive Director of the Office’ or ‘Executive Director’, as appropriate, and any necessary grammatical changes are made.

(7) Article 2 is replaced by the following:

‘Article 2

Office

1. A European Union Intellectual Property Office (“the Office”) is hereby established.

2. All references in Union law to the Office for Harmonization in the Internal Market (trade marks and designs) shall be read as references to the Office.’.

(8) Article 4 is replaced by the following:

‘Article 4

Signs of which an EU trade mark may consist

An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

(a) distinguishing the goods or services of one undertaking from those of other undertakings; and

(b) being represented on the Register of European Union trade marks, (“the Register”), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.’.

(9) Article 7(1) is amended as follows:

(a) point (e) is replaced by the following:

‘(e) signs which consist exclusively of:

(i) the shape, or another characteristic, which results from the nature of the goods themselves;

(ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result;

(iii) the shape, or another characteristic, which gives substantial value to the goods;’;

(b) points (j) and (k) are replaced by the following:

‘(j) trade marks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications;

(k) trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine;’;

(c) the following points are added:

‘(l) trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialities guaranteed;

(m) trade marks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Union legislation or national law, or international agreements to which the Union or the Member State concerned is a party, providing for protection of plant variety rights, and which are in respect of plant varieties of the same or closely related species.’.

(10) Article 8 is amended as follows:

(a) the following paragraph is inserted:

‘4a. Upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications:

(i) an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration;

(ii) that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.’;

(b) paragraph 5 is replaced by the following:

‘5. Upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’.

(11) Article 9 is replaced by the following:

‘Article 9

Rights conferred by an EU trade mark

1. The registration of an EU trade mark shall confer on the proprietor exclusive rights therein.

2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:

(a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered;

(b) the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if 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) the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union 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 EU trade mark.

3. The following, in particular, may be prohibited under paragraph 2:

(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 those purposes under the sign, or offering or supplying services thereunder;

(c) importing or exporting the goods under the sign;

(d) using the sign as a trade or company name or part of a trade or company name;

(e) using the sign on business papers and in advertising;

(f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC of the European Parliament and of the Council ( *1 ).

4. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third...