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9789041198310

The Legal Aspects of the Community Trade Mark

by
  • ISBN13:

    9789041198310

  • ISBN10:

    9041198318

  • Format: Hardcover
  • Copyright: 2001-05-01
  • Publisher: Kluwer Law Intl
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Summary

This book is a practical guide To The legal aspects of the Community trade mark, which is an intellectual property right created by an European Council Regulation of December 1993, and which entered into force on 1 April 1996. The main attraction of the Community trade mark is that it enables an applicant to obtain and maintain, with only one registration, trade mark protection throughout the 15 Member States of the European Union (rather than having to obtain and maintain the registration of essentially the same trade mark in each of those countries). The Community trade mark system is administered by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), which is an agency of the European Union. The Community trade mark system has been surprisingly successful since its inception; it is expected that there will, by the end of the year 2000, have been approximately 200,000 applications for a Community trade mark. The aim of this book is to describe how the Community trade mark system works and what procedures it follows, As well as to draw attention to issues of potential concern for any Community trade mark proprietor. The text is thus anchored on the European Union Regulations which set out the rules For The Community trade mark system, and then critically analyses how those Regulations have so far been applied in practice. This analysis notably involves an examination of the administrative practices developed by the OHIM and its various divisions in respect of the Community trade mark, including a detailed review of the case law developed through early September 2000 by the Boards of Appeal of the OHIM. As it is possible to challenge decisions of the OHIM before the Court of Justice of the European Communities, this analysis also incorporates a study of the case law developed by that Court either in respect of, or which is otherwise relevant to, Community trade marks.

Table of Contents

Table of Authorities
xvii
Introduction xxiii
PRELIMINARY PART THE EUROPEAN CONTEXT OF THE COMMUNITY TRADE MARK 1(62)
Regulations Relevant to the Community Trade Mark System
3(48)
Texts Applicable to the Community Trade Mark
3(2)
The Legal Effect of Acts in relation to a Community Trade Mark
5(19)
The Principle of the Direct Application of Regulations
6(1)
The General Application of the Basic and Implementing Regulations
6(1)
The Binding Nature of the Basic and Implementing Regulations
6(1)
The Direct Application of the Basic and Implementing Regulations
6(1)
The Primacy of Community Law
7(1)
The Principle of Providing Reasons for Decisions of the Office
8(1)
Principle of Providing Reasons for Decisions
8(2)
Examination of the Facts and Allowing all Parties to Express Themselves
10(3)
The Form of Decisions
13(1)
Applications for Preliminary Rulings
13(1)
The Object of a Preliminary Ruling
14(1)
The Courts which can Refer Questions for Preliminary Rulings
14(1)
When can a Court Refer a Question for a Preliminary Ruling?
15(1)
The Scope of References for Preliminary Rulings
16(1)
Preliminary Rulings as to the Validity of Acts of European Union Institutions
16(1)
Correction of Deficiencies in Proceedings before the Office
17(1)
Deficiencies Noticed upon Filing a CTM Application
17(1)
Deficiencies Noticed During the Examination Process
17(1)
Deficiencies concerning Fees
18(1)
Deficiencies concerning any Claim for Priority or Seniority
18(1)
The Principle of Access to CTM Files
18(1)
The Principle of Public Inspection of CTM Files
18(1)
The Date of Public Inspection
18(1)
The Contents of CTM Files open to Public Inspection
19(1)
How Files are Inspected
20(1)
A Request for the Inspection of a CTM File
21(1)
The Contents of a Request for the Inspection of a CTM File
21(1)
The Inspection Process
22(1)
The Language of a Request for the Inspection of a CTM File
22(1)
The Language of a Request to Inspect a CTM Application File
22(1)
The Language of any Request to Inspect the File on a Registered CTM
23(1)
Requests from a National Authority to Inspect a CTM File
24(1)
Procedural Rules Applicable to Acts in Relation to a CTM
24(27)
The Language of Proceedings
24(1)
The Language of Procedure for any CTM Application or other Event
24(2)
The Language of Appeal Proceedings
26(1)
The Language used for Oral Proceedings
27(1)
The Legal Status of Translations
27(1)
Time Limits and the Interruption of Proceedings
28(1)
Determining Time Limits
28(1)
Time Limits Expressed in Years
29(1)
Time Limits Expressed in Months
29(1)
Time Limits Expressed in Weeks
29(1)
The Duration of Time Limits
29(1)
The Extension of Time Limits
30(1)
Interruption of Proceedings
31(1)
Restitutio in integrum (re-establishment of rights)
32(1)
The Concept of estitutio in integrum
32(1)
Applying for restitutio in integrum
32(1)
The Consequences of the Re-establishment of Rights and Third Party Opposition
33(1)
Fees in connection with CTM Proceedings
33(1)
The Due Date for Fees and Charges
34(1)
The Payment of Fees and Charges
34(1)
The Initiative to make Payment
34(1)
The Currencies of Payment
35(1)
The Actual Date of Payment and Payment Delays
35(1)
Insufficiency of the Amount Paid
35(2)
Termination of Financial Obligations
37(1)
The Non-refund of Insignificant Amounts
37(1)
Rules Applicable to Notifications
37(1)
Notifications sent by the Office
37(1)
Notification by Post
38(1)
Notification by Hand Delivery or by Deposit in a Post Box at the Office
39(1)
Public Notification
39(1)
Notification to Representatives
39(1)
Notification by Facsimile and other Technical Means
39(1)
Notification of Documents in the case of Several Parties
40(1)
Irregularities in Notification
40(1)
Notifications to the Office and the Keeping of Files
40(1)
Notification by Facsimile
40(1)
Notification by Electronic Means
41(1)
Notification by Telex or Telegram
41(1)
The Burden of Proof of Notification
42(1)
Forms
42(1)
Publications of the Office
43(1)
The Principle of Publication
43(1)
Mistakes
43(1)
The Register of Community Trade Marks
43(1)
The Taking of Evidence
44(1)
Oral Proceedings
44(1)
The Taking of Evidence and Elements of Proof
45(1)
The Costs of Taking Evidence
46(1)
Minutes of Oral Proceedings and of the Taking of Evidence
46(1)
The Apportionment of Costs for Proceedings before the Office
47(1)
Principles Applicable in respect of Costs
47(1)
Reimbursable Costs
48(1)
Enforcement of Decisions Apportioning Costs
49(2)
The Functional Organisation of the Office
51(12)
Examiners
51(1)
The Opposition Divisions
52(1)
The Administration of Trade Marks and Legal Division
52(1)
The Cancellation Divisions
52(1)
The Boards of Appeal
52(9)
Composition
52(1)
Appeal Proceedings
52(1)
The Principle of an Appeal
52(1)
Decisions which can be Appealed Against
53(2)
The Time Limit for Lodging an Appeal
55(1)
Interlocutory Revision
56(1)
The Examination of Appeals
57(2)
The Reimbursement of Appeal Fees
59(1)
Challenges to Decisions of the Boards of Appeal
60(1)
The Neutrality of OHIM Agents involved in Handling Files
61(2)
PART ONE THE CREATION OF A COMMUNITY TRADE MARK 63(70)
The Protectable Characteristics of a Community Trade Mark
65(24)
Signs which are Protectable
65(5)
Word CTMs
66(2)
Figurative and Three-Dimensional CTMs
68(1)
Sound CTMs
69(1)
Complex CTMs
69(1)
Odour, Taste and Tactile CTMs
69(1)
A CTM must be Fanciful, or Absolute grounds for Refusal
70(13)
A CTM must be Distinctive
71(1)
A CTM must not be Descriptive or Generic
71(1)
A CTM must not be Descriptive
72(1)
A CTM must not be Generic
73(1)
CTMs Consisting of Shapes
74(1)
A CTM must not be Deceptive
75(1)
A CTM must not breach Public Policy or Principles of Morality
75(1)
A Specifically Prohibited Sign must not become a CTM
76(1)
Emblems and Official Insignia
76(1)
Specific Rules applicable to Wine Trade Marks
76(1)
How does the Office Examine whether to Register a CTM?
76(1)
Fulfilment of the Registration Requirements in all Member States
76(1)
Acquiring Distinctiveness Through Use
77(3)
The Case by Case Examination of any CTM Application
80(3)
A CTM must be Available, or the Issue of Earlier Rights
83(6)
Earlier Rights in Opposition Proceedings: Relative Grounds for Refusal
83(1)
The Sign is Identical with an Earlier Trade Mark
83(1)
There is a Similar Earlier Mark with a Risk of Confusion
84(1)
An Earlier Trade Mark with a Reputation
85(1)
Signs used in the Course of Trade with More than Mere Local Significance
86(1)
Other Rights which might affect a CTM: Relative Grounds for Invalidity
87(2)
The Process for Protecting a Community Trade Mark
89(44)
The Procedure for Filing a CTM Application
89(20)
Filing a CTM Application
89(1)
Eligibility to File a CTM Application
89(1)
Domicile Requirements Applicable to any CTM Applicant
89(1)
The Capacity of the Applicant
90(1)
The Capacity of Natural Persons
90(1)
The Capacity of Legal Persons
90(1)
Representatives
91(1)
The Principle of Representation
91(1)
Professional Representation
92(1)
Rules Applicable to Authorisations (or Powers of Attorney)
92(2)
The Appointment of Several Representatives
94(1)
The Appointment of Common Representatives
94(1)
Notification from or to a Representative
94(1)
Conflicts of Interest involving a Representative
94(1)
The Good Faith of an Applicant
95(1)
How to file a CTM Application
96(1)
The Identity of the Applicant
97(1)
The List of Goods or Services
98(1)
The Principle of Classification
98(2)
Modification of the List of Goods or Services
100(1)
Representation of the CTM
100(1)
Form of the Representation
100(2)
Timing for Filing the Representation
102(1)
Specification of the Languages for Proceedings
102(1)
An Application must be Signed
102(1)
Claims for Priority or Seniority
102(1)
Community Collective Marks
103(1)
Where CTM Applications are to be Filed
103(1)
How to File the Application and the Filing Date
103(1)
The Filing Date
103(1)
Acknowledgement of Receipt
104(1)
Application Fees
104(1)
Examination of a CTM Application by the Office
105(1)
The Examination of Conformity
105(1)
Examination of the Formal Regularity of a CTM Application
105(1)
The Existence of Absolute Grounds for Refusal, and Disclaimers
106(1)
The Searches for Earlier Rights Launched by the Office
107(1)
The Publication of a CTM Application
108(1)
Opposition Proceedings
109(1)
Observations or Comments from Third Parties
109(17)
The Grounds for Opposition
110(1)
Commencing Opposition Proceedings
111(1)
The Capacity Required to Enter Opposition
111(1)
Time Limits for Filing a Notice of Opposition
112(1)
The Notice of Opposition
113(2)
Payment of the Opposition Fee
115(1)
Opposition Proceedings in Practice
116(1)
Examination of an Opposition
116(1)
The Procedure of the Parties
116(1)
The ``Cooling-Off Period''
116(1)
The Conduct of Proceedings; the Examination of Earlier Marks or Rights
117(4)
The End Date for Written Submissions
121(1)
The Languages used in Opposition Proceedings
121(2)
Proof of Use of an Earlier Trade Mark
123(1)
Specific Rules for Multiple Oppositions
124(1)
Suspension of Opposition Proceedings
124(1)
Suspension at the Request of the Parties
125(1)
Suspension on account of a Pending Judicial or Administrative Action
125(1)
Suspension on account of Observations by Third Parties
126(1)
The Apportionment of the Costs of Opposition Proceedings
126(1)
Appeals against Decisions of the Opposition Division
126(1)
Registration of a Community Trade Mark
126(7)
CTM Registration in the Normal Course of Events
126(1)
The Principle of Registration
126(1)
The Effect of Registration
127(1)
Potential Complications during the Registration Process
127(1)
The Withdrawal, Restriction or Amendment of a CTM Application
127(1)
Converting a CTM Application into a National Trade Mark Application
128(1)
When does Conversion apply
128(1)
Conversion Procedure before the Office
129(1)
Transmission of the Conversion Application to the Central Industrial Property Offices of the Member States
130(1)
The Publication of an Application for Conversion
130(1)
Rapid Summary of the Duration of the CTM Registration Process
131(2)
PART TWO THE EXISTENCE OF THE COMMUNITY TRADE MARK 133(36)
The Duration and Scope of CTM Protection
135(10)
The Duration of the CTM Protection
135(7)
The Initial Term of Protection of a CTM
135(1)
The Renewal of CTM Protection
135(2)
Retroactive Protection afforded by a CTM
137(1)
Priority
137(1)
The Principle of Priority
137(1)
The Effect of Priority
138(1)
Claiming Priority
138(1)
The Practice of Internal Priority
138(1)
Exhibition Priority
139(1)
Seniority
140(1)
The Principle of Seniority of a National Trade Mark
140(1)
The Effect of Seniority of an Earlier National Trade Mark
140(1)
Claiming Seniority
140(1)
Ensuring that the Proprietor, the Goods or Services and the Sign are Identical
141(1)
The Scope of CTM Protection
142(3)
The Scope of CTM Protection in Terms of Goods or Services
142(1)
The Geographical Scope of CTM Protection
143(1)
The Implications of any Enlargement of the European Union
143(2)
The Effects of a Community Trade Mark
145(6)
The Community Trade Mark as an Object of Property
145(1)
The Property Rights Applicable to a CTM
145(1)
The Benefits of Rules on International Priority
146(1)
The Exclusive Right of Use Accorded by a Community Trade Mark
146(5)
The Principle of Exclusive Rights of Use
146(1)
Limitations on the Exclusive Rights of Use of a CTM
147(1)
The Reproduction of CTMs in Dictionaries
147(1)
Necessary Indication in the Course of Trade
147(1)
Exhaustion of CTM Rights
148(1)
Commercial Advertising
148(1)
The Scope of the Rule of Exhaustion of a CTM is Strictly European
148(1)
Parallel Imports in Breach of Legitimate Systems of Distribution
149(1)
The Community Trade Mark and Repackaging
149(2)
Chapter 3 Necessary Use of a Community Trade Mark
151(10)
Conditions of Use
151(4)
Genuine Use
151(1)
Methods of Use
152(1)
Direct Use
152(1)
Indirect Use and Use by Licensees
152(1)
Licensing a Community Trade Mark
152(1)
Infringement Actions in connection with Licensed CTMs
153(1)
Formalities for a CTM to Produce Effects on Third Parties
154(1)
The Sanction for Improper Use of a CTM: Revocation
155(6)
Grounds for Revocation
155(1)
Revocation as a Sanction for Non-use of a CTM
155(1)
Revocation as a Sanction for Improper Use of a CTM
156(1)
Revocation following Loss of Eligibility to be the Proprietor of a CTM
156(1)
The Scope of an Application for Revocation
156(1)
Revocation Procedure
157(1)
Contents of an Application for Revocation
157(1)
Examination of an Application for Revocation
157(1)
The Languages Used in Revocation Proceedings
158(1)
The Special Situation of Multiple Applications for Revocation
159(1)
The Apportionment of the Costs of an Application for Revocation
159(1)
Appeals against Decisions on Application for Revocation
159(1)
The Consequences of Revocation of a CTM
160(1)
Changes Affecting a Community Trade Mark
161(8)
Transfer of a CTM
161(4)
The Principle of Transfer Ability of a CTM
161(1)
Geographical Scope of a Transfer of a CTM
161(1)
Formalities involved in the Transfer of a CTM
161(1)
A Transfer must be in Writing
161(1)
Languages Used in Transfer Proceedings
162(1)
Recording any Transfer in the Register of Community Trade Marks
162(1)
Special Transfers
163(1)
Partial Transfer of a CTM
163(1)
The Transfer of Multiple CTMs
164(1)
The Transfer of a CTM Registered in the Name of an Agent
164(1)
Transfers and Names Changes
164(1)
The Taking of Security over a Community Trade Mark
165(1)
The Principle of Taking Security over a CTM
165(1)
Registering a Security Interest with the Office
165(1)
Surrender of a Community Trade Mark
166(1)
The Principle of Surrendering a CTM
166(1)
Geographical Scope of any Surrender of a CTM
166(1)
Formalities involved in the Surrender of a CTM
166(1)
Surrender must be in Writing
166(1)
Registration by the Office of the Surrender of a CTM
166(1)
Notification of Persons Affected by Surrender
167(1)
The Implications of a Bankruptcy upon a CTM
167(2)
PART THREE ACTIONS TAKEN AGAINST A COMMUNITY TRADE MARK 169(26)
Administrative Action against a CTM: Invalidity Proceedings
171(8)
Grounds for Invalidity
171(1)
Absolute Grounds for Invalidity
171(1)
Relative Grounds for Invalidity
172(1)
The Scope of any Invalidity of a CTM
172(1)
Procedural Aspects of an Application for Invalidity
172(6)
The Content of an Application for a Declaration of Invalidity
173(1)
Examination of an Application for a Declaration of Invalidity
173(3)
The Languages used in Invalidity Proceedings
176(1)
Multiple Applications for a Declaration of Invalidity
177(1)
The Apportionment of Costs in Invalidity Proceedings
178(1)
Appeals against Decisions in Invalidity Proceedings
178(1)
The Consequences of Invalidity of a CTM
178(1)
Legal Action against a CTM: Infringement Proceedings
179(16)
The Texts Applicable to Infringement Actions involving a CTM
179(1)
Legal Action against an infringing CTM
180(1)
Other Actions against a CTM Under National Law Rules
180(1)
Capacity to Commence an Infringement Action
181(1)
The Jurisdiction of Community Trade Marks Courts
182(4)
Subject Matter Jurisdiction
182(1)
The Inherent Jurisdiction of the Community Trade Mark Courts
182(1)
The Designation of Community Trade Mark Courts
182(1)
The Substantive Jurisdiction of Community Trade Mark Courts
182(1)
The Supplementary Jurisdiction of Other National Courts
183(1)
Territorial Jurisdiction
183(1)
Primary Jurisdiction
183(1)
Extension of Jurisdiction
184(1)
The Subsidiary Application of the Brussels Convention
184(1)
Conflicts of Jurisdiction
184(1)
Related Actions
184(1)
A Stay of Proceedings before a Community Trade Mark Court
185(1)
A Stay of Proceedings before the Office
185(1)
Lis Alibi Pendens
185(1)
Rules Applicable to a Stay of Proceedings
185(1)
Rejection of an Action
185(1)
Defences Potentially Available in Infringement Actions
186(4)
The Traditional Defences
186(1)
Forfeiture (or Limitation) through Acquiescence
187(1)
Community Trade Mark versus Community Trade Mark
187(1)
National Trade Mark versus Community Trade Mark
187(1)
Community Trade Mark versus National Trade Mark
187(1)
Conditions for Forfeiture through Acquiescence: Knowledge and Good Faith
188(1)
Knowledge of the Infringement
188(1)
Good Faith
188(1)
A Counterclaim for the Invalidity, or for the Revocation of, a CTM
188(1)
The Principle of Counterclaims
188(1)
The Powers of Community Trade Mark Courts
189(1)
Information to be given to the Office
189(1)
Exceptional Pleas in respect of Revocation or Invalidity
190(1)
Sanctions for Infringement of a CTM
190(5)
Provisional and Protective Measures
190(1)
Provisional or Protective Measures with National Effect
190(1)
Euro-Injunctions
191(1)
Final Sanctions
191(4)
APPENDIX COMMUNITY COLLECTIVE MARKS 195(4)
A. Proprietors of a Community Collective Mark
195(1)
B. Signs which can be registered as a Community Collective Mark
195(1)
C. Regulations Governing Use of a Community Collective Mark
195(1)
1. The Principle of Regulations Governing Use
195(1)
2. Modifications to Regulations Governing Use of a Community Collective Mark
196(1)
D. Specific Grounds for Refusing an Application for a Community Collective Mark
196(1)
E. Observations by Third Parties
196(1)
F. The Use of a Community Collective Mark
197(1)
G. Specific Grounds for Revocation of a Community Collective Mark
197(1)
H. Specific Grounds for Invalidity of a Community Collective Mark
197(1)
I. Persons entitled to bring an Action for Infringement of a Community Collective Mark
197(2)
Annexes 199(116)
Council Regulation (EC) No. 40/94 dated 20 December 1993 on the Community trade mark
201(54)
Commission Regulation (EC) No. 2868/95 dated 13 December 1995 implementing Council Regulation (EC) No. 40/94 on the Community trade mark
255(48)
Commission Regulation (EC) No. 2869/95 dated 13 December 1995 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs)
303(8)
Classification of Goods and Services under the Nice Agreement (Seventh Edition)
311(4)
Index 315

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