Joint statements by the Council and the Commission of the European Communities entered in the minutes of the Council meeting at which the Regulation on the Community Trade Mark was adopted on 20 December 1993

• Author: Office for Harmonization in the Internal Market
• Profession: European Commission
• Pages: 226-231

Page 226

(OJ OHIM 1996, 607, 613)

Since the following statements by the Council and the Commission are not part of the legal text they are without prejudice to the interpretation of that text by the Court of Justice of the European Communities

Joint statements by the Council and the Commission of the European Communities entered in the minutes of the Council meeting at which the Regulation on the Community Trade Mark was adopted on 20 December 1993

1. Statement by the Council (internal)

2. Statements by the Council and the Commission

2. Re Article 1 (1)

   'The Council and the Commission consider that the activity of retail trading in goods is not as such a service for which a Community trade mark may be registered under this Regulation.'

3. Re Article 1 (2)

   'The Council and the Commission consider that the word "surrendered" in Article 1 (2) means surrendered within the meaning of Article 49.'

4. Re Article 4

   (a) 'The Council and the Commission consider that Article 4 does not rule out the possibility: of registering as a Community trade mark a combination of colours or a single colour; or registering in the future sounds as Community trade marks, provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings.'

   (b) 'The Council and the Commission consider that the word "shape" is also intended to cover the three-dimensional form of goods.'

5. Re Article 7 (1) (e)

   'The Council and the Commission consider that where goods are packaged, the expression "shape of the goods" includes the shape of the packaging.'

6. Re Articles 8 (1) (b) and 9 (1) (b)

   'The Council and the Commission note that "likelihood of association" is a concept which in particular has been developed by Benelux case-law.'

7. Re Article 9

   'The Council and the Commission consider that the reference to advertising in paragraph 2 (d) does not cover the use of a Community trade mark in comparative advertising.' Page 228

8. Re Article 12

   'The Council and the Commission consider that the words "his own name" in subparagraph (a) apply only in respect of natural persons.'

9. Re Article 14 (2)

   'The Council and the Commission consider that the reference to the law of Member States relating in particular to civil liability and unfair competition is to be construed as including passing-off. "Passing-off" is a term used in common-law countries such as the United Kingdom. It occurs when one person presented goods or services in a way which is likely to injure the business or goodwill of another person, for example by causing the public to believe that they are goods or services associated with that other person. In order to succeed in an action for passing-off, a plaintiff must show that the way his goods or services are presented by the defendant is likely to cause confusion and that he is likely to be injured by that confusion; it is, however, ¹necessary to show that the defendant intended to mislead or confuse the public.'

10. Re Article 15

    'The Council and the Commission consider that use which is genuine within the meaning of Article 15 in one country constitutes genuine use in the Community.'

11. Re Article 20

    'The Council and the Commission consider that insofar as the national law of the Member State determined in accordance with Article 16 contains rules concerning the limits on the procedure for levy in execution in respect of a debtors assets, for example in the case of infringement of rights of personality, these rules will also apply to the cases covered by Article 20.'

12. Re Article 21

    (a) 'The Council and the Commission consider that insofar as the national law of the Member State determined in accordance with Article 21 contains rules concerning the limits on the measures which may be taken as regards a debtors assets in bankruptcy or like proceedings, for example in the case of infringement of rights of personality, these rules will also apply to the cases covered by Article 21.'

    (b) 'The Council and the Commission note that the principles of Article 234 of the EC Treaty apply to conventions concluded before the entry into force of the Regulation between one or more Member States on the one side and one or more third countries on the other side.' Page 229

13. Re Article 23 (1)

    'The Council and the Commission consider that Article 23 (1) should not be interpreted as meaning that application of Article 15 (3) the use of a Community trade mark by a licensee would be subject to registration of the licence.'

14. Re Article 39 (6)

    'The Council and the Commission consider that, in the framework of the procedure provided for in Article 39 (6), the central industrial property offices of the Member States are free to inform the proprietors of any earlier national trade marks or national trade mark applications cited in the national search report of the publication of the Community trade mark application.'

15. Re Article 43 (4) and Article 56 (4)

    'The Council and the Commission consider that these provisions do not exclude the possibility of the Office making proposals for a friendly settlement if it thinks fit.'

16. Re Article 44 (2)

    'The Council and the Commission consider that the words "obvious mistakes" should be understood as meaning mistakes which obviously require correction, in the sense that nothing else would have been intended than what is offered as the correction.'

17. Re Article 64 (1)

    'The Council and the Commission consider that, where the association which is proprietor of the Community collective mark consists of several member associations, the mark may be used not only by these member associations but also by their members.'

18. Re Article 66 (2)

    'The Council and the Commission consider that a collective mark which is available for use only by members of an association which owns the mark is liable to mislead within the meaning of Article 66 (2) if it gives the impression that it is available for use by anyone who is able to meet certain objective standards.'

19. Re Article 86

    'The Council and the Commission consider that the reference to national laws is to be understood as meaning that any restrictions in national laws applicable to administrative cooperation between the courts or authorities of the State concerned will apply to such cooperation between the Office and the courts or authorities, but does not empower the Member States to introduce national laws treating administrative cooperation between the Office and the courts or authorities of the State concerned in a different way from such cooperation between the courts or authorities of that State.' Page 230

20. Re Article 86, last sentence

    'The Council and the Commission consider that this sentence is to be understood as meaning that, while the inspection by the authorities mentioned will not be subject to the restrictions laid down in Article 84, this will not affect the restrictions on inspection by the public.'

21. Re Article 90 (1)

    'The Council and the Commission consider that the aim of paragraph 1 is to render the provisions of the Convention on Jurisdiction and the Enforcement of Judgements in Civil and Commercial Matters applicable for the purposes of this Regulation, insofar as the provisions of the Regulation do not derogate therefrom. It is therefore unnecessary to refer in each Article in Title X to the provisions of the Convention or to incorporate them explicitly in the text of the Articles.'

22. Re Article 91 (1)

    'The Council and the Commission consider that the functions assigned by the Regulation to Community trade mark courts cover only infringement and validity actions together with the provisional, including protective, measures referred to in Article 99.'

23. Re Article 105

    'The Council and the Commission consider that, with the objective of avoiding frivolous or vexatious actions, account should be taken in particular of the need to avoid Article 105 being misused by differentiating the ownership of the trade marks on which the actions are based, and of the requirement that the decision to stay judgment or, if appropriate to decline jurisdiction should be taken at the outset and on the basis of the elements which the court has at its disposal.'

24. Re Article 108 (1)

    'The Council and the Commission consider that the words "the Community trade mark ceases to have effect" cover the following cases: failure to renew the registration of the Community trade mark (Article 47), surrender of the Community trade mark (Article 49), revocation of the rights of the proprietor of the Community trade mark and declaration of invalidity of the Community trade mark (Article 54).'

25. Re Article 117

    'The Council and the Commission agree that the translation centre for the bodies of the Union set up by the Decision of the European Council of 29 October 1993 will be operational as from 1 January 1994 in Luxembourg, in order to provide the necessary translation services for the start of operation of all the bodies and departments to which that Decision refers, as their respective activities begin.' Page 231

26. Re Article 119²

    'The Council and the Commission consider that the acts of the President referred to in this Article are those which he performs under the powers conferred upon him by Article 119 (2) of the Regulation, by the implementing Regulation, by the fees regulations or by any other rules applying to Community trade marks.'

27. Re Article 121 (6)

    'The Council and the Commission consider that the term "information" may also cover acts of the Office.'

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    [1] Note: should read "not necessary" (cf. the other languages)

    [2] Read: "Article 118"