GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS)
EDITOR’S NOTE AND GENERAL INTRODUCTION
Editor’s Note and General Introduction
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Table of Contents
1 Subject Matter............................................................................................ 3
2 Objective of the Guidelines ...................................................................... 3
3 Guidelines Revision Process ................................................................... 4
4 Structure of the Guidelines....................................................................... 5
Editor’s Note and General Introduction
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1 Subject Matter
Council Regulation No 40/94 of 20 December 1993, as amended and codified in Council Regulation No 207/09 of 26 February 2009 (CTMR), established, in parallel with the national systems, a Community trade mark system with the aim of eliminating one of the main obstacles to the development of the single European market. Council Regulation No 6/02 of 12 December 2001 (CDR) did the same for Community designs. Hitherto, the law governing the registration and use of trade marks or designs had been exclusively national and made it difficult for the same trade mark or design to be used throughout the European Union.
The Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM or the Office), established in Alicante, is responsible for the registration of Community Trade Marks (CTM) and Registered Community Designs (RCD). These registrations provide uniform trade mark and design protection throughout the European Union.
The Office deals with registration procedures (including the examination of applications for absolute grounds for refusal and, where an opposition has been raised regarding a CTM application, for relative grounds for refusal), maintains the public registers of these rights and de cides on appl ications for those rights, once registered, to be declared invalid. The Office’s Guidelines cover practice in all these areas.
2 Objective of the Guidelines
The purpose of the Guidelines on CTMs and the Guidelines on RCDs is to improve the coherence, predictability and q uality of the Office’s decisions. The Guidelines are designed to bring together, systematically, the principles of practice derived from the jurisprudence of the European Court of Justice, the case-law of the Office’s Boards of Appeal, the decisions of the Office’s Operations Department and the outcome of the Office’s Convergence Programmes with EU IP offices. They provide a unique source of reference on Office practice with regard to CTMs and RCDs and are intended to be of practical use both to Office staff in charge of the various procedures and to users of the Office’s services.
The Guidelines have been drawn up t o reflect Office practice in the most frequent scenarios. They contain only general instructions, which have to be adapted to the particularities of a case. They are not legislative texts and, therefore, are not of a binding nature. Both the parties involved and the Office must, where necessary, refer to the CTMR, the CDR, and their respective Implementing Regulations, the Fee Regulations, Commission Regulation (EC) No 216/96 of 05/02/1996 laying down the rules of procedure of the Boards of Appeal and, finally, the interpretation of these texts handed down by the Boards of Appeal and the Court of Justice of the European Union, including the General Court of the European Union.
As case-law is evolving constantly, the Guidelines will also evolve. They will be adapted to reflect developments in Office practice on a yearly basis by means of an ongoing revision exercise (see point 3 below).
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3 Guidelines Revision Process
As the sole source of reference on Office practice with regard to CTMs and RCDs, the Guidelines are available in all official EU languages. They are revised by the cross- departmental Knowledge Circles of the Office in a cyclical and open process: ‘cyclical’ because practice is updated on a yearly basis by looking at the case-law of the preceding year and t aking into account operational needs and t he outcome of convergence initiatives, and ‘open’ because external stakeholders are involved in defining that practice.
The involvement of national offices and user associations not only benefits the quality of the Guidelines, but is also expected to facilitate convergence, that is, the process of exploring common ground on issues where there are diverging practices. Making the Guidelines available in all EU languages will raise awareness of Office practice amongst Member States and users and make differences in practice easier to identify.
The yearly work is split into two ‘work packages’: Work Package 1 (WP1) runs over a twelve-month period each year from January to December, and Work Package 2 (WP2) over a twelve-month period each year from July to June.
The process involves the following phases:
a. Initiation of update by stakeholders
Having been made aware of the Office’s revision plans, in particular what is to be revised and when, the national offices and user associations are welcome to submit comments before January (for WP1) and bef ore July (for WP2). Comments not received on time will be taken into consideration during the next cycle or may be submitted during phase c.
b. Preparation of the draft Guidelines by the Office
During this phase, the draft Guidelines are produced by the Office’s Knowledge Circles. The process starts each year in January (for WP1) and July (for WP2). Feedback and c omments submitted in advance from users are taken into consideration. The three steps of the process – analysis, drafting and discussion – must be c ompleted in a t imely manner. Analysis involves the Knowledge Circles extracting trends from the preceding year’s case-law, studying the conclusions of the convergence projects and taking into consideration the comments received from the Office’s users and internal stakeholders. As the next step, the Knowledge Circles draft the guidelines. Finally, the texts are discussed amongst the various units and departments of the Office.
c. Adoption of the Guidelines
In the last phase, the draft Guidelines are sent for translation into the Office languages. The texts and t ranslations are circulated amongst the user associations and the EU IP offices with a view to receiving feedback before the next meeting of the Office’s Administrative Board (AB). After consulting the AB in accordance with Article 126(4) CTMR and Article 101(b) CDR, the President adopts the updated Guidelines. The versions in the five Office languages together make up the official text, which is intended to be published in January (WP1) and July (WP2) of each year, respectively. In the event of discrepancies
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between different language versions, the text in the drafting language (English) will prevail. Once adopted, the Guidelines will be translated into the remaining official languages of the European Union as a matter of courtesy and for transparency. These additional translations will be publ ished on t he Office’s website, and external stakeholders, whether national offices or user associations, will be free to submit feedback on their quality; any linguistic amendments made as a result of this informal feedback will be incorporated into the texts without any formal procedure.
d. Fast-track procedure
Where a major external event has an immediate impact on Office practice (for example, certain judgments of the Court of Justice), the Office can amend the Guidelines in a fast-track procedure outside the normal time frame set out above. However, this procedure is the exception to the norm. As the process is cyclical, such changes will always be open to comments and r evision in the following cycle.
4 Structure of the Guidelines
The items dealt with in WP1 and WP2, respectively, are set out below. In exceptional circumstances, certain elements of practice might be changed from one WP to another. Should such a change occur, it will be communicated to stakeholders.
COMMUNITY TRADE MARK:
WP1 WP2
Part A: General Rules Part A: General Rules
Section 3, Payment of fees, costs and charges Section 1, Means of communication, time limits
Section 5, Professional representation Section 2, General principles to be respected in proceedings Section 4, Language of proceedings
Section 6, Revocation of decisions, cancellation of entries in the Register and correction of errors
Section 7, Revision
Section 8, Restitutio in Integrum
Section 9, Enlargement
Part B: Examination Part B: Examination
Section 2, Formalities Section 1, Proceedings
Section 4, Absolute Grounds for Refusal 7(1)(a) Section 3, Classification
Section 4, Absolute Grounds for Refusal 7(1)(b) Section 4, Absolute Grounds for Refusal 7(1)(f)
Section 4, Absolute Grounds for Refusal 7(1)(c) Section 4, Absolute Grounds for Refusal 7(1)(g)
Section 4, Absolute Grounds for Refusal 7(1)(d) Section 4, Absolute Grounds for Refusal 7(1)(h)+(i)
Section 4, Absolute Grounds for Refusal 7(1)(e) Section 4, Absolute Grounds for Refusal 7(1)(j)+(k)
Section 4, Absolute Grounds for Refusal 7(3)
Section 4, Collective marks
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Part C: Opposition Part C: Opposition
Section 0, Introduction Section 3, Unauthorised filing by agents of the TM proprietor (Article 8(3) CTMR)
Section 1, Procedural Matters Section 4, Rights under Article 8(4) CTMR
Section 2, Double identity and Likelihood of confusion Section 5, Trade marks with reputation Article 8 (5) CTMR
Chapter 1, General Principles and Methodology
Chapter 2, Comparison of Goods and Services
Chapter 3, Comparison of Signs
Chapter 4, Distinctiveness
Chapter 5, Dominant character
Chapter 6, Relevant public and degree of attention
Chapter 7, Other factors
Chapter 8, Global assessment
Section 6, Proof of Use
Part D: Cancellation Part D: Cancellation
Section 1, Cancellation proceedings
Section 2, Substantive provisions
Part E: Register Operations Part E: Register Operations
Section 2, Conversion Section 1, Changes in a registration
Section 4, Renewal Section 3, CTMs as objects of property
Section 5, Inspection of files Chapter 1, Transfer
Chapter 2, Licences
Section 6, Other entries in the Register Chapter 3, Rights in rem
Chapter 1, Counterclaims Chapter 4, Levy of execution
Chapter 5, Insolvency proceedings or similar proceedings
Part M: International marks
REGISTERED COMMUNITY DESIGN
WP1 WP2
Examination of Design Invalidity Applications Examination of Applications for Registered Community Designs Renewal of Registered Community Designs
Means of Communication, Time Limits
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 1
MEANS OF COMMUNICATION, TIME LIMITS
Means of Communication, Time Limits
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Table of Contents
1 Introduction................................................................................................ 3
2 Procedures for Filing and for Communication with the Office.............. 3
3 Notification and Communication of Documents..................................... 3 3.1 Communication to the Office.....................................................................4
3.1.1 By telecopier ................................................................................................... 4 3.1.2 By electronic means ....................................................................................... 4 3.1.3 By post, service or personal delivery.............................................................. 4
3.2 Notification by the Office ...........................................................................5 3.2.1 Notification by telecopier ................................................................................ 5 3.2.2 By normal post................................................................................................ 5 3.2.3 By deposit in a postbox .................................................................................. 6 3.2.4 By hand delivery ............................................................................................. 6 3.2.5 Through the Office’s official website............................................................... 6 3.2.6 By public notification....................................................................................... 6
3.3 Addressees.................................................................................................7
4 Time Limits................................................................................................. 7 4.1 Time limits specified by the Office............................................................7
4.1.1 Length of the time limits specified by the Office ............................................. 8 4.1.2 Expiry of time limits......................................................................................... 8 4.1.3 Extension of time limits................................................................................... 9 4.1.4 Continuation of proceedings......................................................................... 10 4.1.5 Restitutio in integrum .................................................................................... 11
Means of Communication, Time Limits
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1 Introduction
This part of the Guidelines includes those provisions which are common to all proceedings before the Office in trade mark matters, except appeals.
In the interest of efficiency and i n order to prevent parties encountering dissimilar practices, the Office applies procedural rules consistently.
Proceedings before the Office can be classified in two broad types: ex parte proceedings, which involve only one party, or inter partes proceedings, in which two or more parties are in conflict.
The first category comprises, in particular, applications for registration or renewal of a Community trade mark, entries in the Register related to transfers, licences, levy of execution or bankruptcy, and proceedings related to seniority and conversion.
The second category includes opposition proceedings and cancellation proceedings (revocation or declaration of invalidity of a registered Community trade mark).
2 Procedures for Filing and for Communication with the Office
Article 25 CTMR Rule 79 CTMIR
An application for a Community trade mark (CTM) may be filed directly at the Office or through a national office of a M ember State of the European Union, including the Benelux Trade Mark Office.
All other documents may only be filed directly at the Office.
All documents may be sent to the Office by normal post or courier services, handed in personally at the Office’s reception desk (Avenida de Europa, 4, 03008 Alicante) during Office opening hours (Monday to Friday, 8.30 – 13.30 and 15.00 – 17.00), or sent by fax. Applications for CTMs, oppositions and renewals may also be filed electronically via the Office’s official website. As a part of its e-business strategy, the Office will progressively open up electronic communication for filing other documents in all types of proceedings.
The Office has made various forms available to the public, in all official languages of the EU. With one exception, their use is not mandatory but strongly recommended. The exception is the filing of an international application or subsequent designation under the Madrid Protocol, for which either WIPO’s MM 2 or MM 4 or OHIM’s EM 2 or EM 4 form must be used. All these forms can be downloaded from the Office’s official website.
3 Notification and Communication of Documents
The CTMIR distinguishes between documents originating from the parties and addressed to the Office and notifications issued by the Office.
Means of Communication, Time Limits
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3.1 Communication to the Office
Rules 79, 79a, 80, 82 CTMIR Decision No EX-13-02 of the President of the Office
3.1.1 By telecopier
Where a document is communicated to the Office by fax, the original should be signed so that the fax received by the Office carries the facsimile of the signature. If a document communicated to the Office is not signed, the Office will invite the party concerned to correct the irregularity and specify a time limit in which they are to do so. If the document is not signed within that time limit, the respective application or request will be dec lared inadmissible, or the document will not be taken into account, as the case may be.
If, however, the fax was generated electronically on a computer (‘electronic fax’), the indication of the name of the sender is deemed equivalent to the signature.
Subsequent confirmation by mail of the fax is not necessary. The Office will acknowledge receipt of the fax only in the cases expressly specified by the CTMIR, namely when a CTM application is filed. The Office will not, therefore, acknowledge receipt of a fax, but if the communication is incomplete or illegible, or the Office has reasonable doubts as to the accuracy of the transmission, the Office will inform the sender accordingly and invite them, within a time limit to be specified, to retransmit the communication. If the retransmission is complete, the date of receipt will be considered to be that of the first transmission, except for the purposes of establishing a filing date for a CTM application. Otherwise the Office will not take into account the transmission at all, or consider only the received and/or legible parts (decision of 04/07/2012, R 2305/2010-4, ‘Houbigant/PARFUMS HOUBIGANT PARIS et al.).
For further information on Filing Date, see the Guidelines, Part B, Examination, Section 2, Formalities.
Where a document in colour is to be transmitted, it suffices if the document is sent by fax and the coloured original is filed within one additional month unless provided otherwise by the CTMR. In this case the date of receipt of the coloured original is deemed to be the date of receipt of the fax by the Office, including for the purposes of obtaining a filing date for a CTM application.
3.1.2 By electronic means
In accordance with Rule 82 CTMIR, if a CTM application is filed through e-filing, or a communication is sent to the Office using any electronic facilities, the indication of name of the sender is deemed equivalent to the signature.
3.1.3 By post, service or personal delivery
Documents sent by post should be addressed to the Office at the address indicated in the explanatory notes accompanying the forms provided by the Office.
Means of Communication, Time Limits
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Documents sent by post, courier service or personal delivery must bear an original signature. If a document sent to the Office is not signed, the Office will invite the party concerned to correct the irregularity and specify a time limit in which they are to do so. If the document is not signed within that time limit, the respective application or request will be declared inadmissible, or the document will not be taken into account, as the case may be.
3.2 Notification by the Office
Rules 61-69 CTMIR Decision No EX-97-1 of the President of the Office Decision No EX-5-6 of the President of the Office
Written communications from the Office to the party or parties to proceedings will be ‘notified’. ‘Notification’ means the way a document is transmitted to the addressee, not a formal legal procedure (‘legal service’). Notification means that the document has entered the sphere of the addressee, irrespective of whether they have been apprised of the document. The manner and relevant date of notification depend on the various means of communication.
Except for public notification, and subject to the fact that some means of notification require prior consent of the party, the Office can freely choose the most appropriate means of notification (Rule 61(3) CTMIR).
In practice, wherever feasible and provided that the number of pages to be transmitted is not excessively high, the Office will always opt for notification by electronic means if available.
If the proper procedure of notification has been followed, the document is deemed to have been notified unless the recipient proves that the document did not reach them at all, or reached them at a later point in time. Conversely, where the proper procedure of notification was not followed, the document will nevertheless be considered notified if the Office can prove that the document actually reached the recipient.
The Office will either notify the signed original document, by post, or a copy of the document which need not be signed, as the President of the Office in decision EX-97-1 made use of the power under Rule 55(2) CTMIR to prescribe that the indication of the name(s) of the official(s) suffices.
3.2.1 Notification by telecopier
The Office may use this means of notification if the party has indicated a fax number. All documents can and will be notified this way, including decisions. The Office keeps fax logs to be able to prove transmission time and content.
3.2.2 By normal post
With regard to notification by post, the procedure will vary according to the nature of the document notified.
Means of Communication, Time Limits
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If the addressee has a place of business or domicile within the EU or has appointed a professional representative (as defined in the Guidelines, Part A, General Rules, Section 5, Professional Representation), decisions subject to a time limit for appeal, as well as summonses and other documents as determined by the President of the Office, will be notified by registered letter with a record of delivery.
In all other cases, that is, where the recipient’s address is not in the EU or has not appointed a professional representative or for any other document to be notified, the Office may and will send the document by normal post. Notification will be deemed to have been e ffected on the 10th day following the posting of the document. This presumption may only be rebutted by the recipient by proving that they did not receive the document, or that they received it at a later date.
3.2.3 By deposit in a postbox
Notification may be effected to addressees who maintain a p ostbox at the Office by depositing the notified document therein. The date of deposit will be recorded by the Office. Notification will be deemed to have been effected on the 5th day following the deposit of the document.
3.2.4 By hand delivery
Notification may also be effected by hand delivery of the document to the addressee, if they are personally present at the Office. This way of notification will constitute an exception. A copy of the document, on which a dated and signed acknowledgement of receipt by the addressee appears, will be kept in the file.
3.2.5 Through the Office’s official website
Pursuant to Decision No EX-13-2 of the President of the Office of 26/11/2013, notification may also be made through the Office’s official website if the holder of the electronic account with the Office has accepted this means of notification. Notification consists of placing the electronic document in the holder’s inbox. The document is deemed to have been notified on the 5th day following its posting, irrespective of whether the recipient actually opened and read the document. The date on which the document was placed will be mentioned in the holder’s inbox and will be recorded by the Office (decision of 17/01/2011, R 0956/2010-4 ‘DURAMAXX/DURAMAX’).
3.2.6 By public notification
Public notification will be used for all notifications when the address of the addressee is unknown or when notification by post has been returned to the Office after at least one attempt.
This relates primarily to post returned to the Office by the Post Office annotated ‘not known at the address given’ and post which has not been claimed by its addressee.
The public notifications will be published on the Office’s website. The document will be deemed to have been notified one month after the day on which it is posted on the internet.
Means of Communication, Time Limits
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3.3 Addressees
Rule 67 CTMIR Articles 92, 93 CTMR
All notifications will be sent to the representative (judgment of 12/07/2012, T-279/09, ‘100% Capri/CAPRI’) if a professional representative has been dul y appointed. ‘Duly appointed’ means that the representative is entitled to represent and has been properly appointed, and that no general obstacle (such as illicit representation of both parties in an inter partes proceeding) exists to preclude representation by that person. Filing an authorisation is not required for the purposes of being the recipient of OHIM’s notifications. For further details see the Guidelines, Part A, General Rules, Section 5, Professional Representation.
Any notification addressed to the representative will have the same effect as if it had been addressed to the represented person. Similarly, any communication addressed to the Office by a representative will be considered to have originated from the represented person.
4 Time Limits
Rules 70-72 CTMIR
Time limits before the Office can be divided into two categories:
• those laid down by the CTMR or CTMIR which are, therefore, mandatory;
• those set by the Office which are, therefore, not mandatory and can be extended under certain circumstances.
4.1 Time limits specified by the Office
Time limits are an e ssential tool for conducting orderly and reasonably swift proceedings. They are a matter of public policy and rigorous compliance with them is necessary to ensure clarity and legal certainty.
As regards the measures which mitigate the rigorous application of the principle of strict observance of time limits, the Regulations foresee three means depending on whether the time limit is still running or has expired.
If the time limit is still running, the party may request an ex tension of the time limit pursuant to Rule 71(1) CTMIR.
If the time limit has expired, the party who has missed the time limit still has two possible courses of action: either to seek continuation of proceedings (pursuant to Article 82 CTMR), which only requires meeting certain formal requirements, or to request restitutio in integrum (pursuant to Article 81 CTMR), which requires meeting formal and substantive requirements (such as showing all due care).
Additional information is provided under paragraphs 4.1.4 and 4.1.5 below.
Means of Communication, Time Limits
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4.1.1 Length of the time limits specified by the Office
With the exception of the time limits expressly specified in the CTMR or CTMIR, the time limits specified by the Office, when the party concerned has its domicile or its principal place of business or an establishment within the European Union, may not be less than one month or longer than six months. When the party concerned does not have its domicile or principal place of business or an establishment within the EU, the time limits may not be less than two months or longer than six months. The general practice is to grant two months.
For further information, see the Guidelines, Part A, General Rules, Section 5, Professional Representation.
4.1.2 Expiry of time limits
When a time limit is set in a notification by the Office, the ‘relevant event’ is the date on which the document is notified or deemed notified, depending on the rules governing the means of notification.
Where a time limit is expressed in months, it will expire in the relevant subsequent month on the day which has the same number as the day on which the ‘relevant event’ occurred.
Therefore, if the Office sets a two-month time limit in a communication which is notified by fax on 28 June, the time limit will expire on 28 August. It is immaterial whether the ‘relevant event’ occurred on a working day or holiday or Sunday; that is relevant only for the expiry of the time limit.
Where the relevant subsequent month has no day with the same number or where the day on which the event occurred was the last day of the month, the time limit in question will expire on the last day of that month. A two-month time limit set in a notification on 31 July thus expires on 30 September. Similarly, a two-month time limit set in a notification on 30 June will end on 31 August.
Any time limit will be deemed to expire at midnight on the last day.
A time limit which expires on a day on w hich the Office is not open for receipt of documents or on which ordinary post is not delivered in the locality in which the Office is located will extend until the first working day thereafter. This refers to Saturdays, Sundays and public holidays. For this purpose, before the start of each calendar year, the President of the Office determines the days on which the Office is closed. The extension is automatic but it applies only at the end o f the time limit (decision of 12/05/2011, R 0924/2010-1, ‘whisper power-WHISPER’).
In the event of a general interruption of the postal service in Spain, any time limit that expires during that period will be extended until the first working day after the period of interruption. These periods will be determined by the President of the Office; the extension will apply for all parties to the proceedings.
In the event of an exceptional occurrence (strike, natural disaster, etc.) causing a disturbance in the running of the Office or a serious impediment in its communication with the outside world, time limits may be extended for a period determined by the President of the Office.
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4.1.3 Extension of time limits
An extension of the time limits may be granted if the request is made by the party concerned before the original time limit expires.
In ex parte proceedings before the Office, if before the expiry of a time limit a request is made for its extension, then a further time limit should be allowed for a period depending on the circumstances of the case, but not exceeding six months.
Where the request for extension of an extendable time limit has been filed before the expiry of this time limit and has not been accepted, the party concerned will be granted at least one day to meet the deadline, even if the request for extension arrived on the last day of the time limit.
For the rules applicable to the extension of time limits in inter partes proceedings (i.e. when there are two or more parties involved such as in opposition, invalidity and/or revocation proceedings) see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.
Unless otherwise provided either in the Regulations or in the specific paragraphs in this Guideline, as a general rule any first request for an extension which is received in time will always be granted independently of the explanation given by the party requesting it. However, any subsequent request for an ex tension of the same time limit will be refused, unless the party requesting it duly explains and j ustifies the ‘exceptional circumstances’ that prevented it from meeting the original time limit and the first extension and w hy a f urther extension is necessary. General, vague or standard explanations will not justify a second extension.
‘Exceptional circumstances’ entail events that are beyond reasonable control of the parties.
The party requesting an extension must explain and justify the exceptional circumstances that (a) prevented it from carrying out the required action during the previous two periods and (b) still prevent it from carrying it out, so that more time is needed.
Examples of justifications that can be accepted
• ‘Evidence is being gathered from distribution channels in several Member States / all our licensees / our suppliers. So far we have gathered documents from some of them but, due to the commercial structure of the company (as shown in the document enclosed), only recently have we been able to get in contact with the rest’.
• ‘In order to show that the mark has acquired distinctiveness through use we started market polls at the beginning of the period (on date X). The fieldwork was, however, only concluded recently (as shown in the enclosed documents); as a consequence, we need a second extension to finish the analysis and prepare our submissions to the Office.’
• ‘Death’ is also considered an ‘exceptional circumstance’. The same applies to serious illness, provided that no reasonable substitution was available.
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• Finally, ‘exceptional circumstances’ also include ‘force majeure’ situations. ‘Force majeure’ is defined as a natural and unavoidable catastrophe that interrupts the expected course of events. It includes natural disasters, wars and terrorism, and unavoidable events that are beyond the party’s control.
4.1.4 Continuation of proceedings
Article 82 CTMR Communication No 6/05 of the President of the Office
The expressions ‘further processing’ and ‘continuation of proceedings’ are equivalent and are used indistinctly in these Guidelines.
Article 82 CTMR provides for the availability of further processing when time limits have been missed.
Communication No 6/05 of the President of the Office of 16/09/2005 on further processing indicates that Article 82 CTMR excludes various time limits laid down in certain articles of the CTMR. With a few exceptions, most of these references are self- explanatory.
• By excluding the time limits laid down in Article 81 CTMR, Article 82 CTMR excludes double relief for the same time limit.
• By excluding the time limits referred to in Article 112 CTMR, Article 82 CTMR provides that the three-month time limit within which conversion must be requested and the conversion fee must be p aid is not available for further processing. All other time limits fixed by the Office in the course of a conversion procedure are available.
• Article 82 CTMR further excludes the time limits laid down in Articles 41 and 42 CTMR.
○ The reference to Article 41 CTMR is to be interpreted in the same way as in Article 81(5) CTMR. Therefore, as regards Article 41 CTMR, only the opposition period and the time limit to pay the opposition fee is excluded from further processing, in accordance with the general rule that time limits which are not available for restitutio are also unavailable for further processing.
○ Article 42(1) CTMR lays down that the Office sets time limits for the parties to submit observations within the opposition procedure. Therefore, all the time limits set by the Office on the basis of Article 42(1) CTMR are excluded from further processing. This exclusion covers the time limits for the opponent to substantiate their opposition under Rule 19 CTMIR, the time limit laid down in Rule 20(2) CTMIR for the applicant to reply, the time limit under Rule 20(4) CTMIR for the opponent to rebut, as well as the time limits for any further exchange of arguments, if allowed by the Office (decision of 07/12/2011, R 2463/2010-1, ‘Pierre Robert/Pierre Robert’).
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Pursuant to Rule 50(1), 2nd sentence CTMIR, these (or the corresponding) time limits remain excluded in second instance proceedings before the Boards of Appeal.
None of the other time limits during the opposition procedure are referred to in Article 42 CTMR and, therefore, they are not excluded from further processing. Consequently, the Office will grant further processing for:
○ the time limit under Article 119(6) CTMR and Rule 16(1) CTMIR to translate the notice of opposition;
○ the time limit under Rule 17(4) CTMIR to remedy deficiencies that affect the admissibility of the opposition;
○ the time limit under Rule 22(1) CTMIR for the applicant to request that the opponent proves the use of its earlier mark;
○ the time limit under Rule 22(2) CTMIR for the opponent to submit proof of use of its earlier mark;
○ the time limit under Rule 22(6) CTMIR to translate proof of use.
• Article 82 CTMR does not exclude any of the time limits that apply in proceedings for revocation or declaration of invalidity.
The party seeking continuation of proceedings must make the request, which is subject to a fee as established in the CTMFR, within two months of the expiry of the original time limit and complete the omitted act by the time the request for continuation is received.
There can be no extension or continuation of the two-month deadline. There is no substantive requirement to be fulfilled such as when requesting restitutio in integrum.
4.1.5 Restitutio in integrum
A party to proceedings before the Office may be reinstated in its rights (restitutio in integrum) if it was, in spite of all due care required by the circumstances having been taken, unable to observe a t ime limit vis-à-vis the Office, provided that the failure to observe the time limit had the direct consequence, by virtue of the provisions of the Regulations, of causing the loss of any right or means of redress.
For further information see the Guidelines, Part A, General Rules, Section 8, Restitutio in Integrum.
General Principles to Be Respected in Proceedings
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 2
GENERAL PRINCIPLES TO BE RESPECTED IN PROCEEDINGS
General Principles to Be Respected in Proceedings
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Table of Contents
1 Adequate Reasoning................................................................................. 3
2 The Right to Be Heard............................................................................... 3 2.1 Examination by the Office of its own motion ...........................................3 2.2 Examination limited to adduced facts and evidence ...............................4
3 General Principles of EU Law................................................................... 4
4 Means of Taking Evidence........................................................................ 4 4.1 Written evidence.........................................................................................5 4.2 Oral evidence..............................................................................................5 4.3 Commissioning of experts.........................................................................6 4.4 Inspections .................................................................................................7 4.5 Affidavits.....................................................................................................7 4.6 Costs of taking evidence ...........................................................................7
5 Oral Proceedings....................................................................................... 8 5.1 Opening of oral proceedings.....................................................................8 5.2 Course of the oral proceedings.................................................................8
6 Minutes of Evidence and of Oral Proceedings........................................ 9
7 Decisions.................................................................................................... 9 7.1 Contents......................................................................................................9 7.2 Apportionment of costs .............................................................................9
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1 Adequate Reasoning
Articles 75-78, 85 CTMR
Decisions of the Office will be in writing and shall state the reasons on which they are based. That duty has two purposes, namely to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgment of 12/07/2012, T-389/11 ‘Guddy’, not published in the ECR, para. 16 and the case-law cited).
However, the Office does not infringe the duty to state reasons when it does not respond to all the arguments raised by the parties.
It is sufficient that it sets out the facts and the legal considerations of fundamental importance in the context of the decision.
(See judgment of 16/05/2012, T-580/10, ‘Kindertraum’, and judgment of 10/10/2012, T-569/10, ‘Bimbo Doughnuts’).
2 The Right to Be Heard
In all proceedings before the Office, the parties will always have the opportunity to state their positions and to put forward their grounds of defence. The latter will be, in principle, submitted in writing.
Proceedings before the Office will primarily be in writing. Decisions may be only based on reasons on which the parties have had an opportunity to present their comments.
However, the Office is not obliged to give a legal opinion before the issue of a decision (see judgment of 08/03/2012, T-298/10, ‘Biodanza’).
The extent of the examination by the Office will vary, primarily, according to whether the proceedings are ex parte or inter partes. However, this examination may also vary depending on whether the proceedings relate to the examination of absolute grounds for refusal or relative grounds for refusal of registration or invalidity.
2.1 Examination by the Office of its own motion
The Office will examine the facts of its own motion:
• in ex parte proceedings, in particular the examination of a CTM application prior to publication.
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2.2 Examination limited to adduced facts and evidence
The Office is restricted in its examination to the facts, evidence and ar guments submitted by the parties:
• in inter partes proceedings (oppositions, cancellations).
If documents are filed or allegations are made after expiry of a t ime limit set by the Office, these will in principle be considered late and the document will not be taken into account.
Contrary to the above, legal issues will be taken into account by the Office irrespective of whether pleaded by the parties, for example in the assessment of similarity between signs or goods, made on t he basis of the comparison of the two trade mark applications/registrations.
Changing circumstances arising in the course of the proceedings will also be taken into account. For example, if during opposition proceedings the earlier right on which the opposition was based lapses (e.g. it is not renewed or is declared invalid), this will always be taken into account.
3 General Principles of EU Law
The general principles of EU Law such as equal treatment and sound administration must be respected by the Office (see judgment of 24/01/2012, T-260/08, ‘Visual Map’).
The principle of equal treatment must however be applied in a manner that is consistent with the principle of legality according to which a per son may not rely, in support of its claim, on an unlawful act committed in another procedure (see judgment of 02/05/2012, T-435/11, ‘UniversalPHOLED’).
4 Means of Taking Evidence
Article 78 CTMR Rules 57-59 CTMIR
In any proceedings before the Office, evidence may be t aken. The means for taking evidence are listed in Article 78 CTMR and R ule 57 CTMIR, although that list is not exhaustive.
The means of evidence are as follows:
• hearing the parties • requests for information • the production of documents and items of evidence • hearing witnesses • opinions by experts • statements in writing sworn or affirmed or having a similar effect under the law of
the State in which they are drawn up • inspection.
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Some of these means will be m ore frequently employed, such as requests for information, statements in writing and, in particular, the submission of documents and items of evidence. The others, such as hearing of the parties, witnesses or experts, inspections, etc., will be used only exceptionally.
The Office will be the sole judge of the expediency of employing these means. It will do so only when it considers them necessary for the examination of the file.
A decision to refuse a request for the taking of evidence will not be subject to a separate appeal and can only be appealed together with the final decision.
The procedure followed by the Office varies in accordance with the nature of the proposed means of taking evidence.
4.1 Written evidence
When taking evidence, the Office will confine itself to written evidence in most cases. This is the least costly, simplest and most flexible means of taking evidence.
In this regard, the Office will give preference to the submission of documents and items of evidence. However, other possible written means of taking evidence include not only a request for information or statements in writing sworn or affirmed or having a similar effect under the law of the State in which they are drawn up, but also opinions by experts which may be confined solely to the submission of a written report.
The Regulation makes no provision for any special procedure or formality. Therefore, the Office’s general rules of procedure apply.
In particular, any information, documents or items of evidence submitted by one party will be communicated to the other parties as soon as possible, and the Office may allow the other parties a time limit of, in principle, two months to reply thereto.
The Office will base its decision only on r easons on w hich both sides have had an opportunity to submit observations.
4.2 Oral evidence
This refers to evidence taken in oral proceedings, such as the hearing of oral evidence of parties, witnesses or experts.
Reminder: only in exceptional cases will the Office decide to hear oral evidence, in particular because of the cumbersome nature of the procedure, which is liable to protract the proceedings, and because of its cost which, eventually, has to be borne by the unsuccessful party in inter partes proceedings, or in some cases by both parties.
Where the Office considers it necessary to hear the oral evidence of parties, of witnesses or of experts, it will take a decision stating the means by which it intends to obtain evidence (in the present case, a hearing), the relevant facts to be proven and the date of hearing.
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If the oral evidence has been requested by one of the parties, the decision will likewise impose upon that party a period, in principle one month, within which that party must make known the names and addresses of the witnesses and experts whom it wishes to be heard.
Further to its prior decision, the Office will summon the parties, witnesses or experts. The period of notice to appear will be at least one month, unless the persons concerned agree to a shorter period. The summons will indicate, in addition to the date of the hearing and the matters of fact to which the hearing will relate, the names of the parties to the proceedings and particulars of the costs, if any, which the witnesses or experts may be entitled to have reimbursed by the Office.
If the Office invites a party to give evidence orally, it will so inform the other parties, who may in that case intervene.
Similarly, when the Office summons an expert or a witness for a hearing, it will so inform the parties who may in that case be present and put questions to the person giving evidence.
4.3 Commissioning of experts
The use of the means of taking evidence considered in this section is exceptional, for the abovementioned reasons. More especially, opinions by experts or inspections will be employed only as a very last resort to avoid the substantial costs and protraction of the proceedings caused thereby.
It is the Office who decides whether an expert’s opinion is commissioned, and who is appointed as expert. The Office does not maintain a list or special committee of experts, because of the exceptional nature of this means of taking evidence.
The terms of reference of the expert include:
• a precise description of their task • the time limit laid down for their report • the names of the parties to the proceedings • particulars of any costs which may be reimbursed by the Office.
On receipt of the expert’s report, the Office will submit copies thereof to the parties.
If the Office considers the report sufficient, and if the parties accept this form of report, it will in principle be used only in its written form. The submission of an oral report or the hearing of oral evidence given by the expert will, therefore, be an option to be employed at the Office’s discretion.
The parties have the option of objecting to an expert on grounds of incompetence, because of a conflict of interest, because the expert has previously been involved in the dispute or because the expert is suspected of partiality. No refusal may be based on the nationality of the appointed expert. If parties object to the expert, the Office will rule on the objection. The grounds which may be cited for objecting to an expert are the same as those on which objection may be made to an examiner or to a member of a Board of Appeal pursuant to Article 137 CTMR.
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4.4 Inspections
Only in very exceptional circumstances will the Office consider it necessary to carry out an inspection in situ. In that case, it will take a decision, which will be motivated as any other decision of the Office, stating the means by which it intends to obtain evidence (in the present case, an inspection), the relevant facts to be proven and the date of the inspection.
The date fixed for the inspection will be such as to allow the party concerned sufficient time to prepare for it.
4.5 Affidavits
Sworn or affirmed statements in writing are equally admissible as evidence, if provided by a party. However, the credibility of these statements must be considered, taking into account whether the information is correct, accurate, whether it comes from an independent source and/or is supported by written information (e.g. statements in which the issuing person confirms that the records of their company contain certain information). The abuse of Article 78(1)(f) CTMR by parties as a means of self- testifying is unacceptable.
In order for a statement to be considered sworn or affirmed, it must be established that making a false statement would, under the law of the Member State in which the document was drawn up, be considered a criminal offence. It is precisely the potential criminal sanction that will induce people to tell the truth, and will provide the Office with the assurance that the alleged facts are true.
Where that is not the case, the document can only be considered as any other written document or statement without any convincing evidential value.
4.6 Costs of taking evidence
The taking of evidence by the Office may be made conditional upon a deposit by the party who has requested it. The sum will be fixed by the Office by reference to an estimate of the costs.
The witnesses and ex perts summoned or heard by the Office will be entitled to reimbursement of expenses for travel and subsistence. An advance may be granted to them. The witnesses and experts will also be entitled, respectively, to compensation for loss of earnings and fees for their work.
The amounts reimbursed and the advances for expenses are determined by the President of the Office and are published in the Official Journal of the Office. For details, see Decision No EX-99-1 as amended by Decision No EX-03-2 of 20/1/2003.
When the Office, on its own initiative, adopts means of taking evidence which require oral evidence from witnesses or experts, liability for the costs will lie with the Office. However, if the giving of oral evidence has been requested by a party then liability will lie with that party, subject to the decision on apportionment of costs in inter partes proceedings.
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5 Oral Proceedings
Article 77 CTMR
Article 77 CTMR provides that the Office may hold oral proceedings.
Any unofficial contacts such as telephone conversations will not be considered to constitute oral proceedings within the meaning of Article 77 CTMR.
The Office will hold oral proceedings either to its own instance or at the request of any party to the proceedings only when it considers them absolutely necessary. This will be at the Office’s discretion. In the vast majority of cases the possibility for the parties to present their observations in writing will be sufficient, and it will be hard to see what additional material could be submitted at a hearing without breaching the principle that facts and evidence must be adduced in due time and within the time limits set in the written procedure.
5.1 Opening of oral proceedings
Where the Office has decided to hold oral proceedings and to summon the parties, the period of notice may not be less than one month unless the parties agree to a shorter period.
Since the purpose of any oral proceedings is to clarify all points remaining to be settled before the final decision is taken, it is appropriate that the Office, in its summons, should draw the parties’ attention to the points which in its opinion need to be discussed in order for the decision to be taken.
In so far as the Office considers that certain matters require it, and to facilitate the hearing, it may invite the parties to submit written observations or to submit evidence prior to the oral hearing. The period fixed by the Office for the receipt of such observations will take account of the fact that these must reach the Office within a reasonable period of time to enable them to be forwarded to the other parties.
The parties may likewise submit evidence in support of their arguments on their own initiative. However, if such evidence should have been produced at an earlier stage of the proceedings, the Office will be the sole judge of the admissibility of these items of evidence, which complies with the principle of hearing both parties where appropriate.
5.2 Course of the oral proceedings
Oral proceedings before the examiners, the Opposition Division and the department entrusted with the keeping of the Register will not be public.
Before the Cancellation Division and the Boards of Appeal, oral proceedings, including delivery of the decision, will, as a matter of principle, be public.
If a party who has been duly summoned to oral proceedings does not appear before the Office, the proceedings may continue without them.
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At the end of the oral proceedings the Office should allow the parties to present their final pleadings.
6 Minutes of Evidence and of Oral Proceedings
Rule 60 CTMIR
Minutes of the taking of evidence and o f oral proceedings will be c onfined to the essential elements. In particular, they will not contain the verbatim statements made, nor will they be submitted for approval. However, any statements of experts or witnesses will be recorded so that at further instances the exact statements made can be verified. The parties will receive a copy of the minutes (but not of the recorded statements).
7 Decisions
7.1 Contents
Article 75 CTMR Rule 55 CTMIR
Decisions of the Office shall be reasoned to such an extent that their legality can be assessed at the appeal stage or before the General Court or Court of Justice.
The decision will cover the relevant point raised by the parties. In particular, if there are different outcomes for some goods and services of the CTM application or registration at issue, the decision will make clear which of the goods and services are refused and which are not.
The name or names of the person(s) who took the decision will appear at the end of the decision (Rule 55 CTMIR)
At the end of the decision, a notice will be added about the availability of an appeal.
Failure to include such an availability notice does not affect the legality of the decision and does not affect the time limit for filing an appeal.
7.2 Apportionment of costs
Article 82(5) and Article 85 CTMR Rules 51 and 94 CTMIR
In ex parte proceedings, there is no decision on costs, nor any apportionment of costs. Fees paid to the Office will not be reimbursed (exceptions: Rule 51 CTMIR, refund of the appeal fee in certain cases, as well as Article 82(5) CTMR, refund of the fee for further processing if further processing is not granted).
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Decisions on costs, or the fixing of costs, are limited to opposition and cancellation proceedings (including the ensuing appeal proceedings or proceedings before the GC and CJ). ‘Costs’ comprise the costs incurred by the parties to the proceedings, chiefly representation costs (although subject to relatively low ceilings) as well as costs for taking part in oral hearings. ‘Costs’ also comprise the opposition or cancellation fee paid by the opponent or third party.
‘Apportionment of costs’ means that the Office will decide whether and to what extent the parties have to reimburse each other for those amounts. It does not involve the relationship to the Office (fees paid, internal costs of the Office).
Therefore, if a decision is given in inter partes proceedings, the Office will decide on the apportionment of costs. The losing party will bear the fees and costs incurred by the other party which are essential to the proceedings. If both parties fail on one or more heads or to the extent that equity so requires, the Office may determine a different apportionment of costs.
Where the amount of costs is limited to representation costs incurred by the other party (or possibly to the reimbursement of the opposition or cancellation fee), the decision will contain the fixing of the costs to be paid by the losing parties. No proof that those costs were actually incurred is needed for this purpose.
‘Representation costs’ means only costs for professional representatives within the meaning of Article 93 CTMR, not for employees (even of another company with economic connections).
This part of the decision is a title that can be executed in simplified proceedings, in all Member States of the EU.
In cases of a withdrawal or a surrender of the contested CTM application or CTM or a withdrawal of the opposition or the request for cancellation, the Office will not decide on the substance of the case but it will normally take a decision on costs. The party who terminates the proceedings will bear the fees and costs incurred by the other party. When the case is closed for other reasons the Office will fix the costs at its discretion. In no case will the decision on costs be based on the hypothetical assumptions of who might have won the proceedings if a decision on substance had become necessary. Furthermore, within one month of the date of notification fixing the amount of the costs, the party concerned may submit a r equest for review. This request must state the reasons on w hich it is based and must be accompanied by the corresponding fee (Article 2(30) CTMFR).
Language of Proceedings
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 4
LANGUAGE OF PROCEEDINGS
Language of Proceedings
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FINAL VERSION 1.0 01/08/2014
Table of Contents
1 Introduction ................................................................................................3 2 From filing to registration (excluding opposition) ...................................3
2.1 Application ...................................................................................................... 3 2.2 Other requests ................................................................................................ 4
3 After registration (excluding cancellation) ...............................................4 4 Opposition and cancellation......................................................................4 5 Invariable nature of the language rules ....................................................5 6 Translations and their certification ...........................................................5 7 Non-compliance with the language regime ..............................................5
Language of Proceedings
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1 Introduction
Article 119 CTMR Rules 95, 96, 98 CTMIR Communication No 4/04 of the President of the Office
There are five Office languages: English, French, German, Italian and Spanish. However, an application for a Community trade mark may be filed in any of the official EU languages. The CTMR lays down rules for determining and using the language of the proceedings. These rules may vary from one set of proceedings to another, in particular depending on whether the proceedings are ex parte or inter partes.
This section deals only with the horizontal provisions common to all types of proceedings. The exceptions for particular types of proceedings are dealt with in the corresponding sections of the Guidelines.
2 From filing to registration (excluding opposition)
2.1 Application
A Community trade mark application (CTM application) may be filed in any of the official EU languages.
A second language must be indicated from among the five languages of the Office.
During the proceedings, the applicant may use
• the first language if it is an Office language;
• or the second language, at its discretion, if the first language is not an Office language.
The Office uses
• only the first language if it is an Office language;
• the first language if it is not an Office language, following the CJEU ‘Kik’ judgment (judgment of 09/09/2003, C-361/01 P), unless the applicant has declared in writing its consent for the Office to use the second language, in which case the Office proceeds accordingly. Consent to use of the second language must be given for each individual file; it may not be given for all existing or future files.
This language regime applies throughout the application and ex amination procedure until registration, except for oppositions and ancillary requests (see following paragraph).
Language of Proceedings
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2.2 Other requests
Rule 95(a) CTMIR
During the period from filing to registration, any request, application or declaration that is not concerned with the examination of the application as such but that starts an ancillary procedure (inspection of files, registration of a transfer or licence, request for conversion, declaration of division) may be submitted in the first or second language, at the discretion of the CTM applicant or third party. That language then becomes the language of the proceedings for those ancillary proceedings. This applies irrespective of whether or not the first language is an Office language.
3 After registration (excluding cancellation)
Rule 95(b) CTMIR
Any request, application or declaration of division or surrender, with the exception of a cancellation request, made after the CTM has been registered must be submitted in one of the five Office languages.
Example: After a CTM has been registered, the CTM proprietor may file a request for the registration of a licence in English and, a few weeks later, file a request for renewal in Italian.
4 Opposition and cancellation
Rules 16 and 38(1) CTMIR
An opposition or request for cancellation (application for revocation or declaration of invalidity) may be filed
• at the discretion of the opponent/applicant for cancellation in the first or second language of the CTM application if the first language is one of the five languages of the Office;
• in the second language if the first language is not an Office language.
This language becomes the language of the proceedings for the opposition or cancellation proceedings, unless the parties agree to a different one (from among the official EU languages).
An opposition or request for cancellation may also be filed in any of the other Office languages, provided that within one month of the expiry of the opposition period or within one month of the filing of the application for cancellation, the opponent/applicant for cancellation files a t ranslation into a l anguage that is available as a l anguage of proceedings.
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5 Invariable nature of the language rules
The Regulations allow certain choices to be made from among the available languages in the course of the proceedings (see above) and, during specified periods, a different language to be chosen as the language of the proceedings for opposition and cancellation. However, with those exceptions, the language rules are invariable. In particular, the first and second languages may not be amended in the course of the proceedings.
6 Translations and their certification
Rule 98 CTMIR
The general rule is that where a translation of a document is required, it must reach the Office within the time limit set for filing the original document. This applies unless an exception to this rule is expressly provided in the Regulations.
The translation must identify the document to which it refers and r eproduce the structure and contents of the original document. The Office may require that a certified translation be filed within a specific period, but does so only if it has reason to doubt the veracity of the translation.
7 Non-compliance with the language regime
In case the language regime is not complied with the Office will issue a deficiency letter. S hould the deficiency not be r emedied the application or the request will be refused.
For more information on language regimes for particular types of proceedings the corresponding sections of the Guidelines should be consulted.
Revocation of Decisions, Cancellation of Entries in the Register and Correction of Errors
Guidelines for Examination in the Office, Part A, General Rules Page 1
FINAL VERSION 1.0 DATE 01/08/2014
GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 6
REVOCATION OF DECISIONS, CANCELLATION OF ENTRIES IN THE
REGISTER AND CORRECTION OF ERRORS
Revocation of Decisions, Cancellation of Entries in the Register and Correction of Errors
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Table of Contents
1 Revocation of Decisions and Cancellation of Entries in the Register .. 3 1.1 Obvious procedural error attributable to the Office....................... 3 1.2 Who decides on requests for revocation/cancellation? ................ 4 1.3 Procedural aspects ........................................................................... 4
1.3.1 Assessment.......................................................................................4 1.3.2 Distinction between one and two parties............................................5
1.3.2.1 Procedures for one party.................................................................. 6 1.3.2.2 Procedure for more than one party .................................................. 6
2 Correction of Errors in Decisions and other Notifications .................... 7 2.1 Correction of errors in decisions..................................................... 7
2.1.1 General remarks................................................................................7 2.1.2 Procedural aspects............................................................................8
2.1.2.1 Time limit .......................................................................................... 8 2.1.2.2 Assessment...................................................................................... 8 2.1.2.3 Procedure......................................................................................... 9
2.2 Correction of errors in notifications other than decisions............ 9
3 Correction of Errors in Publications and Correction of Errors in the Register or in the Publication of the Registration .................................. 9
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1 Revocation of Decisions and Cancellation of Entries in the Register
Article 80 CTMR
Under certain conditions a decision taken by the Office can be revoked or an entry in the Register cancelled. This part of the Guidelines deals with the practical aspects of revocation/cancellation under Article 80 CTMR; it does not apply to Registered Community designs (RCDs).
The revocation procedure can be initiated either by a party to the proceedings or by the Office on its own motion.
A decision can only be revoked by another decision. The same applies to cancellations of entries in the register.
1.1 Obvious procedural error attributable to the Office
A decision may be revoked or an entry in the Register cancelled only when it contains an obvious procedural error attributable to the Office.
A decision/entry contains an obvious procedural error where there was an error in the proceedings (usually when an essential procedural step was omitted) or where the decision/entry ignores a procedural action taken by the parties. Procedural errors have to be distinguished from errors in substance, where no r evocation is possible. The decision/entry is wrong from a procedural point of view (i.e. suffers from an obvious procedural error) if the procedure established by the Regulations was not followed properly.
The following is a non-exhaustive list of examples of obvious procedural errors demanding revocation.
• The CTM is registered despite having previously been withdrawn.
• The opposition has been found admissible even though some admissibility requirements were not met (see CJEU judgment of 18/10/2012, C-402/11 P, ‘REDTUBE’).
• The CTM is registered despite a deficiency in the payment of the application fees.
• The CTM is registered despite a successful opposition.
• The CTM’s refusal on absolute grounds is notified before expiry of the time limit given to the applicant to send observations in reply to the objection, or ignoring the observations the applicant filed on time. (Where the applicant has responded within the time limit, the examiner can continue dealing with the application, for example by issuing a decision, and is not required to wait until expiry of the time limit set in the objection letter.)
• The CTM is refused on absolute grounds, ignoring a valid request from the applicant for the opportunity to submit evidence of acquired distinctiveness (Article 7(3) CTMR).
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• The CTM is refused on absolute grounds, ignoring the evidence of acquired distinctiveness duly submitted.
• The CTM is refused by the Opposition Division, ignoring an unprocessed request for proof of use or without dealing with the issue of proof of use.
• The CTM is registered despite a pending opposition.
• The opposition is rejected on the basis of lack of proof of use but ○ the opponent was not expressly given a t ime limit for submitting proof of
use; ○ proof of use was filed on time and was overlooked.
• The opposition decision was rendered while the proceedings were suspended or interrupted or, more generally, while a time limit for one of the parties was still running.
• Any breach of the right to be heard (observations not forwarded to the other party when that party should have been given a time limit to reply pursuant to the Regulation or the Office’s practice).
• When closing a file due to a limitation of the contested CTMA or a withdrawal, the Office has issued a decision on costs, overlooking an agreement between both parties on costs that was on file at the time.
• A transfer of ownership was entered in the Register despite insufficient evidence of the transfer.
Whether or not these procedural errors were a result of human error or of the incorrect functioning of an IT tool is immaterial.
The effect of the revocation of a decision or of the cancellation of an entry in the Register is that the decision or entry is deemed to never have existed. The file is returned to the procedural stage it was at before the erroneous decision or entry was made.
1.2 Who decides on requests for revocation/cancellation?
Decisions on revocation/cancellation are made by the department or unit who made the entry or took the decision.
1.3 Procedural aspects
Article 80 CTMR
1.3.1 Assessment
Examiners must verify, firstly, whether the decision or entry contains an obv ious procedural error, secondly, whether more than six months have passed since notification of the decision or entry in the Register and, thirdly, whether there has been an appeal against the decision/entry in the Register.
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(a) Assessment: It must be verified whether the decision or entry contains an obvious procedural error. For further information see above under paragraph 1.1.
(b) Six months: Whenever an obvious procedural error comes to the attention of an examiner, it must be established whether more than six months have passed since notification of the decision or entry in the Register. Revocation/cancellation is not possible if more than six months have passed (Article 80(2) CTMR).
Article 80 CTMR mentions that cancellation or revocation ‘shall be det ermined’ within six months of the date of the entry or decision. This means that even if the time limit has lapsed, an entry will be cancelled or a decision revoked if the Office is made aware in writing of an obvious procedural error in that entry or decision within six months of notification of that entry/decision. It also means that an entry can be cancelled or a decision revoked after the six-month period if the Office sends a notification initiating the cancellation/revocation proceedings within six months of notification of that entry/decision.
(c) Decision/entry against which appeal pending: Before issuing a letter notifying parties of its intention to cancel an entry or revoke a decision, and before actual cancellation/revocation, the Office must verify whether the decision or entry in the Register has been appealed against. A decision or entry cannot be revoked/cancelled if an appeal against it is pending before the Boards (decision of 28/04/2009, R 323/2008-G – ‘BEHAVIOURAL INDEXING’).
1.3.2 Distinction between one and two parties
The procedure where only one party is affected is described below in paragraph 1.3.2.1. Examples are when the Office duly receives third-party observations that raise doubts but the CTMA is not blocked and continues to registration, and where a CTMA is registered although the application fee has not been paid.
Errors that concern incorrect handling of the files after a decision has been taken, for example where a CTMA is registered despite having been refused on absolute grounds, affect only one party – the applicant.
If revocation of a decision is likely to affect more than one party, the procedure described below in paragraph 1.3.2.2 must be followed. For example, more than one party is affected by the revocation of a decision in opposition proceedings where the Office overlooked a request for proof of use.
Errors that concern incorrect handling of the files after an opposition decision has been taken, such as where the entire CTMA is rejected but is still registered, are considered to affect both the applicant and the opponent.
Errors in registering a transfer of ownership also affect more than one party. While the procedure is essentially ex parte, the Office may, depending on the case, consider that more than one party is affected: the new owner, the old owner and the third party that should have been entered in the Register.
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1.3.2.1 Procedures for one party
Error found by Office
If the Office itself finds out that an error has been made, it informs the applicant/owner of its intention to revoke the decision/cancel the entry and sets a time limit for observations of one month if the applicant/owner has its head office in the EU or two months if it does not. The letter must state the reasons for the revocation/cancellation.
If the applicant/owner agrees or does not submit any observations, the Office revokes the decision/cancels the entry.
If the applicant/owner does not agree to revocation or cancellation, a formal decision has to be taken, which is subject to the usual requirements as described in the Guidelines, Part A, General Rules, Section 2, General Principles to be respected in Proceedings, paragraph 7, Decisions.
Error notified by affected party
If the applicant/owner informs the Office in writing of an error, there is no need to ask for observations. In such cases, it must be determined whether the request for revocation/cancellation is eligible. If so, the decision or entry in the Register is revoked/cancelled. If the Office finds that there are no reasons to revoke/cancel, it rejects the party’s request by a decision, giving the reasons why the request is rejected.
1.3.2.2 Procedure for more than one party
Error found by Office
If the Office itself finds out that an error has been made, it informs both parties of its intention to revoke the decision/cancel the entry and sets a time limit for observations of, in principle, two months (reduced to one month if both parties have their respective head offices in the EU).
If the parties agree or do no t submit any observations in reply, the Office must revoke/cancel the decision/entry in the Register.
If one of the parties does not agree to the revocation/cancellation, a reasoned decision has to be taken, which is subject to the usual requirements as described in the Guidelines, Part A, General Rules, Section 2, General Principles to be respected in Proceedings, paragraph 7, Decisions.
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Error notified by one of the parties
If the party adversely affected by the error informs the Office in writing of an error, it must be determined whether the request for revocation/cancellation is eligible. If so, the Office notifies the party that benefited from the error (the other party) of its intention to revoke/cancel (and sends a copy of this notification to the first party for information). A time limit for observations of, in principle, two months is set (which may be reduced to one month if the adversely affected party has its head office in the EU).
If the other party agrees or does not submit any observations in reply, the Office must revoke the decision/cancel the entry.
If the other party does not agree to revocation or cancellation, a reasoned decision has to be taken, which is subject to the usual requirements as described in the Guidelines, Part A, General Rules, Section 2, General Principles to be respected in Proceedings, paragraph 7, Decisions.
For example, where an opponent that has seen its opposition upheld and the CTMA rejected informs the Office that the CTMA has nevertheless been registered, the applicant must be informed and given two months to submit observations. The entry will be cancelled regardless of whether the applicant agrees or does not reply.
If the party that benefited from the error informs the Office in writing, it must be determined whether the request for revocation/cancellation is eligible. If so, the party adversely affected by the error must be informed accordingly. As revocation/cancellation will be to the latter’s advantage, the decision can be revoked or entry cancelled at the same time as the letter is sent (to both parties). There is no need for the party that benefited from the error to submit observations, as its letter informing the Office of the error can be taken as its agreement to revocation/cancellation.
For example, where an applicant informs the Office that its CTMA has been registered despite being rejected by decision of the Office, the entry in the Register must be cancelled. There is no need to hear the opponent.
Finally, once a revocation or cancellation has become final, it must be published if a wrong entry in the Register has already been published. If the Office finds that there are no reasons to revoke a decision/cancel an entry, it will reject the relevant request by letter and send copies of both this letter and the original request to the other party for information.
2 Correction of Errors in Decisions and other Notifications
Rule 53 CTMIR
2.1 Correction of errors in decisions
2.1.1 General remarks
According to Rule 53 CTMIR, where the Office becomes aware, of its own motion or at the instance of a party to the proceedings, of a linguistic error, error of transcription or obvious mistake in a decision, it has to ensure that the error or mistake is corrected by the department or division responsible. It is apparent from the wording that the only
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legitimate purpose of corrections made on the basis of this provision is to correct spelling or grammatical errors, errors of transcription – such as errors relating to the names of the parties or the written forms of the signs – or errors that are so obvious that nothing other than the wording as corrected could have been under stood. However, when the error affects the dictum of a decision, only revocation is possible, and then only if all the conditions are met.
The Office defines ‘obvious error’ as in No B.16 in the Joint Statements by the Council and the Commission entered in the minutes of the Council meeting at which the CTMR was adopted in relation to Article 44(2) CTMR and to Rule 53 CTMIR: ‘… the words “obvious mistake” should be understood as meaning mistakes which obviously require correction, in the sense that nothing else would have been i ntended than what is offered as the correction.’
The distinction between revocation under Article 80 CTMR and c orrection under Rule 53 CTMIR is that revocation annuls a decision, whereas the correction of errors does not affect the validity of the decision and does not open a new appeal period.
An example of an error of transcription would be when a trade mark is referred to incorrectly, for example, ‘HAMMER’ is referred to as ‘HUMMER’.
An example of an obvious error is when the earlier mark and the contested mark are interchanged in the comparison of the signs.
2.1.2 Procedural aspects
2.1.2.1 Time limit
The Regulations do not set a time limit for the correction of errors in decisions. This suggests that corrections can be made any time, as long as they do not clash with the principle of equity.
2.1.2.2 Assessment
Examiners must verify, firstly, whether the error to be corrected is a linguistic error, an error of transcription or an obvious error and, secondly, whether there has been a n appeal against the decision.
(a) Assessment: Before sending a correction letter, the examiner must verify whether the error to be corrected is a linguistic error, an error of transcription or an obvious error.
(b) Appeal: The examiner must also verify whether there has been an appeal against the decision. No correction can be made if an appea l against the decision is pending before the Boards. However, the Boards must be informed of the situation.
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2.1.2.3 Procedure
Linguistic errors, errors of transcription and obvious errors are corrected by sending a corrigendum to the affected party/parties. The accompanying letter must briefly explain the corrections.
Once the correction has been made, the examiner makes sure that the changes are reflected in the decision as it appears in the Office’s database.
The date of the decision or entry remains unchanged after correction. Therefore, the time limit for appeal is not affected.
When the fixation of costs is part of the dictum of the decision it can be corrected only by revocation.
2.2 Correction of errors in notifications other than decisions
Errors in notifications other than decisions can be remedied by sending a c orrected notification indicating that the latter replaces and annuls the one previously sent. The notification should include an apology for any inconvenience caused.
3 Correction of Errors in Publications and Correction of Errors in the Register or in the Publication of the Registration
Article 39 CTMR Rules 14, 27, 84, 85 CTMIR
Article 39 CTMR states that CTMAs that have not been refused on absolute grounds should be published one month after the search report has been issued.
Rule 14 CTMIR refers to the correction of mistakes and errors in the publication of the application pursuant to Article 39 CTMR.
Rule 27 CTMIR refers to mistakes and errors in the registration of a CTM or in any entry made in the Register in accordance with Rule 84 CTMIR, including any Decision of the President pursuant to Rule 84(4) CTMIR, and to errors in the publication of the those entries in the Register.
The main difference between the correction of an entry in the Register pursuant to Rule 27 and the cancellation of an entry in the Register pursuant to Article 80 CTMR is that the former relates to only one part of the publication, whereas the latter cancels the whole entry in the Register.
Where there is an error attributable to the Office, the latter corrects it either of its own motion (where the Office itself has become aware of the error) or at the proprietor’s request.
Corrections of errors in CTM applications that do not require republication of the application for opposition purposes are published in Section B.2 of the Bulletin. Corrections pursuant to Rule 14 CTMIR that do require republication of the application
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for opposition purposes are published in Section A.2. However, republication will only be required if the initial publication published a more limited list of goods and services.
In all cases, the affected party/parties are notified of the corrections pursuant to Rule 14 or 27.
The following are examples of errors that can be corrected (Rule 27(1) CTMIR).
• The CTM has been published for one class fewer than applied for.
• The sign ‘x’ was applied for and the publication refers to the sign ‘y’, or the list of goods and services published is wrong.
• The CTM has been registered without taking into consideration a limitation.
Corrections of errors in registered CTMs that do not require republication for opposition purposes are published in subsection B.4.2 of the Bulletin. Corrections pursuant to Rule 27 CTMIR that require republication of part of the application for opposition purposes are published in subsection A.2.1.2.
Republication for opposition purposes will always be required where a correction involves changes to the representation of the mark or a broadening of the list of goods and services already published. For other corrections, republication must be decided on a case-to-case basis.
Corrections to entries in the Register must be published pursuant to Rules 27(3) and 85(2) CTMIR. Corrections of relative errors in an entry in the Register are published in subsection B.4.2 of the Bulletin. All the examples listed above (of corrections and of revocation/cancellations) require publication.
No correction need be published pursuant to Rule 27 CTMIR when the initial publication was in the wrong section of the Bulletin. According to Communication No 11/98 of the President of the Office of 15/12/1998, ‘the legal effect of the publication under Article 9(3) of the Community Trade Mark Regulation remains the same regardless of whether the publication is made in Part B. 1 or Part B. 2 of the Bulletin’.
Time limit: There is no time limit for corrections pursuant to Rule 14 or 27 CTMIR. They can be made at any time once the error has been detected.
Revision
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 7
REVISION
Revision
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Table of Contents
1 General Principles ..................................................................................... 3 1.1 Introduction ................................................................................................3 1.2 In ex parte cases ........................................................................................3 1.3 In inter partes cases...................................................................................3
2 Procedure where Revision is Available ................................................... 4 2.1 Verification of whether the appeal is deemed to have been filed ...........4 2.2 Verification whether the appeal is admissible..........................................4 2.3 Verification whether the appeal is well founded ......................................5
2.3.1 Situations where the initial decision may be rectified ..................................... 5 2.3.2 Situations where, although the appeal is well founded, revision may not be
granted............................................................................................................ 5
2.4 Impact of a request for restitutio in integrum...........................................5 2.5 Decision to grant revision..........................................................................6
2.5.1 Deadline for taking the decision ..................................................................... 6 2.5.2 Contents of the decision ................................................................................. 6
2.6 Appeal against the decision ......................................................................6 2.7 Communication of the decision ................................................................7
3 Procedure where Revision is not Granted .............................................. 7
Revision
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1 General Principles
Articles 61, 62 CTMR
1.1 Introduction
It is the responsibility of the Boards of Appeal to decide on an appealed decision. Pursuant to Articles 61 and 62 CTMR, the Board sends the appealed decision back to the department that took the decision in order for it to be revised. This enables the first- instance decision-taker to rectify the decision if the appeal is admissible and well founded. Inter partes cases may only be rectified if authorised by the other party (see decision of 11/08/2009, R 1199/2008-4 – ‘DIPLOMÃTICO/DIPLOMAT’)
The purpose of revision is to avoid the Boards of Appeal being inundated with appeals against decisions for which a need for rectification has been recognised by the Office. However, the aim is not to remove mistakes in decisions made by the Office without changing the outcome of a case, but to grant the appellant the relief sought.
1.2 In ex parte cases
Revision can be granted where an appeal has been lodged against a decision for which the Boards of Appeal are competent pursuant to Article 58 CTMR.
If the division or instance of the Office whose decision is appealed considers the appeal to be admissible and well founded, it must rectify its decision.
If the decision is not rectified within one month after receipt of the statement of grounds of appeal, the appeal must be remitted to the Boards of Appeal without delay and without comment as to its merits.
1.3 In inter partes cases
Revision is also available in inter partes proceedings. These comprise opposition proceedings (including where the opposition is rejected as inadmissible), proceedings concerning applications for revocation or declaration of invalidity, and c ertain proceedings concerning inspection of files.
Revision is not available where the one-month time limit following receipt by the Office of the statement of grounds of appeal has expired.
Revision requires a pending appeal. It is not available where an appeal has been withdrawn before the one-month time limit for revision has expired and a decision on revision has not yet been taken.
Revision
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2 Procedure where Revision is Available
Articles 61, 130 CTMR
Where revision is available, the Registrar of the Board of Appeal sends the appeal documents and any subsequent communications relating to the appeal to the Office division that took the decision.
The division concerned examines whether revision may be granted.
Revision may only be granted where the appeal is admissible and well founded.
2.1 Verification whether the appeal is deemed to have been filed
Article 60 CTMR Rule 49(3) CTMIR Article 2(18), Article 8(3), (4) CTMFR
As an appeal is deemed to have been filed only when the appeal fee has been paid, the appealed decision for which the appeal fee has not been paid may not be revised.
The competent division must, therefore, verify whether the appeal fee has been fully paid within two months of notification of the contested decision.
Otherwise, the appealed decision cannot be r evised and has to be r emitted without delay (not necessarily only at the end of the one-month time limit) to the Registrar at the Boards of Appeal.
For more details on fees, see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges.
2.2 Verification whether the appeal is admissible
Articles 58-60 CTMR Rule 48, Rule 49(1), (2) CTMIR
The competent division must be satisfied that the appeal is admissible, that is that it complies with the requirements laid down in Articles 58 to 60 CTMR and Rule 48(1)(c) and Rule 48(2) CTMIR, as well as with all other requirements to which Rule 49(2) CTMIR refers.
The competent division may not under any circumstances contact the appellant to remedy formal or substantive deficiencies of the appeal. This prohibition includes oral contact. Where the requirements for admissibility of the appeal are not met, the case must be remitted without delay to the Boards of Appeal.
Where the language used is not available for lodging the appeal, revision will not be granted.
Revision
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Where essential indications such as the applicant’s name and address are missing or there is no signature or authorisation, revision will not be granted.
2.3 Verification whether the appeal is well founded
The competent division has to verify whether the appeal is well founded.
2.3.1 Situations where the initial decision may be rectified
The relevant date for assessing whether the appeal is well founded is that on which the competent division examines whether or not revision can be granted.
The appeal is well founded where the contested decision was incorrect.
2.3.2 Situations where, although the appeal is well founded, revision may not be granted
Articles 7(3), 37(1) CTMR Rules 9, 11 and 13 CTMIR
Revision may be gr anted only if the objections raised by the Office are completely overcome.
For example, an appeal may not be revised where the CTM applicant only partially removes the deficiencies pointed out by the Office.
Another example is where the examiner has objected to the list of goods and services and the CTM applicant files a new list of goods and services that fails to completely overcome the examiner’s objections and requires further examination.
A further example is when the Office has rejected a C TM application on absolute grounds but in its appeal the CTM applicant argues that the mark has acquired distinctiveness through use, which then requires proof.
Revision is not available when granting it would merely re-open but not resolve the issue. Revision need not necessarily result in a positive decision on the main issue (for example, in the case of a CTM application, in registration or at least publication): it may grant relief to the appellant insofar as it seeks to reverse a decision. When determining whether revision would grant the requested relief, the contested decision and the reasons on which it is based are taken as the basis.
2.4 Impact of a request for restitutio in integrum
Articles 60, 81 CTMR
Revision may not be granted where a notice of appeal, or a written statement of the grounds of appeal, was not filed in time but is accompanied by a request for restitutio in integrum seeking restoration of the two-month time limit for lodging an appeal or filing
Revision
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the statement of grounds. The appeal will be remitted to the Boards of Appeal without delay.
2.5 Decision to grant revision
Article 61(2) CTMR Rules 51 and 52 CTMIR
If the competent division concludes that revision should be granted, it must take a decision to this effect within one m onth of receipt of the statement of grounds of appeal.
2.5.1 Deadline for taking the decision
The decision must be dispatched at the latest on the last day of the time limit. It does not matter whether the date of notification of the decision is after that date. If, for example, the decision is notified by registered mail, the registered letter must be posted at the latest on the last day of the time limit.
2.5.2 Contents of the decision
The contents of the decision must at least provide for the annulment of the initial decision and may provide for further treatment of the case – for example, that the CTM application be registered or the registration of transfer applied for be entered in the files of the CTM application.
The decision must also state whether or not the appeal fee is reimbursed.
Reimbursement of the appeal fee is ordered only if equitable by reason of a substantial procedural violation. The basic consideration is whether or not the Office was at fault on the date on which the contested decision was taken. If the contested decision is found to be incorrect in itself, reimbursement is granted. If the contested decision was correct on the date on which it was taken, no reimbursement is granted unless it is established that a doc ument or observation removing the deficiency raised by the Office was actually received by the Office prior to the decision but not included in the file in time.
Where the appeal fee has been paid through a current account, the current account holder is reimbursed through that same account. Where it has not yet been debited, the decision will state that no appeal fee will be debited.
2.6 Appeal against the decision
Article 58 CTMR
Decisions to grant revision cannot be appealed.
A decision not to reimburse the appeal fee may be appealed separately.
Revision
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2.7 Communication of the decision
Once revision is granted, the competent division informs the Registrar of the Boards of Appeal accordingly.
3 Procedure where Revision is not Granted
Article 61(2) CTMR
When the competent division concludes that the conditions for granting revision are not met, and at the latest upon expiry of the one-month time limit provided for in Article 61(2) CTMR, the competent division must remit the case to the Boards of Appeal without any comment or statement.
When the competent division remits the case without comments, no decision has to be taken to refuse revision.
Restitutio in Integrum
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS)
PART A
GENERAL RULES
SECTION 8
RESTITUTIO IN INTEGRUM
Restitutio in Integrum
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Table of Contents
1 General Principles ..................................................................................... 3
2 Criteria for Granting restitutio .................................................................. 3 2.1 Proceedings to which restitutio applies ...................................................3 2.2 Parties .........................................................................................................4 2.3 Time limit for national offices to forward an application to the Office ...4 2.4 Time limits excluded from restitutio in integrum .....................................4 2.5 Loss of rights or means of redress caused directly by non-
observance of time limit.............................................................................5 2.6 Effect of restitutio in integrum...................................................................6
3 Procedure................................................................................................... 6 3.1 Time limit ....................................................................................................6 3.2 Fee...............................................................................................................7 3.3 Languages ..................................................................................................7 3.4 Particulars and Evidence ...........................................................................7 3.5 Competence................................................................................................7 3.6 Publications................................................................................................8 3.7 Decision, role of other parties in restitutio proceedings .........................8
4 Third-Party Proceedings........................................................................... 9
Restitutio in Integrum
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1 General Principles
Article 81 CTMR Article 67 CDR
A party to proceedings before the Office may be reinstated in their rights (restitutio in integrum) if they were unable to observe a time limit vis-à-vis the Office, in spite of all due care having been taken as required by the circumstances, provided that the failure to observe the time limit had the direct consequence, by virtue of the provisions of the Regulations, of causing a loss of rights or means of redress (see judgment of 28/06/2012, T-314/10, ‘Cook’s’, paras 16 and 17).
Restitutio in integrum is only available upon application to the Office and is subject to the payment of a fee.
2 Criteria for Granting restitutio
Restitutio in integrum will be granted only under exceptional circumstances which are unforeseeable and independent of the will of the party concerned. These include, for example, an error committed by a courier service in the course of delivering a communication to the Office, an error induced or committed by the Office or a general strike.
By contrast, human error during the management of renewal procedures on the part of the representative or the party itself, IT-related problems, postal delays, economic hardship, and errors in calculating deadlines or a misunderstanding of the applicable law are not considered exceptional circumstances (decision of 14/06/2012, R 2235/2011-1, ‘KA’ and judgment of 19/09/2012, T-267/11, ‘VR’).
2.1 Proceedings to which restitutio applies
Restitutio is available in all proceedings before the Office.
This includes proceedings under the CTMR, as well as proceedings concerning registered Community designs under the CDR. The respective provisions do not differ materially.
Restitutio is available in ex parte proceedings, inter partes proceedings and appeal proceedings.
For restitutio in relation to the missed time limit for lodging an appeal and to revision, see the Guidelines, Part A, General Rules, Section 7, Revision.
Restitutio in Integrum
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2.2 Parties
Article 81 CTMR Article 67 CDR
Restitutio is available to any party to proceedings before the Office, that is, not only to the applicant or proprietor for a Community trade mark or the applicant or holder of a registered Community design, but also to the opponent, the applicant for a declaration of revocation or invalidity, or an alleged infringer who is joined as a party to invalidity proceedings pursuant to Article 54 CDR.
The time limit must have been missed by the party concerned or their representative.
2.3 Time limit for national offices to forward an application to the Office
Article 25(2) CTMR Articles 35(1) and 38(2) CDR
The time limit of one month for transmission of a CTM application or two months for transmission of a Community design application filed at a national Office has to be observed by the national Office and not by the applicant and is consequently not open to restitutio in integrum.
Under Article 38(2) CDR, late transmission of a Community design application has the effect of postponing the filing date to the date of actual receipt of the relevant documents by the Office.
Furthermore, in the event of non-observance of the time limit under Article 25(3) CTMR for transmission of a C TM application, rather than considering the CTM application withdrawn, the Office will treat the CTM application as if it had arrived directly at the Office and not through a national Office, with the consequence that the filing date will be the date of actual receipt by OHIM.
2.4 Time limits excluded from restitutio in integrum
Article 81(5) CTMR Article 67(5) CDR
In the interest of legal certainty, restitutio in integrum is not applicable to the following time limits.
Articles 29(1) and 81(5) CTMR Rule 6(1) CTMIR Articles 41(1) and 67(5) CDR Article 8(1) CDIR
• The priority period, that is, the six- month time limit for filing an application claiming the priority of a previous trade mark or design application pursuant to
Restitutio in Integrum
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Article 29(1) CTMR or Article 41(1) CDR. However, restitutio does apply to the three-month time limit for indicating the file number of, and filing a copy of, the previous application referred to in Rule 6(1) CTMIR or Article 8(1) CDIR.
Articles 41(1), (3) and 81(5) CTMR
• The time limit for filing an opposition pursuant to Article 41(1) CTMR, including the time limit for paying the opposition fee referred to in Article 41(3) CTMR.
Article 81(2), (5) CTMR Article 6(2), (5) CDR
• The time limits for restitutio itself, namely:
○ the two-month time limit from removal of the cause for non-compliance for filing the application for restitutio in integrum
○ the two-month time limit from that date for completing the omitted act ○ the one year time-limit from expiry of the unobserved time limit for filing the
application for restitution in integrum.
2.5 Loss of right s or means of re dress caused directly by non- observance of time limit
Article 81(1) CTMR
Failure to observe the time limit must have had the direct consequence of causing loss of rights or means of redress.
Articles 42(2), 76(2) and 77(1) CTMR Rules 19, 20(1)-(5) and 40(1)-(3) CTMIR
This is not the case where the Regulations offer procedural options of which parties to proceedings can freely avail themselves, for example, asking for an o ral hearing, or requesting that the opponent provide proof of genuine use of its earlier mark, or applying for an extension of the cooling-off period pursuant to Rule 19 CTMIR. The cooling-off period itself is not subject to restitutio either because it is not a t ime limit within which a party must perform actions.
Articles 36(1), (4) and 37 CTMR Rules 9(3), (4), 10 and 11(1), (3) CTMIR
On the other hand, restitutio in integrum does apply to the late response to an examiner’s notification of refusal if the application is not rectified within the time limit specified because, in this case, there is a direct relationship between non-observance of the time limit and possible refusal.
Restitutio is also available in the event of the late submission of facts and arguments, and late filing of observations on the other party’s statements in inter partes proceedings if and when the Office refuses to take them into account as filed too late.
Restitutio in Integrum
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The loss of rights in this case involves the exclusion of these submissions and observations from the facts and arguments on which the Office bases its decision. (It is general Office practice to disregard any statements filed in inter partes proceedings after expiry of the time limit set therefor.)
2.6 Effect of restitutio in integrum
Granting restitutio in integrum has the retroactive legal effect that the unobserved time limit will be considered to have been observed, and that any loss of rights in the interim will be deemed never to have occurred. Any decision taken by the Office in the interim based on non-observance of the time limit will become void, with the consequence that once restitutio is granted, there is no longer any need to lodge an appeal against such a decision of the Office in order to have it removed. Effectively, restitutio will re- establish the applicant in all its rights.
3 Procedure
Article 81(2) CTMR Rule 83(1)(h) CTMIR Article 67(2) CDR Article 68(1)(g) CDIR
Restitutio in integrum must be applied for in writing. The application must be sent to the Office.
3.1 Time limit
Articles 47(3) and 81(2) CTMR Articles 13(3) and 67(2) CDR
The application must be made within two months of the removal of the cause of non- compliance and not later than one year after expiry of the unobserved time limit. Within the same period, the unobserved act must be completed. The date of removal of the cause of non-compliance is the first date on w hich the party knew or should have known about the facts which led to the non-observance. If the ground for non- compliance was absence or illness of the professional representative dealing with the case, the date of removal of the cause of non-compliance is the date on which the representative returns to work. In the event of failure to submit a request for renewal or to pay the renewal fee, the one-year time limit starts on the day on which the protection ends, and not on the date of expiry of the further six-month period s.
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3.2 Fee
Article 81(3) CTMR Article 2(19) CTMFR Article 67(3) CDR Annex, point 15 CDFR
Within the same time limit, the fee for restitutio in integrum must also be paid. If the fee is not paid within the time limit, the application for restitutio in integrum will be deemed not to have been filed.
3.3 Languages
Article 119 CTMR Rule 95 CTMIR Article 98 CDR Article 80 CDIR
The application for restitutio in integrum must be submitted in the language of, or in one of the languages available for, the proceedings in which non-observance of the time limit occurred. For example, in the registration procedure, this is the first language indicated in the application, in the opposition procedure, it is the language of the opposition procedure, and in the renewal procedure, it is any of the five languages of the Office.
3.4 Particulars and Evidence
Articles 78 and 81 CTMR Articles 65 and 67 CDR
The application for restitutio must state the grounds on which it is based and must set out the facts on which it relies. As granting restitution is essentially a question of facts, it is advisable for the requesting party to adduce evidence by means of sworn or affirmed statements.
Moreover, the omitted act must be c ompleted, together with the application for restitution, at the latest by the expiry of the time limit for submitting the application for restitutio.
3.5 Competence
Article 81 CTMR Article 67 CDR
Competence for dealing with applications for restitutio lies with the division or department competent to decide on the omitted act, that is, competent for the procedure within which non-observance of the time limit occurred.
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3.6 Publications
Article 81(7) CTMR Rules 30(4), (5), 84(3)(k), (l) and 85(2) CTMIR Article 67 CDR Articles 22(4), (5), 69(3)(m), (n) and 70(2) CDIR
The CTMR and C DR provide for a mention of the re-establishment of rights to be published in the Bulletin. Such a mention will be published only if the unobserved time limit which gave rise to the application for restitutio has actually led to publication of the change of status of the CTM or CD application or registration, because only in such a case can third parties have taken advantage of the absence of such rights. For example, mention of the granting of restitutio will be published if the Office published a mention of expiry of the registration due to non-observance of the time limit for paying the renewal fee.
In the event of such a publication, a corresponding entry will be made in the Register as well.
No mention of receipt of an application for restitutio will be published.
3.7 Decision, role of other parties in restitutio proceedings
Articles 58 and 59 CTMR
The applicant for restitutio in integrum is the sole party to the restitutio proceedings, even where non-observance of the time limit occurred in inter partes proceedings.
A decision to refuse restitutio will be motivated on the non-observance of the time limit and, if possible, be taken in the decision terminating the proceedings. If, for specific reasons, an interim decision on the application for restitutio is taken, a separate appeal will generally not be allowed. The applicant for restitutio can appeal the refusal of its request for restitutio together with the decision terminating the proceedings.
The decision to grant restitutio cannot be appealed.
The other party to the inter partes proceedings will be informed that restitutio has been requested, as well as of the outcome of the proceedings. If restitutio is actually granted, the other party’s only means of redress is to initiate third-party proceedings (see below, paragraph 4).
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4 Third-Party Proceedings
Article 81 CTMR Article 67 CDR
A third party who, in the course of the interim from the request for restitutio up until publication of the mention of the re-establishment of rights,
• has, in good faith, put goods on the market or supplied services under a sign which is identical or similar to the CTM, or
• in the case of a Community design, has, in good faith, put on the market products in which a des ign included within the scope of protection of the RCD is incorporated or to which it is applied,
may bring third-party proceedings against the decision re-establishing the rights of the applicant, proprietor or holder of the CTM or RCD.
This request is subject to a two-month time limit which starts:
• where publication has taken place, on the date of that publication
• where publication has not taken place, on the date on which the decision to grant restitutio took effect.
The Regulations do not contain any provisions governing such a procedure. Competence for third-party proceedings lies with the department or unit which took the decision to re-establish the rights. The Office will conduct adversarial inter partes proceedings.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 9
ENLARGEMENT
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Table of Contents
1 Introduction................................................................................................ 3
2 Rules Concerning Examination................................................................ 3 2.1 Automatic Extension of CTMs to New Member States ............................3 2.2 Pending CTM Applications ........................................................................3 2.3 Distinctiveness Acquired Through Use ....................................................4 2.4 Bad Faith.....................................................................................................4 2.5 Conversion..................................................................................................5 2.6 Other Practical Consequences..................................................................5
2.6.1 Filing at national Offices ................................................................................. 5 2.6.2 Professional representation............................................................................ 5 2.6.3 First and second language ............................................................................. 5 2.6.4 Translation ...................................................................................................... 5 2.6.5 Seniority.......................................................................................................... 6 2.6.6 Search ............................................................................................................ 6
3 Rules Concerning Oppositions and Cancellations................................. 6
Annex 1 ............................................................................................................. 9
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1 Introduction
This chapter discusses the rules relating to the accession of new Member States to the European Community and t he consequences for holders of Community trade marks. Both absolute and relative grounds are dealt with in this chapter.
Article 165 CTMR contains the relevant provisions relating to enlargement and Community trade marks. These provisions were introduced into the Regulation pursuant to the 2004 enlargement process (at that time Article 147a CTMR) and have remained unchanged during successive enlargement processes. The only modification in the text of the Regulation is the addition of the names of the new Member States.
A table in Annex 1 lists the new Member States along with their accession dates and official languages.
2 Rules Concerning Examination
2.1 Automatic Extension of CTMs to New Member States
Article 165(1) CTMR lays down the basic rule of enlargement, which is that all existing CTM applications and registered CTMs are automatically extended to the new Member States without any kind of additional intervention by OHIM, any other body or the holders of the rights concerned. There is no need to pay any extra fees or complete any other administrative formality. The extension of existing CTM applications or CTMs to the territories of new Member States ensures that these rights have equal effect throughout the EU and complies with the fundamental principle of the unitary character of the CTM.
2.2 Pending CTM Applications
Article 165(2) CTMR enshrines an important transitional provision, according to which CTM applications pending on the accession date may not be refused on the basis of any absolute ground for refusal if this ground becomes applicable merely because of the accession of a new Member State (‘grandfathering clause’). In practice, this means that if a CTM application is non-distinctive, descriptive, generic, deceptive or contrary to public policy or morality in the language or in the territory of a new Member State, it will not be refused if its filing date is before this State’s accession date.
For applications filed after the accession date the grounds for refusal of Article 7(1) CTMR apply also for the new Member State. This is the case even when the CTM application has a pr iority date which is earlier than the relevant accession date. The priority right does not protect the CTM applicant against any change in the law relevant to its application. Therefore, examiners have to apply the same examination criteria as for all the other official languages of the EU. This means that the examiner has to check if the CTM application is descriptive, etc. also in the new Member State.
However, this principle should be appl ied with caution as it merely means that the criteria for applying Article 7(1) CTMR should not be made stricter as a result of the accession of new Member States. The inverse conclusion that terms which are descriptive in a language or in the territory of a new Member State may, in any case, be registered for CTM applications filed prior to the accession date will not always be
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correct. For example, descriptive terms from new Member States’ languages may have entered the customary languages of existing Member States or be widely known in them (for example, Vodka), and geographical indications may already have to be refused as descriptive terms (for example, Balaton or Tokaj). Consideration must also be given to geographical indications already protected in the new Member States and to protection arising from Community legislation or bilateral treaties between the new Member States and the EU or existing Member States.
More precisely, the grounds for refusal of Article 7(1)(f) and (g) CTMR, relating to marks contrary to public policy or morality and deceptive marks respectively, are only affected by this provision insofar as the deceptiveness or breach of public morality is due to a meaning which is only understood in a language of a new Member State. The Office interprets Article 7(1)(f) CTMR in accordance with Community-wide criteria, irrespective of the relative levels of morality in different countries of the EU.
Finally, the provision of Article 165(2) CTMR does not affect the grounds for refusal of Article 7(1)(e) or (i) CTMR: the former relates to signs consisting exclusively of the shape of the goods themselves, the shape which is necessary to obtain a t echnical result or the shape which gives substantial value to the goods, and the latter relates to badges and emblems not protected by Article 6ter of the Paris Convention but of particular public interest.
2.3 Distinctiveness Acquired Through Use
According to Office practice, distinctiveness acquired through use (Article 7(3) CTMR) must exist on t he CTM filing date and subsist until its registration date. Where an applicant for a CTM application filed before the accession date is able to demonstrate that acquired distinctiveness existed at the filing date, Article 165(2) CTMR precludes an objection based on the ground that it is not distinctive through use in the new Member States. Therefore, the applicant does not have to prove acquired distinctiveness in the new Member States.
2.4 Bad Faith
The Office will consider the filing of a CTM application as having been made in bad faith if it was made prior to the accession date for a term which is descriptive or otherwise not eligible for registration in the language of a new Member State for the sole purpose of obtaining exclusive rights to a non-registrable term or for otherwise objectionable purposes.
This has no pr actical effect during the examination stage as bad faith does not constitute an absolute ground for refusal and, consequently, the Office has no authority to object ex officio. The Office will exercise its duties in respect of ‘bad faith filings’ only when a r equest for a declaration of invalidity is filed (Article 52(1)(b) CTMR). The national Offices of the new Member States are equally determined to act against bad faith in the context of enlargement. CTM applicants should, therefore, bear in mind that, even if there are no grounds for refusal during the registration procedure, their CTM registrations may be contested at a later date on the basis of Article 52(1)(b) CTMR.
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2.5 Conversion
Conversion of a CTM application into national trade mark applications for new Member States may be r equested as from the accession date of those States. Conversion is also possible when a converted CTM has a filing date prior to the accession date. However, in the case of a new Member State, the converted application will have the effect of an earlier right under national law. National law in new Member States has enacted provisions equivalent to Article 165 CTMR providing that extended CTMs have the effect of earlier rights in the new Member States only with effect from the accession date. In practice, this means that the ‘conversion date’ in a new Member State cannot be earlier than that State’s accession date.
Taking Croatia´s accession as an example, this means that even if a converted CTM has a filing date of 01/05/2005 in Croatia, the conversion date will not be 01/05/2005 but 01/07/2013, that is, Croatia’s accession date.
The date of enlargement does not trigger a new three-month time limit for requesting conversion under Article 112(4) CTMR.
2.6 Other Practical Consequences
2.6.1 Filing at national Offices
As from the accession date of a new Member State, a CTM application may also be filed through that State’s national Office.
2.6.2 Professional representation
As from the accession date of a new member State, applicants (as well as other parties to proceedings before the Office) having their seat or domicile in that State need no longer be represented by a professional representative. As from the accession date of a new Member State, professional representatives from that State may be entered on the list of professional representatives maintained by the Office pursuant to Article 93 CTMR and may then represent third parties before the Office.
2.6.3 First and second language
As of the accession date of a new Member State (see Annex 1), the official language(s) of that State may be used as the first language for CTM applications filed on or after that date.
2.6.4 Translation
CTM applications with a filing date prior to the accession date of a new Member State and existing CTM registrations will be neither translated into nor republished in the language of that State. CTM applications filed after the accession date of a new Member State will be translated into and published in all official languages of the EU.
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2.6.5 Seniority
Seniority may be claimed from a national trade mark which was registered before the accession of the new Member State in question or even before the creation of the European Union. The seniority claim may, however, only be made after the accession date. The mark registered in the new Member State must be ‘earlier’ than the CTM. As an extended CTM has, in the new Member State, the effect of an earlier right as from the accession date, the seniority claim only makes sense when the earlier national mark has a filing or priority date prior to the accession date.
Example 1: The same person files a CTM application on 01/04/1996 and a nat ional trade mark application in Romania on 01/01/1999. After 01/01/2007 (Romania’s date of accession) the seniority of the Romanian national trade mark application may be claimed.
Example 2: The same person owns an international registration designating the EU on 01/01/2005 and s ubsequently designating Romania on 01/01/2006. After 01/01/2007, the seniority of that Romanian designation may be c laimed even though the designation itself is later than the IR designating the EU. This is because the extended CTM takes effect from the accession date of the new Member State (in this case 01/01/2007).
2.6.6 Search
The national Offices of a new Member State may carry out searches (Article 38(2)(3) CTMR) as from that State’s accession date. Only CTM applications with a filing date on or after the accession date are sent to national Offices for a search.
3 Rules Concerning Oppositions and Cancellations
1. According to Article 165(4)(b) CTMR, a CTM application cannot be opposed or declared invalid on the basis of a national earlier right acquired in a new Member State prior to that State’s accession date.
However, CTM applications filed on or after the accession date are not subject to this ‘grandfathering clause’ and may be rejected upon opposition, or declared invalid, on account of an earlier national right existing in a new Member State, provided that the earlier right is ‘earlier’ when the two filing or priority dates are compared.
2. An exception to this (transitional) rule is contained in Article 165(3) CTMR regarding oppositions. A CTM application, filed within the six months preceding the accession date, may be challenged by an opposition based on a national right existing in a new Member State at the date of the accession, provided that this right
a) has an earlier filing or priority date and b) was acquired in good faith.
3. The filing date and not the priority date is the decisive element for determining when a CTM application can be opposed on the basis of an earlier right in a new Member State. In practice, the abovementioned provisions have the
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consequences illustrated in the following examples with reference to the accession of Croatia (01/07/2013):
a) A CTM application filed before 01/01/2013 (the priority date is irrelevant in this context) cannot be opposed or declared invalid on the basis of a national earlier right in a new Member State under any circumstances.
b) A CTM application with a filing date between 01/01/2013 and 30/06/2013 (i.e. during the six months prior to the date of accession), may be opposed by a Croatian trade mark, provided that the filing or priority date of the Croatian trade mark is earlier than the filing or priority date of the opposed CTM application and t he national mark was applied for in good faith.
c) A CTM application with a filing date of 01/07/2013 or later may be opposed or declared invalid on the basis of a trade mark registered in Croatia if that mark has an earlier filing or priority date under the normal rules. Acquisition in good faith is not a condition. This applies to all national marks and earlier non-registered rights filed or acquired in a new Member State prior to accession.
d) A CTM application with a filing date of 01/07/2013 or later but with a priority date before 01/07/2013 may be opposed or declared invalid on the basis of a national trade mark registered in Croatia if that mark has a an earlier filing or priority date under the normal rules.
This transitional exception is limited to the right to file an opposition and does not include the right to file an application for cancellation based on relative grounds. This means that once the abovementioned period of six months has expired without an opposition having been lodged, the CTM application cannot be challenged any more by an oppos ition or by an application for a declaration of invalidity.
4. According to Article 165(5) CTMR, the use of a CTM with a filing date prior to the date of accession of a new Member State, may be pr ohibited pursuant to Articles 110 and 111 C TMR on t he basis of an earlier national trade mark registered in the new Member State where the latter has a filing or priority date prior to the date of accession and was registered in good faith.
The above provision also applies to:
• applications for national marks filed in new Member States, provided that they have subsequently been registered,
• unregistered rights acquired in new Member States falling under Article 8(4) or Article 53(2) CTMR with the proviso that the date of acquisition of the right under national law replaces the filing or priority date.
5. Where an oppos ition is based on a nat ional registered mark or other right in a new Member State, whether or not that right may be validly invoked as a ground for opposition against a CTM application depends on whether the opposition is well founded and is not an issue of admissibility.
6. The acquisition in good faith of the earlier national mark is presumed. This means that, if good faith is questioned, the other party to the proceedings (the applicant
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for the opposed CTM application in the case of Article 165(4) CTMR or the owner of the registered CTM in the case of Article 165(5) CTMR) must prove that the owner of the earlier national right obtained in a new Member State acted in bad faith when filing the national application or otherwise acquiring the right.
7. Article 165 CTMR does not contain any transitional provisions concerning the use requirement (Articles 15 and 42 CTMR). In opposition proceedings, the obligation to make genuine use of the mark arises when the applicant for the opposed CTM application requests that the opponent prove use of the earlier mark pursuant to Article 42(2) and (3) CTMR and Rule 22 CTMIR. Issues relating to enlargement could arise regarding the time and place of use of the earlier mark.
Two cases can be distinguished:
a) The earlier mark is a national mark registered in a new Member State
In this case the opponent must prove genuine use of the earlier mark. This situation can only arise in the context of an opposition directed either against a CTM application with a filing date after the date of accession or against a CTM application filed within the period of six months preceding the date of accession.
The earlier national mark must have been put to genuine use in the territory in which it is protected during the five years preceding the date of publication of the opposed CTM application. In this regard, it is immaterial whether the use relates to a per iod during which the State concerned was already a Member of the European Union. In other words, the proof of use may relate also to a period prior to the date of accession (in the case of Croatia before 01/07/2013).
b) The earlier mark is a CTM
Where the owner of the earlier CTM can prove use only in the territory of a new Member State or several new Member States, since the obligation of use relates to the period of five years preceding the date of publication of the opposed CTM application, use in a new Member State (or several new Member States) can only be taken into account if the State concerned was a Member State of the European Union at the date of publication of the opposed CTM application (Article 43(1) CTMR requires use ‘in the Community’ ).Before their accession dates, the new States do not constitute ‘Member States of the Community’; therefore, it is not possible to prove use ‘in the Community’.
Therefore, the five-year period should be counted only from the relevant date of accession.
8. There are no par ticular transitional problems relating to the opposition proceedings. The right pursuant to Article 119(7) CTMR to choose a l anguage which is not one of the five languages of the Office as the language of the proceedings applies as from the date of accession in respect of the other official languages of the European Union.
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Annex 1
Member States Accession date Languages Czech Republic, Cyprus, Estonia, Latvia, Lithuania, Hungary, Malta, Poland, Slovakia, and Slovenia).
01/05/2004 Czech, Estonian, Hungarian, Latvian, Lithuanian, Maltese, Polish, Slovak and Slovenian
Bulgaria and Romania 01/01/2007 Bulgarian and Romanian
Croatia 01/07/2013 Croatian
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART B
EXAMINATION
SECTION 1
PROCEEDINGS
Proceedings
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Table of Contents
1 Introduction: General Overview of Examination Proceedings .............. 3
2 Search......................................................................................................... 4 2.1 Community search .....................................................................................4 2.2 National search...........................................................................................4
3 General Principles Concerning Examination Proceedings.................... 5 3.1 Procedural aspects concerning third-party observations and review of
absolute grounds .......................................................................................5 3.2 Decisions ....................................................................................................6
3.2.1 Appeals........................................................................................................... 6
3.3 International registrations designating the European Union ..................7
4 Publication ................................................................................................. 7
5 Amendments to the CTM Application...................................................... 7 5.1 Withdrawal of the CTM application ...........................................................8
5.1.1 Declaration of withdrawal ............................................................................... 8 5.1.2 Unconditional and binding character of the declaration ................................. 8 5.1.3 Action to be taken........................................................................................... 9
5.2 Restriction of the list of goods and services in a CTM application ........9 5.2.1 Procedural admissibility of a restriction ........................................................ 10
5.3 Other amendments...................................................................................10 5.3.1 Name, address and nationality of applicant or representative ..................... 11 5.3.2 Other elements of an application.................................................................. 12 5.3.3 Recordal and publication of amendments .................................................... 12
5.4 Division of the CTM application ..............................................................12 5.4.1 Requirements ............................................................................................... 13 5.4.2 Acceptance ................................................................................................... 14 5.4.3 New file and its publication ........................................................................... 14
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1 Introduction: General Overview of Examination Proceedings
This part of the Guidelines outlines the examination procedure from filing to publication of the Community trade mark (CTM) application.
Once the CTM application has been filed, a provisional filing date is accorded and the Office issues a receipt. At this early stage, the Office only checks if certain filing date requirements of the Regulation have been fulfilled. The filing date will only become definite when the application fee has been paid.
The receipt should be carefully checked by the applicant and the Office should be notified as soon as possible of any incorrect data. The applicant can only correct data that have an impact on the filing date, such as the applicant’s name, the representation of the mark and the list of goods and services, if the Office is notified on the same date as the incorrect data was submitted. After this date, any amendment is subject to the provisions of the CTMR and C TMIR, in particular, Article 17 CTMR and Article 43 CTMR. For further details, see Section 5 below and the Guidelines, Part B, Examination, Section 2, Formalities.
After the receipt has been issued, the Office carries out a language check of the verbal elements of the mark in all official EU languages, followed by a Community search.
Payment of the application fee and national search fee (if applicable) is validated at the latest one month after the filing of the CTM application. If the applicant has applied for a national search and paid the relevant fee, the Office forwards the application to the Offices of the Member States that perform national searches. For further information on searches, see Section 2 below. For further information on fees, see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges.
During examination proceedings the Office examines the following: filing date, formalities, classification, priority and/or seniority where applicable, the regulations governing use of the mark for collective marks, and absolute grounds for refusal. All these examination steps can be carried out in parallel as there is no strict sequence in examination proceedings.
Any deficiency is notified to the applicant, who is given two months within which to remedy the deficiency and/or submit observations. Any decision partially or wholly refusing a CTM application must give the grounds on which the CTM application is refused and inform the applicant of the possibility of appeal. For further details, see paragraphs 3.2. and 3.2.1. below.
Applications that comply with the requirements of the Regulation are accepted for publication and sent for translation into all official EU languages.
The last step in the examination procedure is publication of the application in Part A of the CTM Bulletin. Publication takes place one month after notification of the search reports (Community search and national search if applied for), giving the applicant the opportunity, if it so wishes, to abandon its application. For further details on publication, see Section 4 below.
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2 Search
Article 38 CTMR Rule 5a and Rule 10 CTMIR Communications 4/99, 5/00 and 4/01 of the President of the Office
The search report identifies earlier rights that could conflict with the CTM application. However, even if the search report does not indicate any similar earlier rights, an opposition could still be filed against the CTM application after its publication.
The results of the search report are for information purposes only and t o give the applicant the option of withdrawing the CTM application before its publication. Surveillance letters inform holders of earlier trade marks about new, similar trade mark applications.
Figurative elements are classified under the Vienna Classification.
2.1 Community search
After issuing the receipt, the Office draws up a Community search report covering:
1. CTM applications with a filing date or priority date earlier than that of the application in question;
2. Community trade marks already registered; and 3. prior international registrations designating the European Union.
The Community search takes into account the filing date, the verbal elements of the trade mark, the figurative elements of the mark (if applicable) and the classes of goods and services according to the Nice Classification. The search is designed to identify similar earlier marks filed for the same classes or classes considered by the Office as containing similar goods and/or services.
The Community search report is sent to the applicant in a standard letter. Once the new application has been published, the Office sends a surveillance letter to the holders of earlier Community trade marks or Community trade mark applications cited in the search report.
2.2 National search
CTM applications that include a v alid request for national searches are sent to the participating national offices once a filing date has been accorded and the classification has been validated. A request is deemed valid if it is made at the time of filing and the relevant fee has been paid.
National search reports are prepared by the offices that participate in the search system.
A request for national searches implies that all participating national offices will carry out the search within two months in accordance with Rule 5a CTMIR. This all-or-
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nothing policy means that the applicant cannot select which participating offices carry out the search. Holders of international registrations designating the EU that wish to apply for national searches must send the request and pay the relevant fee to OHIM within one month of the date of notification of the IR from WIPO.
Responsibility for the format and content of the national search report lies with the national offices. The Office’s role is limited to receiving the national reports and sending them together with the Community search report. The applicant is free to request further information directly from the national offices.
3 General Principles Concerning Examination Proceedings
This section describes only the procedural aspects of examining Absolute Grounds (AG) for refusal. For substantive aspects of examining Absolute Grounds for refusal, see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal and Community Collective Marks.
The Community Trade Mark Regulation (CTMR) is intended to enable proprietors to register a right that is valid throughout the European Union insofar as it does not impinge on the rights of others. Although rights can only be conferred in accordance with the provisions of the CTMR, the Office’s function is not to obstruct but rather facilitate applications.
During the examination of each application the trade mark and the goods or services of the application must be taken into account. The Office has to bear in mind the nature of the trade concerned, the manner in which the goods or services are provided and the relevant public, for example whether it consists of specialists or the general public.
3.1 Procedural aspects concerning third-party observations and review of absolute grounds
Article 40 CTMR Communication 2/09 of the President of the Office
Observations relating to the existence of an absolute ground for refusal can be made by third parties once an application has been published. Third-party observations received before a CTM application is published are dealt with in the course of the examination of absolute grounds for refusal. The Office accepts observations received within the opposition period (three months from the date of publication) or filed before pending oppositions are closed. The observations must be filed in one of the languages of the Office, namely Spanish, German, English, French or Italian.
The Office issues a receipt to the observer confirming that the observations have been received and have been forwarded to the applicant. The observer does not become a party to the proceedings before the Office but can consult the online search tools in order to check the status of the relevant CTM application. The Office does not inform the observer of any action taken, namely of whether or not the observations gave rise to an objection.
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All observations are forwarded to the applicant, who is invited to submit comments where appropriate. The Office considers whether the observations are well founded, that is, whether an absolute ground for refusal exists. If so, the Office issues an objection and may refuse the CTM application if the objection is not overcome by the applicant’s comments or by restriction of the list of goods and services.
If an issue raised in observations has already been considered during the examination of an application, it is unlikely to give rise to serious doubts after publication.
The Office may also re-open the examination on absolute grounds on any other ground and at any time prior to registration, for example when third-party observations are filed before publication of the application or when the Office itself finds that a ground for refusal has been overlooked. After publication of the application, this option should be exercised only in clear-cut cases.
For more information see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal.
3.2 Decisions
In all cases where the Office issues decisions against applicants the grounds for the decision must be given. These must address any arguments raised by the applicant in its observations insofar as they are pertinent. Decisions must not only refer to appropriate parts of the CTMR and CTMIR but also, except in the most self-evident cases (for example where a document is a missing or a fee has not been paid), give explicit reasons.
Where, for example, a decision is given on the basis of internet searches, the Office must provide the applicant with proof of those searches.
3.2.1 Appeals
Articles 58 and 65 CTMR Decision 2009-1 of 16/06/2009 of the Presidium of the Boards of Appeal
Applicants have a right to appeal against a decision that terminates proceedings and that adversely affects them. For practical purposes any decision issued by the Office that terminates proceedings and is not accepted by the applicant falls into this category. Any written communication of such a decision must also inform the applicant that the decision can be appealed within two months.
Appeals have suspensive effect. Within the period in which an appeal can be lodged the Office should not take any step that cannot easily be reversed (e.g. publication or entry in the Register). The same goes for the period up until a final decision is taken in the event that the case is brought before the GC or CJEU by an action under Article 65.
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3.3 International registrations designating the European Union
Details about examination of a CTM application resulting from the transformation of an international registration designating the European Union are given in the Guidelines, Part M, International Marks.
4 Publication
Article 39 CTMR Rules 12, 14 and 46 CTMIR
Publication takes place once the search reports have been sent to the applicant, provided that the application fulfils all the conditions required for acceptance.
Applications are published in all official EU languages.
The examiner must ensure that the following details, where applicable, are available:
(a) application file number (b) filing date (c) reproduction of the trade mark (d) indication of collective mark (e) indication of the mark type other than word marks, for example figurative marks,
three-dimensional marks, holograms, sound marks, colour per se marks, other marks
(f) description of the mark (g) colour indication(s) (h) figurative elements under the Vienna Classification (i) disclaimer (j) acquisition of distinctive character through use (k) applicant’s name, address and nationality (l) representative’s name and address (m) first and second language (n) goods and services under the Nice Classification (o) priority data if applicable (p) exhibition priority data (q) seniority data (r) transformation data.
Once all these elements are in order and the translation into all EU official languages has been received, the application is dispatched to the Publications Sector.
5 Amendments to the CTM Application
This part of the Guidelines only covers the relevant issues concerning amendments to a CTM application.
For amendments to registered Community trade marks, see the Guidelines, Part E, Register Operations, Section 1, Changes in a registration.
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5.1 Withdrawal of the CTM application
Article 43, Articles 58(1), 64(3) and Article 119 CTMR
5.1.1 Declaration of withdrawal
A CTM application can be withdrawn at any time up until a final decision is taken on its subject matter.
After the Office’s first-instance decision, at appeal level, an application can be withdrawn within the two-month appeal period even if no appeal was actually filed or up until the appeal has been decided by the Board of Appeal; this applies both to ex parte and inter partes proceedings (decision of 27/09/2006, R 0331/2006-G – ‘Optima’).
At the level of the General Court (GC), an application can be withdrawn within the two- month appeal period or up until completion of the appeal process before the GC.
At the level of the Court of Justice (CJEU), an application can be withdrawn within the two-month period for filing an appeal before the CJEU or before the CJEU has issued a final and binding decision (order of 18/09/2012, C-588/11, ‘OMNICARE’).
When the case is pending before the GC or the CJEU, the withdrawal must be requested before the Office (not the GC or CJEU). The Office then informs the GC or CJEU whether or not it finds the withdrawal acceptable and valid, but the withdrawal will not be effected until the GC or the CJEU has rendered a final decision on the issue (by analogy, see judgment of 16/05/2013, T-104/12, ‘VORTEX’).
Any declaration of withdrawal filed after the expiry of the appeal period is inadmissible.
The declaration of withdrawal must be made in writing. No special form is provided by the Office. The declaration is not subject to a fee.
The declaration of withdrawal can be made in the first or second language indicated by the applicant in its CTM application.
The same applies during opposition proceedings. However, for details of procedure where a restriction is made in a language other than the language of the opposition procedure, see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.
For details on restrictions see paragraph 5.2 below.
5.1.2 Unconditional and binding character of the declaration
A declaration of withdrawal becomes effective upon receipt by the Office, provided that no withdrawal of the declaration reaches the Office that same day.
This means that if a declaration of withdrawal and a letter withdrawing that declaration both reach the Office on the same day (regardless of the actual time of receipt), the latter annuls the former.
Once it becomes effective, a declaration cannot be withdrawn.
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A declaration of withdrawal is void where it contains conditions or time limitations. For example, it must not require the Office to take a particular decision or, in opposition proceedings, require the other party to make a p rocedural declaration. Such a requirement is instead seen as a m ere suggestion for resolving the case; the Office informs the opponent accordingly and may invite the parties to come to an amicable settlement. Furthermore, a declaration does not become effective if it is made in respect of some goods and/or services (partial withdrawal) on the condition that the Office accepts the application for the remaining goods and/or services. Instead, such a declaration is seen as a suggestion for the Office to arrive at an acceptable list of goods and services.
Where an applicant reacts to an official action by filing a restricted list of goods and services (partial withdrawal), the Office verifies whether the applicant is declaring the unequivocal withdrawal of the remaining goods and services or whether the amended list of goods and services is a proposal or counterproposal by the applicant subject to the Office’s agreement.
5.1.3 Action to be taken
The Office will process a declaration of withdrawal, ensure publication of the full or partial withdrawal in the Bulletin if the CTM application was already published, and close the file of the CTM application in the event of a full withdrawal.
For the consequences of full or partial withdrawal on opposition procedure, see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.
Detailed information concerning the refund of application fees can be found in the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges.
5.2 Restriction of the list of goods and services in a CTM application
Articles 43 and 119 CTMR
The applicant may restrict the list of goods and services of its CTM application at any time, either of its own volition, or in response to an objection regarding classification or absolute grounds, or in the course of opposition proceedings.
In principle, declarations of restrictions follow the same rules as declarations of withdrawals; see paragraph 5.1 above.
When the case is pending before the General Court (GC) or the Court of Justice (CJEU), the restriction must be filed with the Office (not the GC or the CJEU). The Office then informs the GC or the CJEU whether or not it finds the restriction acceptable and valid, but the restriction is not applied until the GC or the CJEU has rendered a final decision on the issue (by analogy, see judgment of 16/05/2013, T-104/12,‘VORTEX’)
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5.2.1 Procedural admissibility of a restriction
The restriction must be procedurally admissible; see paragraph 5.1.2 above.
As a matter of principle, a restriction becomes effective on the date on which it is received by the Office. The restriction can only be withdrawn if the withdrawal is received on the same date as the restriction itself.
Two requirements must be met in order for a restriction to be acceptable:
1. The new wording must not constitute an extension of the list of goods and services.
2. The restriction must constitute a valid description of goods and services and apply only to acceptable goods or services that appear in the original CTM application. For further details on restrictions of a CTM application, see the Guidelines, Part B, Examination, Section 3, Classification.
Otherwise, the Office must refuse the proposed restriction and t he list of goods and services will remain unchanged.
5.3 Other amendments
Article 43 CTMR Rules 13 and 26 CTMIR
This section and t he legal provisions cited above solely concern amendments of the CTM application requested by the applicant on its own motion and not amendments or restrictions made as the consequence of an examination, opposition or appeal procedure by virtue of the decision of an examiner, Opposition Division or Board of Appeal.
Likewise, this section does not apply to the correction of errors in the Office’s publications, which is carried out ex officio pursuant to Rule 14 CTMIR.
Amendments require a written request in the first or second language indicated by the applicant in its CTM application. They are not subject to any fees.
The following elements of a CTM application may be amended:
• the name and address of the applicant or representative (see paragraph 5.3.1 below);
• errors of wording or of copying, or obvious mistakes, provided that correction does not substantially change the trade mark (for further details on such amendments, see the Guidelines, Part B, Examination, Section 2, Formalities);
• the list of goods and services (see paragraph 5.2 above).
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5.3.1 Name, address and nationality of applicant or representative
Rule 1(1)(b) and (e), Rules 26 and 84 CTMIR Article 1(1)(b), Article 19(7) and Article 69(2)(d) CDIR
The name and add ress of an applicant or representative may be am ended freely, provided that
• as regards the name of an applicant, the change is not the consequence of a transfer,
and
• as regards the name of a representative, the representative is not being substituted by another representative.
The indication of the nationality of a legal person may also be a mended freely, provided that it is not the consequence of a transfer.
A change in an applicant’s name that does not affect the applicant’s identity is an acceptable change, whereas a c hange in the applicant’s identity is a transfer. For details and the applicable procedure in the event of doubt as to whether the change is considered to be a transfer, see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer.
Changes to a representative’s name are also limited to those that do not affect the identity of the appointed representative, for example where there is a change in the name (through marriage/divorce) of a representative or the name of an association of representatives. Such changes of name must be distinguished from the substitution of one representative by another, which is subject to the rules governing the appointment of representatives. For details concerning representatives, see the Guidelines, Part A, General Rules, Section 5, Professional Representation.
Changes of name, address or nationality may be the result of changed circumstances or of an error made at the time of filing.
The change of name and address must be requested by the applicant or its representative and must contain the CTM application number, as well as the name and address of the applicant or the representative, both as recorded on the file and as amended.
No proof or evidence of the change is necessary. Requests for change of name or address are not subject to any fees.
The applicant must indicate its name and official address in an application in a specific format according to the above-cited legal provisions, and may change it later using the same format. Both the name and the address will be registered.
Legal persons can only have one official address. In case of doubt, the Office may ask for evidence of the legal form, the State of Incorporation and/or the address. The official name and address are copied as the address for service by default. Ideally, an applicant should have only one address for service. Changes to the applicant’s official designation or official address will be registered for all CTM applications, registered
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Community trade marks and Registered Community Designs and, unlike the address for service, cannot be recorded just for specific portfolios of rights. In principle, these rules apply for representatives by analogy.
5.3.2 Other elements of an application
Other elements of a CTM application may also be c hanged, such as the representation, the type of mark, the description of the mark and the disclaimers.
For example, in priority claims, obvious mistakes in the indication of the country in which, and the date on which, the earlier mark was filed may be corrected, since the priority document will obviously show the correct version.
For further details on these changes, see the Guidelines, Part B, Examination, Section 2, Formalities.
5.3.3 Recordal and publication of amendments
Article 41(2) CTMR
If an amendment is allowed, it will be recorded in the file.
Where the CTM application has not yet been published, it is published in the CTM Bulletin in the amended form.
Where the CTM application has already been published and (only) if the amendment concerns the list of goods and services or the representation of the mark, the CTM application is published in its amended form in the CTM Bulletin. The publication of the amended application opens a new opposition period of three months.
Any other amendments are not published separately but appear in the publication of the registration.
5.4 Division of the CTM application
Article 44 CTMR Rule 13a CTMIR
A CTM application can be divided into different parts not only as the result of a partial transfer (see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer), but also on the CTM applicant’s own motion. Division is particularly useful for isolating a disputed CTM application for certain goods or services while maintaining the original application for the remainder. For information on the division of CTMs, see the Guidelines, Part E, Register Operations, Section 1, Changes in a registration.
Whereas a partial transfer is free of charge and involves a change of ownership, a request for the division of a CTM application is subject to a fee and the CTM application remains in the hands of the same applicant. If the fee is not paid, the
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request is deemed not to have been filed. The request can be made in the first or second language indicated by the applicant in its CTM application.
Division is not an option for international registrations under the Madrid Protocol designating the EU. The international register is kept at WIPO, and OHIM does not have the authority to divide an international registration designating the EU.
5.4.1 Requirements
A request for division must contain the following information:
• the file number of the CTM application to be divided;
• the name and address or name and ID number of the applicant;
• the list of goods and services for the divisional application, or, if more than one new application is to be created, for each divisional application;
• the list of the goods and services that will remain in the original CTM application.
Furthermore, the goods and services of the divisional application must not overlap with the list of goods and services of the original application.
The applicant will be notified of any deficiency in this regard and given two months to remedy it. If the deficiency is not remedied within this time limit, the request for division will be refused.
There are certain periods during which, for procedural economy or to safeguard third- party rights, division is not admissible. These periods are outlined below.
1. While an opposition is pending, only the non-contested goods and services may be divided off. The same applies if the case is pending before the Boards of Appeal or the Courts. The Office interprets the legal provisions cited above as preventing the applicant from dividing off some or all of the contested goods to form a new application, with the effect that the opposition proceedings have to be split. If such a request for division is made, the applicant is given the opportunity to amend it by dividing off the non-contested goods and services.
2. Division is not admissible during the three-month opposition period following publication of the application. Allowing a di vision during this time would counteract the aim of not splitting an oppo sition procedure and frustrate third parties, who have to rely on the CTM Bulletin to know what to oppose.
3. Division is not admissible during the period before a filing date has been accorded either. This does not necessarily coincide with the first month following filing. For further details on t he filing date, see the Guidelines, Part B, Examination, Section 2, Formalities.
For all practical purposes, in the period following publication of the application, a division is only admissible if an opposition has been entered against the application and only for the non-contested part. The aim of the provisions cited is to allow the
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applicant to register its mark for the non-contested goods quickly without having to wait for the outcome of a lengthy opposition procedure.
5.4.2 Acceptance
Article 44(6) CTMR
If the Office accepts the declaration of division, a new application is created as of the date of acceptance and not retroactively as of the date of the declaration.
The new application keeps the filing date as well as any priority and seniority dates. The seniority effect will then become partial.
All requests and applications submitted, and all fees paid, prior to the date on which the Office receives the declaration of division are deemed to have been made or paid also for the divisional application. Fees duly paid for the original application are, however, not refunded.
The practical effects of this provision can be exemplified as follows:
• Where an application for the registration of a licence was made and payment of the registration fee was received by the Office prior to the declaration of division, the licence will be registered against the original registration and recorded in the file of the new registration. No further fees need be paid.
• Where a CTM application claiming six classes is to be divided into two applications of three classes each, no class fees are payable as from the date the Office receives the declaration of division. However, fees paid prior to that date cannot be refunded.
Where the division is not accepted, the old application remains unchanged. It does not matter whether:
• the declaration of division was deemed not to have been f iled because no f ee had been paid;
• the declaration was refused because it failed to comply with the formal requirements;
• the declaration was found inadmissible because it was filed during one of the periods in which division is not admissible.
The worst-case scenario for the applicant is that the declaration of division is not accepted, but this never affects the original application. The applicant can repeat the declaration of division later, subject to a new fee.
5.4.3 New file and its publication
A new file has to be created for the divisional application, to contain all the documents that were on file for the original application, all correspondence related to the
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declaration of division and all future correspondence for the new application. Inspection of this file will be unrestricted under general rules.
If the declaration of division concerns a CTM application that is not yet published, both the divisional and the original application are published separately and in the normal way, without any express reference to each other.
If the declaration of division concerns a CTM application that is already published, the fact that there has been a division is published with reference to the original application. The new application must also be published with all the usual particulars; however, no new opposition period will be opened. Division is admissible only for goods for which an opposition period has already opened but not been made use of.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART B
EXAMINATION
SECTION 3
CLASSIFICATION
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Table of Contents
1 Introduction................................................................................................ 3
2 The Nice Classification ............................................................................. 3
3 Administrative Tools for Classification Purposes.................................. 4
4 Building a List of Goods and Services .................................................... 5 4.1 Clarity and precision ..................................................................................5
4.1.1 General principles........................................................................................... 5 4.1.2 Use of expressions (e.g. ‘namely’, ‘in particular’) to determine the scope
of the list of goods/services ............................................................................ 5 4.1.3 Use of the term ‘and/or’ .................................................................................. 6 4.1.4 Punctuation..................................................................................................... 6 4.1.5 Inclusion of abbreviations and acronyms in lists of goods and services ........ 7
4.2 Terms and expressions lacking clarity and precision .............................8 4.2.1 General indications of the class headings of the Nice Classification which
are deemed not to be sufficiently clear and precise ....................................... 8 4.2.2 Vague terms ................................................................................................. 11 4.2.3 The claim for all goods/services in this class or all goods/services of the
alphabetical list in this class ......................................................................... 12 4.2.4 Reference to other classes within the list ..................................................... 12 4.2.5 Trade marks in a list of goods/services ........................................................ 12 4.2.6 Inclusion of the terms parts and fittings; components and accessories in
lists of goods and services ........................................................................... 13 4.2.7 Use of indefinite qualifiers ............................................................................ 13 The use of qualifiers such as: ”the like”; “ancillary”, “associated goods”; “and........ 13 related goods” and “etc.” in a list of .......................................................................... 13 goods or services is unacceptable, since they do not comply with the .................... 13 requirements of clarity and precision (see paragraph 4.1.). ..................................... 13
5 Procedure of Examination ...................................................................... 13 5.1 Parallel applications.................................................................................13 5.2 Objections.................................................................................................13 5.3 Amendments.............................................................................................14 5.4 Addition of classes...................................................................................16
6 Annex 1..................................................................................................... 17
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1 Introduction
Every CTM application must contain a list of goods and services as a condition for a filing date to be accorded (Article 26(1)(c) CTMR). The list must be classified in accordance with the Nice Agreement (Article 28 CTMR and Rule 2(1) CTMIR).
The list must be worded in such a way as to (a) indicate clearly the nature of the goods and services, and ( b) allow each item to be classified in only one c lass of the Nice Classification (Rule 2(2) CTMIR).
The use of the Office’s administrative IT tools for classification (see paragraph 3) is highly recommended. Any part of the list of goods and services which does not match the data from the tools will be ex amined following the principles as set out in these Guidelines. Whenever the applicant selects a term from the available tools, it will not be examined any further and will speed up the registration procedure.
The goods and services covered by a CTM application – including general indications of the class headings – will be interpreted by the Office on the basis of their natural and usual meaning. The former practice of the Office, according to which the use of all the general indications listed in the class heading of a particular class constituted a claim to all goods or services falling under the class was abandoned in June 2012, following the judgment of 19/06/2012, C-307/10, ‘IP Translator’.
The purpose of this part of the Guidelines is to describe Office practice in the examination of classification of goods and services.
The first part (paragraphs 1 to 4) sets out the principles applied by the Office. The second part (paragraph 5) summarises the procedure of examining the list of goods and services.
In short, when examining the classification of a list of goods and services the Office does four tasks:
• it checks that each of the goods and services is clear and precise enough; • it checks that each term is proper to the class in which it is applied for; • it notifies any deficiency; • it refuses the application, in whole or in part, where the deficiency is not remedied
(Rule 9(4) and (8) CTMIR).
2 The Nice Classification
The version of the classification under the Nice Agreement in force at the filing date will be applied to the classification of the goods or services in an application (available at: http://tmclass.tmdn.org). Rule 2 requires the applicant to provide a list of goods and services in the following manner.
• The list must be worded in such a way as to indicate clearly the nature of the goods or services and to allow each item to be classified.
• The goods or services must be grouped according to the Nice Classification, each group preceded by the number of the class to which the goods or services belong and presented in the order of the classification.
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The Nice Classification consists, for each class, of the following:
1. Class headings: the class headings are general indications relating to the field to which, in principle, the goods or services belong;
2. Explanatory notes: the explanatory notes explain which goods or services are meant or not meant to fall under the class headings and are to be considered an integral part of the classification;
3. The alphabetical list: the alphabetical list shows how individual goods or services are appropriate to a class;
4. General remarks: the general remarks explain what criteria should be applied if a term cannot be classified in accordance with the class headings or alphabetical list.
More information regarding the Nice Classification can be found on the website of the World Intellectual Property Organization (WIPO) at https://www.wipo.int.
3 Administrative Tools for Classification Purposes
When filing an electronic application through e-filing, users can select pre-approved terms to build their list of goods & services. All those selectable terms originate from a harmonised database and will automatically be accepted for classification purposes. Using these pre-approved terms will facilitate a smoother trade mark registration process. The harmonised database brings together terms which are accepted for classification purposes in a number of EU offices.
Should the applicant use a list of goods & services containing terms that are not found in the harmonised database, the Office will verify through an examination procedure whether they can be accepted.
Before filing an application the content of the harmonised database can be searched through the Office’s tool TMclass (http://tmclass.tmdn.org/ec2/).This tool brings together classification databases of participating offices within and outside the EU and shows whether a term can be ac cepted in a particular jurisdiction. Within TMclass goods and services are grouped according to shared characteristics from a market perspective, starting from the more general and ending with the more specific. In this way, the user is provided with a simplified search, and is given a better overview of the content of each class, thus facilitating the selection of appropriate terms.
This grouping and ranking, also called Taxonomy, has no legal effect. In particular, the scope of protection of a Community trade mark is always defined by the natural and usual meaning of the chosen terms, not by the position of the terms in the Office’s classification tools.
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4 Building a List of Goods and Services
4.1 Clarity and precision
4.1.1 General principles
The goods and services for which the protection of the trade mark is sought should be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought (judgment of 19/06/2012, C-307/10, ‘IP Translator’, para. 49).
A description of goods and services is sufficiently clear and precise when its scope of protection can be under stood from its natural and us ual meaning. If this scope of protection cannot be understood, sufficient clarity and pr ecision may be achieved by identifying factors such as characteristics, purpose and/or identifiable market sector. Elements that could help to identify the market sector1 may be, but are not limited to, the following:
• consumers and/or sales channels • skills and know-how to be used/produced • technical capabilities to be used/produced.
A term may be part of the description of goods and services in a number of classes; it may be clear and precise in a particular class without further specification. For example: furniture (class 20), clothing (class 25), gloves (class 25).
If protection is sought for a specialised category of goods and services or a specialised market sector belonging to a di fferent class, further specification of the term may be necessary. For example: furniture especially made for medical purposes (Class 10), furniture especially made for laboratories (Class 9), protective clothing (Class 9) clothing especially for operating rooms (Class 10), clothing for pets (Class 18), gardening gloves (Class 21), baseball gloves (Class 28).
Tools such as TMclass (http://tmclass.tmdn.org/ec2/) are available to determine whether the particular category of goods and services needs this further specification or not.
4.1.2 Use of expressions (e.g. ‘namely’, ‘in particular’) to determine the scope of the list of goods/services
The use of the words ‘namely’ or ‘being’ is acceptable, but must be understood to be a restriction to the specific goods and services which are listed thereafter. For example, pharmaceutical preparations, namely analgesics in Class 5 means that the application only covers analgesics and not any other type of pharmaceuticals.
The expression ‘in particular’ can also be accepted as it serves to indicate an example of the goods and s ervices which are applied for. For example, pharmaceutical preparations, in particular analgesics means that the application covers any kind of pharmaceuticals, with analgesics being an example.
1 Market sector describes a set of businesses that are buying and selling such similar goods and services that they are in direct competition with each other.
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The same interpretation applies to the use of the terms ‘including’, ‘including (but not limited to)’, ‘especially’ or ‘mainly’ as in the example pharmaceutical preparations, including analgesics.
A term that would normally be c onsidered unclear or imprecise can be m ade acceptable provided that it is further specified, e.g. by using ‘namely’ and a l ist of acceptable terms. An example would be electrical apparatus, namely computers for goods in Class 9.
Further examples of acceptable use
Class 29: Dairy products namely cheese and butter
This would restrict the goods to only cheese and butter and exclude all other dairy products.
Class 41: Provision of sports facilities, all being outdoors.
This would restrict the services to cover only outdoor facilities and exclude any indoor facilities.
Class 25: Clothing, all being underwear
This would restrict the goods covered to only that which is considered underwear and will exclude all other types of clothing.
Other words or phrases may only point out that certain goods are important, and the inclusion of the term does not restrict the further listing in any way. Examples include:
Class 29: Dairy products, in particular cheese and butter
The coverage would include all dairy products; cheese and butter are probably the TM owner’s most successful goods.
Class 41: Provision of sports facilities, for example outdoor running tracks.
The coverage now merely gives an example of one of several possibilities.
Class 25: Clothing, including underwear The coverage extends to all clothing and not just underwear.
4.1.3 Use of the term ‘and/or’
The use of oblique strokes is acceptable in lists of goods and s ervices; the most common use is in the phrase ‘and/or’, meaning that both goods/services referred to fall in the same class. For example:
• Chemical/biochemical products • Chemical and/or biochemical products • Chemicals for use in industry/science • Chemicals for use in industry and/or science • Import/export agency services
4.1.4 Punctuation
The use of correct punctuation is very important in a list of goods and services, almost as important as the words.
The use of commas serves to separate items within a similar category or expression. For example, flour and preparations made from cereals, bread, pastry and confectionery in Class 30 must be read as that the goods can be or are made from any of those materials.
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The use of a semi-colon means a separation between expressions. For example, flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder in Class 30 must be interpreted that the terms honey and treacle are independent from the other terms and do not form part of preparations made from …
The separation of terms with incorrect punctuation can lead to changes in meaning and incorrect classification.
Take the example of computer software for use with agricultural machines; agricultural machines in Class 9. In this list of goods and services the inclusion of a semi-colon means that the term agricultural machines must be c onsidered as an independent category of goods. However, these are proper to Class 7, regardless of whether the intention was to protect computer software to be us ed in the field of agricultural machines and agricultural machinery.
A further example would be retail services in relation to clothing; footwear; headgear in Class 35. The use of a semi-colon renders the terms footwear and headgear as goods, which are separate and not included in the retail services. In such cases, the examiner will separate the terms by commas, inform the applicant and give it the opportunity to comment on the examiner’s proposal.
4.1.5 Inclusion of abbreviations and acronyms in lists of goods and services
Abbreviations within lists of goods and services should be accepted with caution. Trade marks could have an indefinite life, and the interpretation of an abbreviation could vary over time. However, provided that an abbreviation has only one meaning in relation to the class of goods or services applied for, it can be al lowed. The very well-known examples CD-ROMs and DVDs are acceptable in Class 9. If the abbreviation is well known in the field of activity it will be acceptable, but a more practical solution would be for examiners to initially carry out an internet search for the abbreviation to determine whether it needs to be expanded into words or the abbreviation or acronym followed by the abbreviation in square brackets (following WIPO’s example).
Example
Class 45 Services offering advice on the application and registration of CTMs.
This could be expanded to:
Class 45 Services offering advice on the application and registration of Community Trade Marks;
or
Class 45 Services offering advice on the application and registration of CTMs [Community Trade marks];
Acronyms can be accepted in a list of goods or services as long as they are comprehensible and appropriate to the class applied for.
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4.2 Terms and expressions lacking clarity and precision
4.2.1 General indications of the class headings of the Nice Classification which are deemed not to be sufficiently clear and precise
In collaboration with the Trade Mark Offices of the European Union, other (inter)national organisations, offices and various user associations, the Office has established a list of general indications of the class headings of the Nice Classification which are deemed not to be s ufficiently clear and precise in accordance with the judgment of 19/06/2012, C-307/10, ‘IP Translator’.
The 197 general indications of the Nice class headings were examined with respect to the requisites of clarity and precision. Of these, 11 were considered to lack the clarity and precision to specify the scope of protection that they would give, and consequently cannot be accepted without further specification. These are set out below in bold.
Class 6 Goods of common metal not included in other classes Class 7 Machines and machine tools Class 14 Precious metals and their alloys and goods in precious metals or coated
therewith, not included in other classes Class 16 Paper, cardboard and goods made from these materials [paper and
cardboard], not included in other classes Class 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these
materials [rubber, gutta-percha, gum, asbestos and m ica] and not included in other classes
Class 18 Leather and i mitations of leather, and goods made of these materials [leather and imitations of leather] and not included in other classes
Class 20 Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
Class 37 Repair Class 37 Installation services Class 40 Treatment of materials Class 45 Personal and social services rendered by others to meet the needs of
individuals
The remaining 186 Nice class heading terms comply with the requisites of clarity and precision and are therefore acceptable for classification purposes.
The reasons why each of the 11 Nice class heading terms were not found clear and precise are described below.
Class 6 Goods of common metal not included in other classes In light of the need for clarity and precision, this term does not provide a clear indication of what goods are covered as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be produced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.
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Class 7 Machines and machine tools In light of the need for clarity and pr ecision, the term machines does not provide a c lear indication of what machines are covered. Machines can have different characteristics or different purposes, they may require very different levels of technical capabilities and k now-how to be pr oduced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.
Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes In light of the need for clarity and precision, the term goods in precious metals or coated therewith, not included in other classes does not provide a clear indication of what goods are covered, as it simply states what the goods are made of or coated with, and not what the goods are. It covers a wide range of goods that may have very different characteristics, that may require very different levels of technical capabilities and k now-how to be produced, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.
Class 16 Paper, cardboard and goods made from these materials, not included in other classes In light of the need for clarity and precision, the term goods made from these materials [paper and cardboard], not included in other classes does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be pr oduced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.
Class 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes In light of the need for clarity and precision, the term goods made from these materials [rubber, gutta-percha, gum, asbestos and mica] and not included in other classes does not provide a clear indication of what goods are covered as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be pr oduced and/or used, could target different consumers, be s old through different sales channels, and therefore relate to different market sectors.
Class 18 Leather and i mitations of leather, and goods made of these materials and not included in other classes In light of the need for clarity and precision, the term goods made of these materials [leather and imitations of leather] and not included in other classes does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and k now-how to be pr oduced and/or used, could target
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different consumers, be sold through different sales channels, and therefore relate to different market sectors.
Class 20 Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics In light of the need for clarity and precision, this term does not provide a clear indication of what goods are covered as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be produced and/or used, that could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.
Class 37 Repair In light of the need for clarity and precision, this term does not provide a clear indication of the services being provided, as it simply states that these are repair services, and not what is to be repaired. As the goods to be repaired may have different characteristics, the repair services will be carried out by service providers with different levels of technical capabilities and know-how, and may relate to different market sectors.
Class 37 Installation services In light of the need for clarity and precision, this term does not provide a clear indication of the services being provided, as it simply states that these are installation services, and not what is to be installed. As the goods to be installed may have different characteristics, the installation services will be carried out by service providers with different levels of technical capabilities and know-how, and may relate to different market sectors.
Class 40 Treatment of materials In light of the need for clarity and precision, this term does not give a clear indication of the services being provided. The nature of the treatment is unclear, as are the materials to be t reated. These services cover a wide range of activities performed by different service providers on materials of different characteristics requiring very different levels of technical capabilities and know-how, and may relate to different market sectors.
Class 45 Personal and social services rendered by others to meet the needs of individuals In light of the need for clarity and precision, this term does not give a clear indication of the services being provided. These services cover a w ide range of activities performed by different service providers requiring very different levels of skill and k now-how, and m ay relate to different market sectors.
CTM applications including one of the abovementioned eleven general indications will be objected to as being too vague. The applicant will be asked to specify the vague term.
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The above non-acceptable general indications can become clear and precise if the applicant follows the principles set out before under paragraph 4.1. Principles of clarity and precision. The following is a non-exhaustive list of acceptable specifications.
Not a clear and precise term Example of a clear and precise term
Goods of common metal not included in other classes (class 6)
Construction elements of metal (Class 6) Building materials of metal (Class 6)
Machines (class 7) Agricultural machines (Class 7) Machines for processing plastics (Class 7) Milking machines (Class 7)
Goods in precious metals or coated therewith (class 14) Works of art of precious metal (Class 14)
Goods made from paper and cardboard (class 16) Filtering materials of paper (Class 16)
Goods made from rubber, gutta-percha, gum, asbestos and mica (class 17) Rings of rubber (Class 17)
Goods made of these materials [leather and imitations of leather] (class 18) Briefcases [leather goods] (Class 18)
Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics (class 20)
Door fittings, made of plastics (Class 20) Figurines of wood (Class 20)
Repair (class 37) Shoe repair (Class 37)Repair of computer hardware (Class 37)
Installation services (class 37) Installation of doors and windows (Class 37)Installation of burglar alarms (Class 37)
Treatment of materials (class 40) Treatment of toxic waste (Class 40)Air purification (Class 40)
Personal and social services rendered by others to meet the needs of individuals (class 45)
Personal background investigations (Class 45) Personal shopping for others (Class 45) Adoption agency services (Class 45)
Note that vague terms would not be made specific, or acceptable, by the addition of such terms as including or in particular. The example machines, including milking machines would not be acceptable as it remains vague. (see paragraph 4.1.2.)
4.2.2 Vague terms
The same principles regarding clarity and precision as described above are applicable to all the goods and services listed in the application. Terms which do not provide a clear indication of the goods covered, should be obj ected to. Examples of such expressions are:
• Electric/electronic apparatus/instruments • Association services • Facilities management services
They all must be specified as described above, i.e. by identifying factors such as characteristics, purpose and/or identifiable market sector.
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4.2.3 The claim for all goods/services in this class or all goods/services of the alphabetical list in this class
If the applicant intends to protect all goods or services included in the alphabetical list of a particular class, it has to expressly indicate this by listing these goods or services explicitly and i ndividually. In order to assist applicants, the use of the hierarchical structure (see paragraph 3 Administrative IT tools for classification purposes) is encouraged.
Applications are sometimes submitted for all goods in Class X, all services in Class X, all goods/services in this class or all goods/services of the alphabetical list in this class (or the like). This specification does not comply with Article 26(1)(c) CTMR which requires a list of the goods or services in respect of which the registration is requested. Consequently, no filing date is awarded.
On other occasions the applicant has correctly listed some goods and/or services to be covered and added, at the end of the listing in each class, the expression and all other goods/services in this class or and all goods/services of the alphabetical list in this class (or the like). In those cases, the application may proceed only for the part of the goods and/or services that is correctly listed. The Office will inform the applicant that those statements are not acceptable for classification purposes and thus will be deleted.
4.2.4 Reference to other classes within the list
References to other class numbers within a class are not acceptable for classification purposes. For example, the descriptions (in Class 39) transport services of all goods in Classes 32 and 33 or (in Class 9) computer software in the field of services in Classes 41 and 45 are not acceptable as in both cases the terms are considered to be unclear and i mprecise and l ack legal certainty as to what goods and s ervices are covered. The only way to overcome the objection to these lists of goods and services will be for the respective goods of Classes 32 and 33, and the services of Classes 41 and 45 to be specified.
The term …goods not included in other classes… is not acceptable in service classes because this expression only has a sense in its original goods class.
For example, the heading of Class 22 reads ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes). In that context the reference to … not included in other classes is meaningful. However, if that same term is used in a s ervice class list of goods and services it cannot make sense. For example, transport services of ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) in Class 39 could not be accepted. The mention of … (not included in other classes) must be deleted.
4.2.5 Trade marks in a list of goods/services
Trade marks cannot appear within a list of goods and services as if they were a generic term or a category of goods. In such cases, the Office will object to the inclusion of the term, and request its replacement by a generic term for the goods or services.
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Example
Class 9: Electronic devices for transmission of sound and images; video players; CD players; iPods
Since iPod™ is a trade mark, the applicant will be requested to replace it by a synonym such as a small portable digital audio player for storing data in a variety of formats including MP3.
Other examples are Caterpillar™ (the correct classification would be crawler type vehicle), Discman™ (portable compact disc player), Band-Aid™ (sticking plasters), Blu Ray discs™ (optical storage discs) or Teflon™ (nonstick coating based on polytetrafluoroethylene). This list is not exhaustive and i n cases of doubt examiners should refer cases to a relevant expert within the Office.
4.2.6 Inclusion of the terms parts and fittings; components and accessories in lists of goods and services
The terms parts and fittings; components and accessories are, on t heir own or in combination with each other, neither clear nor precise enough for classification purposes. Each of the terms requires further qualification to become acceptable in its proper class. Such terms would become acceptable by identifying factors such as characteristics, purpose and/or identifiable market sector. For example:
• Parts and fittings for motor vehicles is acceptable in Class 12 • Building components made of wood is acceptable in Class 19 • Musical accessories is acceptable in Class 15.
4.2.7 Use of indefinite qualifiers
The use of qualifiers such as: ”the like”; “ancillary”, “associated goods”; “and related goods” and “etc.” in a list of goods or services is unacceptable, since they do not comply with the requirements of clarity and precision (see paragraph 4.1.).
5 Procedure of Examination
5.1 Parallel applications
While the Office will always strive for consistency, the fact that a list of goods and services has been previously accepted, but which is wrongly classified, does not have to lead to the acceptance of the same list in any subsequent applications.
5.2 Objections
Where the Office considers that there is a need to amend the list of goods and services it should, if possible, discuss the issue with the applicant. Whenever reasonably
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possible the examiner should offer a p roposal for a c orrect classification. If the applicant submits a l ong list of goods/services which is not grouped under class numbers or classified at all, then the examiner should simply object under Rule 2, and ask the applicant to provide the list in a form that complies.
The response from the applicant must, under no circumstances, extend the scope or range of goods or services (Article 43(2) CTMR).
Where the applicant has failed to identify any classes, or has incorrectly identified the class(es) for the goods or services, then any further explanation of the scope of the application may extend the number of classes required to accommodate the list of goods and services. It does not automatically follow that the list itself has been extended.
Example
An application covering beer, wine and tea in Class 33 should be corrected to:
Class 30: Tea.
Class 32: Beer.
Class 33: Wine.
Although there are now three classes covering the goods, the list of goods has not been extended.
When the applicant has correctly attributed a class number to a pa rticular term, this limits the goods to those falling under that class. For example, an application for tea in Class 30 may not be amended to medicinal tea in Class 5 as that would extend the goods beyond those applied for.
Where there is a need to amend the classification, the Office will send a reasoned communication pointing out the error(s) detected in relation to the list of goods and services. The applicant will be requested to amend and/or to specify the list and the Office may propose the way in which the items should be classified.
The original time limit allowed to submit observations on the classification deficiency letter can only be extended once. No further extensions will be granted unless exceptional circumstances apply.
The Office will send a l etter informing the applicant of the definitive agreed list of accepted terms.
5.3 Amendments
See also the Guidelines, Part E, Register Operations, Section 1, Changes in a Registration.
Article 43(2) CTMR allows for the amendment of an appl ication. This includes the amendment of the list of goods and services provided that ‘such a correction does not substantially change the trade mark or extend the list of goods and services’.
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The amendment can be listed in either positive or negative terms, the following examples are both acceptable:
• Alcoholic beverages all being whisky and gin. • Alcoholic beverages none being whisky or gin.
For classification purposes, two basic requirements must be met in order to make an amendment acceptable:
1. the new wording must not in fact constitute an extension of the list of goods and services;
2. the restriction must constitute a valid description of goods and services and the restriction must apply only to goods or services that appear in the original application.
Otherwise, the Office has to refuse the proposed restriction and the list of goods and services will remain unchanged.
Because of point 1 and 2 a bove, such amendments must be i n the nature of a restriction or deletion of some of the terms originally contained in the application. Once such amendments (deletions) have been received (and later accepted) by the Office, the deleted terms cannot be re-introduced, nor can the remaining list of goods and services be extended.
A restriction may result in a l onger list of goods and s ervices than that filed. For example, the original list of goods and services may have been f iled as alcoholic beverages, but it could be restricted to alcoholic beverages being wines and spirits, but not including whisky or gin and not including liqueurs, cocktails or combinations of beverages containing elements of whisky or gin.
In light of all of the above, here are some examples of unacceptable amendments:
• A request to amend the list of goods and services from vehicles; apparatus for locomotion by land, air or water in Class 12 to batteries for vehicles, to the extent that these products are proper to Class 9 and were therefore not included in the original list.
• From Musical instruments to Steinway & Sons Pianos, to the extent that the amended list of goods and services contains a trade mark.
• A request made to restrict the goods from washing machines to washing machines for sale in France to the extent that the amendment goes against the concept of the unitary nature of a Community trade mark.
In certain circumstances restrictions are acceptable as long as the original term remains in the list of goods and services. Examples of acceptable restrictions are:
• clothing for use in the catering industry, to the extent that this means specific professional clothing;
• restaurant services, only in holiday resorts, to the extent that the services can be recognised as being restaurant services;
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• newspapers, only sold at railway stations, to the extent that the goods can be recognised as being newspapers;
5.4 Addition of classes
Under the provisions of Article 43(2) CMTR (listed above), it is possible to add a c lass or classes to an application, but only where the goods or services detailed in the original application were clearly included in the wrong class or when a good or service has been clarified and needs to be classified in new class(es). For example, assume the original list of goods reads:
Class 33: Alcoholic beverages including beer, wines and spirits.
Since beer is proper to Class 32, the applicant will be requested to transfer the term to Class 32, even if Class 32 was not listed in the original application. If the applicant agrees then the application will cover goods in Classes 32 and 33.
When classes are added, additional fees may be payable and the applicant must be informed accordingly.
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6 Annex 1
Table of Contents
Introduction...............................................................................................................19 Advertising services.................................................................................................19 Air freshening and perfuming preparations............................................................19 Amusement apparatus and electronic games ........................................................19 Association services or services provided by an association to its members .... 20 Beauty apparatus......................................................................................................20 Bringing together of services ..................................................................................20 Broadcasting and/or transmission services...........................................................20 Brokerage services...................................................................................................21 Cases (and carrying bags) .......................................................................................21 Charitable services...................................................................................................21 Collection and storage services ..............................................................................22 Computer games and computer games apparatus ................................................22 Curtains and blinds ..................................................................................................23 Custom manufacture/manufacturing for third parties............................................23 Data services.............................................................................................................23 Design services ........................................................................................................24 Digital imaging services...........................................................................................24 Downloadable goods................................................................................................24 Electricity and energy...............................................................................................25 Electronic and electric apparatus............................................................................25 Electronic cigarettes.................................................................................................25 Franchising ...............................................................................................................25 GPS systems – location, tracking and navigating..................................................26 Hair styling ................................................................................................................27 Hire services .............................................................................................................27 Humanitarian aid services........................................................................................27 Internet services, on-line services...........................................................................27 Kits and sets .............................................................................................................28 Leasing......................................................................................................................29 Mail order ..................................................................................................................29 Manuals (for computers, etc.) ..................................................................................29 Manufacturing services............................................................................................30 News services...........................................................................................................30 On-line services ........................................................................................................30 Ordering of services.................................................................................................30 Perfuming and air freshening preparations............................................................31
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Personal and soc ial services rendered by others to meet the needs of individuals.................................................................................................................31 Precious metal goods...............................................................................................32 Protective clothing....................................................................................................32 Rental services .........................................................................................................32 Retail and wholesale services .................................................................................33 Satellite tracking .......................................................................................................34 Sets............................................................................................................................34 Social networking services......................................................................................34 Software publishing..................................................................................................34 Solar power ...............................................................................................................34 Storage services .......................................................................................................35 Supply of ... ...............................................................................................................35 Systems.....................................................................................................................35 Tickets (for travel, entertainment etc.) ....................................................................36 Video games .............................................................................................................36 Virtual environment ..................................................................................................36
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Introduction
When classifying the general principles of the Nice Classification must be applied.
The purpose of this Annex is to clarify the classification of certain problematic terms. It also provides notes on classification practice (including words or phrases that should not be used).
The Office’s classification database TMclass is available at http://tmclass.tmdn.org
Advertising services
In principle, advertising services belong to Class 35. The main entries on advertising services in the list of services in the Nice Classification are:
• Advertising • Radio advertising • Radio commercials • Television advertising • Television commercials • Layout services for advertising purposes • Publication of publicity texts • Production of advertising films.
These entries cover the design of advertising material and production of commercials, as they are services which will be provided by advertising agencies.
Air freshening and perfuming preparations
See perfuming and air freshening preparations.
Amusement apparatus and electronic games
Following changes to the Nice Classification on 1 January 2012 (10th edition), all games (whether electronic or not) are classified in Class 28.
These are shown in the alphabetical list as follows:
• Games (Apparatus for-) • Video game machines • Arcade video game machines.
Most of these Class 28 devices come loaded with the games. However, if these games are not loaded on t he devices, they will be r ecorded on dat a carriers or they will be downloadable. In these cases, the games are considered to be game programmes which are especially adapted for use with gaming devices and thus will be classified in Class 9.
See also computer games.
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Association services or services provided by an association to its members
These, and similar terms are too vague to be acceptable. The type, or scope, of the service being provided needs to be mentioned. Examples of acceptable specifications are:
Class 35: Association services in the nature of business administration services.
Class 45: Services provided by an association to its members in the form of legal services.
See also charitable services.
Beauty apparatus
Class 7: Sprayers (machines) for applying artificial sun tanning preparations.
Class 8: Hand-operated instruments/tools for beauty purposes Tattooing needles/apparatus Depilatory apparatus (electric and non-electric).
Class 10: Massage apparatus Microdermabrasion apparatus Apparatus for the treatment of cellulite Lasers for cosmetic beauty treatments Laser hair removal apparatus Photoepilation apparatus.
Photoepilation is a procedure carried out by pulsed light devices. These devices use the same principle as lasers (i.e. heating up the hair follicle), yet they are not lasers.
Class 11: Ultra-violet ray lamps for cosmetic purposes Sun beds Steam apparatus for cleaning the skin.
Class 21: Cosmetic brushes and applicators.
Bringing together of services
See ordering of services and retail and wholesale services.
Broadcasting and/or transmission services
These services are proper to Class 38; both mean the same thing. The services provided in this area only cover the provision of the means of communication (e.g. the
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provision of a network of fibre optic cables; the provision of broadcasts or transmissions via geo-stationary satellite transmission facilities, the rental of communications apparatus and systems). Class 38 does not cover any programmes, advertising, information or advice which may be t ransmitted by means of telecommunications or broadcasting technology. Those services would remain in the appropriate classes.
Brokerage services
These are services provided by an individual or company whereby they buy and sell commodities for a fee or commission. The fee may be c harged to the buyer or the seller of the commodity (or both). The broker may never see the goods or services in question.
There are three listed classes for brokerage services. These are:
Class 35: Brokerage of name and address based lists.
Class 36: [A large number of listings for] brokerage of futures, carbon offsets, real estate, bonds, securities and other financial based items.
Class 39: Brokerage services relating to distribution, transport, and storage.
Cases (and carrying bags)
Cases (and bags) adapted to carry or transport the product they are intended to contain are in principle, classified in the same class as the product they are adapted to carry. For instance laptops bags are proper to class 9.
All non-adapted carrying bags are in Class 18.
Charitable services
This term is too vague to be accepted in any class without further qualification.
Charitable services are defined by the service which is being offered. Therefore, they can be c lassified in any of the service classes, given the correct definition. For example:
Class 35: Charitable services, namely administration and general office work.
Class 36: The organisation of charitable collections; charitable fund raising.
Class 38: Telecommunications services for charitable purposes.
Class 39: Charitable services, namely ambulance transport.
Class 40: Charitable services, namely water treatment services.
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Class 41: Charitable services, namely education and training.
Class 42: Charitable services, namely environmental protection services.
Class 43: Charitable services, namely providing food and drink and temporary accommodation.
Class 44: Charitable services, namely providing medical services.
Class 45: Charitable services, namely mentoring [personal or spiritual].
Collection and storage services
In the case of physical goods both collection and storage services would be proper to Class 39. This class includes transport and warehousing in its listings. This would also include the collection and physical storage of data, whether in written form or recorded on media (the Nice Classification has physical storage of electronically stored data or documents in Class 39).
Office services of electronically collecting, collating and m anipulating data are all proper to Class 35.
Storage of digital data and electronic data storage are seen to be i n analogy with hosting services, and so are proper to Class 42. Cloud computing data storage services are also proper to Class 42.
Computer games and computer games apparatus
The terms computer games and video games are highly similar and are treated as the same way.
The dictionary reference for computer games is as follows: 1. (Noun) ‘any of various games, recorded on cassette or disc for use in a home
computer, that are played by manipulating a mouse, joystick, or the keys on the keyboard of a c omputer in response to the graphics on t he screen’ (Collins English Dictionary).
The terms computer games / video games, as such, are therefore only acceptable in Class 9. The dictionary reference of the term clearly states that it must be a game, thus software. The terms can therefore be accepted in Class 9 without any further clarification.
Games which are acceptable in Class 28 come loaded with the games software. For example, the following terms can all be accepted in Class 28:
• Arcade games • Arcade video machines • Computer game consoles • Games (apparatus for)
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• Hand held computer game devices • Video game machines.
Curtains and blinds
Blinds, in all their forms, can be used on windows both internally and externally. The classification of these goods depends upon the purpose of the product and its material composition.
Curtains are normally found in use indoors and they are similarly classified according to their material composition.
Examples of acceptable entries are:
Class 6: Outdoor blinds of metal External metal blinds as part of a building for security purposes.
Class 17: Curtains of asbestos (safety-) (The material and pur pose determine the classification).
Class 19: Blinds [outdoor] not of metal and not of textile. (These goods are probably made of wood).
Class 20: Blinds (slatted indoor) Venetian and vertical window blinds. Indoor window blinds Blinds (indoor window) [shades] [furniture] Curtains (bamboo-) Paper blinds Curtains (bead-)[for decoration].
Class 24: Outdoor blinds of textile.
The vast majority of curtains will fall under Class 24 since most domestic curtains (sometimes referred to as ‘drapes’) are made of textiles or plastic.
Care should be t aken with any references to curtain walling, or curtain walls. These refer to a type of construction technique relating to buildings and the associated goods are building materials and are proper to Class 6 (for metal goods) or Class 19 (for non- metallic goods).
Custom manufacture/manufacturing for third parties
See manufacturing services.
Data services
The term cannot be accepted on its own. It must be qualified.
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The provision of data can be proper to several classes depending on the way in which the data is provided or the nature of the data being provided. In each case the exact nature of the service being offered will need to be stated, the provision of data is not enough. The following are examples of acceptable terms and their relevant classification:
Class 44: Provision of data (information) relating to the use of pharmaceuticals. (This would refer to the systemised provision of data which could only be interpreted by someone with specialised medical training.)
Class 45: Provision and interpretation of data relating to animal tracking. (This would refer to services in relation to the relocation of a lost or stolen animal. If the data was for other purposes, then the classification would be proper to other classes e.g. Class 42 for measuring or scientific reasons.)
Design services
Design services are, as such, proper to Class 42.
Design of advertising and design of brand names are both proper to Class 35 as these are both part of advertising services.
Likewise landscape design, floral design, turf design and planning [design] of gardens are proper to Class 44 as these are horticultural services.
Digital imaging services
The term digital imaging services has been deleted from Class 41 in the 10th edition of the Nice Classification. Consequently, the term cannot be accepted in Class 41 without any specification. This is because digital imaging can be c lassified in more than one class depending on the field the service refers to, e.g. medical, information technology or photography.
Acceptable terms include:
• Digital imaging (photo editing) in Class 41 • Medical imaging services in Class 44 • Digital imaging (IT services) in Class 42.
Downloadable goods
All material which is downloadable is proper to Class 9. This includes publications, music, ring tones, pictures, photographs, films or film extracts. The result of the download is that the material is captured onto the drives or memory of a c omputer, telephone or PDA where it operates independently of the source from whence it came. These can also be called virtual goods. All these downloadable goods can be retailed.
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Electricity and energy
The following is a guide to some of the goods and services which surround electricity.
Class 4: Electrical energy.
Class 7: Electrical generators.
Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating, or controlling electricity Solar cells for electricity generation Photovoltaic cells and modules.
Class 36: Brokerage of electricity (see also note under brokerage services).
Class 39: Distribution of electricity Storage of electricity.
Class 40: Generation of electricity.
See solar power.
Electronic and electric apparatus
The term electronic and electric apparatus/devices/instruments is too vague for classification purposes; it is not acceptable in any goods class, and should be specified.
Please be aw are that specifications of electronic and electric apparatus / devices / instruments such as listed below are considered too vague as well:
• for controlling the environment • for household purposes • for use in hairdresser salons.
Electronic cigarettes
Electronic cigarettes, e-cigarettes or e-cigs are – for classification purposes – acceptable only in Class 34, even if they would serve a m edical purpose. Non- electronic parts of these types of cigarettes, like cartridges, atomisers or (aroma) substances for these cigarettes are also classified in Class 34.
The electronic parts like batteries and a microcomputer controlled circuits for electronic cigarettes are not acceptable in these classes and belong – as usual – to Class 9.
Franchising
The verb ‘franchise’ refers to the giving or selling of a franchise to another party. As a noun ‘franchise’ means ‘the authorisation granted to an i ndividual or group by a
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company to sell its products or services in a particular area’ (Oxford English Dictionary).
Without any further specification, the office will not accept the term franchise service or franchising services in Class 35. In order to be acceptable a clarification is required.
For example: Class 35: Business advice relating to franchising.
Class 36: Financing services relating to franchising.
Class 45: Legal services relating to franchising.
GPS systems – location, tracking and navigating
GPS and s atellite navigation systems (class 09) provide location, tracking and navigating services, to provide the user with information.
The easiest way to classify these services is to divide them into those services which provide the telecommunications which run the services (Class 38) and those services which provide information via the GPS device. The range of information provided goes beyond mere travel route information (Class 39). It can include information regarding restaurants and accommodation (Class 43), information regarding shopping outlets (Class 35) or telephone numbers (Class 38).
The use of GPS devices in relation to the movement of vehicles and people can also lead to classifications over a range of classes. Route planning services (Class 39) have already been m entioned. This classification would also extend to logistic or freight moving companies keeping track of their vehicles using the same devices.
GPS systems can also be used in conjunction with other technology, to locate the source of a mobile telephone signal. If this is being done as part of a telecommunication service it will be proper to Class 38. If, however, it is being done as part of a criminal investigation service it would be proper to Class 45.
There are other services that can be as sociated with the services listed above. For example, the creation of maps for GPS systems is proper to Class 42. The downloadable applications which run the service or provide alternative ‘voices’ are proper to Class 9. The retail services for providing the downloadable applications are proper to Class 35.
The examples below demonstrate how these and other terms are classified.
Class 35: Compilation and provision of commercial directory information regarding service providers for GPS navigation.
Class 38: Satellite transmissions Providing public subscribers directory information for GPS navigation Providing access to general information supplied via satellite transmission Telecommunications services for location and tracking of persons and objects Tracking of mobile telephone via satellite signals
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Location of mobile telephones via satellite signals Providing access to GPS navigation services via satellite transmission Satellite transmission of navigation data.
Class 39: Providing GPS navigation services Providing traffic information services via satellite transmission Providing road information services via satellite transmission Location services for logistics purposes of vehicles and goods Tracking services for logistics purposes of vehicles and goods.
Class 42: Providing weather information via satellite transmission Creation of GPS maps.
Class 45: Providing public amenity and civic directory information for GPS navigation Tracing and locating of missing persons via satellite transmission Tracking of persons carrying electronic tagging devices Security tracking services of vehicles Security location services of vehicles.
Hair styling
Most electric and non-electric hair styling apparatus is classified in Class 8 (e.g. electric hair curling irons; hair tongs [non-electric hand implements]; crimping irons for the hair etc.). Except:
Class 26: Electric hair curlers/rollers (e.g. CARMEN™ CURLERS).
Class 26: Hair curlers/rollers, other than hand implements.
Class 11: Hair dryers.
Class 21: Combs and brushes (non-electric and electric).
Hire services
See rental services.
Humanitarian aid services
Office practice on humanitarian aid services is the same as that on charitable services; the nature of the services must be specified (see charitable services).
Internet services, on-line services
The term internet services is neither clear nor precise for acceptance in any class. It must be further defined.
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There are a range of services, offered by individuals and business to other individuals and businesses, which relate to the setting up, operation and servicing of internet web- sites and these are covered by appropriate entries in a number of classes.
There is an even wider range of services offered to customers through the medium of telecommunications including via the internet. It is possible to shop over the internet, obtain banking advice, learn a new language, or listen to a ‘local’ radio station which is situated on the other side of the world.
The application of the Nice Classification system generally applies regardless of whether the service is provided face-to-face, in dedicated premises, over a telephone, on-line from a database or from an internet web site.
Acceptable terms include:
Class 35: Advertising services provided over the internet.
Class 36: On-line banking services.
Class 38: Internet provider services.
Class 41: On-line gaming services.
Class 42: Providing on-line support services for computer program users.
Class 45: On-line social networking services.
Kits and sets
It is common in trade for certain goods to be sold in groups of more than one item. If the items are all the same, e.g. a pack of three toothbrushes, then the classification is simple. However, sometimes the collection of goods could be c omponent parts of another item, or have a function which is not defined by the individual goods. These groups of goods sometimes have collective names such as kit or set. These small words can have a big impact on (1) the acceptability as collection of goods and (2) the appropriate classification.
A kit can mean either:
1. a set of parts ready to be made into something (for example: a kit for a model plane) or
2. a set of tools or equipment that is to be used for a particular purpose (for example: a first-aid kit).
A set is a number of articles that are thought of as a group. This may have a def ined number or not (e.g. a set of keys, a set of saucepans, a set of golf clubs; a cutlery set).
Kits appear in the Nice Classification, for example, as in the following example:
Class 3: Cosmetic kits.
Class 5: First aid kits (seen as a collection of plasters and treatments).
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It sometimes happens that the individual goods which make up t he kit or set would normally be c lassified in more than one class. However, the Office will not object to acceptance of such collective terms, provided that they make sense and/or are in common usage.
When determining the correct classification for a kit or set, it is necessary to understand either; what the kit is going to be used for, or alternatively, if it going to make or construct something from its components, what the finished article will be.
Examples of acceptable terms would be:
Class 8: Manicure and pedicure sets.
Class 9: Hands free kits for phones.
Class 12: Tyre repair kits (for repairing a vehicle part that is in Class 12).
Class 27: Rug making kit.
Class 28: Scale model kits [toys] Toy model kits.
Class 32: Beer making kits.
Class 33: Wine making kits.
Leasing
The general remarks in the Nice Classification (10th edition) say, ‘Leasing services are analogous to rental services and therefore should be classified in the same way. However, hire- or lease-purchase financing is classified in Class 36 as a f inancial service.’
See also rental services.
Mail order
See retail and wholesale services.
Manuals (for computers, etc.)
Electronic items such as computers, printers, photocopiers and other electronic items are often delivered as new goods to the customer with a list of operating instructions. The instructions can be in paper (printed) format, or in an electronic format, such as a recording on a disc, or as a downloadable or non-downloadable document available at the manufacturer’s web-site.
Examples of this would be:
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Class 9: Computer software and hardware and associated manuals in electronic format sold as unit therewith.
Class 16: Manuals sold as a unit with computer software and hardware.
Manufacturing services
Manufacturing is only seen as a service when it is undertaken for third parties and must be specified as such. Custom manufacturing of certain single, ‘one-off’ products for third parties, for example a sailing boat or a sports car, by a specialist in that field would be proper to Class 40. Custom construction of e.g. made-to-measure kitchen units would be included in Class 40, but their installation would be proper to Class 37.
News services
News agency services are proper to Class 38. They are essentially a hub or collection point through which journalists and others can file and obtain newsworthy materials (in the form of stories, script or photographs). They do not perform any other function such as editing or verification services.
News reporting services are proper to Class 41. News has no boundaries, the subject could be anything.
Other examples include:
Class 38: News broadcasting services.
Class 40: Printing of newspapers.
Class 41: Presentation of news (programmes) Publication of news Editing of news.
As far as electronic news publications are concerned, downloadable news pod casts, news clips, news items, news publications, etc. are all goods which are proper to Class 9.
On-line services
See internet services.
Ordering of services
The ordering of goods/services for others can be accepted in Class 35 as a business service / office function. There are individuals and companies who offer services of providing solutions to a variety of problems on behalf of others, e.g. if you need a leaking tap to be fixed, the intermediary (service provider) will arrange the services of a plumber for you. This classification is in analogy with the Nice Classification entry procurement of services for others [purchasing goods and services for other business].
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Perfuming and air freshening preparations
There are preparations which serve to merely mask unpleasant smells (perfume) and there are also preparations which chemically ‘wrap-up’ and remove unpleasant odours (deodorisers) and their apparatus. They are properly classified as follows:
Class 3: Air fragrancing preparations Incense Potpourris [fragrances] Sachets for perfuming linen Scented wood Fumigation preparations [perfumes] Room sprays.
Class 5: Air deodorising preparations Air purifying preparations
Class 11: Air deodorising apparatus
Other goods which may release pleasant odours include perfumed candles which are proper to Class 4 (the release of perfume is a secondary characteristic) and perfumed drawer liners (proper to Class 16 as being analogous to packaging material and usually made of paper).
Personal and social services rendered by others to meet the needs of individuals
The general indication personal and social services rendered by others to meet the needs of individuals is not clear and precise enough and will not be accepted by the Office (see also paragraph 3.4.2).
The wording needs to be specified by the applicant.
There are many personal and s ocial services that are classifiable, but are proper to classes other than Class 45. These include:
Class 36: Personal insurance services (such as life assurance).
Class 41: Personal tuition.
Class 44: Personal medical services.
Class 45: Personal body guarding Consultancy services relating to personal appearance Personal tour guide services Personal shopping services.
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Precious metal goods
The general indication goods of precious metals or coated therewith, not included in other classes in Class 14 is not clear and precise enough and will not be accepted by the Office (see also paragraph 3.4.2). The applicant needs to specify the wording of the term.
Caution needs to be applied when classifying goods made from precious metals.
Historically, virtually all goods which were made from, or coated with, precious metals were grouped together in Class 14. It was considered that the material had an influence on why the goods were bought, and that in turn determined where the goods were classified.
Since 1 January 2007, the classification of many goods that would have been i n Class 14 has been re-classified. The reclassification of the goods is based upon their function, rather than the material from which they are made.
The following goods are examples of goods which are classified according to their function or purpose:
Class 8: Cutlery of precious metal.
Class 16: Pen nibs of gold.
Class 21: Teapots of precious metal
Class 34: Cigarette and cigar boxes made of precious metals.
Protective clothing
If items that are worn (or sometimes carried) have their primary function as the prevention of serious and/or permanent injury, or death or if that protection is offered against, for example contact with or exposure to extremes of temperature, chemicals, radiation, fire, or environmental or atmospheric hazards, then those goods would be proper to Class 9.
Examples of such protective goods would include hard-hats worn on building sites, and helmets worn by security guards, horse riders, motorcyclists, and American football players. Bullet-proof vests, metal toe-capped shoes, fireproof jackets and metal butchers’ gloves are examples of these: they are not clothing as such. Aprons, smocks and overalls which merely protect against stains and dirt are not proper to Class 9 but to Class 25 as general clothing. Protective sporting articles (except helmets) are proper to Class 28: none of these protect against loss of life or limb.
Rental services
Rental or hire services are classified, in principle, in the same class as the services provided. For example, the rental of cars falls in Class 39 (transport), rental of telephones in Class 38 (telecommunications), rental of vending machines in Class 35
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(retail services). The same principle applies to leasing services which are found on TMclass in all of the service classes.
Retail and wholesale services
A retail service is defined as ‘The action or business of selling goods in relatively small quantities for use or consumption’ (Oxford English Dictionary); this defines the scope of the services covered by this term.
There is an indication in the explanatory note to the listing of Class 35 in the Nice Classification that the term the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase these goods is acceptable in Class 35. Retail services are classified in analogy to this entry.
However, as regards retail services or similar services in Class 35 relating to the sale of goods, such as wholesale services, mail order services and e-commerce services, the Office applies judgment of 07/07/2005, C-418/02, ‘Praktiker’: the term retail services is only acceptable where the type of goods to be sold is indicated. For details, see Communication No 7/05 of the President of the Office.
If the nature of the place in which the goods are sold in is sufficiently specific to allow the recognition of the category of the goods, this will also be accepted. Acceptable wordings include:
• Retail services relating to clothes shops • Retail services relating to garden centres • Retail services relating to bakers.
As shown in the Communication of the President, the term retail services of a supermarket and, by extension, retail services of a department store and similar terms are not acceptable as the goods to be sold are not defined.
The 10th edition of the Nice Classification (version 2013) includes retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies, which shows how terms can be expressed.
Examples of categories of goods which are seen as being too vague for classification purposes include:
• Merchandising articles • Fair-trade goods • Lifestyle accessories • Gift articles • Souvenirs • Collectors’ articles • Housewares.
Examples of categories of goods which are not acceptable in relation to retail as they are seen as a service proper to a different class include:
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• Financial products – these are in fact financial services classified in Class 36. • Lottery tickets – these are lottery services classified in Class 41. • Airplane tickets – these are part of travel agency services classified in Class 39.
Finally, retail services for non-acceptable general indications of the class headings (see paragraph 3.4.2) are not acceptable. For example, the Office will not accept retail services for machines. However, retail services in relation to agricultural machines would be sufficiently precise and acceptable.
The specification of the goods by terms such as ‘including, in particular, for example, featuring, specifically, such as’ is not precise enough since all these terms mean, in principle, ‘for example’. They do not restrict the goods which follow. Consequently, the abovementioned terms should be r eplaced by ‘namely or being’ as it will restrict the goods which follow those terms.
Satellite tracking
See GPS systems – location, tracking and navigating.
Sets
See kits and sets.
Social networking services
Social networking services is an acceptable term in Class 45. It would be seen as a personal service which includes the identification and introduction of like-minded people for social purposes.
There are other aspects of the ‘social networking’ industry which could be proper to classes other than Class 45, for example:
Class 38: The operation of chat room services The provision of on-line forums.
Software publishing
Software publishing belongs to Class 41. A software publisher is a publishing company in the software industry between the developer and t he distributor. Publishing, according to its definition, includes newspaper publishing and software publishing.
Solar power
Solar power is energy that is derived from the sun and converted into heat or electricity.
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Goods relating to the generation and s torage of electricity from solar energy are classified in Class 9.
Goods relating to the generation and storage of heat from solar energy are classified in Class 11.
Services relating to the generation of electricity from solar energy are classified in Class 40.
Class 9: Photovoltaic cells Solar panels, modules and cells.
Class 11: Solar collectors for heating.
Class 40: Production of energy.
See electricity and energy.
Storage services
See collection and storage services.
Supply of ...
Care should be taken in the acceptance of this term when it is used to qualify services. It is acceptable in some circumstances, for example, supply of electricity in Class 39, where the term is often closely allied to distribution. It is also acceptable in the term catering services for the supply of meals (in Class 43) because the material being supplied, and the nature of the service, have both been given.
In the term supply of computer software (in Class 42) it is not clear what services are being provided. Whilst this class does include the services of design, rental, updating and maintaining computer software, it is not clear if any of those services are included in the general term supply. The word is often used as an apparent synonym for retail services but Class 42 does not include such services, they would be proper to Class 35.
Systems
This is another term which can be too unclear or too imprecise to be accepted.
It can be ac cepted only when qualified in a w ay that has a c lear and unam biguous meaning. For example, the following are acceptable:
Class 7: Exhaust systems.
Class 9: Telecommunication systems Computer systems Alarm systems.
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Class 16: Filing systems.
Tickets (for travel, entertainment etc.)
A ticket is a ‘promise to supply’ in relation to a service, or a reservation service, the right to a service. Examples include:
Class 39: Issuing of airplane tickets.
Class 41: Ticket agency services (box office).
Note that tickets are not seen as goods retailed in Class 35.
Video games
See computer games.
Virtual environment
The term providing a virtual environment is neither clear nor precise enough as it can relate to different areas of activities and classes. The term must be further defined.
Acceptable terms include:
Class 38: Providing a virtual chatroom Providing access to a virtual environment.
Class 42: Hosting of a virtual environment Maintenance of a virtual environment.
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Revision History
Version Date Author Description 1.1 06/09/2013 CDD Preliminary draft of the document 1.2 06/09/2013 CDD AP and TC comments incorporated 1.3 13/09/2013 CDD Draft adapted following CP1 meeting
12/09/2013 1.4 16/09/2013 CDD Draft adapted following meeting
escalation process 11/09/2013 1.5 22/09/2013 CDD All changes for revision cycle included 1.6 27/09/2013 AP/AW/KK/MJ Proposed changes members KC + QS
included 1.7 01/10/2013 JL Proposed change JL regarding
acceptability guidelines included 1.8 04/10/2013 CDD Proposal for KC members 1.9 09/10/2013 ZS KC member comments included 2.0 20/11/2013 CDD Revision after comments OD 2.1 16/12/2013 CDD Proofread + last changes CP1 – CC3,
ready for translation
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART B
EXAMINATION
SECTION 4
ABSOLUTE GROUNDS FOR REFUSAL
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Table of Contents
2.6 Public policy or morality, Article 7(1)(f) CTMR .........................................4 2.6.1 ‘Public policy’ .................................................................................................. 4
2.6.1.1 Concept and categories...............................................................................4 2.6.1.2 Plant Variety Denominations........................................................................5
2.6.2 Accepted principles of morality....................................................................... 7
2.7 Deceptiveness: Article 7(1)(g) CTMR.......................................................10 2.7.1 Examination of the deceptive character ....................................................... 10 2.7.2 Market reality and consumers’ habits and perceptions ................................ 12 2.7.3 Trade marks with geographical connotations relating to the location of the
applicant or the place of origin of the goods/services .................................. 13 2.7.4 Trade marks making reference to an ‘official’ approval, status or
recognition .................................................................................................... 13 2.7.5 Relation with other CTMR provisions ........................................................... 14
2.8 Protection of flags and other symbols – Articles 7(1)(h) and (i) CTMR.16 2.8.1. Protection of armorial bearings, flags, other state emblems, official signs
and hallmarks indicating control and warranty under Article 7(1)(h) CTMR – Article 6ter(1)(a) and (2) PC ...................................................................... 16 2.8.1.1 Examination of marks consisting of or containing a state flag ...................19 2.8.1.2. Examination of marks consisting of or containing armorial bearings and
other state emblems..................................................................................23 2.8.1.3 Examination of marks consisting of or containing official signs and
hallmarks indicating control and warranty..................................................26 2.8.2. Protection of armorial bearings, flags, other emblems, abbreviations and
names of international intergovernmental organisations under Article 7(1)(h) CTMR – Article 6ter(1)(b) and (c) PC .................................... 26
2.8.3. Protection of badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention under Article 7(1)(i) CTMR.............. 33
2.9 Article 7(1)(j) CTMR...................................................................................38 2.9.1 Introduction ................................................................................................... 38 2.9.2 The application of Article 7(1)(j) CTMR ........................................................ 41
2.9.2.1 Relevant PDOs/PGIs.................................................................................41 2.9.2.2 Situations covered by Article 103 of Regulation (EU) No 1308/2013 and
Article 16 of Regulation (EC) No 110/2008................................................42 2.9.2.3 Relevant goods .........................................................................................50
2.9.3 PDOs/PGIs not protected under Regulations (EC) No 1308/2013 and No 110/2008 ................................................................................................. 51 2.9.3.1 PDOs/PGIs protected at national level in an EU Member State ................52 2.9.3.2 PDOs/PGIs from third countries ................................................................52
2.10 Article 7(1)(k) CTMR ........................................................................ 54 2.10.1 Introduction ................................................................................................... 54 2.10.2 The application of Article 7(1)(k) CTMR....................................................... 55
2.10.2.1 Relevant PDOs/PGIs.................................................................................55 2.10.2.2 Situations covered by Article 13(1) of Regulation (EU) No 1151/2012 ......56 2.10.2.3 Relevant goods .........................................................................................64
2.10.3 PDOs/PDIs not protected under Regulation (EU) No 1151/2012 ................ 67 2.10.3.1 PDOs/PDIs protected at national level in an EU Member State ................67 2.10.3.2 PDOs/PDIs from third countries ................................................................68
2.11 Community collective marks ...................................................................70 2.11.1 Character of collective marks ....................................................................... 70 2.11.2 Ownership..................................................................................................... 71
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2.11.3 Particularities as regards absolute grounds for refusal ................................ 72 2.11.3.1 Descriptive signs .......................................................................................72 2.11.3.2 Misleading character as to its nature.........................................................73 2.11.3.3 Regulations of use contrary to public policy and morality..........................73
2.12 Acquired distinctiveness ................................................................ 73 2.12.1 Introduction ................................................................................................... 73 2.12.2 Request 74 2.12.3 The point in time the evidence must relate to............................................... 74
2.12.3.1 Examination proceedings ..........................................................................74 2.12.3.2 Cancellation Proceedings..........................................................................74
2.12.4 Consumer ..................................................................................................... 75 2.12.5 Goods and Services ..................................................................................... 75 2.12.6 Territorial Aspects......................................................................................... 75
2.12.6.1 Special provisions with respect to the accession of new Member States..76 2.12.6.2 3D marks, colours per se and figurative trade marks ................................76 2.12.6.3 Language area ..........................................................................................76 • German .....................................................................................................76 • Greek.........................................................................................................77 • English.......................................................................................................77 • French .......................................................................................................77 • Dutch.........................................................................................................77 • Swedish.....................................................................................................77
2.12.7 What has to be Proved ................................................................................. 78 2.12.8 The evidence and its assessment ................................................................ 79
2.12.8.1 The kind of evidence that may be submitted .............................................79 2.12.8.2 Assessment of evidence as a whole .........................................................79 2.12.8.3 Market share .............................................................................................80 2.12.8.4 Opinion polls and surveys .........................................................................80 2.12.8.5 Turnover and advertising...........................................................................80 2.12.8.6 Indirect evidence of use.............................................................................81 2.12.8.7 Extrapolation .............................................................................................81 2.12.8.8 Manner of use ...........................................................................................82 2.12.8.9 Length of use.............................................................................................82 2.12.8.10 Post-filing date evidence ...........................................................................82
2.12.9 Consequences of Acquired Distinctiveness ................................................. 82
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2.6 Public policy or morality, Article 7(1)(f) CTMR
Article 7(1)(f) CTMR excludes from registration trade marks that are contrary to public policy or to accepted principles of morality. The rationale of Article 7(1)(f) CTMR is to preclude trade marks from registration where granting a monopoly would contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norms of society.
The Office considers that ‘public policy’ and ‘accepted principles of morality’ are two different concepts, which often overlap.
The question whether the goods or services applied for can be legally offered in a particular Member State’s market is irrelevant for the question whether the sign itself falls foul of Article 7(1)(f) CTMR (judgment of 13/09/2005, T-140/02, ‘Intertops’, para. 33). Whether or not a mark is contrary to public policy or accepted principles of morality must be determined by the intrinsic qualities of the mark applied for and not by the circumstances relating to the conduct of the person applying for the trade mark (judgment of 13/09/2005, T-140/02, ‘Intertops’, para. 28). In its judgment of 20/09/2011, T-232/10, ‘Soviet Coat of Arms’, the General Court held that the concepts of ‘public policy’ and ‘ acceptable principles of morality’ must be i nterpreted not only with reference to the circumstances common to all Member States but by taking into account ‘the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those States’ (para. 34).
The legislation and administrative practice of certain Member States can also be taken into account in this context (i.e. for assessing subjective values), not because of their normative value, but as evidence of facts which make it possible to assess the perception of the relevant public in those Member States (judgment of 20/09/2011, T-232/10, ‘Soviet Coat of Arms’, para. 57). In such a c ase, the illegality of the CTM applied for is not the determining factor for the application of Article 7(1)(f) CTMR but rather is of evidential value with regard to the perception of the relevant public in the Member State(s) in question.
Considering that the specific circumstances of individual Member States may not be widely known in the European territory, the objection letter should explain these circumstances clearly in order to make sure that the applicant is able to fully understand the reasoning behind the objection and is able to respond accordingly.
2.6.1 ‘Public policy’
2.6.1.1 Concept and categories
This objection derives from an assessment based on objective criteria. ‘Public policy’ refers to the body of Union law applicable in a certain area, as well as to the legal order and the state of law as defined by the Treaties and secondary EU legislation, which reflect a common understanding on certain basic principles and values, such as human rights.
The following is a non-exhaustive list of examples of when signs will be caught by this prohibition.
1. On 27/12/2001 the Council of the European Union adopted Common Position 2001/931/CFSP on the application of specific measures to combat terrorism
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(OJ L 344, 28/12/2001, p. 93) later updated by Council Common Position 2009/64/CFSP (OJ L 23, 27/01/2009, p. 37 and av ailable online at: http://eur- lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:023:0025:0029:EN:PDF) which contains a list of individuals and groups facilitating, attempting to commit or committing terrorist acts in EU territory. Any CTM applied for which can be deemed to support or benefit an individual or a group on that list will be rejected as being against public policy.
2. Use of the symbols and names of Nazi organisations is prohibited in Germany (§ 86a dt. StGB (German Criminal Code), BGBl. Nr. I 75/1998) and in Austria (§ 1 öst. Abzeichengesetz (Austrian Law on I nsignias), BGBl. Nr. 84/1960 in conjunction with § 1 öst. Verbotsgesetz (Austrian Prohibition Law), BGBl. Nr. 25/1947). Any CTM applied for which uses such symbols or names will be rejected as being against public policy.
3. Bearing in mind that the notion of ‘public policy’ also covers specific EU legislation in force in a given field, and insofar as there is both an EU Regulation and an I nternational Convention that is binding on t he European Union preventing the granting of exclusive rights in the name of a pl ant variety registered in the European Union, it follows that it is contrary to European public policy to grant exclusive trade mark rights in the name of a plant variety registered in the European Union, which is, therefore, considered to be descriptive by law.
2.6.1.2 Plant Variety Denominations
Plant variety names describe cultivated varieties or subspecies of live plants or agricultural seeds. Council Regulation (EC) No 2100/94 on Community plant variety rights (CPVRR) establishes a s ystem of Community plant variety rights (CPVR) as the sole and exclusive form of Community industrial property rights for plant varieties. A variety denomination must ensure clear and unambiguous identification of the variety and fulfil several criteria (Article 63 CPVRR). The applicant for a CPVR must give a suitable variety denomination that shall be used by anyone who markets such variety in the territory of a member of the International Union for the Protection of New Varieties of Plants (UPOV), even after the termination of the breeder’s right (Article 17 CPVRR).
Since 2005, the European Union is party to the International Convention for the Protection of New Varieties of Plants (UPOV Convention), which has become an integral part of the Union’s legal order. Under Article 20(1) UPOV Convention, the variety shall be designated by a denomination which will be its generic designation. Furthermore, each Contracting Party shall ensure that no rights in the designation registered as the denomination of the variety shall hamper the free use of the denomination in connection with the variety, even after the termination of the breeder’s right.
Therefore, both the CPVRR and the UPOV Convention impose the obligation to use the variety denominations in order to commercialize protected varieties or varieties whose protection has ended.
The use of variety denominations allows the interested person to know the variety it is using or purchasing and possibly the breeder and the origin of the variety. The
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obligation to use the variety denominations contributes to the regulation of the market and to the safety of transactions in the agricultural and food sector, avoiding potential misleading of the public and counterfeiting. It is therefore a matter of public interest and public safety to use the adequate variety denomination in respect of a variety.
According to Art. 18(2) CPVRR, a third party may hamper the free use of a variety denomination only if the rights in respect of a designation that is identical with the variety denomination were granted before that variety denomination was designated pursuant to Article 63 CPVRR.
A contrario, Art. 18(2) CPVRR implies that no exclusive rights should be granted in respect of a designation that is identical with the variety denomination, after such variety denomination has been designated pursuant to Art. 63 CPVRR.
OHIM therefore considers that registration of a CTM that would hamper the free use of a variety denomination after the grant of a CPVR to the corresponding variety is contrary to public policy.
As a c onsequence, CTM applications consisting of or containing signs which, if registered, would lead to an undue monopolisation of a variety denomination designating a variety protected by a CPVR or a variety that is no longer protected by a CPVR, shall be objected to on the grounds of being contrary to public policy under Article 7(1)(f) CTMR, in relation to Article 18 (2) CPVRR, which provides for the free use by third parties of the denomination of a plant variety in connection with the variety itself (i.e. descriptive use).
The Community Plant Variety Office (CPVO), based in Angers (France), is the European Union’s agency responsible for implementing a system for the protection of plant variety rights.
The CPVO maintains a register of protected plant varieties. The protected varieties and the varieties whose CPVR was terminated can be searched, based on their variety denomination and/or other search criteria, through the CPVO Variety Finder1, available in the Office’s intranet, which should be consulted by examiners as a reference tool whenever the type of goods and/or services covered by the CTM application so dictate. In particular, whenever the specification of a CTM application refers to live plants, agricultural seeds, fresh fruits, fresh vegetables or equivalent wordings, the examiner must verify that the term or terms making up the trade mark do not coincide with a registered variety denomination or with the denominat ion of a var iety for which protect ion has been s urrendered, terminated or has expired. The examiner will check the CPVO database in order to ascertain whether the term or terms making up the CTM application coincide with a variety denomination already entered in the abovementioned CPVO register. The search should be confined to variety denominations registered for the European Union.
If the check shows that the CTM applied for consists of or contains an identical reproduction of the variety denomination (be it in a word or in a figurative mark), the examiner must raise an objection under Article 7(1)(f) CTMR in respect of the relevant plant, seeds and fruits, as well as the dried, preserved and frozen fruits, since registration of a CTM consisting of a variety denomination entered in the abovementioned EU register is contrary to public policy. If, for example, a CTM applied
1 http://www.cpvo.europa.eu/main/en/home/databases/cpvo-variety-finder
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for ‘flowers’ contains a VD for a kind of rose, the list of goods will have to be limited in order to exclude ‘roses’. Moreover, if more than one VD appear in a CTM applied for – say, a VD for ‘apples’ and another one for ‘strawberries’−, the list of goods will have to be limited in order to exclude the goods covered by each VD, i.e., apples and strawberries.
Finally, where a plant variety denomination is used in the market but has not been registered or published in the CPVO, or in case of national VD, Articles 7(1)(c) and 7(1)(d) might be applicable (see sections 2.3 and 2.4).
2.6.2 Accepted principles of morality
This objection concerns subjective values, but these must be applied as objectively as possible by the examiner. The provision excludes registration as Community trade marks of blasphemous, racist or discriminatory words or phrases, but only if that meaning is clearly conveyed by the mark applied for in an unambiguous manner; the standard to be applied is that of the reasonable consumer with average sensitivity and tolerance thresholds (judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’, para. 21).
It is normally necessary to consider the goods and services for which registration of the mark is sought, since the relevant public may be di fferent for different goods and services and, therefore, may have different thresholds with regard to what is clearly unacceptably offensive. For example, as the Grand Board held in its decision of 06/07/2006, R 0495/2005-G – ‘SCREW YOU’, para. 29, ‘a person who is sufficiently interested in [sex toys] to notice the trade marks under which they are sold is unlikely to be offended by a t erm with crude sexual connotations.’ Nevertheless, although the Court has held that the applied-for goods and services are important for identifying the relevant public whose perception needs to be examined, it has also made it clear that the relevant public is not necessarily only that which buys the goods and s ervices covered by the mark, since a br oader public than just the consumers targeted may encounter the mark (judgment of 05/10/2011, T-526/09, ‘Paki’, paras 17 and 18 respectively). Accordingly, the commercial context of a mark, in the sense of the public targeted by the goods and services, is not always the determining factor in whether that mark would breach accepted principles of morality (judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’, para. 24). See also decision of 15/03/2013, R 2073/2012-4, − ‘CURVE’, paras 17-18 (T-266/13 – pending).
It is not only signs with ‘negative’ connotation that can be offensive. The banal use of some signs with a highly positive connotation can also be offensive (e.g. terms with a religious meaning or national symbols with a spiritual and political value, like ATATURK for the European general public of Turkish origin (decision of 17/09/2012, R 2613/2011-2 – ATATURK, para. 31)).
There need not be illegality for this part of Article 7(1)(f) CTMR to be applied: there are words or signs that would not lead to proceedings before the relevant authorities and courts, but that are sufficiently offensive to the general public to not be registered as trade marks (decision of 01/09/2011, R 0168/2011-1 – ‘fucking freezing! by TÜRPITZ’, para. 16). Furthermore, there is an interest in ensuring that children and young people, even if they are not the relevant public of the goods and services in question, do not encounter offensive words in shops that are accessible to the general public. Dictionary definitions will in principle provide a pr eliminary indication as to whether the word in question carries an offensive meaning in the relevant language (decision of
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01/09/2011, R 0168/2011-1 – ‘fucking freezing! by TÜRPITZ’, para. 25) but the key factor must be the perception of the relevant public in the specific context of how and where the goods or services will be encountered.
On the other hand, the Board of Appeal took the view that the word KURO did not convey to the Hungarian public the offensive meaning of the word ‘kúró’ (meaning ‘fucker’ in English), since the vowels ‘ó’ and ‘ú’ are separate letters which are distinct from ‘o’ and ‘ u’ and they are pronounced differently (decision of 22/12/2012, R 482/2012-1 – ‘kuro’, paras 12 et seq.).
There is a clear risk that the wording of Article 7(1)(f) CTMR could be applied subjectively so as to exclude trade marks that are not to the examiner’s personal taste. However, for the word(s) to be obj ectionable, it (they) must have a c learly offensive impact on people of normal sensitivity (judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’, para. 21).
The concept of morality in Article 7(1)(f) CTMR is not concerned with bad taste or the protection of individuals’ feelings. In order to fall foul of Article 7(1)(f) CTMR, a trade mark must be per ceived by the relevant public, or at least a s ignificant part of it, as going directly against the basic moral norms of the society.
There is no need to establish that the applicant wants to shock or insult the public concerned; the objective fact that the CTM applied for might be seen as such a shock or insult is sufficient (decision of 23/10/2009, R 1805/2007-1 – ‘Paki’, para. 27, confirmed by judgment of 05/10/2011, T-526/09, ‘Paki’ para. 20 et seq.).
Finally, application of Article 7(1)(f) CTMR is not limited by the principle of freedom of expression (Article 10 European Convention on Human Rights) since the refusal to register only means that the sign is not granted protection under trade mark law and does not stop the sign being used – even in business (judgment of 09/03/2012, T-417/10, ‘HIJOPUTA’, para. 26).
Examples of rejected CTMAs (public policy and/or morality)
Sign Relevant Consumer Public policy / morality Case No
BIN LADIN General consumer
Morality & public policy – the mark applied for will be understood by the general public as the name of the leader of the notorious terrorist organisation Al Qaeda; terrorist crimes are in breach of public order and moral principles (para. 17).
R 0176/2004-2
CURVE 300 General consumer Morality – ‘CURVE’ is an offensive and vulgar word in Romanian (it means ‘whores’).
R 0288/2012-2
CURVE General consumer Morality – ‘CURVE’ is an offensive and vulgar word in Romanian (it means ‘whores’).
R 2073/2012-4 (T-266/13 –
pending)
General consumer Morality – ‘fucking’ is an offensive andvulgar word in English. R 0168/2011-1
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Sign Relevant Consumer Public policy / morality Case No
General consumer Morality – ‘HIJOPUTA’ is an offensiveand vulgar word in Spanish. T-417/10
General consumer
Public policy – the Hungarian criminal code bans certain ‘symbols of despotism’, including the hammer and sickle as well as the 5-pointed red star symbolising the former USSR. This law is not applicable by reason of its normative value but rather as evidence of the perception of the relevant public (paras 59-63).
T-232/10
PAKI General consumer Morality– ‘PAKI’ is a racist insult inEnglish. T-526/09
SCREW YOU General consumer (for products other than sex products)
Morality – a substantial proportion of ordinary citizens in Britain and Ireland would find the words ‘SCREW YOU’ offensive and objectionable (para. 26).
R 0495/2005-G
FICKEN General consumer Morality - ‘FICKEN’ is an offensive and vulgar word in German (it means ‘fuck’).
T-52/13
ATATURK
Average consumer in the European general public of Turkish origin
Banal use of signs with a highly positive connotation can be offensive under Article 7(1)(f). ATATURK is a national symbol with a s piritual and political value for the European general public of Turkish origin.
R 2613/2011-2
Examples of accepted CTMAs
Sign Relevant Consumer Public policy / morality Case No
KURO General consumer
The fact that a foreign term, name or abbreviation displays certain similarities with an offensive word (like kúró) is not in itself sufficient reason to refuse the CTM applied for (para. 20). Hungarian vowels ‘ò’ and ‘ù’ are clearly different from ‘o’ and ‘u’ without accent. Furthermore, Hungarian words never end with ‘o’ without accent (paras 15- 18).
R 482/2012-1
SCREW YOU General consumer(for sex products)
A person entering a sex shop is unlikely to be offended by a trade mark containing crude, sexually charged language (para. 26).
R 495/2005-G
DE PUTA MADRE General consumer
Although ‘puta’ means ‘whore’ in Spanish, the expression DE PUTA MADRE means ‘very good’ in Spanish (slang).
CTM 3 798 469 CTM 4 781 662 CTM 5 028 477
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2.7 Deceptiveness: Article 7(1)(g) CTMR
2.7.1 Examination of the deceptive character
Article 7(1)(g) CTMR provides that marks which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services, shall not be registered.
According to the case-law relating to Article 3(1)(g) of the First Trademark Directive (TMD), the wording of which is identical to that of Article 7(1)(g) CTMR, the circumstances for refusing registration referred to in Article 7(1)(g) CTMR presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see judgment of 30/05/2006, C-259/04, ‘Elizabeth Emanuel’, para. 47 and the case-law cited therein).
Pursuant to the above, the Office, as a matter of practice, makes the twin assumptions that:
1. There is no r eason to assume that a t rade mark is intentionally applied for to deceive customers. No deceptiveness objection should be r aised if a non- deceptive usage of the mark is possible vis-à-vis the goods and services specified: i.e. an assumption is made that non-deceptive use of the sign will be made if possible,
2. The average consumer is reasonably attentive and s hould not be regarded as particularly vulnerable to deception. An objection will generally only be raised where the mark leads to a clear expectation which is patently contradictory to, for instance, the nature or quality or geographical origin of the goods.
An objection should be raised when the list of goods/services is worded in such a way that a non-deceptive use of the trade mark is impossible.
The following are two examples of marks which were found to be deceptive with regard to all or part of the claimed goods2.
Mark and goods Reasoning Case
LACTOFREE
for lactose in Class 5
The nature of the sign would immediately lead the relevant consumer to believe that the product in question, i.e. ‘lactose’, does not contain any lactose. It is clear that if the good being marketed under the sign ‘LACTOFREE’ is actually lactose itself, then the mark would be clearly misleading. NB: The mark is also objectionable under 7(1)(c)
R 892/2009-1
2 These examples address only the issue of whether a deceptiveness objection should be raised or not. This paragraph does not deal with possible objections under other absolute grounds for refusal. Therefore, the possibility that a gi ven trade mark might appear to be prima facie objectionable under Article 7(1)(b) and/or (c) CTMR (or other provisions for that matter) is not contemplated here.
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Mark and goods Reasoning Case
TITAN (German word for ‘titanium’)
for portable and relocatable buildings; modular portable building units for use in the construction of prefabricated relocatable buildings; prefabricated relocatable buildings constructed of modular portable building units, none of the aforesaid goods being made from or including titanium in Classes 6 and 19.
The applicant, during the appeal proceedings, in an at tempt to overcome an ob jection of descriptiveness, offered to restrict the specifications in both classes by adding, at the end, the indication none of the aforesaid goods being made from or including titanium. The Board held that such a restriction, if accepted, would have had the effect of rendering the trade mark deceptive from the standpoint of the German- speaking public, as they would assume that the goods were made from titanium when in reality this is not the case.
R 789/2001-3
An objection should be raised when the list of goods/services, worded in a detailed manner, contains goods/services in respect of which a n on-deceptive use is impossible.
In the (invented) case of a trade mark ‘KODAK VODKA’ for vodka, rum, gin, whisky, an objection should be raised in respect of the specific goods in respect of which a non- deceptive use of the trade mark is not possible, i.e. rum, gin, whisky. Such cases are substantially different from those (see here below) where broad wording/categories are used and where a non-deceptive use of the sign is possible. For example, no objection would be raised in respect of ‘KODAK VODKA’ filed for alcoholic beverages, since this broad category includes vodka, in respect of which the trade mark is not deceptive.
No objection should be raised when the list of goods/services is worded in such a broad way that a non-deceptive use is possible.
When wide categories in the list of goods/services are used, the question arises whether an objection should be raised in relation to an entire category due to the mark being deceptive in relation to only some goods/services falling within that category. The policy of the Office is not to object in these circumstances. The examiner should assume that the mark will be used in a non-deceptive manner. In other words they will not object on the basis of deceptiveness wherever they can pinpoint (in a category) a non-deceptive use.
Therefore, the rule is that Article 7(1)(g) CTMR does not apply if the specification consists of wide categories which include goods/services for which use of the trade mark would be non-deceptive. For example, in the case of a trade mark ‘ARCADIA’ applied for ‘wines’, an objection under Article 7(1)(g) CTMR would not be appropriate, since the broad category ‘wines’ also covers wines originating from Arcadia (and since Arcadia – which identifies a wine-producing region in Greece – is not a protected geographical indication at Community level, there is no obligation on the part of the applicant to restrict the specification only to wines originating from Arcadia).
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2.7.2 Market reality and consumers’ habits and perceptions
When assessing if a given trade mark is deceptive or not, account should be taken of market reality and consumers’ habits and perceptions.
In order to evaluate the deceptiveness of a t rade mark under Article 7(1)(g) CTMR, account must be t aken of the reality of the market (i.e. the way the goods and services are normally distributed/held out for sale/purchased/rendered, etc.) as well as of the consumption habits and perception of the relevant public, which is normally composed of reasonably well-informed, observant and circumspect persons.
For example, in the (invented) trade mark ‘ELDORADO CAFÈ LATINO’ covering coffee, chocolate, preparations for use as substitutes for chocolate; tea, cocoa; sugar, rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice in Class 30, the examination should lead to the following conclusions:
• An objection under Article 7(1)(g) CTMR would be j ustified in relation to preparations for use as substitutes for coffee, artificial coffee, chicory, chicory flavourings because use of the mark on these goods would be nec essarily deceptive. One would assume one was purchasing coffee and this would not in fact be the case.
• An objection under Article 7(1)(g) CTMR would also be j ustified in respect of chocolate, tea and cocoa (assuming that those products do not contain coffee). Given that such goods may be sold in packaging quite similar to those used for coffee, and are often bought rather hastily, it is likely that many consumers will not indulge in analysing the wording on t he packaging, but will choose these goods from the shelf in the (erroneous) belief that they are coffee.
• However, as far as coffee is concerned, there is no ‘clear contradiction’ between the claim for coffee and the wording ‘CAFÈ LATINO’, since the general category coffee may include also coffee originating from Latin America. Hence no Article 7(1)(g) CTMR objection arises for the category of coffee itself. The same logic applies in relation to goods which could be flavoured with coffee (such as chocolate, ices and pastry and confectionery) – an assumption of non-deceptive use should be made, and no contradiction between the said wording and the goods necessarily arises.
• Finally, for the remainder of the goods are concerned, i.e. honey, bread, vinegar etc., the presence of the wording ‘CAFÈ LATINO’ will not give rise to any expectations at all. In relation to such goods, this wording will be seen as clearly non-descriptive and hence there is no potential for actual deception. In the ‘real’ market, coffee is not displayed on the same shelves or shop sections as bread, honey or vinegar. Furthermore, the goods in question have a different appearance and taste and are normally distributed in different packaging.
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2.7.3 Trade marks with geographical connotations relating to the location of the applicant or the place of origin of the goods/services
When it comes to trade marks having certain ‘geographical’ connotations relating to the location of the applicant or the place of origin of the goods/services, the following should be noted.
As a general rule, the Office will not raise an objection on deceptiveness based upon the applicant’s geographical location (address). Indeed, such a geographical location bears, in principle, no relation to the geographical origin of the goods and services, i.e. the actual place of production/offering of the goods and services covered by the mark.
As an example, a figurative mark containing the words MADE IN USA for clothing in Class 25 filed by a c ompany having its seat in Sweden would not be open t o an objection under Article 7(1)(g) CTMR. In such cases, the Office assumes a non - deceptive use of the mark on the part of the proprietor.
Deceptiveness would nonetheless arise in the hypothetical event that a figurative mark containing the words MADE IN USA, filed by a company having its seat in the United States of America, were filed for a specifically limited list of goods: clothing articles made in Vietnam – although, in practice, such cases seem unlikely to arise.
In certain cases, the sign could evoke in the consumers’ minds some impressions/expectations as to the geographical origin of the goods or of the designer thereof and which may not correspond to reality. For example, trade marks such as ALESSANDRO PERETTI or GIUSEPPE LANARO (invented examples) covering clothing or fashion goods in general may suggest to the relevant public that these goods are designed and produced by an Italian stylist, which may not be the case.
However, such a c ircumstance is not sufficient per se to render those marks misleading. Indeed, ‘false impressions/expectations’ caused by the trade mark are not tantamount to actual deceptiveness when the sign is merely evocative. In such cases there is no clear contrast between the impression/expectation a s ign may evoke and the characteristics/qualities of the goods and services it covers.
2.7.4 Trade marks making reference to an ‘official’ approval, status or recognition
It should be noted that, under the Office practice, trade marks which could evoke official approval, status or recognition without giving the firm impression that the goods/services issue from, or are endorsed by, a public body or statutory organisation, are acceptable.
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The following are two examples where the marks concerned, although allusive or suggestive, were not found to be deceptive:
Mark and services Reasoning Case
THE ECOMMERCE AUTHORITY
for business services, namely, providing rankings of and other information regarding electronic commerce vendors, goods and services via the Internet in Class 35 and providing research and advisory services and information in the area of electronic commerce in Class 42.
The Board found that the trade mark was not deceptive, as it did not convey the firm impression that the services issue from a governmental or statutory organisation (the Board, however, confirmed the refusal under Article 7(1)(b) on the grounds that the mark lacked distinctive character, as it would be perceived by the English- speaking public merely as a s imple statement of self-promotion which claims something about the level of competence of the service providers).
R 803/2000-1
for, among other things, teaching of ski in Class 41.
The Board held that the French consumers would understand that the trade mark alludes to the fact that the services are supplied in France, by a French teaching centre, and relate to learning skiing ‘in the French way’. It added that the French public had no reason to believe, simply because of the presence of a tricolour logo (not being a r eproduction of the French flag), that the services are supplied by public authorities or even authorised by such authorities.
R 235/2009-1
confirmed by the General Court in T-41/10
2.7.5 Relation with other CTMR provisions
The above explanations aim to define the scope of application of Article 7(1)(g) CTMR. Although addressed in their respective sections of the Guidelines, in the context of absolute grounds examination and of possible deceptiveness scenarios, the following provisions may be of particular relevance.
Article 7(1)(b) and (c) CTMR
Under the current practice of the Office, if, following a descriptiveness and/or lack of distinctiveness objection, the CTM applicant proposes a l imitation in an attempt to overcome it, and provided the proposed limitation meets the prescribed requirements (unconditional request and suitably worded), the original list of goods and/or services will be limited accordingly. However, if the limitation in question (albeit overcoming the initial objection) has the effect of rendering the trade mark applied for deceptive, then the examiner will have to raise a deceptiveness objection under Article 7(1)(g) CTMR. The following example illustrates such a scenario:
The trade mark ‘ARCADIA’ was originally applied in respect of wines, spirits (beverages) and liqueurs in Class 33. The examiner objected because the trade mark was descriptive of the geographical origin of wines, to the extent that Arcadia is a Greek region known for its wine production (however, it should be noted that Arcadia is not a protected geographical indication). The applicant offered to limit the specification of goods to exclude wines made in Greece or, if preferred, to include only wines
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produced in Italy. The examiner held that the proposed limitation would render the trade mark deceptive since it would convey false information as to the origin of the goods. On appeal, the Board confirmed the reasoning of the examiner (see decision of 27/03/2000, R 246/1999-1 – ‘ARCADIA’, para. 14).
Article 7(1)(h) CTMR
This provision excludes from registration those CTMs which consist of/contain flags and other symbols of States, on the one hand, and flags and other symbols of international intergovernmental organisations on the other, which are protected according to Article 6ter of the Paris Convention and the inclusion of which in the trade mark has not been expressly authorised by the competent authorities. When it comes to the flags and other symbols of international intergovernmental organisations, the problem arises when the public might erroneously believe that, in view of the goods/services concerned, there is a connection between the CTM applicant and the international organisation whose flag or symbol appears in the CTM.
Articles 7(1)(j) and (k) CTMR (protected geographical indications)
These provisions exclude trade marks for wines or spirits, on the one hand, and other agricultural foodstuffs on the other, which contain or consist of protected geographical indications (PGIs) or protected geographical denominations (PDOs) where the list of the respective goods does not specify that they have the purported geographical origin. Under the directly applicable rules of the corresponding specific EU Regulations underlying those provisions, the Office must object to CTM applications where the protected geographic indication is misused or which convey any other false or misleading indication as to the provenance, origin, nature or essential qualities of the products concerned.
Article 17(4) CTMR (transfer)
Under this provision, where it is clear from the transfer documents that, because of the transfer, the CTM is likely to mislead the public concerning the nature, quality or geographical origin of the goods or services in respect of which it is registered, the Office will not register the transfer unless the successor agrees to limit (the) registration of the CTM to goods or services in respect of which it is not likely to mislead (see also Part E. Section 3. Chapter 1. Point 3.6).
Article 51(1)(c) CTMR (grounds for revocation)
Whereas in examining a trade mark under Article 7(1)(g) CTMR an examiner must confine the assessment to the meaning conveyed by the sign vis-à-vis the goods/services concerned (meaning that the way the sign is actually used is of no relevance), under Article 51(1)(c) CTMR the way the sign is used is decisive, given that according to this provision a r egistered CTM may be dec lared revoked if, in consequence of the use made of the sign by its proprietor or with their consent, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods/services concerned.
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2.8 Protection of flags and other symbols – Articles 7(1)(h) and (i) CTMR
The objective of Article 6ter Paris Convention (PC) is to exclude the registration and use of trade marks that are identical or in some way similar to state emblems or the emblems, abbreviations and names of international intergovernmental organisations.
‘The reasons for this are that such registration or use would violate the right of the State to control the use of symbols of its sovereignty and furthermore might mislead the public with respect to the origin of goods to which such marks would be appl ied.’ (G.H.C. Bodenhausen, Guide to the application of the Paris Convention for the Protection of Industrial Property as revised in Stockholm in 1967, page 96.). Origin in this regard must be understood as coming from or endorsed by the relevant administration, not as being produced in the territory of that state or, in the case of the EU, in the EU.
Article 7(1)(h) therefore refers to the following symbols:
• Armorial bearings, flags, other emblems, official signs and hallmarks that belong to states and have been communicated to WIPO, although, in the case of flags, such communication is not mandatory.
• Armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations that have been communicated to WIPO, with the exception of those already the subject of international agreements for ensuring their protection (see, for example, the Geneva Convention for the Amelioration of the Condition of the Wounded and Sick in Armed Forces of 12/08/1949, Article 44 of which protects the emblems of the Red Cross on a white ground, the words ‘Red Cross’ or ‘Geneva Cross’, and analogous emblems).
The Court of Justice has made clear that these provisions can be applied regardless of whether the application concerns goods or services, and that the scopes of application of Article 7(1)(h) and 7 (1)(i) CTMR are analogous. Both articles should therefore be assumed to grant at least an equivalent level of protection, since they pursue the same objective, that is, to prohibit the use of specific emblems of public interest without the consent of the competent authorities (see judgment of 16/07/2009 in Joined Cases C-202/08 P and C-208/08 P, ‘RW feuille d’érable’, paras 78, 79 and 80).
2.8.1. Protection of armorial bearings, flags, other state emblems, official signs and hallmarks indicating control and warranty under Article 7(1)(h) CTMR – Article 6ter(1)(a) and (2) PC
In accordance with Article 6ter(1)(a) PC, the registration, either as a trade mark or as an element thereof, of armorial bearings, flags, and ot her state emblems of the countries of the Union (i.e. the countries to which the PC applies), or of official signs and hallmarks adopted by states as an indication of control and warranty, as well as any imitation from a heraldic point of view will be refused if no authorisation has been granted by the competent authority.
The members of the World Trade Organization (WTO) enjoy the same protection pursuant to Article 2(1) TRIPs, according to which members of the WTO must comply with Articles 1 to 12 and 19 of the Paris Convention.
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Therefore, to fall foul of Article 7(1)(h) CTMR, a trade mark:
• must consist solely of an identical reproduction or a ‘ heraldic imitation’ of the abovementioned symbols;
• must contain an identical reproduction or a ‘heraldic imitation’ of the abovementioned symbols.
Furthermore, the competent authority must not have given its authorisation.
Armorial bearings consist of a des ign or image depicted on a s hield. See the following example.
Bulgarian armorial bearing – 6ter database No BG2
State flags usually consist of a distinctive rectangular design that is used as the symbol of a nation. See the following example.
Croatian flag
The expression ‘other State emblems’ is rather vague. It usually indicates any emblems constituting the symbol of the sovereignty of a State, including the escutcheons of reigning houses as well as emblems of States included in a federative state that is party to the Paris Convention. See the following example.
Danish state emblem – 6ter database No DK3
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The purpose of official signs and hallmarks indicating control and warranty is to certify that a state or an organisation duly appointed by a state for that purpose has checked that certain goods meet specific standards or are of a given level of quality. There are official signs and hallmarks indicating control and warranty in several states for precious metals or products such as butter, cheese, meat, electrical equipment, etc. Official signs and hallmarks may also apply to services, for instance those relating to education, tourism, etc. See the following examples.
Spanish official sign for export promotion No ES1
UK hallmark for platinum articles No GB 40
It must be not ed that Article 6ter PC does not protect the abovementioned symbols against all imitations, only ‘heraldic imitations’. The notion of ‘heraldic imitation’ must be construed in the sense that ‘… the prohibition of the imitation of an emblem applies only to imitations of it from a heraldic perspective, that is to say, those which contain heraldic connotations which distinguish the emblem from other signs. Thus, the protection against any imitation from a heraldic point of view refers not to the image as such, but to its heraldic expression. It is therefore necessary, in order to determine whether the trade mark contains an imitation from a heraldic point of view, to consider the heraldic description of the emblem at issue’ (see CJEU judgment of 16/07/2009 in Joined Cases C-202/08 P and C-208/08 P, para. 48).
Consequently, when making a comparison ‘from a heraldic point of view’ within the meaning of Article 6ter PC, account must be t aken of the heraldic description of the emblem concerned and not any geometric description of the same emblem, which is by nature much more detailed. Indeed, if the geometric description of the emblem were taken into account, this ‘… would lead to the emblem being refused protection under Article 6ter(1)(a) of the Paris Convention in the event of any slight discrepancy between the two descriptions. Secondly, the case of graphic conformity with the emblem used by the trade mark is already covered by the first part of that provision, so that the expression “any imitation from a heraldic point of view” must be different in its scope’ (see ibidem, para. 49).
For example, an examiner should take into account the heraldic description of the
European emblem – ‘on an azure field a circle of twelve golden mullets, their points not touching’ – and not its geometrical description: ‘the emblem is in the form of a blue rectangular flag of which the fly is one and a hal f times the length of the hoist. Twelve gold stars situated at equal intervals form an invisible circle whose centre
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is the point of intersection of the diagonals of the rectangle. The radius of the circle is equal to one third of the height of the hoist. Each of the stars has five points which are situated on the circumference of an invisible circle whose radius is equal to one eighteenth of the height of the hoist. All the stars are upright — that is to say, with the one point vertical and two points in a straight line at right angles to the mast. The circle is arranged so that the stars appear in the position of the hours on the face of a clock. Their number is invariable.’
Furthermore, armorial bearings and other heraldic emblems are drawn on the basis of a relatively simple description of the layout and background colour that also lists the different elements (such as a lion, an eagle, a flower, etc.) constituting the emblem and gives information on their colour and position within the emblem. However, a heraldic description does not give details of the design of the emblem and the specific elements that constitute it, with the result that a number of artistic interpretations of one and the same emblem on the basis of the same heraldic description are possible. Although there may be di fferences in detail between each of those interpretations, the fact remains that they will all be i mitations ‘from a h eraldic point of view’ of the emblem concerned (T-215/06, 28/02/2008, paras 71 and 72).
It follows that a trade mark that does not exactly reproduce a state emblem can nevertheless be covered by Article 6ter(1)(a) PC where it is perceived by the relevant public as imitating such an emblem. So far as the expression ‘imitation from a heraldic point of view’ in that provision is concerned, a difference detected by a s pecialist in heraldic art between the trade mark applied for and the State emblem will not necessarily be perceived by the average consumer who, in spite of differences at the level of certain heraldic details, can see in the trade mark an imitation of the emblem in question (see CJEU judgment of 16/07/2009 in Joined Cases C-202/08 P and C-208/08 P, paras 50 and 51).
Furthermore, for Article 6ter(1)(a) PC to apply, it is not necessary to examine the overall impression produced by the mark by taking into account also its other elements (words, devices, etc.).
Indeed, Article 6ter(1)(a) PC applies not only to trade marks but also to elements of marks that include or imitate state emblems. It is sufficient, therefore, for a single element of the trade mark applied for to represent such an emblem or an i mitation thereof for that mark to be refused registration as a Community trade mark (see also judgment of 21/04/2004, T-127/02, ‘ECA’, paras 40 to 41).
2.8.1.1 Examination of marks consisting of or containing a state flag
There are three steps to examining marks that consist of or contain a state flag:
1 Find an official reproduction of the protected flag. 2 Compare the flag with the mark applied for. Does the mark applied for consist
solely of or contain an identical reproduction of the flag (b)? Or does the mark consist solely of or contain a heraldic imitation of that flag (b)?
3 Check whether there is any evidence on f ile to show that registration of the flag has been authorised by the competent authority.
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1 Find the protected flag
As seen above, states are not obliged to include flags in the list of emblems to be communicated to WIPO. This is because flags are supposed to be well known.
Nevertheless, some flags have been included in the list, which is accessible via the ‘Article 6ter Structured Search’ tool made available by WIPO. Otherwise, examiners should refer to the official websites of the relevant governments, and to encyclopaedias and/or dictionaries for an accurate reproduction of the state flag.
2 Compare the flag with the mark applied for
(a) Does the mark applied for consist solely of or contain an identical reproduction of a flag? If so, proceed to the next step.
(b) Does the mark consist solely of or contain a heraldic imitation of a flag?
In the case of flags, the mark must be compared with the heraldic description of the flag at issue. For example, in Case T-41/10 of 05/05/2011 (ESF Ecole du ski français), the French flag was described as a rectangular or square flag made up of three equal vertical bands of the colours blue, white and red.
The examiner will use the heraldic description, which gives details of the layout and background colour, lists the different elements (such as a lion, an eagle, a flower, etc.) that constitute the flag and specifies the colour, position and proportions of the latter to reach a conclusion on heraldic imitation.
As a rule, the flag and the mark (or the part of the mark in which the flag is reproduced) must be quite similar in order for a heraldic imitation to be found.
See the following example where a ‘heraldic imitation’ of a flag was found:
Flag Refused CTMA
Swiss flag CTMA 8 426 876
The use of a flag in black and white may still be considered a heraldic imitation when the flag consists of or contains unique heraldic features. For example, the black-and- white representation of the Canadian flag in the following example is considered to be a heraldic imitation.
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Flag Refused CTMA
Canadian flag CTMA 2 793 495
On the other hand, for flags consisting only of stripes of three colours (whether vertical or horizontal) a black-and-white reproduction will not be considered a heraldic imitation because flags of that kind are quite common.
As seen above, the presence of other elements in the marks is irrelevant.
If an element is a different shape from a flag (e.g. circular), it is not considered to be a heraldic imitation. Other different shapes that are not heraldic imitations are shown in the following examples:
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Flag Accepted CTMA
CTMA 5 851 721
Italian flag CTMA 5 514 062
Swiss flag CTMA 6 015 473
Finnish flag CTMA 7 087 281
Flag Accepted CTMA
Swedish flag CTMA 8 600 132
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Danish flag CTMA 8 600 173
French flag CTM 4 624 987, T-41/10
The distinction between the cases examined in CTMA No 8 426 876 (objected to) and CTMA No 6 015 473 (not objected to) should be noted. In the latter, it was decided not to object because of the number of changes: a change in the shape (from a square to a circle), a change in proportions (the white lines of the cross in CTMA No 6 015 473 are longer and thinner than in the flag) and a change of colour, since the cross in CTMA No 6 015 473 has a shadow.
3 Check whether registration has been authorised
Once the examiner has found that the mark consists of or contains a flag or a heraldic imitation thereof, he/she must check whether there is any evidence on file to show that the registration has been authorised by the competent authority.
Where there is no s uch evidence, the examiner will object to the registration of the mark applied for. The objection will reproduce the official flag in colour and indicate the source of the reproduction.
Such an obj ection can only be waived if the applicant produces evidence that the competent authority of the state concerned has authorised registration of the mark.
Extent of the refusal: In the case of state flags, trade marks that fall foul of Article 7(1)(h) CTMR must be refused for all goods and services applied for.
2.8.1.2. Examination of marks consisting of or containing armorial bearings and other state emblems
The same steps mentioned in relation to State flags are followed also when examining marks that consist of or contain armorial bearings or other state emblems.
Nevertheless, to be p rotected, armorial bearings and ot her state symbols must be contained in ‘the list of armorial bearings and state emblems’. This list is accessible via
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the ‘Article 6ter Structured Search’ tool made available by WIPO at https://www.wipo.int/ipdl/en/6ter/.
The WIPO Article 6ter database gives details of written elements and c ontains references to the categories of the Vienna classification code. Therefore, the best way to search is by using that code.
In these cases, the protected symbol, which very often consists of or contains recurring devices such as crowns, unicorns, eagles, lions, etc., and the mark (or the part of the mark in which the symbol is reproduced) must be closely similar.
For background on t his and her aldic descriptions, please see the explanation in paragraph 2.8.1.1 ‘Examination of marks consisting of or containing a state flag’ above.
Here are two examples where a ‘heraldic imitation’ of a state symbol was found:
Protected emblem Refused CTMA
British emblem: 6ter Number: GB4 CTMA 5 627 245, T-397/09
.
Canadian emblem: 6ter Number: CA2 CTMA 2 785 368 (CJEU C-202/08)
The General Court noted that the supporters contained in CTMA No 5 627 245 were almost identical to those in the emblem protected under sign GB4. The only difference lay in the crowns in both signs. However, the GC ruled that any difference between the mark and the state emblem detected by an expert in heraldry would not necessarily be perceived by the average consumer who, despite some differences in heraldic details, can see in the mark an imitation of the emblem. Therefore, the GC concluded that the Board was right to find that the mark applied for contained an imitation from a heraldic perspective of emblem GB4, protected under Article 6ter of the Paris Convention (Case T-397/09, paras 24-25).
On the other hand, it was considered that the following mark (CTM No 6 832 571)
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did not contain a heraldic imitation of the abovementioned British emblem. Indeed, as seen above, lions and unicorns are commonly used in this kind of symbol.
It should also be noted that black-and-white reproductions of armorial bearings and other state emblems may still be considered heraldic imitations when the protected symbol consists of or contains unique heraldic features (see the example of the Canadian emblem).
Furthermore, the presence of other elements in the rejected marks is irrelevant.
There is even a heraldic imitation when the protected symbol is only partially reproduced as long as what is partially reproduced represents the significant element(s) of the protected symbol and (a) unique heraldic feature(s).
The following is an example of a partial heraldic imitation because the significant element of the protected symbol, the eagle with the arrows over the emblem, is a unique heraldic device and its heraldic characteristics are imitated in the CTMA:
Protected emblem Refused CTMAt
Emblem of the Justice Department of the USA; 6ter Number: US40 CTMA 4 820 213
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In the following example there is no heraldic imitation of a state emblem:
Protected emblem Accepted CTMA
6ter number: AT10 CTMA 8 298 077
CTMA No 8 298 077 is not a heraldic imitation of the Austrian symbol because its shape is different and the lines inside the white cross in the Austrian symbol are not present in the CTMA.
Once the examiner has found that a mark reproduces a s ymbol (or is a her aldic imitation thereof), they must check whether there is any evidence on file to show that registration has been authorised by the competent authority.
Where there is no s uch evidence, the examiner will object to the registration of the mark applied for. The objection will reproduce the protected symbol, quoting its 6ter number.
Such an obj ection can only be waived if the applicant produces evidence that the competent authority of the state concerned has authorised registration of the mark.
Extent of the refusal: In the case of state symbols, trade marks that fall foul of Article 7(1)(h) CTMR must be refused for all goods and services applied for.
2.8.1.3 Examination of marks consisting of or containing official signs and hallmarks indicating control and warranty
The steps to be followed by the examiner are the same as for the state flags, protected armorial bearings and other state emblems mentioned above.
However, the extent of the refusal is limited. Trade marks that consist of or contain an identical reproduction / heraldic imitation of official signs and hal lmarks indicating control and warranty will be refused only for goods that are identical or similar to those to which said symbols apply (Article 6ter(2) PC).
2.8.2. Protection of armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations under Article 7(1)(h) CTMR – Article 6ter(1)(b) and (c) PC
In accordance with Article 6ter(1)(b) and (c) PC, the registration, either as a trade mark or as an element thereof, of armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations (of which one or more countries
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of the Paris Union is / are member(s)) or any imitation from a heraldic point of view will be refused if no authorisation has been granted by the competent authority.
The members of the WTO enjoy the same protection pursuant to Article 2(1) TRIPs, according to which members of the WTO must comply with Articles 1 to 12 and 19 of the Paris Convention.
Furthermore, the trade mark should be of such a nature as to suggest to the public that there is a connection between the organisation concerned and the armorial bearings, flags, emblems, abbreviations or names, or to mislead the public as to the existence of a connection between the owner and the organisation.
International intergovernmental organisations (IGOs) include bodies such as the United Nations, the Universal Postal Union, the World Tourism Organization, WIPO, etc.
In this respect, the European Union must be considered neither as an international organisation in the usual sense nor as an as sociation of states, but rather as a ‘supranational organisation’, i.e. an autonomous entity with its own sovereign rights and a legal order independent of the Member States, to which both the Member States themselves and their nationals are subject within the EU’s areas of competence.
On the one hand, the Treaties have led to the creation of an i ndependent Union to which the Member States have ceded some of their sovereign powers. The tasks allotted to the EU are very different from those of other international organisations. While the latter mainly have clearly defined tasks of a t echnical nature, the EU has areas of responsibility that together constitute essential attributes of statehood.
On the other hand, the EU institutions too only have powers in certain areas to pursue the objectives specified in the Treaties. They are not free to choose their objectives in the same way as a sovereign state. Moreover, the EU has neither the comprehensive jurisdiction enjoyed by sovereign states nor the powers to establish new areas of responsibility (‘jurisdiction over jurisdiction’).
Notwithstanding the particular legal nature of the EU, and for the sole purpose of the application of Article 7(1)(h), the European Union is likened to an international organisation. In practice, account will be taken of the fact that the EU’s field of activity is so broad (see judgment of 15/01/2013, Case T-413/11 ‘EUROPEAN DRIVESHFT SERVICES’, para. 69) that the examiner is very likely to find a link between the goods and services in question and the EU’s activities.
The most relevant EU flags and s ymbols, protected by the Council of Europe, are shown here:
6ter number: QO188 6ter number: QO189
The following have been protected for the Commission:
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6ter number: QO245 6ter number: QO246 6ter number: QO247
The following have been protected for the European Central Bank:
6ter number: QO852 6ter number: QO867
There are four steps to examining marks that contain the armorial bearing, flag or other symbols of an international intergovernmental organisation.
1 Find an official reproduction of the protected symbol (which may be an abbreviation or name).
2 Compare the symbol with the mark applied for.
3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and the international organisation or misleads the public as to the existence of such a connection.
4 Check whether there is any evidence on file to show that registration has been authorised by the competent authority.
1 Find the protected symbol (or abbreviation or name)
To be protected, the symbols of international intergovernmental organisations must be incorporated in the relevant list. Unlike the situation with state flags, this requirement also applies to international organisations’ flags.
The relevant database is accessible via the ‘Article 6ter Structured Search’ tool provided by WIPO. In this case too, the best way to search is by using the Vienna classification code.
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2 Compare the symbol with the mark applied for
Does the mark applied for consist solely of or contain an identical reproduction of the protected symbol of an international intergovernmental organisation Or does the mark applied for consist of or contain a heraldic imitation thereof?
(a) Does the mark applied for consist solely of or contain an identical reproduction of the protected symbol? If so, proceed to the next step.
(b) Does the mark applied for consist solely of or contain a heraldic imitation thereof?
The test is the same as that for state flags and symbols, that is, the protected symbol and the mark (or the part of the mark in which the protected symbol is reproduced) must be closely similar. The same applies to abbreviations and names of international intergovernmental organisations (see the Board’s decision in Case R 1414/2007-1 – ‘ESA’).
The following marks were rejected because they were considered to contain ‘heraldic imitations’ of the European Union flag protected under QO188:
CTMA 2 305 399 CTMA 448 266 CTMA 6 449 524
CTMA 7 117 658 CTMA 1 106 442 (T-127/02) CTM 4 081 014 (1640 C)
CTMA 2 180 800 (T-413/11)
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For heraldic imitations of the European Union flag (QO188 above), it is considered relevant that (a) there are 12 five-pointed stars, (b) the stars are in a circle and are not touching each other, and (c) the stars contrast with a darker background.
In particular, it must be taken into account that the ‘device in the form of twelve stars arranged in a circle is the most important element of the European Union emblem (‘the emblem’) because it conveys strong messages: (a) the circle of gold stars symbolises solidarity and har mony between the peoples of Europe and ( b) the number twelve evokes perfection, completeness and uni ty. The other element of the emblem is a background suitably coloured to highlight the device’ (see BoA decision in case R 1401/2011-1, para. 21).
It follows from the above that the representation of the EU flag in black and white may still be considered a heraldic imitation when the stars contrast with a dark background in such a way as to give the impression of being a black-and-white reproduction of the EU flag (see CTMA 1 106 442 above).
In contrast, the following example illustrates a c ase where the black-and-white reproduction of a circle of stars does not give the impression of being a black-and-white reproduction of the EU flag:
The following three cases are not considered to be heraldic imitations of the European Union flag because they do not reproduce twelve stars in a circle (i.e. all three marks were accepted):
CTMA 7 142 731 CTMA 5 639 984 CTMA 6 156 624
The following is not a heraldic imitation because, although the stars are yellow, there is no blue (or dark-coloured) background:
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3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and the international organisation or misleads the public as to the existence of such a connection.
A connection is suggested not only where the public would believe that the goods or services originate with the organisation in question, but also where the public could believe that the goods or services have the approval or warranty of, or are otherwise linked to, that organisation (see GC judgment of 15/01/2013, Case T-413/11, ‘EUROPEAN DRIVESHAFT SERVICES’, para. 61).
In order to assess the circumstances properly, the examiner must take into account the following:
- the goods and/or services covered by the CTM application;
- the relevant public;
- the overall impression conveyed by the mark.
With regard to the European Union flag, the examiner must evaluate whether there is any overlap between the claimed goods and / or services and the European Union’s activities, bearing in mind that the European Union is active in numerous sectors and regulates goods and services in all fields of industry and commerce, as is clear from the wide variety of Directives that it has adopted. Likewise, the examiner must take into account that even average consumers could be aware of such activities, which means, in practice, that the examiner is very likely to find a link in most cases.
Finally, in contrast to Article 6ter(1)(a) PC, for which it is sufficient for the sign to consist of or contain the emblem or a heraldic imitation thereof, Article 6ter(1)(c) PC requires an overall assessment.
It follows that, unlike for state emblems and flags, the examiner must take into account also the other elements of which the mark is composed. For it cannot be ruled out that all the other elements of the sign could lead to the conclusion that the public would not connect the sign with an international intergovernmental organisation (see judgment of 15/01/2013, Case T-413/11 ‘EUROPEAN DRIVESHAFT SERVICES’, para. 59).
Still with regard to the EU flag, it must be noted that, as a rule, word elements such as ‘EURO’/‘EUROPEAN’ in a CTMA are likely to suggest a connection even more, since they could be perceived as implying an official EU agency’s approval, quality control or warranty services in respect of the claimed goods and services.
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Here are two examples of where a connection with the EU was found:
G&S Class 16: Periodical and other publications Class 42: Preparation of reports or studies relating to cars, motorcycles and bicycles
Reasoning
The mark was refused for all the goods and services for the following reasons: (26) Consumers in this market are aware of how important it is for companies that provide surveys and reports on expensive and potentially dangerous goods like vehicles to be credible. Consumers may also be aware that the European Union itself is involved in such activities through its association with Euro E.N.C.A.P., which provides motoring consumers with independent assessments of the safety and performance of cars sold on the European market. Given these facts, and the fact that the proprietor’s mark contains a r ecognisable heraldic element of the European emblem, it is likely that the public would assume that the inclusion of the twelve gold stars of the EU emblem in the CTM pointed to a c onnection between the proprietor and the EU.
G&S Class 9: Computer hardware, computer software, recorded data carriers. Class 41: Arranging and conducting of colloquiums, seminars, symposiums, congresses and conferences; providing of tuition, instruction, training; consultancy on training and further training. Class 42: Creating, updating and maintenance of computer programs; computer program design; consultancy in the field of computers; rental of computer hardware and computer software; leasing access time to a computer database.
Reasoning
The mark was refused for all the goods and services for the following reasons: The Board of Appeal found that, contrary to what the applicant claimed, there was some overlap between the goods and services offered by the applicant and the activities of the Council of Europe and the European Union. The Board of Appeal referred, inter alia, to the Official Journal of the European Union, which is available on CD-ROM (i.e. on a record data carrier), to seminars, training programmes and conferences offered by the Council of Europe and the European Union in a variety of areas, and to a large number of databases made available to the public by those institutions, in particular EUR-Lex. Given the wide variety of services and goods that may be offered by the Council of Europe and the European Union, it cannot be ruled out, for the kind of goods and services for which registration was sought, that the relevant public might believe that there is a c onnection between the applicant and those institutions. Accordingly, the Board of Appeal was right to find that registration of the mark sought was likely to give the public the impression that there was a connection between the mark sought and the institutions in question.
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4 Check whether registration has been authorised
Where there is no evidence that registration of the mark applied for has been authorised, the examiner will object to its registration. The objection must reproduce the protected symbol, quoting its 6ter number.
The examiner must also indicate the refused goods and s ervices clearly and g ive reasons why the mark suggests to the public a c onnection with the organisation concerned.
Such an obj ection can only be waived if the applicant provides evidence that the competent authority has authorised registration of the mark.
Extent of the refusal: In the case of flags and symbols of international intergovernmental organisations, the refusal must specify the goods and / or services affected, that is, those in respect of which the public would, according to the examiner, see a connection between the mark and an organisation.
2.8.3. Protection of badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention under Article 7(1)(i) CTMR
In accordance with Article 7(1)(i) CTMR, trade marks will not be r egistered if they include badges, emblems or escutcheons other than those that are covered by Article 6ter of the Paris Convention and are of particular public interest, unless the competent authority has consented to their registration.
As seen above, Article 7(1)(i) CTMR refers to all other badges, emblems or escutcheons that have not been communicated in accordance with Article 6ter(3)(a) PC regardless of whether they are the emblems of a state or international intergovernmental organisation within the meaning of Article 6ter(1)(a) or (b) PC or of public bodies or administrations other than those covered by Article 6ter PC, such as provinces or municipalities.
Furthermore, according to the case-law, Article 7(1)(i) and Article 7(1)(h) CTMR both have a similar scope of application and grant at least equivalent levels of protection.
This means that Article 7(1)(i) CTMR applies not only where the abovementioned symbols are reproduced identically as a trade mark or a part thereof, but also where the mark consists of or contains a her aldic imitation of those symbols. Any other interpretation of this provision would result in less protection being provided by Article 7(1)(i) CTMR than by Article 7(1)(h) CTMR. Following the same line of reasoning, Article 7(1)(i) CTMR applies where the mark is liable to mislead the public as to the existence of a connection between the owner of the trade mark and the body to which the abovementioned symbols refer. In other words, the protection afforded by Article 7(1)(i) CTMR is conditional on a link between the mark and the symbol. Otherwise, trade marks to which Article 7(1)(i) CTMR applies, would obtain broader protection than under Article 7(1)(h) CTMR (see judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’).
Article 7(1)(i) does not define symbols of ‘particular public interest’. However, it is reasonable to assume that the nature of these could vary and could include, for example, religious symbols, political symbols or symbols of public bodies or
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administrations other than those covered by Article 6ter PC, such as provinces or municipalities. In any case, the ‘particular public interest’ involved must be reflected in a public document, for example a national or international legal instrument, regulation or other normative act.
The General Court stated that a ‘particular public interest’ existed when the emblem had a particular link with one of the activities carried out by an international intergovernmental organisation (see judgment of 10/07/2013, Case T-3/12, ‘MEMBER OF EURO EXPERTS’, para. 44). In particular, the Court specified that Article 7(1)(i) CTMR applied also when the emblem merely evoked one of the fields of activity of the European Union, and even if that activity concerned only some of the EU states (see ibid., paras 45 and 46).
This confirms that the protection afforded by Article 7(1)(i) CTMR applies also to symbols that are of particular public interest in only a single Member State or part thereof (Article 7(2) CTMR).
There are four steps to examining marks that contain badges, emblems and escutcheons of particular public interest.
1 Find the symbol of particular public interest.
2 Compare the symbol with the mark applied for.
3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and t he authority to which the symbol refers or misleads the public as to the existence of such a connection.
4 Check whether there is any evidence on file to show that registration has been authorised by the appropriate authority.
1 Find the symbol of particular public interest
At present, there is no l ist or database allowing examiners to identify which symbols are of particular public interest, especially in a Member State or part thereof. Therefore, third party observations are likely to remain the source of many objections to such symbols.
One example of a s ymbol of particular public interest is the Red Cross, which is protected by the Convention for the Amelioration of the Condition of the Wounded and Sick in Armed Forces in the Field, signed in Geneva (http://www.icrc.org/ and http://www.icrc.org/Web/Eng/siteeng0.nsf/htmlall/genevaconventions).
The following symbols are protected under the Geneva Convention:
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Apart from the symbols, their names are also protected (from left to right) as follows: ‘Red Cross’, ‘Red Crescent’ and ‘Red Crystal’.
Another example of a symbol of particular public interest is the Olympic symbol as defined in the Nairobi Treaty on the Protection of the Olympic Symbol. According to the definition in the Nairobi Treaty, ‘the Olympic symbol consists of five interlaced rings: blue, yellow, black, green and red, arranged in that order from left to right. It consists of the Olympic rings alone, whether delineated in a single color or in different colors.’
The following symbol was considered not to be a symbol of particular public interest:
The recycling symbol (on the left) was not considered to be protected under this provision because it is a commercial symbol.
2 Compare the symbol with the mark applied for
Does the mark applied for consist solely of or contain an identical reproduction of the symbol of particular public interest? Or does the mark applied for consist of or contain a heraldic imitation thereof?
(a) Does the mark applied for consist solely of or contain an identical reproduction of the symbol? If so, proceed to the next step.
(b) Does the mark applied for consist solely of or contain a heraldic imitation of the symbol?
The test is the same as the one for flags and symbols of international intergovernmental organisations, that is, the symbol and t he mark (or the part of the mark in which the symbol is reproduced) must be quite similar.
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The following are examples of marks that were rejected because they contained the Red Cross symbol or a heraldic imitation thereof.
Refused CTMAs
WO 964 979 CTMA 2 966 265 CTMA 5 988 985
On the other hand, a number of well-known red crosses have traditionally been used and are still in use, the incorporation of which in a m ark would not be considered a reproduction of the ‘Red Cross’. Examples of these famous crosses include the following:
Templar cross St George’s cross Maltese cross
The following CTM was accepted because it contained two reproductions of the Templar cross.
A mark which contains a c ross in black and white (or shades of grey) is not objectionable. Nor is a cross in a c olour other than red objectionable under Article 7(1)(i) CTMR.
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Accepted CTMAs
CTMA 8 986 069 CTMA 9 019 647 CTMA 9 025 768
3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and t he authority to which the symbol refers or misleads the public as to the existence of such a connection.
A connection is suggested not only where the public would believe that the goods or services originate with the authority in question, but also where the public could believe that the goods or services have the approval or warranty of, or are otherwise linked to, that authority (see GC judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’, para. 78).
In order to assess the circumstances properly, the examiner must, as above, take into account the following:
- the goods and/or services covered by the CTM application;
- the relevant public;
- the overall impression conveyed by the mark.
The examiner must evaluate whether there is any overlap between the claimed goods and / or services and the activities of the authority at issue and whether the relevant public could be aware of it.
In particular, with regard to the European Union, the examiner must take into account that the latter is active in numerous fields, as is clear from the wide variety of Directives that it has adopted.
Furthermore, the examiner must also take into account the other elements of which the mark is composed. For it cannot be r uled out that all the other elements of the sign could lead to the conclusion that the public would not connect the sign with the authority concerned (see GC judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’, para. 107).
Still with regard to the EU, it must be not ed that, as a r ule, word elements such as ‘EURO’/‘EUROPEAN’ in a CTMA are likely to suggest a connection even more, since they could be perceived as implying EU approval (see GC judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’, para. 113).
For example, the General Court (in Case T-3/12) confirmed that the following mark (CTMA No 6 110 423, covering Classes 9, 16, 35, 36, 39, 41, 42, 44 and 45)
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fell foul of Article 7(1)(i) CTMR since it contained a (heraldic) imitation of the ‘Euro’ symbol.
4 Check whether registration has been authorised
Is there any evidence on file that the appropriate authority has authorised registration?
Where there is no such evidence, the examiner will object to the registration of the mark applied for. The objection will reproduce the symbol and provide the applicant with all necessary details and, in particular, information on why the symbol is of ‘particular public interest’ (for example, if protected by an international instrument, a reference to that instrument; in the case of the Red Cross this is the Convention for the Amelioration of the Condition of the Wounded and S ick in Armed Forces in the Field, signed in Geneva (http://www.icrc.org/ and http://www.icrc.org/Web/Eng/siteeng0 .nsf/htmlall/genevaconventions)).
Such an objection can only be waived if the applicant submits evidence that the appropriate authority has consented to registration of the mark.
Extent of the refusal: In the case of symbols of particular public interest, the refusal must specify the goods and / or services affected, that is, those in respect of which the public would, according to the examiner, see a connection between the mark and the authority.
2.9 Article 7(1)(j) CTMR
2.9.1 Introduction
Article 7(1)(j) CTMR applies to CTMs that are in conflict with geographical indications for wines and spirits.
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More specifically, it provides for the refusal of CTMs for wines that contain or consist of a geographical indication identifying wines or for spirits that contain or consist of a geographical indication identifying spirits in respect of wines or spirits not of such origin.
Article 7(1)(j) CTMR does not explicitly refer to the specific EU regulations on t he protection of geographical indications for wines and spirits. In this respect, the Office follows a s ystematic approach and interprets Article 7(1)(j) CTMR in line with Article 7(1)(k) CTMR. That is to say, the Office applies Article 7(1)(j) CTMR in conjunction with the relevant provisions of the EU regulations on t he protection of geographical indications for wines and spirits, namely Council Regulation (EU) No 1308/20133 and Regulation (EC) No 110/2008 of the European Parliament and of the Council4 respectively.
According to Article 93 of Regulation (EU) No 1308/2013:
(a) ‘designation of origin’ means the name of a region, a s pecific place or, in exceptional cases, a c ountry used to describe a wine that complies with the following requirements:
(i) its quality and characteristics are essentially or exclusively due t o a particular geographical environment with its inherent natural and human factors;
(ii) the grapes from which it is produced come exclusively from this geographical area;
(iii) its production takes place in this geographical area; and (iv) it is obtained from vine varieties belonging to Vitis vinifera;
(b) ‘geographical indication’ means an i ndication referring to a r egion, a s pecific place or, in exceptional cases, a country, used to describe a wine that complies with the following requirements:
(i) it possesses a s pecific quality, reputation or other characteristics attributable to that geographical origin;
(ii) at least 85 % of the grapes used for its production come exclusively from this geographical area;
(iii) its production takes place in this geographical area; and (iv) it is obtained from vine varieties belonging to Vitis vinifera or a c ross
between the Vitis vinifera species and other species of the genus Vitis.
According to Article 15(1) of Regulation (EC) No 110/2008, a ‘geographical indication’ is an indication that identifies a spirit drink as originating in the territory of a country, or a region or locality in that territory, where a g iven quality, reputation or other characteristic of that spirit drink is essentially attributable to its geographical origin.
Protected designations of origin (PDOs) therefore have a closer link with the area. This distinction, however, does not affect scope of protection, which is the same for PDOs and PGIs (protected geographical indications). In other words, Article 7(1)(j) CTMR applies equally to all designations covered by Regulation (EU) No 1308/2013,
3 Council Regulation (EU) No 1308/2013 of 17 December 2013 establishing a common organisation of the markets in agricultural products.
4 Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89.
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regardless of whether they are registered as PDOs or as PGIs. Regulation No 110/2008, however, covers only PGIs, not PDOs.
Protection is granted to PDOs/PGIs in order, inter alia, to protect the legitimate interests of consumers and producers.
In this respect, it must also be underlined that the concepts of PDO and PGI differ from a ‘simple indication of geographical provenance’. For the latter, there is no direct link between a s pecific quality, reputation or other characteristic of the product and i ts specific geographical origin, with the result that it does not come within the scope of Article 93 of Regulation (EU) No 1308/2013 or Article 15(1) of Regulation (EC) No 110/2008 (see, by analogy, judgment of 07/11/2000, C-312/98, ‘Warsteiner Brauerei’, paras 43 and 44). For example, ‘Rioja’ is a PDO for wines since it designates a wine with particular characteristics that comply with the definition of a PDO. However, wine produced in ‘Tabarca’ (a ‘simple geographical indication’ designating a s mall island close to Alicante) cannot qualify for a PDO/PGI unless it meets specific requirements.
According to Article 102(1) of Regulation (EU) No 1308/2013, the registration of a trade mark that contains or consists of a pr otected designation of origin or a geographical indication which does not comply with the product specification concerned or the use of which falls under Article 103(2), and that relates to a product falling under one of the categories listed in Part II of Annex VII shall be refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the designation of origin or geographical indication to the Commission and the designation of origin or geographical indication is subsequently protected.
Furthermore, according to Article 23(1) of Regulation (EC) No 110/2008, ‘the registration of a trade mark which contains or consists of a geographical indication registered in Annex III shall be refused or invalidated if its use would lead to any of the situations referred to in Article 16’.
Article 103(2) of Regulation (EU) No 1308/2013 and Article 16 of Regulation (EC) No 110/2008 set out the situations that infringe the rights deriving from a P DO/PGI: (i) direct or indirect commercial use of the PDO/PGI; (ii) misuse, imitation or evocation; (iii) other misleading practices.
Three cumulative conditions are necessary in order for Article 7(1)(j) CTMR to apply.
1. The PDO/PGI in question must be registered at EU level (see paragraph 2.9.2.1 below).
2. Use of the CTM that consists of or contains a PDO/PGI for wines or a PGI for spirits must constitute one of the situations provided for in Article 103(2) of Regulation (EU) No 1308/2013 or in Article 16 of Regulation (EC) No 110/2008 (see paragraph 2.9.2.2 below).
3. The CTM application must include goods that are identical or ‘comparable’ to the goods covered by the PDO/PGI (see paragraph 2.9.2.3 below).
For these three conditions, reference is made below to: (i) which PDOs/PGIs may give rise to an objection under Article 7(1)(j) CTMR; (ii) under what circumstances a CTM contains or consists of a PDO/PGI in such a way that it falls under Article 103(2) of Regulation (EU) No 1308/2013 or Article 16 of Regulation (EC) No 110/2008; (iii) the
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goods of the CTM application affected by the protection granted to the PDO/PGI. Finally, reference is also made below to how goods can be restricted in order to waive an objection.
2.9.2 The application of Article 7(1)(j) CTMR
2.9.2.1 Relevant PDOs/PGIs
Article 7(1)(j) CTMR applies where PDOs/PGIs (either from an E U Member State or from a third country) have been r egistered under the procedure laid down by Regulations No 1308/2013 and No 110/2008.
For third-country PDOs/PGIs that enjoy protection in the European Union through international agreements concluded between the European Union and third countries see paragraph 2.9.3.2 below.
Relevant information about PDOs/PGIs for wines can be f ound in the ‘E-Bacchus’ database maintained by the Commission, which can be accessed through the internet at http://ec.europa.eu/agriculture/markets/wine/e-bacchus/. PGI’s for spirit drinks are listed in Annex III of Regulation No 110/2008 (Article 15(2) of Regulation No 110/2008), as amended, which can be accessed at http://eur- lex.europa.eu/Notice.do?val=464638:cs&lang=en&list=531377:cs,500631:cs,500623:c s,500621:cs,464638:cs,&pos=5&page=1&nbl=5&pgs=10&hwords=. The Commission also maintains a database, ‘E-Spirit-Drinks’, accessible at http://ec.europa.eu/agriculture/spirits/. However, this is not an official register and is, therefore, only informative in character.
Protection is granted solely to the name of a PDO/PGI and does not extend ipso iure to the names of sub-regions, sub-denominations, local administrative areas or localities in the area covered by that PDO/PGI. In this respect, a distinction must be made between the doctrine of the General Court in judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’ and the current legal framework. That judgment refers to a system of Member State competencies on the designation of geographical indications for wines that existed under previous Regulation (EC) No 1493/1999 but is no l onger in force. According to Article 67 of Commission Regulation (EC) No 607/2009 (see also Article 120(1)(g) of Regulation (EU) No 1308/2013) the names of those small geographical areas are now considered merely optional particulars on labels.
On the other hand, the trade agreements signed by the EU with third countries typically have annexed to them a list of the PDOs/PGIs registered at EU level that are also to be protected in the third countries in question (see judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’, paras 104-108 and decision of 19/06/2013, R 1546/2011-4 – ‘FONT DE LA FIGUERA’). However, examiners should not use those lists as a s ource of information about EU PDOs/PGIs but should refer to the corresponding databases cited above. Firstly, the lists of EU PDOs/PGIs to be protected abroad may vary from one agreement to another, depending on t he particularities of the negotiations. Secondly, the annexes to the agreements are usually amended and updated through an ‘Exchange of Letters’.
Article 7(1)(j) CTMR applies only in respect of PDOs/PGIs that were applied for before the CTM and are registered at the time of examining the CTM. The relevant dates for establishing the priority of a trade mark and of a PDO/PGI are the date of application of
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the CTM (or the so-called Paris Convention priority, if claimed) and the date of application for protection of a PDO/PGI to the Commission respectively.
Therefore, no objection will be raised under Article 7(1)(j) CTMR when the PDO/PGI was applied for after the filing date (or priority date, if applicable) of the CTM application. For wines, where there is no relevant date information in the ‘E-Bacchus’ extract, this means that the PDO/PGI in question was already in existence on 01/08/2009, the date on which the register was set up. For any PDOs/PGIs for wines added subsequently, the ‘E-Bacchus’ extract includes a reference to the publication in the Official Journal, which gives the relevant information. For spirit drinks, the initial publication of Annex III of Regulation (EC) No 110/2008 contained all PGIs for spirit drinks that existed on 20/02/2008, the date of entry into force of that regulation. For any PGIs for spirit drinks added subsequently, the corresponding amendment regulation contains the relevant information;
Notwithstanding the above, and in view of the fact that the vast majority of applications for PDO/PGI usually mature in a r egistration, an objection will be r aised when the PDO/PGI was applied for before the filing date (or the priority date, if applicable) of the CTM application but had not yet been registered at the time of examining the CTM application. However, if the CTM applicant submits that the PDO/PGI in question has not yet been registered, the proceedings will be s uspended until the outcome of the registration procedure of the PDO/PGI.
2.9.2.2 Situations covered by Article 103 of Regulation (EU) No 1308/2013 and Article 16 of Regulation (EC) No 110/2008
Article 7(1)(j) CTMR applies (provided that the other conditions also apply) in all of the following situations:
1. the CTM consists solely of a whole PDO/PGI (‘direct use’); 2. the CTM contains a w hole PDO/PGI in addition to other word or figurative
elements (‘direct or indirect use’); 3. the CTM contains or consists of an imitation or evocation of a PDO/PGI; 4. other misleading indications and practices; 5. the reputation of PDOs/PGIs.
CTM consists solely of a whole PDO/PGI (‘direct use’)
This situation covers the ‘direct use’ of a PDO/PGI as a CTM, that is, the trade mark consists solely of the name of the PDO/PGI.
Examples
PDO/PGI Community trade mark
MADEIRA
(PDO-PT-A0038)
MADEIRA
(Collective CTM No 3 540 911)
MANZANILLA
(PDO-ES-A1482)
MANZANILLA
(Collective CTM No 1 723 345)
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If the mark consists solely of the PDO/PGI, the CTM also falls under Article 7(1)(c) CTMR, since it is considered descriptive of the geographical origin of the goods in question. This means that the examiner’s objection will simultaneously raise absolute grounds for refusal under both Article 7(1)(j) and 7(1)(c) CTMR. There is an exception to this, pursuant to Article 66(2) CTMR, when the CTM is a collective trade mark and the regulations governing use thereof include the particulars foreseen in Article 67(2) (for the contrary situation, where the mark had been applied for as an individual mark, see decision of 07/03/2006, R 1073/2005-1 – ‘TEQUILA’, para. 15).
While restricting the relevant goods (to comply with the specifications of the PDO/PGI) is usually a m eans of waiving the objection under Article 7(1)(j) CTMR (see paragraph 2.9.2.3 below), such restriction is irrelevant for Article 7(1)(c) CTMR.
For example, an application for the word mark ‘Bergerac’ for wines will simultaneously be objected to under both Article 7(1)(j) and Article 7(1)(c) CTMR: it consists solely of the PDO ‘Bergerac’ and is therefore descriptive. If the goods are subsequently limited to wines complying with the specifications of the PDO ‘Bergerac’, the objection under Article 7(1)(j) CTMR will be waived but the trade mark is still descriptive and continues to be obj ectionable under Article 7(1)(c) CTMR, unless it has been app lied for as a collective trade mark that complies with Article 67(2) CTMR.
CTM contains a whole PDO/PGI in addition to other word or figurative elements (‘direct or indirect use’)
This situation also covers the ‘direct use’ of a PDO/PGI in a CTM through reproduction of the name of the PDO/PGI together with other elements.
The following CTMs are considered to fall under Article 7(1)(j) CTMR since they contain the whole denomination of a PDO/PGI.
PDO/PGI Community trade mark
BEAUJOLAIS
(PDO-FR-A0934)
BEAUX JOURS BEAUJOLAIS
(CTM No 1 503 259)
CHAMPAGNE
(PDO-FR-A1359)
CHAMPAGNE VEUVE DEVANLAY
(CTM No 11 593 381)
BEAUJOLAIS
(PDO-FR-A0934)
(CTM No 1 561 646)
Under Article 7(1)(j) CTMR it is irrelevant whether or not the other word or figurative elements may give the trade mark distinctive character. The sign can be acceptable as a whole under Article 7(1)(b) and (c) CTMR and still be objectionable (as in the cases above) under Article 7(1)(j) CTMR.
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There is ‘indirect use’ of a P DO/PGI, for example, when the PDO/PGI appears in a complex trade mark (such as the representation of a l abel) in smaller characters as information about the origin or type of the product or as part of the producer’s address. In such cases the trade mark will be obj ectionable irrespective of the position or the size of the PDO/PGI within the trade mark as a whole, provided that it is visible.
PDO/PGI Community trade mark
OPORTO
(PDO-PT-A1540)
CTMs No 11 907 334 and No 2 281 970)
CTM contains or consists of an imitation or evocation of a PDO/PGI
Neither the CTMR nor Regulations No 1308/2013 and No 110/2008 define the meaning of ‘imitation’ or ‘evocation’. To a large extent, they are closely related concepts.
According to the Court, ‘evocation’ covers ‘a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’ (judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 25 and judgment of 26/02/2008, C-132/05, para. 44).
The above means that there may be evocation when the CTM reproduces part of a PDO/PGI, such as (one of its) geographically significant word element(s) (in the sense that it is not a generic element, like ‘cabernet’ and ‘ron’ in the PDO/PGI ‘Cabernet d’Anjou’ or ‘Ron de Granada’), or even part of a word, such as a characteristic root or ending (examples are given below).
Moreover, Article 103(2)(b) of Regulation (EU) No 1308/2013 and Article 16 of Regulation (EC) No 110/2008 protect PDOs/PGIs against misuse, imitation or evocation, ‘even if the true origin of the product is indicated or if the protected name is translated or accompanied by an ex pression such as “style”, “type”, “method”, “as produced in”, “imitation” … or similar’, thus even if consumers are not misled.
According to the Advocate General (opinion of 17/12/1998, C-87/97, ‘Cambozola’, para. 33), ‘the term “evocation” is objective, so that it is not necessary to show that the owner of the mark intended to evoke the protected name’.
In this respect, and for the purposes of Article 7(1)(j) CTMR, the Office will assess in an equally objective way the situations described below, regardless of the CTM applicant’s actual intention.
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Furthermore, the Office considers the terms ‘imitation’ and ‘ evocation’ as two corollaries of essentially the same concept. The mark ‘imitates’ (mimics, reproduces elements of, etc.), with the result that the product designated by the PDO/PGI is ‘evoked’ (called to mind).
In the light of the above, the Office finds that there is evocation or imitation of a PDO where:
(a) the CTM incorporates the geographically significant part (in the sense that it is not the generic element) of the PDO/PGI;
(b) the CTM contains an equivalent adjective/noun that indicates the same geographical origin;
(c) the PDO/PGI is translated; (d) the CTM includes a ‘ de-localizer’ expression in addition to the PDO/PGI or its
evocation.
The CTM incorporates part of the PDO/PGI
According to the Court (judgment of 04/03/1999, C-87/97, ‘Cambozola’, and judgment of 26/02/2008, C-132/05, cited above), the CTM must trigger in the consumer’s mind the image of the product whose designation is protected.
The Court has also stated that ‘it is possible (…) for a protected designation to be evoked where there is no l ikelihood of confusion between the products concerned’ (judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 26).
Importantly, evocation is not assessed in the same way as likelihood of confusion (see opinion of the Advocate General of 17/12/1998, C-87/97, ‘Cambozola’, para. 37). A link must be made with the product whose designation is protected. Therefore, whether or not there is evocation will not be analysed according to the principles laid down by the CJEU in judgment of 11/11/1997, C-251/95, ‘Sabèl’.
As pointed out above, evocation is understood as encompassing not only when the CTM incorporates (one of) the geographically significant word(s) (as opposed to generic) element(s) of a PDO/PGI, but also when the CTM reproduces other parts of that PDO/PGI, such as a characteristic root or ending.
Although the following examples concern foodstuffs, they equally serve to demonstrate ‘imitation’ and ‘evocation’ for wines and spirit drinks.
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PDO/PGI Trade Mark Explanation
CHIANTI CLASSICO
(IT/PDO/0005/0108)
(CTM 9 567 851)
The term ‘chianti’ evokes the PDO ‘Chianti Classico’.
(R 1474/2011-2, ‘AZIENDA OLEARIA CHIANTI’, paras 14-15)
GORGONZOLA
(IT/PDO/0017/0010) CAMBOZOLA
‘… a protected name is indeed evoked where the term used to designate that product ends in the same two syllables and contains the same number of syllables, with the result that the phonetic and visual similarity between the two names is obvious’
(C-87/97, para. 27)
If a PDO/PGI contains or evokes the name of a product that is considered generic, protection does not extend to the generic element. For example, in the PGI ‘Ron de Málaga’, it is a well-known fact that the term ‘ron’ (rum in Spanish) is generic and therefore does not deserve protection. Accordingly, no objection will be raised to the mere fact that a CTM contains a generic term that is part of a PDO/PGI.
Where the generic nature of an element in a PDO/PGI can be determined by standard dictionary definitions, the perspective of the public in the country of origin of the PDO/PGI is determinative. For instance, in the examples cited above, it suffices that the term ‘ron’ is generic for Spanish consumers for it to be concluded that it is generic, regardless of whether or not it can be understood by other parts of the public in the European Union.
By contrast, where no definition can be found in a standard, well-known dictionary, the generic nature of the term in question should be assessed following the criteria laid down by the Court (see judgment of 26/02/2008, C-132/05 and judgment of 12/09/2007, T-291/03, ‘Grana Biraghi’), such as relevant national and EU legislation, how the term is perceived by the public, and circumstances relating to the marketing of the product in question.
Finally, in some cases a CTM may constitute direct/indirect use or evocation of more than one PDO/PGI at the same time. This is likely to happen when the CTM contains an element (not being a generic one) that appears in more than one PDO/PGI.
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PDO/PGI RIOJA (PDO-ES-A0117)
SANTIAGO (Chilean PGI)
Community trade mark RIOJA SANTIAGO
Explanation
The trade mark applied for consists of the terms ‘RIOJA’ and ‘SANTIAGO’, each of which coincides with a protected designation of origin for wines, the former (‘RIOJA’) being protected by the European Union and t he latter (‘SANTIAGO’), a geogr aphical indication for a wine originating from Chile, being protected under a bilateral agreement between the European Union and the Republic of Chile (…)
It is not possible to accept any limitation that includes ‘wine’ originating from the territory of one of the two designations of origin since such a limitation automatically excludes wines originating from the other designation of origin, which inevitably means that the trade mark applied for will lead to confusion. By the same token, a hypothetical limitation of the list of goods to wine from the geographical area covered by either of the designations of origin, e.g. ‘wines from the Rioja designation of origin and w ines from the Santiago designation of origin’, in Class 33, would be c overed by the prohibition of Article 7(1)(j) CTMR insofar as the trade mark would inevitably – and confusingly – identify wines with a geographical origin other than that of the respective designations of origin included under the trade mark. Preventing such an eventuality is the principal purpose of that Article.
(R 0053/2010-2, ‘RIOJA SANTIAGO’)
Provided that the CTM covers the relevant goods, an objection should be raised in respect of all the PDOs/PGIs concerned. However, the examiner will indicate that the objection cannot be overcome, because limiting the goods to those that comply with either one of or all of the PDOs/PGIs would necessarily trigger another objection under Article 7(1)(j) CTMR since such a l imitation would inevitably and c onfusingly identify wines with a geographical origin other than that of the PDO/PGI in question.
Equivalent adjectives/nouns
The use of an e quivalent adjective/noun to indicate the same origin constitutes an evocation of a PDO/PGI.
PDO/PGI Community trade mark(invented examples) Explanation
IBIZA
(PGI-ES-A0110) IBICENCO Noun in the PDO → Adjective in the CTM
AÇORES
(PGI-PT-A1447) AÇORIANO Noun in the PDO → Adjective in the CTM
BORDEAUX
(PDO-FR-A0821) BORDELAIS Noun in the PDO → Adjective in the CTM
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Translated PDOs/PGIs
Likewise, there is evocation or imitation of the PDO/PGI when the CTM contains or consists of a translation of the whole or part of a PDO/PGI in any of the EU languages.
PDO/PGI Community trade mark Explanation
COGNAC KONJAKKI(invented example) A CTM that contains the term ‘Konjakki’ will be considered to evoke ‘Cognac’ in Finnish.
BOURGOGNE
CTM 2417269
‘Borgoña’ is the Spanish translation of the French PDO ‘Bourgogne’
Trade marks consisting of these terms must be refused under both Article 7(1)(j) and 7(1)(c) CTMR rather than solely under Article 7(1)(c) CTMR.
Expressions used as ‘de-localisers’
According to Article 103(2)(b) of Regulation (EU) No 1308/2013 and Article 16(b) of Regulation (EC) No 110/2008, PDOs/PGIs are protected ‘even if the true origin of the product … is indicated or if the protected name is … accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” … or similar’.
Therefore, the fact that the PDO/PGI reproduced or evoked in the CTM is accompanied by these expressions does not militate against the application of Article 7(1)(j) CTMR. In other words, even if the public is thereby informed about the actual origin of the product, an objection will still be raised under Article 7(1)(j) CTMR. Notwithstanding this, the trade mark will be m isleading under Article 7(1)(g) CTMR since there is a contradiction between the goods (restricted to the specific PDO/PGI) and the message conveyed by the mark (that the goods are not ‘genuine’ PDO/PGI products), which will thus necessarily lead to a further objection under that Article.
PDO/PGI Community trade mark (invented examples)
Explanation
RIOJA
(PDO-ES-A0117) RIOJA STYLE RED WINE
A CTM that contains an expression such as ‘Rioja Style Red Wine’ will be considered to evoke the PDO ‘Rioja’ even if it conveys the idea that the product in question is not a ‘genuine’ PDO Rioja wine.
Where the applicant has its legal seat is irrelevant for assessing Article 7(1)(j) CTMR. Article 103(1) of Regulation (EU) No 1308/2013 sets out that protected designations of origin and protected geographical indications may be used by any operator marketing a product that conforms to the corresponding specification. Hence, provided that the goods comply with the specification of the PDO/PGI in question (which is guaranteed by restricting the goods appropriately), the location of the applicant’s legal seat as
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indicated in the CTM application is irrelevant. For example, a company with legal domicile in Poland can own a vineyard located in Spain that produces wine complying with the product specification of the PDO ‘Ribera del Duero’.
Other misleading indications and practices
Article 103(2)(c) and (d) of Regulation (EU) No 1308/2013 and Article 16(c) and (d) of Regulation (EC) No 110/2008 protect the PDO/PGI against a nu mber of false or misleading indications about the origin, nature or essential qualities of the product.
Although it very much depends on the particularities of each case, each of which must therefore be as sessed individually, a C TM may be c onsidered misleading when, for example, it contains figurative elements that are typically associated with the geographical area in question (such as well-known historical monuments).
The above must be interpreted in a restrictive way: it refers solely to CTMs that depict a well-known and s ingular image that is generally taken as a s ymbol of the particular place of origin of the products covered by the PDO/PGI.
PDO/PGI Community trade mark(invented examples) Explanation
PORTO
(PDO-PT-A1540)
CTM depicting the ‘Dom Luís I Bridge’
in the city of Porto
A picture of the Dom Luís I Bridge and its riverside is a well-known emblem of the city of Porto. Use of this image for wines other than those covered by the PDO ‘Porto’ would fall under Article 103(2)(c) and (d) of Regulation (EU) No 1308/2013.
Given the inherent difficulty in identifying evocative figurative elements, particularly in less obvious cases, the Office will in such cases rely principally on objections by third parties.
The reputation of PDOs/PGIs
According to Article 103(2)(a) of Regulation (EU) No 1308/2013 and Article 16(a) of Regulation (EC) No 110/2008, registered names are protected against use that exploits the reputation of the protected name. This protection extends even to different products (see by analogy judgment of 12/06/2007, joined cases T-53/04 to T-56/04, T-58/04 and T-59/04, ‘Budweiser’, para. 176).
However, the scope of such protection must be read in line with the mandate contained in Article 102 of Regulation (EU) No 1308/2013, which limits the refusal of trade marks to products listed in its Annex VII, Part II.
Therefore, the Office considers that, in the context of examining absolute grounds for refusal, the PDO/PGI’s protection is limited to identical or comparable products.
However, the extended scope of protection of a PDO/PGI with reputation can be invoked in the context of Article 8(4) CTMR (see the Guidelines, Part C, Opposition, Section 4, Rights Under Article 8(4) CTMR).
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2.9.2.3 Relevant goods
Comparable products
Objections based on A rticle 7(1)(j) CTMR can be raised only in respect of specific goods of the CTM application, namely those that are identical or ‘comparable’ to ones covered by the PDO/PGI.
The different terms used in Articles 102(1) and 103(2) of Regulation (EU) No 1308/2013 (‘product falling under one of the categories listed in Part II of Annex VII’ and ‘comparable products’ respectively) are interpreted by the Office as synonyms referring to the same concept.
For ease of reference, the categories listed in Part II of Annex VII can be grouped in: (i) wine; (ii) sparkling wine; (iii) grape must; (iv) wine vinegar.
The notion of comparable goods must be understood restrictively and it is independent of the analysis of similarity between goods in trade mark law. Accordingly, the criteria set out in judgment of 29/09/1998, C-39/97, ‘Canon’, should not necessarily be adhered to, although some of them may be us eful. For example, given that a PDO/PGI serves to indicate the geographical origin and the particular qualities of a product, criteria such as the nature of the product or its composition are more relevant than, for instance, whether or not goods are complementary.
In particular, the CJEU (in judgment of 14/07/2011, joined cases C-4/10 and C-27/10, ‘BNI Cognac’, para. 54) has listed the following criteria for determining whether goods are comparable:
• whether or not they have common objective characteristics (such as method of elaboration, physical appearance of the product or use of the same raw materials);
• whether or not they are consumed, from the point of view of the relevant public, on largely identical occasions;
• whether or not they are distributed through the same channels and s ubject to similar marketing rules.
Although it is not possible in these Guidelines to list all the possible scenarios, the following are some examples of comparable products.
Products covered by the PDO/PGI Comparable products
Wine All types of wines (including sparkling wine); grape must; wine vinegar; wine-based beverages (e.g. ‘sangría’)
Spirits All types of spirits; spirit-based drinks
Restrictions of the list of goods
According to Article 103(1) of Regulation (EU) No 1308/2013, protected designations of origin and protected geographical indications may be used by any operator marketing a wine conforming to the corresponding specification.
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Objections raised under Article 7(1)(j) CTMR may be waived if the relevant goods are restricted to comply with the specifications of the PDO/PGI in question.
Restriction of goods can be a complex task, which may depend to a large extent on a case-by-case examination.
• Products of the same type as those covered by the PDO/PGI must be restricted in order to meet the specifications of the PDO/PGI. The proper wording is ‘[name of the product] complying with the specifications of the [PDO/PGI ‘X’]’. No other wording should be proposed or allowed. Restrictions such as ‘[name of the product] with the [PDO/PGI ‘X’]’ or ‘[name of the product] originating in [name of a place]’ are not acceptable.
PDO/PGI in the Community trade mark Acceptable list of goods
Slovácká
(PDO-CZ-A0890)
Wine complying with the specifications of the PDO ‘Slovácká’
• The category of products that includes those covered by the PDO/PGI should be restricted to designate ‘wines’ that comply with the specifications of the PDO/PGI. For spirit drinks, the restriction should designate the exact category of product (e.g. ‘whisky’, ‘rum’, ‘fruit spirit’, in accordance with Annex III of Regulation (EC) No 110/2008) that complies with the specifications of the PDO/PGI.
PDO/PGI in the Community trade mark
Original specification (not acceptable)
Acceptable list of goods Explanation
TOKAJI
(PDO-HU-A1254) Wines
Wine complying with the specifications of the PDO ‘Tokaji’
The CTM can be accepted only for wine covered by the PDO
• Comparable products are restricted to those products, within the category of comparable products, covered by the PDO/PGI.
PDO/PGI in the Community trade mark
Original specification (not acceptable)
Acceptable list of goods Explanation
MOSLAVINA
(PDO-HR-A1653)
Alcoholic beverages (except beers)
Wine complying with the specifications of the PDO ‘Moslavina’; alcoholic beverages other than wines
The CTM can be accepted only for wine covered by the PDO, and for alcoholic beverages other than wines.
There may be c ases where the objection cannot be ov ercome by a l imitation, for example when the goods applied for, although ‘comparable’, do not include the product covered by the PDO/PGI (e.g. where the PGI covers ‘whisky’ and the goods applied for are ‘rum’).
2.9.3 PDOs/PGIs not protected under Regulations (EC) No 1308/2013 and No 110/2008
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2.9.3.1 PDOs/PGIs protected at national level in an EU Member State
The Court of Justice has set out (judgment of 08/09/2009, C-478/07, ‘Bud’) that the EU system of protection for PDOs/PGIs for agricultural products and foodstuffs laid down in Regulation (EC) No 510/2006 [then in effect] is ‘exhaustive in nature’. The Office applies an analogous approach for PDOs/PGIs for wines and spirits, for the following reasons.
The former protection at national level of geographical indications for wines and spirit drinks that now qualify for a PDO/PGI under Regulation (EU) No 1308/2013 and Regulation (EC) No 110/2008 respectively was discontinued once those geographical indications were registered at EU level (see Article 107 of Regulation (EU) No 1308/2013 and Articles 15(2), 20(1) of Regulation (EC) No 110/2008).
Geographical indications for wines that now qualify for a P DO/PGI under Regulation (EU) No 1308/2013 and in the past enjoyed protection by means of national legislation do not fall within the scope of Article 7(1)(j) CTMR. Accordingly, they do not constitute as such, and for that reason alone, a ground for refusal under Article 7(1)(j) CTMR, unless they have also been registered at EU level. Therefore, if for example a t hird party argues that a CTM contains or consists of a geographical indication for wines that was registered in the past at national level in an EU Member State, the examiner will check whether such geographical indication is also registered at EU level as a PDO/PGI. If not, the third party observations will be deemed not to raise serious doubts as regards Article 7(1)(j) CTMR.
2.9.3.2 PDOs/PGIs from third countries
The following situations refer to PDOs/PGIs from third countries that are not simultaneously registered at EU level.
The geographical indication is protected only in the country of origin under national legislation.
Article 7(1)(j) CTMR does not apply since the third-country geographical indication is not recognised and protected expressis verbis under EU legislation. In this respect, note that the provisions of the TRIPs Agreement are not such as to create rights upon which individuals may rely directly before the courts by virtue of EU law (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 44).
Nevertheless, when the CTM contains or consists of one such protected geographical indication, it must also be assessed whether or not the CTM may be considered descriptive and/or deceptive under Article 7(1)(c) and (g) CTMR in accordance with the general rules set out in these Guidelines. For example, where a third party observes that a CTM consists of the term ‘Murakami’ (invented example), which is a PGI for spirits in accordance with the national legislation of country X, Article 7(1)(j) CTMR will not apply for the reasons set out above, but it must be examined whether or not the CTM will be per ceived as a des criptive and/or deceptive sign by the relevant EU consumers.
The geographical indication is protected under an agreement to which the European Union is a contracting party.
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The EU has signed a number of trade agreements with third countries that protect geographical indications. These instruments typically include a list of the geographical indications, as well as provisions on their conflicts with trade marks. The content and degree of precision may nevertheless vary from one agr eement to another. Geographical indications from third countries are protected at EU level after the relevant agreement has entered into force.
In this respect, it is settled case-law that a provision of an agreement entered into by the EU with non-member countries must be r egarded as being directly applicable when, in view of the wording, purpose and nature of the agreement, it may be concluded that the provision contains a clear, precise and unconditional obligation that is not subject, in its implementation or effects, to the adoption of any subsequent measure (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 42).
The scope of protection given to these PGIs by third countries is defined through the substantive provisions of the agreement concerned. While the oldest agreements usually contained only general provisions, the ‘last generation’ of free trade agreements refer to the relationship between trade marks and PGIs in similar terms to Articles 102 and 103 of Regulation (EU) No 1308/2013 (see, for example, Articles 210 and 211 of the ‘Trade Agreement between the European Union and its Member States, of the one part, and Colombia and Peru, of the other part’, OJ L 354, 21/12/2012).
In the light of this, CTMs that contain or consist of a third-country PDO/PGI that is protected by an agreement to which the EU is a contracting party (and is not simultaneously registered under Regulation (EU) No 1308/2013) are examined, on a case-by-case basis, in accordance with the specific substantive provisions of the agreement in question on the refusal of conflicting trade marks, taking into account the case-law cited above. The mere fact that a PDO/PGI from a third country is protected by those instruments does not automatically imply that a CTM that contains or consists of the PDO/PGI must be refused: this will depend on t he content and scope of the agreement’s relevant provisions.
The geographical indication is protected under an international agreement signed only by Member States
Protection of geographical indications under agreements between two Member States is precluded under current EU regulation of PDOs/PGIs (see the doctrine in judgment of 08/09/2009, C-478/07, ‘Bud’, applied by the Office by analogy for PDOs/PGIs for wines and spirits). Such agreements are redundant and have no legal effect.
As regards international agreements signed exclusively by Member States with third countries (in particular, the Lisbon Agreement for the Protection of Appellations of Provenance and t heir International Registration), and for the sole purpose of the examination of absolute grounds for refusal, the EU is not a contracting party to these agreements, and they do not impose any obligations on the EU (see, by analogy, judgment of 14/10/1980, 812/79, para. 9).
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2.10 Article 7(1)(k) CTMR
2.10.1 Introduction
Article 7(1)(k) CTMR applies to CTMs that are in conflict with protected designations of origin/protected geographical indications (PDOs/PGIs) for agricultural products and foodstuffs registered at EU level.
More specifically, it provides for the refusal of CTMs that contain or consist of a PDO/PGI for agricultural products and foodstuffs that has been registered under Regulation (EU) No 1151/20125, provided that the situation corresponds to one covered in that regulation.
According to Regulation (EU) No 1151/2012, PDOs/PGIs cover products for which there is an i ntrinsic link between the product or foodstuff characteristics and i ts geographical origin.
More particularly:
A ‘designation of origin’ is a name that identifies a product:
1. originating in a specific place, region or, in exceptional cases, a country; 2. whose quality or characteristics are essentially or exclusively due to a particular
geographical environment with its inherent natural and human factors; and 3. the production steps of which all take place in the defined geographical area.
A ‘geographical indication’ is a name that identifies a product:
1. originating in a specific place, region or country; 2. whose given quality, reputation or other characteristic is essentially attributable to
its geographical origin; and 3. of which at least one of the production steps takes place in the defined
geographical area.
PDO is the term used to describe foodstuffs that are produced, processed and prepared in a given geographical area using recognised know-how. A PGI indicates a link with the area in at least one of the stages of production, processing or preparation. PDOs therefore have a stronger link with the area.
This distinction, however, does not affect the scope of protection, which is the same for both PDOs and PGIs. In other words, Article 7(1)(k) CTMR applies indiscriminately to the designations covered by Regulation (EU) No 1151/2012, regardless of whether they are registered as PDOs or as PGIs.
Protection is granted to PDOs/PGIs with the aim of ensuring that they are used fairly and in order to prevent practices liable to mislead consumers (see Recital 29 of Regulation (EU) No 1151/2012).
In this respect, it must also be underlined that the concepts of PDO and PGI differ from ‘simple indications of geographical provenance’. For the latter, there is no direct link
5 Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs. It replaced and repealed Regulation (EC) No 510/2006.
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between a s pecific quality, reputation or other characteristic of the product and i ts specific geographical origin, with the result that it does not come within the scope of Article 5(2) of Regulation (EU) No 1151/2012 (judgment of 07/11/2000, C-312/98 ‘Haus Cramer’, paras 43 and 44). For example, ‘Queso Manchego’ is a PDO for cheese since it designates a product with particular characteristics that comply with the definition of a PDO. However, ‘Queso de Alicante’ (a ‘simple geographical indication’) cannot qualify for a PDO/PGI since it does not enjoy such characteristics and requirements.
According to Article 14(1) of Regulation (EU) No 1151/2012,
where a des ignation of origin or a g eographical indication is registered under this Regulation, the registration of a trade mark the use of which would contravene Article 13(1) and which relates to a product of the same type shall be refused if the application for registration of the trade mark is submitted after the date of submission of the registration application in respect of the designation of origin or the geographical indication to the Commission.
Article 13(1) of Regulation (EU) No 1151/2012 sets out the situations that infringe the rights deriving from a PDO/PGI: (i) direct or indirect commercial use of the PDO/PGI; (ii) misuse, imitation or evocation; (iii) other misleading practices.
Three cumulative conditions are necessary in order for Article 7(1)(k) CTMR to apply:
• The PDO/PGI in question must be registered at EU level under the procedure laid down in Regulation (EU) No 1151/2012 (see paragraph 2.10.2.1 below);
• Use of the CTM that consists of or contains a PDO/PGI for agricultural products and foodstuffs must constitute one of the situations provided for in Article 13(1) of Regulation (EU) No 1151/2012 (see paragraph 2.10.2.2 below);
• The CTM application must include goods that are identical or ‘comparable’ to the goods covered by the PDO/PGI (see paragraph 2.10.2.3 below).
For these three conditions, reference is made below to: (i) which PDOs/PGIs may give rise to an objection under Article 7(1)(k) CTMR; (ii) under what circumstances a CTM contains or consists of a PDO/PGI in such a way that it falls under Article 13(1) of Regulation (EU) No 1151/2012; (iii) the goods of the CTM application affected by the protection granted to the PDO/PGI. Finally, reference is also made below to how goods can be restricted in order to waive an objection.
2.10.2 The application of Article 7(1)(k) CTMR
2.10.2.1 Relevant PDOs/PGIs
Article 7(1)(k) CTMR applies where PDOs/PGIs (either from an EU Member State or from a t hird country) have been r egistered under the procedure laid down by Regulation (EU) No 1151/2012.
For third-country PDOs/PGIs that enjoy protection in the European Union through international agreements concluded between the European Union and third countries, see paragraph 2.10.3.2 below.
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Relevant information about PDOs/PGIs registered under Regulation (EU) No 1151/2012 can be found in the database ‘DOOR’ maintained by the Commission, which can be accessed through the internet at http://ec.europa.eu/agriculture/quality/door/list.html.
Protection is granted solely to the name of a PDO/PGI as registered (see Article 13(1) of Regulation (EU) No 1151/2012) and does not extend ipso iure to the names of sub- regions, sub-denominations, local administrative areas or localities in the area covered by that PDO/PGI. In this respect, a distinction must be made between the doctrine of the General Court in judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’ and the current legal framework. That judgment refers to a s ystem of Member State competencies on t he designation of geographical indications for wines that existed under previous Regulation (EC) No 1493/1999 but is no longer in force.
On the other hand, the trade agreements signed by the EU with third countries typically have annexed to them a list of the PDOs/PGIs registered at EU level that are also to be protected in the third countries in question (see judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’, paras 104-108 and decision of 19/06/2013, R 1546/2011-4 – ‘FONT DE LA FIGUERA’). However, examiners should not use those lists as a s ource of information about EU PDOs/PGIs but should refer to the database cited above. Firstly, the lists of EU PDOs/PGIs to be pr otected abroad may vary from one agreement to another, depending on the particularities of the negotiations. Secondly, the annexes to the agreements are usually amended and updated through an ‘Exchange of Letters’.
Article 7(1)(k) CTMR applies only in respect of PDOs/PGIs that were applied for before the CTM and are registered at the time of examining the CTM. The relevant dates for establishing the priority of a trade mark and of a PDO/PGI are the date of application of the CTM (or the so-called Paris Convention priority, if claimed) and the date of application for protection of a PDO/PGI to the Commission respectively.
Therefore, no objection will be raised under Article 7(1)(k) CTMR when the PDO/PGI was applied for after the filing date (or the priority date, if applicable) of the CTM application. Details of the date of application for the PDO/PGI are available in the ‘DOOR’ database.
Notwithstanding the above, and in view of the fact that the vast majority of applications for PDO/PGI usually mature in a r egistration, an objection will be r aised when the PDO/PGI was applied for before the filing date (or the priority date, if applicable) of the CTM application but had not yet been registered at the time of examining the CTM application. However, if the CTM applicant submits that the PDO/PGI in question has not yet been registered, the proceedings will be s uspended until the outcome of the registration procedure of the PDO/PGI
2.10.2.2 Situations covered by Article 13(1) of Regulation (EU) No 1151/2012
Article 7(1)(k) CTMR applies (provided that the other conditions also apply) in all of the following situations:
1. the CTM consists solely of a whole PDO/PGI (‘direct use’); 2. the CTM contains a w hole PDO/PGI in addition to other word or figurative
elements (‘direct or indirect use’); 3. the CTM contains or consists of an imitation or evocation of a PDO/PGI;
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4. other misleading indications and practices; 5. the reputation of PDOs/PGIs CTM consists solely of a whole PDO/PGI (‘direct use’)
This situation covers the ‘direct use’ of a PDO/PGI as a CTM, that is, the trade mark consists solely of the name of the PDO/PGI.
Examples
PDO/PGI Community trade mark
DRESDNER CHRISTSTOLLEN (DE/PGI/005/0704)
DRESDNER CHRISTSTOLLEN (Collective CTM No 262 949)
PROSCIUTTO DI PARMA (IT/PDO/0117/0067)
PROSCIUTTO DI PARMA (Collective CTM No 1 116 458)
If the mark consists solely of the PDO/PGI, the CTM also falls under Article 7(1)(c) CTMR, since it is considered descriptive of the geographical origin of the goods in question. This means that the examiner’s objection will simultaneously raise absolute grounds for refusal under both Article 7(1)(k) and 7(1)(c) CTMR. There is an exception to this, pursuant to Article 66(2) CTMR, when the CTM is a collective trade mark and the regulations governing use thereof include the particulars foreseen in Article 67(2) (for the contrary situation where the mark had been applied for as an individual mark, see decision of 07/03/2006, R 1073/2005-1, ‘TEQUILA’, para. 15).
While restricting the relevant goods (to comply with the specifications of the PDO/PGI) is usually a means of waiving the objection under Article 7(1)(k) CTMR (see paragraph 2.10.2.3 below), such restriction is irrelevant for Article 7(1)(c) CTMR.
For example, a CTM consisting of the expression ‘PROSCIUTTO DI PARMA’ for meat will simultaneously be objected to under both Article 7(1)(k) and Article 7(1)(c) CTMR: it consists solely of the PDO ‘Prosciutto di Parma’, which enjoys protection for meat products, namely a specific type of ham, and is therefore descriptive. If the goods are subsequently limited to ham complying with the specifications of the PDO ‘Prosciutto di Parma’, the objection under Article 7(1)(k) CTMR will be waived but the trade mark is still descriptive and continues to be objectionable under Article 7(1)(c) CTMR, unless it has been applied for as a collective trade mark that complies with Article 67(2) CTMR.
CTM contains a whole PDO/PGI in addition to other word or figurative elements (‘direct or indirect use’)
This situation also covers the ‘direct use’ of a PDO/PGI in a CTM through reproduction of the name of the PDO/PGI together with other elements.
The following CTMs are considered to fall under Article 7(1)(k) CTMR since they contain the whole denomination of a PDO/PGI:
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PDO/PGI Community trade mark
PROSCIUTTO DI PARMA
(IT/PDO/0117/0067)
CONSORZIO DEL PROSCIUTTO DI PARMA
(CTM No 6 380 141)
DRESDNER CHRISTSTOLLEN
(DE/PGI/005/0704)
(CTM No 5 966 668)
PARMIGIANO REGGIANO
(IT/PDO/0117/0016)
(CTM No 6 380 141)
WELSH BEEF
(UK/PGI/0005/0057)
(CTM No 10 513 729)
Under Article 7(1)(k) CTMR it is irrelevant whether or not the other word or figurative elements may give the trade mark distinctive character. The sign can be acceptable as a whole under Article 7(1)(b) and (c) CTMR and still be objectionable (as in the cases above) under Article 7(1)(k) CTMR.
There is ‘indirect use’ of a P DO/PGI, for example, when the PDO/PGI appears in a complex trade mark (such as the representation of a l abel) in smaller characters as information about the origin or type of the product or as part of the producer’s address. In such cases the trade mark will be obj ectionable irrespective of the position or the size of the PDO/PGI within the trade mark as a whole, provided that it is visible.
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PDO/PGI Community trade mark
WELSH LAMB
(UK/PGI/0005/0081)
(CTM No 11 927 472)
QUESO MANCHEGO
(ES/PDO/0117/0087)
(CTM No 5 582 267)
CTM contains or consists of an imitation or evocation of a PDO/PGI
Neither the CTMR nor Regulation (EU) No 1151/2012 defines the meaning of ‘imitation’ or ‘evocation’. To a large extent, they are closely related concepts.
According to the Court, ‘evocation’ covers ‘a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’ (judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 25 and judgment of 26/02/2008, C-132/05, para. 44).
The above means that there may be evocation when the CTM reproduces part of a PDO/PGI, such as (one of its) geographically significant word element(s) (in the sense that it is not a generic element), or even part of a word, such as a characteristic root or ending (examples are given below).
Moreover, Article 13(1)(b) of Regulation (EU) No 1151/2012 protects PDOs/PGIs against ‘any misuse, imitation or evocation, even if the true origin of the products or services is indicated or if the protected name is translated or accompanied by an expression such as “ style”, “type”, “method”, “as produced in”, “imitation” or similar’ (emphasis added), thus even if consumers are not misled.
According to the Advocate General (opinion of 17/12/1998, C-87/97, ‘Cambozola’, para. 33), ‘the term “evocation” is objective, so that it is not necessary to show that the owner of the mark intended to evoke the protected name’.
In this respect, and for the purposes of Article 7(1)(k) CTMR, the Office will assess in an equally objective way the situations described below, regardless of the CTM applicant’s actual intention.
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Furthermore, the Office considers the terms ‘imitation’ and ‘ evocation’ as two corollaries of essentially the same concept. The mark ‘imitates’ (mimics, reproduces elements of, etc.), with the result that the goods designated by the PDO/PGI are ‘evoked’ (called to mind).
In the light of the above, there is evocation or imitation of a PDO/PGI where:
(a) the CTM incorporates the geographically significant part (in the sense that it is not the generic element) of the PDO/PGI;
(b) the CTM contains an equivalent adjective/noun that indicates the same geographical origin;
(c) the PDO/PGI is translated; (d) the CTM includes a ‘ de-localizer’ expression in addition to the PDO/PGI or its
evocation.
The CTM incorporates part of the PDO/PGI
According to the Court (judgment of 04/03/1999, C-87/97, Cambozola’ and judgment of 26/02/2008, C-132/05, cited above), the CTM must trigger in the consumer’s mind the image of the product whose designation is protected.
The Court has also stated that ‘it is possible (…) for a protected designation to be evoked where there is no l ikelihood of confusion between the products concerned’ (judgment of 04/03/1999, C-87/97, Cambozola’, para. 26).
Importantly, evocation is not assessed in the same way as likelihood of confusion (see opinion of the Advocate General of 17/12/1998, C-87/97, ‘Cambozola’, para. 37). A link must be made with the product whose designation is protected. Therefore, whether or not there is evocation will not be analysed according to the principles laid down by the CJEU in judgment of 11/11/1997, C-251/95, ‘Sabèl’.
As pointed out above, evocation is understood as encompassing not only when the CTM incorporates (one of) the geographically significant word(s) (as opposed to generic) element(s) of a PDO/PGI, but also when the CTM reproduces other parts of that PDO/PGI, such as a characteristic root or ending.
PDO/PGI Trade Mark Explanation
CHIANTI CLASSICO
(IT/PDO/0005/0108)
(CTM No 9 567 851)
The term ‘chianti’ is an evocation of the PDO ‘Chianti Classico’
(R 1474/2011-2, ‘AZIENDA OLEARIA CHIANTI, paras 14-15)
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PDO/PGI Trade Mark Explanation
GORGONZOLA
(IT/PDO/0017/0010) CAMBOZOLA
‘… a protected name is indeed evoked where the term used to designate that product ends in the same two syllables and contains the same number of syllables, with the result that the phonetic and visual similarity between the two names is obvious’
(C-87/97, para. 27)
NÜRNBERGER BRATWÜRSTE/NÜRNBERGER
ROSTBRATWÜRSTE
(DE/PGI/0005/0184)
NUERNBERGA
(CTM No 9 691 577)
‘due to the phonetic equivalence, NUERNBERGA is understood in the sense of the geographical indication Nürnberger’
(R 1331/2011-4, ‘NUERNBERGA’, para. 12)
If a P DO/PGI contains or evokes the name of a product that is considered generic, protection does not extend to the generic element (see Article 13(1) of Regulation (EU) No 1151/2012, in fine and judgment of 12/09/2007, T-291/03, ‘Grana Biraghi’, paras 58 and 60). For example, in the PGIs ‘Maçã de Alcobaça’ and ‘Jambon d'Ardenne’, it is a well-known fact that the terms ‘maçã’ (apple in Portuguese) and ‘ jambon’ (ham in French) are generic and therefore they do not deserve protection. Accordingly, no objection will be raised to the mere fact that a CTM contains those generic terms that are part of a PDO/PGI.
In particular, it must also be m entioned that the terms ‘camembert’ and ‘brie’ are generic (see judgment of 26/02/2008, C-132/05, para. 36). Other examples are ‘cheddar’ or ‘gouda’ (see Regulation (EC) No 1107/96, footnotes to the PDOs ‘West Country farmhouse Cheddar’ and ‘ Noord-Hollandse Gouda’). Therefore, no obj ection was raised in the following case:
PDO/PGI Community trade mark
(none, because ‘camembert’ is not a geographical indication, but a generic term)
(CTM No 7 389 158)
Where the generic nature of an element in a PDO/PGI can be determined by standard dictionary definitions, the perspective of the public in the country of origin of the PDO/PGI is determinative. For instance, in the examples cited above, it suffices that the terms ‘maçã’ and ‘jambon’ are generic for the Portuguese and French consumers, respectively, for it to be concluded that they are generic, regardless of whether or not these terms can be understood by other parts of the public in the European Union.
By contrast, where no definition can be found in a standard, well-known dictionary, the generic nature of the term in question should be assessed following the criteria laid
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down by the Court (see judgment of 26/02/2008, C-132/05 and judgment of 12/09/2007, T-291/03, ‘Grana Biraghi’), such as relevant national and EU legislation, how the term is perceived by the public, and circumstances relating to the marketing of the product in question.
Finally, in some cases a CTM may constitute direct/indirect use or evocation of more than one PDO/PGI at the same time. This is likely to happen when the CTM contains an element (not being a generic one) that appears in more than one PDO/PGI.
PDO/PGI Community trade mark Explanation
Amarene Brusche di Modena
(CTM No 11 338 779)
The CTM contains the element ‘MODENA’ which evokes all PDOs/PGIs which include ‘MODENA’
Aceto Balsamico di Modena
Aceto balsamico tradizionale di Modena
Cotechino Modena
Zampone Modena
Prosciutto di Modena
Provided that the CTM covers the relevant goods, an objection should be raised in respect of all the PDOs/PGIs concerned. However, the examiner will indicate that the objection cannot be overcome, because limiting the goods to those that comply with either one or all PDOs/PGIs would necessarily trigger another objection under Article 7(1)(k) CTMR since such a l imitation would inevitably and confusingly identify goods with a geographical origin other than that of the PDO/PGI in question.
Equivalent adjectives/nouns
The use of an e quivalent adjective/noun to indicate the same origin constitutes an evocation of a PDO/PGI:
PDO/PGI Community trade mark(invented examples) Explanation
JAGNIĘCINA PODHALAŃSKA
(PL/PGI/0005/00837)
JAGNIĘCINA Z PODHALA Adjective in the PGI → Noun in the CTM
MEL DO ALENTEJO
(PT/PDO/0017/0252) MEL ALENTEJANA Noun in the PDO → Adjective in the CTM
SCOTTISH WILD SALMON
(GB/PGI/0005/00863)
WILD SALMON FROM SCOTLAND Adjective in the PGI → Noun in the CTM
Translated PDOs/PGIs
Likewise, there is evocation or imitation of the PDO/PGI when the CTM contains or consists of a translation of the whole or part of a PDO/PGI in any of the EU languages.
PDO/PGI Community trade mark(invented example) Explanation
PÂTES D'ALSACE
(FR/PGI/0005/0324) ALSATIAN PASTA
A CTM that contains the expression ‘Alsatian Pasta’ will be considered to evoke the PGI ‘Pâtes d'Alsace’
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Trade marks consisting of these terms must be refused under both Article 7(1)(k) and 7(1)(c) CTMR rather than solely under Article 7(1)(c) CTMR.
Expressions used as ‘de-localisers’
According to Article 13(1)(b) of Regulation (EU) No 1151/2012, PDOs/PGIs are protected even ‘if the true origin of the products or services is indicated or if the protected name is (…) accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” … or similar’.
Therefore, the fact that the PDO/PGI reproduced or evoked in the CTM is accompanied by these expressions does not militate against the application of Article 7(1)(k) CTMR. In other words, even if the public is thereby informed about the actual origin of the product, an obj ection will still be raised under Article 7(1)(k) CTMR. Notwithstanding this, the trade mark will be m isleading under Article 7(1)(g) CTMR since there is a contradiction between the goods (restricted to the specific PDO/PGI) and the message conveyed by the mark (that the goods are not ‘genuine’ PDO/PGI products), which will thus necessarily lead to a further objection under that Article 7.
PDO/PGI Community trade mark(invented examples) Explanation
FETA
(EL/PDO/0017/0427)
GREEK STYLE PLAIN FETA
ARABIAN FETA
A CTM that contains expressions such as ‘Greek Style Plain Feta’ or ‘Arabian Feta’, will be considered to evoke the PDO ‘Feta’, even if it conveys the idea that the product in question is not a ‘genuine PDO Feta’ cheese
Where the applicant has its legal seat is irrelevant for assessing Article 7(1)(k) CTMR. Article 12(1) of Regulation (EU) No 1151/2012 sets out that protected designations of origin and protected geographical indications may be used by any operator marketing a product that conforms to the corresponding specification. Hence, provided that the goods comply with the specification of the PDO/PGI in question (which is guaranteed by restricting the goods appropriately), the location of the applicant’s legal seat as indicated in the CTM application is irrelevant. For example, a company with legal domicile in Lithuania can own a f actory located in Spain that elaborates products complying with the PGI ‘Chorizo de Cantimpalos’.
Other misleading indications and practices
Article 13(1)(c) and (d) of Regulation (EU) No 1151/2012 protects the PDO/PGI against a number of false or misleading indications about the origin, nature or essential qualities of the product.
Although it very much depends on the particularities of each case, each of which must therefore be as sessed individually, a CTM may be c onsidered misleading when, for example, it contains figurative elements that are typically associated with the geographical area in question (such as well-known historical monuments) or when it reproduces a particular shape of the product.
The above must be interpreted in a restrictive way: it refers solely to CTMs that depict a well-known and s ingular image that is generally taken as a s ymbol of the particular
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place of origin of the products covered by the PDO/PGI or a singular shape of the product which is described in the specifications of the PDO/PGI.
PDO/PGI Community trade mark(invented examples) Explanation
MOULES DE BOUCHOT DE LA BAIE DU MONT-SAINT-
MICHEL
(FR/PDO/0005/0547)
A CTM which contains an image of the Mont-Saint-
Michel Abbey
A picture of the Mont-Saint-Michel Abbey is a w ell-known emblem of the city and island of Mont Saint Michel in Normandy. Use of this image for seafood other than that covered by the PDO ‘Moules de Bouchot de la Baie du Mont-Saint-Michel’ would fall under Article 13(1)(c) and (d) of Regulation (EU) No 1151/2012
QUESO TETILLA
(ES/PDO/0017/0088)
A CTM which depicts a cheese conical in shape
The singular shape of the product is described in the specifications of the PDO ‘Queso Tetilla’
Given the inherent difficulty in identifying evocative figurative elements, particularly in less obvious cases, the Office will in such cases rely principally on objections by third parties.
The reputation of PDOs/PGIs
According to Article 13(1)(a) of Regulation (EU) No 1151/2012, registered names are protected against use that exploits the reputation of the protected name. This protection in principle extends even to different products (see judgment of 12/06/2007, joined cases T-53/04 to T-56/04, T-58/04 and T-59/04, ‘Budweiser’, para. 176).
However, the scope of such protection must be read in line with the mandate contained in Article 14 of the same regulation, which limits the refusal of trade marks to products ‘of the same type’.
Therefore, the Office considers that, in the context of examining absolute grounds for refusal, the PDO/PGI’s protection is limited to identical or comparable products.
However, the extended scope of protection of a PDO/PGI with reputation can be invoked in the context of Article 8(4) CTMR (see the Guidelines, Part C, Opposition, Part 4, Rights Under Article 8(4) CTMR).
2.10.2.3 Relevant goods
Comparable products
Objections based on Article 7(1)(k) CTMR can be r aised only in respect of specific goods of the CTM application, namely those that are identical or ‘comparable’ to ones covered by the PDO/PGI.
The different terms used in Articles 13 and 1 4 of Regulation (EU) No 1151/2012 (‘comparable products’, and ‘products of the same type’ respectively) are interpreted by the Office as synonyms referring to the same concept.
The notion of comparable goods must be understood restrictively and i t is independent of the analysis of similarity between goods in trade mark law. Accordingly,
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the criteria set out in judgment of 29/09/1998, C 39/97, ‘Canon’ should not necessarily be adhered to, although some of them may be us eful. For example, given that a PDO/PGI serves to indicate the geographical origin and the particular qualities of a product, criteria such as the nature of the product or its composition are more relevant than, for instance, whether or not goods are complementary.
In particular, the CJEU (in judgment of 14/07/2011, joined cases C-4/10 and C-27/10, ‘BNI Cognac’, para. 54) has listed the following criteria for determining whether goods are comparable:
• whether or not they have common objective characteristics (such as method of elaboration, physical appearance of the product or use of the same raw materials);
• whether or not they are consumed, from the point of view of the relevant public, on largely identical occasions;
• whether or not they are distributed through the same channels and s ubject to similar marketing rules.
Although it is not possible in these Guidelines to list all the possible scenarios, the following are some examples of comparable products.
Products covered by the PDO/PGI Comparable products
Specific meat and specific meat preparations Any meat and any meat preparation(R 659/2012-5, p.14-17)
Milk Cheese and other milk products
Fresh fruit
Preserved, frozen, dried and cooked fruits (jellies, jams, compotes are not ‘comparable products’, but the fruit covered by the PDO/PGI can be a commercially relevant ingredient, see below under ‘Products used as ingredients’)
Fresh vegetables
Preserved, frozen, dried and cooked vegetables (jellies, jams are not ‘comparable products’, but the vegetable covered by the PDO/PGI can be a commercially relevant ingredient, see below under ‘Products used as ingredients’)
Restrictions of the list of goods
According to Article 12(1) of Regulation (EU) No 1151/2012, ‘protected designations of origin and protected geographical indications may be used by any operator marketing a product conforming to the corresponding specification’.
Objections raised under Article 7(1)(k) CTMR may be waived if the relevant goods are restricted to comply with the specifications of the PDO/PGI in question.
Restriction of goods can be a complex task, which may depend to a large extent on a case-by-case examination.
• Products of the same type as those covered by the PDO/PGI must be restricted in order to meet the specifications of the PDO/PGI. The proper wording is ‘[name of the product] complying with the specifications of the [PDO/PGI ‘X’]’. No other
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wording should be proposed or allowed. Restrictions such as ‘[name of the product] with the [PDO/PGI ‘X’]’ or ‘[name of the product] originating in [name of a place]’ are not acceptable.
PDO/PGI in the CTM Acceptable list of goods
WELSH BEEF
(UK/PGI/0005/0057)
Beef meat complying with the specifications of the PGI ‘Welsh Beef’’
The category of products that includes those covered by the PDO/PGI in question can be consulted in the ‘DOOR’ database. The exact product covered can be found in the application document attached to the publication in the Official Journal, also accessible through ‘DOOR’.
• The category of products that includes those covered by the PDO/PGI should be restricted to designate exactly the products covered by the PDO/PGI and that comply with its specifications.
PDO/PGI in the CTM Original specification(which is not acceptable) Acceptable
list of goods Explanation
WELSH BEEF
(UK/PGI/0005/0057) Meat
Beef meat complying with the
specifications of the PGI ‘Welsh Beef’
‘Meat’ includes products (e.g. pork) which cannot comply with the specifications of a particular PDO/PGI that covers the specific product ‘beef meat
POMME DU LIMOUSIN
(FR/PDO/0005/0442 Fruits
Apples complying with the
specifications of the PDO ‘Pomme du
Limousin’
The category ‘fruits’ includes products such as pearl or peaches which cannot meet the specifications of a PDO that exclusively covers apples
• Comparable products are restricted to those products, within the category of comparable products, covered by the PDO/PGI:
PDO/PGI in the CTM Original specification(which is not acceptable) Acceptable
list of goods Explanation
POMME DU LIMOUSIN
(FR/PDO/0005/0442
Preserved, frozen, dried and cooked fruits
Preserved, frozen, dried and cooked apples complying
with the specifications of the
PDO ‘Pomme du Limousin’
‘Preserved, frozen, dried and cooked fruits’ includes products made of other fruits which cannot meet the specifications of a PDO which exclusively covers apples. Also to note that the limitation should not be for ‘apples’.
There may be c ases where the objection cannot be ov ercome by a l imitation, for example, when the goods applied for, although ‘comparable’, do no t include the product covered by the PDO/PGI (e.g. where the PDO covers ‘cheese’ and the goods applied for are ‘milk’).
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• Products used as i ngredients: if the goods covered by the PDO/PGI can be used as a commercially relevant ingredient (in the sense that it may determine the choice of the main product) of any of the goods included in the CTM application, a r estriction will be r equested. This is because Article 13(1)(a) and (b) of Regulation (EU) No 1151/2012 expressly extend the scope of protection of a PDO/PGI registered for a given product ‘when those products are used as an ingredient’.
PDO/PGI in the CTM Original specification(which is not acceptable) Acceptable
list of goods Explanation
POMME DU LIMOUSIN
(FR/PDO/0005/0442) Jams and compotes
Jams and compotes of apples complying
with the specifications of the
PDO ‘Pomme du Limousin’
The fruit is the main ingredient of jams and compotes
PROSCIUTTO DI PARMA
(IT/PDO/0117/0067)
Pizzas
Pizzas with ham complying with the
specifications of the PDO ‘Prosciutto di
Parma’
This topping is the main ingredient of a pizza and the one which determines the consumer’s choice
A restriction is not necessary if the goods covered by the PDO/PGI are used as a secondary, not commercially relevant ingredient of the claimed goods.
PDO/PGI in the CTM Original specification Acceptablelist of goods Explanation
ACEITE DE LA ALCARRIA
(ES/PDO/0005/0562)
Pastry Pastry
The goods do not need to be restricted by the mere fact that oil is used in their preparation. ‘Oil’ is a secondary ingredient which is not commercially relevant
2.10.3 PDOs/PDIs not protected under Regulation (EU) No 1151/2012
2.10.3.1 PDOs/PDIs protected at national level in an EU Member State
The Court of Justice has set out (judgment of 08/09/2009, C-478/07, ‘Bud’) that the EU system of protection for PDOs/PGIs for agricultural products and foodstuffs laid down in Regulation (EC) No 510/2006 [then in effect] is ‘exhaustive in nature’.
Article 9 of Regulation (EU) No 1151/2012 states that
a Member State may, on a t ransitional basis only, grant protection to a name under that Regulation at national level, with effect from the date on which an appl ication is lodged with the Commission. Such national protection shall cease on the date on which either a decision on registration under that Regulation is taken or the application is withdrawn’. Those measures taken by Member States ‘shall produce effects at national level only, and they shall have no effect on intra-Union or international trade.
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This provision is in line with Recital 24 of the same regulation, which declares that
to qualify for protection in the territories of Member States, designations of origin and geographical indications should be registered only at Union level. With effect from the date of application for such registration at Union level, Member States should be abl e to grant transitional protection at national level without affecting intra-Union or international trade.
Moreover, reference must also be made to Council Regulation (EEC) No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. That regulation (which preceded and w as repealed by Regulation (EC) No 510/2006) set out in Article 17(1) that Member States had ‘to inform the Commission which of their legally protected names (…) they wish[ed] to register’ pursuant to that regulation. Paragraph (3) added that Member States could ‘maintain national protection of the names communicated in accordance with paragraph 1 until such time as a decision on registration has been taken’ (see in this respect judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 18).
As a consequence of this, the former protection at national level of geographical indications for agricultural products and foodstuffs was discontinued once those geographical indications were registered at EU level.
Geographical indications for these kinds of products that in the past enjoyed protection by means of national legislation do not fall within the scope of Article 7(1)(k) CTMR. Accordingly, they do not constitute, as such and for that reason alone, a ground for refusal under Article 7(1)(k) CTMR, unless they have also been registered at EU level. Therefore, if for example a third party argues that a CTM contains or consists of a geographical indication for agricultural products and foodstuffs that was registered in the past at national level in an EU Member State, the examiner will check whether such geographical indication is also registered at EU level as a PDO/PGI. If not, the third party observations will be deemed not to raise serious doubts as regards Article 7(1)(k) CTMR.
2.10.3.2 PDOs/PDIs from third countries
The following situations refer to those PDOs/PGIs from third countries that are not simultaneously registered at EU level.
The geographical indication is protected only in the country of origin under national legislation
Article 7(1)(k) CTMR does not apply since the third-country geographical indication is not recognised and protected expressis verbis under EU legislation. In this respect, note that the provisions of the TRIPs Agreement are not such as to create rights upon which individuals may rely directly before the courts by virtue of EU law (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 44).
Nevertheless, when the CTM contains or consists of one such protected geographical indications, it must also be as sessed whether or not the CTM may be c onsidered descriptive and/or deceptive under Article 7(1)(c) and (g) CTMR in accordance with the general rules set out in these Guidelines. For example, where a third party observes that a CTM consists of the expression ‘Tea Murakami’ (invented example) which is a
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PGI in accordance with the national legislation of country X, Article 7(1)(k) CTMR will not apply for the reasons set out above, but it must be examined whether or not the CTM will be per ceived as a des criptive and/or deceptive sign by the relevant EU consumers.
The geographical indication is protected under an agreement to which the European Union is a contracting party
The EU has signed a number of trade agreements with third countries that protect geographical indications. These instruments typically include a list of the geographical indications, as well as provisions on their conflicts with trade marks. The content and degree of precision may nevertheless vary from one agr eement to another. Geographical indications from third countries are protected at EU level after the relevant agreement has entered into force.
In this respect, it is settled case-law that a provision of an agreement entered into by the EU with non-member countries must be r egarded as being directly applicable when, in view of the wording, purpose and nat ure of the agreement, it may be concluded that the provision contains a clear, precise and unconditional obligation that is not subject, in its implementation or effects, to the adoption of any subsequent measure (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 42).
The scope of protection given to these PGIs by third countries is defined through the substantive provisions of the agreement concerned. While the oldest agreements (in particular in the field of wines and spirits) usually contained only general provisions, the ‘last generation’ of free trade agreements refer to the relationship between trade marks and PGIs in similar terms to those of Articles 13 and 14 of Regulation (EU) No 1151/2012 (see, for example, Articles 210 and 211 of the ‘Trade Agreement between the European Union and its Member States, of the one par t, and Colombia and Peru, of the other part’, OJ L 354, 21/12/2012).
In the light of this, CTMs that contain or consist of a third-country PDO/PGI that is protected by an agreement to which the EU is a contracting party (and is not simultaneously registered under Regulation (EU) No 1151/2012) are examined, on a case-by-case basis, in accordance with the specific substantive provisions of the agreement in question on the refusal of conflicting trade marks, taking into account the case-law cited above. The mere fact that a PDO/PGI from a third country is protected by those instruments does not automatically imply that a CTM that contains or consists of the PDO/PGI must be refused: this will depend on t he content and scope of the agreement’s relevant provisions.
The geographical indication is protected under an international agreement signed only by Member States
Protection of geographical indications under agreements between two Member States is precluded under current EU regulation of the PDOs/PGIs for agricultural products and foodstuffs (judgment of 08/09/2009, C-478/07, ‘Bud’). Such agreements are redundant and have no legal effect.
As regards international agreements signed exclusively by Member States with third countries (in particular, the Lisbon Agreement for the Protection of Appellations of Provenance and t heir International Registration), and for the sole purpose of the
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examination of absolute grounds for refusal, the EU is not a contracting party to these agreements, and they do not impose any obligations on the EU (see, by analogy, judgment of 14/10/1980, 812/79, para. 9).
2.11 Community collective marks
2.11.1 Character of collective marks
A Community collective mark (CCTM) is a specific type of CTM which, pursuant to Article 66(1) CTMR, ‘is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings’.
A Community collective mark is aimed at distinguishing the goods and services of the members of the association which owns the mark from those of other companies which do not belong to that association. Therefore, the Community collective mark qualifies the commercial origin of certain goods and services by informing the consumer that the producer of the goods or the service provider belongs to a certain association and that it has the right to use the mark.
A CCTM is typically used by companies, together with their own individual marks, to indicate that they are members of a certain association. For example, Spain’s Association of Shoe Manufacturers may want to apply for the collective trade mark ‘Asociación Española de Fabricantes de C alzado’, which, while belonging to the association, is going to be used by all its members.A member of the association may want to use the collective mark in addition to its own individual mark, for example, ‘Calzados Luis’.
Collective marks do no t necessarily certify the quality of the goods, although this is sometimes the case. For example, regulations governing use frequently contain provisions to certify the quality of the goods and services of the members of the association and this is acceptable (see decision of 10/05/2012, R 1007/2011-2, para. 13).
It is up to the applicant to decide whether the trade mark fulfils the requirements of a collective mark or of an individual mark. This means that, in principle, the same sign could be applied for either as an individual CTM or, if the conditions described in this chapter are met, as a c ollective CTM. Differences between individual and collective marks do not depend on the signs per se, rather they depend on ot her characteristics such as the ownership or the conditions of use of the mark.
For example, an association can file an application for the word mark ‘Tamaki’ either as an individual mark or as a collective mark, depending on the use which is intended to be made of the mark (only by the association itself or also by the members thereof). If it is applied for as a CCTM, certain additional formalities must be m et, such as the submission of regulations of use, etc.
After filing, changes of the kind of mark (from collective to individual or vice versa) are accepted only under certain circumstances (see the Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 8.2.5). The CTMR provisions apply to CCTMs, unless Articles 67-74 CTMR provide otherwise. CCTMs are thus subject, on t he one hand, to the general CTM regime and, on t he other hand, to some exceptions and particularities.
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It follows, firstly, that a CCTM is subject to broadly the same examination procedure and conditions as individual marks. In general terms, the classification of goods and services, examination of formalities and of absolute grounds for refusal is done according to the same procedure as that applied to individual trade marks. For example, examiners will check the list of goods and s ervices or the language requirements in the same way as they do with individual trade marks. Likewise, whether the CCTM falls under one of the grounds for refusal of Article 7 CTMR will also be examined.
Secondly, the examination of a CCTM will also consider the exceptions and particularities of this kind of mark. These exceptions and particularities refer both to the formal and s ubstantive provisions. As regards formalities, the requirement of the regulations governing use of the mark is, for example, a specific characteristic of a CCTM. (For further details of the examination of formalities of CCTMs, including the regulations of use of the mark, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 8.2 Collective marks).
The substantive exceptions and par ticularities which apply to a CCTM are described below.
2.11.2 Ownership
Ownership of CCTMs is limited to (i) associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued; and (ii) legal persons governed by public law.
The first type of owners typically comprises private associations with a c ommon purpose or interest. They must have their own legal personality and c apacity to act. Therefore, private companies such as sociedades anónimas, Gesellschaften mit beschränkten Haftung, etc., multiple applicants with separate legal personality or temporary unions of companies cannot be owners of a CCTM. As set out in the Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 8.2.1, ‘collective does not mean that the mark belongs to several persons (co-applicants/co-owners) nor that it designates/covers more than one country’.
As regards the second type of owners, the concept ‘legal persons governed by public law’ must be interpreted broadly. This concept includes, on the one hand, associations, corporations and other entities governed by public law. This is, for example, the case of ‘Consejos Reguladores’ or ‘Colegios Profesionales’ under Spanish Law. On the other hand, it also includes other legal persons governed by public law, for example, the European Union, States or municipalities, which do not necessarily have a corporative or an associative structure but which can nevertheless be owners of CCTMs. In these cases, the requirement concerning the conditions for membership under Article 67(2) CTMR is not applicable (see decision of 22/11/2011, R 828/2011-1, para. 18 and decision of 10/05/2012, R 1007/2011-2, paras 17, 18). That is to say, when the applicant for a C CTM is a l egal person governed by public law which does not necessarily have a corporative or an associative structure, such as the European Union, a State or a municipality, the regulations governing use of the mark need not contain details concerning membership.
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2.11.3 Particularities as regards absolute grounds for refusal
The absolute grounds for refusal listed in Article 7(1) CTMR apply to CCTMs. This means that these marks will first be ex amined under those provisions to verify, for example, whether or not they are distinctive, deceptive or have become a customary sign. If, for instance, a mark is not inherently distinctive under Article 7(1)(b) CTMR, it will be refused (see decision of 18/07/2008, R 229/2006-4, para. 7).
However, there are some exceptions and particularities which must also be taken into account when examining the absolute grounds for refusal for CCTMs. In addition to the grounds for refusal of a CTM application contained in Article 7(1) CTMR, examiners also assess the following specific grounds:
• descriptive signs • misleading character as to its nature • regulations of use contrary to public policy and morality.
These specific grounds for refusals can also be the object of observations filed by third parties.
2.11.3.1 Descriptive signs
Signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks (see judgment of 15/10/2003, T-295/01, para. 32 and judgment of 25/10/2005, T-379/03, para. 35).
As a result, a sign which exclusively describes the geographical origin of the goods or services (and which must be refused if it is applied for as an individual CTM) can be accepted if (i) it is validly applied for as a CCTM and (ii) it complies with the authorisation foreseen in Article 67(2) CTMR (see decision of 05/10/2006, R 280/2006-1, paras 16, 17).
According to this provision, the regulations governing use of a CCTM which is descriptive must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark.
For example, an application for the word mark ‘Alicante’, specifying tourist services should be refused under Article 7(1)(c) CTMR if it is applied for as an individual CTM given that it describes the geographical origin of the services. However, as an exception, if it is validly applied for as a CCTM (i.e. it is applied for by an association or a legal person governed by public law and it complies with the other requirements of Community collective marks) and the regulations governing use of the mark contain the authorisation foreseen in Article 67(2) CTMR, it will be accepted under Article 7(1)(c) CTMR.
This exception exclusively applies to those signs which are descriptive of the geographical origin of the goods and services. If the CCTM is descriptive of other characteristics of the goods or services, this exception does not apply and the application will be refused under Article 7(1)(c) CTMR.
For example, if the word mark ‘Do-it-yourself’ is applied for as a CCTM for tools in Class 7, it will be considered descriptive of the intended purpose of the goods. Since
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the sign is descriptive of certain characteristics of the goods other than their geographical origin, it will be refused under Article 7(1)(c) CTMR despite having been applied for as a CCTM (see decision of 08/07/2010, R 934/2010-1, para. 35).
2.11.3.2 Misleading character as to its nature
The examiner must refuse the application if the public is liable to be misled as regards the character or the meaning of the mark, in particular if it is likely to be perceived as something other than a collective mark.
A collective mark which is available for use only by members of an association which owns the mark could be liable to mislead if it gives the impression that it is available for use by anyone who is able to meet certain objective standards.
2.11.3.3 Regulations of use contrary to public policy and morality
If the regulations governing use of the mark are contrary to public policy or to accepted principles of morality, the CCTM application must be refused.
This ground for refusal must be di fferentiated from that contained in Article 7(1)(f) CTMR, which prohibits registration of those trade marks which are by themselves contrary to public policy or to accepted principles of morality.
The refusal foreseen in Article 68(1) CTMR refers to situations where, regardless of the trade mark, the regulations governing use of the mark contain a provision which is contrary to public policy or to accepted principles of morality, for instance rules which discriminate on t he grounds of sex, creed or race. For example, if the regulations contain a clause which prohibits women from using the mark, the CCTM application will be refused, even if the trade mark does not fall under Article 7(1)(f) CTMR.
The examiner’s objection can be waived if the regulations are amended in order to remove the conflicting provision. In the above example, the CCTM application will be accepted if the clause which prohibits women from using the mark is deleted from the regulations.
2.12 Acquired distinctiveness
2.12.1 Introduction
In accordance with Article 7(3) CTMR, a trade mark may still be registered despite the fact that it does not comply with Article 7(1)(b), (c) or (d) CTMR, provided that ‘the mark has become distinctive in relation to the goods and services for which registration is requested in consequence of the use which has been made of it’.
Article 7(3) CTMR constitutes an exception to the rule laid down in Articles 7(1)(b), (c) or (d) CTMR, whereby registration must be refused for trade marks which are per se devoid of any distinctive character, for descriptive marks, and for marks which consist exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade.
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Distinctive character acquired through use means that although the sign ab initio lacks inherent distinctiveness with regard to the goods and services claimed, owing to the use made of it on the market, the relevant public has come to see it as identifying the goods and services claimed in the CTM application as originating from a particular undertaking. Thus, the sign has become capable of distinguishing goods and services from those of other undertakings because they are perceived as originating from a particular undertaking. In this way, a sign originally unable to be r egistered under Article 7(1)(b), (c) or (d) CTMR can acquire a new significance and its connotation, no longer purely descriptive or non-distinctive, permits it to overcome those absolute grounds for refusal of registration as a trade mark that would have otherwise applied.
2.12.2 Request
The Office will only examine the acquired distinctive character following a request from the CTM applicant, which may be filed at any time during the examination proceedings.
2.12.3 The point in time the evidence must relate to
The evidence must prove that distinctiveness through use was acquired prior to the CTMA’s filing date. In the case of an IR, the relevant date is the date of registration by the International Bureau. Where priority is claimed, the relevant date is the priority date. Hereafter, all these dates are referred to as the ‘filing date’.
2.12.3.1 Examination proceedings
Since a trade mark enjoys protection as of its filing date, and since the filing date of the application for registration determines the priority of one mark over another, a t rade mark must be r egistrable on t hat date. Consequently, the applicant must prove that distinctive character has been acquired through use of the trade mark prior to the date of application for registration (judgment of 11/06/2009, C-0542/07P, ‘Pure Digital’, paras 49 and 51; and judgment of 07/09/2006, C-0108/05, ‘Europolis’, para. 22). Evidence of use made of the trade mark after this date should not be automatically disregarded, to the extent that it may provide indicative information regarding the situation prior to the date of application (judgment of 28/10/2009, T-137/08, ‘Green/Yellow’, para. 49).
2.12.3.2 Cancellation Proceedings
In Cancellation Proceedings, a trade mark which was registered in breach of the provisions of Article 7(1)(b), (c) or (d) CTMR may nevertheless no longer be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a di stinctive character for the goods or services for which it is registered (Article 52(2) CTMR).
The precise purpose of this norm is to maintain the registration of those marks which, due to the use which has been made of them, have in the meantime – that is to say, after their registration – acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when it took place, such registration was contrary to Article 7 CTMR (judgment of 14/12/2011, T-237/10, ‘Louis Vuitton’, para. 86 and judgment of 15/10/2008, T-405/05, ‘Manpower’ para. 127).
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2.12.4 Consumer
Distinctive character, including that acquired through use, of a sign must be assessed in relation to the presumed perception of the average consumer for the category of goods or services in question. These consumers are deemed to be reasonably well- informed, and reasonably observant and c ircumspect. The definition of the relevant public is linked to an examination of the intended purchasers of the goods or services concerned, since it is in relation to those purchasers that the mark must perform its essential function. Consequently, such a definition must be arrived at by reference to the essential function of a trade mark, namely to guarantee the identity of the origin of the goods or services covered by the mark to consumers or end-users by enabling them, without any possibility of confusion, to distinguish the goods or services from others which have another origin (judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, paras 33, 38).
The relevant consumer includes, therefore, not only persons who have actually purchased the goods and s ervices but also any potentially interested person, in the strict sense of prospective purchasers (judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, paras 41 et seq.).
Prospective purchasers are defined by the precise product or service for which registration is sought. If the claimed goods or services are broad (for example, bags or watches), it is irrelevant that the actual products offered under the sign are extremely expensive luxury items – the public will include all the prospective purchasers for the goods claimed in the CTMA, including non-luxury and cheaper items if the claim is for the broad category.
2.12.5 Goods and Services
Since one of the main functions of a trade mark is to guarantee the origin of goods and services, acquired distinctiveness must be a ssessed in respect of the goods and services at issue. Consequently, the applicant’s evidence must prove a l ink between the sign and the goods and services for which the sign is applied for, establishing that the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark (judgment of 04/05/1999, C-0108/97 & C-0109/97, ‘Chiemsee’, para. 52; and judgment of 19/05/2009, T-0211/06, ‘Cybercrédit et al.’, para. 51).
2.12.6 Territorial Aspects
Pursuant to Article 1 CTMR, a Community trade mark has a unitary character and has equal effect throughout the European Union. Article 7(2) CTMR provides that a trade mark must be r efused registration if an abs olute ground exists only in part of the European Union.
As a l ogical consequence thereto, acquired distinctiveness must be established throughout the territory in which the trade mark did not, ab initio, have such character (judgment of 22/06/2006, C-0025/05P, ‘Sweet wrapper’, paras 83, 86; and judgment of 29/09/2010, T-0378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, para. 30).
This is because the unitary character of the Community trade mark requires a sign to possess distinctive character, inherent or acquired through use, throughout the
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European Union (judgment of 17/05/2011, T-7/10, ‘υγεία’, para. 40). It would be paradoxical to accept, on the one hand, pursuant to Article 3(1)(b) TMD that a Member State has to refuse to register as a national mark a sign that is devoid of any distinctive character in its territory and, on the other, that that same Member State has to respect a Community trade mark relating to that sign for the sole reason that it has acquired distinctive character in the territory of another Member State (judgment of 14/12/2011, T-237/10, ‘Louis Vuitton’, para. 100).
2.12.6.1 Special provisions with respect to the accession of new Member States
In accordance with the provisions of the EU Accession Treaties, a C TM applied for before the date of accession of a given Member State may only be rejected for reasons which already existed before the date of accession. Hence, in the Office’s examination proceedings, acquired distinctiveness must be demonstrated only with respect to Member States of the EU at the time of the CTM application, and not those which have joined the EU subsequently.
2.12.6.2 3D marks, colours per se and figurative trade marks
If the objection exists throughout the European Union, as is normally the case for 3D marks, colours per se and figurative trade marks consisting exclusively of the depiction of the goods in question, acquired distinctiveness must be proven throughout the entire European Union. For the possibility of extrapolating the evidence, see paragraph 2.12.8.7 below.
2.12.6.3 Language area
Where the CTM applied for is rejected with respect to its meaning in a s pecific language, acquired distinctiveness through use must be shown at least with respect to the Member States in which that language is an official language.
Particular care should be taken when a language is an official language in more than one EU Member State. In such cases, when dealing with an absolute grounds objection based on t he meaning of wording in a certain language, acquired distinctiveness through use must be proven for each of the Member States where that language is official (as well as any other Member States or markets where it will be understood).
(a) Examples of languages being official languages in more than one EU Member State include:
• German
German is an o fficial language in Germany and Austria as well as in Luxembourg and Belgium. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an abs olute grounds objection based on t he meaning of German language wording must automatically be examined for all these countries.
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• Greek
Greek is an o fficial language not only in Greece but also in Cyprus. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of Greek language wording must automatically be examined for both these countries.
• English
English is an o fficial language in the United Kingdom, in Ireland and in Malta. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of English language wording must automatically be examined for all these countries.
• French
French is an official language not only in France but also in Belgium and Luxembourg. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of French language wording must automatically be examined for all these countries.
• Dutch
Dutch is an o fficial language not only in the Netherlands but also in Belgium. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of Dutch language wording must automatically be ex amined for both these countries.
• Swedish
Swedish is an official language not only in Sweden but also in Finland. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on t he meaning of Swedish language wording must automatically be examined for both of these countries.
(b) Understanding of a Member State language in Member States where it is not official
In addition to the Member States where the language of a sign’s wording is an official EU language, it must also be c onsidered whether a given official EU language is understood in other Member States where it is not official. This may be bec ause, depending on the goods and services claimed in the CTMA, the relevant public in that Member State have an elementary understanding of the language in question, or because the relevant public consists of specialists for whom certain technical terms in another EU Member State’s official language are understood. If so, then acquired distinctiveness must be proven for the relevant public in these other EU Member States, and not only the Member States where the language is official.
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By way of example, the GC has held that a very large proportion of European consumers and professionals have an elementary knowledge of English (judgment of 26/09/2012, T-301/09, ‘Citigate’, para. 41). Accordingly, depending on the relevant consumer of the goods and services in question and whether the sign consists of an elementary English word or not, acquired distinctiveness may also have to be assessed with respect to further Member States.
Moving from the general public to a more specialist public for goods and services, the GC has held that certain English terms in the medical field (judgment of 29/03/2012, T-242/11, ‘3D eXam’, para. 26), in technical fields (judgment of 09/03/2012, T-172/10, ‘Base-seal’, para. 54) and in financial matters (judgment of 26/09/2012, T-301/09, ‘Citigate’, para. 41) will be understood by the relevant professionals throughout the European Union as English is the commonly used professional language in these areas.
On the other hand, since the understanding of languages is not strictly limited by geographical borders, it may well be that, for historical, cultural or cross-border market reasons, certain (usually elementary) vocabulary of a given language may spread and could be widely understood by the general public in other Member States, particularly those with contiguous land borders. By way of example, German and French are commonly used in the Italian regions of Trentino-Alto Adige and Valle d’Aosta, respectively.
2.12.7 What has to be Proved
The Court of Justice has provided guidance on the conditions which should result in a finding that a t rade mark has acquired a di stinctive character through use: ‘If the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be s atisfied.’ (Judgment of 04/05/1999, C-0108/97 & C-0109/97, ‘Chiemsee’, para. 45 et seq.).
Accordingly, the evidence must demonstrate that a significant proportion of the relevant public for the claimed goods and services in the relevant territory see the trade mark as identifying the relevant goods or services of a specific undertaking, in other words, that the use made of the mark has created a link in the mind of the relevant public with a specific company’s goods or services, regardless of the fact that the wording at issue would lack the distinctiveness to make this link had such use not taken place.
With regards to the extent of market penetration and relevant public recognition a trade mark must achieve to hold that it has acquired distinctiveness through use, in that it has come to identify the goods and services of one undertaking as opposed to those of others for the relevant public, case-law does not prescribe fixed percentages of market recognition for the relevant public. Rather than using a fixed percentage of the relevant public in a given market, the evidence should rather show that a significant proportion of the public perceive the mark as identifying specific goods or services.
Finally, the evidence must relate to each of the goods and services claimed in the CTM application. After an initial absolute grounds objection under Article 7(1)(b), (c) or (d) CTMR, only the goods and s ervices claimed in the application for which acquired distinctiveness through use has been proven will be registerable.
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2.12.8 The evidence and its assessment
In establishing acquired distinctiveness, evidence of the following items may be taken into consideration: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant public who, because of the mark, identify goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (judgment of 04/05/1999, C-108/97 & C-0109/97, ‘Chiemsee’, para. 31; and judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, para. 32).
The Office is not bound to examine facts showing that the mark claimed has become distinctive through use within the meaning of Article 7(3) unless the applicant has pleaded them ( judgment of 12/12/2002, T-247/01, ‘Ecopy’, para. 47).
2.12.8.1 The kind of evidence that may be submitted
Examples of evidence which can serve to indicate some or all of the above factors which may show acquired distinctiveness include items such as sales brochures, catalogues, price lists, invoices, annual reports, turnover figures, advertising investment figures and r eports, advertisements (press cuttings, billboard posters, TV adverts) together with evidence as to their intensity and reach, as well as customer and / or market surveys.
Applicants should take great care to make sure that the evidence shows not only use of the mark applied-for but also that it is sufficient to identify the dates of such use and the specific geographical territory of use within the EU. Undated evidence will normally be insufficient to show that distinctiveness had been acquired before the filing date, and evidence of use outside the EU cannot show the required market recognition of the relevant public within the EU. Further, if evidence mixes materials concerning EU and non-EU territories, and does not permit the Office to identify the specific extent of EU- only use, it will be similarly devoid of probative value for the relevant EU public.
Article 78 CTMR contains a non-exhaustive list of means of giving or obtaining evidence in proceedings before the Office, which may serve as guidance to applicants.
2.12.8.2 Assessment of evidence as a whole
Since the Office must assess the evidence as a whole (R 0159/2005-4, ‘Metavit/MEXA- VIT C et al’, para. 37). It is not necessary that any one i tem of evidence alone is capable of proving the matter at issue. Such proof can result from an ov erall assessment of all items of evidence submitted (judgment of 07/06/2005, T-303/03, ‘Salvita’, para. 42; and decision of 08/03/2006, R 0358/2004-4, ‘MediQi/MEDICE’, para. 34). In order to assess the evidential value of a doc ument, regard should be given to its credibility. It is also necessary to take into account the origin of the document, the circumstances in which it came into being, the person to whom it was addressed and whether the document appears sound and reliable (judgment of 07/06/2005, T-303/03, ‘Salvita’, para. 42; and judgment of 16/12/2008, T-86/07, ‘DEITECH’ [Fig. Mark], paras 46 et seq.).
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2.12.8.3 Market share
The market share held by the trade mark may be relevant for assessing whether that mark has acquired distinctive character through use, to the extent that such market penetration might enable the Office to infer that the relevant public would recognise the mark as identifying the goods or services of a s pecific undertaking, and t hus distinguishing those goods or services from those of other undertakings.
The amount of publicity on the relevant market for the goods or services claimed (as represented by advertising investment in promoting a mark) may also be relevant for assessing whether the mark has acquired distinctive character through use (judgment of 22/06/2006, C-0025/05P, ‘Sweet wrapper’, paras 76 et seq.). However, many attempts to prove distinctiveness acquired through use fail because the applicant’s evidence is not sufficient to prove a link between the market share and advertising, on the one hand, and the consumer perception on the other.
2.12.8.4 Opinion polls and surveys
Opinion polls concerning the level of recognition of the trade mark by the relevant public on the market in question can, if conducted properly, constitute one of the most direct kinds of evidence, since they can show the actual perception of the relevant public. However, it is not an eas y matter to correctly formulate and i mplement an opinion poll so that it can be s een to be truly neutral and r epresentative. Leading questions, unrepresentative samples of the public, and undue editing of responses should be avoided, as these can undermine the probative value of such surveys.
The GC has found that in principle it is not inconceivable that a survey compiled some time before or after the filing date could contain useful indications, although it is clear that its evidential value is likely to vary depending on whether the period covered is close to or distant from the filing date or priority date of the trade mark application at issue. Furthermore, its evidential value depends on the survey method used (judgment of 12/07/2006, T-277/04, ‘Vitacoat’, paras 38-39).
Accordingly, any opinion poll evidence must be assessed carefully. It is important that the questions asked are relevant and not leading. The criteria for the selection of the interviewed public must be assessed carefully. The sample must be indicative of the entire relevant public and, accordingly, must be selected randomly.
Evidence from independent trade associations, consumer organisations and competitors should also be g iven weight. Evidence from suppliers or distributors should, generally, be given less weight, since it is less likely that their evidence will be from a third-party independent perspective. In this regard, the degree of independence of the latter will influence the weight to be given to the evidence by the Office (judgment of 28/10/2009 T-137/08, ‘Green/Yellow’).
2.12.8.5 Turnover and advertising
Information concerning turnover is one of the most readily available forms of evidence to companies. The same holds true with respect to advertising expenses.
These figures can have a significant impact on the assessment of the evidence, but in the great majority of cases are not sufficient alone to prove the issue of acquired
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distinctiveness of a trade mark through use. This is because turnover/advertising costs alone, without additional corroborative details, are frequently too general to allow specific conclusions to be drawn about the use of one particular trade mark: it must be possible to identify with precision the turnover/advertising figures and evidence relating to the mark applied for, and also the relevant goods and services must be identifiable.
Goods and services are often marketed under several trade marks, which renders it difficult to see what the relevant customer perception is of the applied-for mark alone, and turnover/advertising can often include sales or promotion of other trade marks, or of significantly different forms of the trade mark at issue (for example, figurative trade marks rather than word marks, or differing word elements in a figurative mark), or are too general to allow identification of the specific markets under consideration. Consequently, broadly consolidated turnover or advertising figures may not be sufficient to prove whether the relevant public perceives the trade mark at issue as a badge of origin or not.
Where figures for turnover or advertising are supplied, these should relate not only to the trade mark for which registration is sought, but also specifically to the goods or services covered by that mark. It is desirable that the turnover figures be segregated on an annual and market-by-market basis. The specific period(s) of use (including details as to when the use commenced) should be shown by the evidence, so that the Office is able to satisfy itself that the evidence proves that the trade mark acquired distinctiveness before the filing date.
2.12.8.6 Indirect evidence of use
The evidence may consist of or include Member State registrations obtained on t he basis of acquired distinctiveness.
The date to which the evidence filed at national level refers will usually be different from the filing date of the CTM application. These registrations may be taken into account, although they are not binding, when the examiner is able to assess the evidence which was submitted before the national IP office.
2.12.8.7 Extrapolation
Another important issue in the evaluation of evidence is whether the Office can extrapolate from selective evidence to draw broader conclusions. This concerns the extent to which evidence showing distinctiveness acquired through use in certain Member States can be used to make inferences with regard to the market situation in other Member States not covered by the evidence.
Extrapolating in this way to make broader inferences is of particular relevance to an enlarged European Union comprising many Member States, since it is very unlikely that a party will be able to provide evidence with respect to the whole European Union, but will rather tend to concentrate on some areas.
Extrapolation is possible where the market is homogenous and i f at least some evidence is submitted. The market conditions and t he consumer habits have to be comparable. Consequently, it is particularly important that the applicant submits data concerning the size of the market, its own market share, and if possible that of its main competitors, as well as its marketing expenses. Only if all data is comparable, may the
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Office extrapolate the results from one territory to another. For example, if the CTM is used in the entire relevant territory but the evidence only refers to a part of it, inference is possible if the circumstances are comparable. However, if the CTM is only used in part of the relevant territory (and the evidence refers to this), it will usually be difficult to extrapolate those facts to other parts of the territory.
2.12.8.8 Manner of use
The evidence should show examples of how the trade mark is used (brochures, packaging, samples of the goods, etc.). Use of a substantially different mark should not be given any weight.
It is sometimes the case that the use shown is of a sign which, while similar to the mark applied for, is in itself distinctive. In such cases the evidence should be disregarded. Acquired distinctiveness must be shown with respect to the sign applied for. However, in accordance with Article 15(1)(a) CTMR, minor amendments to the sign which do not change the distinctive character of the sign may be al lowed (decision of 15/01/2010, R 0735/2009-2, ‘PLAYNOW’; and dec ision of 09/02/2010, R 1291/2009-2, ‘EUROFLORIST’).
It is possible to prove acquired distinctiveness of a sign which has been used together with other trade marks (judgment of 28/10/2009,T-137/08, ‘Green/Yellow’, para. 27), provided that the relevant consumer attributes to the sign in question the identification function (judgment of 07/07/2005, C-353/03, ‘Have a br eak’; judgment of 30/09/2009 T-75/08, ‘!’ [Fig. Mark], para. 43; and judgment of 28/10/2009, T-137/08, ‘Green/Yellow’, para. 46).
2.12.8.9 Length of use
The evidence should indicate when use commenced and should also show that the use was continuous or indicate reasons if there are gaps in the period of use.
2.12.8.10 Post-filing date evidence
The evidence must show that prior to the filing date, the trade mark had acquired distinctive character through use.
However, evidence cannot be rejected merely because it postdates the filing date, since it may provide indications as to the situation before the filing date. Accordingly, such evidence must be assessed and due weight given to it.
As an example, a trade mark which enjoys a particularly relevant recognition on the market or a substantially relevant market share a few months after the filing date may have acquired distinctiveness also on the filing date.
2.12.9 Consequences of Acquired Distinctiveness
A trade mark registered in accordance with Article 7(3) CTMR enjoys the same protection as any other trade mark which was found inherently registrable upon examination.
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If the CTM application is accepted based on A rticle 7(3) CTMR, this information is published in the CTM Bulletin, using the INID code 521.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART C
OPPOSITION
SECTION 3
UNAUTHORISED FILING BY AGENTS OF THE TM PROPRIETOR
(ARTICLE 8(3) CTMR)
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Table of Contents
1 Preliminary Remarks................................................................................. 3 1.1 Origin of Article 8(3) CTMR........................................................................3 1.2 Purpose of Article 8(3) CTMR ....................................................................3
2 Entitlement of the Opponent .................................................................... 4
3 Scope of Application................................................................................. 5 3.1 Kinds of mark covered...............................................................................5 3.2 Origin of the earlier mark...........................................................................6
4 Conditions of Application ......................................................................... 7 4.1 Agent or representative relationship ........................................................7
4.1.1 Nature of the relationship ............................................................................... 7 4.1.2 Form of the agreement ................................................................................... 9 4.1.3 Territorial scope of the agreement ............................................................... 10 4.1.4 Relevant points in time ................................................................................. 11
4.2 Application in the agent’s name..............................................................12 4.3 Application without the proprietor’s consent.........................................14 4.4 Absence of justification on the part of the applicant.............................16 4.5 Applicability beyond identical signs – goods and services .................. 17
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1 Preliminary Remarks
According to Article 8(3) CTMR, upon oppos ition by the proprietor of an earlier trade mark, a trade mark shall not be registered:
where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.
1.1 Origin of Article 8(3) CTMR
Article 8(3) CTMR has its origin in Article 6septies of the Paris Convention which was introduced into the Convention by the Revision Conference of Lisbon in 1958. The protection it affords to trade mark proprietors consists of the right to prevent, cancel, or claim as their own unauthorised registrations of their marks by their agents or representatives, and to prohibit use thereof, where the agent or representative cannot justify its acts. Article 6septies reads as follows:
(1) If the agent or representative of the person who is the proprietor of the mark in one of the countries of the Union applies, without such proprietor’s authorisation, for the registration of the mark in his own name, in one or more countries of the Union, the proprietor shall be ent itled to oppose the registration applied for, or demand its cancellation or, if the law of the country so allows, the assignment in his favor of the said registration, unless such agent or representative justifies his action.
(2) The proprietor of the mark shall, subject to the provisions of paragraph (1), above, be entitled to oppose the use of his mark by his agent or representative if he has not authorised such use.
(3) Domestic legislation may provide an equitable time limit within which the proprietor of a mark must exercise the rights provided for in this Article.
Article 8(3) CTMR implements this provision only to the extent it gives the rightful proprietor the right to oppose applications filed without its authorisation. The other elements of Article 6septies of the Paris Convention are implemented by Articles 11, 18 and 53(1)(b) CTMR. Article 53(1)(b) CTMR gives the proprietor the right to cancel unauthorised registrations, whereas Articles 11 and 18 CTMR enable the proprietor to prohibit the use thereof and/or to request the transfer of the registration to its own name.
Since Article 41 CTMR provides that an opposition may only be based on the grounds provided for in Article 8, the additional rights conferred on the proprietor by the above provisions may not be invoked in opposition proceedings. Hence, any request by the opponent, either for the prohibition of use of the agent’s mark, or for an assignment of the application to itself, will be dismissed as inadmissible.
1.2 Purpose of Article 8(3) CTMR
The unauthorised filing of the proprietor’s trade mark by its agent or representative is contrary to the general obligation of trust underlying commercial co-operation
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agreements of this type. Such a misappropriation of the proprietor’s mark is particularly harmful to its commercial interests, as the applicant may exploit the knowledge and experience acquired during its business relationship with the proprietor and, thus, improperly benefit from the proprietor’s effort and investment (confirmed by judgment of 06/09/2006, T-6/05, ‘First Defense (I)’, para. 38 and subsequent references in, inter alia, Board of Appeal decisions of 16/05/2011, R 0085/2010-4, ‘Lingham’s’, para. 14, of 03/08/2010, R 1231/2009-2, ‘Berik’, para. 24, and of 30/09/2009, R 1547/2006-4, ‘Powerball’, para. 17).
Therefore, the purpose of Article 8(3) CTMR is to safeguard the legitimate interests of trade mark proprietors against the arbitrary appropriation of their trade marks, by granting them the right to prohibit registrations by agents or representatives that are applied for without their consent.
Article 8(3) CTMR is a manifestation of the principle that commercial transactions must be conducted in good faith. Article 52(1)(b) CTMR, which allows for the declaration of invalidity of a CTM on the ground that the applicant was acting in bad faith, is the general expression of this principle.
However, the protection granted by Article 8(3) CTMR is narrower than the one afforded by Article 52(1)(b) CTMR, because the applicability of Article 8(3) CTMR is subject to the fulfilment of a number of additional conditions laid down in this provision.
Consequently, the fact that the applicant filed the application in bad faith will not be in itself sufficient for the purposes of Article 8(3). Therefore, the opposition will be rejected if, despite being based exclusively on the bad faith of the applicant, it does not fulfil the necessary cumulative conditions required by Article 8(3) CTMR (set out in Section IV below). Such a filing may only be sanctioned under Article 52(1)(b) by requesting the cancellation of the mark after it has been registered.
2 Entitlement of the Opponent
According to Article 41(1)(b) CTMR, the right to file an oppos ition on t he grounds of Article 8(3) CTMR is reserved only for the proprietors of the earlier trade marks. This is in contrast both to Article 41(1)(a) CTMR, which stipulates that oppositions based on Article 8(1) CTMR or 8(5) CTMR may also be filed by authorised licensees, and to Article 41(1)(c) CTMR, which stipulates that for oppositions based on Article 8(4) CTMR the right to file an opposition is also extended to persons authorised by national law to exercise the relevant rights.
It follows that since the right to oppose a CTM application on the grounds of Article 8(3) CTMR belongs exclusively to the proprietors of the earlier trade marks, oppositions filed in the name of third persons, be they licensees or otherwise authorised by the relevant national laws, will be dismissed as inadmissible due to lack of entitlement.
Case No Comment
Decision of 30/09/2009, R 1547/2006-4 ‘Powerball’ (confirmed by judgment of 16/11/2011, T-484/09, ‘Powerball’)
The Board confirmed OD’s decision rejecting the opposition based on Article 8(3) CTMR to the extent that the opponent was not the proprietor of the earlier right but merely claimed to be the licensee of the company Nanosecond Technology Co. Ltd.
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Case No Comment
Decision of 14/06/2010, R 1795/2008-4 ‘ZAPPER-CLICK’ (on appeal, judgment of 03/10/2012, T-360/10, ‘ZAPPER-CLICK’)
The respondent failed to meet the requirement regarding ownership of the trade mark, namely of the ownership of the registered mark ZAPPER-CLICK. On appeal, the Court did not address this point.
Likewise, if the opponent fails to prove that it was the rightful proprietor of the mark when the opposition was filed, the opposition will be dismissed without any examination of its merits due to lack of substantiation. The evidence required in each case will depend on t he kind of right relied upon. The current proprietor may also invoke the rights of its predecessor in title if the agency/representation agreement was concluded between the previous proprietor and the applicant, but this needs to be duly substantiated by evidence.
3 Scope of Application
3.1 Kinds of mark covered
Article 8(3) CTMR applies to earlier ‘trade marks’ that have been appl ied for as Community trade marks without their proprietor’s consent. However, Article 8(2) CTMR does not apply to oppositions based on this ground, as it only enumerates the kinds of earlier rights on which an opposition may be entered under paragraphs (1) and (5) of the same article. Therefore, the kinds of rights on which an opposition based on Article 8(3) CTMR may be entered needs to be determined in more detail, both as regards their nature and their geographical origin.
In the absence of any restriction in Article 8(3) CTMR and i n view of the need to provide effective protection to the legitimate interests of the real proprietor, the term ‘trade marks’ should be interpreted broadly and must be understood as including pending applications, since there is nothing in this provision restricting its scope exclusively to registered trade marks.
For the same reasons unregistered marks or well-known marks within the meaning of Article 6bis of the Paris Convention also fall within the term ‘trade marks’ within the sense of Article 8(3) CTMR. Consequently, both registered and unr egistered trade marks are covered by this provision, to the extent of course that the law of the country of origin recognises rights of the latter kind.
In contrast, the express reference to ‘trade marks’ means that Article 8(3) CTMR does not apply to mere signs used in the course of trade, other than unregistered trade marks. Likewise, other kinds of intellectual property rights that could be used as a basis for an invalidity action cannot be invoked in the context of Article 8(3) CTMR either.
Case No Comment
Decision of 08/06/2010, B 1 461 948 ‘Gu Tong Tie Gao’
As Article 8(3) refers only to earlier trade marks, the evidence filed by the opponent with regard to rights in respect of copyright law in the territory of China was not relevant. This is another kind of intellectual property right which is excluded as a result of the express reference in the article to ‘trade marks’.
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It is clear from the wording of Article 8(3) CTMR that the trade mark on which the opposition is based must be earlier than the CTM application. Hence, the relevant point in time that should be t aken into account is the filing or priority date of the contested application. The rules according to which the priority should be determined depends on t he kind of right relied upon. If the earlier right has been acquired by registration, it is its priority date that should be taken into account for assessing whether it precedes the application, whereas if it is a us er-based right, it must have been acquired before the filing date of the CTM application. In the case of earlier well- known marks, the mark must have become well-known by the time the CTMA is applied for
Case No Comment
Decision of 21/12/2009, R 1621/2006-4, ‘D-Raintank’
The Board noted that the trade mark applications filed by the cancellation applicant in 2003 were all later than the filing date of the contested CTM and even later than its date of registration, and could not serve to establish that the cancellation applicant owned a ‘mark’ in the sense of a registered mark, be it anywhere in the world, for the sign at issue when the CTM was filed. It went on to affirm that ‘Obviously, nobody can base a claim on relative grounds for refusal or declaration of invalidity on rights which are younger than the contested CTM’ (para. 53).
Decision of 19/06/1999, B 3 436, ‘NORAXON’
The period to be t aken into account in order to determine the applicability of Article 8(3) CTMR starts on the date on which the CTM application in question came into force, i.e. 26/10/1995. This was the priority date in Germany, claimed by the applicant, granted by the Office and subsequently published, and not the filing date of the CTM application at the Office.
3.2 Origin of the earlier mark
As Article 8(2) CTMR does not apply to oppositions based on Article 8(3) CTMR, it cannot serve to define the territorial extent of protection granted by Article 8(3) CTMR. In the absence of any other reference in Article 8(3) CTMR to a ‘relevant territory’, it is immaterial whether the earlier trade mark rights reside in the European Union or not.
The practical importance of this provision lies precisely in the legal capacity it confers on holders of trade mark rights outside the European Union to defend these rights against fraudulent filings, since proprietors of trade mark rights within the European Union may rely on t he other grounds provided for in Article 8 CTMR to defend their earlier rights from such acts. Of course, Community trade marks or national marks, which provide a basis for opposition pursuant to Article 8 CTMR, also qualify as earlier marks that can be invoked as a basis for an Article 8(3) CTMR opposition.
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Case No Comment
Decision of 19/12/2006, B 715 146, ‘SQUIRT’
For the purpose of Article 8(3), it is immaterial where in the world the rights of proprietorship reside. Indeed, if in the Paris Convention the proprietorship in a Paris Union member country is required, in the absence of any reference in the CTMR to any territory in which such proprietorship shall exist, one must conclude that it is sufficient that the opponent complies with the requirements of Article 5 CTMR concerning ‘Persons who can be proprietors of Community trade marks’. In the present case, the opponent complied with such a requirement, as it was a company based in the USA.
Decision of 10/01/2011, 3253 C, ‘MUSASHI’ (fig. mark) Cancellation proceedings
The fact that the earlier registrations were from non-EU countries has no bearing on the invalidity ground at issue, since Article 8(2) CTMR, imposing this territorial condition, does not apply to proceedings based on Article 8(3) CTMR and cannot serve to define the territorial extent of protection granted by that article. ‘In the absence of any reference to a “relevant territory” in Article 8(3) CTMR, the Cancellation Division must presume that earlier trade marks registered in countries outside the EU may constitute the basis for an invalidity request based on A rticle 8(3) CTMR’ (para. 33).
Decision of 26/01/2012, R 1956/2010-1 ‘Heatstrip’ (appealed T-184/12)
The opposition was based on an unregistered mark protected in Australia, Canada, the United States and the United Kingdom. The Board considered that the evidence submitted by the opponent supports that it has been using the mark in Australia to a substantial extent (paras 3 and 34 respectively).
Decision of 19/05/2011, R 0085/2010-4 ‘Lingham’s’ (fig. mark)
The opposition was based on a r egistered mark protected in Malaysia. By filing the Malaysian registration certificate, it was proven that the opponent is the owner of the Malaysian trade mark.
4 Conditions of Application
Article 8(3) CTMR entitles trade mark proprietors to oppose the registration of their marks as Community trade marks, provided the following substantive cumulative requirements are met (see judgment of 13/04/2011, T-262/09, ‘First Defense’ (II), para. 61):
1. The applicant is or was an agent or representative of the proprietor of the mark; 2. The application is in the name of the agent or representative; 3. The application was filed without the proprietor’s consent; 4. The agent or representative fails to justify its acts; 5. The signs are identical or with slight modifications and t he goods and services
are identical or closely related.
4.1 Agent or representative relationship
4.1.1 Nature of the relationship
In view of the purpose of this provision, which is to safeguard the legal interests of trade mark proprietors against the misappropriation of their trade marks by their commercial associates, the terms ‘agent’ and ‘ representative’ should be interpreted broadly to cover all kinds of relationships based on any business arrangement (governed by written or oral contract) where one party is representing the interests of
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another, regardless of the nomen juris of the contractual relationship between the principal-proprietor and the CTM applicant (confirmed by judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), para. 64).
Therefore, it is sufficient for the purposes of Article 8(3) CTMR that there is some agreement of commercial co-operation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the trade mark proprietor. It follows that Article 8(3) CTMR may also extend, for example, to licensees of the proprietor, or to authorised distributors of the goods for which the mark in question is used. The burden of proof regarding the existence of an agent-principal relationship lies with the opponent (confirmed by the judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), paras 64 and 67).
Case No Comment
Decision of 29/02/2012, B 1 818 791, ‘HOVERCAM’ (fig. mark)
The Opposition Division found that the evidence submitted by the opponent showed that the relationship and its ultimate purpose constituted an example of commercial cooperation, through which a general duty of trust and l oyalty was imposed on the applicant and was the type of relationship envisioned under Article 8(3) CTMR (p. 5).
Given the variety of forms that commercial relationships may acquire in practice, a case-by-case approach is applied, focusing on whether the contractual link between the proprietor-opponent and t he applicant is only limited to a s eries of occasional transactions, or if, conversely, it is of such a duration and content to justify the application of Article 8(3) CTMR (as regards the points in time which are crucial for the relationship, see below, paragraph 4.1.4). The material question should be whether it was the co-operation with the proprietor that gave the applicant the possibility to get to know and appreciate the value of the mark and incited the applicant to subsequently try to register the mark in its own name.
Nevertheless, some kind of agency agreement has to exist between the parties. If the applicant acts completely independently, without having entered into any kind of fiduciary relationship with the proprietor, it cannot be considered an agent within the meaning of Article 8(3) CTMR (confirmed by judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), para. 64).
Case No Comment
Decision of 16/06/2011, 4103 C, ‘D’Angelico’ (fig. mark) Cancellation proceedings.
The Cancellation Division found that rather than an agent or representative relationship, at the time of filing the CTM the parties held parallel and independent rights to the marks in the USA and Japan. For these reasons, Article 8(3) CTMR was not applicable .
Case No Comment
Decision of 17/03/2000, B 26 759 ‘EAST SIDE MARIO’S’
A mere desire to establish a commercial relationship with the opponent cannot be considered as a concluded agreement between the parties regarding the use of the contested trade mark.
Therefore, a mere customer or a client of the proprietor cannot amount to an ‘agent or representative’ for the purposes of Article 8(3) CTMR, since such persons are under no special obligation of trust to the trade mark proprietor.
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Case No Comment
Judgment of 13/04/2011, T-262/09, ‘First Defense’ (II)
The opponent did not submit any evidence showing the existence of an agent-principal relationship with the applicant. The opponent provided invoices and order forms addressed to itself, on the basis of which the existence of a business agreement between the parties could, in other circumstances, be assumed. However, in the present case, the GC concluded that the evidence does not show that the applicant acted on behalf of the opponent, but merely that there was a seller-customer relationship which could have been established without a prior agreement between them. Such a relationship is not sufficient for Article 8(3) CTMR to be applicable (para. 67).
Decision of 26/06/2009, B 955 528 ‘FUSION’ (fig. mark)
The Office considered that the evidence on the kind of commercial link between the opponent and the applicant was inconclusive, that is, it could not be established whether the applicant was really an agent or representative or a m ere purchaser of the opponent’s goods. Accordingly, the Office was unable to hold that Article 8(3) CTMR applied.
It is irrelevant for the purposes of Article 8(3) CTMR whether an exclusive agreement exists between the parties, or just a simple, non-exclusive commercial relationship.
Article 8(3) CTMR also applies to analogous forms of business relationships that give rise to an obligation of trust and confidentiality between the trade mark proprietor and the professional, as is the case with legal practitioners and a ttorneys, consultants, trade mark agents etc. However, the legal representative or manager of the opponent’s company cannot be considered as an agent or representative within the meaning of Article 8(3) CTMR, given that such persons are not business associates of the opponent. The purpose of this provision is not to protect the proprietor from infringing acts coming from within its company. It may well be that such acts can be sanctioned under the general bad faith provision in Article 52(1)(b) CTMR.
Case No Comment
Decision of 20/03/2000, B 126 633 ‘Harpoon’ (fig. mark)
In this case, the applicant was a l egal representative of the opponent’s company. The opposition was rejected.
4.1.2 Form of the agreement
It is not necessary that the agreement between the parties assumes the form of a written contract. Of course, the existence of a formal agreement between the parties will be of great value in determining exactly what kind of relationship exists between them. As mentioned above, the title of such an agreement and the terminology chosen by the parties should not be taken as conclusive. What counts is the kind of commercial co-operation established in substance and not its formal description.
Even in cases where a written contract does not exist, it may still be possible to infer the existence of a commercial agreement of the kind required by Article 8(3) CTMR by reference to indirect indications and evidence, such as the commercial correspondence between the parties, invoices and purchase orders for goods sold to the agent, or credit notes and other banking instruments (always bearing in mind that a mere customer relationship is insufficient for Article 8(3) CTMR). Even dispute resolution agreements may be relevant to the extent they give sufficient information about the past relationship between the parties.
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Case No Comment
Decision of 07/07/2003, R 336/2001-2 ‘GORDON and SMITH’ (fig. mark)
The Opposition Division was correct to conclude that there was an agency relationship between the applicant and the opponents, on the basis of correspondence indicating that the two parties had a long and close commercial relationship. The applicant company acted as a distributor of the opponents’ goods (para. 19).
Furthermore, circumstances such as sales targets imposed on the applicant, or payment of royalties, or production of the goods covered by the mark under license or help in the setting up o f a l ocal distribution network, will be s trong indications in the direction of a commercial relationship of the type covered by Article 8(3) CTMR.
Case No Comment
Decision of 26/01/2012, R 1956/2010-1 ‘Heatstrip’ (appealed T-184/12)
The Board considered that a binding contractual relationship can be established by means of business letters exchanged by the parties, including by email. It thus examined the e-mail correspondence between the parties to determine what each party asked from the other (para. 50). The Board concluded that the emails showed that both parties were actively cooperating in the promotion of the product, by advertising it in brochures and exhibiting it at a fair, in order to create the best conditions for its successful marketing: the opponent supplied the material for these purposes and the applicant adapted it to the German market (para. 54). The Board thus concluded that the e-mail correspondence denoted an agreement of commercial co-operation between the parties of a kind that gives rise to a fiduciary relationship (para. 56).
On the other hand, the mere desire of the applicant to enter into a commercial relationship with the opponent cannot be considered as a concluded agreement between the parties. Prospective agents or representatives are not covered by Article 8(3) CTMR (see B 26 759 ‘East Side Mario’s’, quoted above).
4.1.3 Territorial scope of the agreement
Even though the letter of Article 8(3) CTMR does not refer to the territorial scope of the agreement between the trade mark proprietor and its agent or representative, an inherent limitation to relationships covering the EU or a part thereof must be read in this provision.
This is more in line with the economic considerations underlying Article 8(3), which are to prevent agents or representatives from unduly exploiting a commercial relationship covering a given territory, by filing an unauthorised application for the principal’s mark precisely in that territory, that is, in the territory where the applicant will be more able to benefit from the infrastructure and know-how it possesses as a result of its prior relationship with the proprietor. Therefore, as the filing prohibited by Article 8(3) CTMR is an application for the acquisition of trade mark rights in the EU, the agreement must also concern the same territory.
Hence, a purposive interpretation must be followed in this regard, according to which Article 8(3) CTMR only applies to agreements which cover the territory of the EU, whether in whole or in part. In practice, this means that world-wide or pan-European agreements are covered by this provision, as are agreements extending to one or more
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Member States, or only covering part of their territory, irrespective of whether they also include third territories. Conversely, agreements exclusively applying to third territories are not covered.
4.1.4 Relevant points in time
The agent-representative relationship must have been established prior to the filing date of the CTM application. Therefore, it is immaterial whether after that time the applicant entered negotiations with the opponent, or made unilateral proposals with the purpose of becoming a representative or agent of the latter.
Case No Comment
Decision of 19/05/2011, R 0085/2010-4 ‘Lingham’s’
The opponent granted the applicant a special power of attorney (PoA), consenting to the applicant‘s filing of trade mark applications. Subsequent to this PoA, the applicant filed a CTM. After the filing, the opponent revoked the PoA and filed the opposition.
The Board considered that the relevant point in time is the filing date. At that moment, the owner’s consent was present. The revocation had effects ex nunc (and does not affect the validity of actions performed under the PoA) and not ex tunc (as if the PoA had never existed) (para. 24).
Judgment of 06/09/2006, T-6/05 ‘FIRST DEFENSE’ (I)
The Board of Appeal ought to have examined whether, on the day of the application for registration of the mark, the intervener was still bound by the consent (para. 50).
However, even if the agreement between the parties was formally concluded after the filing date of the application, it may still be possible to deduce from the evidence that the parties were already in some form of commercial co-operation before the signature of the relevant contract and that the applicant was already acting as the opponent’s agent, representative, distributor or licensee.
On the other hand, the agreement between the parties does not have to be technically still in force when the application is filed. The reference to a filing made by an ‘agent or representative’ should not be understood as a formal requirement that must be pr esent at the time the CTM application is filed. Article 8(3) also applies to agreements that expired before the filing date of the CTM application, provided that the time that has lapsed is of such duration that it can be reasonably assumed that the obligation of trust and confidentiality was still present when the CTM application was filed (confirmed by judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), para. 65).
Article 8(3) CTMR and Article 6septies of the Paris Convention do not protect a trade mark proprietor who is careless and makes no efforts to secure trade mark protection on its own. Post-contractual fiduciary obligations mean that none o f the parties may use the termination of an agreement as a pretext for getting rid of its obligations, for example by terminating an agreement and immediately afterwards filing a trade mark. The rationale of Article 8(3) CTMR and A rticle 6septies of the Paris Convention is to prevent a situation where a representative in country A of a principal who owns trade marks in country B, and who is meant to market the trade-marked goods and observe the interests of the latter in country A, uses the filing of a trade mark application in country A as a w eapon against the principal, for example to force the principal to
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continue with the representative and to prevent him from entering the market in country A. This rationale likewise applies if an agr eement exists but the representative terminates it to take advantage and file a trade mark for the same reasons. However, this does not create absolute rights for the principal to obtain trade mark protection in other countries. The mere fact that the principal holds a trade mark in country B does not give him an abs olute right to obtain trade marks in all other countries; the trade marks registered in different countries are in principle independent from each other and may have different proprietors, in accordance with Article 6(3) of the Paris Convention. Article 6septies of the Paris Convention is an exception to this principle and only to the extent that the contractual or de facto obligations of the parties involved justify this. Only to that extent is it justified that the ensuing CTM would ‘belong’ to the principal under Article 18 CTMR (decision of 19/11/2007, R 0073/2006-4 ‘Porter’, para. 26).
This should be assessed on a case-by-case basis, and the decisive factor should be whether it is still possible for the applicant to take commercial advantage of its expired relationship with the trade mark proprietor by exploiting the know-how and contacts it acquired because of its position.
Case No Comment
Decision of 19/11/2007, R 0073/2006-4 ‘Porter’
The contested application was not filed during the validity of the agreements between Gallant (owner of shares in Porter, the applicant) and Yoshida (opponent) which allowed Gallant to file a CTM, but nearly one year after the termination of the last agreement (para. 25). The Board noted that post-termination fiduciary obligations are not meant to last forever but for a certain transitional period after the termination of the agreement in which the parties may re-define their commercial strategies and concluded, inter alia, that any post-contractual relationship between Yoshida and Gallant was phased out at the time of the filing of the CTM (para. 27).
Decision of 21/02/2002, B 167 926 ‘AZONIC’
In this case, less than three months after the expiry of a contract relationship, such as a license agreement, is a period within which it was still considered that the fiduciary relationship between the parties exists and imposes on the applicant a duty of loyalty and confidence.
4.2 Application in the agent’s name
According to Article 8(3) CTMR, the trade mark applied for shall not be r egistered where the agent or representative applies for registration thereof in its own name. It will usually be eas y to assess whether this requirement has been fulfilled, by comparing the name of the applicant with that of the person appearing in the evidence as the agent or representative of the proprietor.
However, there may be cases where the agent or representative will try to circumvent this provision by arranging for the application to be filed by a third person, whom it either controls, or with whom it has entered into some form of understanding to that effect. In such cases adopting a more flexible approach is justified. Therefore, if it is clear that because of the nature of the relationship between the person filing the application and the agent, the situation is effectively the same as if the application had been filed by the agent himself, it is still possible to apply Article 8(3) CTMR, notwithstanding the apparent discrepancy between the applicant’s name and the name of the proprietor’s agent.
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Such a c ase could arise if the application is filed not in the name of the agent’s company, but in the name of a natural person that shares the same economic interests as the agent, as for example its president, vice-president or legal representative. Given that in this case the agent or representative could still benefit from such a filing, it should be considered that the natural person is bound by the same limitations as the company.
Case No Comment
Decision of 21/02/2002, B 167 926 ‘AZONIC’
The Opposition Division considered that, even though the CTM application was applied for in the name of the natural person Mr Costahaude instead of directly in the name of the legal person STYLE’N USA, INC., the situation was effectively the same as if it had been filed in the name of the legal person.
Decision of 28/05/2003, B 413 890 ‘CELLFOOD’
If it is clear that because of the nature of the relationship between the person filing the application and t he agent, the situation is effectively the same as if the application had been filed by the agent himself, it is still possible to apply Article 8(3) CTMR, notwithstanding the apparent discrepancy between the applicant’s name and the name of the owner’s agent.
Moreover, if the person filing the contested application had also signed the agency agreement on behalf of the company, this would have to be c onsidered a s trong argument in favour of the application of Article 8(3) CTMR, since in such a case the applicant cannot possibly deny direct knowledge of the relevant prohibitions. Similarly, if an agency agreement contained a clause holding the management of the company personally responsible for the observance of the contractual obligations undertaken by the agent, this would also have to be considered a further indication that the filing of the application is covered by the prohibition of Article 8(3) CTMR.
Case No Comment
Decision of 21/02/2002, B 167 926 ‘AZONIC’
Bearing in mind the position of the authorised representative of the Licensee Company, the Office considered that despite the fact that the CTM application was made in the name of this natural person, the situation was effectively the same as if it had been filed by the legal person, i.e. the Licensee Company. The CTM application in the name of the former could have a direct effect on the latter due to their professional relationship, and, furthermore, the President or Vice-President of a company should be considered obliged by the same limitations as their company, or at least temporarily obliged in the case of the expiry of their professional relationship.
This position is strengthened by the fact that in the present case there is a clause in the renewed agreement that establishes the licensor’s immediate termination right in the case that ‘… control of STYLE’N (the licensee) is transferred and the management thereby changed’, which shows that the management of the licensee company was also bound by the terms of the agreement.
A similar case arises where the agent or the representative and t he applicant are distinct legal entities, but the evidence shows that they are controlled, managed or run by the same natural person. For the reasons given above it is appropriate to ‘lift the corporate veil’ and apply Article 8(3) also to these cases.
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4.3 Application without the proprietor’s consent
Even though the absence of the proprietor’s consent is a necessary condition for the application of Article 8(3), the opponent does not have to submit evidence which shows that the agent was not permitted to file the CTM application. A mere statement that the filing was made without its consent is generally sufficient. This is because the opponent cannot be ex pected to prove a ‘ negative’ fact, such as the absence of consent. In these cases the burden of proof is reversed and it is up to the applicant to prove that the filing was authorised, or to give some other justification for its acts.
In view of the need to provide effective protection to the legitimate proprietor from unauthorised acts of its agents, the application of Article 8(3) should be denied only where the proprietor’s consent is sufficiently clear, specific and unconditional (see, for example, judgment of 06/09/2006, T-6/05, ‘First Defense’ (I), para. 40).
Therefore, even if the proprietor has expressly authorised the filing of the CTM application, its consent cannot be considered sufficiently clear if it has not also explicitly specified that the application may be in the name of the agent.
Case No Comment
Decision of 07/07/2003, R 336/2001-2 ‘GORDON and SMITH’ (fig. mark)
‘In view of its serious effect in extinguishing the exclusive rights of the proprietors of the trade marks in issue in the main proceedings (rights which enable them to control the initial marketing in the EEA), consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated’ (para. 18).
Likewise, even if the proprietor has expressly authorised the filing of a CTM application, its consent cannot be considered specific enough for the purposes of Article 8(3) CTMR if there is no indication of the specific signs which the applicant has permission to file as Community trade marks.
It will be generally easier to assess whether the filing was authorised by the proprietor where the conditions under which an agent or representative may apply for a CTM application are adequately regulated by contract, or are given by other kinds of direct evidence (letters, written representations etc.). In most cases, such evidence will be sufficient to show whether the proprietor has given its express consent, or if the applicant has exceeded the limits of its authorisation.
In other cases a contract will either not exist or it will be inadequate on the subject. Although the wording of Article 8(3) is in principle broad enough to include cases of tacit or implied consent, such consent should only be i nferred if the evidence is sufficiently clear as to the intentions of the proprietor. If the evidence is completely silent as to the existence of an ex press or implied authorisation, lack of consent should be generally presumed.
Notwithstanding indirect indications and evidence pointing to implied consent, any ambiguity or doubt should be interpreted in favour of the opponent, as it will usually be q uite difficult to assess whether such consent is sufficiently clear and unequivocal.
For example, the mere fact that the proprietor tolerated unauthorised applications in the name of the agent in third jurisdictions cannot alone create legitimate expectations on
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the part of the applicant that the proprietor will not object to the filing of a CTM application either.
Case No Comment
Decision of 31/01/2001, B 140 006 ‘GORDON and SMITH’ (fig. mark) (confirmed by decision of 07/07/2003, R 336/2001-2)
The mere fact that the opponents failed to immediately oppose the applicant’s action to register the trade mark after they received notice of the fact did not constitute consent.
The fact that the proprietor tolerates conduct outside the boundaries of a contract (such as use of the sign) cannot lead to the conclusion that filing the CTM did not breach the established fiduciary duty if consent is not clear, specific and unconditional.
Case No Comment
Joined cases T-537/10 and T-538/10, ‘FAGUMIT’
The applicant (the CTM owner in cancellation proceedings) focused her line of argument on the consent allegedly granted by the proprietor of the mark. The Court held (like the Board of Appeal) that the consent for the purposes of the registration of the mark in the name of the representative or agent must be clear, specific and unconditional (paras 22-23).
The document relied upon by the CTM owner does not show consent within the meaning of Article 8(3) CTMR (para. 28). The CTM owner was not mentioned in the document and it did not refer to the possibility of registration of the sign as a t rade mark. The CTM owner cannot rely on the fact that the cancellation applicant did not object to the use of the sign by companies other than those referred to in the document. Use of the marks occurred during the course of marketing the goods produced by the cancellation applicant. However, such use is the logical consequence of the cooperation between the cancellation applicant and the distributors of its goods and does not show any abandonment of the sign, which would enable anyone to make an application for the registration of that sign – or its dominant element – as a CTM (para. 27)
Even where consent of the proprietor has been deemed to be clear, specific and unconditional, it will be a q uestion of fact to determine if such consent survives a change of proprietor by way of an asset sale.
Case No Comment
Judgment of 06/09/2006, T-6/05, ‘FIRST DEFENSE’ (I)
The General Court remitted a case of this nature back to the Board of Appeal in order to determine whether the consent obtained by the CTM applicant had survived the purchase of the assets of the former trade mark holder and whether, on the day of the application for registration of the mark, the new holder of the trade mark in the USA (the opponent) was still bound by that consent.
If the opponent was no l onger bound by the consent, the GC indicated that the Board ought then to determine whether the applicant had a valid justification which could offset the lack of such consent.
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4.4 Absence of justification on the part of the applicant
As mentioned above, since it is not possible for the opponent to prove the absence of consent, the burden of proof is reversed and it is up to the applicant to show that the filing of the application was authorised by the proprietor. Although Article 8(3) CTMR treats the lack of the proprietor’s consent and the absence of a valid justification on the part of the applicant as two separate conditions, these requirements largely overlap to the extent that if the applicant establishes that the filing of the application was based on some agreement or understanding to this effect, then it will have also provided a valid justification for its acts.
In addition, the applicant may invoke any other kind of circumstance showing that it was justified to file the CTM application in its own name. However, in the absence of evidence of direct consent, only exceptional reasons are accepted as valid justifications, in view of the need to avoid a v iolation of the proprietor’s legitimate interests without sufficient indications that its intention was to allow the agent to file the application in its own name.
For example, it could be possible to infer that the proprietor has tacitly consented to the filing of the application if it does not react within a r easonable period of time after having been i nformed by the applicant that it intends to apply for a C TM in its own name. However, even in such a c ase it will not be pos sible to assume that the application has been authorised by the proprietor if the agent had not made it sufficiently clear to the proprietor in advance in whose name it would file the application.
Another case of valid justification could be if the proprietor causes its agent to believe that it has abandoned the mark, or that it is not interested in obtaining or maintaining any rights in the territory concerned, for example by suspending the use of the mark over a relatively long period of time.
The fact that the proprietor does not want to spend money on a registration of its trade mark does not give the agent a right to act on its own initiative, as the proprietor might still have an interest in using its trade mark in the territory although it is not registered. Such a bus iness decision cannot be t aken in itself as a s ign that the proprietor has given up the rights in its mark.
Justifications exclusively linked to applicant’s economic interests, such as the need to protect its investment in setting up a local distribution network and promoting the mark in the relevant territory, cannot be considered valid for the purposes of Article 8(3) CTMR.
Nor can the applicant successfully argue in its defence that it is entitled to some financial remuneration for its efforts and ex penditure in building-up goodwill for the mark. Even if such remuneration were well deserved or is expressly stipulated in the agency agreement, the applicant cannot use the registration of the mark in its own name as a means of extracting money from the opponent or in lieu of financial compensation, but should try to settle its dispute with the proprietor either by way of agreement or by suing for damages.
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Case No Comment
Decision of 04/10/2011, 4443 C, ‘CELLO’
As to the justificatory argument that the CTM application was filed in order to protect the goodwill of the mark in the EU, which had been established solely as a result of its trading activities, the Cancellation Division considered that the fact that a di stributor, exclusive or otherwise, develops the goodwill of the trade mark of the owner in its allocated territory forms part of the usual duties of a distributor and cannot constitute, in itself and in the absence of other circumstances, a valid justification for the appropriation of the owner’s mark by the distributor.
Decision of 10/01/2011, 3253 C, ‘MUSASHI’ (fig. mark)
As regards justification concerning economic claims of the party filing the CTM and its arguments that it is entitled to some financial remuneration for permitting the sign to enjoy protection at EU level, and that it could be transferred to the Cancellation applicant, it was held that this could not be valid justification within the meaning of Article 8(3). ‘Even if remuneration were well deserved, the CTM proprietor cannot use the registration of a mark in its own name as a means of receiving payment’ (from the Cancellation applicant) (para. 47).
Decision of 07/07/2003, R 336/2001-2 ‘GORDON and SMITH’ (fig. mark)
An act which compromises the interests of the trade mark proprietor, such as the filing of a t rade mark application in the agent’s or a representative’s name without the proprietor’s consent, and is driven solely by an intention to safeguard the agent’s or a representative’s own interests, is not considered justifiable for the purposes of Article 8(3) CTMR. The same applies to the applicant’s second argument, that is, that it was justified in doing so because it bore the registration costs. The interests of the trade mark proprietor cannot be subordinate to an agent’s or a representative’s financial expenses. The fact that an opponent might be unwilling to incur any financial expenses to register a t rade mark does not automatically grant a right to the agent or representative to proceed with the registration of the trade mark in its own name. This would constitute a violation of the agent’s or representative’s duty of trust and loyalty towards the trade mark proprietor (para. 24).
4.5 Applicability beyond identical signs – goods and services
Article 8(3) CTMR provides that a CTM application will not be registered where ‘an agent or representative of the proprietor of the mark applies for registration thereof in his own name’. Such an explicit reference to the principal’s trade mark gives the prima facie impression that the CTM applied for must be the same as the earlier mark.
Hence, a literal interpretation of Article 8(3) CTMR would lead to the conclusion that its application is only possible where the agent or representative intends to register a mark identical to that of the proprietor.
Moreover, the text of Article 8(3) CTMR does not refer to the goods and services for which the application has been filed and for which the earlier mark is protected and, thus, gives no guidance as to what the exact relationship between the respective goods and services should be for the article to apply.
However, applying Article 8(3) CTMR exclusively to identical signs for identical goods or services would render this provision largely ineffective, as it would allow the applicant to escape its consequences by merely making slight modifications either to the earlier mark or to the specification of goods and s ervices. In such a c ase, the proprietor’s interests would be seriously prejudiced, especially if the earlier mark were already in use and the variations made by the applicant were not significant enough to
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rule out confusion. What is more, if the application were allowed to proceed to registration despite its similarity to the earlier mark, the applicant would be in a position to prevent any subsequent registration and/or use of the earlier mark by the original proprietor within the EU, by relying on A rticles 8(1) or 9(1) CTMR, or the equivalent provisions of national law.
To sum up, in view of the need to effectively protect the legitimate proprietor against unfair practices by its representatives, a restrictive interpretation of Article 8(3) CTMR must be av oided. Therefore, Article 8(3) CTMR must be appl ied not only where the respective marks are identical, but also:
• when the sign applied for by the representative or agent essentially reproduces the earlier mark with slight modifications, additions or deletions, which do no t substantially affect its distinctiveness; and
• when the goods and services in conflict are closely related or equivalent in commercial terms. In other words, what finally counts is that the goods or services of the applicant may be perceived by the public as ‘authorised’ products, the quality of which is still somehow ‘guaranteed’ by the opponent, and which it would have been reasonable for the opponent to market in view of the goods and services protected under the earlier mark.
The following are examples of conflicting signs where the Office considered that Article 8(3) CTMR is applicable:
Earlier mark CTM application Case No
FIRST DEFENSE
(2 US earlier rights)
Decision of 04/05/2009, R 0493/2002-4, ‘First Defense’
(II)
Judgment of 13/04/2011, T-262/09, ‘FIRST DEFENSE’ (II)
Decision of 03/05/2012, R 1642/2011-2 ‘Maritime Acopafi’
(fig. mark)
BERIK (word mark) (2 earlier rights)
Decision of 03/08/2010, R 1367/2009-2 ‘BERIK DESIGN’
(fig. mark)
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Earlier mark CTM application Case No
BERIK (word mark) (2 earlier rights)
Decision of 03/08/2010, R 1231/2009-2 ‘BERIK’ (fig.
mark)
NORAXON Decision of 19/06/1999, B 3 436‘NORAXON’
APEX Decisions of 26/09/2001,
B 150 955 and B 170 789, ‘APEX’
The following are examples of goods and services in conflict where the Office considered that Article 8(3) CTMR is applicable:
Case No Comment
Decision of 04/05/2009, R 0493/2002-4 – ‘FIRST DEFENSE’ (II)
The Board held that the contested disabling sprays in Class 13 were covered by the proprietor’s non-explosive defense weapons in the nature of an organic irritant packaged in an aerosol (or pressurized spray) canister.
However, it considered that protection did not extend to the contested side arms, ammunition, projectiles. These are goods for which commercial activity from the proprietor cannot be reasonably expected. Side arms and a mmunition are far too different from pepper sprays to be covered by Article 8(3) CTMR given that the opponent markets a very specific product (paras 19 to 24).
In its judgment of 13/04/2011, T-262/09, the GC did not examine the arguments of the parties regarding the similarity of the goods.
Decision of 03/05/2012, R 1642/2011-2 ‘Maritime Acopafi’ (fig. mark)
The Board held that the wording suggests only if the mark applied for is essentially identical to the earlier right, in terms of both signs and goods/services, it can be prohibited. On the other hand, a too- literal reading of that provision would fatally weaken its utility by allowing fraudulent agents to register their principals’ marks by merely making minor modifications or unimportant additions to them. Despite these considerations, however, the provision must apply only where the signs and the goods/services are essentially the same, or largely equivalent (para. 18).
In view of this, the Board upheld OD’s findings that the earlier mark’s use for installation of marine accommodation was fundamentally different from the applicant’s services in Class 42 (scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software).
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Case No Comment
Decision of 03/08/2010, R 1367/2009-2 ‘Berik’ (fig. mark)
The Board agreed with the Cancellation Division that the cancellation applicant’s goods in Class 25 could not be considered closely related or equivalent in commercial terms to the applicant’s goods in Class 18, leather or imitation leather. The latter are raw materials for producers of goods made of leather or imitation of leather and, thus, target a different public and have different distribution channels from the goods covered by the cancellation applicant’s marks (paras 30 and 31).
It further agreed with the Cancellation Division that the cancellation applicant’s goods in Class 25 could not be considered closely related or equivalent in commercial terms to the applicant’s goods in Class 16 even if, for example, some of the contested goods could be u sed as merchandising items for a l ine of clothing (paras 28-30).
Decision of 27/02/2012, B 1 302 530 ‘GEOWEB / NEOWEB’
‘In view of the necessity to effectively protect the legitimate proprietor against unfair practices by its representatives, a restrictive interpretation of Article 8(3) CTMR must be a voided. Therefore, this provision must be applied not only where the respective marks are identical, but also where the mark applied for by the representative or agent essentially reproduces the earlier mark with slight modifications, additions or deletions, which do not substantially affect its distinctiveness.
In line with the aforementioned reasoning, Article 8(3) CTMR does not only cover cases where the respective lists of goods and services are strictly identical, but it also applies where the goods and services in conflict are closely related or equivalent in commercial terms. In other words, what finally counts is that the goods or services of the applicant may be perceived by the public as ‘authorised’ products, the quality of which is still somehow “guaranteed” by the opponent’ (p. 20).
Rights Under Article 8(4) CTMR
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART C
OPPOSITION
SECTION 4
RIGHTS UNDER ARTICLE 8(4) CTMR
Rights Under Article 8(4) CTMR
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Table of Contents
1 Introduction................................................................................................ 6
2 Structure of Article 8(4) CTMR ................................................................. 6
3 Conditions of Article 8(4) CTMR............................................................... 8 3.1 Direct right conferred on the opponent ....................................................8 3.2 Types of rights falling under Article 8(4) CTMR .......................................9
3.2.1 Introduction........................................................................................9 3.2.2 Non-registered trade marks ...............................................................9 3.2.3 Other business identifiers ................................................................10
3.2.3.1 Trade names .............................................................................................11 3.2.3.2 Corporate names.......................................................................................11 3.2.3.3 Domain names ..........................................................................................12 3.2.3.4 Titles..........................................................................................................12
3.2.4 Geographical indications .................................................................13 3.2.4.1 Earlier rights deriving from EU legislation..................................................13 3.2.4.2 Earlier rights deriving from the laws of Member States .............................14 3.2.4.3 Earlier rights deriving from international agreements ................................15 3.2.4.4. Scope of protection of PGIs.......................................................................16
3.3 Use requirements .....................................................................................18 3.3.1 National Standard............................................................................18 3.3.2 European Standard – use in the course of trade of more than mere
local significance .............................................................................18 3.3.2.1 Use in the course of trade .........................................................................19 3.3.2.2 Significance of the use ..............................................................................22
3.4 Earlier right ...............................................................................................27 3.5 Scope of protection..................................................................................27
4 Evidence and Standard of Proof ............................................................ 28
TABLE ON NATIONAL RIGHTS THAT CONSTITUTE ‘EARLIER RIGHTS’ IN THE SENSE OF ARTICLE 8(4) CTMR ..................................................... 31
1 Benelux..................................................................................................... 33 1.1 Unregistered trade marks ........................................................................33 1.2 Other signs used in the course of trade .................................................33
1.2.1 Belgium ...........................................................................................33 1.2.2 Luxembourg ....................................................................................33 1.2.3 Netherlands .....................................................................................34
2 Bulgaria .................................................................................................... 34 2.1 Unregistered trade marks ........................................................................34 2.2 Other signs used in the course of trade .................................................35
3 Czech Republic........................................................................................ 35 3.1 Unregistered trade marks ........................................................................35
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3.2 Other signs used in the course of trade .................................................36
4 Denmark ................................................................................................... 36 4.1 Unregistered trade marks ........................................................................36 4.2 Other signs used in the course of trade .................................................37
5 Germany................................................................................................... 37 5.1 Unregistered trade marks ........................................................................37 5.2 Other signs used in the course of trade .................................................38
6 Estonia...................................................................................................... 39 6.1 Unregistered trade marks ........................................................................39 6.2 Other signs used in the course of trade .................................................39
7 Ireland....................................................................................................... 40 7.1 Unregistered trade marks ........................................................................40 7.2 Other signs used in the course of trade .................................................41
8 Greece ...................................................................................................... 41 8.1 Unregistered trade marks ........................................................................41 8.2 Other signs used in the course of trade .................................................42
9 Spain......................................................................................................... 43 9.1 Unregistered trade marks ........................................................................43 9.2 Other signs used in the course of trade .................................................43
10 France....................................................................................................... 44 10.1 Unregistered trade marks ........................................................................44 10.2 Other signs used in the course of trade .................................................44
11 Croatia ...................................................................................................... 45 11.1 Unregistered trade marks ........................................................................45 11.2 Other signs used in the course of trade .................................................46
12 Italy ........................................................................................................... 46 12.1 Unregistered trade marks ........................................................................46 12.2 Other signs used in the course of trade .................................................47
13 Cyprus ...................................................................................................... 47 13.1 Unregistered trade marks ........................................................................47
14 Latvia ........................................................................................................ 48 14.1 Unregistered trade marks ........................................................................48 14.2 Other signs used in the course of trade .................................................48
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15 Lithuania................................................................................................... 49 15.1 Unregistered trade marks ........................................................................49 15.2 Other signs used in the course of trade .................................................49
16 Hungary.................................................................................................... 49 16.1 Unregistered trade marks ........................................................................49
17 Malta ......................................................................................................... 50 17.1 Unregistered trade marks ........................................................................50 17.2 Other signs used in the course of trade .................................................50
18 Austria ...................................................................................................... 50 18.1 Unregistered trade marks ........................................................................50 18.2 Other signs used in the course of trade .................................................51
19 Poland....................................................................................................... 52 19.1 Unregistered trade marks ........................................................................52 19.2 Other signs used in the course of trade .................................................53
20 Portugal .................................................................................................... 53 20.1 Unregistered trade marks ........................................................................53 20.2 Other signs used in the course of trade .................................................54
21 Romania ................................................................................................... 55 21.1 Unregistered trade marks ........................................................................55 21.2 Other signs used in the course of trade .................................................55
22 Slovenia.................................................................................................... 56 22.1 Unregistered trade marks ........................................................................56 22.2 Other signs used in the course of trade .................................................56
23 Slovakia .................................................................................................... 56 23.1 Unregistered trade marks ........................................................................56 23.2 Other signs used in the course of trade .................................................57
24 Finland...................................................................................................... 57 24.1 Unregistered trade marks ........................................................................57 24.2 Other signs used in the course of trade .................................................58
25 Sweden..................................................................................................... 59 25.1 Unregistered trade marks ........................................................................59 25.2 Other signs used in the course of trade .................................................59
26 United Kingdom....................................................................................... 60
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26.1 Unregistered trade marks ........................................................................60 26.2 Other signs used in the course of trade .................................................60
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1 Introduction
The relationship between the Community Trade Mark system and national law is characterised by the principle of coexistence. This means that both the Community Trade Mark system and the national laws exist and oper ate side by side. The same sign can be protected by the same proprietor as a CTM and as a national trade mark in one (or all) of the Member States. The principle of coexistence further implies that the CTM system actively acknowledges the relevance of national rights and their scope of protection. Where conflicts arise between CTMs and na tional trade marks or other national rights, there is no hierarchy determining that one system prevails over the other; instead, these conflicts apply the principle of priority. If the respective requirements are met, earlier national trade marks or other earlier national rights can prevent registration of, or invalidate a later CTM.
Although the TM Directive and its subsequent implementation have harmonised the laws relating to registered trade marks, no such harmonisation has taken place on an EU scale with regard to non-registered trade marks nor for most other earlier rights of a similar nature. These un-harmonised rights remain completely governed by national laws.
The types of earlier rights which can be relied upon in proceedings before the Office are specified in the CTMR under:
• Article 8(4) CTMR, which restricts the scope of protection in opposition proceedings to earlier non-registered trade marks and ot her signs used i n the course of trade of more than mere local significance;
• Article 53(2)(a)-(d) CTMR, which broadens the scope of possible earlier rights to be relied upon f or invalidity proceedings beyond those of Article 8(4) CTMR to also cover other earlier rights, in particular the right to a na me, the right of personal portrayal, a copyright and an industrial property right;
• Article 111 CTMR, which complements the range of earlier rights to be relied upon in opposition proceedings by providing that rights which are only valid in particular localities and, thus, do not meet the ‘more than mere local significance’ criterion of Article 8(4) CTMR, can oppose use of a CTM even though these local rights cannot impede its registration.
This part of the Guidelines only deals with the earlier rights falling under Article 8(4) CTMR.
2 Structure of Article 8(4) CTMR
Article 8(4) CTMR reads:
Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign:
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(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Article 8(4) CTMR means that in addition to the earlier trade marks specified in Article 8(2) CTMR, non-registered trade marks and other signs protected at Member State level used in the course of trade as ‘business identifiers’ of more than mere local significance can be invoked in an opposition provided that such rights confer on their proprietors the right to prohibit the use of a subsequent trade mark.
Article 8(4) CTMR does not expressly or exhaustively enumerate the particular rights which can be invoked under this provision, but rather outlines a broad spectrum of rights that might serve as basis for an opposition against a CTM application. Therefore, Article 8(4) CTMR can be regarded as a general ‘catch-all-provision’ for oppositions based on non-registered trade marks and other signs used in the course of trade.
Nevertheless, the broad scope of earlier rights to be r elied upon i n opposition proceedings under Article 8(4) CTMR is subject to a number of restrictive conditions:, these rights must confer an entitlement to the proprietor to exercise them, they must be of more than local significance, they must be protected by the national law governing them against the use of the subsequent trade mark and the rights must have been acquired prior to the CTMA under the law of the Member State governing that sign.
The ‘more than mere local significance’ requirement aims at restricting the number of potential opposing non-registered rights, thus avoiding the risk of a collapse or paralysis of the CTM system by being flooded with opposing, relatively insignificant rights.
The ‘national protection’ requirement is deemed necessary as the non-registered national rights are not easily identifiable and their protection is not harmonised on an EU level. Consequently, only national law governing the earlier signs may define the scope of their protection.
While the requirements of ‘use in the course of trade’ and ‘use of more than mere local significance’ are to be interpreted in the context of Community law (European standard), national law applies when determining whether a par ticular right is recognised and protected under the national law, whether its holder is entitled to prohibit the use of a subsequent trade mark, and what conditions need to be met under national law for the right to be successfully exercised.
As a consequence of this dualism, the Office must apply both the relevant provisions of the CTMR and the national law governing the earlier opposing right. In view of the two- tier examination to be applied under Article 8(4) CTMR, this provision, as the link between Community and National law, displays a somewhat ‘hybrid’ nature.
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3 Conditions of Article 8(4) CTMR
The conditions for successfully invoking Article 8(4) CTMR are:
a) the opponent must be the beneficiary of a non-registered trade mark or of another sign used in the course of trade;
b) use of more than mere local significance;
c) acquisition prior to the CTMA under the law of the Member State governing that sign;
d) right to prohibit the use of a subsequent trade mark under the law of the Member State governing that sign.
3.1 Direct right conferred on the opponent
The legal systems of the EU Member States provide various means of preventing the use of later marks on the basis of earlier signs used in the course of trade. However, in order to come within the meaning of Article 8(4) CTMR, the earlier right must be vested in a particular owner or a precise class of user that has a quasi-proprietorial interest over it, in the sense that it can exclude or prevent others from unlawfully using the sign. This is because Article 8(4) CTMR is a ‘ relative’ ground for opposition and Article 41(1)(c) CTMR provides that oppositions may be filed only by the proprietors of earlier marks or signs referred to in Article 8(4) CMTR and by persons authorised under the relevant national law to exercise these rights. In other words, only persons having an interest directly recognised by law in initiating proceedings are entitled to file an opposition within the meaning of Article 8(4) CTMR.
For example, in some Member States, the use of a sign may be prohibited if it results in unfair or misleading business practices. In such cases, if the earlier right lacks any ‘proprietorial quality’, it will not fall within Article 8(4) CTMR. It does not matter whether these signs are protected against misleading or unfair use under trade mark law, the law relating to unfair competition, or any other set of provisions. An example in this respect is the German Regulation governing the use of the geographical indication ‘Solingen’ for specific goods (cutlery scissors, knives etc.). This law would not be a proper basis for an opposition under Article 8(4) CTMR because the sign in question lacks any proprietorial quality and, as such, is more public in nature.
Earlier right Case No
A.O. CUBA R0051/2007-4
Where the national law does not confer on a legal entity (whether public or private) a subjective right allowing it to prohibit the use of a subsequent trade mark, the “proprietary requirement” is not met. The Board found that the Spanish law giving effect to the bilateral Agreement between Spain and Cuba for the protection of the appellation of origin “Cuba” was not sufficient to grant such a subjective right (para. 23-27).
In assessing the proprietorship of a sign used in the course of trade, the Office must analyse specifically whether the opponent has acquired rights over the sign ‘in accordance with the national law’ (judgment of 18/01/2012, T-304/09, ‘Basmati’).
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3.2 Types of rights falling under Article 8(4) CTMR
3.2.1 Introduction
When assessing which kind of intellectual property rights can be invoked under Article 8(4) CTMR and which cannot, a European standard applies. The distinction follows from the scheme of the CTMR and, in particular, from the differentiation made between the kinds of earlier signs upon which an oppos ition may be based under Article 8(4) CTMR and t he types of further rights that may be the basis for invalidity under Article 53(2) CTMR. While Article 8(4) CTMR refers to signs (‘non-registered trade mark or … another sign’), Article 53(2) CTMR refers to a broader set of rights: (a) a right to a name; (b) a right of personal portrayal; (c) a copyright; and (d) an industrial property right.
Therefore, although the signs covered by Article 8(4) CTMR fall within the broad category of ‘industrial property rights’, not all industrial property rights are ‘signs’ for the purposes of Article 8(4) CTMR. Since this distinction is contained in the CTMR, the classification of a r ight under the respective national law is not decisive, and it is immaterial whether the national law governing the respective sign or industrial property right treats both types of rights in one and the same law.
The types of rights falling under Article 8(4) CTMR are:
• ‘non-registered trade marks’; and • ‘other signs used in the course of trade’ which cover:
○ business identifiers such as:
— trade names; — corporate names; — establishment names; — titles of publications or similar works; — domain names;
○ geographical indications.
Most national business identifiers falling within the category of earlier rights within the meaning of Article 8(4) CTMR will be non -registered signs. However, the fact that a sign is also registered in accordance with the requirements of the respective national law does not bar it from being invoked under Article 8(4) CTMR.
3.2.2 Non-registered trade marks
Non-registered use-based trade marks exist in a number of the Member States1 (see the Table at the end of the document for an overview) and are signs that indicate the commercial origin of a product or service. Therefore, they are signs which function as a trade mark. The rules and conditions governing acquisition of rights under the relevant
1 Benelux, Cyprus, Croatia, Estonia, France, Lithuania, Poland, Romania, Slovenia and Spain do not protect unregistered trade marks (unless, for some jurisdictions, they are considered well-known within the meaning of Article 6bis of the Paris Convention).
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national law vary from simple use to use having acquired a reputation. Neither is their scope of protection uniform, although it is generally quite similar to the scope of protection under the provisions in the CTMR concerning registered trade marks.
Article 8(4) CTMR reflects the existence of such rights in Member States and gr ants the proprietors of non-registered marks the possibility of preventing the registration of a CTMA where they would succeed in preventing use of that CTMA under the relevant national law, by showing that the conditions set by the national law for prohibiting use of the later CTM are satisfied and the other conditions of Article 8(4) CTMR are met.
Example: R 1529/2010-1 ‘Gladiator’ where a non -registered trade mark in the Czech Republic was invoked.
3.2.3 Other business identifiers
‘Other signs used in the course of trade’ is a broad category that is not enumerated in Article 8(4) CTMR. In order for such signs to come within the ambit of Article 8(4) CTMR, they must have an identifying function, that is, they must primarily serve to identify in trade a business (business identifiers) or a geographical origin (geographical indications). Article 8(4) CTMR does not cover other types of intellectual property rights that are not ‘commercial signs’ – such as patents, copyrights or design rights which do not have a pr imarily identifying function but which protect technical or artistic achievements or the ‘appearance’ of something.
Some examples of cases dealing with whether a r ight is a ‘ sign’ for the purposes of Article 8(4) CTMR are set out below.
Earlier right Case No
JOSE PADILLA (copyright)
T-255/08
The Court found that copyright cannot constitute a ‘sign used in the course of trade’ within the meaning of Article 8(4) CTMR. It is apparent from the scheme of Article 53 CTMR that copyright is not such a sign. Article 53(1)(c) CTMR provides that a Community trade mark is to be declared invalid where there is an earlier right as referred to in Article 8(4) CTMR and the conditions set out in that paragraph are fulfilled. Article 53(2)(c) CTMR provides that a Community trade mark is also to be declared invalid where the use of such a trade mark may be prohibited pursuant to any ‘other’ earlier right and in particular a copyright. It follows that copyright is not one of the earlier rights referred to in Article 8(4) CTMR.
Earlier right Case No
Dr. No (copyright) T-435/05
In addition, it is clear from Article 8(4) CTMR read in conjunction with Article 53(2) CTMR that the protection provided for by copyright cannot be relied on in opposition proceedings, but only in proceedings for a declaration of invalidity of the Community mark in question (para. 41).
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Earlier rights Case No
and
(Community designs)
B 1 530 875
Designs are a form of intellectual property dealing with the ornamental or aesthetic aspects of an article’s appearance. Designs are deemed to be the result of a creative work which needs to be protected against unauthorised copying or imitation by third parties in order to ensure a fair return on investment. They are protected as intellectual property, but they are not business identifiers or trade signs. Therefore, designs do not qualify as signs used in the course of trade for the purpose of Article 8(4) CTMR.
3.2.3.1 Trade names
Trade names are the names used to identify businesses, as distinguished from trade marks which identify goods or services as produced or marketed by a par ticular undertaking.
A trade name is not necessarily identical with the corporate name or commercial name entered in a commercial or similar register as trade names can cover other non- registered names such as a sign which identifies and di stinguishes a c ertain establishment. Trade names are protected as exclusive rights in all Member States.
Pursuant to Article 8 of the Paris Convention, trade names enjoy protection without any registration requirement. If national legislation requires registration for national trade names, the respective provision is not applicable by virtue of Article 8 of the Paris Convention with respect to trade names held by a national of another Contracting Party to the Paris Convention. This applies as well in respect of nationals of a member of the WTO Agreement.
As regards the application of Article 8(4) CTMR to trade names, where the trade name is invoked on the basis of the law of one of the Member States where a registration is a condition for the enforcement of rights in a t rade name, the Office will apply this requirement where the Member State and the nationality of the opponent are the same, but will not apply this requirement in all other cases, since this would violate the provisions of Article 8 of the Paris Convention.
Examples: R 1714/2010-4 where the Spanish trade name ‘JAMON DE HUELVA’ was invoked.
3.2.3.2 Corporate names
A corporate name or company name is the official designation of an undertaking, in most cases registered in the respective national commercial register.
Article 8(4) CTMR requires that actual use be shown, even if national law vests in the holder of such a name the right to prohibit the use of a subsequent trade mark on the basis of registration alone. However, if under national law registration is a prerequisite for protection, registration must be shown as well. Otherwise, there would be no
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national right that the opponent could invoke.
Examples: judgment of 14/09/2011, T-485/07, ‘O-live (fig.)’ where the Spanish commercial name ‘OLIVE LINE’ was invoked and R 0021/2011-1 where the French company name ‘MARIONNAUD PERFUMERIES’ was invoked.
3.2.3.3 Domain names
A domain name is a combination of typographical characters corresponding to one or several numeric IP addresses that are used to identify a particular web page or set of web pages on the internet. As such, a domain name functions as an ‘address’ used to refer to a s pecific location on t he internet (oami.europa.eu) or an e mail address (@oami.europa.eu).
Domain names are registered with organisations or commercial entities called ‘domain name registrars’. Although a domain name is unique and may be a valuable commercial asset, a domain name registration per se is not an intellectual property right. Such registrations do not create any form of exclusive right. Instead, ‘registration’ in this context refers to a contractual agreement between a dom ain name registrant and the domain name registrar.
However, the use of a domain name may give rise to rights that can be the basis for an opposition under Article 8(4) CTMR. This can occur if the use of the domain name means that it is protected as a non-registered trade mark or a business identifier under the applicable national law.
Examples: R 0275/2011-1 where rights based on the use of the German domain name ‘lucky-pet.de’ were invoked and B 1 719 379 where rights based on the use of the French domain name ‘Helloresto.fr’ were invoked.
3.2.3.4 Titles
Titles of magazines and other publications, or titles of similar categories of works such as films, television series, etc. fall under Article 8(4) CTMR only if, under the applicable national law, they are protected as business identifiers.
The fact that the copyright in a t itle of a w ork can be i nvoked under the respective national law against a subsequent trade mark is not material for the purposes of Article 8(4) CTMR. As set out above, whilst a right in copyright may be us ed to invalidate a CTM under Article 53(2) CTMR, it is only where a title has an ‘identifying’ function and acts as a business identifier that it comes within the scope of Article 8(4) CTMR. Therefore, for such signs to be relied on under Article 8(4) CTMR in the context of opposition proceedings, the national law must foresee a p rotection which is independent from that recognised by copyright law (judgment of 30/06/2009, T-435/05, ‘Dr. No’, paras. 41-43.)
As with all rights under Article 8(4), the title must have been used in the course of trade. This will normally require that the work to which the title relates must have been placed on t he market. Where the title relates to a service (such as a t elevision programme), that service must have been m ade available. However, there will be circumstances where pre-use advertising may be sufficient to create rights, and where such advertising will constitute ‘use’ within the meaning of Article 8(4) CTMR. In all
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cases, the title must have been used as an indicator of the commercial origin of the goods and services in question. Where a title is used only to indicate the artistic origin of a work, such use falls outside the scope of Article 8(4) CTMR (judgment of 30/06/2009, T-435/05, ‘Dr. No’, 25-31).
Example: R 0181/2011-1 where the magazine title ‘ART’ was invoked.
3.2.4 Geographical indications
Geographical indications are used to designate the origin of goods as being from a particular region or locality. For a general overview on geographical indications see the Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and Community Collective Trade Marks, paragraph 2.09 on Article 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR.
Depending on t he context, as described below, the term ‘protected geographical indication’ (PGI) may cover terms such as ‘designations of origin’, ‘appellations of origin’ and equivalent terms, and is used in this chapter to refer to PGIs in general.
PGIs are protected in various ways in the EU (national law, EU law, international agreements) and cover various product areas (such as foodstuffs or handicrafts).
This section identifies the types of PGIs that may serve as a valid basis for oppositions under Article 8(4) CTMR.
3.2.4.1 Earlier rights deriving from EU legislation
At EU level, there is protection for PGIs for the following categories of products:
1. certain foodstuffs and certain non-food agricultural products (pursuant to Regulation No 1151/20122, the ‘Foodstuffs Regulation’);
2. wines and sparkling wines (pursuant to Regulation No 1308/20133, the ‘Wines Regulation’); and
3. spirits (pursuant to Regulation No 110/20084, the ‘Spirits Regulation’).
The nature of the indications covered is broadly the same albeit that the precise definition of terms varies according to the legislation. Earlier rights that are registered or applied for as PGIs under the above regulations (which can even include PGIs from third countries), can constitute a ‘ sign used in the course of trade’ under Article 8(4) CTMR and m ay be a v alid basis for an oppos ition to the extent that they allow the proprietor to prevent use of a s ubsequent mark. Their ability to prevent use is governed by the relevant provisions of the Regulations cited above (Article 13, Article 103(2) and Article 16 of the Foodstuffs, Wines and Spirits Regulations
2 Replaced and repealed Regulation No 510/2006 which had replaced and repealed Regulation No 2081/92. 3 Replaced and repealed Regulation No 1234/2007 which had integrated, through codification by Regulation No 491/2009, Regulation No 479/2008 which was repealed at the same time. 4 Replaced and repealed Regulation No 1576/89.
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respectively). In this context, it is important to distinguish the latter provisions preventing use from those that prevent registration5 of a trade mark, which are not a basis for opposition under Article 8(4) CTMR.
In order to substantiate its right, the opponent must provide the Office with the necessary facts and evidence regarding the existence of its right. A mere extract of the relevant online EU databases (DOOR, E-Bacchus or E-Spirit-Drinks) or in the case of spirits, an extract of Annex III of the Spirits Regulation, is not sufficient, as they do not contain sufficient data to determine all the relevant particulars of the earlier right (e.g. entitlement of the opponent or goods protected by the PGI).
The opponent must in any event provide the Office with copies of the publication and registration of the PGI in the Official Journal and, if these documents lack information on the opponent’s entitlement, further documents proving its entitlement to file the opposition as proprietor or person authorised under the relevant national law to exercise the right (Article 41(1)(c) CTMR and Rule 19(2) CTMIR). See in this respect decision of 17/10/2013, R1825/2012-4 ‘Dresdner StriezelGlühwein/Desdner Stollen’ para. 37)
The EU system of protection of PGIs for foodstuffs, wines and spirits is exhaustive in nature and super sedes national protection for those goods. This arises from the findings of the Court in the judgment of 08/09/2009, C-478/07 ‘BUD’, paras. 95-129. Here the Court held that the aim of Regulation No 510/2006 (the predecessor of the current Foodstuffs Regulation) was to provide a uni form and exclusive system of protection of PGIs for agricultural products and foodstuffs that superseded national laws for the relevant products6. Although the Court has not specifically pronounced upon the exhaustive nature of the Wines and Spirits Regulations, the same principle must apply because they contain substantively similar provisions to the Foodstuffs Regulation and they have the same purpose for the respective products.
3.2.4.2 Earlier rights deriving from the laws of Member States
Certain PGIs deriving from the laws of Member States may be a basis for opposition under Article 8(4) CTMR. Nevertheless, for the reasons set out above, in the areas of foodstuffs, wines and spirits protection at EU level is exhaustive in nature which means that an opposition under Article 8(4) CTMR cannot be based on national rights in these areas. This is because the EU system of protection comprising the above regulations overrides and replaces national protection of PGIs for foodstuffs, wines and spirits.
Consequently, PGIs for certain foodstuffs7 and certain non-food agricultural products8 (as set out in Annex I of the Treaty on the Functioning of the European Union (TFEU) and Annex I of the Foodstuffs Regulation), wines and grapevine products9 (as set out in Annex VII, part 2 of the Wines Regulation) and spirit drinks10 (as set out in Annex II
5 Articles 14, 102 and 23 of the Foodstuffs, Wines and Spirits Regulations respectively. 6 For additional information, see the Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and Community Collective Trade Marks, paragraph 2.09 on Article 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR. 7 E.g. meat, cheese, pastry, edible oils, vegetables, fruits, beverages made from plant extracts, vinegar (including wine vinegar), unmanufactured tobacco, beer, confectionery. 8 E.g. wool, leather, essential oils. 9 E.g. wine, sparkling wine, liqueur wine, wine must, but not wine vinegar. 10 E.g. grain spirit, wine spirit, fruit spirit, brandy, liqueurs, rum, whisky, gin.
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of the Spirits Regulation) that are protected under national laws are not a p roper ground of opposition under Article 8(4) CTMR. For the latter products, the opponent must invoke the relevant EU legislation in the notice of opposition.
Nevertheless, where no uniform EU protection is in place for a category of goods (e.g. handicrafts), PGIs that are protected under national laws can be a bas is for opposition under Article 8(4) CTMR (e.g. ČESKÝ PORCELÁN / FINE BOHEMIAN CHINA for crystal ware).
3.2.4.3 Earlier rights deriving from international agreements
In order for an opposition under Article 8(4) CTMR to be successful on the basis of a right deriving from any international agreement, the provisions under the international agreement must be directly applicable and they must allow the holder of a PGI to take direct legal action to prohibit the use of a subsequent trade mark.
In the latter respect, international agreements are not always self-executing. This depends on the characteristics of the agreement itself and on how they have been interpreted in the relevant jurisdiction. For example, the Office considers that the provisions of the Lisbon Agreement (in particular Articles 3 and 8) are not self- executing. As expressly indicated by Article 8 of the Lisbon Agreement, it is the relevant national legislation that must determine which type of legal actions may be taken, their scope and whether these legal actions include allowing the proprietor of an appellation of origin to prohibit the use of a subsequent trade mark. Therefore, in such cases, the requisite national legislation must be adduced as this is a nec essary component in order for the opponent to prove that the PGI in question can prevent use of the subsequent mark and that the opponent is entitled by the law governing the right to exercise this right.
International agreements entered into by the EU
PGIs deriving from agreements between the EU and third countries can be i nvoked under Article 8(4) CTMR if the provisions of these agreements vest the PGI in a particular beneficiary or a precise class of users that have direct right of action11.
International agreements entered into by Member States including the Lisbon Agreement12
For the reasons set out in paragraph 3.2.4.2 above, a PGI protected under an international agreement concluded by Member States (either among Members States or with third countries) cannot be invoked as an earlier right under Article 8(4) CTMR if it encroaches upon the exhaustive nature of EU law in the relevant areas (currently foodstuffs, wines and spirits).
In C-478/07 ‘BUD’, the Court discussed the exhaustive nature of EU law as regards PGIs originating from Member States. In the Office’s interpretation, this also applies a
11 PGIs from third countries can also be registered at EU level under the Foodstuffs, Wines and Spirits Regulations. 12Some Member States (Bulgaria, Czech Republic, France, Hungary, Italy, Portugal and Slovakia) are party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 1958 (as revised at Stockholm 1967, and as amended on 28/09/1979). The European Union is not a signatory to the Lisbon Agreement.
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fortiori to third-country PGIs in the relevant product fields which enjoy protection in the territory of a Member State through an international agreement concluded between that Member State and a non-EU-country13.
This equally applies to the Lisbon Agreement. The Lisbon Agreement creates an international registration and protection system for ‘appellations of origin’ (Article 2(1)). The definition of ‘appellations of origin’ for food and bev erage products under this agreement is largely equivalent to that of a ‘designation of origin’14 under EU regulations. Therefore, appellations of origin protected in a Member State by virtue of the Lisbon Agreement cannot be a basis for opposition under Article 8(4) CTMR.
The only exceptions in this regard are the following.
• International agreements which cover PGIs which do not relate to foodstuffs, wines or spirits.
• International agreements concluded with third countries by a Member State before its accession to the EU. This is because the obligations arising out of an international agreement entered into by a Member State before its accession to the EU have to be respected. However, Member States are required to take all appropriate steps to eliminate the incompatibilities between an agreement concluded before a M ember State’s accession and t he Treaty (see Article 307 Treaty Establishing the European Community, now Article 351 TFEU, as interpreted by the Court in its judgment of 18/11/2003, C-216/01 ‘BUD’, paras. 168-172).
• International agreements concluded with a third country by a Member State after its accession to the EU, but before the entry into force of the uniform EU system of protection in the given product area.
As Member States are under obligation to eliminate incompatibilities with EU law, the Office will apply the last two exceptions (which exclusively concern third country PGIs in the fields of foodstuffs, wines or spirits) only when the opponent expressly refers to the exception and supports it by a coherent line of argument and relevant evidence (in particular, concerning the date of entry into force of the cited international agreement in the EU Member State where protection is claimed and its continued validity). General allegations by the opponent (such as merely citing the relevant international agreement) will not be sufficient in themselves for the Office to consider that one of the latter two exceptions applies.
3.2.4.4. Scope of protection of PGIs
The ability of PGIs to prevent use is governed by the relevant provisions of the EU Regulations (Articles 13, 103(2) and 16 of the Foodstuffs, Wines and Spirits Regulations respectively). In this context, it is important to distinguish the latter provisions preventing use from those that prevent registration15 of a trade mark
13 To which the EU is not a contracting party. 14This term is defined and explained in The Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and C ommunity Collective Trade Marks, paragraph 2.09 on A rticle 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR. 15Articles 14, 102 and 23 of the Foodstuffs, Wines and Spirits Regulations respectively.
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and which are not a b asis for opposition under Article 8(4) CTMR16. Therefore, under Article 8(4) CTMR, a PGI can prevail if the conditions set out in the provisions preventing use are met, these are:
• the contested CTMA exclusively consists of the whole PGI or adds other words or figurative elements (direct or indirect use) for comparable products or, even for non-comparable products, if the use of the PGI exploits the reputation of the protected name17
• the contested CTMA contains or consists of an imitation or of an evocation of the PGI18
• other misleading indications and practices.19
Detailed information on the scope of protection of PGIs protected under the EU legislation is included in the Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and Community Collective Trade Marks, paragraph 2.09 on Article 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR (e.g. definitions of direct use, comparable products or evocation).
The provisions of the EU Regulations preventing use contemplate situations where a PGI can be invoked against goods or services which do not necessarily fall within the scope of objectionable goods and services under the ex officio examination of absolute grounds, subject to the conditions of the relevant provisions of the corresponding EU regulations. For instance, under Article 13(1)(a), Article 103(2)(a)(ii) and Article 16(a) of the Foodstuffs, Wines and Spirits Regulations respectively, a PGI with repute can be invoked against products and s ervices which would not be ex officio objectionable under absolute grounds.
The scope of protection of PGIs that are protected by regulations other than the abovementioned EU Regulations depends on the relevant provisions.
Nevertheless, either under EU or national legislation, the scope of protection of PGIs cannot exceed what is required in order to safeguard the function of the PGI, the function in question is to designate goods as being from a particular geographic origin and the special qualities connected therewith. Unlike other signs, PGIs are not used to indicate the commercial origin of goods and t hey afford no pr otection in this regard. Therefore, where the specification of a CTMA is limited to goods in conformity with the specification of the relevant protected PGI, the function of the PGI in question is safeguarded in relation to those products because the CTMA only covers products from the particular geographic origin and the special qualities connected therewith. Consequently, an opposition against a CTMA which has been appropriately limited will not succeed. See in this regard Article 12(1) of the Foodstuffs Regulation or Article 103(1) of the Wines Regulation.
Where a P GI is invoked under Article 8(4) CTMR, as for all other signs under this article, the opponent must prove that the sign is used in the course of trade of more than mere local significance. The use must be made in accordance with the essential function of such a sign, namely to guarantee to consumers the geographical origin of the goods and the special qualities inherent in them, but it
16 See, in this sense, judgment of 12/06/2007, joined cases T-60/04 to 64/04, ‘Bud’, para. 78. 17Article 13(1)(a), 103(2)(a), 16(1)(a) of the Foodstuffs, Wines and Spirits Regulations respectively. 18Article 13(1)(b), 103(2)(b), 16(1)(b) of the Foodstuffs, Wines and Spirits Regulations respectively. 19Article 13(1)(c) and (d), 103(2)(c) and (d), 16(1)(c) and (d) of the Foodstuffs, Wines and S pirits Regulations respectively.
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must also be s hown that the sign was used in the course of trade, that is, as a distinctive element which serves to identify an economic activity engaged in by its proprietor (see judgment of 29/03/2011, C-96/09P ‘BUD’, paras. 147 and 149, respectively). Therefore, documents mentioning a P GI exclusively in a non-trade context are not sufficient for the purposes of Article 8(4) CTMR.
3.3 Use requirements
In order to successfully invoke Article 8(4) CTMR in opposition proceedings, the earlier rights must be used. There are two different use requirement standards which must be taken into account:
• National standard • European standard
The two use requirement standards, however, clearly overlap. They must not be viewed in isolation but have to be assessed together. This applies, in particular, to the ‘intensity of use’ under the National standard and ‘use in trade of more than mere local significance’ under the European standard.
3.3.1 National Standard
National standard is relevant as it defines the scope of protection of the earlier rights which are often not easily identifiable, all the more so since their protection is not harmonised on an E U level (see further below paragraph 3.4 on t he scope of protection). This standard determines the existence of the national right and t he conditions of protection. For non-registered trade marks and business identifiers which do not require registration, use constitutes the only factual premise justifying the existence of the right, including the ascertainment of the beginning of its existence. The National standard also prescribes the intensity of use under the relevant national law which may vary from mere first use in trade to use requiring recognition or reputation.
For example, right to an unregistered trade mark in Denmark is acquired by mere commencement of its use in the Danish territory.
In Germany, however, an unregistered trade mark is acquired through use which has led to recognition by the relevant public as a trade mark (‘Verkehrsgeltung’). According to case law distinctive signs require 20 to 25% recognition whereas non-distinctive signs must acquire recognition by 50% of the relevant public.
3.3.2 European Standard – use in the course of trade of more than mere local significance
Under Article 8(4) CTMR, the existence of an earlier non-registered trade mark or of another sign gives good grounds for opposition if the sign satisfies, inter alia, the following conditions: it must be used in the course of trade and the use must be of more than mere local significance.
The above two conditions are apparent from the very wording of Article 8(4) CTMR and must, therefore, be interpreted in the light of Community law. The common purpose of
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the two conditions laid down in Article 8(4) CTMR is to limit conflicts between signs by preventing an ear lier right which is not sufficiently definite – that is to say, important and significant in the course of trade – from preventing registration of a new Community trade mark. A right of opposition of that kind must be r eserved to signs which actually have a real presence on their relevant market (judgment of 29/03/2011, C-96/09 P, ‘BUD’, para. 157).
3.3.2.1 Use in the course of trade
The first requirement under Article 8(4) CTMR is that the sign must be used in the course of trade.
The notion of ‘use in the course of trade’ in accordance with Article 8(4) CTMR is not the same as ‘genuine use’ in accordance with Article 42(2) and (3) CTMR (judgment of 30/09/2010, T-534/08, ‘Granuflex’, paras 24-27). The aims and conditions connected with proof of genuine use of registered Community or national trade marks are different from those relating to proof of use in the course of trade of the signs referred to in Article 8(4) CTMR (judgment of 09/07/2010, T-430/08 ‘Grain Millers’, para. 26, and judgment of 29/03/2011, C-96/09 P, ‘BUD’ para. 143). Therefore, use must be interpreted according to the particular type of right at issue.
The Court of Justice ruled that the ‘use of the sign in the course of trade’ within the meaning of Article 8(4) CTMR refers to the use of the sign ‘in the course of a commercial activity with a view to economic advantage and not as a p rivate matter’ (judgments of 12/11/2002, C-206/01, ‘Arsenal Football Club’, para. 40; of 25/01/2007, C-48/05, ‘Adam Opel’, para. 18; of 11/09/2007, C-17/06, ‘Céline’, para. 17).
However, the Court of Justice also ruled that deliveries made without charge may be taken into account in order to ascertain whether the requirement for use of the earlier right in the course of trade has been met, since those deliveries could have been made in the context of a commercial activity with a view to economic advantage, namely to acquire new outlets (judgment of 29/03/2011, C-96/09 P ‘BUD’, para. 152).
As far as the time of use of the sign is concerned, an opponent must prove that use took place before the filing of the CTM application or the priority date if relevant (see judgment of 29/03/2011, C 96/09 P ‘BUD’, para. 166-168).
Earlier sign Case No
BUD C-96/09 P
The Court discussed whether use which takes place exclusively or to a large extent between the filing of an application for registration and its publication was sufficient to meet the use requirement. One of the parties had argued that only the acquisition of the right had to take place before filing of the CTMA but not its use. The Court applied the same temporal condition as to the acquisition of the right and concluded that use had to take place before the filing of the application. The Court of Justice considered that in view of the considerable period of time which may elapse between the filing of an application for registration and its publication, the obligation of use in the course of trade of the sign before the filing of the application guarantees that the use claimed for the sign concerned is real and not an exercise whose sole aim has been to prevent registration of a new trade mark (paras 166 to168).
In the case of unregistered signs, the use must be continuous and uninterrupted until the filing of the opposition, since otherwise there is no certainty that the rights in the
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unregistered sign have not lapsed. In this context, Rule 19(2)(d) CTMIR expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) CTMR, the opponent shall provide evidence of its acquisition, continued existence (emphasis added) and scope of protection of that right.
The following is an example of an inter partes case relating to invalidity proceedings. The reasoning and the findings also apply to oppositions, given that Article 8(4) CTMR is a ground that can be invoked both in opposition and in invalidity:
Earlier sign Case No
‘BAMBOLINA’ (non-registered mark in a number of MS)
Cancellation decision 3728 C (confirmed by BoA R 1822/2010-2, and
judgment T-581/11)
The evidence showed use in the course of trade of the non-registered trade mark for three years, not covering the last two years before the date of filing of the invalidity request. The Cancellation Division held that an earlier non-registered sign relied on in an invalidity action must be in use at the time of filing the request. Since for these signs use constitutes the factual premise justifying the existence of the right, the same factual premise must still exist, and be proven, on the date of filing of the invalidity request (paras 25-28 of the Cancellation decision). The Board confirmed the finding of the Cancellation Division, adding that Rules 19(1) and (2)(d) CTMIR state that where an opposition is based on Article 8(4) CTMR, evidence of, inter alia, its ‘continued existence’ must be adduced within the period given by the Office for presenting or completing facts, evidence or arguments in support of the opposition. Failure to prove the existence, validity and scope of protection of the earlier mark or right within that period will lead to the opposition being rejected as unfounded (Rule 20(1) CTMIR). In the Board’s opinion, these Rules apply mutatis mutandis to cancellation proceedings (para. 15 of the BoA decision).
The requirement that the sign be used in the course of trade must, as stated above, be interpreted in the light of Community law. It must be di stinguished from the requirements provided for under the applicable national laws which might set specific requirements as far as the intensity of the use is concerned.
The European use requirement as prescribed by Article 8(4) CTMR applies independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a sign alone, i.e. without any requirement relating to use. The following is an example where the opponent relied on the registration, at national level, of a trade name, but failed to prove that the sign was used in trade:
Earlier sign Case No
‘NACIONAL’ (Portuguese name of establishment) R 693/2011-2
Under Article 8(4) CTMR, the fact that the opponent may, in accordance with the law of Portugal, have acquired exclusive rights plainly enforceable against subsequent trade marks on the basis of the registration of a ‘name of establishment’, does not exempt it from the burden of proving that the sign in question has been used in the course of trade of more than local significance. The mere fact that the sign is registered in accordance with the requirements of the respective Portuguese law is not in itself sufficient for the application of Article 8(4) CTMR (paras 20-26).
Depending on the applicable national law, an opponent might have to prove not only that the sign relied on is used in the course of trade (this being, as stated, a requirement under Community law), but also that it has been registered with the competent national authorities. It would not be sufficient that the European requirement
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of ‘use in trade’ is met if the registration requirement is not fulfilled. However, under certain national laws, rights in a company name may be i nvoked, as long as the company name has been used, prior to the registration of the entity in the companies register. The following is an e xample where the opponent invoked prior rights in a company name used in the course of trade in Germany that was not registered at the time of filing the contested CTMA:
Earlier sign Case No
‘Grain Millers GmbH & Co. KG’ (German company name) T-430/08
The opponent invoked under Article 8(4) CTMR the company name ‘Grain Millers GmbH & Co. KG’ used in the course of trade in Germany for ‘flour, in particular wheat flour and r ye flour’. Therefore, the opponent claimed the name of a GmbH (Gesellschaft mit beschränkter Haftung, ‘limited liablitiy company’ in English). The applicant argued that, according to Article 11(1) German Limited Companies Act (GmbH Gesetz), a GmbH does not exist before its registration and that the opponent was therefore not entitled, in support of its opposition, to rely on its business name, because the company was registered only after the filing of the contested CTM application. The GC took a different view and held that, according to the case- law of the German courts, the right to a business name exists pursuant to Paragraph 5(2) of the Markengesetz from the first use in the course of trade, without the obligation to register (para. 36).
A sign is used in the course of trade where that use occurs in the context of commercial activity with a view to economic advantage and not as a private matter.
Therefore, the Office will reject an oppos ition in the absence of actual use of the invoked sign. The following are examples where the opponent failed to meet this basic requirement:
Earlier sign Case No
Octopussy (film title) R 526/2008-4
The opponent merely submitted general information explaining the content of the film, its characters, gross figures, video offers on the internet and advertisements without any details as regards the relevant market. The information as regards turnover is also insufficient since it is too broad a general reference to the activities carried out by the opponent and does not specify either the type of activity or the territories concerned. For the same reason, the figures from a periodical, relating to the box office receipts generated by the film, have no bearing on the use of the sign in Germany. The remaining press articles furnished by the opponent concern subjects which cannot corroborate the use of the sign in the Member States indicated. The licence agreements for merchandising do not constitute any evidence with regard to the use of the sign as a f ilm title. Lastly, the mere fact that the film was a w orldwide success cannot substitute the obligation of the opponent to file concrete evidence with regard to the Member States in which it claims protection under Article 8(4) CTMR (para. 26).
Earlier sign Case No
‘lucky-pet.de’ (German domain name) R 275/2011-1
The opponent invoked under Article 8(4) CTMR the domain name ‘lucky-pet.de’ used in the course of trade in Germany for ‘mats for animals; retail services with respect to pet supplies’. It has not been proven that the domain has been used with more than local significance for the claimed goods and services. The
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invoices provided and the catalogue only show the internet address www.lucky-pet.de. However, they do not prove that the website www.lucky-pet.de has been visited and, if so, to what extent. It has neither been stated nor proven by any document how many people visited the website and ordered products via email (para. 31).
3.3.2.2 Significance of the use
Rights falling under Article 8(4) CTMR may only be invoked if their use is of more than mere local significance. This requirement applies for all the rights within the scope of Article 8(4) CTMR, that is, both to unregistered trade marks and t o other business identifiers. The proprietors of rights the use of which is of mere local significance retain their exclusive rights under the applicable national law pursuant to Article 111 CTMR.
The question whether the use of a non-registered sign is of more than mere local significance will be answered by applying a uniform European standard.
The General Court held that the significance of a sign used to identify specific business activities must be es tablished in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) CTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (judgment of 24/03/2009, T-318/06 to T-321/06, ‘GENERAL OPTICA’, paras 36-37 and judgment of 30/09/2010, T-534/08, ‘GRANUflex’, para. 19).
The Court of Justice clarified that the significance of a sign cannot be a function of the mere geographical extent of its protection, since, if that were the case, a sign whose protection is not merely local could, by virtue of that fact alone, prevent registration of a Community trade mark, even though the sign might be used only to a very limited extent in the course of trade. The sign must be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory (judgment of 29/03/2011 C-96/09 P ‘BUD’, para. 158-159).
However, it is not possible to establish a priori, in an abstract manner, which part of a territory must be used to prove that the use of a s ign is of more than mere local significance. Therefore, the assessment of the sign’s significance must be m ade in concreto, according to the circumstances of each case.
Therefore, the criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and t he evidence must relate, to these elements:
a) the intensity of use (sales made under the sign)
b) the length of use
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c) the spread of the goods (location of the customers)
d) the advertising under the sign and the media used for that advertising, including the distribution of the advertising.
In the following examples, both the geographic and the economic dimension of use of the sign were found to meet the standards:
Earlier sign Case No
GLADIATOR (non-registered trade mark in the Czech Republic) R 1529/2010-1
The around 230 invoices are sufficient to conclude that the sign ‘GLADIATOR’ has been used in the course of trade for ‘all terrain vehicles’. They are issued to the opponent’s clients in Czech cities such as ‘Praha’, ‘Kraslice’, ‘Dolnì Lánov’, ‘Pelhrimov’, ‘Opava’, ‘Bozkov’, ‘Plzen’ and many other Czech cities which cover many different areas of the Czech Republic. Furthermore, the catalogues and the magazines ‘4X4 Style’ from 2007 are written in Czech and it is very likely that they are distributed in different venues within the Czech Republic. The documents such as the list of distributors, catalogues and magazines support the findings that the sign has been used in the course of trade (paras 22-33).
Earlier sign Case No
‘FORGE DE LAGUIOLE’ (French company name)
R 181/2007-1 (appealed T-453/11)
The company name ‘FORGE DE LAGUIOLE’, which the invalidity applicant adopted in 1994, appears on all the documents supplied, in particular on the articles of association and on the extract from the company’s certificate of registration, on t he company’s letterhead, on t he 1998 price lists and on the correspondence and invoices, dated from 1998, sent to addressees throughout France. The very rapid expansion of the invalidity applicant’s activities and i ts sales network, as well as its sales turnover, is proved by the documents filed. From the list of customers for 2001 it is clear that the applicant had gained a clientele covering the whole of the French territory. This finding is also confirmed by the invoices produced, made out to customers all over France as well as in other European countries. Finally, the fact is established that the company is mentioned in a number of articles both in the French press and in the European and international press (paras 52-68).
Earlier sign Case No
‘PORTO’ (Portuguese appellation of origin)
Opposition B 998 510 (confirmed by the BoA in R 1101/2009-2
The evidence filed, and the amount and content of the legislation, regulation and registration certificates indicate that Port wine has been and is being used as an appellation of origin for wine. It is clear from the evidence in its totality that the significance of the appellation of origin is not merely local, but rather has an international impact, as reflected in its history and its use as a tool to attract tourists. The promotion of the appellation of origin has taken place, among others, through the establishments ‘SOLAR DO VINHO DO PORTO’ in Lisbon and Oporto, as well as through the ‘PORT WINE ROUTE’, in the Douro region. Taking this into consideration, the Office finds that the opponent has proved that it has used its appellations of origin in the course of trade and that the use is of more than mere local significance.
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Earlier sign Case No
BRADBURY (non-registered trade mark in the UK) R 66/2008-2
As regards goodwill of the mark, the BoA held that the evidence submitted by the opponent was sufficient to prove that the BRADBURY non-registered sign enjoyed goodwill: 1) The invoice evidence shows sales of a range of goods to various entities in the UK and in other countries. 2) The amounts of those invoices vary from a little over GBP 100 to several thousand pounds sterling. This evidence proves sales of products bearing the earlier non-registered mark to various entities. 3) The declarations and market survey also demonstrate that the sign has enjoyed a degree of recognition among the relevant public for the right holder’s goods. 4) The fact that the sign appears in a nu mber of catalogues and advertisements and that after sales service centres are located in various major towns and cities throughout the UK demonstrates that the trade mark has been brought to the attention of a wide public in terms of geographic spread (paras 31-33).
Earlier sign Case No
‘GOLDEN ELEPHANT fig.’ (non-registered trade mark in the UK) T-303/08
The party relying on the earlier non-registered trade mark had sold rice consistently under the sign since 1988, i.e. for a period of eight years prior to the date on which the applicant filed the application for the contested Community trade mark. The quantity of rice sold – between 42 and 84 tonnes per year from 1988 to 1996 – cannot be regarded as totally insignificant. The mere fact that the party’s market share was very small in comparison with the total amount of rice imported into the United Kingdom is not sufficient to justify a finding that those rice sales were below the de minimis threshold. In that context, it should be observed that the courts in the United Kingdom are very unwilling to assume that a business can have customers but no goodwill. ‘Even if it were to be assumed that that goodwill had to be regarded as low on account of the limited quantities of the sales, it cannot, on any view, be regarded as non- existent’ (paras 112-116).
As far as the geographic dimension of the use of the sign is concerned, in general, neither the territory of a city alone, even a b ig one, is of more than mere local significance, and no r is a regional district or province. It will depend on t he circumstances of the case (see examples below). The leading judgment in this respect is the one rendered by the General Court in the General Optica case, where use of the sign was confined to a s pecific locality and was, therefore, insufficient to meet the prescribed requirements:
Earlier sign Case No
Generalóptica (Portuguese establishment name) Joined Cases T-318/06 to T-321/06
It is not apparent from the evidence provided by the opponent that the significance of the sign relied on in the present case is more than merely local within the meaning of Article 8(4) CTMR. As the Board of Appeal stated in paragraph 33 of the contested decisions, it is apparent from the documents submitted by the opponent that at the time when registration of the first two Community trade marks was applied for, the sign in question had been used for almost 10 years merely to designate a business establishment open to the public in the Portuguese town of Vila Nova de Famalicão, which has 120 000 inhabitants. In spite of its explanations at the hearing, the applicant did not provide any evidence of recognition of the sign by consumers or of its business relationships outside the abovementioned town. Likewise, the applicant has not shown that it had developed any advertising activity in order to ensure that its business establishment was promoted outside that town. It must therefore be held that the business establishment name Generalóptica is of mere local significance within the meaning of Article 8(4) CTMR (para. 44).
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Earlier sign Case No
FORTRESS FORTRESS INVESTMENTS
FORTRESS INVESTMENT GROUP (non-registered trade marks in the UK)
R 354/2009-2
R 355/2009-2
The fact that the invalidity applicant was involved in the acquisition, lease-back and management of nationwide property portfolios of major UK institutions and companies proves that the use was of more than mere local significance. The fact that use is limited to London is relevant in the sense that London is the seat of nearly all governmental institutions and bodies and home to the City of London, one of the leading financial centres of the world. The economic dimension of the sign’s significance was important since by mid-2000 the invalidity applicant had already an equity capital under management in excess of US$1 billion. Furthermore, the group of addressees among which the sign was known is significant since it included major players in the financial field and UK public institutions. The exposure given to the sign was also significant, cf. the national and specialised press coverage. Therefore, use in the course of trade was of more than mere local significance (paras 49-51).
The notion that the use in trade of the sign relied on must be proven in the territory of the Member State/s where protection is sought is not incompatible with use of the sign in connection with cross-border commercial transactions:
Earlier sign Case No
GRAIN MILLERS (German business name) T-430/08
The use of a business name in the context of the importation of goods from another State (in this case, documents of the transaction concluded by opponent concerning the import of wheat from Romania to Germany) is indeed use in the context of a commercial activity with a view to economic advantage, since import-export constitutes a normal, everyday activity of an undertaking, necessarily involving at least two States (para. 41).
The following are examples where the opponent failed to prove that the economic dimension of the use of the signs concerned was sufficient to meet the prescribed legal requirements:
Earlier sign Case No
BRIGHTON (non-registered mark in several MS) R 408/2009-4
The sales chart provided by the opponent shows that the sale activities in the Member States concerned were not consistent over time to the extent that for certain years no sales at all appear to have taken place and that for others the sales revenue was very low indeed. Therefore, the sales figures show that the opponent was not able to maintain an intensity of use of the signs over three consecutive years. It is unlikely in those cases that the public was able to memorise the mark as an indication of origin. The opponent did not submit any evidence relating to the advertising and promotion of the marks invested in the concerned Member States, or other material showing that the signs in question had established themselves in the marketplace to such an extent as to justify the acquisition of exclusive rights in non- registered trade marks (paras 12-21).
Rights Under Article 8(4) CTMR
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Earlier sign Case No
(Greek non-registered mark)
R 242/2010-1
Although the documents confirm the geographical extent of the trade mark to Greece, the evidence regarding the extent of time of the alleged use is clearly insufficient. The last dated document is from 1997, i.e. seven years before the contested application was submitted. Moreover, the most recent documents in which the trade mark ‘ESKIMO’ can be seen are the invoices dating from 1991 to 1994. They only reflect the sales of a little less than 100 units throughout these four years, which cannot be deemed sufficient to prove the use of the mark as a business identifier by the opponent (paras 27-28).
Earlier sign Case No
Up Way Systems – Representaçoes Unipessoal LDA (Portuguese company name) R 274/2012-5
Three invoices, addressed to companies in the Porto region of Portugal, for a total sales amount of EUR 16 314, are not sufficient to show that the sign was used in the course, considering the price level of building materials and building services in general (paras 20-23).
Use of a sign relied on under Article 8(4) CTMR must be made in accordance with the essential function of such a sign. This means that if an opponen t relies on a non - registered trade mark, proof of use of the sign as a c ompany name would not be sufficient to substantiate the earlier right.
The following is an example where the evidence shows use of a sign whose function does not correspond to that of the sign relied on:
Earlier sign Case No
JAMON DE HUELVA (Spanish trade name) R 1714/2010-4
The proof furnished in order to substantiate the use of ‘Jamón de Huelva’ almost exclusively relates to the designation of origin ‘Jamón de Huelva’. Designations of origin are very different legal concepts from trade names, as, instead of identifying a particular commercial origin, they are geographical indications relating to an agricultural or food product of which the quality or characteristics are fundamentally or exclusively due to the geographical environment in which they are produced, processed or prepared. The opposition based on the use in Spain of the trade name ‘Jamón de Huelva’ must be dismissed in view of the fact that the proof furnished does not relate to this legal concept and does not identify a s pecific commercial activity, but instead the activities relating to a designation of origin and the Supervisory Council thereof (paras 34-37).
The requirement that the sign must be used in trade for its own particular economic function does not exclude that the same sign might be used for several purposes.
It is common market practice to also use company or trade names as trade marks, either alone, or together with other product identifiers. This is the case when use of a ‘house mark’ is concerned, that is, an indication which usually coincides with the manufacturer’s company or trade name and which not only identifies the product or service as such, but also provides a direct link between one or more product/service lines and a specific undertaking.
Rights Under Article 8(4) CTMR
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Therefore, depending on the specific circumstances of the case, in a case where an opponent relies on a n on-registered trade mark, the use of the same sign as a company name or trade name may well also accomplish the function of indicating the origin of the goods/services concerned (thus, a trade mark function), as long as the sign is used in such a way that a link is established between the sign which constitutes the company or trade name and the goods marketed or the services provided (see, by analogy, judgment of 11/09/2007, C-17/06 ‘CELINE’ paras 22-23).
3.4 Earlier right
The right invoked under Article 8(4) CTMR must be earlier than the CTM application. In order to determine which of the conflicting rights is earlier, the relevant dates on which the rights were obtained must be compared.
• For the CTM application, this is the filing date or any priority date validly claimed (hereinafter the ‘CTM date’). Seniority claims, even if they relate to the Member State where the other earlier right is claimed to exist, are not relevant.
• As regards the right falling under Article 8(4) CTMR, the relevant date of acquisition of exclusive rights under the national law is decisive.
Where under the national law mere use is sufficient, this must have begun before the CTM date. Where recognition in the trade or reputation are required, these must have been acquired before the CTM date. Where these conditions are fulfilled only after the CTM date, the opposition will have to be rejected.
3.5 Scope of protection
Earlier rights falling under Article 8(4) CTMR are protected only if they confer on their proprietors under the applicable law the right to prohibit the use of a later trade mark.
This requires a finding that under the applicable national law rights of the type involved, in the abstract, are exclusive rights enforceable by means of an injunction vis-à-vis later marks and a f inding that in the actual case under consideration the conditions for obtaining such injunctive relief, if the mark that is the subject of the opposed CTM application were used in the territory in question, are present (scope of protection). Both questions have to be answered in accordance with the applicable law. The Office will apply the laws of the Member States, Community law or International agreements.
The difficulties of applying national law should not be overestimated. The list in the Table at the end of this document provides appropriate indications (see also Section 4 below). For many, if not most, of the rights falling under Article 8(4) CTMR, the prerequisites of national regulations are quite similar to those applied in conflicts between trade marks which Office examiners are familiar with, namely, likelihood of confusion, or damage to reputation or distinctiveness.
For example, unregistered marks are generally protected against subsequent marks in the event of a likelihood of confusion and, thus, in accordance with the same criteria that are applicable to conflicts between registered marks, namely, identity or similarity of the signs, identity or similarity of the goods or services, etc. In these cases, the criteria developed by the courts and by the Office for applying Article 8(1) CTMR may
Rights Under Article 8(4) CTMR
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easily be t ransported into Article 8(4) CTMR, unless the party can provide relevant case-law of the national courts proving a different approach.
Where the applicable national law provides protection for unregistered trade marks, which is different from that found in Article 8(1) CTMR, the scope of protection of the earlier right invoked follows from national law. If, for example, the applicable national law grants protection to unregistered marks also for dissimilar goods and services under certain conditions, the same protection will be granted under Article 8(4) CTMR.
4 Evidence and Standard of Proof
According to Article 76(1) CTMR, in all inter partes cases, the burden is on the party making a par ticular claim or allegation to provide the Office with the necessary facts and arguments in order to substantiate the claim.
A particular difficulty in applying Article 8(4) CTMR is the proper standard of proof required by the relevant national or European law.
Article 8(4) CTMR refers to national law (the law in the particular Member State) but it also lays down its own (‘European’) prerequisites for protection (use in the course of trade, of more than mere local significance). The national law of the country where the protection of the ‘sign’ is claimed determines the existence of the right /title and t he conditions of protection. The corresponding standard of proof (national or European) has to be applied accordingly.
The ‘facts’ to be established and proven are:
FACTS STANDARD
− National provisions providing for the protection of the sign.
− The requirements for obtaining such a protection. − Existence of a right/title to the sign. − If the right has been validly acquired (e.g. through use,
reputation). − The condition of legal protection (e.g. in cause of
misleading use, use of identical or similar sign, likelihood of confusion).
− The scope of protection (right to prohibit use, etc.).
‘National’ standard applies
− Use in course of trade. − Of more than mere local significance.
‘European’ standard applies (see paragraph 3.2 above)
For all of these, the opponent carries the burden of proof. The general principle of Article 76(1) CTMR is applicable. The opponent can use all means of evidence as specified in Article 78 CTMR.
As regards the law of the Member States applicable by virtue of Article 8(4) CTMR, the Office shall treat this also as an issue of fact which is subject to proof by the party alleging such a right.
Rights Under Article 8(4) CTMR
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It appears from the ‘BUD’ judgment that the opponent has the responsibility to provide the relevant national law and to show that it would succeed under that national law in preventing use of the later mark:
In that regard, it should be observed that Article 8(4)(b) [CTMR] lays down the condition that, pursuant to the law of the Member State governing the sign relied on under Article 8(4), that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Furthermore, in accordance with Article 74(1) of Regulation 40/94 [now Article 76(1) CTMR], the burden of proving that that condition is met lies with the opponent before OHIM.
In that context and in relation to the earlier rights relied on in the present case, … regard must be had, in particular, to the national rules advanced in support of the opposition and to the judicial decisions delivered in the Member State concerned and t hat, on that basis, the opponent must establish that the sign concerned falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited.
(See judgment of 29/03/2011, C-96/09 P ‘BUD’, paras 188-190.)
According to the judgment of 05/07/2011 C-263/09P ‘Elio Fiorucci’, it is up to the opponent ‘to provide OHIM not only with particulars showing that he s atisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a Community trade mark prohibited by virtue of an ea rlier right, but also particulars establishing the content of that law’ (para. 50). See also in this respect the judgment of 07/05/2013, T-579/10 ‘Makro’, para. 60.
Earlier sign Case No
CROWN R1182/2011-4
The appeal was dismissed as far as Article 8(4) CTMR was concerned due to the lack of substantiation. The opponent merely wrote the indication ‘unregistered mark’ and ticked all the country boxes in the opposition form, but he made no further indication as to the relevant law of each of the Member States concerned.
By referring to the ‘Eilo Fiorucci’ judgment, the BoA recalled that whilst an opponent is not required to ‘prove’ the existence of the respective national law, he is well required to indicate precisely the provisions of national law which he invokes as the basis for protection of the earlier right. Only then can the Office examine what type of right is concerned and under which conditions (e.g. whether protection is granted against likelihood of confusion) it is protected, and only thereafter, as a further step, can the evidence be judged as to whether it satisfies those legal conditions.
In the particular case, no statements at all were provided as concerns the legal bases and conditions for the claimed right in each (or at least one) of the Member States, throughout the proceedings, including on appeal. The sole submission in this regard was that the opponent sent a c opy of the passages on Article 8(4) from the Office’s brochure ‘National Law Relating to the CTM’, arguing that he should not have to prove the contents of those passages (or the national law mentioned therein). That, however, is irrelevant, as the opponent does not have to substantiate what can be protected in theory, but whether and how the claimed right is protected (paras 48-50).
Treating proof of the national legal situation as an issue of fact by the Office is in accordance with the approach of the courts in the Member States with respect to
Rights Under Article 8(4) CTMR
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foreign law under their private international law principles. Moreover, the Office is not always in a position to determine with sufficient accuracy on its own motion what the law relating to Article 8(4) CTMR rights is in all the Member States and to monitor the corresponding changes of legislation or development of the case-law.
At the end o f this Section of the Guidelines, there is an overview Table with the essentials of the national law applicable in the Member States (see Table at the end). It is included in the present Guidelines for information purposes only.
Therefore, as regards proof of the national legal situation, the opponent will have to:
• Provide a clear reference to the applicable legislation or case-law (the Table may help in this regard). However, the Table is not a legal source and may not contain the latest legislative developments; therefore, the other party can always contest its content.
• Put forward a cogent line of argument why the opponent would succeed under specific national law in preventing the use of the contested mark (supported, where possible, by case-law and/or legal literature). A mere reference to the national law will not be considered sufficient: it is not for the Office to make that argument on behalf of the opponent.
Where the opponent relies on national case-law to prove its case, it will have to provide the Office with this case-law in sufficient detail (a copy of the decision invoked) and not only by reference to a publ ication somewhere in legal literature.
Rights Under Article 8(4) CTMR
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TABLE ON NATIONAL RIGHTS THAT CONSTITUTE ‘EARLIER RIGHTS’ IN THE SENSE OF ARTICLE 8(4) CTMR
FOR INFORMATION PURPOSES20
Table of Contents 1 Benelux..................................................................................................... 33 2 Bulgaria .................................................................................................... 34 3 Czech Republic........................................................................................ 35 4 Denmark ................................................................................................... 36 5 Germany................................................................................................... 37 6 Estonia...................................................................................................... 39 7 Ireland....................................................................................................... 40 8 Greece ...................................................................................................... 41 9 Spain......................................................................................................... 43 10 France....................................................................................................... 44 11 Croatia ...................................................................................................... 45 12 Italy ........................................................................................................... 46 13 Cyprus ...................................................................................................... 47 14 Latvia ........................................................................................................ 48 15 Lithuania................................................................................................... 49 16 Hungary.................................................................................................... 49 17 Malta ......................................................................................................... 50 18 Austria ...................................................................................................... 50 19 Poland....................................................................................................... 52 20 Portugal .................................................................................................... 53 21 Romania ................................................................................................... 55 22 Slovenia.................................................................................................... 56 23 Slovakia .................................................................................................... 56 24 Finland...................................................................................................... 57 25 Sweden..................................................................................................... 59
20 The content of the Table is largely based on the information and feed-back received from trade mark offices and user associations in 2013/2014. However, it is not a legal source and it is made available for information purposes only. It may not contain the latest legislative developments or an exhaustive list of all the national earlier rights that can be invoked under Article 8(4) CTMR.
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Guidelines for Examination in the Office, Part C Opposition Page 32
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26 United Kingdom....................................................................................... 60
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1 Benelux
1.1 Unregistered trade marks
Unregistered trade marks (TMs) are not recognised under the uniform Benelux Convention on Intellectual Property (BCIP).
1.2 Other signs used in the course of trade
For the Benelux territory each state must be considered separately.
1.2.1 Belgium
Trade name (nom commercial)/Company name (dénomination sociale)
Article 2.19 BCIP Article 95 of ‘Loi du 6 avril 2010 relative aux pratiques du marché et à la protection du consommateur’ Article 1382 of the ‘Code Civil’ (Civil Code)
Conditions for protection
Trade name is acquired by its first use in trade. Protection is limited to the geographical area where the trade name or company name is used.
Company name is acquired, in principle, from the date of the establishment of the company. Protection extends to the whole national territory.
Rights conferred
Right to prohibit use of subsequent (registered) trade marks.
1.2.2 Luxembourg
Trade name (nom commercial)/company name (dénomination sociale)
Article 2.19 BCIP Article 14 of ‘Loi du 30 juillet 2002 réglementant certaines pratiques commerciales, sanctionnant la concurrence déloyale et transposant la directive 97/55/CE du Parlement Européen et du Conseil modifiant la directive 84/450/CEE sur la publicité trompeuse afin d’y inclure la publicité comparative’
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Rights conferred
Right to prohibit use of subsequent (registered) trade marks.
1.2.3 Netherlands
Trade name
Article 2.19 BCIP Law of 5 July 1921 on trade names (Handelsnaamwet) Article 6:162, Dutch Civil Code (Burgerlijk Wetboek)
Conditions for protection
Right is acquired by the first use of the trade name in trade. Protection is limited to the geographical area where the trade name is used. Trade names may be registered voluntarily with the Trade Register at the Chamber of Commerce but doing so does not confer any rights on the owner. There is no particular requirement that the trade name be distinctive and non-descriptive.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) trade marks. (b) Likelihood of confusion must be found.
2 Bulgaria
2.1 Unregistered trade marks
Unregistered trade marks (TMs) are protected in Bulgaria in two ways.
Unregistered TMs
Article 12(6) Bulgarian Trade Mark Law on Marks and Geographical Indications (2010)
Conditions for protection
The TM must have been used in the course of trade in the territory of Bulgaria prior to the filing date of the contested trade mark.
Rights conferred (a) and conditions (b)
(a) Right to prohibit registration of a subsequent trade mark.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 35
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(b) The subsequent trade mark must be identical or similar and must cover identical or similar goods and/or services.
Well-known TMs
Article 12(2)7 Bulgarian Trade Mark Law on M arks and Geographical Indications (2010)
Conditions for protection
The TM must be well-known in the territory of Bulgaria within the meaning of Article 6bis of the Paris Convention prior to the filing date of the contested trade mark.
Rights conferred (a) and conditions (b)
(a) Right to prohibit registration of a subsequent trade mark. (b) The subsequent trade mark must be identical or similar and must cover identical
or similar goods and/or services.
2.2 Other signs used in the course of trade
Other signs used in the course of trade are not included by Bulgarian trade mark law as prior rights that could form a basis for opposition.
3 Czech Republic
3.1 Unregistered trade marks
Unregistered trade marks are protected in the Czech Republic:
Article 7(1)(g) of the Czech Trade Marks Act (CZ-TMA).
Conditions for protection
Unregistered signs that have acquired distinctiveness through use in the course of trade of more than mere local significance prior to the filing of the contested application.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks.
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(b) Signs must be i dentical or similar (interpreted as likelihood of confusion) and must cover identical or similar goods and/or services. Scope of protection is identical to that of a Czech registered mark.
3.2 Other signs used in the course of trade
Article 7(1)(g) CZ-TML
Trade names and other related signs (e.g. names of non-commercial organisations)
Conditions for protection
These names/signs must have acquired distinctiveness through use in the course of trade of more than mere local significance prior to the filing of the contested application.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Signs must be i dentical or similar (interpreted as likelihood of confusion) and
must cover identical or similar goods and/or services. Scope of protection is identical to that of a Czech registered mark.
4 Denmark
4.1 Unregistered trade marks
Unregistered trade marks (TMs) are protected in Denmark:
§ 3(1)(ii) of the Danish Trade Mark Act (DK-TML) § 4(1), (2) and § 15(4)(ii) DK-TML
Conditions for protection
Rights to an unregistered TM are acquired by starting to use the TM in Denmark.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) TMs. (b) The unregistered TM must continue to be used for the goods and/or services for
which it was first used. The scope of protection is the same as for Danish registered TMs, i.e. corresponding to Article 9(1)(a), (b) and (c) CTMR.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 37
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4.2 Other signs used in the course of trade
Company names
The term ‘company name’ is to be i nterpreted broadly and c overs not only private companies such as private firms, limited liability companies, other commercial companies and secondary trade names but also foundations, unions, associations, museums and public institutions.
§ 18 Danish Marketing Practices Act § 2(ii) Danish Companies Act § 6(ii) Consolidated Act on Certain Commercial Undertakings
Conditions for protection
Company name protection does not require registration. However, the person concerned must have legal title to the company name.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) trade marks. (b) Signs must be identical or similar.
Signs used in the course of trade such as business names and shop facades
The term ‘signs used in the course of trade’ is to be interpreted broadly and, according to Danish law, covers any commercial name or symbol that can serve as a connecting link between a business and its customers/users, including, inter alia, business names and shop facades.
§ 18 Danish Marketing Practices Act
5 Germany
5.1 Unregistered trade marks
§ 4 No 2 German Trade Mark Act (DE-TMA), § 12, 14 DE-TMA
Conditions for protection
Protection is acquired through use leading to recognition by the relevant public as a trade mark (‘Verkehrsgeltung’) (§4 No 2 DE-TMA). According to case-law, 20 to 25% recognition by the relevant public is normally sufficient, rising to 50% or more if a sign is not distinctive.
Rights Under Article 8(4) CTMR
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Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of a subsequent trade mark if recognition is established in the whole of Germany, i.e. not if recognition is only established for a particular town or region (§§ 12, 14 DE-TMA).
(b) The same as for registered German trade marks, i.e. protection corresponds to Article 9(1)(a), (b) and (c) CTMR (§ 14(2) No 1, 2 and 3 DE-TMA).
5.2 Other signs used in the course of trade
§5(1), (2), (3) DE-TMA
Commercial designations (‘geschäftliche Bezeichnungen’) is a br oad category that includes the following.
Company symbols (‘Unternehmenskennzeichen’) are signs used in the course of trade as a name, company name or special designation of a business operation or enterprise. Business symbols and ot her signs that are intended to distinguish one business operation from others and are regarded as symbols of the business operation by the relevant public are deemed equivalent to the special designation of a business operation.
A name or firm is a trader’s official or officially registered designation. A business symbol is a sign used by a trader to identify its business or undertaking as such, which functions as the name of the business or enterprise.
Titles of works are the names or special designations of printed publications, cinematic works, music works, stage works or other comparable works. This can be an individual work, a series of works, or a periodical publication. This also includes titles of radio or television series, computer games and video games, possibly also computer programs. It is not required that the work designated by the title is protected under copyright law.
Conditions for protection
Company symbols – If the sign is inherently distinctive, protection is acquired through use in the course of trade as a company symbol. According to case-law the required degree of inherent distinctiveness is low. ‘Use in the course of trade as a c ompany symbol’ covers every external business activity in Germany aimed at long-term commercial activity. If the sign is not inherently distinctive, protection is acquired through recognition as a s ign of the undertaking by the relevant public (‘Verkehrsgeltung’).
Business symbols and ot her signs for distinguishing business operations – Protection is acquired through recognition as a sign of the undertaking by the relevant public.
Titles of works: if the title of work is inherently distinctive, acquisition through use in the course of trade, i.e. normally as from the appearance of the work. The required degree of inherent distinctiveness is low. If the work title is not inherently distinctive, acquisition of the right through market recognition ("Verkehrsgeltung").
Rights Under Article 8(4) CTMR
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Rights conferred (a) and conditions (b)
(a) Right to prohibit use of a subsequent trade mark. (b) Likelihood of confusion (§ 15(2) DE-TMA); in the case of a business designation
with reputation, if use would take unfair advantage of, or would be detrimental to, the distinctive character or repute of a commercial designation (§ 15(3) DE-TMA).
6 Estonia
6.1 Unregistered trade marks
Unregistered trade marks are not protected under Estonian law unless the marks are considered to be well-known in Estonia within the meaning of Article 6bis of the Paris Convention.
6.2 Other signs used in the course of trade
Business names
Article 10(1)(4) of the Estonian Trade Mark Act (EST-TMA)
Conditions for protection
Entry in the commercial register prior to the filing date of the application, the date of international registration or the priority date. Protection for a business name is acquired from the date of entry in the commercial register.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) trade marks. (b) Signs must be identical or similar and the area of activity for which a notation has
been made in the commercial register must include the goods and/or services for which the contested trade mark is used or is going to be used (designates).
Names of proprietary medicinal products
Article 10(1)(5) EST-TMA
Rights Under Article 8(4) CTMR
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Conditions for protection
The names must be registered in Estonia prior to the filing date of the trade mark application, the date of international registration or the date of priority.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) trade marks. (b) The contested sign must be i dentical or confusingly similar to the name of a
proprietary medicinal product registered in Estonia and the goods for which the trade mark is used or is going to be used must belong to the field of medicine.
7 Ireland
7.1 Unregistered trade marks
Unregistered trade marks (TMs) used in the course of trade are protected in Ireland.
Section 10(4)(a) IE-TMA
Conditions for protection
Must be used in the course of trade if protected by any rule of law, including that of passing off.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade mark if protected by any rule of law, in particular the law of passing off.
(b) The later sign must constitute a misrepresentation likely to lead to deception or confusion, with consequent likelihood of damage to the goodwill or business of the proprietor of the earlier sign. The plaintiff must prove that its goodwill and business suffered or are likely to suffer damage as a r esult of the defendant’s activities.
The action for passing off is based upon goodwill acquired by use of the earlier sign. Goodwill is sometimes referred to as reputation. In Ireland, goodwill can be acquired without necessarily trading within the territory. The tort arises if a later sign constitutes a misrepresentation likely to lead to deception or confusion, with consequent likelihood of damage to the goodwill or business of the proprietor of the earlier sign. The law is explained in ‘Intellectual Property in Ireland’ by Robert Clark and S hane Smyth, Butterworths, 1997, Chapter 24. Authoritative statements of the law are found in court judgments, for example in C. & A. Modes vs C. & A. (Waterford) [1978] Fleet Street Reports 126; Adidas K.G. v. O'Neill & Co Limited [1983] Fleet Street Reports 76; and Guiness Ireland Group v. Kilkenny Brewing Co Limited [2000] Fleet Street Reports 112.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 41
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7.2 Other signs used in the course of trade
Business sign used in the course of trade
Section 10(4)(a) and (5), IE-TMA
Right to prohibit use of subsequent TMs if protected by any rule of law, in particular the law of passing off. On the law of passing off, see remarks above under point A.
Conditions for protection
As under Section 7.1 above.
a) Rights conferred (a) and conditions (b)
As under Section 7.1 above.
8 Greece
8.1 Unregistered trade marks
There are two sets of provisions dealing with the protection of unregistered trade marks and related signs: (a) trade mark law confers on t he owner the right to prohibit registration of a later trade mark, whereas (b) the law on unfair competition and other specific provisions deal with the issue of use. As the complementary application of trade mark law for any matter not directly dealt with in other statutes is generally accepted, both sets of rules are indicated.
Article 124(3)(a) GR-TML (Law No 4072/2012); Article 13(1) of Law 146/1914 on Unfair Competition
Conditions for protection
Protection is acquired through use in the course of trade. If not inherently distinctive, unregistered trade marks must also be ‘established in the market’.
Rights conferred (a) and conditions (b)
(a) Right to prohibit registration of a subsequent trade mark. (b) Prior use, likelihood of confusion as to origin.
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8.2 Other signs used in the course of trade
Company names
Article 58 Civil code Articles 4-8 Law 1089/1980, as amended by 1746/1988
Conditions for protection
Protection is acquired exclusively through use in the course of trade. Registration is not relevant for protection; it only serves administrative purposes.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Prior use, likelihood of confusion as to origin.
Trade names and commercial establishment insignia
Article 124(3)(a) GR-TML (Law No 4072/2012) Article 13(1)(2) Law 146/1914 on Unfair Competition
Conditions for protection
Protection is acquired exclusively through use in the course of trade. If not inherently distinctive, the trade name or insignia must also be ‘established in the market’.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Prior use, likelihood of confusion as to origin.
Other distinctive signs
Article 124(3)(a) GR-TML
The peculiar shape of the goods or of their packaging, as well as the peculiar get-up or decoration thereof (Iδιαίτερος διασχηματισμός, διακόσμηση).
Conditions for protection
The signs must be known in the relevant commercial sector as product identifiers of a given trader. Protection is acquired through use in the course of trade. The signs must be capable of performing a trade mark-like function (i.e. they must have distinctive character as a result of a certain degree of originality).
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 43
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Prior use, likelihood of confusion as to origin.
General note: All the exclusive signs referred to above are also protected under Article 1 of Law 146/1914 on ‘Unfair Competition’, especially as regards infringing acts not covered by the above provisions (e.g. protection of reputed signs for dissimilar goods – dilution of, or unfair advantage to, their distinctiveness or repute, that is, where likelihood of confusion is not relevant).
9 Spain
9.1 Unregistered trade marks
Unregistered trade marks are not protected in Spain unless they are considered to be well known in Spain within the meaning of Article 6bis of the Paris Convention.
9.2 Other signs used in the course of trade
Business names (Nombres comerciales) Article 7(1)(a) and (b), 7(2)(a) and (b) ES -TML
Conditions for protection
The name must be registered or applied for at the Spanish Patent and Trade Mark Office.
Rights conferred (a) and conditions (b)
(a) Right to oppose and prohibit the use of subsequent trade marks. (b) Identical or similar signs and identical or similar goods or services and likelihood
of confusion.
Business names, designations or corporate names of legal persons Article 9(1)(d) ES–TML
Conditions for protection
The names do not have to be registered or applied for at the Spanish Patent and Trade Mark Office provided that they identify a person (enterprise) for the purposes of trade. Evidence of use or evidence that the sign is well known in the national territory must be provided.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 44
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) Identical or similar signs and identical or similar goods or services and likelihood
of confusion.
10 France
10.1 Unregistered trade marks
Unregistered trade marks are not recognised under French law with the exception of well‐known trade marks in the sense of Article 6bis of the Paris Convention (Article L711-4(a) French Intellectual Property Code (FR-IP CODE))
10.2 Other signs used in the course of trade
Article L711-4 FR-IP Code provides a non exhaustive list of signs that, if qualified as earlier, might prohibit use of a later trade mark.
Company name or style of a company (‘dénomination sociale’)
Article L711-4(b) FR-IP Code
Conditions for protection
Protection of the company name is acquired upon c ompletion of the documents founding the company. Must be known throughout the French territory.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of a subsequent trade mark. (b) There must be a risk of confusion in the mind of the public.
Trade name (nom commercial)
Article L711-4(c) FR-IP CODE
Conditions for protection
Protection acquired from first use in trade.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 45
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of a subsequent trade mark. (b) There must be a risk of confusion in the mind of the public.
Business sign (‘enseigne’)
Article L711-4(c) FR-IP CODE
Conditions for protection
Protection acquired from first use in trade. Must be known throughout the territory of France (enseigne notoire).
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of a subsequent trade mark. (b) There must be a risk of confusion in the mind of the public.
Domain names (‘noms de domaine’)
Conditions for protection
The domain name is protected when it is reserved and used.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of a subsequent trade mark for identical or similar products and/or in the event of unfair advantage or dilution of reputations.
(b) There must be a likelihood of confusion or damage to first user.
11 Croatia
11.1 Unregistered trade marks
Unregistered trade marks are protected in Croatia. Article 6(2), (4) Croatian Trade Marks Act and the Act on Amendments to the Trade Mark Act
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 46
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
The unregistered trade mark must be well-known in the Republic of Croatia prior to the filing/priority date of the contested trade mark in the sense in which the words ‘well- known’ are used in Article 6bis of the Paris Convention.
Rights conferred (a) and conditions (b)
(a) Right to oppose the registration of a subsequent trade mark. (b) The subsequent trade mark must be i dentical or similar and h ave applied for
identical or similar goods and/or services.
11.2 Other signs used in the course of trade
Earlier firm
Article 6(6) Croatian Trade Marks Act and the Act on Amendments to the Trade Mark Act
Conditions for protection
It must be registered.
Rights conferred (a) and conditions (b)
(a) Right to oppose the registration of a subsequent trade mark. (b) The firm or the essential part thereof must be identical or similar to the sign in
respect of which registration is sought, and the goods and/or services must be identical or similar, unless the applicant had t he identical or similar firm at the time of filing the application for registration of a trade mark.
12 Italy
12.1 Unregistered trade marks
An unregistered trade mark (‘marchio di fatto’) is defined as a sign known as a trade mark or as a sign that is distinctive for manufactured goods or services on the market. Prior use must be notoriously known.
Article 12(1)(a) IT-IP CODE
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 47
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
The unregistered trade mark must be used to the extent that it is ‘notoriously known throughout Italy or a substantial part thereof.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent trade marks. (b) Identical or similar signs and identical or similar goods or services and likelihood
of confusion including likelihood of association.
12.2 Other signs used in the course of trade
Article 12(1)(b) IT-IP Code
Company name, corporate name, trade name or business signs, domain name adopted by others (‘ditta’, ‘denominazione sociale’, ‘ragione sociale’, ‘insegna’, ‘nome a dominio’)
Conditions for protection
Used to the extent that it is ‘notoriously known throughout Italy or a s ubstantial part thereof.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent trade mark, provided it is known by the relevant public throughout Italy or a substantial part thereof.
(b) Identical or similar signs and identical or similar goods or services and likelihood of confusion including likelihood of association.
13 Cyprus
13.1 Unregistered trade marks
Unregistered trade marks are not recognised under the law of Cyprus.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 48
FINAL VERSION 1.0 DATE 01/08/2014
14 Latvia
14.1 Unregistered trade marks
Unregistered trade marks are protected in Latvia. Article 9(3) No 4 LV-TML
Conditions for protection
The unregistered mark must have been used in good faith and lawfully prior to the date of filing of the application for registration of the trade mark (or the priority date respectively) in commercial activities in Latvia in connection with identical or similar goods or services.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Identical or similar signs and i dentical or similar goods or services; use of the
subsequent trade mark must also be capable of misleading consumers as to the origin of the goods and services.
14.2 Other signs used in the course of trade
Trade names originating in Latvia or in a foreign country (commercial designations, names of a mass medium, or other similar signs) that are well-known in Latvia.
Article 9(3) No 3, LV-TML
Conditions for protection
The trade name must be acquired through fair and lawful use in the course of trade in Latvia before the filing/priority date of a subsequent trade mark used in an identical or similar business sector. A ‘well-known’ trade name must have become well known in Latvia before the filing/priority date of the subsequent trade mark.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) The signs must be the same or confusingly similar and must cover identical or
similar goods and services.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 49
FINAL VERSION 1.0 DATE 01/08/2014
15 Lithuania
15.1 Unregistered trade marks
Article 7(1), (3), 9 LT-TML.
Conditions for protection
Unregistered trade marks are protected only if recognised as well known by a c ourt decision.
15.2 Other signs used in the course of trade
Trade names/business names and other business identifiers
Rights conferred (a) and conditions (b)
(a) Right to invalidate subsequent (registered) trade marks. (b) Registration of a mark will be declared invalid if the mark is identical to a legal person’s business name or is likely to be confused with a legal person’s business name.
Article 7(1), No 4 LT-TML
16 Hungary
16.1 Unregistered trade marks
An unregistered trade mark is not protected under Hungarian trade mark law unless it has been used effectively in the country where use of the sign without the consent of the prior user would be contrary to law.
Article 5(2)(a) HU-TML
Article 6 of Act LVII of 1996 on the prohibition of unfair and restrictive market practices prohibits the manufacture, distribution or advertising of goods and services without the consent of competitors if the goods and s ervices concerned have a c haracteristic presentation, packaging or labelling (including designation of origin), and the use of a name, mark or designation by which a competitor or its goods and services are usually recognised.
The above-mentioned provisions are only exemplificative.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 50
FINAL VERSION 1.0 DATE 01/08/2014
17 Malta
17.1 Unregistered trade marks
Chapter 26 of Malta’s Trade Mark Act; Article 6(4) MT‐TMA
Conditions for protection
Protection is acquired through continuous prior use.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Signs must be likely to be confused and must cover identical or similar goods and
services.
17.2 Other signs used in the course of trade
Article 11(3) MT-TMA
Conditions for protection
Protection is acquired through continuous use.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks (Article 6(2) MT-TMA). (b) Likelihood of confusion.
In view of Articles 6(4) and 11(3) MT-TMA, other signs used in the course of trade are regarded as earlier rights.
18 Austria
18.1 Unregistered trade marks
Unregistered trade marks (TMs) are protected in Austria:
§ 31 Austrian Trade Mark Protection Act (1970)
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 51
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
An unregistered TM must have acquired a certain recognition in the course of trade (‘Verkehrsgeltung’) before the owner of a s ubsequent (registered) TM applied for registration of its TM, unless the owner of the subsequent (registered) TM has used its TM in trade without registering it for at least as long as the owner of the unregistered TM.
Rights conferred (a) and conditions (b)
(a) Right to apply for cancellation of a subsequent (registered) TM. (b) The owner of the unregistered TM must not have tolerated use in trade of the
subsequent registered TM during five successive years (‘Verwirkung’). This applies only to those goods and/or services for which the registered trade mark was used and only if the application for the registered trade mark was not filed in bad faith. Likelihood of confusion must be found.
18.2 Other signs used in the course of trade
§ 32 Austrian Trade Mark Protection Act (1970) § 9 of the Federal Act Against Unfair Competition (1984)
Corporate signs (‘Unternehmenskennzeichen’), i.e. names, firms (trade names) (‘Firma’) or specific designations of an und ertaking (‘besondere Bezeichnung eines Unternehmens’), or similar designations
Conditions for protection
The entrepreneur must be the owner of the corporate sign(s).
Rights conferred (a) and conditions (b)
(a) Right to apply for cancellation of a subsequent (registered) TM. (b) The entrepreneur must not have tolerated use in trade of the registered TM
during five successive years (‘Verwirkung’). This applies only to those goods and/or services for which the registered trade mark was used and onl y if the application for the registered trade mark was not filed in bad faith. Use of the trade mark could entail a likelihood of confusion in trade with one of the petitioner’s aforementioned corporate signs.
Business signs (‘Geschäftsabzeichen’) and other facilities designed to distinguish the enterprise from other enterprises including the get-up or packaging of goods or the presentation of business stationery
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 52
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
The business signs must be perceived as designations of the enterprise by the market participants involved or have acquired such recognition through use (‘Verkehrsgeltung’).
Rights conferred (a) and conditions (b)
(a) [Only] the right to sue the infringer to cease and desist [from such action] as well as to claim damages if the infringement was carried out with intent or in a negligent way. [In addition to the above, with registered TMs the owner also has the right to sue for cease and desist [use of its TM] and to claim damages before a civil court.]
(b) The entrepreneur must not have tolerated use in trade of the registered TM during five successive years (‘Verwirkung’). This applies only to those goods and/or services for which the registered trade mark was used and onl y if the application for the registered trade mark was not filed in bad faith. The trade mark must be used in such a way that it is likely to be confused in trade with one of the entrepreneur’s business signs.
19 Poland
19.1 Unregistered trade marks
Article 132(1)(ii) PL-IP Law
Conditions for protection
Unregistered trade marks (TMs) are protected only if they are well known and used in the course of trade.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) Unregistered TM must be well known and used in the course of trade; likelihood
of confusion.
Additional protection is available to well-known unregistered marks with a reputation (renowned trade mark). The owner of such a TM may request that the registration of a later identical or similar TM be declared invalid, irrespective of the goods or services for which it is registered, if the use thereof without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier TM. A trade mark owner is prohibited from bringing such an action if the owner has been aware of and tolerated use of the later TM for five consecutive years.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 53
FINAL VERSION 1.0 DATE 01/08/2014
19.2 Other signs used in the course of trade
Article 131(1), (5) PL-IP Law Article 156(1)(i) PL-IP Law, Article 158(1) PL-IP Law
Name or address under which a person runs his business activity
Conditions for protection
Name under which a person runs their business activity.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the filing of a trade mark. (b) There must have been prior use of the name for business activity for identical or
similar goods such as to be l ikely to mislead the public as to the origin of the product.
20 Portugal
20.1 Unregistered trade marks
The following unregistered trade marks (TMs) are protected in Portugal.
Unregistered TMs that are being used
Article 227 PT–IP Code
Conditions for protection
The unregistered TM must have been used in Portugal during the six months prior to the filing of an application for registration.
Rights conferred (a) and conditions (b)
(a) Right to oppose registration of the same trade mark by other entities. (b) The signs and the goods and/or services must be the same.
Well-known marks
Article 241, PT-IP Code
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 54
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
The mark in question must be well known in Portugal.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) The signs must be identical or similar and the goods and/or services identical or
similar; likelihood of confusion or association with the holder of the earlier right must be established; the interested party must have applied for registration of the well-known mark.
Prestigious trade marks
Article 241 PT-IP Code
Conditions for protection
The mark in question must enjoy prestige in Portugal.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) The signs must be identical or similar or, even if the goods and services are
dissimilar, use of the trade mark applied for must be likely to take unfair advantage of, or be det rimental to, the distinctive character or repute of the earlier prestigious trade mark; the interested party must have applied for registration of the prestigious trade mark.
20.2 Other signs used in the course of trade
Trade names, company names
Article 239(2)(a) PT-IP Code
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) The name in question must be likely to mislead or confuse the consumer.
Logotypes (name and emblem/insignia of an establishment) (Word and figurative signs identifying an entity trading products or providing services)
Article 304-N PT-IP Code
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 55
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
The sign in question must be registered.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent signs. (b) The proprietor must not have given its consent, and the subsequent sign must be
identical or similar to the proprietor’s sign.
21 Romania
21.1 Unregistered trade marks
As a general rule, unregistered trade marks (TMs) are not protected under Romanian TM Law (Law No 84/1998 on trade marks and geographical indications). As an exception to that rule, in the case of an opposition, an unregistered trade mark may be regarded as an earlier right if it is well-known in Romania within the meaning of Article 6bis of the Paris Convention).
Article 3(d) and Article 6(2)(f) of the RO-IP Law
Conditions for protection
The unregistered TM must be well known in Romania within the meaning of Article 6bis of the Paris Convention.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) It must be well-known in Romania and there must be a likelihood of confusion.
21.2 Other signs used in the course of trade
Other signs used in the course of trade that are considered to be ear lier rights are trade names.
Only the owner of a trade name, can oppose a trade mark or request the competent judicial body to cancel that trade mark.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 56
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. Only the owner of a trade name can oppose a trade mark or request the competent judicial body to cancel that trade mark right.
(b) Prior use on the market.
22 Slovenia
22.1 Unregistered trade marks
Unregistered trade marks are not directly recognised under the Slovenian IP Act.
Nevertheless, under Article 44(1)(d) SL–IP Act, a sign is not eligible for registration as a mark if it is identical or similar to a m ark or unregistered sign; in the Republic of Slovenia, the latter is regarded as a well-known mark within the meaning of Article 6bis of the Paris Convention.
22.2 Other signs used in the course of trade
Article 44(1)(f) SL–IP Act
Registered trade names (registered company names), where the term ‘company name’ is interpreted broadly and c overs not only private companies such as private firms, limited liability companies, other commercial companies, and secondary trade names, but also foundations, unions, associations, museums and public institutions.
23 Slovakia
23.1 Unregistered trade marks
Article 7(f) SK-TML
Unregistered marks are defined as non-registered signs acquired and used in the course of trade prior to the filing of a subsequent application. They must be distinctive and of more than mere local significance.
Conditions for protection
The unregistered mark must have been used earlier in the course of trade of more than mere local significance and must have acquired distinctiveness through use in the
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 57
FINAL VERSION 1.0 DATE 01/08/2014
course of trade in the territory of the Slovak Republic of more than mere local significance prior to the filing of the contested application.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) Signs must be i dentical or similar and must cover identical or similar goods
and/or services
23.2 Other signs used in the course of trade
Article 7(f) SK-TML
Trade names and other related signs.
Conditions for protection
Recordal in the Register of Companies or a similar register.
These signs must have acquired distinctiveness through use in the course of trade in the territory of the Slovak Republic of more than mere local significance prior to the filing of the contested application.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) Signs must be i dentical or similar and must cover identical or similar goods
and/or services..
24 Finland
24.1 Unregistered trade marks
Unregistered trade marks are protected in Finland:
§ 1, § 2(3), § 6, § 14(1), (6) of the Finnish Trade Mark Act (FI-TML)
Conditions for protection
Use leading to an unregistered mark becoming established on the market. A mark is considered established if it has become generally known in the appropriate business or consumer circles in Finland as a s ymbol specific to its proprietor’s goods and/or services.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 58
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) trade marks. (b) The scope of protection is identical to that of a Finnish registered trade mark, i.e.
corresponding to Article 9(1)(a), (b) and (c) CTMR.
24.2 Other signs used in the course of trade
§ 1, § 2(2), 3(2), § 6, § 14(1), (6) FI-TML
Trade names (toiminimi, firma: any name that a nat ural or legal person uses in business activities), including secondary trade names (aputoiminimi, bifirma: natural or legal persons can carry out part of their business under a secondary trade name) and secondary symbols (toissijainen tunnus, sekundärt kännetecken: signs, including figurative signs, used in the course of trade).
Conditions for protection
Use leading to a trade name becoming established on the market.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) The signs must relate to identical or similar goods and/or services and there must
be a likelihood of confusion.
Trader’s name
§ 1, 6, § 14(1), (6) FI-TML
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) The signs must relate to identical or similar goods and/or services and there must
be a likelihood of confusion.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 59
FINAL VERSION 1.0 DATE 01/08/2014
25 Sweden
New Swedish Trade Marks Act (2010:1877)
25.1 Unregistered trade marks
Chapter 1, Article 7 and Chapter 2, Article 8 SE-TMA
Conditions for protection
The unregistered trade mark must have been used in such a way that it has become established on the market.
Rights conferred (a) and conditions (b)
(a) The same as for registered trade marks: right to prohibit the use of subsequent trade marks.
(b) A mark is considered to have become established on the market when it is, within a significant portion of the circle for which it is intended, known as a symbol for the goods being made available under it.
25.2 Other signs used in the course of trade
Trade names/Company names
Chapter 1, Article 7(1); Chapter 1, Article 8; Chapter 2, Article 9 SE-TMA
Conditions for protection
The name must be registered as a company name or used in such a way that it has become established on the market. May be limited to the part of the country in which it is established on the market.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) There must be a l ikelihood of confusion and the signs must cover identical or
similar goods and services.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 60
FINAL VERSION 1.0 DATE 01/08/2014
26 United Kingdom
General note for unregistered signs: passing off is not in any way a ‘proprietary right’ that ‘protects an unregistered trade mark or other sign used in the course of trade’. It refers rather to a ‘wrongful invasion’ of a property right, but the property protected in this case is the goodwill and r eputation of a business that is likely to be har med by misrepresentation. Whether, e.g., an opposition based on Section 5(4)(a) is successful will, then, depend on a number of cumulative factors: (demonstration and scope of goodwill; misrepresentation, damage to goodwill). On that basis, any distinction between ‘protection’ given to ‘unregistered trade marks’ and to ‘other signs used in the course of trade’ in the context of the UK’s common-law right of ‘passing off’ is meaningless. The right of ‘passing off’ could potentially (and more often than not does) arise purely at local level (relative to the UK as a whole). (See below, ‘The particularities of the action of passing off’).
26.1 Unregistered trade marks
Unregistered trade marks used in the course of trade
Section 5(4)(a) UK-TMA
Conditions for protection
Must be used in the course of trade if protected by any rule of law, including that of passing off.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) Goodwill must be demonstrated in the UK at the relevant date, the scope of
which must extend to the goods or services of the application; misrepresentation as regards the ‘signs’ at issue; damage to the opponent’s goodwill can be inferred by use of the sign applied for.
26.2 Other signs used in the course of trade
Section 5(4)(a) UK-TMA
Sign used in the course of trade.
Sign used in the course of trade, protected by any rule of law, including that of passing off.
Conditions for protection
Same as under Section 26.1.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 61
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
Same as under Section 26.1.
Remarks: The Olympic Symbol Protection Act 1995 c ontains provisions on t he exclusive use for commercial purposes of the Olympic symbol and certain words associated with the Olympic games by an individual nominated by the Secretary of State; such entitlement is not a basis for Article 8(4) CTMR.
The particularities of the action of passing off
Passing off is an economic tort in the common-law jurisdictions, the essential elements of which are (i) a misrepresentation (ii) causing damage to (iii) the goodwill of a trader or traders. It is a form of intellectual property enforcement against unauthorised use of an intellectual property right.
The purpose of this section is not to analyse the substantive requirements of passing- off actions as developed by the jurisprudence of the common-law courts but rather to set out which rights that can be protected by passing-off actions fall within the scope of Article 8(4) CTMR, and t o show how the European judicature has applied the key requirements of Article 8(4) CTMR as regards passing off.
Historically, and in their most common form, passing-off actions offer protection similar to that for registered trade marks to non-registered trade marks in that they prevent use of a name, word, device or get-up that leads to the goods or services of one trader being misrepresented as those of another. In doing so, passing-off actions protect the goodwill that traders accrue by using signs rather than protecting signs per se.
The tort of passing off covers a broad set of situations ranging from its usual form above to an extended form which may prevent the use of generic terms where such use misrepresents goods or services as possessing a characteristic or quality that they do not have (e.g. Vodkat used on a type of drink that is not Vodka).
In passing-off actions, the opponent (claimant) must prove three elements, the so-called classical trinity:
(a) goodwill attached to the goods or services that it supplies;
(b) misrepresentation by the defendant to the public (intentional or not) leading or likely to lead the public to believe that the goods or services offered are those of the opponent (claimant);
(c) damage (actual or potential) by reason of the erroneous belief engendered by the defendant’s misrepresentation.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 1
FINAL VERSION 1.0 DATE 01/08/2014
GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART C
OPPOSITION
SECTION 5
TRADE MARKS WITH REPUTATION ARTICLE 8(5) CTMR
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 2
FINAL VERSION 1.0 DATE 01/08/2014
Table of Contents
1 Introduction................................................................................................ 4 1.1 Purpose of Article 8(5) CTMR ....................................................................4 1.2 Legal framework.........................................................................................4
2 Scope of Applicability ............................................................................... 5 2.1 Applicability to registered marks ..............................................................5
2.1.1 The requirement of registration ...................................................................... 5 2.1.2 Relationship between marks with reputation (Article 8(5) CTMR) and well-
known marks (Article 8(2)(c) CTMR).............................................................. 6
2.2 Applicability to similar and identical goods and services.......................8
3 Conditions of Application ......................................................................... 9 3.1 Earlier mark with reputation ....................................................................10
3.1.1 Nature of reputation...................................................................................... 10 3.1.2 Scope of reputation ...................................................................................... 11
3.1.2.1 Degree of recognition ................................................................................11 3.1.2.2 Relevant public..........................................................................................12 3.1.2.3 Goods and services covered.....................................................................13 3.1.2.4 Relevant territory .......................................................................................14 3.1.2.5 Relevant point in time................................................................................16
3.1.3 Assessment of reputation – relevant factors ................................................ 18 3.1.3.1 Trade mark awareness..............................................................................19 3.1.3.2 Market share .............................................................................................20 3.1.3.3 Intensity of use ..........................................................................................22 3.1.3.4 Geographical extent of use........................................................................24 3.1.3.5 Duration of use ..........................................................................................24 3.1.3.6 Promotional activities ................................................................................25 3.1.3.7 Other factors..............................................................................................27
3.1.4 Proof of reputation ........................................................................................ 28 3.1.4.1 Standard of proof.......................................................................................28 3.1.4.2 Burden of proof..........................................................................................29 3.1.4.3 Evaluation of the evidence ........................................................................30 3.1.4.4 Means of evidence ....................................................................................31
3.2 The similarity of the signs .......................................................................39 3.2.1 Notion of ‘similarity’ pursuant to Article 8(5) CTMR compared with
Article 8(1)(b) CTMR .................................................................................... 40
3.3 The link between the signs ......................................................................41 3.3.1 Examples where a link was found between the signs .................................. 43 3.3.2 Examples where no link was found between the signs................................ 44
3.4 Encroachment upon reputation...............................................................46 3.4.1 Protected subject matter............................................................................... 46 3.4.2 Assessment of encroachment upon reputation ............................................ 47 3.4.3 Forms of encroachment................................................................................ 49
3.4.3.1 Taking unfair advantage of distinctiveness or repute ................................50 3.4.3.2 Detriment to distinctiveness.......................................................................56 3.4.3.3 Detriment to repute....................................................................................61
3.4.4 Proof of encroachment upon reputation ....................................................... 67 3.4.4.1 Standard and burden of proof....................................................................67
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3.4.4.2 Means of evidence ....................................................................................70
3.5 Use without due cause.............................................................................70 3.5.1 Examples of due cause ................................................................................ 71
3.5.1.1 Due cause was accepted ..........................................................................71 3.5.1.2 Due cause was not accepted ....................................................................72
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1 Introduction
1.1 Purpose of Article 8(5) CTMR
Whereas under Article 8(1)(a) CTMR double identity of signs and goods/services and under Article 8(1)(b) CTMR a likelihood of confusion are the necessary preconditions for the protection of a registered trade mark, Article 8(5) CTMR requires neither identity/similarity of goods/services nor a l ikelihood of confusion. Article 8(5) CTMR grants the protection for registered trade marks not only as regards identical/similar goods/services but also in relation to dissimilar goods/services without requiring any likelihood of confusion, provided the signs are identical/similar and the earlier mark enjoys a reputation which would be encroached upon by the use without due cause of the trade mark applied for.
The rationale behind the extended protection under Article 8(5) CTMR is the consideration that the function and value of a trade mark are not confined to its being an indicator of origin. A trade mark can also convey messages other than an indication of the origin of the goods and services, such as a promise or reassurance of quality or a certain image of, for example, luxury, lifestyle, exclusivity etc. (‘advertising function’) (judgment of 18/06/2009, C-487/07 L’Oréal and others). Trade mark owners frequently invest large sums of money and effort to create a certain brand image associated with their trade mark. This image associated with a trade mark confers on it an – often significant – economic value, which is independent of that of the goods and services for which it is registered.
Article 8(5) CTMR aims at protecting this advertising function and the investment made in creating a c ertain brand image by granting protection to reputed trade marks, irrespective of the similarity of the goods or services or of a l ikelihood of confusion, provided it can be demonstrated that the use of the contested application without due cause would encroach upon this reputation. Consequently, the main focus of Article 8(5) CTMR is not the protection of the general public against confusion as to origin, but rather the protection of the trade mark proprietor against encroachment upon the reputation of a mark for which it has made significant investments.
1.2 Legal framework
According to Article 8(5) CTMR, upon opposition by the proprietor of an 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 the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national 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.
The same wording is used in the parallel provisions of the Trade Mark Directive (Directive 2008/95/EC of the European Parliament and o f the Council of 22 October
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2008 to approximate the laws of the Member States relating to trade marks (Codified version), ‘TMD’), namely Article 4(3) TMD, which deals with the protection of Community trade marks with reputation, and Article 4(4)(a) TMD, the equivalent provision for national marks. Even though the implementation of Article 4(4)(a) TMD was optional, all the Member States have in fact adopted provisions granting enlarged protection to national marks with reputation.
However, even in the hypothetical case that an acceding country decides not to enact an equivalent provision in its trade mark law, the independent reference to national marks with reputation in Article 8(5) CTMR means that they are directly protected at Community level, that is, irrespective of whether the national law grants them enlarged protection.
The wording of Article 8(5) CTMR is also very similar to the one used in Article 9(1)(c) CTMR and Article 5(2) TMD, that is, the provisions determining the exclusive rights of a trade mark proprietor, with a slight difference in the way these refer to the condition of detriment. Unlike the conditional form in Article 8(5) CTMR, which applies where use of the trade mark applied for ‘would take unfair advantage of, or be detrimental to the distinctiveness or repute of the earlier mark’, Article 9(1)(c) CTMR and Article 5(2) TMD read ‘takes unfair advantage of or is detrimental to’. The reason for this difference is that in the first case – Article 8(5) CTMR – registrability is at stake, which may have to be decided upon w ithout any use of the later mark having been made, while in the second case the prohibition of use is at issue. The impact of this difference on the kind of evidence required for proving detriment in either case is discussed in paragraph 3.4 below.
2 Scope of Applicability
The wording of Article 8(5) CTMR has given rise to some controversy as regards its applicability exclusively to (a) earlier registered marks and ( b) dissimilar goods and services. As these issues directly affect the scope of its application, it is necessary to clarify at the outset whether it is possible to also apply Article 8(5) CTMR to (a) unregistered/well-known marks and (b) similar or identical goods and services.
2.1 Applicability to registered marks
2.1.1 The requirement of registration
Article 8(5) CTMR specifies the kinds of earlier rights on which an opposition may be based by reference to paragraph 2 of the same article, which, apart from Community, international, Benelux and nat ional registrations or applications, includes earlier well- known marks within the meaning of Article 6bis of the Paris Convention, that is, marks that may or may not be registered.
It has been argued that as a consequence of this reference, Article 8(5) CTMR should also apply to unregistered marks, at least to the extent that these have become well- known in the relevant territory, all the more so since the protection of well-known marks against dissimilar goods and services is favoured both by Article 4(1)(b) of the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks and by Article 16(3) TRIPS.
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However, such an i nterpretation cannot be s ustained by the wording of Article 8(5) CTMR, which restricts, indirectly but clearly, its applicability to earlier registered marks by prohibiting registration ‘where [the application] is identical or similar to the earlier trade mark and is to be registered for goods and services that are not similar to those for which the earlier trade mark is registered. It follows that the existence of an earlier registration is a necessary condition for the application of Article 8(5) CTMR and that, as a consequence, the reference to Article 8(2) CTMR should be l imited to earlier registrations and to earlier applications subject to their registration (judgment of 11/07/2007, T-150/04, ‘TOSCA BLU’, para. 55).
Such a restrictive approach is not incompatible with Article 16(3) TRIPS, which also refers to an earlier registration in a very similar manner:
Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark … would indicate a connection between those goods or services and t he owner of the registered trademark and provided that the interests of the owner of the registered trade mark are likely to be damaged by such use. (Emphasis added)
Nor can this view be e xcluded by the fact that the WIPO Recommendations do not impose any conditions for granting extended protection to earlier well-known marks as they are not binding for the interpretation of the CTMR.
Therefore, Article 8(5) CTMR only applies to earlier Community, international, Benelux and national registrations, and to earlier applications, subject to their registration.
2.1.2 Relationship between marks with reputation (Article 8(5) CTMR) and well-known marks (Article 8(2)(c) CTMR)
The requirement of registration serves to mark the border between Article 8(5) CTMR and Article 8(2)(c) CTMR. However, neither Article 8(2)(c) CTMR nor Article 6bis of the Paris Convention stipulate expressly that the well-known mark has to be a non- registered mark. The reason for the principle that only non-registered marks are covered by these latter provisions results indirectly both from the spirit and the ratio legis of these provisions.
As regards the Paris Convention, the purpose of the provision of Article 6bis, introduced for the first time in the Convention in 1925, was to prevent the registration and use of a trade mark liable to create confusion with another mark already well known in the country of such registration, although the latter well-known mark was not, or not yet, protected in that country by registration.
As regards the CTMR, the purpose was to avoid a legal gap as Article 8(5) protects only registered CTMs. Without Article 8(2)(c) CTMR, reputed non-registered trade marks would have remained without protection (apart from that of Article 8(4) CTMR). In order to avoid this legal gap, the CTMR foresaw the protection of well-known marks within the sense of Article 6bis of the Paris Convention as this article was drawn up mainly to grant protection to non-registered trade-marks with a well-known character.
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Consequently, on the one hand, well-known marks which are not registered in the relevant territory cannot be protected under Article 8(5) CTMR against dissimilar goods. They can only be protected against identical or similar goods if there exists a likelihood of confusion pursuant to Article 8(1)(b) CTMR, to which Article 8(2)(c) CTMR refers for determining the scope of protection. However, this is without prejudice to the fact that well-known marks, to the extent they are not registered, may also be protected under Article 8(4) CTMR. Therefore, if the relevant national law affords them protection against dissimilar goods and services, such enhanced protection may also be invoked under Article 8(4) CTMR.
On the other hand, where well-known marks have been registered, either as CTMs, or as national marks in one of the Member States, they can be invoked under Article 8(5) CTMR, but only if they also fulfil the requirements of reputation.
Even though the terms ‘well-known’ (a traditional term used in Article 6bis of the Paris Convention) and ‘reputation’ denote distinct legal concepts, there is a substantial overlap between them, as shown by a comparison of the way well-known marks are defined in the WIPO Recommendations with the way reputation was described by the Court in its judgment of 14/09/1999, C-375/97 ‘General Motors’ (concluding that the different terminology is merely a ‘…nuance, which does not entail any real contradiction…’, para 22).
In practical terms, the threshold for establishing whether a trade mark is well-known or enjoys reputation will usually be the same. Therefore, it will not be unusual for a mark which has acquired well-known character to have also reached the threshold laid down by the Court in General Motors for marks with reputation, given that in both cases the assessment is principally based on quantitative considerations regarding the degree of knowledge of the mark among the public, and that the thresholds required for each case are expressed in quite similar terms (‘known or well-known at the relevant sector of the public1’ for well-known marks, as against ‘known by a s ignificant part of the relevant public’ as regards marks with reputation’).
This has also been confirmed by case-law. In its judgment of 22/11/2007, C-328/06 ‘Fincas Tarragona’, the Court qualified the notions of ‘reputation’ and ‘well-known’ as kindred notions (‘notions voisines’), underlining in this way the substantial overlap and relationship between them (see para. 17). See also the judgment of 11/07/2007, T- 150/04 ‘TOSCA BLU’ (paras. 56-57) The overlap between marks with reputation and r egistered well-known marks has a repercussion on the raising of the ground of opposition, in the sense that it should not matter for the applicability of Article 8(5) CTMR if the opponent calls its earlier registration a well-known mark instead of a mark with reputation. For this reason, the terminology used must be carefully scrutinised, especially where the grounds of the opposition are not clearly explained, and a flexible approach should be taken where appropriate.
In the context of Article 8(2)(c) CTMR, the requirements for applying Article 6bis of the Paris Convention and Article 8(1)(a)/(b) CTMR are the same, although the terminology used is different. Both provisions require similarity or identity between the goods or services and similar or identical signs (Article 6bis uses the terms ‘reproduction’ which is equivalent to identity and ‘imitation’ which refers to similarity). Both articles also require a l ikelihood of confusion (‘liable to create confusion’ is the term used in
1 Article 2(2)(b) and 2(2)(c) of the WIPO Recommendations.
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Article 6bis). However, while according to Article 8(2)(c) CTMR a well-known mark can serve as an earlier right and, thus, as the basis of an opposition, the grounds for an opposition under Article 8(2)(c) CTMR are (solely) Article 8(1)(a) or (b) CTMR.
For example, if the opponent bases the opposition on (i) an earlier registration invoking Article 8(1)(b) CTMR and Article 8(5) CTMR and (ii) an identical earlier well-known mark in the same territory under Article 8(2)(c) CTMR, the earlier right must be examined:
1. under Article 8(1)(b) CTMR as an ear lier registration with enhanced distinctiveness (in view of its well-known character);
2. under Article 8(5) CTMR, as an earlier registration with reputation;
3. under Article 8(2)(c) CTMR in conjunction with Article 8(1)(b) CTMR as an earlier non-registered well-known mark (which will only be useful if registration is not proven, as otherwise the outcome is the same as in (i) above).
Even if the opponent has not expressly based its opposition on Article 8(5) CTMR, the contents of the notice and the wording of the explanation of grounds must be carefully analysed with a v iew to objectively establishing whether the opponent also wants to rely on Article 8(5) CTMR.
2.2 Applicability to similar and identical goods and services
The literal interpretation of Article 8(5) CTMR leads to the prima facie conclusion that it only applies to dissimilar goods and services, as its wording provides that the mark applied for will not be registered ‘where it is identical with, or similar to, the earlier trade mark and is to be registered for goods and services which are not similar to those for which the earlier trade mark is registered’.
However, the above interpretation has been strongly criticised for leaving a gap in the protection of marks with reputation, because if protection may be granted under Article 8(5) CTMR where the goods and services are not similar, it would seem inconsistent to deny its application to similar or identical goods and services where the rest of its requirements are fulfilled and Article 8(1)(b) CTMR does not apply because there is no likelihood of confusion. In such a case trade mark owners would get more protection in the less dangerous case, that is, only where a priori the goods and services were not similar. For this reason, it has been s uggested that Article 8(5) CTMR should also apply, directly or by analogy, where the goods and services are identical or similar.
This question with regard to the correct interpretation of the equivalent provisions of the TMD (Article 4(4)(a) and Article 5(2) TMD) was referred to the Court of Justice for a preliminary ruling (judgment of 09/01/2003, C-292/00, ‘Davidoff’).
The Advocate General in Davidoff suggested following the literal approach and, thus, limiting the protection afforded by Article 4(4)(a) and Article 5(2) TMD only to cases where the goods and services of the later mark are not similar to those of the earlier mark. He considered that it was the intention of the legislator to limit the special protection granted to marks with reputation to dissimilar goods and that there was no
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real gap in the law worthy of interpreting the text in a manner contrary to its express wording.
However, the Court did not follow the opinion of the Advocate General and came to the opposite conclusion, namely that Article 4(4)(a) and Article 5(2) TMD should be interpreted ‘as entitling the Member States to provide specific protection for registered trade marks with a reputation in cases where a later mark … is intended to be used or is used for goods or services identical with or similar to those covered by the registered mark’ (emphasis added, para. 30).
In reaching this conclusion, the Court observed that Article 5(2) TMD must not be interpreted solely on the basis of its wording, but also in the light of the overall scheme and objectives of the system of which it is a part. Therefore, it cannot be interpreted in a manner which would lead to marks with a reputation having less protection where a sign is used for identical or similar goods or services. The Court justified this approach as the only one consistent with its interpretation of Articles 4(1)(b) and 5(1)(b) TMD, by referring to its findings in its judgment of 11/11/1997, C-251/95 ‘Sabel’, and its judgment of 22/06/2000, C-425/98 ‘Marca Mode’, where it excluded a broad interpretation of the notion of confusion.
The ruling of the Court in Davidoff, granting extended protection under Article 4(4)(a) TMD and Article 5(2) TMD also for similar or identical goods or services, was reaffirmed in several later judgments (judgment of 23/03/2010, C-238/08, ‘Google France’, para. 48; judgment of 18/06/2009, C-487/07, ‘L’Oreal and ot hers, para. 35; judgment of 23/10/2003, C-408/01, ‘Adidas Salomon and Adidas Benelux’, para. 18).
In practice, the gap of protection closed through the inclusion of identical and similar goods under Article 8(5) CTMR will be confined to the rare cases where the signs are similar, the goods are identical or similar and the earlier mark has a r eputation, but there is no likelihood of confusion within the sense of Article 8(1)(b) CTMR. As the Advocate General pointed out in his opinion, such a scenario will be quite exceptional.
3 Conditions of Application
The following conditions need be m et for Article 8(5) CTMR to apply (judgment of 16/12/2010 joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by the Court of Justice in judgment of 10/05/2012 C-100/11 P):
1. earlier registered mark with reputation in the relevant territory;
2. identity or similarity between the contested CTM application and the earlier mark;
3. use of the sign applied for must be capable of taking an unfair advantage of, or being detrimental to, the distinctiveness or the repute of the earlier mark;
4. such use must be without due cause.
These conditions are cumulative and failure to satisfy any one of them is sufficient to render that provision inapplicable (judgment of 25/05/2005, T-67/04, ‘SPA-FINDERS’, para. 30; judgment of 22/03/ 2007, T-215/03, ‘VIPS’, para. 34; judgment of 16/12/2010 joined cases T-345/08 and T-357/08 ‘BOTOCYL’, para. 41).
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The order of the examination of these requirements may change depending on the circumstances of each case. For instance, the examination may start with the assessment of the similarities between the signs, especially in cases where there is little or nothing to say about it, either because the marks are identical or because they are patently similar or dissimilar.
3.1 Earlier mark with reputation
3.1.1 Nature of reputation
The nature and scope of reputation are not defined by either the CTMR or the TMD. Furthermore, the terms used in the different language versions of these texts are not fully equivalent, which has led to considerable confusion as to the true meaning of the term reputation, as admitted by Advocate General Jacobs in his opinion of 26/11/1998 in C-375/97 ‘General Motors’, paras 34-36.
Given the lack of statutory definition, the Court defined the nature of reputation by reference to the purpose of the relevant provisions. In interpreting Article 5(2) TMD the Court held that the text of the TMD ‘implies a certain degree of knowledge of the earlier mark among the public’ and explained that it ‘is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade mark, may possibly make an as sociation between the two trade marks … and the earlier mark may consequently be damaged’ (judgment of 14/09/1999, C-375/97 ‘General Motors’, para. 23).
In view of these considerations, the Court concluded that reputation is a knowledge threshold requirement, implying that it must be principally assessed on the basis of quantitative criteria. In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (judgment of 14/09/1999, C-375/97 ‘General Motors’, paras 22, 23, judgment of 25/05/2005, T-67/04 ‘Spa-Finders’, para. 34).
Moreover, if reputation is to be as sessed on the basis of quantitative criteria, arguments or evidence relating to the esteem that the public might have for the mark, rather than to its recognition, are not directly relevant for establishing that the earlier mark has acquired sufficient reputation for the purposes of Article 8(5) CTMR. However, as the economic value of reputation is also the protected subject-matter of this provision, any qualitative aspects thereof are relevant when assessing the possibility of detriment or unfair advantage (see also paragraph 3.4 below). Article 8(5) CTMR protects ‘famous’ marks not as such, but rather for the success and r enown (‘goodwill’) they have acquired in the market. A sign does not enjoy any reputation inherently, for example, simply because it refers to a renowned person or event, but only for the goods and services it designates and the use that has been made of it.
Case No Comment
R 0011/2008-4, ‘CASAS DE FERNANDO ALONSO (fig.)’
All the evidence submitted by the opponent related to the fame of Fernando Alonso as a champion racing driver and to the use of his image made by different undertakings to promote their goods and services. However, there was no proof of reputation for the use of the earlier mark as it is registered for the relevant goods and services (paras 44, 48).
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Case No Comment
R 0201/2010-2 ‘BALMAIN ASSET MANAGEMENT’
The only items of evidence regarding reputation of the earlier mark submitted within the time limit, namely a page showing websites containing the word ‘BALMAIN’, a Wikipedia extract about the French designer Pierre Balmain and five extracts from the website www.style.com containing ‘BALMAIN’ wear collection, were clearly not sufficient to establish reputation of the earlier mark in the EU. Therefore, the opposition was rejected as unsubstantiated (paras 36, 37).
3.1.2 Scope of reputation
3.1.2.1 Degree of recognition
Having defined reputation as a k nowledge threshold requirement, the question that necessarily follows is how much awareness the earlier mark must attain among the public in order to pass this threshold. The Court held in this respect that the ‘degree of knowledge required must be considered to be reached when the earlier trade mark is known by a significant part of the public’ and added that it ‘cannot be inferred from either the letter or the spirit of Article 5(2) [TMD] that the trade mark must be known by a given percentage of the public’ (judgment of 14/09/1999, C-375/97 ‘General Motors’, paras 25, 26, judgment of 16/11/2011, T-500/10 ‘Dorma’, para. 45).
By refraining from defining in more detail the meaning of the term ‘significant’ and by stating that the trade mark does not have to be known by a given percentage of the public, the Court in substance advised against the use o f fixed criteria of general applicability, since a predetermined degree of recognition may not be appropriate for a realistic assessment of reputation if taken alone.
Hence, in determining whether the earlier mark is known by a s ignificant part of the public, account must be taken not only of the degree of awareness of the mark, but also of any other factor relevant to the specific case. For more about the relevant factors and their interplay, see paragraph 3.1.3 below.
However, where goods or services concern quite small groups of consumers, the limited overall size of the market means that a significant part thereof is also restricted in absolute numbers. Hence, the limited size of the relevant market should not be regarded in itself as a factor capable of preventing a mark from acquiring a reputation within the meaning of Article 8(5) CTMR, as reputation is more a question of proportions and less of absolute numbers.
The need for the earlier mark to be known by a significant part of the public also serves to mark the difference between the notions of reputation as necessary condition for the application of Article 8(5) CTMR and enhanced distinctiveness through use as a factor for evaluating likelihood of confusion for the purposes of Article 8(1)(b) CTMR.
Even though both terms are concerned with the recognition of the mark among the relevant public, in the case of reputation a threshold exists below which extended protection cannot be granted, whereas in the case of enhanced distinctiveness there is no threshold. It follows that in the latter case any indication of enhanced recognition of the mark should be taken into account and evaluated according to its significance, regardless of whether it reaches the limit required by Article 8(5) CTMR. Therefore, a
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finding of ‘enhanced distinctiveness’ under Article 8(1)(b) CTMR will not necessarily be conclusive for the purposes of Article 8(5) CTMR.
Case No Comment
R 1054/2007-4 ‘mandarino (fig.)’
The documents submitted by the opponent showed promotional efforts in such a manner that the distinctiveness is increased through use. However, the use was not enough to reach the threshold of reputation. None of the documents referred to the recognition of the earlier trade mark by the relevant end consumers, nor was evidence about the market share of the opponent’s goods filed (para. 61).
3.1.2.2 Relevant public
In defining the kind of public that should be taken into account for assessing reputation, the Court held that the ‘public amongst which the earlier trade mark must have acquired a reputation is that [public] concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector’ (C-375/97 ‘General Motors’, para. 24, ‘SPA-FINDERS’, paras 34, 41).
Hence, if the goods and services covered by the mark are mass consumption products, the relevant public will be the public at large, whereas if the designated goods have a very specific application or exclusively target professional or industrial users, the relevant public will be limited to the specific purchasers of the products in question.
Case No Comment
R 1265/2010-2 ‘MATTONI (fig.)’ Taking into account the nature of the goods for which the opponent claims reputation, namely mineral water, the relevant public is the public at large (para. 44).
R 2100/2010-1 SEXIALIS
The goods for which the sign enjoys reputation are medicinal preparations for the treatment of sexual dysfunction. The relevant public is the general public and professionals with a high level of attention (para. 64).
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
The goods for which the earlier mark enjoys reputation are pharmaceutical preparations for the treatment of wrinkles. The evidence of the promotion of the earlier mark ‘BOTOX’ in English in scientific and general-interest press was sufficient to establish reputation of the mark amongst both the general public and health- care professionals (paras 65-67 in C-100/11 P). Therefore, both these categories of consumers have to be taken into account.
In addition to the actual buyers of the relevant goods, the notion of relevant public extends to the potential purchasers thereof, as well as to those members of the public that only come indirectly into contact with the mark, to the extent that such consumer groups are also targeted by the goods in question, for instance, sports fans in relation to athletic gear, or frequent air-travellers as regards air carriers, etc.
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Case No Comment
T-47/06 ‘NASDAQ’
The relevant services are stock exchange price quotation services in Classes 35 and 36, which normally target professionals. The opponent submitted evidence showing that the mark ‘NASDAQ’ appears almost daily in many newspapers and on many television channels that can be read/viewed throughout Europe. Therefore, the Board was right to hold that the reputation of the trade mark ‘NASDAQ’ had to be determined for the European consumers not only among the professional public, but also to an important subsection of the general public (paras 47, 51).
T-60/10 ‘ROYAL SHAKESPEARE’
The evidence of reputation supports and reinforces the fact that the relevant public for theatre productions is the public at large and not a limited and exclusive circle. The intervener’s activities were advertised, presented and commented on in numerous newspapers targeting the public at large. The intervener toured different regions throughout the United Kingdom and performed before a wide public in the United Kingdom. An activity on a large scale and, hence, a service offered to the public at large, is reflected both in the high turnover and the high box office sales. Furthermore, it is clear from the documents submitted by the intervener that the intervener received substantial annual sponsorship income from undertakings in diverse sectors which also reach the public at large, such as banks, undertakings in the alcoholic drinks sector and car manufacturers (paras 35, 36).
Quite often, a given product will concern various purchaser groups with different profiles, as in the case of multipurpose goods or goods that are handled by several intermediates before they reach their final destination (distributors, retailers, end- users). In such cases the question arises whether reputation has to be assessed within each separate group or if it should cover all the different types of purchaser. The example given by the Court in C-375/97, ‘General Motors’, (traders in a specific sector) implies that reputation within one single group may suffice.
Likewise, if the earlier trade mark is registered for quite heterogeneous goods and services, different segments of the public may be concerned by each type of goods, and, therefore, the overall reputation of the mark will have to be assessed separately for each category of goods involved.
The foregoing only deals with the kind of public to be taken into account in assessing whether the earlier mark has reached the threshold of reputation laid down by the Court in General Motors. However, a r elevant question arises when assessing detriment or unfair advantage, namely whether the earlier mark must also be known to the public concerned by the goods and services of the later mark, since otherwise it is difficult to see how the public will be in a position to associate the two. This issue is discussed in paragraph 3.4 below.
3.1.2.3 Goods and services covered
The goods and services must be first of all those for which the earlier trade mark is registered and for which reputation is claimed.
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Case No Comment
R 1473/2010-1 ‘SUEDTIROL’
The opposition was dismissed since the earlier marks were not registered for the services which, according to the opponent, enjoy a reputation. Article 8(5) CTMR can only be i nvoked if the trade mark affirmed to be w ell known/renowned is a r egistered trade mark and if the goods/services for which this reputation/renown is claimed appear on the certificate (para. 49).
The goods and services to which the evidence refers have to be i dentical (not only similar) to the goods and services for which the earlier trade mark is registered.
Case No Comment
R 1033/2009-4 ‘PEPE’
The goods which were assessed to be reputed in Germany by the decision and order referred to only concern articles of skin and body care and children’s cream. These articles are not identical to the earlier mark’s goods in Class 3, make-up products; nail treating products; namely nail lacquer and remover. Therefore, the opponent did not prove reputation for the earlier German mark in the relevant territories (para. 31).
Where the earlier mark is registered for a wide range of goods and services targeting different kinds of public, it will be necessary to assess reputation separately for each category of goods. In such cases the earlier mark may not have a reputation for all of them, as it may not have been used at all for some of the goods, whereas for others it may not have reached the degree of knowledge necessary for the application of Article 8(5) CTMR.
Hence, if the evidence shows that the earlier mark enjoys partial reputation, that is, the reputation only covers some of the goods or services for which it is registered, it is only to that extent that this mark may be protected under Article 8(5) CTMR. Consequently, it is only these goods that may be taken into account for the purposes of the examination.
Case No Comment
R 1588/2009-4 ‘PINEAPPLE’
The Board concluded that the enhanced distinctiveness and reputation of the earlier marks did not concern the opponent’s G&S which were considered to be identical or similar to the contested G&S. For these G&S no e nhanced distinctiveness or reputation was proven, with the exception of computer software in Class 9 (para. 43).
R 1466/2008-2 and R 1565/2008-2, ‘COMMERZBANK ARENA’
The evidence submitted sufficiently demonstrated that the ‘ARENA’ brand was known by a significant part of the relevant public. However, the evidence did not include any relevant information which could allow the level of brand awareness of the ‘ARENA’ brand in sectors other than swimwear and swimming articles to be determined (paras 58, 60).
3.1.2.4 Relevant territory
According to Article 8(5) CTMR, the relevant territory for establishing the reputation of the earlier mark is the territory of protection: the earlier mark must have a reputation in the territory where it is registered. Therefore, for national marks the relevant
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territory is the Member State concerned, whereas for CTMs the relevant territory is the European Union.
In General Motors, the Court stated that a national trade mark cannot be required to have a reputation throughout the entire territory of the Member State concerned. It is sufficient if reputation exists in a s ubstantial part of that territory. For the Benelux territory in particular, the Court held that a substantial part thereof may consist of a part of one of the Benelux countries (judgment of 14/09/1999, C-375/97 ‘General Motors’, paras 28, 29).
The ECJ has clarified that for an earlier Community trade mark reputation throughout the territory of a single Member State may suffice.
Case No Comment
C-301/07 ‘PAGO’
The case concerned a Community trade mark with a reputation throughout Austria. The Court indicated that a Community trade mark must be known in a substantial part of the Community by a significant part of the public concerned by the goods or services covered by that trade mark. In view of the facts of the particular case, the territory of the Member State in question (Austria) was considered to constitute a substantial part of the territory of the Community (paras 29, 30).
In general, however, when evaluating whether the part of the territory in question is a substantial one, account must be taken both of the size of the geographical area concerned and of the proportion of the overall population living there, since both these criteria may affect the overall significance of the specific territory.
Case No Comment
R 1283/2006-4 ‘RANCHO PANCHO (fig.)’
Although the evidence submitted showed use of the mark in 17 restaurants in France in 2002, this figure was considered rather low for a country of 65 million inhabitants. Therefore, the reputation was not proven (para. 22).
Opponents often indicate in the notice of opposition that the earlier mark has a reputation in an area that extends beyond the territory of protection (e.g. a pan- European reputation is alleged for a national mark). In such a case the opponent’s claim must be examined with regard to the relevant territory.
Similarly, the submitted evidence must specifically concern the relevant territory. For example, if the evidence relates to Japan for instance, or to undefined regions, it will not be able to show reputation in the Community or in a Member State. Therefore, figures concerning sales in the Community as a whole, or world-wide sales, are not appropriate for showing reputation in a specific Member State, if the relevant data are not broken down by territory. In other words, a ‘wider’ reputation must also be specifically proven for the relevant territory if it is to be taken into account.
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Case No Comment
R 1718/2008-1 ‘LINGLONG’
Most of the documents submitted related to countries outside the European Union, mainly China, the opponent’s home country, and other Asian countries. Consequently, the opponent cannot successfully claim to hold a well-known mark in the EU (para. 53).
R 1795/2008-4 ‘ZAPPER-CLICK’ (appeal dismissed T-360/10)
The respondent sustained in the notice of cancellation that reputation was claimed for the territory of the UK. However, the international registration only designated Spain, France and Portugal and, therefore, did not extend to the territory of the UK. In addition, the respondent did not file any evidence of a reputation in the Member States designated by the international registration (para. 45).
However, where reputation is claimed as extending beyond the territory of protection and there is evidence to this effect, this must be taken into account because it may reinforce the finding of reputation in the territory of protection.
3.1.2.5 Relevant point in time
The opponent must show that the earlier mark had acquired a reputation by the filing date of the contested CTM application, taking account, where appropriate, of any priority claimed, on condition of course that the priority claim has been accepted by the Office.
In addition, the reputation of the earlier mark must subsist until the decision on t he opposition is taken. However, in principle it will be sufficient for the opponent to show that its mark already had a reputation on the filing/priority date of the CTM application, while any subsequent loss of reputation is for the applicant to claim and prove. In practice, such an occurrence will be rather exceptional, since it presupposes a dramatic change of market conditions over a relatively short period of time.
Where the opposition is based on an earlier application, there is no formal obstacle for the application of Article 8(5) CTMR, which encompasses earlier applications by reference to Article 8(2) CTMR. Although in most cases the earlier application will not have acquired sufficient reputation in so short a time, it cannot be a priori excluded that a sufficient degree of reputation may be achieved in an exceptionally short period. In addition, the application may be for a mark which was already in use long before the application was filed and has had sufficient time to acquire a reputation. In any event, as the effects of registration are retroactive, the applicability of Article 8(5) CTMR to earlier applications cannot be regarded as a dev iation from the rule that Article 8(5) CTMR only applies to earlier registrations, as concluded in paragraph 2.1 above.
In general, the closer to the relevant date the evidence is, the easier it will be to assume that the earlier mark had acquired reputation at that time. The evidential value of a particular document is likely to vary depending on how close the period covered is to the filing date. Evidence of reputation with regard to a later point in time than the relevant date might nevertheless allow the drawing of conclusions as to the reputation of the earlier mark at the relevant date (see, by analogy, order of 27/01/2004, C-259/02 ‘La Mer Technology’, para. 31; judgment of 17/04/2008, C-108/07 ‘Ferro’, para 53; judgment of 15/12/2005, T-262/04 ‘Shape of a l ighter’, para. 82).
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For this reason, the materials filed with a view to proving reputation must be dated, or at least clearly indicate when the facts attested therein took place. Consequently, undated documents, or documents bearing a date added afterwards (e.g. hand-written dates on pr inted documents), are not apt for giving reliable information about the material time.
Case No Comment
R 0055/2009-2 ‘BRAVIA’
The evidence showed that the mark ‘BRAVIA’ was used for LCD televisions in Poland, the Czech Republic, Slovakia, Hungary, Germany, Turkey, Portugal, Austria, France, Italy and the Netherlands. However, none of the documents were dated. The opponent failed to submit any information regarding duration. Therefore, the evidence, taken as whole, was insufficient to prove the reputation in the European Union (paras 27, 28).
R 1033/2009-4 ‘PEPE’
In the Board’s view, a judgment from 1972 was not able to prove enhanced distinctiveness at the time of filing the CTM, that is, 20/10/2006. Furthermore, ‘it follows from the decision of the CFI [T- 164/03] that the reputation of the earlier mark has been assessed as from 13 June 1996, i.e. more than ten years before the reputation date to be taken into consideration’ (para. 31).
If the period elapsed between the latest evidence of use and t he filing of the CTM application is quite significant, the relevance of the evidence should be carefully assessed by reference to the kind of goods and services concerned. This is because changes in consumer habits and perceptions may take some time to happen, usually depending on the particular market involved.
For instance, the clothing market is strongly tied to yearly seasons and to the different collections issued every quarter. This will have to be taken into account in assessing a possible loss of reputation in this particular field. Likewise, the market for internet providers and e-commerce companies is very competitive and knows rapid growth, as well as rapid demise, which means that reputation in this area may be diluted faster than in other market sectors.
Case No Comment
R 0883/2009-4 ‘MUSTANG’
The appellant failed to prove that its earlier mark was already well known on the application date of the contested CTM. The certificates regarding the reputation of the ‘Mustang designation’ refer neither to the asserted ‘Calzados Mustang’ figurative mark nor to the time when reputation must be determined (para. 28).
A similar question arises in the case of evidence that post-dates the filing date of the CTM application. Even though such evidence will not usually be sufficient on its own to prove that the mark had acquired a r eputation when the CTM was filed, it is not appropriate to reject it as irrelevant either. Given that reputation is usually built up over a period of years and cannot simply be switched on and off, and that certain kinds of evidence (e.g. opinion polls, affidavits) are not necessarily available before the relevant date, as they are usually prepared only after the dispute arises, such evidence must be evaluated on the basis of its contents and in conjunction with the rest of the evidence. For example, an opinion poll conducted after the material time but showing a sufficiently high degree of recognition might be sufficient to prove that the mark had acquired a reputation on the relevant date if it is also shown that the market conditions
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have not changed (e.g. the same levels of sales and adv ertising expenditure were maintained before the opinion poll was carried out).
Case No Comment
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
Although the reputation of an earlier mark must be established at the filing date of the contested mark, documents bearing a later date cannot be denied evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date (para. 52).
The possibility cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on how close the period covered is to the filing date (see, by analogy, order of 27/01/2004, C-259/02 ‘La Mer Technology’, para. 31; judgment of 17/04/2008, C-108/07 P ‘Ferro’, para. 53; judgment of 15/12/2005, T-262/04 ‘Shape of a lighter’, para. 82).
Case No Comment
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
The press articles submitted proved that there was significant media coverage of the products marketed under the trade mark BOTOX on the filing date of the disputed marks (para. 53).
3.1.3 Assessment of reputation – relevant factors
Apart from indicating that ‘It cannot be inferred from either the letter or the spirit of Article 5(2) of the [TMD] that the trade mark must be known by a given percentage of the public’, the Court also held that all the relevant facts must be considered in assessing the reputation of the earlier mark, ‘in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it’ (judgment of 14/11/1999, C-375/97 ‘General Motors’, paras 25, 27).
If these two statements are taken together, it follows that the level of knowledge required for the purposes of Article 8(5) CTMR cannot be defined in the abstract, but should be ev aluated on a case-by-case basis, taking into account not only the degree of awareness of the mark, but also any other fact relevant to the specific case, that is, any factor capable of giving information about the performance of the mark in the market.
The list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark (such as the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking in promoting it) only serve as examples.
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Case No Comment
T-47/06 ‘Nasdaq’
The opponent provided detailed evidence relating to the intensity, geographical extent and duration of the use of its trade mark NASDAQ and the amount spent in promoting it, demonstrating that it was known by a significant part of the public concerned by it. The Court considered that the fact that it did not produce figures regarding the market share did not call this finding into question (para. 51). The Court concluded that the list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark only serve as examples, as all the relevant evidence in the case must be taken into consideration and, second, the other detailed and verifiable evidence produced by the intervener is already sufficient in itself to conclusively prove the reputation of its mark NASDAQ (para. 52).
Moreover, the relevant factors should be assessed with a view not only to establish the degree of recognition of the mark amongst the relevant public, but also to ascertain whether the other requirements related to reputation are fulfilled, for example, whether the alleged reputation covers a significant part of the territory concerned or whether the reputation had indeed been acquired by the filing/priority date of the contested CTM application.
The same kind of test is applied to ascertain whether the trade mark has acquired enhanced distinctiveness through use for the purposes of Article 8(1)(b) CTMR, or whether the mark is well-known within the meaning of Article 6bis of the Paris Convention, since the subject-matter of proof in all these cases is in substance the same, namely the degree to which the mark is known by the relevant public, without prejudice to the threshold required in each case.
3.1.3.1 Trade mark awareness
The statement of the Court that ‘it is not necessary for the mark to be known by a given percentage of the public’, cannot be taken in itself as meaning that figures of trade mark awareness are irrelevant for, or that they should be given a lower probative value in, the assessment of reputation. It only implies that percentages of awareness defined in the abstract may not be appropriate for all cases and that, consequently, it is not possible to fix a pr iori a gener ally applicable threshold of recognition beyond which it should be assumed that the mark is reputed (see, to that effect and by analogy, judgment of 04/05/1999, joined cases C-108/97 and C -109/97 ‘Windsurfing Chiemsee’, para. 52; judgment of 22/06/1999, C-342/97 ‘Lloyd Schuhfabrik Meyer’, para. 24, judgment of 16/11/2011 T-500/10, ‘DORMA’, para. 52).
Therefore, even though not expressly listed by the Court among the factors to be taken into account for assessing reputation, the degree of recognition of the mark amongst the relevant public is directly relevant and can be particularly helpful in evaluating whether the mark is sufficiently known for the purposes of Article 8(5) CTMR, provided of course that the method of its calculation is reliable.
As a rule, the higher the percentage of trade mark awareness, the easier it will be to accept that the mark has a reputation. However, in the absence of a clear threshold, only if the evidence shows a high degree of trade mark awareness, will percentages of recognition be persuasive. Percentages alone are not conclusive. Rather, as explained before, reputation has to be evaluated by making an overall assessment of
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all the factors relevant to the case. The higher the degree of awareness, the less additional evidence may be required to prove reputation and vice versa.
Case No Comment
R 0765/2009-1 ‘BOB THE BUILDER (fig.)’
The evidence submitted proved that the earlier mark enjoyed a very significant reputation in Sweden for jellies’, jams, fruit stews, fruit drinks, concentrates for production of drinks and juice’. According to the survey conducted by TNS Gallup, the spontaneous awareness (answers by telephone to the question ‘What brands for – ‘the relevant group of products is mentioned’ – have you heard about or do you know about?’) for the trade mark ‘BOB’ varied between 25 and 71% depending on the goods: apple sauces, jams, marmalades, soft drinks, fruit drinks and fruit juices. The supported awareness (answer to a questionnaire showing the products bearing the mark) varied between 49 and 90% depending on the goods. Furthermore, the market share for 2001 to 2006 averaged 30-35% in the above product groups (para. 34).
Where the evidence shows that the mark only enjoys a lesser degree of recognition, it should not be automatically assumed that the mark is reputed, which means that, most of the time, mere percentages will not be conclusive in themselves. In such cases, only if the evidence of awareness is coupled with sufficient indications of the overall performance of the mark in the market will it be possible to evaluate with a reasonable degree of certainty whether the mark is known by a significant part of the relevant public.
3.1.3.2 Market share
The market share enjoyed by the goods offered or sold under the mark and t he position it occupies in the market are valuable indications for assessing reputation, as they both serve to indicate the percentage of the relevant public that actually buys the goods and to measure the success of the mark against competing goods.
Market share is defined as the percentage of total sales obtained by a br and in a particular sector of the market. When defining the relevant market sector, the goods and services for which the mark has been u sed must be t aken into account. If the scope of such goods and services is narrower than those for which the mark is registered, a situation of partial reputation arises, similar to the one where the mark is registered for a variety of goods, but has acquired a reputation only for part of them. This means that in such a case, only the goods and services for which the mark has actually been used and acquired a reputation will be taken into account for the purposes of the examination.
Therefore, a very substantial market share, or a leader position in the market, will usually be a strong indication of reputation, especially if combined with a reasonably high degree of trade mark awareness. Conversely, a small market share will in most cases be an indication against reputation, unless there are other factors which suffice on their own to support such a claim.
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Case No Comment
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
‘… the size of the market share of BOTOX in the United Kingdom, 74.3% in 2003, like the degree of awareness of the trade mark of 75% among the specialised public accustomed to pharmaceutical treatments against wrinkles, is sufficient to substantiate the existence of a considerable degree of recognition on the market’ (para. 76).
T-08/03 ‘Emilio Pucci’
The CFI considered that the opponent failed to prove the enhanced distinctiveness or reputation of its earlier trade marks, since the evidence submitted (advertisements, seven letters from a number of advertising directors and a v ideo cassette) did not include adequately substantiated or verifiable objective evidence to make it possible to assess the market share held by the marks EMIDIO TUCCI in Spain, how intensive, geographically widespread and long-standing use of the marks had been or the amount invested by the undertaking in promoting them (para. 73).
Another reason why a moderate market share will not always be conclusive against reputation is that the percentage of the public that in reality knows the mark may be much higher than the number of actual buyers of the relevant goods. This would be the case, for example, for goods that are normally used by more than one user (e.g. family magazines or newspapers) (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’ paras 35, 36 and judgment of 10/05/2007, T-47/06 ‘NASDAQ’ paras 47, 51) or for luxury goods, which many may know, but few can buy (e.g. a high percentage of European consumers know the trade mark ‘Ferrari’ for cars, but only few own one). For this reason, the market share proved by the evidence should be assessed taking into account the particularities of the specific market.
Case No Comment
R 1659/2011-2 ‘KENZO’
‘KENZO’ identifies, in the eyes of the European public, a pre- eminent provider of recognised fashion and luxury items in the form of perfumes, cosmetics and clothing. The relevant public however was considered to be the general public (para. 29).
In certain cases it will not be easy to define the market share of the earlier mark, for example when the exact size of the relevant market cannot be measured accurately, owing to peculiarities of the goods or services concerned.
Case No Comment
R 0446/2010-1 ‘TURBOMANIA’
The limited presence of the product on t he market by no means prevented it from becoming well known by the relevant public. The evidence clearly showed that the trade mark appeared continuously in specialist magazines for the market from December 2003 to March 2007 (the date of the Community trade mark application). That meant that the public targeted by the magazines had constant, on-going exposure to the opponent’s trade mark over a long period covering more than three years prior to the relevant date. Such a huge presence in the press specifically targeting the relevant public was more than sufficient evidence that the relevant public was aware of the trade mark (para. 31).
In such cases, other similar indications may be relevant, such as TV audience rates, as in the case of motor racing and other sporting or cultural events.
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Case No Comment
T-47/06 ‘NASDAQ’
The opponent submitted evidence showing that the mark ‘NASDAQ’ appeared almost daily, particularly by reference to the Nasdaq indices, in many newspapers and on many television channels that can be read/viewed throughout Europe. The opponent also submitted evidence of substantial investments in advertising. The Court found reputation proven, even though the opponent did not submit any market share figures (paras 47-52).
3.1.3.3 Intensity of use
The intensity of use of a mark may be demonstrated by sales volumes (i.e. the number of units sold) and turnover (i.e. the total value of those sales) attained by the opponent for goods bearing the mark. Usually, the relevant figures correspond to sales in one year, but there may be cases where the time unit used is different.
Case No Comment
R 2100/2010-1 ‘SEXIALIS’
The documents submitted (press articles, sales figures, surveys) showed that the earlier sign ‘CIALIS’ was intensively used before the filing date of the CTM application, that the products under the mark ‘CIALIS’ were marketed in several Member States where they enjoyed a consolidated position among the leading brands, and that there was a high degree of recognition in comparison to the market leader ‘VIAGRA’. Large and c onstantly growing market share and sales numbers also showed ‘the vast expansion of ‘CIALIS’ ’ (para. 55).
In evaluating the importance of a given turnover or sales volume, account should be taken of how large the relevant market is in terms of population, as this has a bearing on the number of potential purchasers of the products in question. For example, the relative value of the same number of sales will be m uch bigger, for example, in Luxembourg than in Germany.
Moreover, whether or not a given sales volume or turnover is substantial will depend on the kind of product concerned. For example, it is much easier to achieve a high sales volume for everyday, mass consumption goods than for luxury or durable products that are bought rarely, without this meaning that in the former case more consumers have come into contact with the mark, as it is likely that the same person has bought the same product more than once. It follows that the kind, value and dur ability of the goods and services in question should be taken into consideration in determining the significance of a given sales volume or turnover.
Figures of turnover and sales will be more useful as indirect indications that should be assessed in conjunction with the rest of the evidence, rather than as direct proof of reputation. In particular, such indications can be especially helpful for completing the information given by percentages as regards market share and a wareness, by giving a more realistic impression of the market. For example, they may reveal a very large amount of sales behind a not-so-impressive market share, which may be useful in assessing reputation in the case of competitive markets, where it is in general more difficult for a single brand to account for a substantial portion of the overall sales.
In contrast, where the market share of the products for which the mark is used is not given separately, it will not be pos sible to determine whether a g iven turnover
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corresponds to a substantial presence in the market or not, unless the opponent also submits evidence showing the overall size of the relevant market in terms of money, so that its percentage in it may be inferred.
Case No Comment
R 1054/2007-4 ‘mandarino’ (fig.)
The reputation was not sufficiently proven in particular because none of the documents referred to the recognition of the earlier trade mark by the relevant end consumers. Nor was any evidence about the market share of the opponent’s goods submitted. Information about the market share is particularly important in the sector in which the opponent had its core business (handbags, transport items, accessories and clothing) which is ‘a quite atomized and competitive sector’ and there are many different competitors and designers in that product range (paras 59-61).
This does not mean that the importance of turnover figures or volume of sales should be underestimated, as both are significant indications of the number of consumers that are expected to have encountered the mark. Therefore, it cannot be excl uded that a substantial amount of turnover or sales volume may, in certain cases, be decisive for a finding of reputation, either alone, or in conjunction with very little other evidence.
Case No Comment
R 0445/2010-1 ‘FLATZ’
Although, for reasons of force majeure, it was not possible for the earlier trade mark to become well known by traditional methods, that is, through selling the product, it did become extremely well known as a result of promotional activities, by publicising the trade mark extensively, continually and constantly in the specialist press and at sectorial fairs, thereby reaching virtually the whole of the three relevant sectors of the public. The limited presence of the product on the market by no means prevented it from becoming well known by the relevant public that, on the relevant date, FLATZ was the trade mark with which the opponent identified its electronic bingo machines (paras 41, 42, 50, 51).
R 1466/2008-2 and R1565/2008-2, ‘COMMERZBANK ARENA’
The lack of figures regarding the market share held by the trade mark ‘ARENA’ in the relevant countries was not in itself capable of calling the finding of reputation into question. First, the list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark only serves to illustrate examples, as all the relevant evidence in the case must be taken into consideration and, second, the other detailed and verifiable evidence submitted by the opponent is already sufficient in itself to prove conclusively the substantial degree of recognition of the ‘ARENA’ mark amongst the relevant public (para. 59).
However, as this would deviate from the rule that reputation has to be evaluated by making an overall assessment of all factors relevant to the case, findings of reputation based almost exclusively on s uch figures should be g enerally avoided, or at least confined to exceptional cases that would really justify such a finding.
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3.1.3.4 Geographical extent of use
Indications of the territorial extent of use are mainly useful for determining whether the alleged reputation is widespread enough to cover a substantial part of the relevant territory, within the sense given in paragraph 3.1 above. In this assessment, account should be taken of the density of population in the respective areas, as the critical criterion is the proportion of consumers knowing the mark, rather than the size of the geographical area as such. Similarly, what is important is public awareness of the mark rather than availability of goods or services. A mark may, therefore, have a territorially widespread reputation on the basis of advertising, promotion, media reports, etc.
In general, the more widespread the use, the easier it will be to conclude that the mark has passed the required threshold, whereas any indication showing use beyond a substantial part of the relevant territory will be a pos itive sign in the direction of reputation. Conversely, a very limited amount of use in the relevant territory will be a strong indication against reputation, as for example where the vast majority of the goods are exported to a third jurisdiction in sealed containers, directly from their place of production.
Case No Comment
R 0966/2010-1 ‘ERT (fig.)’
If the earlier mark were so well known in the 27 Member States of the EU for TV broadcasting and magazines, it should have been easy for the opponent to provide information about ‘the reach of the mark’ just before 2008, when the CTM application was filed. The magazine sales figures did not cover the right period. The submitted documents did not give any indication of the extent to which the public was aware of the mark (paras 16, 18).
However, evidence of actual use in the relevant territory should not be regarded as a necessary condition for the acquisition of reputation, as what matters most is knowledge of the mark and not how it was acquired.
Such knowledge may be generated by, for example, intensive advertising prior to the launching of a new product, or in the case of important cross-border shopping it may be fuelled by a significant price difference in the respective markets, a phenomenon often referred to as ‘territorial spill-over’ of reputation from one t erritory to another. However, when it is claimed that such circumstances have occurred, the corresponding evidence must demonstrate this. For example, it cannot be assumed, merely because of the principle of free trade in the European Union, that goods put in the market in Member State X have also penetrated the market of Member State Y in significant numbers.
3.1.3.5 Duration of use
Indications of the duration of use are particularly useful for determining the longevity of the mark. The longer the mark has been used in the market, the larger will be the number of consumers that are likely to have encountered it, and the more likely it is that such consumers will have encountered the mark more than once. For example, a market presence of 45, 50 or 100-plus years is considered a s trong indication of reputation.
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Case No Comment
R 1466/2008-2 and R1565/2008-2, ‘COMMERZBANK ARENA’
The evidence submitted showed a particularly impressive duration of use (over thirty years) and geographical extent of use (over seventy-five countries worldwide, including the Member States concerned) of the ‘ARENA’ brand (para. 55).
T-369/10 ‘BEATLE’ The Beatles group was considered to be a gr oup with anexceptional reputation lasting for more than 40 years (para. 36).
The duration of use of the mark should not be inferred by mere reference to the term of its registration. Registration and use do not necessarily coincide, as the mark may have been put to actual use either before or after it was filed. Therefore, where the opponent invokes actual use, going beyond the term of registration, it must prove that such use actually began before it applied for its mark.
Nevertheless, a long registration period may sometimes serve as an indirect indication of a long presence on the market, as it would be unusual for a proprietor to maintain a registered mark for many decades without any economic interest behind it.
In the end, the decisive element is whether the earlier mark had acquired a reputation at the time of filing of the contested application. Whether that reputation also existed at some earlier point in time is legally irrelevant. Therefore, evidence of continuous use up to the filing date of the application will be a positive indication in the direction of reputation.
In contrast, if the use of the mark was suspended over a significant period, or if the period elapsed between the latest evidence of use and the filing of the CTM application is quite long, it will be more difficult to conclude that the reputation of the mark survived the interruption of use, or that it subsisted until the filing date of the application (see paragraph 3.1.2.5 above).
3.1.3.6 Promotional activities
The nature and scale of the promotional activities undertaken by the opponent are useful indications in assessing the reputation of the mark, to the extent that these activities were undertaken to build-up a b rand image and enhanc e trade mark awareness among the public. Therefore, a long, intensive and widespread promotional campaign may be a strong indication that the mark has acquired a reputation among the potential or actual purchasers of the goods in question, and may actually have become known beyond the circle of the actual purchasers of those goods.
Case No Comment
C-100/11 P ‘BOTOCYL’
Evidence of the promotion of ‘BOTOX’ in English in scientific and general-interest press was sufficient to establish reputation of the mark both amongst the general public and amongst health-care professionals (paras 65, 66).
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Case No Comment
R 0445/2010-1 ‘FLATZ’
Although, for reasons of force majeure, it was not possible for the earlier trade mark to become well known by traditional methods, that is, through selling the product, it did become extremely well known as a result of promotional activities, by publicising the trade mark extensively, continually and constantly in the specialist press and at sectorial fairs, thereby reaching virtually the whole of the three relevant sectors of the public. The limited presence of the product on the market by no means prevented it from becoming well known by the relevant public that, on the relevant date, FLATZ was the trade mark with which the opponent identified its electronic bingo machines (paras 41, 42, 50, 51).
R 1659/2011-2 ‘KENZO’ and R 1364/2012-2 ‘KENZO’
The opponent’s goods have been adv ertised and articles have been written about them in many of the world’s leading fashion- related lifestyle magazines, and in some of Europe’s leading mainstream periodicals. In line with the case-law, the reputation of ‘KENZO’ for the said goods is confirmed. The goods for which the earlier mark has reputation are cosmetics, perfumes and clothing. Because of its substantial reputation, the earlier mark ‘KENZO’ possesses an ‘undisputable allure’ that can be transferred to nearly any luxury product (para. 33). Subsequent case confirmed reputation (para. 33).
Even though it cannot be ruled out that a mark acquires a reputation before any actual use, promotional activities will usually not be sufficient on their own for establishing that the earlier mark has indeed acquired a reputation (see paragraph 3.1.3.4 above). For example, it will be difficult to prove knowledge amongst a significant part of the public exclusively by reference to promotion or advertising, carried out as preparatory acts for the launching of a new product, as the actual impact of publicity on the perception of the public will be difficult to measure without reference to sales. In such situations, the only means of evidence available to the opponent are opinion polls and s imilar instruments, the probative value of which may vary depending of the reliability of the method used, the size of the statistical sample etc. (for the probative value of opinion polls, see paragraph 3.1.4 below).
The impact of the opponent’s promotional activities may be shown either directly, by reference to the amount of promotional expenditure, or indirectly, by way of inference from the nature of the promotional strategy adopted by the opponent and the kind of medium used for advertising the mark.
For example, advertising on a na tion-wide TV channel or in a pr estigious periodical should be given more weight than campaigns of a regional or local scope, especially if coupled with high audience or circulation figures. Likewise, the sponsoring of prestigious athletic or cultural events may be a further indication of intensive promotion, as such schemes often involve a considerable investment.
Case No Comment
R 1673/2008-2 ‘FIESTA’
It is apparent from Ferrero’s various advertising campaigns on Italian television (including Rai) that the earlier mark was widely exposed to viewers in 2005 and 2006. Many of these spots appear to have been broadcast in peak viewing times (e.g. during Formula 1 Grand Prix coverage) (para. 41).
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Furthermore, the contents of the advertising strategy chosen by the opponent can be useful for revealing the kind of image the opponent is trying to create for its brand. This may be of particular importance when assessing the possibility of detriment to, or of taking unfair advantage of, a particular image allegedly conveyed by the mark, since the existence and contents of such an image must be abundantly clear from the evidence submitted by the opponent (see paragraph 3.4 below).
Case No Comment
T-332/10 ‘VIAGUARA’ (‘VIAGRA’)
The General Court found that in regard to the nature of the goods concerned, the BoA rightly considered that the aphrodisiac and stimulating properties claimed for commercial purposes for the non- alcoholic beverages covered by Class 32 coincide with the therapeutic indications of the earlier mark’s goods or at least with the images it projects, namely an image of pleasure, vitality, strength and youth (para. 66).
R 0306/2010-4 ‘CARRERA’ (under appeal T-0173/11)
The opponent’s trade mark is not only known per se, but due to the high price of sports cars and the opponent’s intensive expenditure on advertising and against the background of its successes in racing, the public associates it with an image of luxury, high tech and high performance (para. 31).
3.1.3.7 Other factors
The Court has made clear that the above list of factors is only indicative and has underlined that all the facts relevant to the particular case must be taken into consideration in assessing the reputation of the earlier mark (judgment of 14/09/1999, C-375/97 ‘General Motors’, para. 27). Other factors may be found in the case-law of the Court dealing with enhanced distinctiveness through use, or in the WIPO Recommendations on the protection of well-known marks. Therefore, depending on their relevance in each case, the following may be added t o the above factors: record of successful enforcement; number of registrations; certifications and awards; and the value associated with the mark.
Record of successful enforcement
Records of successful enforcement of a mark against dissimilar goods or services are important because they may demonstrate that, at least in relation to other traders, there is acceptance of protection against dissimilar goods or services.
Such records may consist of successful prosecution of complaints outside the courts, such as acceptance of cease and desist requests, delimitation agreements in trade mark cases, and the like.
Furthermore, evidence showing that the reputation of the opponent’s mark has been repeatedly recognised and protected against infringing acts by decisions of judicial or administrative authorities will be an important indication that the mark enjoys a reputation in the relevant territory, especially where such decisions are recent. That effect may be reinforced when the decisions of this kind are substantial in number (on the probative value of decisions, see paragraph 3.1.4.4 below). This factor is mentioned in Article 2(1)(b)(5) of the WIPO Recommendations.
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Number of registrations
The number and duration of registrations and applications of the mark around Europe or the world is also relevant, but in itself it is a weak indication of the degree of recognition of the sign by the relevant public. The fact that the opponent has many trade mark registrations and in many classes may indirectly attest to an international circulation of the brand, but cannot be decisively prove in itself a reputation. This factor is mentioned in Article 2(1)(b)(4) of the WIPO Recommendations, where the need of actual use is made clear: the duration and geographical area of any registrations, and/or any applications for registration, of the mark are relevant ‘to the extent that they reflect use or recognition of the mark’.
Certifications and awards
Certifications, awards, and similar public recognition instruments usually provide information about the history of the mark, or reveal certain quality aspects of the opponent’s products, but as a rule they will not be sufficient in themselves to establish reputation and will be more useful as indirect indications. For example, the fact that the opponent has been a holder of a royal warrant for many years may perhaps show that the mark invoked is a t raditional brand, but cannot give first-hand information about trade mark awareness. However, if the certification concerns facts that are related to the performance of the mark, its relevance will be much higher. This factor is mentioned by the Court in ‘Lloyd Schuhfabrik Meyer’ and ‘Windsurfing Chiemsee’ in relation to the assessment of enhanced distinctiveness through use.
Case No Comment
R 1637/2011-5 ‘APART’
The new evidence submitted by the appellant and accepted by BoA shows that the earlier mark had consistently been granted a high brand rating as well as prizes in surveys carried out by specialised companies in Poland between 2005 and 2009 (para. 30). It was therefore considered that the appellant successfully proved reputation in Poland for jewellery, but did not prove reputation for the other goods and services covered by its earlier signs.
The value associated with the mark
The fact that a mark is solicited by third companies for reproduction on their products, either as a trade mark, or as mere decoration, is a strong indication that the mark possesses a hi gh degree of attractiveness and an i mportant economic value. Therefore, the extent to which the mark is exploited through licensing, merchandising and sponsoring, as well as the importance of the respective schemes, are useful indications in assessing reputation. This factor is mentioned in Article 2(1)(b)(6) of the WIPO Recommendations.
3.1.4 Proof of reputation
3.1.4.1 Standard of proof
The opponent must submit evidence enabling the Office to reach a positive finding that the earlier mark has acquired a r eputation in the relevant territory. The wording
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used in Article 8(5) CTMR and Rule 19(2)(c) CTMIR is quite clear in this respect: the earlier mark deserves enlarged protection only if it ‘has a reputation’.
It follows that the evidence must be clear and convincing, in the sense that the opponent must clearly establish all the facts necessary to safely conclude that the mark is known by a significant part of the public. The reputation of the earlier mark must be established to the satisfaction of the Office and not merely assumed.
3.1.4.2 Burden of proof
According to the second sentence of Article 76(1) CTMR, in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. It follows that in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a r esult of its own private knowledge of the market nor conduct an ex-officio investigation, but should exclusively base its findings on the information and evidence submitted by the opponent.
Exceptions to this rule apply where particular facts are so well-established that they can be considered as universally known and, thus, are also presumed to be known to the Office (e.g. the fact that a particular country has a certain number of consumers, or the fact that food products target the general public). However, whether or not a mark has passed the threshold of reputation established by the Court in General Motors is not in itself a pure question of fact, since it requires the legal evaluation of several factual indications, and, as such, the reputation of the earlier mark may not be simply assumed to be a universally known fact.
Case No Comment
T-185/02 ‘PICARO’ (confirmed by C-361/04 P)
The Board of Appeal, in addition to the facts expressly put forward by the parties, may take into consideration facts which are well known, that is, which are likely to be k nown by anyone or which may be learnt from generally accessible sources. ‘It must be borne in mind, at the outset, that the legal rule stated in Article 76(1) in fine of Regulation No 40/94 constitutes an exception to the principle of examination of the facts by OHIM of its own motion, laid down in limine by that provision. That exception must therefore be given a strict interpretation, defining its extent so as not to exceed what is necessary for achieving its object’ (paras 29-32).
R 1472/2007-2 ‘El Polo’
It is common knowledge that the earlier mark is indeed a v ery famous brand, not only in France, but in most European countries, in large part due to the public’s exposure to products at airport and duty free boutiques as well as long-standing advertising in widely circulated magazines. The weight of evidence required to support statements which are universally known to be true need not be great (para. 32).
Rule 19(2)(c) CTMIR provides that the burden of putting forward and proving the relevant facts lies with the opponent, by expressly requiring it to provide ‘evidence attesting that the earlier mark has a r eputation’. According to Rule 19(1) and Rule 19(2)(c) CTMIR and the practice of the Opposition Division, such evidence may be submitted either together with the notice of opposition, or subsequently within four months of the date of notification of the opposition to the applicant. The opponent may also refer to facts and evidence submitted in the course of another opposition, provided
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that the relevant materials are indicated in a clear and unambiguous way and that the language of proceedings is the same in both cases.
If the evidence of reputation is not in the correct language, it will have to be translated into the language of the proceedings within the same period of four months, as required by Rules 16(1) and 17( 3) CTMIR. However, in view of the volume of documents often needed for proving reputation, it is sufficient to translate only the material parts of long documents or publications. Similarly, it is not necessary to translate in their entirety documents or parts of documents that contain mainly figures or statistics, the meaning of which is evident, as is often the case with invoices, order forms, diagrams, brochures, catalogues etc.
Case No Comment
R 1472/2007-2 ‘El Polo’
Although there is a requirement to adduce evidence to substantiate the existence of an earlier right in the language of the opposition proceedings, it is not specified that such translations have to be in any specific format. Many opponents simply provide their own, often hand-written, translations of the registration details. It is primarily for the Office and, to a lesser extent, for the applicant to check the accuracy of these translations. If a t ranslation is incorrect, the document cannot be relied upon (para. 17).
3.1.4.3 Evaluation of the evidence
The basic rules on the evaluation of evidence are also applicable here: the evidence should be assessed as a whole, that is, each indication should be weighed-up against the others, whereas information confirmed by more than one source will generally be more reliable than facts derived from isolated references. Moreover, the more independent, reliable and well-informed the source of the information is, the higher the probative value of the evidence will be.
Therefore, information deriving directly from the opponent is unlikely to be enough on its own, especially if it only consists of opinions and estimates instead of facts, or if it is of an unofficial character and lacks objective confirmation, as for example when the opponent submits internal memoranda or tables with data and figures of unknown origin.
Case No Comment
R 0295/2009-4 ‘PG PROINGEC CONSULTORIA (fig.)’
The content of the documentation submitted does not clearly demonstrate that the earlier marks enjoy a reputation. The documentation emanates, in the main, from the respondent directly and contains information taken from the respondent’s trade catalogues, and its own advertising and documents downloaded from its website. There is insufficient documentation/information from third parties to reflect clearly and objectively what the respondent’s position on the market precisely is. Reputation not proved (para. 26).
T-500/10 ‘doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS’ (fig.)
As regards documents in the case-file which come from the company itself, the General Court has held that to assess the evidential value of such a document, first and foremost account should be taken of the credibility of the account it contains. The Court added that it is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, prima facie, the documents appear sound and reliable (para. 49).
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However, if such information is publicly available or has been c ompiled for official purposes and contains information and da ta that have been ob jectively verified, or reproduces statements made in public, its probative value is generally higher.
As regards its contents, the more indications the evidence gives about the various factors from which reputation may be inferred, the more relevant and conclusive it will be. In particular, evidence which as a whole gives little or no quantitative data and information will not be appropriate for providing indications about vital factors, such as trade mark awareness, market share and intensity of use and, consequently, will not be sufficient to support a finding of reputation.
3.1.4.4 Means of evidence
There is no direct indication in the Regulations as to which kind of evidence is more appropriate for proving reputation, as for instance the one in Rule 22(4) CTMIR about evidence of use. The opponent may avail itself of all the means of evidence of Article 78(1) CTMR, provided they are capable of showing that the mark has indeed the required reputation. The following means of evidence are more frequently submitted by opponents in Opposition proceedings before the Office (this list does not reflect their relative importance or probative value):
1. sworn or affirmed statements 2. decisions of Courts or Administrative authorities 3. decisions of the Office 4. opinion polls and market surveys 5. audits and inspections 6. certifications and awards 7. articles in the press or in specialised publications 8. annual reports on economic results and company profiles 9. invoices and other commercial documents 10. advertising and promotional material.
Evidence of this kind may also be s ubmitted under Article 8(1)(b) CTMR in order to prove that the earlier mark has obtained a higher degree of distinctiveness, or under Article 8(2)(c) CTMR in relation to well-known marks.
Sworn or affirmed statements
Pursuant to Article 78(1)(f) CTMR, statements in writing, sworn or affirmed or having a similar effect under the law of the State in which they are drawn up, are valid means of evidence. Therefore, such evidence is admissible if it fulfils the formal requirements laid down by the relevant national law, regardless of the term used by the opponent for their description or translation (‘Affidavit’, ‘Statutory Declaration’, ‘Sworn Statement’ etc.). Therefore, if the national law does not make its admissibility dependent on the capacity in which the person gives the evidence, statements of this kind are admissible independently of whether the declaration is made by the opponent itself, or by a director of the company, or by one of its employees.
The weight and probative value of statutory declarations is determined by the general rules applied by the Office to the assessment of such evidence. In particular, both the
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capacity of the person giving the evidence and the relevance of the contents of the statement to the particular case must be taken into account.
As a rule, affidavits will be of greater value if the information they contain is clear, it relates to specific facts and it is supported by objective exhibits or attachments, the veracity of which is also affirmed. Conversely, if the declaration merely contains vague or unsupported statements, or subjective evaluations and opinions, or if the source of the information is not revealed, its probative value will be much lower.
Case No Comment
R 0729/2009-1 ‘SKYBLOG’
The statement submitted by an expert consultancy firm in the area of digital media strategy in the UK attests to the opponent ‘as the leading supplier of digital television in the UK’ and that ‘Sky’ has an enormous and impressive reputation (para. 37).
Decisions of Courts or Administrative authorities
Opponents often invoke decisions of national authorities or Courts which have accepted the reputation of the earlier mark. Even though national decisions are admissible evidence and may have evidentiary value, especially if they originate from a Member State the territory of which is also relevant for the opposition at hand, they are not binding for the Office, in the sense that it is not mandatory to follow their conclusion.
Case No Comment
T-0192/09 ‘SEVE TROPHY’
As far as judgments of Spanish courts are concerned, the Community trade mark system is an autonomous system, consisting of a s et of rules and objectives that are specific, and applied independently of any national system (para. 79).
Since such decisions may serve to indicate reputation and to record successful enforcement of the mark, their relevance should be addressed and examined. Relevance should be given to the type of proceedings involved, to whether the issue was in fact reputation within the sense of Article 8(5) CTMR, to the level of the court, as well as to the number of such decisions.
Case No Comment
C-100/11 P ‘BOTOCYL’
Decisions of the UK national office related to the reputation of ‘BOTOX’ are facts that may, if relevant, be taken into account by the General Court, despite the CTM owners not being parties in those decisions (para. 78).
There might be differences between the substantive and procedural conditions applicable in national proceedings and those applied in opposition proceedings before the Office. Firstly, there may be differences as to how the requirement of reputation is defined or interpreted. Secondly, the weight the Office gives to the evidence is not necessarily the same as the weight given to it in national proceedings. Furthermore, national instances may be able to take into account ex officio facts known to them directly, whereas the Office may not, pursuant to Article 76 CTMR.
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For these reasons, the probative value of national decisions will be considerably enhanced if the conditions of law and facts on the basis of which they were taken are made abundantly clear. This is because, in the absence of these elements, it will be more difficult both for the applicant to exercise its right of defence and for the Office to assess the decision’s relevance with a reasonable degree of certainty. Similarly, if the decision is not yet final, or if it is outdated due to the time that has elapsed between the two cases, its probative value will be diminished accordingly.
Consequently, the probative value of national decisions should be assessed on the basis of their contents and it may vary depending on the case.
Decisions of the Office
The opponent may also refer to earlier decisions of the Office, on condition that such a reference is clear and unambiguous, and that the language of the proceedings is the same. Otherwise, the opponent must also file a t ranslation of the decision within the four-month period to file further facts, evidence and arguments, in order to allow the applicant to exercise its right of defence.
As regards the relevance and probative value of previous Office decisions, the same rules as for national decisions apply. Even where the reference is admissible and the decision is relevant, the Office is not bound to come to the same conclusion and must examine each case on its own merits.
It follows that previous Office decisions only have a relative probative value and should be evaluated in conjunction with the rest of the evidence, especially where the reference of the opponent does not extend to the materials filed in the first case, that is, where the applicant has not had a chance to comment on them, or where the time that has elapsed between the two cases is quite long.
Case No Comment
R 0141/2011-1 ‘GUSSACI GUSSACI GUSSACI GUSSACI’ (fig.)
The finding of reputation is confirmed by the previous decision of the Boards of Appeal, according to which ‘GUCCI’ was considered to be one of the world’s leading brands in the field of luxury goods, and r eputation of the mark ‘GUCCI’ as well as the letter ‘G’, in its various configuration as an abbreviation for ‘GUCCI’, was found. In particular, reputation was found for the following goods: watches and jewellery (decision of 14/042011, R 143/2010-1, ‘GUDDY / GUCCI’), clothing, handbags, leather goods, luggage, shoes, gift, jewellery, fragrance and eyewear (decision of 11/02/2010, R 1281/2008-1 ‘G’ (fig.) / ‘G’ (fig.) et al.), clothing, handbags, leather goods, luggage and shoes (decision of 17/03/2011, R 543/2010-1, ‘G’ (fig.) / ‘G’ (fig.) et al.) (para. 18).
Opinion polls and market surveys
Opinion polls and m arket surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark, the market share it has, or the position it occupies in the market in relation to competitors’ goods.
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The probative value of opinion polls and market surveys is determined by the status and degree of independence of the entity conducting it, by the relevance and t he accuracy of the information it provides, and by the reliability of the applied method.
More particularly, in evaluating the credibility of an opinion poll or market survey, the Office needs to know the following.
1. Whether or not it has been conducted by an i ndependent and recognised research institute or company, in order to determine the reliability of the source of the evidence.
2. The number and profile (sex, age, occupation and bac kground) of the interviewees, in order to evaluate whether the results of the survey are representative of the different kinds of potential consumers of the goods in question. In principle, samples of 1 000 – 2 000 interviewees are considered sufficient, provided they are representative of the type of consumer concerned.
3. The method and circumstances under which the survey was carried out and the complete list of questions included in the questionnaire. It is also important to know how and in what order the questions were formulated, in order to ascertain whether the respondents were confronted with leading questions.
4. Whether the percentage reflected in the survey corresponds to the total amount of persons questioned or only to those who actually replied.
Unless the above indications are present, the results of a market survey or opinion poll should not be considered of high probative value, and will not in principle be sufficient on their own to support a finding of reputation.
Case No Comment
R 0925/2010-2 ‘1 CLEAN! 2 FRESH! 3 STRONG!’ (fig.)
The cancellation applicant did not submit sufficient proof of the reputation of its trade marks. According to the extracts from the 2001 survey conducted in Italy, although the level of ‘prompted recognition’ stands at 86 %, the rate of ‘spontaneous recognition’ is only 56 %. Moreover, no indication is given of the questions put to the people surveyed, making it impossible to determine whether the questions were really open and unassisted. The survey further fails to state for which goods the trade mark is known (para. 27).
Likewise, if the above indications are given, but the reliability of source and method are questionable or the statistical sample is too small, or the questions were leading, the credibility of the evidence will be diminished accordingly.
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Case No Comment
R 1191/2010-4 ‘MÁS KOLOMBIANA …Y QUÉ MÁS!! (fig.)’
The survey submitted by the opponent does not provide conclusive information to demonstrate that the earlier sign is well-known to the Spanish public for aerated waters as the interviewees were carefully selected on the basis of their origin, that is, Colombians resident in Spain. This is only a very small part of the population living in Spain. The sales figures, publicity investment and presence in publications directed at the immigrant public, contained in the statement before a notary public, are likewise in insufficient amounts for a finding that the earlier sign is well-known. Moreover, the statements are not corroborated by conclusive data on the extent or turnover of the goods (para. 23).
R 1345/2010-1 ‘Fukato Fukato (fig.)’
In support of its claim under Article 8(5) CTMR, the opponent relies exclusively on an opinion poll that was carried out in 2007. That opinion poll was conducted by an independent company. In principle, samples of 1 000–2 000 interviewees are considered sufficient, provided they are representative of the type of consumer concerned. The opponent’s opinion poll was based on a sample of 500 interviewees, which is not sufficient in respect of the services for which reputation is claimed. According to the opinion poll, the logo of the earlier mark has been associated especially with services in the financial and insurance fields. Since the opposition is only based on Class 42 with regard to the earlier Community trade mark, it does not cover financial and i nsurance services. Consequently, the submitted opinion poll is not suitable proof of the reputation of the opponent’s Community trade mark (para. 58).
Conversely, opinion polls and m arket surveys that fulfil the above requirements (independence and trustworthiness of source, reasonably large and widespread sample and reliable method) will be a strong indication of reputation, especially if they show a high degree of trade mark awareness.
Audits and inspections
Audits and inspections of the opponent’s undertaking may provide useful information about the intensity of use of the mark, as they usually comprise data on f inancial results, sales volumes, turnovers, profits etc. However, such evidence will be pertinent only if it specifically refers to the goods sold under the mark in question, rather than to the opponent’s activities in general.
Audits and i nspections may be c arried out on t he initiative of the opponent itself, or may be required by company law and/or financial regulations. In the former case, the same rules as for opinion polls and m arket surveys apply, that is, the status of the entity conducting the audit and the reliability of the applied method will be of essence for determining its credibility, whereas the probative value of official audits and inspections will be as a rule much higher, since they are usually conducted by a state authority or by a r ecognised body of auditors, on t he basis of generally accepted standards and rules.
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Certifications and awards
This kind of evidence includes certifications and awards by public authorities or official institutions, such as chambers of commerce and industry, professional associations and societies, consumer organisations etc.
The reliability of certifications by authorities is generally high, as they emanate from independent and specialised sources, which attest facts in the course of their official tasks. For example, the average circulation figures for periodicals issued by the competent press-distribution associations are conclusive evidence about the performance of a mark in the sector.
Case No Comment
R 0907/2009-2 ‘O2PLS’
The many brand awards won by the mark were considered an important part of the evidence to show reputation together with the huge advertising investments and the number of articles published in different publications (para. 9(iii) and para. 27).
The same applies to quality certifications and awards granted by such authorities, as the opponent usually has to meet objective standards in order to receive the award. Conversely, prizes and awards offered by unknown entities, or on the basis of unspecified or subjective criteria, should be given very little weight.
The relevance of a c ertification or award to the specific case largely depends on i ts contents. For example, the fact that the opponent is a holder of an ISO 9001 quality certificate, or of a royal warrant, does not automatically mean that the sign is known to the public. It only means that the opponent’s goods meet certain quality or technical standards or that it is a supplier of a royal house. However, if such evidence is coupled with other indications of quality and market success, it may lead to the conclusion that the earlier mark has a reputation. Articles in the press or in specialised publications
The probative value of press articles and other publications concerning the opponent’s mark mainly depends on whether such publications are covert promotional matter, or if, on the contrary, they are the result of independent and objective research.
Case No Comment
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
The very existence of articles in a scientific publication or the general-interest press constitutes a r elevant factor in establishing the reputation of the products marketed under the trade mark BOTOX with the general public, irrespective of the positive or negative content of those articles (para. 54).
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Case No Comment
R 0555/2009-2 ‘BACI MILANO’ (fig.)
The reputation of the earlier trade mark in Italy was proven by the copious amount of documentation submitted by the opponent, which included, inter alia, an article from Economy revealing that in 2005 the ‘BACI & ABBR ACCI’ trade mark was one of the fifteen most counterfeited fashion brands in the world; an article published in Il Tempo on 05/08/2005, in which the ‘BACI & ABBRACCI’ trade mark is mentioned alongside others, including Dolce & Gabbana, Armani, Lacoste and Puma, as being targeted by counterfeiters; an article published in Fashion on 15/06/2006, in which the trade mark is defined as ‘a true market phenomenon’; publicity campaigns from 2004 to 2007, with testimonials from entertainment and sports celebrities; a market survey conducted by the renowned independent agency Doxa in September 2007, from which it emerges that the trade mark is at the top of mind in the fashion sector for 0.6% of the Italian public (para. 35).
Hence, if such articles appear in publications of a hi gh status or are written by independent professionals, they will have a quite high value, as for example when the success of a specific brand becomes the object of a case study in specialised journals or in scientific publications. The presence of a mark in a dictionary (which is not a press article but is still a publication) is a means of evidence with high value.
Case No Comment
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
The inclusion of a word in a dictionary is the expression of a fair amount of recognition on the part of the public. The references in the 2002 and 2003 editions of a number of dictionaries published in the United Kingdom constitute one of the items of evidence which may establish the reputation of the trade mark BOTOX in that country or amongst the English-speaking public of the European Union. (paras 55, 56).
Annual reports on economic results and company profiles
This type of evidence includes all kinds of internal publications giving varied information about the history, activities and per spectives of the opponent’s company, or more detailed figures about turnovers, sales, advertising etc.
To the extent that such evidence derives from the opponent and is mainly intended to promote its image, its probative value will mostly depend on i ts contents and the relevant information should be t reated with caution, especially if it mainly consists of estimates and subjective evaluations.
However, where such publications are circulated to clients and other interested circles and contain objectively verifiable information and data, which may have been compiled or revised by independent auditors (as is often the case with annual reports), their probative value will be substantially enhanced.
Invoices and other commercial documents
All kinds of commercial documents may be grouped under this heading, such as invoices, order forms, distribution and s ponsoring contracts, samples of
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correspondence with clients, suppliers or associates etc. Documents of this sort may provide a great variety of information as to the intensity of use, the geographical extent and duration of the use of the mark.
Even though the relevance and credibility of commercial documents is not disputed, it will be generally difficult to prove reputation on the basis of such materials alone, given the variety of factors involved and the volume of documents required. Furthermore, evidence such as distribution or sponsoring contracts and commercial correspondence are more appropriate for giving indications about the geographical extent or the promotional side of the opponent’s activities, than for measuring the success of the mark in the market and thus may only serve as indirect indications of reputation.
Case No Comment
R 1272/2010-1 ‘GRUPO BIMBO’ (fig.) (T-357/11)
The evidence submitted shows a high level of recognition of the mark on the Spanish market. The total invoices on the Spanish tin- loaf market in 2004 amounted to EUR 346.7 million, of which the opponent’s invoices amounted to EUR 204.9 million. The submitted invoices cover advertisements on T V, as well as in newspapers and magazines. Therefore, the reputation of ‘BIMBO’ in Spain for industrially produced bread has been substantiated (para. 64). The Court did not address this point.
Advertising and promotional material
This kind of evidence may take various forms, such as press cuttings, advertising spots, promotional articles, offers, brochures, catalogues, leaflets etc. In general, such evidence cannot be conclusive of reputation on its own, due to the fact that it cannot give much information about actual trade mark awareness.
However, some conclusions about the degree of exposure of the public to advertising messages concerning the mark may be drawn by reference to the kind of the medium used (national, regional, local) and to the audience rates or circulation figures attained by the relevant spots or publications, if of course this kind of information is available.
Case No Comment
R 0043/2010-4 ‘FFR’ (fig.) (T-143/11)
The documents submitted show that the device of a black rooster has acquired reputation and will be associated with wines from the Chianti Classico-region. The opponent provided several copies of advertisements in newspapers and magazines showing its promotional activity as well as independent articles displaying a black rooster in connection with the Chianti Classico region. However, given that the reputation only pertains to the device of a black rooster and given that this device is only one part of the earlier marks, serious doubts arise about whether reputation can be attributed to the marks as a w hole. Moreover, for the same reason, doubt also arises about which marks the reputation could be attributed to, given that the opponent owns several marks. (paras 26, 27). The Court did not assess the evidence on reputation.
In addition, such evidence may give useful indications of the kind of goods covered, the form in which the mark is actually used and the kind of image the opponent is trying to create for its brand. For example, if the evidence shows that the earlier registration for
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which reputation is claimed covers a device, but in reality this device is used combined with a verbal element, it would not be consistent to accept that the device by itself has a reputation.
Case No Comment
R 1308/2010-4 ‘WM GRAND PRIX’
In all the examples of actual use on the podia, media kits, posters, race cards, letter head, programme covers, tickets, passes etc., submitted by the opponent, the words GRAND PRIX are always used in combination with other elements. No evidence of use was submitted of the use of the trade mark GRAND PRIX in an independent way (paras 53, 54).
T-10/09, ‘F1-LIVE’ (C-196/11 P)
The evidence of reputation makes reference to the earlier figurative mark ‘F1 Formula 1’ and not to the earlier word marks. Without its particular logotype the text ‘Formula 1’ and its abbreviation ‘F1’ are perceived as descriptive elements for a category of racing cars or races involving those cars. The reputation was not proven for the word marks which are not identical or similar (paras 53, 54, 67). The Court did not address this point.
3.2 The similarity of the signs
A ‘certain degree of similarity between the signs’ must be found for an opposition under Article 8(5) CTMR to succeed (judgment of 24/03/2011, C-552/09 P, ‘TiMi KINDERJOGHURT’, para. 53). If the signs are found dissimilar overall, the examination aimed at establishing whether the other requirements under Article 8(5) CTMR are met should not be carried out, as the opposition cannot succeed.
A subject of some uncertainty is the relationship between ‘similarity’ within the meaning of Article 8(5) CTMR and the meaning of the same term used in Article 8(1)(b) CTMR. According to the clear wording of these two provisions, a similarity (or identity) between the signs is a precondition for the application of both Article 8(1)(b) and Article 8(5) CTMR. The use of the same term in both provisions is an ar gument in favour of the need to interpret this term in the same way and the case-law has confirmed this.
Accordingly, the assessment of similarity should be made according to the same criteria that apply in the context of Article 8(1)(b) CTMR, thus taking into account elements of visual, aural or conceptual similarity (judgment of 23/10/2003, C-408/01, ‘Adidas’, para. 28, relating to the interpretation of Article 5(2) TMD, and judgment of 24/03/2011, C-552/09P, ‘TiMi KINDERJOGHURT’, para. 52). See the Guidelines, Part C, Opposition, Section 2, Identity and Li kelihood of Confusion, Chapter 3, Comparison of Signs.
The general rules for assessing the signs established for the examination of this criterion under Article 8(1)(b) CTMR apply, such as the rule that consumers perceive the sign as a whole and only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect image of them that they have kept in mind (judgment of 25/01/2012, T-332/10 ‘Viaguara’, paras 33, 34) (see the Guidelines, Part C, Opposition, Section 2, Identity and Li kelihood of Confusion, Chapter 8, Global Assessment, paragraph 4, Imperfect recollection).
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3.2.1 Notion of ‘similarity’ pursuant to Article 8(5) CTMR compared with Article 8(1)(b) CTMR
Despite application of the same criteria for similarity of the signs in Article 8(1)(b) and Article 8(5) CTMR, the purposes underlying these Articles are different: for Article 8(1)(b) CTMR, the aim is to prevent the registration of a later trade mark that, if used, could confuse the relevant public as regards the commercial origin of the goods or services concerned, whereas for Article 8(5) CTMR, the aim is to prevent the registration of a l ater trade mark that, if used, could encroach on t he reputation/distinctiveness of the earlier reputed trade mark.
The relationship between the notion of ‘similarity’ under the two provisions was addressed by the ECJ in TiMi KINDERJOGHURT: ‘It should be noted at the outset that … the existence of a similarity between the earlier mark and the challenged mark is a precondition for the application both of Article 8(1)(b) [CTMR] and of Article 8(5) [CTMR]’ (para. 51).
In the context both of Article 8(1)(b) and o f Article 8(5) CTMR, a finding of similarity between the marks in question requires the existence, in particular, of elements of visual, aural or conceptual similarity (judgment of 23/10/2003, C-408/01 ‘Adidas- Salomon and Adidas Benelux’, para. 28).
However, those provisions differ in terms of the degree of similarity required. Whereas the protection provided for under Article 8(1)(b) CTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) CTMR. Accordingly, the types of injury referred to in Article 8(5) CTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks that is to say, to establish a l ink between them (judgment of 23/10/2003, C-408/01 ‘Adidas- Salomon and A didas Benelux’, paras 27, 29, 31, and judgment of 27/11/2008, C-252/07 ‘Intel Corporation’, paras 57, 58, 66).
Nevertheless, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, depending on whether the assessment is carried out under Article 8(1)(b) CTMR or under Article 8(5) CTMR.
To sum up, the application of both Article 8(1)(b) and Article 8(5) CTMR requires a finding of similarity between the signs. Consequently, if in the examination of Article 8(1)(b) CTMR the signs were found to be dissimilar, the opposition will necessarily fail under Article 8(5) CTMR too.
However, once the signs have been found to be similar, depending on whether Article 8(1)(b) or Article 8(5) CTMR are involved, the examiner will independently assess whether the degree of similarity is sufficient for the relevant provision to apply (and in correlation with the further relevant factors).
Therefore, a degree of similarity between the marks that, after an overall assessment of the factors, led to a partial finding of likelihood of confusion under Article 8(1)(b) CTMR does not necessarily trigger a link between the signs under Article 8(5) CTMR, for example because the markets concerned are completely distinct. A full analysis
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must take place. This is because the similarity of the signs is only one of the factors to be consi dered when assessing whether there is such a l ink (see the relevant criteria listed under paragraph 3.3 below on the ‘link’).
Depending on the case, the following scenarios are possible.
• Article 8(1)(b) CTMR fails because the signs are dissimilar – Article 8(5) CTMR fails too, since the same conclusion applies.
• Likelihood of confusion pursuant to Article 8(1)(b) CTMR is excluded (e.g. because the goods or services are dissimilar or very remotely similar), but the signs are similar – the examination of Article 8(5) CTMR must be carried out (see T-143/11 ‘CHIANTI CLASSICO’ paras 66-71).
• The similarity of the signs together with the other relevant factors justifies the exclusion of likelihood of confusion pursuant to Article 8(1)(b) CTMR, but the similarity between the signs might be sufficient to establish a link between them under Article 8(5) CTMR, in view of the other relevant factors to be taken into account.
3.3 The link between the signs
The ECJ has made it clear that in order to assess whether the use of the contested mark would be likely to cause detriment to, or take unfair advantage of, the distinctive character or repute of the earlier mark, it is necessary to establish – once the signs have been f ound to be similar – if, given all the relevant factors, a l ink (or association) between the signs will be est ablished in the mind of the relevant public. The subsequent case-law has made it clear that such an analysis should precede the final assessment as to whether encroachment would be likely or not.
The notion of a link between the signs was addressed by the ECJ in its judgment of 27/11/2008, C-252/07 ‘Intel Corporation’, para. 30 (and the case-law cited therein), which, although referring to the interpretation of Article 4(4)(a) TMD, is applicable to Article 8(5) CTMR which is the equivalent provision in the CTMR. In Intel, the ECJ, stated the following (para. 30):
The types of injury referred to in Article 4(4)(a) of the Directive, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see, in relation to Article 5(2) of the Directive, General Motors, para. 23; Adidas-Salomon and Adidas Benelux, para. 29, and adidas and adidas Benelux, para. 41).
The term ‘link’ is often also referred to as ‘association’ in other paragraphs of this part of the Guidelines as well as in case-law. These terms are, at times, used interchangeably.
The Court made it clear that the mere fact that the marks in question are similar is not sufficient for it to be concluded that there is a link between them. Rather, whether or not there is a link between the marks at issue must be appr eciated globally, taking into account all factors relevant to the circumstances of the case.
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According to Intel, (para. 42), the following may be relevant factors when assessing whether such a link exists.
• The degree of similarity between the conflicting marks. The more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 26 and, by analogy, preliminary ruling of 27/11/2008, C-252/07, Intel, para. 44).
• The nature of the goods or services for which the earlier mark is reputed and the later mark seeks registration, including the degree of similarity or dissimilarity between those goods or services, and the relevant section of the public. The goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public (Intel, para. 49).
• The strength of the earlier mark’s reputation.
• The degree of the earlier mark’s distinctive character, whether inherent or acquired through use. The more inherently distinctive the prior mark, the more likely it will be brought to a consumer’s mind when encountering a similar (or identical) later mark.
• The existence of likelihood of confusion on the part of the public.
This list is not exhaustive. A link between the marks at issue may be established or excluded on the basis of only some of those criteria. The question of whether the relevant public will establish a link between the marks at issue is a question of fact which must be answered in the light of the facts and circumstances of each individual case.
The assessment of whether a ‘link’ will be es tablished must take into account all the relevant factors that will then need to be balanced. Therefore, even a faint or remote degree of similarity between the signs (which might not be s ufficient for a f inding of likelihood of confusion under Article 8(1)(b) CTMR) still justifies assessing all the relevant factors to determine if it is likely that a l ink between the signs will be established in the mind of the relevant public. In this respect, in its judgment of 24/03/2011, C-552/09 P, ‘TiMi Kinderjoghurt’, paras 65, 66, the ECJ stated the following:
Although that global assessment implies some interdependence between the relevant factors, and a low degree of similarity between the marks may therefore be offset by the strong distinctive character of the earlier mark … the fact remains that where there is no similarity between the earlier mark and the challenged mark, the reputation or recognition enjoyed by the earlier mark and the fact that the goods or services respectively covered are identical or similar are not sufficient for it to be found that the relevant public makes a link between them ...
… It is only if there is some similarity, even faint, between the marks at issue that the General Court must carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as
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the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public.
Case-law has made it clear that a link is not sufficient, in itself, to establish that there may be one o f the forms of damage referred to in Article 8(5) CTMR (judgment of 26/09/ 2012, T-301/09, ‘Citigate’, para. 96, and the case-law cited therein). However, as will be ex plained in detail under paragraph 3.4 ‘Encroachment upon reputation’ below, the existence of the link (or association) between the signs is necessary before determining whether detriment or unfair advantage are likely.
3.3.1 Examples where a link was found between the signs
The following are examples where it was found that the degree of similarity between the signs (together with further factors) was sufficient to conclude that consumers would establish a link between them.
Earlier reputed sign CTM application Case No
BOTOX BOTOLYST and BOTOCYL Joined Cases
T-345/08 and T-357/08 confirmed by ECJ in C-100/11P)
The trade mark BOTOX had a reputation for pharmaceutical preparations for the treatment of wrinkles in the United Kingdom on the filing date of the contested marks, which cover a range of goods in Class 3. The General Court confirmed the Board’s finding that there is a certain overlap between the goods, namely a low degree of similarity between the opponent’s pharmaceutical preparations for the treatment of wrinkles and the contested cosmetics among other creams, whereas the remaining contested goods, namely perfumes, sun-tanning milks, shampoos, bath salts, etc., are dissimilar. Nevertheless, the goods at issue concern related market sectors. The General Court confirmed the Board’s finding that the relevant public – practitioners as well as the general public – would not fail to notice that both the applied for trade marks, BOTOLIST and B OTOCYL, begin with ‘BOTO-’, which comprises almost the whole of the mark BOTOX, which is well known to the public. The General Court pointed out that ‘BOTO- is not a common prefix, either in the pharmaceutical field or in the cosmetic field and that it has no descriptive meaning. Even if the sign BOTOX could be broken down into ‘bo’ for ‘botulinum’ and ‘tox’ for ‘toxin’ in reference to the active ingredient which it uses, that word would then have to be considered to have acquired a distinctive character, inherent or through use, at least in the United Kingdom. In light of all the relevant factors, the public would naturally be led to establish a l ink between the marks BOTOLIST and BOTOCYL and the reputed mark BOTOX (paras 65-79).
Earlier reputed sign CTM application Case No
RED BULL R 0070/2009-1
The Board found that a link would be established between RED DOG and RED BULL because (i) the marks have some relevant common features, (ii) the conflicting goods in Classes 32-33 are identical, (3) the RED BULL mark is reputed, (iv) the RED BULL mark has acquired a strong distinctive character through use and (v) there might be a possibility of confusion (para 19). It is reasonable to assume that the average consumer of beverages, who knows the reputed RED BULL mark and sees the RED DOG marks on the same kind of beverages would immediately recall the earlier mark. According to the Intel judgement, this is ‘tantamount to the existence of a link’ between the marks (para 24).
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Earlier reputed sign CTM application Case No
VIAGRA VIAGUARA T-332/10
The trade marks are highly similar overall (para. 42). Visually, all the letters of the earlier trade mark are present in the contested one, the first four and the final two are in the same sequence. There is a visual similarity, especially since the public tends to pay more attention to the beginnings of words (para 35, 36). The identity of the first and the last syllable, together with the fact that the middle syllables have in common the sound [g], leads to a high degree of phonetic similarity (paras 38, 39). Neither of the signs has a meaning and, therefore, the public will not differentiate them conceptually (para. 40).
The earlier mark covers pharmaceuticals for the treatment of erectile dysfunctions in Class 5, whereas the contested mark covers non-alcoholic and alcoholic drinks in Classes 32 and 33. The reputation of the earlier sign for the mentioned goods is not disputed. The General Court found that although no direct connection can be established between the goods covered by the marks in dispute since they are dissimilar, an association with the earlier mark remains possible, taking into account the high degree of similarity between the signs and the strong reputation acquired by the earlier mark. Therefore, the General Court concludes that a link is likely to be established between the marks (para. 52).
Earlier reputed sign CTM application Case No
RSC-ROYAL SHAKESPEARE COMPANY ROYAL SHAKESPEARE T-60/10
As the contested trade mark is exclusively made up of the central and distinctive element of the earlier trade mark, namely the expression ‘royal shakespeare’, the signs at issue are visually, phonetically and conceptually similar. Therefore, the average consumer will establish a link between those signs (para 29).The earlier mark covers services in Class 41, including theatre productions, whereas the contested mark covers non-alcoholic and alcoholic drinks in Classes 32 and 33 and providing of food and drink, restaurants, bars, pubs, hotels; temporary accommodation in Class 42. The General Court confirmed the Board’s finding of the ‘exceptional’ reputation of the earlier mark in the United Kingdom for theatre productions. The relevant public for the contested trade mark is the same as the relevant public for the earlier trade mark, namely the public at large (para 58). Although the contested goods in Classes 32-33 do not appear to be directly and immediately linked to the opponent’s theatre productions, there is a certain proximity and link between them. The General Court refers to the judgment of 04/11/2008, T-161/07 ‘Ugly (COYOTE UGLY)’, paras 31-37, where a c ertain similarity between entertainment services and beer was found due to their complementarity. The General Court added that it is common practice, in theatres, for bar and catering services to be offered either alongside and in the interval of a p erformance. Moreover, irrespective of the above, in view of the established reputation of the earlier trade mark, the relevant public, namely the public at large in the United Kingdom, would be able to make a link with the intervener when seeing a beer with the contested trade mark in a supermarket or in a bar (para. 60).
3.3.2 Examples where no link was found between the signs
The following are examples where an overall assessment of all of the relevant factors showed that it was unlikely that a link would be established between the signs.
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Earlier reputed sign CTM application Case No
R 0724/2009-4
The signs only have a certain degree of visual and aural similarity. The Board confirms that the reputation of the earlier marks has been proven solely for distribution of energy services. These services are completely different from the goods for which protection is requested in Classes 18, 20, 24 and 27. The relevant section of the public is the same, given that the services for which a reputation has been proven, namely distribution of energy services, are aimed at the general public and the goods in dispute are also aimed at the average consumer who is reasonably observant and c ircumspect. However, even if the relevant section of the public for the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. The huge differences in usage between the goods in dispute and the services for which a r eputation has been proven make it very unlikely that the public will make a link between the signs in dispute, which is essential for the application of Article 8(5) CTMR and f or unfair advantage to be taken of the distinctive character or repute of the earlier mark. It is even less likely that, when intending to purchase a bag or item of furniture, the relevant public will link these goods to a trade mark that is very well known, but for services in the energy sector (paras 69-79).
Earlier reputed sign CTM application Case No
G-STAR and
T-309/08
Visually the signs cause a different overall impression, due to the figurative element of a Chinese dragon’s head placed at the beginning of the mark applied for. Aurally, there is a rather close aural similarity between the marks at issue. The signs are conceptually different, since the element ‘star’ of the earlier marks is a w ord which is part of basic English vocabulary, the meaning of which is widely understood throughout the Community. Therefore, the earlier marks will be perceived as referring to a star or a famous person. It is possible that a part of the relevant public will attribute to the element ‘stor’ of the contested mark the sense of the Danish and Swedish word ‘stor’, meaning ‘big, large’, or will regard it as a reference to the English word ‘store’ meaning ‘shop, storage’. It is, however, more likely that the majority of the relevant public will not attribute any particular meaning to that element. Therefore, the relevant public will perceive the marks at issue as conceptually different inasmuch as the earlier marks have a clear meaning throughout the Community, while the mark applied for has either a different meaning for part of the relevant public or has no meaning. According to settled case-law, where the meaning of at least one of the two signs at issue is clear and specific so that it can be gr asped immediately by the relevant public, the conceptual differences between those signs may counteract the visual and aural similarities between them. The Board of Appeal was right to find that the visual and conceptual differences between the marks prevented any assumption of a possible link between them (paras 25-36).
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Earlier reputed sign CTM application Case No
ONLY R 1556/2009-2(confirmed by T-586/10)
The goods in Class 3 are identical and target the same public. There is a slight degree of visual and conceptual similarity between the signs at issue and a moderate degree of aural similarity. Even if the earlier marks had a reputation, the differences between the signs, in particular due to the conceptual unit created by the combination of the element ‘only’ and the distinctive dominant element ‘givenchy’, would be significant enough for the public not to make any connection between them. Therefore, the Board of Appeal was correct in finding that one of the conditions for applying Article 8(5) CTMR, namely that the signs be sufficiently similar to lead the relevant public to make a connection between them, has not been met (paras 65, 66).
Earlier reputed sign CTM application Case No
KARUNA R 696/2009-4(confirmed by T-357/10)
The goods concerned, chocolate in Class 30, are identical. The signs differ visually not only because of the figurative elements in the sign applied for, but also because of their verbal elements. Even though the verbal elements of the marks at issue have three letters out of six in common, a difference arises because the earlier marks begin with the letters ‘ka’ while the mark applied for begins with the letters ‘co’ and because the consumer normally attaches more importance to the first part of words. There is a low degree of phonetic similarity between the signs taken as a whole. Conceptually, the word ‘corona’, meaning ‘crown’ in Spanish, does not have any meaning in Estonian, Latvian or Lithuanian. Accordingly, no conceptual comparison is possible between the signs at issue in the three Baltic States. The mere fact that the Lithuanian word ‘karūna’ means ‘crown’ is not sufficient to establish that the relevant public associates the terms ‘karuna’ or ‘karūna’ with the word ‘corona’, which remains a foreign word. To conclude, the General Court reiterated that if the condition of similarity of the signs is not met under Article 8(1)(b) CTMR, it must also be held, on the basis of the same analysis, that that condition is not met under Article 8(5) CTMR either (paras 30-34 and 49).
3.4 Encroachment upon reputation
3.4.1 Protected subject matter
Article 8(5) CTMR does not protect the reputation of the earlier mark as such, in the sense that it does not intend to prevent the registration of all marks identical with or similar to a mark with reputation. In addition, there must be a l ikelihood that use of the contested application without due c ause would take unfair advantage of, or would be detrimental to, the distinctive character or the repute of the earlier mark. The Court confirmed this by stating that ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be det rimentally affected without due cause’ (see judgment of 14/09/1999, C-375/97, ‘General Motors’, para. 30).
The Court did not set out in more detail exactly what would count as detriment or unfair advantage, even though it stated in Sabel that Article 8(5) CTMR ‘[does] not require proof of likelihood of confusion’, thereby stating the obvious, namely that the enlarged protection granted to reputed marks is not concerned with their function of origin (see judgment of 11/11/1997, C-251/95, ‘Sabel’, para. 20).
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However, in a series of previous decisions the Court stated that apart from indicating origin, a trade mark may also fulfil other functions worthy of protection. More particularly, it confirmed that a trade mark can offer a guarantee that all the goods coming from a single undertaking have the same quality (guarantee function) and that it can serve as an advertising instrument by reflecting back the goodwill and prestige it has acquired in the market (advertising function) (judgment of 17/10/1990, C-10/89 CNL-SUCAL v HAG, judgment of 11/07/1993, joined cases C-427/93, C-429/93 and C-436/93, ‘Bristol-Myers Squibb and Others v Paranova’, judgment of 11/11/1997, C-349/95, ‘Loendersloot v Ballantine & Son and Others’, judgment of 04/11/1997, C-337/95, ‘Parfums Christian Dior v Evora’, and j udgment of 23/02/199, C-63/97, ‘BMW’).
It follows that trade marks do not only serve to indicate the origin of a product, but also to convey a certain message or image to the consumer, which is incorporated in the sign mostly through use and, once acquired, forms part of its distinctiveness and repute. In most cases of reputation these features of the trade mark will be particularly developed, as the commercial success of a brand is usually based on product quality, successful promotion, or both and, for this reason, they will be especially valuable to the trade mark owner. This added value of a mark with reputation is precisely what Article 8(5) CTMR intends to protect against undue detriment or unfair advantage.
Hence, the notion of encroachment upon reputation extends to all cases where the use of the contested trade mark applied for is likely to have an adverse effect on the earlier mark, in the sense that it would diminish its attractiveness (detriment to distinctiveness), or would devalue the image it has acquired among the public (detriment to repute), or the contested mark is likely to result in a misappropriation of its attractive powers or an exploitation of its image and prestige (unfair advantage of the distinctive character or repute).
Given also that a very strong reputation is both easier to harm and more tempting to take advantage of, owing to its great value, the Court underlined that ‘the stronger the earlier mark’s distinctive character and r eputation, the easier it will be t o accept that detriment has been caused to it’ (judgment of 27/11/2008, C-252/07 ‘Intel’, paras 67, 74, judgment of 25/05/2005, T-67/04, ‘Spa-finders’, para. 41). Even though the Court did not say so expressly, the same must be accepted as regards the unfair advantage that the applicant might enjoy at the expense of the earlier mark.
3.4.2 Assessment of encroachment upon reputation
In General Motors the Court did not deal with the assessment of detriment and unfair advantage in great detail, as this issue was not part of the question referred to it. It only stated that it ‘is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade mark, may possibly make an association between the two trade marks … and that the earlier trade mark may consequently be damaged’ (judgment of 14/09/1999, C-375/97, ‘General Motors’, para. 23).
Even though this statement is too limited to serve as a basis for a comprehensive analysis of the condition of encroachment upon reputation, it gives at least a significant indication, namely that detriment or unfair advantage must be the consequence of an association between the conflicting marks in the minds of the public, made possible by
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the similarities between the marks, their distinctiveness, the reputation and ot her factors (see paragraph 3.3 above).
The need for an association capable of causing detriment has a two-fold consequence for the assessment of detriment or unfair advantage.
• Firstly, if the alleged detriment or unfair advantage is not the result of an association between the marks, but is due to other, extraneous reasons, it is not actionable under Article 8(5) CTMR.
• Secondly, if in view of the overall circumstances of the case, an association between the marks is not likely, the necessary link between the use of the later mark and t he detrimental effect will be m issing. Therefore, the similarities between the signs and the reputation of the earlier mark must be of such a nature and degree that, considering all factors, the consumer will associate the signs, in the sense that encountering one of them will bring to mind the other.
Furthermore, as the Court observed, an association between the marks requires that the part of the public which is already familiar with the earlier mark is also exposed to the later mark. This will be easier to establish where the earlier mark is known to the public at large, or where the consumers of the respective goods and services largely overlap. However, in cases where the goods and services are significantly different from each other and such a connection between the respective publics is not obvious, the opponent must justify why the marks will be associated, by reference to some other link between its activities and those of the applicant, for example where the earlier mark is exploited outside its natural market sector, for instance, by licensing or merchandising (see paragraph 3.3 above).
Earlier reputed sign CTM application Case No
R 1074/2011-5
Repute for services in Classes 38, 42 and 45, inter alia, a website for social networking
Classes 14, 18 and 25
The Board defined the relevant public as the average European consumer of the goods applied for, which are ordinary goods meant for the general public.
The Board found it likely that the applicant’s goods could be seen as merchandising products coming from the opponent. Items such as t-shirts, key chains, watches, hand bags, jewellery, caps etc. are very frequently used as marketing means bearing trade marks which relate to entirely distinct goods and services. Upon encountering the sign TWITTER used on a w atch, a scarf or a t -shirt, the relevant consumer would inevitably make a mental connection with the opponent’s sign and the services it offers on account of the reputation of the opponent’s mark. This would give the applicant a competitive advantage since its goods would benefit from the extra attractiveness they would gain from the association with the opponent’s older mark. Buying a TWITTER watch as a present for someone who is known to be a TWITTER user is, for example, an action motivated by the fondness for the earlier mark (para. 40).
The more immediately and s trongly the earlier mark is brought to mind by the later sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will
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be, detrimental to it (judgments of 27/11/2008, C-252/07 ‘Intel’, paras 67-69; judgment of 18/06/2009, C-487/07 ‘L’Oréal’, paras 41, 43).
Therefore, the evaluation of detriment or unfair advantage must be based on an overall assessment of all the factors relevant to the case (including in particular the similarity of signs, the reputation of the earlier mark, the respective consumer groups and market sectors), with a view to determining whether the marks may be associated in a way which may encroach the earlier trade mark.
3.4.3 Forms of encroachment
Article 8(5) CTMR refers to the following forms of encroachment: ‘take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’. Therefore, Article 8(5) CMTR applies if any of the following three alternative requirements showing encroachment is fulfilled, namely if use of the contested mark would:
• take unfair advantage of the distinctiveness, or the repute of the earlier mark; • cause unfair detriment to the distinctiveness; • cause unfair detriment to the repute.
As regards the first form of encroachment, the wording of Article 8(5) CTMR suggests the existence of two kinds of unfair advantage, but settled case-law treats both as a single injury under Article 8(5) CTMR (see, for example, judgment of 06/07/2012, T-60/10, ‘RSC-Royal Shakespeare Company’, para. 47). For the sake of completeness, both aspects of the same injury will be deal t with under paragraph 3.4.3.1 below.
As demonstrated in the Guidelines, Part C, Opposition, Section 2, Identity and Likelihood of Confusion, likelihood of confusion relates only to confusion about the commercial origin of goods and s ervices. Article 8(5) CTMR, in contrast, protects earlier reputed marks in cases of association or confusion that does not necessarily relate to the commercial origin of goods/services. Article 8(5) CTMR protects the heightened effort and financial investment that is involved in creating and promoting trade marks to the extent that they become reputed by protecting these marks against later similar marks taking unfair advantage of, or being detrimental to, the distinctive character or the repute of the earlier trade mark. There is a rich lexicon of vocabulary that is used in relation to this area of trade mark law. The most common terms are set out below.
Terms in Article 8(5) CTMR Commonly used equivalents
Unfair advantage Free-riding, riding on the coat-tails
Detriment to distinctiveness Dilution by blurring, dilution, blurring, watering down, debilitating,whittling away
Detriment to repute Dilution by tarnishing, tarnishment, degradation
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3.4.3.1 Taking unfair advantage of distinctiveness or repute
The nature of the injury
The notion of taking unfair advantage of distinctiveness or repute covers cases where the applicant benefits from the attractiveness of the earlier right by affixing on its goods/services a sign which is similar (or identical) to one widely known in the market and, thus, misappropriating its attractive powers and advertising value or exploiting its reputation, image and prestige. This may lead to unacceptable situations of commercial parasitism where the applicant is allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up goodwill for its mark, as it may stimulate the sales of the applicant’s products to an ex tent which is disproportionately high in comparison with the size of its promotional investment.
In its judgment of 12/07/2011, C-324/09, ‘L’Oréal and others’, the Court indicated that unfair advantage exists where there is a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign. By riding on the coat-tails of the reputed mark, the applicant benefits from its power of attraction, its reputation and its prestige. It also exploits, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the image of that mark (paras 41, 49).
Earlier reputed sign CTM application Case No
SPA
LES THERMES DE SPA SPA-FINDERS T-67/04
The concept of taking unfair advantage of the distinctive character or the repute of the earlier mark must be intended to encompass instances where there is clear exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation (see to that effect Opinion of Advocate General Jacobs in Adidas, point 39) (para. 51).
Earlier reputed sign CTM application Case No
RSC-ROYAL SHAKESPEARE COMPANY
ROYAL SHAKESPEARE T-60/10
The unfair advantage taken of the distinctive character or the repute of the earlier trade mark consists in the fact that the image of the mark with a r eputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods can be made easier by that association with the earlier mark with a reputation (para. 48).
Relevant consumer
The concept of ‘unfair advantage’ focuses on benefit to the later mark rather than harm to the earlier mark; what is prohibited is the exploitation of the earlier mark by the proprietor of the later mark. Accordingly, the existence of the injury consisting of unfair advantage obtained from the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods or services for which the later mark is applied for (judgment of 27/11/2008, C-252/07, ‘Intel’,
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paras 35, 36; judgment of 12/03/2009, C-320/07P, ‘nasdaq’, paras 46-48; judgment of 07/12/2010, T-59/08, ‘NIMEI LA PERLA MODERN CLASSIC’, para. 35).
The assessment of unfair advantage
In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment which takes into account all the factors relevant to the circumstances of the case (judgment of 10/05/2007, T-47/06, ‘nasdaq’, para. 53, confirmed, on appeal, by judgment of 12/03/2009, C-320/07P, ‘nasdaq’; see also judgment of 23/10/2003, C-408/01 ‘Adidas’, paras 29, 30, 38; judgment of 27/11/2008, C-252/07 ‘Intel’, paras 57, 58, 66; and judgment of 24/03/2011, C-552/09P, ‘Kinder’, para. 53).
The misappropriation of the distinctiveness and repute of the earlier mark presupposes an association between the respective marks, which makes possible the transfer of attractiveness and prestige to the sign applied for. An association of this kind will be more likely in the following circumstances.
1. Where the earlier mark possesses a strong reputation or a very strong (inherent) distinctive character, because in such a c ase it will be bot h more tempting for the applicant to try to benefit from its value and easier to associate it with the sign applied for. Such marks will be recognised in almost any context, exactly because of their outstanding distinctiveness or ‘good’ or ‘special’ reputation, in the sense that it reflects an image of excellence, reliability or quality, or some other positive message, which could positively influence the choice of the consumer as regards goods of other producers (judgment of 12/07/2011, C-324/09, ‘L’Oréal and others’, para. 44). The stronger the distinctive character of the earlier mark, the more likely it is that, when encountering a later identical or similar mark, the relevant public will associate it with that earlier mark (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 27).
2. Where the degree of similarity between the signs at issue is high. The more similar the marks are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 26; see, by analogy, judgment of 27/11/2008, C-252/07, ‘Intel’, para. 44).
3. Where there is a special connection between the goods/services which allows for some of the qualities of the opponent’s goods/services to be a ttributed to those of the applicant. This will be particularly so in the case of neighbouring markets, where a ‘brand extension’ would seem more natural, as in the example of pharmaceuticals and cosmetics; the healing properties of the former may be presumed in the latter when it bears the same mark. Conversely, such a link was not found between credit card services and cosmetics, as it was thought that the image of the former is not transferable to the latter, even though their respective users largely coincide.
4. Where, in view of its special attractiveness and prestige, the earlier mark may be exploited even outside its natural market sector, for example, by licensing or merchandising. In this case, if the applicant uses a sign identical or similar to the earlier mark, for goods for which the latter is already exploited, it will obviously
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profit from its de facto value in that sector (see decision of 16/03/2012, R 1074/2011-5, ‘Twitter’).
The applicant’s intention is not a material factor. Taking unfair advantage of the distinctiveness or the repute of a trade mark may be a deliberate decision, for example where there is a clear exploitation and free riding on the coat-tails of a famous mark, or an attempt to trade upon the reputation of a famous mark. However, taking unfair advantage does not necessarily require a del iberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a r eputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a r eputation’ (judgment of 19/06/2008, T-93/06, ‘Mineral Spa’, para. 40, judgment of 22/03/2007, T-215/03, ‘VIPS’, para. 40, judgment 30/01/2008, T-128/06, ‘Camelo’, para. 46).
Therefore, bad faith is not in itself a condition for the application of Article 8(5) CTMR, which only requires that the advantage be ‘unfair’, in that there is no justification for the applicant’s profit. However, where the evidence shows that the applicant is clearly acting in bad faith, there will be a strong indication of unfair advantage. The existence of bad faith may be inferred from various factors, such as an obvious attempt by the applicant to imitate an earlier sign of great distinctiveness as closely as possible, or where there is no apparent reason why it chose for its goods a mark which includes such a sign.
Finally, the concept of unfair advantage in Article 8(5) CTMR does not relate to the detriment caused to the reputed mark. Accordingly, an adv antage taken by a third party of the distinctive character or the repute of the mark may be unfair, even if the use of the identical or similar sign is not detrimental to the distinctive character or to the repute of the mark or, more generally, to its proprietor. It is, therefore, not necessary for the opponent to show that the applicant’s benefit is detrimental to its economic interests or to the image of its mark (unlike with tarnishing, see below), as in most cases the ‘borrowed’ distinctiveness/prestige of the sign will principally affect the applicant’s competitors, that is, traders dealing in identical/similar/neighbouring markets, by putting them at a competitive disadvantage. However, the possibility of simultaneous detriment to the opponent’s interests should not be ruled out completely, especially in instances where use of the applied-for sign could affect the opponent’s merchandising schemes, or would hinder its plans to penetrate a new market sector.
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Cases on unfair advantage
Risk of unfair advantage established
Earlier reputed sign CTM application Case No
INTEL INTELMARK C-252/07(Advocate General Opinion)
In her opinion in the Intel preliminary ruling, Advocate General Sharpston referred to unfair advantage as follows: ‘The concepts of taking unfair advantage of the distinctive character or repute of the mark in contrast must be intended to encompass “instances where there is clear exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation”. Thus by way of example Rolls Royce would be entitled to prevent a manufacturer of whisky from exploiting the reputation of the Rolls Royce mark in order to promote his brand. It is not obvious that there is any real difference between taking advantage of a m ark’s distinctive character and t aking advantage of its repute; since however nothing turns on any such difference in the present case, I shall refer to both as free-riding’ (para. 33).
Earlier reputed sign CTM application Case No
CITIBANK et al T-181/05
‘…the reputation of the trade mark CITIBANK in the European Community in regard to banking services is not disputed. That reputation is associated with features of the banking sector, namely, solvency, probity and financial support to private and commercial clients in their professional and investment activities.
‘…there is a c lear relationship … between the services of customs agencies and the financial services offered by banks such as the applicants, in that clients who are involved in international trade and in the import and export of goods also use the financial and banking services which such transactions require. It follows that there is a probability that such clients will be familiar with the applicants’ bank given its extensive reputation at international level.
‘In those circumstances, the Court holds that there is a high probability that the use of the trade mark applied for, CITI, by customs agencies, and therefore for financial agency activities in the management of money and real estate for clients, may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark CITIBANK and the considerable investments undertaken by the applicants to achieve that reputation. That use of the trade mark applied for, CITI, could also lead to the perception that the intervener is associated with or belongs to the applicants and, therefore, could facilitate the marketing of services covered by the trade mark applied for. That risk is further increased because the applicants are the holders of several trade marks containing the component “citi”’ (paras 81-83).
Earlier reputed sign CTM application Case No
SPA MINERAL SPA T-93/06
MINERAL SPA (f or soaps, perfumeries, essential oils, preparations for body and beauty care, preparations for the hair, dentifrices in Class 3) could take unfair advantage of the image of the earlier trade mark SPA and the message conveyed by it in that the goods covered by the contested application would be perceived by the relevant public as supplying health, beauty and purity. It is not a question of whether toothpaste and perfume contain mineral water, but whether the public may think that the goods concerned are produced from or with mineral water (paras 43, 44).
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Earlier reputed sign Case No
L’Oréal et al C-324/09 (preliminary ruling)
According to L’Oréal et al, the defendants manufactured and imported perfume which was ‘smell-like’ of L’Oréal’s fragrances but sold at a considerably lower price, using packaging which ‘took a wink’ at the get- up covered by L’Oréal’s marks. The comparison lists used by the defendants present the perfumes which they market as being an imitation or a replica of goods bearing a trade mark with repute. Under Directive 84/450, comparative advertising which presents the advertiser’s products as an imitation of a product bearing a trade mark is inconsistent with fair competition and thus unlawful. Therefore, any advantage gained by the advertiser through such advertising will have been achieved as a result of unfair competition and must be regarded as taking unfair advantage of the reputation of that mark (para. 79).
Earlier reputed sign CTM application Case No
NASDAQ T-47/06
‘Taking account of the fact that the financial and stock market listing services supplied by the intervener under its trade mark NASDAQ and, therefore, the trade mark NASDAQ itself, undeniably presents a certain image of modernity and that image can be transferred to sports equipment and, in particular, to the high tech composite materials which would be marketed by the applicant under the mark applied for, which the applicant appears to recognise implicitly by stating that the word ‘nasdaq’ is descriptive of its main activities.
Therefore, in light of that evidence, and taking account of the similarity of the marks at issue, the importance of the reputation and the highly distinctive character of the trade mark NASDAQ, it must be held that the intervener has established prima facie the existence of a future risk, which is not hypothetical, of unfair advantage being drawn by the applicant, by the use of the mark applied for, from the reputation of the trade mark NASDAQ. There is therefore no need to set aside the contested decision on that point’ (paras 60, 61).
Earlier reputed sign CTM application Case No
RSC-ROYAL SHAKESPEARE COMPANY
ROYAL SHAKESPEARE T-60/10
There is a certain proximity and link between entertainment services and beer, even a certain similarity due to their complementarity. The public in the United Kingdom would be able to make a link with the Royal Shakespeare Company (RSC) when seeing a beer with the contested mark ROYAL SHAKESPEARE in a supermarket or in a bar. The contested mark would benefit from the power of attraction, the reputation and the prestige of the earlier mark for its own goods and services, which would attract the consumers’ attention thanks to the association with RSC, thereby gaining a commercial advantage over its competitors’ goods. The economic advantage would consist of exploiting the effort expended by RSC to establish the reputation and the image of its earlier mark without paying any compensation in exchange. That equates to an unfair advantage (para. 61).
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Earlier reputed sign CTM application Case No
T-369/10 C-294/12 P
(appeal dismissed)
The General Court confirmed that the Board of Appeal was entitled to find that the earlier marks have a reputation for merchandising products such as toys and games, although that reputation is lesser than that acquired by the earlier marks for sound records, video records, films, and the goods in question are similar, although they do not have the same nature, use or purpose, are neither complementary nor in competition and do not have the same sales channels (paras 38, 50, 52).
The very positive image portrayed by the earlier marks could benefit the goods covered by the contested mark [inter alia, wheelchairs, specially made for sick and disabled persons, Class 12], since the relevant public, on a ccount specifically of the handicap in question, would be par ticularly attracted by the very positive image of freedom, youth and mobility associated with the earlier marks, especially since a part of the public targeted by the goods of the contested mark belongs to the generation who knew the goods bearing the earlier marks in the 1960s, some of whom may now be concerned by the goods covered by the contested mark (para. 72).
Earlier reputed sign CTM application Case No
EMILIO PUCCI T-373/09 (appeal pending C-582/12 P)
(cases R 770/2008-2 and R 826/2008-2)
Although the applicant’s cosmetic products are dissimilar to the opponent’s clothes, they both fall squarely within the realm of products which are often sold as luxury items under famous marks of well-known designers and manufacturers. Taking into account that the earlier mark is very well known and that the commercial contexts in which the goods are promoted are relatively close, BoA concluded that consumers of luxury clothes will make a connection between the applicant’s mark for soaps, perfumery, essential oils, cosmetics and hair lotions in Class 3 and the famous mark ‘EMILIO PUCCI’, an association which will produce a commercial benefit as per the Board’s findings (BoA para. 129).
BoA concluded that there was a s trong likelihood that the applicant could exploit the reputation of the opponent’s mark for its own benefit. The use of the mark applied for in connection with the goods and services mentioned above will almost certainly draw the relevant consumer’s attention to the opponent’s highly similar and very well-known mark. The applicant will become associated with the aura of luxury that surrounds the ‘EMILIO PUCCI’ brand. Many consumers are likely to think that there is a direct connection between the goods of the applicant on the one hand, and the famous Italian fashion house on the other, perhaps in the form of a licensing agreement. The applicant could take unfair advantage of the fact that the public knows the trade mark ‘EMILIO PUCCI’ well in order to introduce its own highly similar trade mark without incurring any great risk and the costs of introducing a totally unknown trade mark onto the market (BoA para. 130).
The General Court confirmed the BoA findings.
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Risk of unfair advantage denied
Earlier reputed sign CTM application Case No
O2
R 2304/2010-2
The Board of Appeal found that (1) the marks have very limited similarities and are dissimilar overall; (2) the use of the common designation ‘O2’ is descriptive in the mark applied for; and (3) taking the completely different areas of use – and the descriptive use of the common element – there can be no possibility of the applicant benefiting from the distinctive character of the earlier mark, even if there may be an overlap in the relevant public (para. 55).
Earlier reputed sign CTM application Case No
VIPS VIPS T-215/03
The earlier mark VIPS has a reputation for restaurants, in particular fast food chains. However, it was not proven that it also enjoys any particular prestige. The term VIPS is laudatory in itself and extensively used in this manner. Therefore, it cannot be ‘diluted’. There is no explanation as to how the sales of software products under the mark VIPS could possibly benefit from their association with a fast-food chain, even if a link were made.
Earlier reputed sign CTM application Case No
SPA SPA-FINDERS T-67/04
SPA has a r eputation for mineral water in the Benelux. The contested mark, SPA FINDERS, covers publications, catalogues, magazines, newsletters, travel agency services. The General Court declared that there was no detrimental link between the signs. The sign SPA is also used to denote the town of SPA and the racing circuit of the same name. There is no evidence of unfair advantage or any kind of exploitation of the fame of the earlier mark. The word SPA in the mark applied for only denotes the kind of publication concerned.
3.4.3.2 Detriment to distinctiveness
The nature of the injury
Detriment to the distinctive character of an ea rlier reputed mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods/services for which it is registered and u sed as coming from its proprietor is weakened because use of a later similar mark leads to dispersion of the identity of the earlier reputed mark by making it less distinctive or unique (judgment of 27/11/2008, C-252/07, ‘Intel’, para. 29).
Article 8(5) CTMR states that a p roprietor of a reputed mark may oppose CTM applications which, without due cause, ‘would be detrimental to the distinctive character of earlier reputed marks’ (emphasis added). Clearly, therefore, the object of protection is the distinctiveness of the earlier reputed mark. As demonstrated in the Guidelines, Part C, Opposition, Section 2, Identity and Likelihood of Confusion, Chapter 4, Distinctiveness, ‘distinctiveness’ refers to the greater or lesser capacity of a m ark to identify the goods/services for which it has been registered as coming from a particular undertaking. Therefore, Article 8(5) CTMR protects reputed marks against a reduction of their distinctive quality by a later similar mark even where the later mark relates to
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dissimilar goods/services. The latter situation is commonly known as ‘dilution by blurring’ meaning that ‘dilution’ occurs to the exclusivity of the mark which is ‘blurred’ by the arrival of other similar marks which results in the reputed mark no l onger being capable of evoking in the mind of the public an immediate association with the goods it covers.
Although Article 8(5) CTMR only refers to conflicts between dissimilar goods/services, in its judgment of 09/01/2003, C-292/00, ‘Davidoff’ and judgment of 23/10/2003, C-408/01, ‘Adidas’, the Court held that this article also covers similar or identical goods/services.
The protection provided in Article 8(5) CTMR, therefore, acknowledges that the unrestrained use of a r eputed mark by third parties, even on di ssimilar goods, will eventually reduce the distinctive quality or uniqueness of that reputed mark. For example, if Rolls Royce were used on r estaurants, pants, candy, plastic pens, yard brushes etc. its distinctiveness would eventually be dispersed and its special hold upon the public would be reduced - even in relation to cars for which it is reputed. Consequently, the Rolls Royce mark’s ability to identify the goods/services for which it is registered and used as coming from its proprietor would be weakened in the sense that consumers of the goods for which the reputed mark is protected and reputed will be less inclined to associate it immediately with the owner who has built up the trade mark’s reputation. This is because, for those consumers, the mark now has several or many ‘other’ associations where it previously had one. This situation, in turn, is likely to diminish the capacity of the Rolls Royce mark to stimulate the desire of the public to buy the products for which it is registered and reputed.
Relevant consumer
Detriment to the distinctive character of the earlier reputed mark must be assessed by reference to the average consumers of the goods and services for which that mark is registered, who are reasonably well informed and r easonably observant and circumspect (judgment of 27/11/2008, C-252/07 ‘Intel’, para. 35).
The assessment of detriment to distinctiveness
Detriment to the distinctiveness of the earlier reputed mark occurs where use of a later similar mark reduces the distinctive quality of the earlier reputed mark. However, this cannot be found to occur merely because the earlier mark has a reputation and is identical with or similar to the mark applied for – such an appr oach would apply an automatic and indiscriminate finding of likelihood of dilution against all marks that are similar to reputed trade marks and would negate the requirement of proving detriment.
The Court held in ‘Intel’ that Article 4(4)(a) TMD (the equivalent to Article 8(5) CTMR) must be interpreted as meaning that proof that the use of the later mark would be detrimental to the distinctive character of the earlier mark requires evidence of a ‘change in the economic behaviour’ of the average consumer of the goods/services for which the earlier mark was registered, or a serious likelihood that such a change will occur in the future.
The Court has further elaborated on the concept of “change in the economic behaviour of the average consumers” in its judgment of 14/11/2013 C-383/12P ‘Wolf head image’.
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It indicated that it is an objective condition which cannot be deduced solely from subjective elements such as consumer’s perceptions. The standard of proof is higher. Therefore, in order to find a detriment or risk of detriment to the distinctiveness of the earlier trade mark, the mere fact that consumers note the presence of a ne w sign similar to an earlier sign is not sufficient of itself (paras. 35-40).
Whilst the opponent does not need to submit evidence of actual detriment, it must convince the Office by adducing evidence of a serious future risk – which is not merely hypothetical – of detriment. The opponent may do t his by submitting evidence that proves a l ikelihood of detriment on t he basis of logical deductions made from an analysis of the probabilities (and not mere suppositions) and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (see judgment of 16/04/2008, T-181/05, ‘Citi’, para. 78 as cited in judgment of 22/05/2012, T-570/10, ‘Wolf head image’, para. 52 and confirmed in the appeal by judgment of 14/11/2013, C-383/12P, paras. 42-43).
First use
Detriment to the distinctive character is characterised by an ‘avalanche effect’, meaning that the first use of a similar mark in a distinct market may not, in itself, dilute the identity or ‘uniqueness’ of the reputed mark but, over time, this would be the result because this first use may trigger further acts of use by different operators, thus leading to its dilution or detriment to its distinctive character.
The Court has held that the first use of an identical or similar mark may suffice to cause actual and present detriment to the distinctive character of the earlier mark or to give rise to a serious likelihood that such detriment will occur in the future (judgment of 27/11/2008, C-252/07 ‘Intel’, para. 75). In opposition proceedings before the Office, use of the contested sign may not have occurred at all. In this regard, the analysis that the Office carries out assumes that the future use of the contested sign, even if it were first use, may trigger further acts of use by different operators, thus leading to dilution by blurring. As seen above, the wording of Article 8(5) CTMR provides for this by stating that use of the applied-for mark without due c ause ‘would … be detrimental to the distinctiveness or repute of the earlier mark’.
Nevertheless, as set out above, the opponent bears the burden of showing that the actual or future use caused, or is likely to cause, detriment to the distinctiveness of the earlier reputed mark.
Inherent distinctiveness of the earlier mark
The Court has stated that ‘the more “unique” the earlier mark appears, the greater the likelihood that the use of a l ater identical or similar mark will be det rimental to its distinctive character’ (judgment of 27/11/2008, C-252/07 ‘Intel’ para. 74 and judgment of 28/10/2008, T-131/09 ‘Botumax’). Indeed, the earlier mark must possess an exclusive character in the sense that it should be associated by the consumers with a single source of origin – since it is only in this case that a l ikelihood of detriment to distinctiveness may be envisaged. If the same sign, or a variation thereof, is already in use in connection with a range of different goods, there can be no immediate link with any of the goods it distinguishes and, thus, there will be little or no r oom for further dilution.
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Accordingly, ‘… the risk of dilution appears, in principle, to be lower if the earlier mark consists of a t erm which, because of a meaning inherent in it, is very common and frequently used, irrespective of the earlier mark consisting of the term at issue. In such a case, re-use of the term in question by the contested trade mark is less likely to result in a dilution of the earlier mark’ (judgment of 22/03/2007, T-215/03, ‘VIPS’, para. 38).
If, therefore, the mark is suggestive of a characteristic shared by a w ide range of goods, the consumer is more likely to associate it with the specific feature of the product that it alludes to rather than with another mark.
In its judgment of 25/05/2005, T-67/04, ‘Spa-Finders’, the General Court confirmed the finding that the use of the mark SPA-FINDERS for publications and travel agency services would neither blur the distinctiveness, nor tarnish the reputation, of the mark SPA for mineral water: The term ‘spa’ in SPA-FINDERS may be used otherwise than in a trade mark context since it ‘is frequently used to designate, for example, the Belgian town of Spa and the Belgian racing circuit of Spa-Francorchamps or, in general, places for hydrotherapy such as hammams or saunas, [and consequently] the risk of detriment to the distinctive character of the mark SPA seems to be limited’ (para. 44).
Thus, if the applicant shows that the earlier sign or the element that gives rise to similarity is commonplace and i s already used by different undertakings in various sectors of the market, it may successfully refute the existence of a likelihood of dilution because it will be difficult to accept that the attractiveness of the earlier mark risks being diluted if it is not particularly unique. This will be par ticularly true where the respective goods are so different from each other that a pos sibility of association between them is even less probable, as was the case in the decision of 05/06/2000, R 802/1999-1 ‘DUPLO’, where the earlier mark was reputed for chocolate and the contested mark covered products such as printing inks, staplers, hole punchers and photocopiers. The Board of Appeal found that the ‘goods claimed in the application are so far removed from the opponent’s goods that dilution seems improbable: a t ypical consumer of chocolate bars who is familiar with the opponent’s products is unlikely to think of those products when he sees the word ‘duplo’ used in connection with products such as printing inks, staplers, hole punchers and photocopiers’.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 60
FINAL VERSION 1.0 DATE 01/08/2014
Cases on dilution by blurring
Dilution established
Earlier reputed sign CTM application Case No
BOTOX BOTUMAX
T-131/09Reputed for pharmaceuticals for the treatment of wrinkles
Cosmetics, pharmaceuticals, and other health-related goods, and printed matters
‘However, in the present case, the word element “botox” has no inherent meaning, but is a fanciful term with which the public will be faced only in relation to the goods covered by the widely known earlier trade mark. Consequently, the use of that word element or a similar word element by another trade mark registered for goods which may concern the general public will unquestionably result in the dilution of the distinctive character of the widely known earlier trade mark’ (para. 99).
That is the position with regard, first, to the cosmetics and pharmaceutical preparations in Classes 3 and 5 and, secondly, to the goods in Class 16 covered by the earlier marks, which include magazines or journals, the distribution of which may be widespread. The risk that the use of an identical or similar trade mark would be d etrimental to the distinctive character of a widely known earlier trade mark is greater where that other mark will be used in respect of goods intended for a wide public (para. 100).
The fact that ‘Botox’ was a coined word (abbreviating the words ‘botulinum’ and ‘toxin’) was important, because erosion of the earlier trade mark’s distinctive character (sometimes called dilution by blurring) will be more likely in circumstances where the elements of the trade marks giving rise to a similarity of signs enjoy a considerable degree of inherent distinctive character.
Dilution denied
Earlier reputed sign CTM application Case No
VIPS VIPS T-215/03Reputed for fast food restaurant
chain in Class 42 Computer programming for hotel services in Class 42
‘So far as concerns, first, detriment to the distinctive character of the earlier mark by the use without due cause of the mark applied for, that detriment can occur where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used (SPA-FINDERS, paragraph 34 above, paragraph 43). That risk thus refers to the “dilution” or “gradual whittling away” of the earlier mark through the dispersion of its identity and its hold upon the public mind (Opinion of Advocate General Jacobs in Adidas-Salomon and Adidas-Benelux, paragraph 36 above, point 37)’ (para. 37).
‘As far as concerns, first, the risk that the use of the mark applied for would be det rimental to the distinctive character of the earlier mark, in other words the risk of “dilution” and “gradual whittling away” of that mark, as explained in paragraphs 37 and 38 above, it must be pointed out that the term “VIPS” is the plural form, in English, of the abbreviation VIP (“Very Important Person”), which is widely and frequently used both internationally and nationally to describe famous personalities. In those circumstances, the risk that the use of the mark applied for would be detrimental to the distinctive character of the earlier mark is limited’ (para. 62).
‘That same risk is also even less probable in the present case as the mark applied for covers the services “Computer programming relating to hotel services, restaurants, cafés”, which are directed at a special and necessarily more limited public, namely the owners of those establishments. The consequence is that the mark applied for, if registration is allowed, will probably be known, through use, only by that relatively limited public, a factor which certainly reduces the risk of dilution or gradual whittling away of the earlier mark through the dispersion of its identity and its hold upon the public mind’ (para. 63).
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Guidelines for Examination in the Office, Part C, Opposition Page 61
FINAL VERSION 1.0 DATE 01/08/2014
Earlier reputed sign CTM application Case No
SPA SPA-FINDERS
T-67/04Reputed for mineral waters in Class 32
Printed publications including catalogues, magazines, newsletters in Class 16, Travel agency in Class 39
‘In the present case, the Court finds that the applicant does not put forward any evidence to support the conclusion that there is a risk of detriment to the distinctive character of the mark SPA by the use of the mark SPA-FINDERS. The applicant stresses the alleged immediate link which the public will establish between SPA and S PA-FINDERS. It infers from that link that there is detriment to the distinctive character. As the applicant acknowledged at the hearing, the existence of such a link is not sufficient to demonstrate the risk of detriment to the distinctive character. The Court notes, moreover, that since the term “spa” is frequently used to designate, for example, the Belgian town of Spa and the Belgian racing circuit of Spa-Francorchamps or, in general, places for hydrotherapy such as hammams or saunas, the risk of detriment to the distinctive character of the mark SPA seems to be limited’ (para. 44).
3.4.3.3 Detriment to repute
The nature of the injury
The final type of damage under Article 8(5) CTMR concerns harming the earlier mark by way of detriment to its repute. It can be seen as a step beyond blurring in that the mark is not merely weakened but actually degraded by the link which the public makes with the later mark. Detriment to repute, also often referred to as ‘dilution by tarnishing’ or simply as ‘tarnishing’, relates to situations where use of the contested mark without due cause is likely to devalue the image or the prestige that a mark with reputation has acquired among the public. The reputation of the earlier trade mark may be tainted or debased in this way, either when it is reproduced in an obscene, degrading or inappropriate context, or in a context which is not inherently unpleasant, but which proves to be incompatible with a particular image the earlier trade mark has acquired in the eyes of the public, due to the promotional efforts of its owner. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark (judgment of 18/06/2009, C-487/07, ‘L’Oréal’, para. 40). For example, if a reputed mark for gin were used by a third party on liquid detergent, this would reverberate negatively on the reputed mark in a way that makes it less attractive.
In short, tarnishment occurs where there is an association between the earlier reputed mark, either at the level of signs or at the level of goods, which is injurious to the earlier trade mark’s repute.
Relevant consumer
As with dilution by blurring, detriment to the reputation of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and r easonably observant and circumspect (judgment of 27/11/2008, C-252/07 ‘Intel’, para. 35 and judgment of 07/12/2010, T-59/08, ‘Nimei La Perla Modern Classic’, para. 35).
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The assessment of tarnishment
In order to establish detriment to the repute of an earlier mark, the mere existence of a connection in the mind of the consumer between the marks is neither sufficient nor determinative. Such a connection must certainly exist, but, in addition, the goods/services covered by the later mark must provoke the kind of negative or detrimental impact set out below when associated with the reputed mark.
Tarnishment occurs most frequently where the reputed mark is linked to goods which evoke undesirable or questionable mental associations which conflict with the associations or image generated by legitimate use of the reputed trade mark by its proprietor (decision of 12/03/2012, R 297/2011-5, ‘KAPPA’, para. 36).
Therefore, to prove tarnishment, the opponent must show that use of the applicant’s trade mark would prompt inappropriate or negative mental associations with the earlier trade mark, or associations conflicting with the image it has acquired in the market (decision of 23/11/2010, R 240/2004-2, ‘WATERFORD’, para. 89). The detriment in question occurs where the goods/services covered by the contested sign are perceived by the public in such a way that the earlier mark’s power of attraction is diminished such as where the contested goods/services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with reputation.
For example, if a mark that is associated in the minds of the public with an image of health, dynamism and y outh is used for tobacco products, the negative connotation conveyed by the latter would contrast strikingly with the image of the former (see further examples below). For tarnishment to occur, therefore, there must be s ome characteristic or qualities of the goods/services on which the contested mark is used that are potentially detrimental to the reputation of the earlier mark (judgment of 22/03/2007, T-215/03, ‘VIPS’, para. 67).
Earlier reputed sign CTM application Case No
WATERFORD
R 0240/2004-2
Reputed for crystal products, including glassware in Class 21
Alcoholic beverages, namely wines produced in the Stellenbosch district, South Africa in Class 33
‘Tarnishment or debasement of a t rade mark’s image through association with something inappropriate may happen when the trade mark is used, on the one hand, in an unpleasant, obscene or degrading context or, on t he other hand, in a context which is not inherently unpleasant but which proves to be incompatible with the trade mark’s image. This may be the case when the reputed mark might be linked with goods of poor quality or which evoke undesirable or questionable mental associations which conflict with the associations or image generated by legitimate use of the reputed trade mark by its proprietor, or when the reputed mark is linked to goods which are incompatible with the quality and prestige associated with that mark, even though it is not a matter of inappropriate use of the mark itself, or, eventually, when the reputed mark’s verbal or figurative element is amended or altered in a negative way’ (para. 88).
Frequently opponents argue that the goods/services of the applicant are of inferior quality or that the opponent cannot control the quality of such goods/services. The Opposition Division does not accept such an argument, per se, as a m eans of
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demonstrating detriment. Proceedings before the Office do not provide for assessing the quality of goods and services which, apart from being highly subjective, would not be feasible in cases where the goods and s ervices are not identical or in situations where the contested sign has not yet been put to use.
Therefore, in assessing whether the use of the contested trade mark is likely to damage the reputation of the earlier trade mark, the Opposition Division can only consider the goods and services as indicated in the specification of each trade mark. Consequently, for the purposes of the analysis by the Opposition Division, the harmful effects of the use of the contested sign in connection with the goods and services applied for must derive from the nature and usual characteristics of the goods at issue in general, not their quality in particular instances. This approach does not leave the opponent without protection because, in any event, where a later mark is used on low quality goods/services in a m anner that calls to mind an ear lier reputed mark, this would normally take unfair advantage of the distinctive character or the repute of the earlier trade mark or be detrimental to its distinctiveness.
Cases on dilution by tarnishing
Tarnishment established
Earlier reputed sign CTM application Case No
KAPPA
KAPPA
R 0297/2011-5
Reputed for sports clothing and footwear
Class 34 – Processed or unprocessed tobacco, smokers’ articles, tobacco products, cigarettes, cigars, cigarillos, tobacco, cigar and cigarette holders, cigars and cigarette cases, ashtrays, cigar clippers, tobacco pipes, pouches for tobacco, lighters, pocket devices for rolling cigarettes, cigarette paper, humidors for tobacco products, matches
The contested application was filed for tobacco and related goods in Class 34. Smoking tobacco is universally considered to be an extremely unhealthy habit. For this reason, the use of the sign ‘KAPPA’ for tobacco and related goods is likely to prompt negative mental associations with the respondent’s earlier marks or associations conflicting with and detrimental to their image of a healthy lifestyle (para. 38).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 64
FINAL VERSION 1.0 DATE 01/08/2014
Earlier reputed sign CTM application Case No
R 0417/2008-1
Reputed for mineral waters
Scouring and polishing preparations and substances; pot pourri; incense; incense sticks; room fragrances and articles for perfuming rooms
The pleasant notions conveyed generally by mineral water do not mix seamlessly with detergents and scouring preparations. Use of marks that contain the word SPA for goods conveying such different connotations is likely to damage, or tarnish, the distinctive character of the earlier mark (para. 101).
‘Mineral water is not pleasantly associated by most consumers with incense or pots pourris. The use, in order to distinguish fragrances and incense, of a mark containing a word (SPA) that Belgian consumers strongly associate to bottled drinking water is therefore likely to damage the attractive and suggestive power that the brand, according to the evidence, currently enjoys’ (para. 103).
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Guidelines for Examination in the Office, Part C, Opposition Page 65
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Earlier reputed sign CTM application Case No
R 2124/2010-1
Reputed for goods in Classes 18 and 25
Scientific, nautical, surveying, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
The opponent demonstrated that the prestigious image of its trade marks is linked to the traditional manufacturing method of its fine leather goods, which are handmade by master craftsmen who work only with top-quality raw materials. It is this image of luxury, glamour and exclusivity, combined with the exceptional quality of the product that the opponent has always striven to convey to the public, as the evidence adduced testifies. In fact, this image would be quite incompatible with goods of a strongly industrial and technological nature, such as electric meters, scientific microscopes, batteries, supermarket cash registers, fire-extinguishing apparatus or other instruments, for which the applicant intends to use its trade mark (para. 28).
What would be detrimental to the image of its trade marks, which the opponent has carefully fostered for decades, is the use of a trade mark that recalls its own and is applied to goods characterised, in the public’s perception, by a significant technological content (whereas a fine-leather article is rarely associated with technology) or as having an industrial origin (whereas fine leather goods are traditionally associated with craftsmanship) (para. 29).
The use of a trade mark that is practically identical to a trade mark that the public has come to perceive as synonymous with fine leather goods of excellent manufacture for technical apparatus or electrical tools of all kinds will diminish its attraction, that is, its reputation, amongst the public who knows and values the earlier trade marks (para. 30).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 66
FINAL VERSION 1.0 DATE 01/08/2014
Earlier reputed sign CTM application Case No
EMILIO PUCCI
T-373/09 (appeal pending C-582/12 P)
(cases R 770/2008-2 and R 826/2008-2)Reputed for clothing and footwear
for women
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring
and abrasive preparations; (abrasive preparations) soaps;
perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 21: Materials for cleaning purposes and steelwool
It its decisions of R 0770/2008-2 and R 0826/2008-2 it is stated that the risk of detriment to repute can occur where the goods and services covered by the mark applied for have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the mark applied for. The General Court confirmed the Board’s finding, adding that due to the great similarity between the signs at issue, the strong distinctive character of the Italian mark and its notoriety in the Italian market, it can be concluded that that there is a link between the signs in conflict, a link which could damage the idea of exclusivity, luxury and hi gh quality and therefore be a detriment to the notoriety of the Italian mark (para. 68).
Tarnishment denied
Earlier reputed sign CTM application Case No
T-192/09
Reputed for organisation of sports competitions Class 9
The Court noted that the opponent had not demonstrated any risk of injury to the reputation of the earlier marks, since it did not indicate how the attractiveness of the earlier marks would be diminished by the use of the contested mark on the contested goods. Specifically, it did not allege that the contested goods have any characteristic or quality that could have a ne gative influence on the image of the earlier marks (para. 68).
Earlier reputed sign CTM application Case No
SPA SPA-FINDERS
T-67/04Reputed for mineral waters in Class 32
Printed publications including catalogues, magazines, newsletters in Class 16, Travel agency in Class 39
‘This detriment is made out where the goods for which the mark applied for is used appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished’ (para. 46).
‘In the present case, SPA and SPA-FINDERS designate very different goods consisting, on the one hand, in mineral waters and, on the other, in publications and travel agency services. The Court finds that it is therefore unlikely that the goods and services covered by the mark SPA-FINDERS, even if they turn out to be of lower quality, would diminish the power of attraction of the mark SPA’ (para. 49).
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Guidelines for Examination in the Office, Part C, Opposition Page 67
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Earlier reputed sign CTM application Case No
VIPS VIPS T-215/03Reputed for fast food restaurant
chain in Class 42 Computer programming for hotel services in Class 42
‘The risk of that detriment (to the repute of the earlier mark) can, inter alia, occur where those goods or services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of its being identical or similar to the mark applied for’ (para. 39).
‘It must be pointed out in this connection that, although some fast food chain marks have an indisputable reputation, they do not, in principle and failing evidence to the contrary, convey a particularly prestigious or high quality image, the fast food sector being associated with other qualities such as speed or availability and, to a certain extent, youth, since many young people frequent that type of establishment’ (para. 57)
‘… it is appropriate to examine the risk that the use of the mark applied for could be detrimental to the reputation of the earlier mark. As was explained in paragraph 39 above, at issue is the risk that the association of the earlier mark with a reputation with the goods or services covered by the identical or similar mark applied for results in the earlier mark being damaged or tarnished, as a result of the fact that the goods or services covered by the mark applied for have a characteristic or a particular quality which may have a negative influence on the earlier mark’s image’ (para. 66)
‘In that regard, it must be stated that the services covered by the mark applied for do not have any characteristic or quality capable of establishing the likelihood of detriment of that type to the earlier mark. The applicant neither cited, nor a f ortiori proved, any characteristic or quality of that kind. The mere existence of a connection between the services covered by the conflicting marks is neither sufficient nor determinative. It is true that the existence of such a connection strengthens the probability that the public, faced with the mark applied for, would also think of the earlier mark. However, that factor is not, in itself, sufficient to diminish the earlier mark’s power of attraction. Such an outcome can arise only if it is established that the services covered by the mark applied for have characteristics or qualities which are potentially detrimental to the reputation of the earlier mark. Such evidence has not been adduced in the present case’ (para. 67).
3.4.4 Proof of encroachment upon reputation
3.4.4.1 Standard and burden of proof
In opposition proceedings detriment or unfair advantage may be only potential, as confirmed by the conditional wording of Article 8(5) CTMR, which requires that the use of the applied-for mark without due c ause ‘would take unfair advantage of, or be detrimental to the distinctiveness or repute of the earlier mark’.
In opposition proceedings actual detriment or unfair advantage will occur only exceptionally given that in most cases the applicant will not have effectively used its mark when the dispute arises. Nevertheless, such a possibility should not be ruled out completely and if there is evidence of actual use or damage, it will have to be considered and given appropriate weight.
However, the fact that detriment or unfair advantage may be only potential does not mean that a m ere possibility is sufficient for the purposes of Article 8(5) CTMR. The risk of detriment or unfair advantage must be serious, in the sense that it is foreseeable (i.e. not merely hypothetical) in the ordinary course of events. Therefore, it is not enough to merely show that detriment or unfair advantage cannot be excluded in general, or that it is only remotely possible. The proprietor of the earlier mark must adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or of detriment (judgment of 06/06/2012, T-60/10 ‘ROYAL SHAKESPEARE’, para. 53). As explained below, it is insufficient for the opponent only
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to refer in general terms to an unfair advantage of, or detriment to, the distinctive character or reputation of its earlier marks without submitting convincing evidence of actual detriment or cogent arguments establishing a serious, not merely hypothetical, potential risk of detriment.
As a rule, general allegations (such as merely citing the relevant CTMR wording) of detriment or unfair advantage will not be sufficient in themselves for proving potential detriment or unfair advantage: the opponent must adduce evidence and/or develop a cogent line of argument to demonstrate specifically how, taking into account both marks, the goods and services in question and all the relevant circumstances, the alleged encroachment might occur. Merely showing the reputation and good image of the earlier marks, without further substantiation by way of evidence and/or reasoning is not sufficient (decision of 15/2/2012, R 2559/2010-1 ‘GALLO’, paras 38, 39, and the Court case-law cited therein). This is shown in the following paragraphs.
The precise threshold of proof which must be satisfied to show that the risk of potential detriment or unfair advantage is serious and not merely hypothetical will be determined case by case, following the criteria indicated below.
As mentioned in paragraph 3.1.4.2 above when discussing the burden of proof, Article 76(1) CTMR requires the opponent to submit and prove all the facts on which its opposition is based. Moreover, Rule 19(2)(c) CTMIR requires the opponent to submit evidence or arguments showing that 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.
Therefore, within the period for completing the substantiation of the opposition, the opponent bears the burden of showing that the actual or future use of the applied-for mark has caused, or is likely to cause, detriment to the distinctiveness or the repute of the earlier mark, or that it has taken, or is likely to take, unfair advantage thereof.
In discharging this burden of proof, the opponent cannot merely contend that detriment or unfair advantage would be a necessary consequence flowing automatically from the use of the sign applied for, owing to the strong reputation of the earlier mark. Even where the earlier mark is highly reputed, unfair advantage or detriment must be properly proved and/or argued taking into account both marks and the relevant goods and services, since otherwise marks with reputation would enjoy blanket protection against identical or similar signs for virtually any kind of product. This would be clearly inconsistent with the wording and spirit of Article 8(5) CTMR, because in such a case reputation would become the sole requirement, rather than being only one of the several conditions provided for therein.
Therefore, where the opponent claims actual detriment or unfair advantage, it must submit indications and evidence of the kind of detriment suffered, or of the nature of the unfair advantage taken by the applicant. The opponent must also show that this resulted from the use of the sign applied for. In doing so, the opponent may rely on a variety of indications, depending on the kind of detriment or unfair advantage pleaded, such as a considerable decrease in sales of the goods bearing the mark, or a loss of clientele, or a decline of the degree of recognition of the earlier mark among the public.
However, in the case of potential detriment or unfair advantage, the exercise will necessarily be more abstract, as the detriment or unfair advantage in question has to be evaluated ex ante.
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To that end, the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. When it is foreseeable that such injury would ensue from the use that might be made of the CTM application, the proprietor of the earlier mark is not required to wait for it actually to occur in order to be able to prohibit registration of the CTM application. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an i njury will occur in the future (judgment of 27/11/2008, C-252/07 ‘Intel’, para. 38, judgment of 07/12/2010, T-59/08, ‘NIMEI LA PERLA MODERN CLASSIC’, para. 33, judgment of 29/03/2012, T-369/10 ‘BEATLE’, para. 61, judgment of 06/07/2012, T-60/10 ‘ROYAL SHAKESPEARE’ para. 53 and judgment of 25/01/2012, T-332/10 ‘VIAGUARA’, para. 25).
In other words, the proprietor of the earlier mark must adduce prima facie evidence of a future risk, which is not hypothetical, of detriment (SPA-FINDERS, para. 40). Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (judgment of 10/05/2007, T-47/06, ‘nasdaq’ para. 54, upheld on appeal (C-320/07 P), judgment of 16/04/2008, T-181/05 ‘CITI’ para. 78, and judgment of 14/11/2013, C- 383/12P ‘Wolf head image’ paras 42-43).
However, considering that in such cases the matter to be proved is the likelihood of a future event and t hat, by definition, the opponent’s arguments cannot in themselves amount to evidence, it will often be nec essary to base certain conclusions on legal presumptions, that is, on l ogical assumptions or deductions resulting from the application of the rules of probability to the facts of the specific case. One such presumption was mentioned by the Court, when it stated that ‘the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it’ (judgment of 14/09/199, C-375/97, ‘General Motors’, para. 30). It is also clear from case-law that the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark (judgment of 06/07/2012, T-60/10 ‘ROYAL SHAKESPEAR’E, para. 54, judgment of 18/06/2009, C-487/07 ‘L’Oréal and O thers’ para. 44, and judgment of 27/11/2008, C-252/07 ‘Intel’, paras 67-69).
Furthermore, the kind of presumptions relevant here are rebuttable presumptions that the applicant may contest and disprove by submitting appropriate evidence; they are not conclusive presumptions .
In addition, if the type of detriment or unfair advantage argued in the specific case is of such a nature that presupposes the fulfilment of certain particular conditions of fact (e.g. exclusive character of the earlier mark, qualitative aspects of reputation, a given image etc.), these facts will also have to be proven by the opponent, who must submit appropriate evidence. Finally, as noted by the Court in its judgment of 07/12/2010, T-59/08, ‘NIMEI LA PERLA MODERN CLASSIC’ (paras 57, 58), although a likelihood of confusion between the two marks at issue is not required to demonstrate that the later mark takes unfair advantage of the earlier mark, where such likelihood is established on the basis of facts, this will be t aken as proof that unfair advantage has been taken or that, at least, there is a serious risk of such injury in the future.
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3.4.4.2 Means of evidence
Where the opponent claims actual detriment or unfair advantage, it can use all the means of evidence provided for in Article 78 CTMR for proving this. For example, it may prove an actual decrease of trade mark awareness by reference to opinion polls and other documentary evidence, or a f all in sales by submitting trading results or extracts from its official accounts. The rules governing the evaluation and probative value of such evidence are the same as those mentioned in paragraph 3.1.4.3 and paragraph 3.1.4.4 above, in relation to the evidence required for proving reputation.
Even where the detriment or unfair advantage claimed is only potential, the opponent will have to prove any conditions of fact which might be necessary in particular cases for giving rise to a serious (i.e. non-hypothetical) risk of detriment or unfair advantage, by submitting evidence of the kind mentioned above.
Furthermore, as explained in the previous paragraph, the Court has confirmed that conclusions as to the risk of future encroachment may also be es tablished, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (judgment of 16/12/2010, joined cases T-345/08 and T-357/08 ‘BOTOLIST’ para. 82 and judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 53, and judgment 14/11/13, C- 383/12 P ‘Wolf head image”, para 42-43).
3.5 Use without due cause
The last condition for the application of Article 8(5) CTMR is that use of the sign applied for should be without due cause.
However, if it is established that none of the three types of risk of encroachment to reputation exists, the registration and use of the mark applied for cannot be prevented, as the existence or absence of due cause for the use of the mark applied for is, in those circumstances, irrelevant (judgment of 22/03/2007 T-215/03 ‘VIPS, para. 60, and judgment of 07/07/2010, T-124/09 ‘Carlo Roncato’, para. 51).
The existence of a cause justifying the use of the trade mark applied for is a defence which the applicant may raise. Therefore, it is up to the applicant to show that it has due cause t o use the mark applied for. This is an ap plication of the general rule according to which ‘he who asserts must prove’ which is the expression of the ancient rule ei qui affirmat incumbit probation (decision of 01/03/2004, R 145/2003-2 – ‘T CARD OLYMPICS (FIG. MARK) / OLYMPIC’, para. 23). Case-law clearly establishes that when the proprietor of the earlier mark has shown that there is either actual and present injury to its mark or, failing that, a serious risk that such injury will occur in the future, it is for the proprietor of the later mark to establish that there is due cause for the use of that mark (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 67 and, by analogy, judgment of 27/11/2008, C-252/07 ‘Intel’, para. 39).
In the absence of any indications in the evidence providing an apparent justification for the applicant’s use of the contested mark, the lack of due cause must be g enerally presumed (see to that effect judgment of 29/03/2012, T-369/10, ‘Beatle’, para. 76 and the case-law there cited, and its appeal C-294/12 P). However, the applicant may avail
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itself of the possibility of rebutting such a presumption by showing that it has a legitimate justification that entitles it to use the mark.
For example, such a situation could be envisaged if the applicant had been using the sign for dissimilar goods in the relevant territory before the opponent’s mark was applied for, or acquired a reputation, especially where such a coexistence has not in any way affected the distinctiveness and repute of the earlier mark.
The case-law below shows that due c ause may be f ound where the applicant establishes that it cannot reasonably be required to abstain from use of the mark (for example, because its use of the sign is a generic use to indicate the type of goods and services – whether by generic words or generic figurative devices), or where it has some specific right to use the mark for the goods and services (for example, it shows that a relevant coexistence agreement permits its use of the sign).
The condition of due cause is not fulfilled merely by the fact that (a) the sign is particularly suitable for identifying the products for which it is used, (b) the applicant has already used this sign for these products or similar products within and/or outside the relevant territory of the European Union, or (c) the applicant invokes a right ensuing from a filing over which the filing of the opponent’s trade mark takes precedence (see, inter alia, decision of 23/11/2010, R 0240/2004-2 ‘WATERFORD (fig.)’ and decision of 15/06/2009, R 1142/2005-2 ‘MARIE CLAIRE (fig.)’). Mere use of the sign is not enough – what must be shown is a valid reason justifying that use.
3.5.1 Examples of due cause
3.5.1.1 Due cause was accepted
Case No Comment
Decision of 02/06/2010, R 1000/2009-1, ‘FLEX (fig.)’, para. 72
The Board confirmed that the applicant had a due cause within the meaning of Article 8(5) CTMR for inserting the term ‘FLEX’ in the mark applied for, holding that this term was free from monopolies, since nobody holds exclusive rights in it and it is a suitable abbreviation, in many languages of the Community, to indicate that beds and mattresses are flexible.
Decision of 26/02/2008, R 320/2007-2, ‘biscuit packet (3D)/OREO(3D)’
The Board held that the applicant had due cause to represent the series of sandwich-type biscuits in the three-dimensional mark applied for, namely, to indicate to consumers the type of biscuits concerned, as defined by the relevant Spanish legislation.
Decision of 30/07/2007, R 1244/2006-1, ‘M FRATELLI MARTINI (fig.)’
The Board confirmed that the applicant had two good reasons to use the name MARTINI in the mark applied for: (i) ‘MARTINI’ is the family name of the founder of the applicant’s company, and (ii) the existence of a coexistence agreement from 1990.
Decision of 20/04/2007, R 710/2006-2, ‘CAL SPAS’
The Board confirmed that the applicant had due cause to use the term ‘SPAS’ as it corresponds to one of the generic uses of the term ‘spa’ as indicated by the Court of First Instance in the ‘Mineral Spa’ judgment Case T-93/06.
Decision of 23/01/2009, R 237/2008 & R 263/2008-1, ‘CARLO RONCATO’
The business affairs of the Roncato family, showing that both parties had the right to use the name ‘RONCATO’ as a trade mark in the suitcase and trunk sector, were held to constitute ‘due cause’ for use of the ‘RONCATO’ name in the contested trade mark.
Trade Marks with Reputation, Article 8(5) CTMR
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Case No Comment
Decision of 25/08/2011, Opposition decision B 1 708 398 ‘Posten AB v Ceská pošta s.p.’,
It was held that the applicant had due cause to use the figurative element of a postal horn since that device is widely used as a long- standing and historical symbol of postal services (trade mark registrations and internet evidence was submitted showing 29 European countries use the postal horn as a symbol for their postal services).
3.5.1.2 Due cause was not accepted
Case No Comment
Judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, paras 65-69
The General Court held that, in order to establish due cause, it is not use per se of the contested trade mark that is required, but a reason justifying the use of that trade mark. In this case, the applicant merely claimed to have ‘demonstrated how and for which product the contested trade mark has been used in the past’ but, even assuming that that aspect is relevant, provided no additional indication or explanation. Accordingly, the Court held that the applicant had not established due cause for such use.
Judgment of 25/03/2009, T-21/07, ‘L’Oréal SA’, para. 43
The General Court held that there was no due cause, since it had not been shown that the word ‘spa’ had become so necessary to the marketing of cosmetic products that the applicant could not reasonably be required to refrain from use of the mark applied for. The argument that ‘spa’ was of descriptive and generic character for cosmetic products was rejected, since such character does not extend to cosmetic products but only to one of their uses or destinations.
Judgment of 16/04/2008, T-181/05 ‘CITI’, para. 85
The General Court held that the use of the trade mark CITI in just one EU Member State (Spain) could not constitute due cause because, first, the extent of geographical protection of the national trade mark did not correspond to the territory covered by the trade mark applied for, and, second, the legal validity of that national registration was subject to dispute before the national courts. By the same token, the ownership of the domain ‘citi.es’ was held to be irrelevant.
Judgment of 10/05/2007, T-47/06, ‘NASDAQ’, para. 63, confirmed by CJ, C-327/07 P
The Court held that the only argument put forward before the Board of Appeal in respect of due cause (namely, that the word ‘nasdaq’ had been chosen because it is an acronym for ‘Nuovi Articoli Sportivi Di Alta Qualità’) was not convincing, noting that prepositions are not generally included in acronyms.
Trade Marks with Reputation, Article 8(5) CTMR
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Case No Comment
Decision of 23/11/2010, R 240/2004-2 ‘WATERFORD (fig.)’
Contrary to the applicant’s arguments that there was due cause because the term ‘WATERFORD’ was allegedly very common in names and t rade marks, the Board held that the applicant had failed to give any evidence of market coexistence of WATERFORD marks nor had it submitted any element from which it would be possible to infer that the relevant general public (in the UK) considers Waterford as a commonplace geographical name.
To the extent that such arguments play a role in the assessment of uniqueness of a sign in order to establish the existence of the necessary link in the mind of the relevant public between the signs at issue, the Board held that, nevertheless, once such uniqueness had been established, such arguments cannot serve as due cause.
Further, the Board noted that the condition of due cause is not fulfilled merely by the fact that (a) the sign is particularly suitable for identifying the products for which it is used, (b) the applicant has already used this sign for these products or similar products within and/or outside the relevant territory of the European Union, or (c) the applicant invokes a right ensuing from a filing over which the filing of the opponent’s trade mark takes precedence.
Decision of 06/10/2006, R 428/2005-2 ‘TISSOT’
The Board held that the applicant’s claim (unsubstantiated by any evidence) that the sign TISSOT is derived from the name of a trading company associated with the applicant’s company since the early 1970s, would, even if proven, not amount, on its own, to ‘due cause’, within the meaning of Article 8(5) CTMR. People who inherit a surname that happens to coincide with a f amous trade mark should not assume that they are entitled to use it in business in a m anner that would unfairly take advantage of the reputation that has been built up by the efforts of the brand owner.
Decision of 18/08/2005, R 1062/2000-4, ‘GRAMMY’
The applicant argued that ‘GRAMMY’ is an internationally easy and nice-sounding abbreviation of the applicant’s family name (Grammatikopoulos). The Board rejected this argument as insufficient to establish the due c ause that could prevent the application of Article 8(5) CTMR.
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Case No Comment
Decision of 15/06/2009, R 1142/2005-2, ‘MARIE CLAIRE (fig.)’
Due cause under Article 8(5) CTMR means that notwithstanding the detriment caused to, or the unfair advantage taken of, the distinctive character or reputation of the earlier trade mark, the registration and use by the applicant of the mark for the goods applied for may be justified, if the applicant cannot be reasonably required to abstain from using the contested mark, or if the applicant has a specific right to use the mark for with such goods which takes precedence over the earlier trade mark invoked in the opposition proceedings. In particular, the condition of due cause is not fulfilled merely by the fact that (a) the sign is particularly suitable for identifying the products for which it is used, (b) the applicant has already used this sign for these products or similar products within and/or outside the relevant territory of the Community, or (c) the applicant invokes a t rade mark with a filing date which is earlier than the opponent’s trade mark (decision of 25/04/2001 in R 283/1999-3 HOLLYWOOD / HOLLYWOOD).
With regards to the tolerance of the proprietor of the earlier mark, the Board held that such tolerance was merely for magazines and not for goods closer to its market sector (i.e. textiles). It noted that national case-law showed that while protection exists for each party within its own field of business, extension should be refused when they come closer to the other party’s field of activities and could infringe upon their rights.
In light of these factors, the Board held that the coexistence did not constitute due cause permitting registration of a CTM.
Judgment of 26/09/2012, T-301/09, ‘Citigate’, paras 116, 125 and 126
As regards the applicant’s argument that it has due cause to use the mark applied for (CITIGATE), because it has used a variety of marks consisting of or containing CITIGATE in relation to the goods and services for which registration is sought, the Court stated the following: it should be noted that the documents produced by the applicant simply show that there are various companies whose business name contains the word CITIGATE and a num ber of domain names which also contain that word. That evidence is not sufficient to establish due cause, because it does not demonstrate actual use of the CITIGATE mark.
As regards the applicant’s argument that it has due cause to use the mark applied for since the interveners have acquiesced to the use of CITIGATE in relation to the goods and services covered by the application for registration, the Court stated that the possibility cannot be excluded that, in certain cases, the coexistence of earlier marks on t he market could reduce (…) the likelihood of a connection being made between two marks in accordance with Article 8(5).
In the present case, coexistence was not proven.
Substantive Provisions
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART D
CANCELLATION
SECTION 2
SUBSTANTIVE PROVISIONS
Substantive Provisions
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Table of Contents
1 General Remarks ....................................................................................... 3
2 Revocation ................................................................................................. 3 2.1 Introduction ................................................................................................3 2.2 Non-use.......................................................................................................3 2.3 CTM becoming the common name (generic term) – Article 51(1)(b)
CTMR...........................................................................................................3 2.3.1 Onus of proof .................................................................................................. 3 2.3.2 Point in time to be considered ........................................................................ 3 2.3.3 Relevant public ............................................................................................... 4 2.3.4 Common name ............................................................................................... 4 2.3.5 Defence for the proprietor............................................................................... 4
2.4 CTM becoming misleading – Article 51(1)(c) CTMR.................................5 2.4.1 Onus of proof .................................................................................................. 5 2.4.2 Point in time to be considered ........................................................................ 5 2.4.3 Standards to be applied.................................................................................. 5
3 Absolute grounds for invalidity................................................................ 6 3.1 CTM registered contrary to Article 7 – Article 52(1)(a) CTMR .................6
3.1.1 Onus of proof .................................................................................................. 6 3.1.2 Points in time to be considered ...................................................................... 6 3.1.3 Standards to be applied.................................................................................. 7
3.2 Defence against a claim of lack of distinctiveness ..................................7
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1 General Remarks
Revision within WP 1
2 Revocation
Revision within WP 1
2.1 Introduction
Revision within WP 1
2.2 Non-use
Revision within WP 1
2.3 CTM becoming the common name (generic term) – Article 51(1)(b) CTMR
A CTM will be revoked if, as a result of action or inaction on the part of the proprietor, it has become the common name in trade for a product or service for which it was registered.
2.3.1 Onus of proof
The onus is on the applicant for revocation to prove that the term has become the common name in the trade as a result of either:
- action, or - inaction
on the part of the proprietor.
The Cancellation Division shall examine the facts in accordance with Article 76(1) CTMR within the scope of factual submissions made by the revocation applicant (judgment of 13/09/2013, T 320/10, ‘Castel’, para. 28). In doing so, it may take into consideration obvious and well known facts. However, it shall not go beyond the legal arguments presented by the revocation applicant. If a request for cancellation is based only on Article 51(1)(b) CTMR, the trade mark could not then be revoked due to being e.g., against public order and morality.
2.3.2 Point in time to be considered
The applicant for revocation must prove that the trade mark has become the common name in trade for the product or service in question after the date of registration of the CTM, although facts or circumstances happened between the application and the registration can be t aken into account. The fact that the sign was, at the date of application, the common name used in trade for the goods or services in respect of
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which registration was sought would only be relevant in the context of an invalidity action.
2.3.3 Relevant public
The Office interprets Article 51(1)(b) CTMR as meaning that the trade mark must have become the common name for the product or service not just among some but among the vast majority of the relevant public, including those involved in the trade for the product or service in question (judgment of 29 April 2004, C-371/02, ‘Bostongurka’, paras. 23, 26). Nevertheless, the perception of consumers or end users will play, in general, a decisive role (‘Bostongurka’, para. 24). Moreover, the Court of Justice has declared that a trade mark is liable to revocation in respect of a product for which it is registered if, in consequence of acts or inactivity of the proprietor, it has become the common name for that product from the point of view solely of end users of the product (judgment of 6 March 2014, C-409/12, ‘Kornspitz’, para. 30), namely when the sellers of the finished product do not inform their costumers that the sign has been registered as a trade mark, nor do they offer to their costumers assistance which includes an indication of the origin of the goods for sale (‘Kornspitz’, paras 23-25).
2.3.4 Common name
A sign is regarded as the ‘common name in the trade’ if it is established practice in the trade to use the term in question to designate the goods or services for which it is registered (see Part B, Section 4, point 2.4. Customary signs or indications). It is not necessary to prove that the term directly describes a q uality or characteristic of the goods or services, but merely that it is actually used in the trade to refer to those goods or services. The distinctive force of a trade mark is always more likely to degenerate when a sign is suggestive or apt in some way, especially if it has positive connotations that lead others to latch on t o its suitability for designating not just a par ticular producer’s product or service but a par ticular type of product or service (decision of 30/01/2007, 1020 C, ‘STIMULATION’, paras 22, 32 et seq.).
The fact that a trade mark is used as a synonym for a specific product or service is an indication that it has lost its ability to differentiate the goods or services in question from those of other undertakings. One indication that a trade mark has become generic is when it is commonly used verbally to refer to a particular type or characteristic of the goods or services. However, this is not in itself decisive: it must be established whether the trade mark is still capable of differentiating the goods or services in question from those of other undertakings.
The absence of any alternative term or the existence of only one long, complicated term may also be an indication that a sign has become the common name in the trade for a specific product or service.
2.3.5 Defence for the proprietor
Where the proprietor of the CTM has done what could reasonably have been expected in the particular case (e.g. organised a TV campaign or placed advertisements in newspapers and r elevant magazines), the CTM cannot be revoked. The proprietor
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must then check whether its trade mark appears in dictionaries as a generic term; if it does, the proprietor will request that in future editions the trade mark is accompanied by an indication that it is a registered trade mark (Article 10 CTMR).
2.4 CTM becoming misleading – Article 51(1)(c) CTMR
If, as a result of use made of the mark by the proprietor or with its consent, the mark is liable to mislead the public, particularly concerning the nature, quality or geographical origin of the goods or services for which it is registered, the CTM can be revoked. In this context, quality refers to a characteristic or attribute rather than a degree or standard of excellence.
2.4.1 Onus of proof
The Cancellation Division shall examine the facts in accordance with Article 76(1) CTMR within the scope of factual submissions made by the revocation applicant (judgment of 13/09/2013, T-320/10, ‘Castel’, para. 28). In doing so, it may take into consideration obvious and well known facts. However, it shall not go beyond the legal arguments presented by the revocation applicant.
The onus for proving that the mark has become misleading rests on the revocation applicant, who must further prove that it is the use made by the proprietor that produces the misleading effect. I f the use is by a party other than the proprietor, the onus is on the revocation applicant to prove that the proprietor has consented to that use, unless the third party is a licensee of the proprietor.
2.4.2 Point in time to be considered
The applicant for revocation must prove that the trade mark has become liable to mislead the public, particularly concerning the nature, quality or geographical origin of the goods or services in question, after the date of registration of the CTM. If the sign was already deceptive or liable to deceive the public at the date of application, this would be relevant in the contest of an invalidity action.
2.4.3 Standards to be applied
The Guidelines concerning Examination contain details of the criteria to be appl ied when assessing whether a CTM application complies with Article 7(1)(g) CTMR (Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, point 2.7. Deceptiveness). The criteria are similar to those applied in revocation proceedings under Article 51(1)(c) CTMR
2.4.4 Examples
A trade mark composed of, or containing, a geographical indication will as a r ule be perceived by the relevant public as a reference to the place from where the goods originate. The only exception to this rule is where the relationship between the geographical name and the products is manifestly so fanciful (for example, because the
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place is not known, and unlikely to become known, to the public as the place of origin of the goods in question) that consumers will not make such a connection.
In this regard, the trade mark MÖVENPICK OF SWITZERLAND was revoked because the goods in question were produced (according to the facts) solely in Germany, not in Switzerland (decision of 12 February 2009, R 0697/2008-1 – MÖVENPICK OF SWITZERLAND)
Also, where a trade mark containing the word elements ‘goats’ and cheese’ and a figurative element clearly depicting a goat is registered for ‘goats’ cheese’, and use is proven for cheese not made from goats’ milk, the CTM will be revoked.
Where a trade mark containing the word elements ‘pure new wool’ is registered for ‘clothing’ and use is proven for clothing manufactured from artificial fibres, the CTM will be revoked.
Where a trade mark containing the words ‘genuine leather’ or the corresponding pictogram is registered for ‘shoe wear’ and use is proven for shoes not made of leather, the CTM will be revoked.
3 Absolute grounds for invalidity
3.1 CTM registered contrary to Article 7 – Article 52(1)(a) CTMR
If, at the time of application, the CTM was objectionable under any of the grounds listed in Article 7 it can be cancelled.
3.1.1 Onus of proof
The purpose of the cancellation procedure is, inter alia, to enable the Office to review the validity of the registration of a trade mark and to adopt, where necessary, a position that it should have adopted of its own motion in the registration process in accordance with Article 37(1) CTMR (judgment of 30/05/2013, T 396/11, ‘Ultrafilter international’, para. 20). Consequently, the Cancellation Division shall examine the facts in accordance with Article 76(1) CTMR within the scope of factual submissions made by the cancellation applicant (judgment of 13/09/2013, T 320/10, ‘Castel’, para. 28). In doing so, it may take into consideration obvious and well known facts. However, it shall not go beyond the legal arguments presented by the cancellation applicant.
3.1.2 Points in time to be considered
The General Court has held that whether a trade mark should be registered or should be declared invalid must be as sessed on t he basis of the situation at the date of application, not of registration (judgment of 03/06/2009, T-189/07, ‘Flugbörse’; confirmed by Order of 23/04/2010, C-332/09 P, ‘Flugbörse’).
Generally speaking, any developments or events after the date of application or priority date will not be taken into consideration. For example, the fact that a sign has, after the date of application, become the common term used in the trade for the goods or services in respect of which registration was sought is in principle irrelevant for the
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purposes of examining an invalidity action (it would only be relevant in the context of a revocation action). However, such facts can be taken into account where and t o the extent that they allow conclusions to be dr awn regarding the situation at the date of application.
3.1.3 Standards to be applied
The Guidelines concerning Examination contain details of the criteria to be applied when assessing whether a C TM application complies with Article 7. The criteria are identical to those applied in invalidity proceedings.
3.2 Defence against a claim of lack of distinctiveness
A trade mark which falls foul of Article 7(1)(b), (c) or (d) CTMR will not be cancelled where it has acquired distinctiveness through use. It is up to the CTM proprietor to make and substantiate such a claim.
The situation will be assessed in accordance with the relevant part of the Guidelines concerning Examination.
The proprietor must demonstrate that either:
- the trade mark acquired distinctive character on or before the date of application, or
- distinctive character was acquired after registration.
The first alternative is a logical corollary of Article 7(3) CTMR. Where a trade mark has been objected to pursuant to Article 7(1)(b), (c) or (d) CTMR, the applicant could prove distinctiveness acquired through use in accordance with Article 7(3) CTMR.
The second alternative is a corollary of Article 52(2) CTMR.
Changes in a Registration
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FINAL VERSION 1.0 DATE 01/08/2014
GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 1
CHANGES IN A REGISTRATION
Changes in a Registration
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Table of Contents
1 Surrender ................................................................................................... 4 1.1 General principles ......................................................................................4 1.2 Legal effect .................................................................................................4 1.3 Formal requirements..................................................................................5
1.3.1 Form ............................................................................................................... 5 1.3.2 Language........................................................................................................ 5 1.3.3 Fees................................................................................................................ 5 1.3.4 Necessary particulars ..................................................................................... 5 1.3.5 Partial surrender ............................................................................................. 6 1.3.6 Signature ........................................................................................................ 6 1.3.7 Representation, authorisation......................................................................... 6 1.3.8 Requirements where a licence or other right in the Community trade mark
has been registered........................................................................................ 6
1.4 Examination................................................................................................7 1.4.1 Competence ................................................................................................... 7 1.4.2 Registration or rejection.................................................................................. 8
2 Alteration of a Trade Mark ........................................................................ 8 2.1 General principles ......................................................................................8 2.2 Formal requirements..................................................................................9
2.2.1 Form and language ........................................................................................ 9 2.2.2 Fees................................................................................................................ 9 2.2.3 Mandatory indications..................................................................................... 9
2.3 Substantive conditions for alteration......................................................10 2.3.1 Examples of acceptable alterations.............................................................. 10 2.3.2 Examples of unacceptable alterations.......................................................... 11
2.4 Publication................................................................................................12
3 Changes of Name or Address ................................................................ 13
4 Changes in Collective Trade Mark Regulations.................................... 14 4.1 Registration of the amended regulations ...............................................14
5 Division..................................................................................................... 15 5.1 General provisions...................................................................................15 5.2 Formal requirements................................................................................15
5.2.1 Form and language ...................................................................................... 15 5.2.2 Fees.............................................................................................................. 15 5.2.3 Mandatory indications................................................................................... 15
5.3 Registration ..............................................................................................17 5.4 New file, publication.................................................................................18
6 Post-Registration Seniority Claims........................................................ 18
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6.1 General principles ....................................................................................18 6.2 Legal effect ...............................................................................................18 6.3 Formal requirements................................................................................19
6.3.1 Form ............................................................................................................. 19 6.3.2 Language...................................................................................................... 19 6.3.3 Fees.............................................................................................................. 19 6.3.4 Mandatory indications................................................................................... 19
6.4 Examination..............................................................................................20 6.4.1 Substantive examination .............................................................................. 20 6.4.2 Triple identity ................................................................................................ 21 6.4.3 Harmonised seniority information................................................................. 22
6.5 Registration and publication ...................................................................22 6.6 Cancellation of seniority claims..............................................................23
7 Replacement of a CTM Registration by an IR ....................................... 23
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1 Surrender
Article 50 CTMR Rule 36 CTMIR
1.1 General principles
At any time after registration a Community trade mark (CTM) may be either wholly or partially surrendered by its proprietor. The surrender must be declared to the Office in writing. (For information on the withdrawal of Community trade mark applications, i.e. prior to registration, please see the Guidelines, Part B, Examination, Section 1, Proceedings, paragraph 5.1.)
1.2 Legal effect
Article 50(2) CTMR Rule 36 CTMIR
Surrenders only become legally effective on the date of entry in the Register of Community Trade Marks (‘the Register’). The registration procedure for the surrender may be suspended during on-going proceedings (see paragraph 1.4.1 below).
The proprietor’s rights in the registered CTM, as well as those of its licensees and any other holders of rights in the mark, lapse with an ex nunc effect on the date of the registration of the surrender in the Register. Therefore, the surrender has no retroactive effect.
The surrender has procedural and substantive effects.
In procedural terms, when the surrender is entered in the Register, the Community trade mark ceases to exist and any proceedings involving the mark before the Office terminate.
The substantive effects of surrender vis-à-vis third parties comprise the CTM proprietor renouncing any rights arising from its mark in the future.
The declarant is bound by the declaration of surrender during its registration procedure, provided that the following circumstances are present.
a) No revocation of the declaration reaches the Office on t he same day as the receipt of the declaration of surrender. That means that if a dec laration of surrender and a letter revoking that declaration reach the Office on the same day (regardless of the hour and minute of their receipt), they cancel each other out. Once it becomes effective, the declaration may not be revoked.
b) The declaration meets all the formal requirements, in particular those identified in paragraph 1.3.8 below.
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1.3 Formal requirements
1.3.1 Form
Rules 79, 79a, 80, 82 CTMIR Decision No°EX-11-03 of the President of the Office
The proprietor must declare the surrender to the Office in writing. The general rules for communication with the Office apply (see the Guidelines, Part A, General Rules, Section 1, Means of Communication, Time Limits).
The declaration of surrender is void where it contains conditions or time limitations. For example, it may not be made under the condition that the Office takes a particular decision or, in inter partes proceedings, that the other party makes a procedural declaration. For instance, during cancellation proceedings the mark may not be (partially) surrendered on the condition that the cancellation applicant withdraws its cancellation action. However, this does not exclude the possibility of an agreement between the parties, or that both parties request successive actions (for example, surrender of the trade mark and withdrawal of the cancellation action) in the same letter to the Office.
1.3.2 Language
Rule 95(b) CTMIR Article 119(2) CTMR
The declaration of surrender must be filed in one of the five languages of the Office.
1.3.3 Fees
There is no fee for a declaration of surrender.
1.3.4 Necessary particulars
Rule 36(1) CTMIR
The declaration of surrender must contain the particulars referred to in Rule 36(1) CTMIR. These are:
• the CTM registration number
• the CTM’s proprietor’s name and address or simply the proprietor’s OHIM ID number
• where the surrender is only for some of the goods or services for which the mark is registered, either the goods and services for which the surrender is declared or an indication of the goods and services for which the mark is to remain registered or both (see below under paragraph 1.3.5 Partial surrender.).
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1.3.5 Partial surrender
A CTM may be s urrendered in part, that is, for some of the goods and services for which it is registered. A partial surrender only becomes effective on the date it is entered in the Register.
For a pa rtial surrender to be a ccepted, the following two conditions relating to the goods and services must be met:
a) the new wording must not constitute an ex tension of the list of goods and services;
b) the partial surrender must constitute a valid description of goods and services.
For further details on acceptable restrictions, please see the Guidelines, Part B, Examination, Section 3, Classification.
1.3.6 Signature
Except where Rule 79 CTMIR allows otherwise, the declaration of surrender must be signed by the CTM proprietor or its duly appointed representative (see paragraph 1.3.7 below). If the declaration is submitted by electronic means, the indication of the sender’s name is deemed to be equivalent to a signature.
If an unsigned declaration is sent to the Office, the Office will invite the party concerned to correct the irregularity within a two-month time limit. If the deficiency is not remedied within the time limit, the surrender will be rejected.
1.3.7 Representation, authorisation
As far as representation of the CTM proprietor who is declaring the surrender is concerned, the normal rules apply (see the Guidelines, Part A, General Rules, Section 5, Professional Representation).
The procedural rules applicable in certain Member States that an au thorisation does not cover the right to declare the surrender of a trade mark unless expressly specified are not applicable under the CTMR.
1.3.8 Requirements where a licence or other right in the Community trade mark has been registered
Surrender cannot be registered if third parties have registered rights in the CTM (such as licensees, pledgees, etc.) without first fulfilling certain additional requirements.
Where a licence, or another right in the CTM, is entered in the Register, the following additional requirements apply.
a) Where a licence or a right in rem is entered in the Register, the CTM proprietor must submit sufficient proof that it has informed the licensee, pledgee, etc. of its intention to surrender.
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If the proprietor proves to the Office that the licensee, pledgee, etc. has given its consent to the surrender, the surrender will be registered immediately upon receipt of that notice.
If the CTM proprietor merely submits proof that it has informed the licensee/pledgee of its intention to surrender, the Office will inform the proprietor that the surrender will be registered three months after the date on w hich the Office received the evidence (Rule 36(2) CTMIR).
The Office will consider a c opy of the letter from the proprietor to the licensee/pledgee as sufficient evidence, provided that there is a reasonable likelihood that the letter was actually sent and received by the licensee/pledgee. The same applies to a written statement signed by the licensee/pledgee that it has been i nformed. An affidavit by the proprietor is not necessary. The term ‘prove’ in Article 50(3) CTMR does not refer to absolute certainty but to a reasonable probability, as follows from the other language versions of the regulations (French version of Article 50(3): justifie, Italian dimostre, German glaubhaft macht). The documents may be in any of the 23 official languages of the European Union. However, the Office may require a translation into the language chosen for the declaration of surrender or, at the choice of the declarant, into any of the five languages of the Office.
If the proof is missing or insufficient, the Office will ask for it within a time limit of two months.
b) Where a levy of execution is entered in the Register, the declaration of surrender must be accompanied by a declaration of consent to the surrender signed by the authority competent for the levy of execution (see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 4, Levy of Execution).
c) Where insolvency or similar proceedings are entered in the Register, the declaration of surrender must be requested by the liquidator (see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 5, Insolvency).
1.4 Examination
1.4.1 Competence
The Office is competent for examining the declaration of surrender.
Where surrender (or a partial surrender covering all the goods and/or services against which the application for cancellation is directed) is declared during on-going revocation or invalidity proceedings against the validity of the mark that is being surrendered, the relevant department (for example, the Cancellation Division) will be informed and the Office will suspend the registration of the surrender. The Cancellation Division will invite the cancellation applicant to indicate whether it wishes to continue with the proceedings and if so, the cancellation proceedings will continue until there is a final decision on substance. After the decision on the cancellation has become final, the surrender will be registered only for the goods and/or services for which the contested CTM has not been r evoked or declared invalid, if any (see judgment of 24/03/2011, C-552/09 P, ‘TiMiKinderjoghurt’, para. 39, decision of 22/10/2010,
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R 0463/2009-4 – ‘MAGENTA’, paras 25-27 and decision of 07/08/2013, R 2264/2012-2 – ‘SHAKEY’S’). (See the Guidelines, Part D, Cancellation, Section 1, Cancellation Proceedings, paragraph 7.3).
Where the CTM is subject to a case pending before the Boards of Appeal (BoA), the competent chamber will decide on the surrender.
Where the CTM is subject to a case pending before the General Court (GC) or the Court of Justice (CJEU), the surrender must be filed at the Office (not before the GC or the CJEU). The Office will then inform the GC or the CJEU whether or not it finds the surrender acceptable and valid. However, the surrender proceedings will be suspended until the GC or the CJEU has rendered a final decision on the issue (by analogy, see judgment of 16/05/2013, T-104/12, ‘VORTEX’)
1.4.2 Registration or rejection
Rule 87 CTMIR
In the event of a deficiency, the Office will give the declarant two months to remedy the deficiency.
Where the deficiency which is brought to the attention of the declarant is not remedied within the time limit specified, the Office will entirely reject the request to record the surrender in the Register.
Where the Office enters the surrender in the Register, it will inform the CTM proprietor and all right holders registered for that trade mark accordingly.
When notifying the registration of a partial surrender, a copy of the new list of goods and services will be given in the confirmation letter in the language of the proceedings.
2 Alteration of a Trade Mark
2.1 General principles
Article 48 CTMR Rule 25 CTMIR
This Section of the Guidelines, and t he provisions cited above, deal solely with alterations of the CTM that are requested by the proprietor of its own accord.
There is a difference between an amendment of a CTM application and an alteration of a registered CTM. The amendment of a C TM application is governed by Article 43 CTMR and Rules 13 and 26 CTMIR. The alteration of a registered CTM is governed by Article 48 CTMR, and Rules 25 and 26 CTMIR (for more information on amendments of a CTM application, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities).
This Section does not apply to corrections of obvious errors by the Office in its publications or in the CTM Register; such corrections are made ex officio, or at the
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proprietor’s request, pursuant to Rules 14 and 27 CTMIR (for more information, see the Guidelines, Part A, General Rules, Section 6, Revocation of Decisions and Cancellation of Entries in the Register and Correction of Errors).
The Regulations provide for the possibility of applying for an amendment of the representation of the mark (alteration of the mark) providing such alteration relates to the proprietor’s name and address and does not substantially affect the identity of the trade mark as originally registered.
The Regulations do not provide for the possibility of altering other elements of the CTM registration.
2.2 Formal requirements
2.2.1 Form and language
Article 48(2) CTMR
The application to alter the mark, that is, the representation of the mark, must be made in writing in one of the five languages of the Office.
2.2.2 Fees
Article 2(25) CTMFR
The application is subject to a fee of EUR 200; the request is deemed not to have been filed until the fee is paid (see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).
2.2.3 Mandatory indications
Rule 25(1) CTMIR
The application for alteration must contain:
• the CTM registration number
• the CTM proprietor’s name and address in accordance with Rule 1(1)(b) CTMIR; if the proprietor has previously been al located an I D number by OHIM, it is sufficient to indicate that ID number together with the proprietor’s name
• an indication of the element in the representation of the mark to be altered and the altered version of the element
• a representation of the mark as altered that complies with the formal requirements laid down in Rule 3 CTMIR.
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One single application for alteration may be filed for several CTM registrations, provided that both the CTM proprietor and the element to be altered are the same in each case. However, the fee has to be paid for each registration to be altered.
2.3 Substantive conditions for alteration
Article 48(2) CTMR allows the alteration of the representation of the mark only under extremely limited conditions, namely only when:
• the CTM includes the CTM proprietor’s name and address, and
• these are the elements for which alteration is sought, and
• the alteration would not substantially affect the identity of the trade mark as originally registered.
Strict rules apply: where the proprietor’s name or address is part of the distinctive elements of the mark, for example, part of a word mark, an alteration is excluded since the identity of the mark would be s ubstantially affected. An exception can only be accepted for usual abbreviations relating to the legal structure of the company. An alteration of the mark is only possible if the CTM proprietor’s name or address appears on a f igurative mark, for example, the label of a bottle, as a s ubordinate element in small letters. Such elements would normally not be taken into account in determining the scope of protection or the fulfilment of the use requirement. The rationale of Article 48 CTMR is precisely to exclude any alteration of the registered CTM that could affect its scope of protection or the assessment of the use requirement, so that rights of third parties cannot be affected.
No other element of the mark may be altered, even if it is only a subordinate element in small letters of a descriptive nature on a label of a bottle, such as the indication of the percentage of alcohol of a wine. Furthermore, Article 48(2) CTMR does not allow for the alteration of the list of goods and s ervices (see decision of 09/07/2008, R 0585/2008-2 – ‘SAGA’, para. 16). After registration, the only way to change the list of goods and services is through partial surrender under Article 50 CTMR (see paragraph 1.3.5 above).
2.3.1 Examples of acceptable alterations
MARK AS REGISTERED PROPOSED ALTERATION
CTM 7 389 687
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MARK AS REGISTERED PROPOSED ALTERATION
CTM 3 224 565
CTM 4 988 556
2.3.2 Examples of unacceptable alterations
MARK AS REGISTERED PROPOSED ALTERATION
CTM 11 058 823
ROTAM – INNOVATION IN POST PATENT TECHNOLOGY’
ROTAM – INNOVATION IN POST PATENT TECHNOLOGY
CTM 9 755 307
MINADI MINADI Occhiali MINADI
CTM 10 009 595
CHATEAU DE LA TOUR SAINT-ANNE CHATEAU DE LA TOUR SAINTE-ANNE
CTM 9 436 072
SLITONE ULTRA SLITONEULTRA
CTM 2 701 845
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MARK AS REGISTERED PROPOSED ALTERATION
CTM 3 115 532
CTM 7 087 943
CTM 8 588 329
In all cases the proposed alteration was refused as it substantially affects the identity of the Community trade mark as originally registered (Article 48(2) CTMR). Article 48(2) CTMR only allows for an alteration of the proprietor’s name and address contained in the registered trade mark provided this alteration does not substantially affect the identity of the trade mark.
2.4 Publication
Where the alteration of the registration is allowable, it will be registered and published in Part C.3.4 of the Bulletin; the publication will contain a representation of the CTM as altered.
Within three months of the publication of the alteration, third parties whose rights may be affected by the alteration may challenge the registration thereof. For this procedure, the provisions on the opposition procedure apply mutatis mutandis.
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3 Changes of Name or Address
Rules 26, 84 CTMIR
It is possible to alter the name, address or nationality of the proprietor of a registered CTM or its representative. The application to record the change must be made in one of the five languages of the Office. The alteration will be entered in the Register and published.
Pursuant to Rule 26 CTMIR, the name, including the indication of the legal form, and address of the proprietor or representative may be amended freely, provided that:
• as regards the proprietor’s name, the change is not the consequence of a transfer
• as regards the representative’s name, there is no substitution of one representative by another.
Pursuant to Rule 84(3) CTMIR, the indication of the nationality or the State of incorporation of a legal person may also be altered or added, provided that it is not the consequence of a transfer.
A change of the proprietor’s name within the sense of Rule 26(1) CTMIR is a change that does not affect the identity of the proprietor, whereas a transfer is a change from one proprietor to another. For details and the applicable procedure in case of doubt as to whether the change falls under Article 17 CTMR, see the Guidelines, Part E, Register Operations, Section 3, CTMS as Objects of Property, Chapter 1, Transfer.
Likewise, a change of a representative’s name within the sense of Rule 26(6) CTMIR is limited to a change which does not affect the identity of the appointed representative, for example, where the name changes as a result of marriage. Rule 26(6) CTMIR also applies where the name of an association of representatives changes. Such a change of name has to be distinguished from the substitution of one representative by another, which is subject to the rules governing appointment of representatives; for details, see the Guidelines, Part A, General Rules, Section 5, Professional Representation.
A change of name or address under Rule 26 CTMIR, or of nationality, may be the result of changed circumstances or of an error made when filing.
To record a change of name and address, the proprietor or its representative must submit an application to the Office. The application must contain the CTM number as well as the name and addr ess of the proprietor (in accordance with Rule 1(1)(b) CTMIR) or of the representative (in accordance with Rule 1(1)(e) CTMIR), both as recorded in the file and as amended.
Normally no proof or evidence of the change is necessary. However, in the event of doubt, the examiner may ask for proof such as a certificate from a trade register. The application to record the change of name or address is not subject to a fee.
Legal persons can only have one official address. In the event of doubt, the examiner may ask for evidence of the legal form or the address in particular. The official name and address are also used as the address for service by default. Ideally, a proprietor should have only one address for service. A change in the proprietor’s official
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designation or official address will be registered for all CTMs and RCDs in the name of that proprietor. A change in the official designation or address cannot be recorded just for specific portfolios of rights, contrary to the address for service. In principle, these rules apply to representatives by analogy.
4 Changes in Collective Trade Mark Regulations
Article 71 CTMR
According to Article 71 CTMR, the proprietors of Community collective marks must submit to the Office any amended regulations governing use.
The application to enter in the Register an amendment of the regulations governing the use of a collective trade mark must be made in writing in one of the five languages of the Office.
4.1 Registration of the amended regulations
Article 69 CTMR, Article 71(3), (4) CTMR, Rule 84(3)(e) CTMIR
The amendment will not be entered in the Register if the amended regulations do not satisfy the requirements of Article 67(2) CTMR or involve one of the grounds for refusal referred to in Article 68 CTMR.
Where the registration of the amendment of the regulations is accepted, it will be registered and published.
The recordal applicant will specify the part of the amended regulations to be entered in the Register, which can be:
• the applicant’s name and office address • the purpose of the association or the purpose for which the legal person
governed by public law is constituted • the bodies authorised to represent the association or the legal person • the conditions for membership • the persons authorised to use the mark • where appropriate, the conditions governing use of the mark, including sanctions • if the mark designates the geographical origin of goods or services, authorisation
for any person whose goods or services originate in the geographical area concerned to become a member of the association.
Within three months of the publication of the amended regulations, third parties whose rights may be affected by the amendment may challenge the registration thereof. For this procedure, the provisions on third party observations apply mutatis mutandis.
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5 Division
5.1 General provisions
Article 49 CTMR Rule 25a CTMIR
A registration can be split into different parts not only as the result of a partial transfer (see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer), but also on the CTM proprietor’s own motion. A division of a trade mark is particularly useful in order to isolate a disputed trade mark for certain goods or services and maintain the registration for the remainder. For information on the division of CTM applications, see the Guidelines, Part B, Examination, Section 1, Proceedings.
Whereas a partial transfer is free of charge but involves a change of proprietorship, the request for division of a trade mark is subject to a fee of EUR 250 and the trade mark remains in the hands of the same proprietor. If the fee is not paid, the request is deemed not to have been filed. The request must be made in one of the five languages of the Office.
Division is not available for international registrations under the Madrid Protocol designating the EU. The Register of International Registrations is kept exclusively at WIPO. OHIM does not have the authority to divide an international registration.
5.2 Formal requirements
5.2.1 Form and language
The application to divide the mark must be made in writing in one of the five languages of the Office.
5.2.2 Fees
Article 2(22) CTMFR
The application is subject to a fee of EUR 250; the request is deemed not to have been filed until the fee is paid (see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).
5.2.3 Mandatory indications
Rule 25a CTMIR
The request must contain:
• the registration number of the CTM to be divided
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• the proprietor’s name and address; if the proprietor has previously been allocated an ID number by OHIM, it is sufficient to indicate that ID number together with the proprietor’s name
• the list of goods and services for the divisional registration, or, if more than one new application is to be created, for each divisional registration
• the list of those goods and services that will remain in the original CTM.
The goods and services must be distributed between the original CTM and the new CTM so that the goods and services in the original and the new CTM do not overlap. The two specifications taken together must not be b roader than the original specification.
Therefore, the indications must be clear, precise and unequivocal. For example, when a CTM for goods or services in several classes is involved, and the ‘split’ between the old and new registration concerns whole classes, it is sufficient to indicate the respective classes for the new registration or for the remaining one.
When the application for a di vision indicates goods and services which are explicitly mentioned in the original list of goods and services, the Office will automatically retain the goods and s ervices which are not mentioned in the division application for the original CTM. For example, the original list contains goods A, B, and C and the division application relates to C; the Office will keep goods A and B in the original registration and create a new registration for C.
For the assessment of whether there is limitation or a broadening of scope of the list, the rules generally applicable in such situations apply (see the Guidelines, Part B, Examination, Section 3, Classification).
In all cases it is highly recommended to file a clear and p recise list of goods and services to be divided as well as a clear and precise list of goods and services to remain in the original registration. Furthermore, the original list must be clarified. For example, if the original list related to alcoholic beverages and the division relates to whisky and gin, the original list must be amended by restricting it to alcoholic beverages, except whisky and gin.
The Office will notify the proprietor of any deficiency in this regard and will give the proprietor two months to remedy the deficiency. If the deficiency is not remedied, the declaration of division will be refused (Rule 25a(2) CTMIR).
There are also certain periods during which, for procedural economy or to safeguard third party rights, a declaration of division is not admissible. These periods are prescribed by Article 49(2) CTMR and Rule 25a(3) CTMIR and are the following.
• As long as cancellation proceedings are pending before the Office (application for revocation or declaration of invalidity), only those goods and s ervices against which the cancellation request is not directed may be di vided from the original mark. The Office interprets Article 49(2)(a) CTMR as not only excluding a division where some of the contested goods are divided from the original mark, with the effect that the cancellation proceedings would have to be s plit, but also as excluding that all the contested goods are divided from the original mark. However, in this case, the CTM proprietor will be given the opportunity to amend the declaration of division by dividing the other goods and s ervices from the
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original mark, that is, those which are not contested in the cancellation proceedings.
• As long as proceedings are pending before the Boards of Appeal, the General Court or the European Court of Justice only those goods and s ervices not affected by the proceedings may be di vided from the original mark due to the suspensive effect of the proceedings.
• Likewise, as long as a counterclaim for revocation or declaration of invalidity is pending before a CTM court, the same conditions apply. This covers the period starting on the day the counterclaim was lodged before the CTM court and ending on the date on which the Office mentions the CTM court’s judgment in the CTM Register pursuant to Article 100(6) CTMR.
5.3 Registration
If the Office accepts the declaration of division, a new registration is created as of that date and not retroactively as from the date of the declaration.
The new registration keeps the filing date as well as any priority or seniority dates, depending on the goods and services; the seniority effect may become partial.
All requests and applications submitted and all fees paid prior to the date on which the Office receives the declaration of division are also deemed to have been made or paid for the resulting divisional registration. However, fees duly paid for the original registration will not be r efunded (Article 49(6) CTMR). The practical effects of this provision can be exemplified as follows.
• Where an appl ication for the registration of a licence was submitted and the payment of the fee for its registration was received by the Office prior to the declaration of division, the licence will be registered against the original registration and recorded in the file of the new registration. No further fees need to be paid.
• Where a CTM registration containing six classes is to be di vided into two registrations, each containing three classes, no additional class fees for the renewal are payable as from the date on which the division is entered in the Register but instead two basic renewal fees will be pa yable, one for each registration.
Where the division is not accepted, the original registration remains unchanged. It does not matter whether:
• the declaration of division was deemed not to have been f iled in the absence of the fee
• the declaration was refused because it failed to comply with the formal requirements (see 5.2 above).
In neither of the latter two cases will the fee be reimbursed.
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Where the final decision of the Office is that the declaration of division is not acceptable for any of the above reasons, the applicant may re-apply for the declaration of division, which will be subject to a new fee.
5.4 New file, publication
Rule 84(2) and Rule 84(3)(w) CTMIR
A new file has to be c reated for the divisional registration. It must contain all the documents which were on file for the original registration, plus all the correspondence related to the declaration of division, as well as all future correspondence for the new registration.
The division will be published in the CTM Bulletin. Rule 84(3)(w) CTMIR provides that the division of the registration will be published together with the items referred to in Rule 84(2) CTMIR in respect of the divisional registration and the list of goods and services of the original registration as amended.
6 Post-Registration Seniority Claims
Article 35 CTMR Rule 28 CTMIR Communication No 2/00 of 25/02/2000 Decision No EX-03-5 of 20/01/2003 Decision No EX-05-5 of 01/06/2005
6.1 General principles
The proprietor of an earlier trade mark registered in a Member State, including a trade mark registered under international arrangements having effect in a M ember State, who holds an identical CTM for goods or services which are identical with or contained within those for which the earlier trade mark has been r egistered, may claim for the CTM the seniority of the earlier trade mark in respect of the Member State in or for which it is registered.
Seniority may be claimed at any time after the registration of the CTM.
6.2 Legal effect
Seniority has the sole effect that where the holder of a CTM surrenders their earlier national trade mark registration or allows it to lapse, they will be deemed to continue to have the same rights as they would have had if the earlier trade mark had continued to be registered.
This means that the CTM represents a prolongation of earlier national registrations. If a proprietor claims seniority from one or more earlier registered national marks, the owner may decide not to renew the earlier national registrations but still be in the same position as if the earlier trade mark had continued to be registered in those Member
Changes in a Registration
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States where the earlier marks were registered. The Office recommends the proprietor to wait until it receives confirmation of the acceptance of the seniority claim before allowing the national mark to lapse (see also below under paragraph 6.4.2 Triple identity).
Seniority may be claimed not only for earlier national registrations, but also for an international registration designating an EU country. However, no seniority claim is possible for an earlier CTM registration or local registrations, even if the territory is part of the European Union (e.g. Gibraltar).
6.3 Formal requirements
6.3.1 Form
Rules 79, 79a, 80, 82 CTMIR Decision No°EX-11-03 of the President of the Office
The seniority claim must be declared to the Office in writing. The general rules for communication with the Office apply (see the Guidelines, Part A, General Rules, Section 1, Means of Communication, Time Limits).
The Office has made available to the public, free of charge, a form for the purpose of requesting the recordal of post-registration seniority claims. This form is the Recordal Application and may be downloaded from the Office’s website (http://oami.europa.eu).
6.3.2 Language
Rule 95(b) CTMIR
The seniority claim must be filed in one of the five languages of the Office.
6.3.3 Fees
There is no fee for an application for a seniority claim.
6.3.4 Mandatory indications
Rule 28 CTMIR Decision No EX-05-5 of 01/06/2005
The application must indicate:
• the CTM registration number
• the CTM proprietor’s name and address in accordance with Rule 1(1)(b) CTMIR; if the proprietor has previously been al located an I D number by OHIM, it is sufficient to indicate that ID number and the proprietor’s name
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• the Member State or Member States of the European Union in or for which the earlier mark, for which seniority is claimed, is registered
• the registration number and filing date of the relevant earlier registration(s).
Pursuant to Decision No EX-05-5 of 01/06/2005, the proprietor is not required to file a copy of the registration if the required information is available to the Office on t he website of the respective national office. If the copy of the registration is not submitted, the Office will first search for the necessary information on the respective website and only if the information is not available there will it ask the proprietor for a copy. Pursuant to Article 3 of Decision No EX-03-5, the copy of the relevant registration must consist of a c opy (simple photocopies suffice) of the registration and/or renewal certificate or extract from the Register, or an extract from the relevant national Gazette, or an extract or printout from a database. Examples of extracts that are not accepted are DEMAS, MARQUESA, COMPUSERVE, THOMSON, OLIVIA, PATLINK or COMPUMARK, SAEGIS.
6.4 Examination
6.4.1 Substantive examination
Seniority may only be claimed from an earlier registration, not an earlier application. The date of the earlier trade mark must be be fore the respective dates of the CTM (filing date or, if available, the priority date).
The examiner must check both that the earlier mark was registered and that it had not lapsed at the moment the claim was made (on the duration of protection of national marks see the Guidelines, Part C, Opposition, Section 1, Procedural Matters, paragraph 4.2.3.4).
If the earlier registration had l apsed at the moment the claim was made, seniority cannot be claimed, even if the relevant national trade mark law provides for a six- month grace period for renewal. While some national legislations allow for a ‘grace’ period, if the renewal is not paid the mark is considered to have lapsed from the day it was due for renewal. Therefore, the seniority claim is acceptable only if the applicant shows that it has renewed the earlier registration(s).
In the context of an enlargement of the EU, the following details have to be borne in mind. Where a national trade mark of, or an international registration with effect in, a new Member State was registered before the seniority claim is made, seniority may be claimed even though the priority, filing or registration date of the CTM to which the seniority claim relates predates the priority, filing or registration date of the national mark/IR with effect in the new Member State. This is because the CTM at issue only has effect in the new Member State from the date of accession. The national trade mark/IR with effect in the new Member State for which seniority is claimed is therefore ‘earlier’ than the CTM within the sense of Article 35 CTMR, provided the national trade mark/IR with effect in the new Member State enjoys a priority, filing or registration date prior to the accession date (see the Guidelines, Part A, General Rules, Section 9, Enlargement, Annex 1).
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Examples of acceptable seniority claims for new Member States
CTM Filing date Seniority claimcountry Accession date Filing date of earlier
right
2 094 860 TESTOCAPS 20/02/2001 Cyprus
01/05/2004 28/02/2001
2 417 723 PEGINTRON 19/10/2001 Hungary
01/05/2004 08/11/2001
352 039 REDIPEN 02/04/1996 Bulgaria 01/01/2007 30/04/1996
7 073 307 HydroTac 17/07/2008 Croatia 01/07/2013 13/10/2009
Explanation: In all cases, although the filing date of the CTM application is earlier than the filing date of the mark for which seniority is claimed, all the countries concerned acceded to the European Union after the filing date of the CTM application. It is from the accession date that the CTM application has protection in those Member States. Therefore, seniority can be c laimed for any national marks filed prior to the date of accession.
If the claim to seniority is in order, the Office will accept it and – once the CTM application has been registered – inform the relevant central industrial property office(s) of the Member State(s) concerned (Rule 8(3) CTMIR).
6.4.2 Triple identity
A valid seniority claim requires triple identity:
• the registered mark must be identical to the Community trade mark
• the goods and services of the CTM must be identical or contained within those for which the mark is registered
• the proprietor must be the same.
(See judgment of 19/01/2012, T-103/11, ‘Justing’.)
Examination of seniority claims is limited to the formal requirements and to the identity of the marks (see Communication of the President No 2/00 of 25/02/2000).
It is up to the owner to make certain that the triple identity requirements are met. The Office will normally only examine whether the marks are identical. The i dentity of owner, goods and services will not be examined.
As regards the identity of the marks, word marks will generally be considered without reference to the typeface in which they are registered. In considering whether word marks are identical the Office will not object if, for example, one mark is in uppercase and the other in lowercase. The addition or subtraction of a single letter in a word mark is sufficient for marks not to be c onsidered identical. As far as figurative marks are concerned, the Office will object if there is any difference in the appearance of the marks (judgment of 19/01/2012, T-103/11, ‘Justing’, para. 17 and judgment of 20/02/2013, T-378/11, ‘Medinet’).
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In this respect the General Court has held that
Even although the objectives of Article 8(1)(a) and of Article 34 of that regulation [CTMR] are not the same, it is a condition for the application of both of them that the marks at issue must be identical …
…
It must be stated at the outset that the fact that a mark is registered in colour or, on the contrary, does not designate any specific colour cannot be regarded as a ne gligible element in the eyes of a c onsumer. The impression left by a mark is different according to whether that mark is in colour or does not designate any specific colour.
(See judgment of 20/02/2013, T-378/11 ‘Medinet’, paras 40 and 52).
If the claim to seniority does not satisfy the formal requirements or if the marks are not identical, the Office will notify the proprietor and give it two months to remedy the deficiency or submit observations.
If the deficiency is not remedied, the Office will inform the proprietor that the right to claim seniority has been rejected.
For examples of acceptable and unac ceptable seniority claims see the Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 16.6.
6.4.3 Harmonised seniority information
In order to properly manage seniorities, all seniority entries in the system need to have the same format as that used in the databases of the national offices.
To enhance harmonisation between OHIM and participating IP offices, a list with the required format for seniorities has been established. This list provides a description of the format/formats used in each of the national offices, insofar as this has been determined.
Therefore, when examining seniority claims, examiners must verify that the format of the seniority in the Office’s system corresponds to the format used at national level.
6.5 Registration and publication
Rule 84(3)(f) CTMR
If the claim to seniority is in order, the Office will register it and inform the relevant central industrial property office(s) of the Member State(s) concerned (Rule 8(3) CTMIR).
The seniority claim will be published in the CTM Bulletin.
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The publication will contain the following data:
• the CTM registration number • the seniority claim details: country, registration number, registration date, filing
date, date of priority • the date and number of the entry of the seniority claim • the date the entry is published in the CTM Bulletin.
Rule 84(3)(f) CTMIR provides that the seniority claim will be registered together with the items referred to in Rule 84(2).
6.6 Cancellation of seniority claims
The CTM proprietor may at any time request the cancellation of the seniority claim from the Register of its own motion.
Seniority claims may also be cancelled by a decision of a national court (see Article 14 Directive 2008/95/EC).
The cancellation of the seniority claim will be published in the CTM Bulletin. Rule 84(3)(r) CTMIR provides that the cancellation of the seniority will be registered together with the items referred to in Rule 84(2).
7 Replacement of a CTM Registration by an IR
Article 157 CTMR Rule 84(2) CTMIR Article 4 bis MP Rule 21 Common Regulations under the Madrid Agreement and Protocol (CR)
In accordance with Article 4 bis of the Madrid Agreement and the Protocol, the holder of an international registration designating the European Union (IR) may request the Office to take note in its Register that a CTM registration is replaced by a corresponding IR. The holder’s rights in the EU will be deemed to start from the date of the earlier CTM registration. Therefore, the Office will enter in the Register that a CTM has been replaced by a designation of the EU through an IR and that entry will be published in the CTM Bulletin.
For more information on replacement, see the Guidelines, Part M, International Marks.
Transfer
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 3
CTMs AS OBJECTS OF PROPERTY
CHAPTER 1
TRANSFER
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Table of Contents
1 Introduction................................................................................................ 4 1.1 Transfers.....................................................................................................5 1.2 Application to record a transfer ................................................................5
2 Transfers vs Changes of Name ................................................................ 6 2.1 Erroneous application to record a change of name.................................7 2.2 Erroneous application to record a transfer ..............................................7
3 Formal and Substantive Requirements of an Application to Record a Transfer ...................................................................................................... 8 3.1 Languages ..................................................................................................8 3.2 Application filed for more than one mark .................................................9 3.3 Parties to the proceedings.........................................................................9 3.4 Formal requirements................................................................................10
3.4.1 Indication of the registration number ............................................................ 10 3.4.2 Particulars of the new proprietor................................................................... 10 3.4.3 Name and address of the representative ..................................................... 11 3.4.4 Signatures..................................................................................................... 12
3.5 Proof of transfer .......................................................................................12 3.6 Substantive requirements........................................................................13 3.7 Procedure to remedy deficiencies ..........................................................14
4 Partial Transfers ...................................................................................... 15 4.1 Rules on the distribution of the lists of goods and services................. 15 4.2 Objections.................................................................................................16 4.3 Creation of a new CTM application or registration ................................17
5 Transfer During the Course of Other Proceedings and Fees Issues .. 17 5.1 Specific issues of partial transfers .........................................................18 5.2 Transfer and inter partes proceedings ...................................................19
6 Entry in the Register, Notification and Publication .............................. 20 6.1 Entry in the Register ................................................................................20 6.2 Notification................................................................................................20 6.3 Publication................................................................................................21
7 Transfers for Registered Community Designs ..................................... 22 7.1 Rights of prior use for an RCD ................................................................22 7.2 Fees...........................................................................................................22
Transfer
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8 Transfers for International Trade Marks ................................................ 23
Transfer
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1 Introduction
Articles 1(2), 17(1), Article 24 CTMR Article 28 CDR Article 23 CDIR
A transfer is the change in ownership of the property rights in a Community trade mark (CTM) or CTM application from one entity to another. CTM and CTM applications may be transferred from the current proprietor to a new proprietor, primarily by way of assignment or legal succession. The transfer may be limited to some of the goods or services for which the mark is registered or applied for (partial transfer). In contrast to a licence or conversion, a t ransfer of a CTM cannot affect the unitary character of the CTM. Therefore, a CTM cannot be ‘partially’ transferred for some territories or Member States.
The provisions in the CDR and CDIR dealing with the transfer of designs are almost identical to the equivalent provisions of the CTMR and CTMIR, respectively. Therefore, the following applies mutatis mutandis to Community designs, with the few exceptions and particularities laid down in paragraph 7 below.
Article 16, Article 17(5), (6), (8), Articles 24, 87 CTMR Rule 31(8), Rule 84(3)(g) CTMIR
Upon request, transfers of registered CTMs are entered in the Register and transfers of CTM applications are noted in the files.
The rules on registering transfers and on legal effects of transfers apply both to CTMs and to CTM applications. The major difference is that the Regulations stipulate that when a CTM application is transferred, the transfer will be recorded in the file of the application rather than in the Register. However, in practice, changes in the ownership of a C TM application or a C TM are recorded in the same database. While these Guidelines generally make no distinction between the transfer of CTMs and CTM applications, special references will be i ncluded where the treatment of CTM applications differs from that of CTMs.
According to Article 17 CTMR, registering a transfer is not a condition for its validity. However, if a transfer is not registered by the Office, the entitlement to act remains with the registered proprietor, meaning, inter alia, that the new proprietor will not receive communications from the Office, in particular during inter partes proceedings or the notification of the renewal term of the mark. Furthermore, according to Article 16 CTMR, in all aspects of the CTM as an object of property that are not further defined by provisions of the CTMR, the proprietor’s address defines the applicable subsidiary national law. For all these reasons, it is important to register a transfer at the Office to ensure that entitlement to CTMs and applications is clear.
Transfer
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1.1 Transfers
Article 17(1), (2) CTMR
A transfer of a CTM involves two aspects, namely the validity of the transfer between the parties and the impact of a transfer on proceedings before the Office, such impact being triggered only after the entry of the transfer in the Register (or the files) (see paragraph 1.2 below).
As concerns the validity of the transfer between the parties, the CTMR allows a CTM to be transferred independently of any transfer of the undertaking to which it belongs (see also judgment of 30/03/2006, C-259/04, ‘Elizabeth Emanuel’, paras 45 and 48).
Article 17(3) CTMR
When a transfer is made by an assignment, except where the assignment is the result of a court decision, the former is only valid where the assignment is made in writing and is signed by both parties. This formal requirement for the validity of the transfer of a CTM is applicable irrespective of whether, under the national law governing transfers of (national) trade marks, an assignment is valid even without observing a par ticular form, such as the need for the transfer to be in writing and have the signatures of both parties.
When the proprietor of a CTM or CTM application dies, the heirs will become proprietors of the registration or application by way of individual or universal succession. This is also covered by the rules on transfers.
Similarly, a universal succession exists when there is a merger between two companies that leads to the formation of a new company or an acquisition by one company taking over another. Where the whole of the undertaking to which the mark belongs is transferred, there is a presumption that the transfer includes the CTM unless, in accordance with the law governing the transfer, an agreement to the contrary was made or unless circumstances clearly dictate otherwise.
Article 16 CTMR
Unless provided otherwise by the CTMR, transfers are subject to the national law of a Member State determined by Article 16 CTMR. The national law declared applicable in that provision is the national law in general and, therefore, also includes private international law, which in turn may refer to the law of another State.
1.2 Application to record a transfer
Article 17(5)-(8), CTMR Rule 31 CTMIR
A transfer becomes relevant in proceedings before the Office if an application to record a transfer has been made and the transfer has been en tered in the Register or, for CTM applications, recorded in the CTM application file.
Transfer
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Article 17(7) CTMR
However, in the period between the date when the Office receives the application to record a transfer and the date of registering the transfer, the new proprietor may already make submissions to the Office with a view to observing time limits. If, for example, a party has applied to register the transfer of a CTM application for which the Office has raised objections on absolute grounds, the new proprietor may reply to the objections (see paragraph 5 below).
This part of the Guidelines covers proceedings relating to the recordal of transfers. In the course of the examination of an application for recordal of a transfer, the Office will only examine whether sufficient evidence of the transfer has been s ubmitted. The Office will not examine whether the transfer itself is valid.
2 Transfers vs Changes of Name
Rule 26(1)-(3) CTMIR
A transfer must be distinguished from a change of name of the proprietor.
An application for the change of name of a proprietor of a CTM registration or application is dealt with in separate proceedings. More information on changes of name can be found in the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 7.3, Change of name/address.
Rule 26(1) CTMIR
In particular, no transfer is involved when a natural person changes their name due to marriage, or following an official procedure for changing a name, or when a pseudonym is used instead of the civil name, etc. In all these cases, the identity of the proprietor is not affected.
Where the name or the corporate status of a legal person changes, the criterion for distinguishing a transfer from a mere change of name is whether or not the identity of the legal person remains the same (in which case it will be registered as a change of name) (see decision of 06/09/2010, R 1232/2010-4 – ‘Cartier’, paras 12-14). In other words, where there is no termination of the legal entity (e.g. in the event of a merger by acquisition, where one c ompany is completely absorbed by the other and ceases to exist) and no start-up of a new legal entity (e.g. following the merger of two companies leading to the creation of a new legal entity), there is only a c hange in the formal corporate organisation that already existed, and not in the actual identity itself. Therefore, the change will be registered as a change of name, where necessary.
For example, if a CTM is in the name of Company A and as the result of a merger this company is absorbed by Company B, there is a transfer of assets from Company A to Company B.
Likewise, during a division of Company A into two separate entities, one being the original Company A and the other being a new Company B, if the CTM in the name of Company A becomes the property of Company B, there is a transfer of assets.
Transfer
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Normally, there is no transfer if the company registration number in the national register of companies remains the same.
Likewise, there is in principle the prima facie presumption that there is a t ransfer of assets if there is a change of country.
If the Office has any doubt about the applicable national law governing the legal person concerned, it may require appropriate information from the person applying to register the change of name.
Therefore, unless it is ruled to the contrary under the national law concerned, the change of company type, provided that it is not accompanied by a transfer of assets carried out by means of a merger or an acquisition, will be treated as a change of name and not as a transfer.
On the other hand, if the change of company type is the result of a merger, a division or a transfer of assets, depending on which company absorbs or is separated from the other or on which company transfers which assets to the other, this may be a case of transfer.
2.1 Erroneous application to record a change of name
Article 133(1) CTMR Rule 26(1), (5) (7) CTMIR
When an application is made to record a change of name, but the evidence shows that what is involved is actually a transfer for a CTM or CTM application, the Office informs the recordal applicant accordingly and i nvites it to file an appl ication to record a transfer, which is free of charge. Such a transfer is, however, subject to the payment of a fee when related to the transfer of a D esign (see paragraph 7 below). The communication sets a time limit, in general, of two months starting from the date of its notification. If the recordal applicant agrees or does not submit evidence to the contrary and files the corresponding application to record a t ransfer, the transfer will be recorded. If the recordal applicant does not modify its request, that is to say if it insists on recording the change as a change of name, or if it does not respond, the application to record a change of name will be rejected.
In this case, a new application to record the transfer may be filed at any time.
2.2 Erroneous application to record a transfer
Rule 31(1), (6) CTMIR
When an application is made to record a transfer, but what is involved is actually a change of name for a CTM or CTM application, the Office informs the recordal applicant accordingly and invites it to give its consent to record the indications concerning the proprietor in the files kept by the Office or in the Register as a change of name. That communication sets a time limit, in general, of two months starting from the date of its notification. If the recordal applicant agrees, the change of name will be
Transfer
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recorded. If the recordal applicant does not agree, that is to say if it insists on recording the change as a transfer, or if it does not respond, the application to record a transfer will be rejected.
3 Formal and Substantive Requirements of an Application to Record a Transfer
The Office strongly recommends that the online Recordal Application Form be used when applying to record a transfer. The form is free of charge and can be downloaded from the Office’s web site (http://www.oami.europa.eu).
Since the entry into force of Regulation No 1042/05, which amended the CTMFR, there is no need to pay a fee to register a transfer.
3.1 Languages
The application for registration of a transfer must be filed:
Rule 95(a), (b), 96(1) CTMIR
• when it relates to a CTM application, in the first or the second language indicated in the CTM application;
• when it relates to a registered CTM, in one of the languages of the Office.
When the application relates to more than one CTM application, the recordal applicant must select a language for the application that is common to all the CTMs concerned. If there is no common language, separate applications for transfer must be filed.
When the application relates to at least one CTM registration, the recordal applicant must select one of the five languages of the Office.
Rule 76(3) CTMIR
When expressly required by the Office, authorisations may be filed in any official language of the European Union.
Rule 96(2) CTMIR
Any supporting documents may be filed in any official language of the European Union. This applies to any document submitted as proof of the transfer such as a countersigned Transfer Document or a Transfer Certificate, a deed of assignment or an extract from a trade register or a declaration agreeing to record the successor in title as the new proprietor.
Rule 98 CTMIR
When the supporting documents are not submitted in either an official language of the European Union or in the language of the proceedings, the Office may require a
Transfer
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translation into the language of the proceedings or, at the choice of the recordal applicant, into any language of the Office. The Office will set a time limit of two months from the date of notification of the respective communication. If the translation is not submitted within the time limit, the document will not be taken into account and will be deemed not to have been submitted.
3.2 Application filed for more than one mark
Rule 31(7) CTMIR
Provided that both the original proprietor and the new one are the same in each case, then the recordal applicant can file a single application to record a transfer for several CTMs or CTM applications. This has the advantages that the various references only have to be given once and that only one decision needs to be taken.
Separate applications are necessary when the original proprietor and the new one are not strictly identical for each mark. This is the case, for example, where there is one successor in title for the first mark and there are multiple successors in title for another mark, even if the successor in title for the first mark is among the successors in title for the other mark. It is immaterial whether the representative is the same in each case.
When a single application is filed in such cases, the Office will issue a deficiency letter. The recordal applicant may overcome the objection either by limiting the application to those CTMs or CTM applications for which there is but one and t he same original proprietor and one and the same new proprietor, or by declaring its agreement that its application should be dealt with in two or more different proceedings. Otherwise, the application will be rejected in its entirety.
3.3 Parties to the proceedings
Article 17(5) CTMR Rule 31(5) CTMIR
The application to record a transfer may be filed by the original proprietor (the CTM owner as appearing in the Register or the CTM applicant as appearing in the CTM application file) or by the new proprietor (the ‘successor in title’, i.e. the person who will appear as the proprietor when the transfer is recorded).
The Office will usually communicate with the recordal applicant(s). In cases of doubt, the Office may require clarification from all the parties.
Transfer
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3.4 Formal requirements
Rule 1(1)(b), Rule 31(1), (2), Rule 79 CTMIR
An application to record a transfer must contain:
• the registration or application number of the CTM registration or application; • the new proprietor’s particulars; • where the new proprietor appoints a r epresentative, the representative’s name
and business address; • the signature(s) of the person(s) requesting the recordal; • proof of the transfer as set out in paragraph 3.5 below.
For additional requirements in cases of a partial transfer, see paragraph 4.
3.4.1 Indication of the registration number
Rule 31(1)(a) CTMIR
The registration number of the trade mark must be indicated.
3.4.2 Particulars of the new proprietor
Rules 1(1)(b), 31(1)(b) CTMIR
The particulars of the new proprietor that have to be indicated are the name, address and nationality in the case of a physical person. In the case of a legal entity, the recordal applicant shall indicate the official designation and must include the legal form of the entity, which may be abbreviated in a customary manner (for example, S.L., S.A, Ltd., PLC, etc.). Both natural persons and legal entities must indicate the State in which they are domiciled or have their seat or an establishment. The Office strongly recommends indicating the State of Incorporation for US companies, where applicable, in order to differentiate clearly between different owners in its database. These particulars correspond to the indications required in respect of an applicant for a new CTM application. However, where the Office has already attributed an ID number to the new proprietor, indicating that number together with the name of the new proprietor is sufficient.
The form made available by the Office also requests an i ndication of the original proprietor’s name. This indication will facilitate both the Office’s and the parties’ handling of the file.
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3.4.3 Name and address of the representative
Rule 77 CTMIR Article 93(1) CTMR Rule 76(1), (2), (4) CTMIR
Applications to record a transfer may be filed and signed by representatives on behalf of the CTM proprietor or the new proprietor.
When the new proprietor appoints a representative, who signs the application, either the Office or, in the context of inter partes proceedings, the other party to the proceedings may request an authorisation. In this event, if the representative does not submit an authorisation, the proceedings will continue as if no representative had been appointed.
When the original proprietor’s representative is also appointed as the new proprietor’s representative, the representative may sign the application on behalf of both the original proprietor and the new one. The representative may also be called upon to file an authorisation signed by the new proprietor.
Articles 92(3), 93(1) CTMR
The foregoing applies not only to representatives within the meaning of Article 93 CTMR (legal practitioners and professional representatives whose names are entered on the list maintained by the Office), but also to any employee acting on behalf of the employer or, under the conditions of Article 92(3) CTMR, on behalf of a legal person (company) that has economic connections with the employer.
Rule 77, Rule 83(1)(h) CTMIR
A general authorisation in the form made available by the Office will be considered sufficient for granting authorisation to file and sign applications for registration of transfers.
An individual authorisation will be checked to see that it does not exclude the authority to apply for a registration of a transfer.
Article 92(2) CTMR
When the recordal applicant is the new proprietor and that new proprietor does not have either its domicile or its principal place of business or a r eal and effective industrial or commercial establishment in the Community, for the purposes of the procedure to register the transfer it must be represented by a per son entitled to represent third parties before the Office (legal practitioner or professional representative whose name is entered on the list maintained by the Office). For details of who may represent, see the Guidelines, Part A, General Rules, Section 5, Professional Representation.
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3.4.4 Signatures
Rule 31(1)(d), Rule 31(5), Rule 79 CTMIR
The requirements concerning the person entitled to file the application and the signature must be seen in conjunction with the requirement to submit proof of the transfer. The principle is that the signatures of the original proprietor or proprietors and the new proprietor or proprietors must appear together or separately on the application or in an accompanying document.
Rule 31(5)(a) CTMIR
When the original proprietor and the new proprietor both sign the application, this is sufficient and no additional proof of the transfer is necessary.
Rule 31(5)(b) CTMIR
When the new proprietor is the recordal applicant and where the application is accompanied by a dec laration signed by the original proprietor that it agrees to the recording of the successor in title as the new proprietor, this is also sufficient and no additional proof is necessary.
When the original proprietor’s representative is also appointed as the new proprietor’s representative, the representative may sign the application on behalf of both the original proprietor and the new one, and no ad ditional proof is necessary. However, when the representative signing on behalf of both the original and the new proprietor is not the representative on file (i.e. in an application simultaneously appointing the representative and transferring the CTM), the Office will contact the recordal applicant to request evidence of the transfer (authorisation signed by the original proprietor, proof of transfer, confirmation of the transfer by the original owner or its representative on file).
3.5 Proof of transfer
Article 17(2), (3) CTMR Rules 31(1)(d), (5)(a)-(c), 83(1)(d) CTMIR
A transfer may be registered only when it is proved by documents duly establishing the transfer, such as a copy of the deed o f transfer. However, as already highlighted above, filing a copy of the deed of transfer is not necessary:
• when the new proprietor or its representative submits the application to record the transfer on its own and when the application is accompanied by a written declaration signed by the original proprietor (or its representative) that it agrees to the recordal of the transfer; or
• when the application to record the transfer is signed by both the original proprietor (or its representative) and by the new proprietor (or its representative); or
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• when the application to record the transfer is accompanied by a completed transfer (recordal) form or document signed by both the original proprietor (or its representative) and by the new proprietor (or its representative).
Parties to the proceedings may also use the forms established under the Trademark Law Treaty available on WIPO’s web site (https://www.wipo.int/treaties/en/ip/tlt/forms.ht ml). These forms are the Transfer Document – a document conceived as constituting the transfer (assignment) itself – and the Transfer Certificate – a document in which the parties to a transfer declare that a transfer has taken place. Either of these documents, duly completed, constitutes sufficient proof of transfer.
However, other means of proof are not excluded. Therefore, the agreement (deed) itself or any other document proving the transfer may be submitted.
When the transfer of the mark is the consequence of the transfer of the whole of the undertaking of the original proprietor, and unless proof is provided as indicated above, the document showing the transfer or assignment of the whole undertaking must be submitted.
When the transfer is due to a merger or another universal succession, the original proprietor will not be available to sign the application. In these cases, the application must be accompanied by supporting documents that prove the merger or universal succession, such as extracts from the trade register, etc. The Office may abstain from requiring additional proof where the facts are already known to the Office, for example in parallel proceedings.
Supporting documents need not be legalised, nor is it necessary to submit the original of a document. Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient.
If the Office has reason to doubt the accuracy or veracity of the document, it may require additional proof.
The Office will examine the documents only to the extent that they actually prove what is indicated in the application, namely the identity of the marks concerned and t he identity of the parties, and whether a transfer is involved. The Office does not consider or rule on contractual or legal questions arising under national law (see judgment of 09/09/2011, T-83/09 ‘Craic’ para. 27). If doubts arise, it is the national courts that deal with the legality of the transfer itself.
3.6 Substantive requirements
Article 17(4) CTMR
The Office will not register the transfer where it is clear from the transfer documents that because of the transfer the Community trade mark is likely to mislead the public concerning the nature, quality or geographical origin of the goods or services for which it is registered unless the new proprietor agrees to limit registration of the Community trade mark to goods or services for which it is not likely to be misleading.
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Article 7(1)(g) CTMR
A mark is likely to mislead the public because of its transfer if, had i t originally been filed by the new proprietor, it would have to be refused as misleading because of the particular circumstances relating to the proprietor and the mark.
Therefore, the criterion is whether the mark would mislead due to its proprietorship.
Article 7(1)(g), Article 17(4), Articles 43, 48 CTMR
The requirement that the likelihood of misleading the public must be the result of the transfer prevents the Office from taking into account, when examining an application to record a transfer, any other issue of deceptiveness that is not related to the link between the proprietor and t he mark. Once a m ark is registered, the Office may no longer raise general objections on the basis of deceptiveness. However, as long as the mark is not yet registered, the Office may object on s uch grounds. When the Office discovers such a ground for an objection during the examination of the application to record a transfer, it will register the transfer if all the requirements for the application are fulfilled, but subsequently will refer the case to the examiner for further examination on absolute grounds as appropriate.
However, to overcome an objection raised by the Office that due to the change in proprietorship the trade mark would mislead the public the recordal applicant cannot argue that the likelihood to mislead already existed at the date of filing of the CTM application.
The requirement that the likelihood of misleading the public must be clear from the transfer documents prevents the Office from basing its objections on speculative grounds and hy pothetical future developments. The mere fact that the goods and services will in the future be offered or marketed by a different person does not in itself constitute a likelihood of misleading the public. Speculations on the future use of the mark by the new proprietor will not be m ade. In particular, a possible change of the quality of the products sold under the mark must not be taken into account. There is reason to object to the registration of a transfer only if the mark itself would become misleading in relation to its new proprietor.
Objections on the ground of deceptiveness may be overcome in the relevant cases by amending the CTM application in accordance with Article 43 CTMR or the registered CTM in accordance with Article 48 CTMR. For more information on Office practice in relation to Article 7(1)(g) CTMR, see Part B, Section 4, Absolute Grounds for Refusal.
3.7 Procedure to remedy deficiencies
Article 17(7) CTMR Rules 31(6), 67(1) CTMIR
Where any of the deficiencies outlined above are noted, the Office will invite the recordal applicant to remedy the deficiency within a time limit of two months, starting from the date of the notification. The notification will be addressed to the person who filed the application to record the transfer or, where that person has appointed a
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representative, to the representative. The Office will not automatically inform the other party to the transfer, unless this is appropriate under the circumstances.
When the recordal applicant fails to remedy the deficiency or to submit the necessary additional proof, or where it is unable to convince the Office that the objections are not well-founded, the Office will reject the application.
4 Partial Transfers
Article 17(1) CTMR Rule 32 CTMIR
A partial transfer concerns only some of the goods and services in the CTM or CTM application. It involves the distribution of the original list of goods and services between the remaining CTM registration or application and a new one. When partial transfers are involved, the Office uses particular terminology to identify the marks. At the beginning of the proceedings there is the ‘original’ mark. This is the mark for which a partial transfer has been applied for. After the registration of the transfer, there are two marks: one is a mark that now has fewer goods and services, and is called the ‘remaining’ mark, and one is a ‘new’ mark that has some of the goods and services from the original mark. The ‘remaining’ mark retains the CTM number of the ‘original’ mark while the ‘new’ mark has a new CTM number.
Transfer cannot affect the unitary character of the CTM. Therefore, a CTM cannot be ‘partially’ transferred for some territories.
When there are doubts as to whether the transfer is partial or not, the Office will inform the transfer recordal applicant and invite it to make the necessary clarifications.
Partial transfers may also be involved when the transfer application concerns more than one C TM or CTM application. The following rules apply for each CTM or CTM application included in the transfer application.
4.1 Rules on the distribution of the lists of goods and services
Article 43 CTMR Rule 2, Rule 32(1) CTMIR
In the application to record a partial transfer, the goods and services to which the partial transfer relates must be indicated (the list of goods and services for the ‘new’ registration). The goods and services must be distributed between the original CTM or CTM application and a new CTM or CTM application so that the goods and services in the original CTM or CTM application and the new one do not overlap. The two specifications taken together must not be broader than the original specification.
Therefore, the indications must be clear, precise and unequivocal. For example, when a CTM for goods or services in several classes is involved, and the ‘split’ between the old and new registration concerns whole classes, it is sufficient to indicate the respective classes for the new registration or for the remaining one.
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When the application for a partial transfer indicates goods and services that are explicitly mentioned in the original list of goods and s ervices, the Office will automatically retain the goods and services that are not mentioned in the transfer application for the original CTM or CTM application. For example, the original list contains goods A, B and C, and the transfer application relates to C; the Office will keep goods A and B in the original registration and create a new registration for C.
In accordance with Communication No 2/12 of the President of the Office of 20/06/2012, CTMs filed prior to the 21/06/2012 claiming a particular class heading are considered to cover all the goods and services of the alphabetical list of that class in the edition of the Nice Classification in force at the time when the filing was made (see Communication No 2/12, paras V and VI).
When the application for a partial transfer indicates goods or services that are not expressly mentioned in the original list but fall under the literal meaning of a general indication contained therein, this will be acceptable provided that the list is not broadened. For the assessment of whether there is limitation or a broadening of scope of the list, the rules generally applicable in such situations apply (see the Guidelines, Part B, Examination, Section 3, Classification).
However, marks filed on or after 21/06/2012 claiming only the general indications of a particular class heading will be c onsidered to cover the literal meaning of that class heading and may only be partially transferred accordingly (see Communication No 2/12 paras VII and VIII).
Marks filed after 21/06/2012 claiming the general indications of a pa rticular class heading plus the alphabetical list will be considered to cover the literal meaning of that class heading plus the alphabetical list of goods and services concerned of that class in the edition of the Nice Classification in force at the time when the filing was made and may only be partially transferred accordingly (see Communication No 2/12 paras VII and VIII).
In all cases it is highly recommended to file a clear and p recise list of goods and services to be transferred as well as a clear and precise list of goods and services to remain in the original registration. Furthermore, the original list must be clarified. For example, if the original list related to ‘alcoholic beverages’ and the transfer relates to ‘whisky’ and ‘gin’, the original list must be a mended by restricting it to ‘alcoholic beverages, except whisky and gin’.
4.2 Objections
Rules 31(6), 32(3) CTMIR
When the application does not comply with the rules explained above, the Office will invite the recordal applicant to remedy the deficiency. If the deficiencies are not remedied, the Office will reject the application.
When the exchange of communications leads to a l ist of goods and services for the remaining registration that is different from the list filed in the CTM application, the Office will communicate not only with the new proprietor, if it is the party requesting the registration of the partial transfer, but also with the original proprietor, who remains the
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person who may dispose of the list of goods and services of the original registration. The Office will make any change to the original list of goods and services subject to the agreement of the original proprietor. If the agreement is not submitted within the time limit fixed by the Office, the application to record a transfer will be rejected.
4.3 Creation of a new CTM application or registration
Article 88 CTMR Rule 32(4), Rules 88, 89 CTMIR
A partial transfer leads to the creation of a new CTM application or registration. For this ensuing CTM application or registration, the Office will establish a separate file, which will consist of a complete copy of the electronic file of the original CTM application or registration, the application for registration of a t ransfer, and al l the correspondence related to the transfer application. The ensuing CTM application or registration will be given a new file number. It will have the same filing date and, where applicable, priority date as the original CTM application or registration. If the partial transfer relates to a CTM application, the ensuing CTM application is subject to the provisions for inspection of files in Article 88 CTMR.
As far as the original CTM application or registration is concerned, the Office will include in its files a copy of the application to record a transfer, but will generally not include copies of the further correspondence relating to that application.
5 Transfer During the Course of Other Proceedings and Fees Issues
Article 17(6), (7) CTMR
Without prejudice to the right to act from the time when the application for registration of a transfer is received by the Office where time limits are involved, the new proprietor will automatically become party to any proceedings involving the mark in question from the time the transfer is registered.
The filing of an application to record a transfer has no effect on time limits already running or set by the Office, including time limits for the payment of fees. New time limits for payment will not be set. From the date of registration of the transfer, the new proprietor becomes liable to pay any fees due.
Therefore, during the period between filing the application to record a transfer and the Office’s confirmation of its actual entry in the Register or in the file, it is important that the original proprietor and the new proprietor actively collaborate in communicating time limits and correspondence received during inter partes proceedings.
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5.1 Specific issues of partial transfers
Rule 32(5) CTMIR
In cases of partial transfers, the ensuing CTM or CTM application will be at the same procedural stage as the original (remaining) CTM or CTM application. Any time limit still pending for the original CTM or CTM application will be deemed to be pending for both the remaining CTM or application and the new one. After the registration of the transfer the Office will treat each CTM or CTM application separately and will decide on them separately.
When a CTM or CTM application is subject to the payment of fees and these fees have been paid by the original proprietor, the new proprietor will not be l iable to pay any additional fees with regard to the new CTM or CTM application. The relevant date is the entry date of the transfer in the register or in the files; therefore, when the fee for the original pending CTM or CTM application is paid after filing an application to record a transfer but before the recordal of the transfer itself, no additional fees are due.
Article 26(2) CTMR Rule 4, Rule 9(3), (5) CTMIR Article 2 No 2, 4 CTMFR
When the partial transfer involves a CTM application and class fees have not yet been paid or not been paid in full, the Office will proceed to record the transfer in the files of the remaining CTM application and to create a new CTM application as described above.
Where the CTM application originally related to more than three classes and, thus, would require the payment of additional class fees, the examiner will deal with such cases after recording the transfer in the files and creating a new CTM application, as described below.
When additional class fees were paid prior to recording the transfer but no additional class fees would be due bec ause the remaining CTM application now relates to three or fewer classes, no reimbursement will be made because the fees were paid correctly at the time of payment.
In all other cases, the examiner will treat the remaining CTM application and the new one separately, but without requesting a further basic fee to be paid for the new application. Class fees for the remaining CTM application and for the new one will be determined pursuant to the situation existing after the registration of the transfer. For example, when the original application had seven classes and after the transfer the remaining application has three while the new application has four, no additional class fees are due for the remaining application, while one additional class fee must be paid for the new application. When some of the goods and services of a particular class are transferred and o thers are not, that class becomes payable for both the remaining application and the new one. When a time limit to pay additional class fees has already been set but not yet expired, it will be set aside by the Office to allow the determination to be made on the basis of the situation after the registration of the transfer.
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Article 47(1), (3), (4) CTMR Rule 30(2), (4) CTMIR
When the application to record a partial transfer relates to a CTM registration that is due for renewal, that is, within six months prior to the expiry of the original registration and up to six months after that expiry, the Office will proceed to record the transfer and deal with the renewal and renewal fees as described below.
When no renewal request has been filed and no f ees have been pai d prior to the recording of the transfer, the general rules including the rules relating to payment of fees are applicable both to the remaining CTM registration and to the new one (separate requests, separate payment of fees, as necessary).
When a renewal request has been filed prior to the registration of the transfer, that request is also valid for the new CTM. However, while the original proprietor remains a party to the renewal proceedings for the remaining CTM, the new proprietor automatically becomes party to the renewal proceedings for the new registration.
In these situations, when a renewal request has been filed but the relevant fees have not been paid prior to the registration of the transfer, the fees to be paid are determined pursuant to the situation after the registration of the transfer. This means that both the proprietor of the remaining CTM and the proprietor of the new CTM must pay the basic renewal fee and any class fees.
When not only a renewal request has been filed prior to the registration of the transfer but also all the applicable renewal fees have been paid prior to this date, no additional renewal fees are due after the registration of the transfer. Furthermore, no reimbursement is made of any class fees already paid.
5.2 Transfer and inter partes proceedings
When an application to record a transfer is filed during inter partes proceedings, several different situations can arise. For earlier CTM registrations or applications on which the opposition/cancellation is based, the new proprietor can only become party to the proceedings (or file observations) once the application to record the transfer has reached the Office. The basic principle is that the new proprietor substitutes the original proprietor in the proceedings. The practice of the Office when dealing with transfers in opposition is described in the Guidelines, Part C, Opposition, Section 1, Procedural Matters, paragraph 6.5, Change of parties.
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6 Entry in the Register, Notification and Publication
6.1 Entry in the Register
Article 17(5) CTMR Rule 31(8), Rule 84(3)(g) CTMIR
When the application to record a transfer fulfils all requirements, if it concerns a registered CTM, the transfer will be entered in the Register, while if it concerns a CTM application, the Office will record the transfer in the corresponding file.
The entry in the Register will contain the following data:
• the registration date of the transfer, • the new proprietor’s name and address, • the name and address of the new proprietor’s representative, if any.
For partial transfers, the entry will also contain the following data:
• a reference to the number of the original registration and the number of the new registration,
• the list of goods and services remaining in the original registration, and • the list of goods and services of the new registration.
6.2 Notification
The Office will notify the recordal applicant of the recordal of the transfer.
If the application for recordal of a transfer is related to at least one CTM application, the notification will contain the appropriate reference to the relevant recording of the transfer in the files kept by the Office.
As regards notifying the other party, there is a distinction between total transfers and partial transfers.
Article 17(5) CTMR Rule 84(5) CTMIR
In cases of a total transfer, the notification will be sent to the party who submitted the application to register the transfer, that is to say, to the recordal applicant.
There will be no information to the other party:
• when the original proprietor’s representative is also the new proprietor’s appointed representative (in such a case the representative will receive one communication on behalf of both parties); or
• when the original proprietor has ceased to exist (death, merger).
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In all other cases, the other party will be informed of the outcome of the procedure, that is, the registration of the transfer. The other party will not receive information during the course of the proceedings unless serious doubts arise concerning the legality of the application to record the transfer or the transfer itself.
Rule 32(3), (4) CTMIR
In cases of a partial transfer, both the proprietor of the remaining CTM and the proprietor of the new CTM must receive notification, because necessarily two CTM applications or registrations are concerned. Therefore, a s eparate notification will be sent to the new applicant for each CTM application that has been transferred partially. In the case of a par tial transfer of a C TM registration, the Office will notify the new proprietor for each registration, containing, as appropriate, indications concerning the payment of renewal fees. A separate notification will be issued to the proprietor of the remaining CTM registration.
Furthermore, where in the case of a partial transfer the list of goods and services that are to remain in the original CTM application or registration needs to be clarified or amended, such clarification or amendment requires the agreement of the proprietor of the remaining CTM application or registration (see paragraph 4.2 above).
6.3 Publication
Article 17(5) CTMR Rule 84(3)(g), Rule 85(2) CTMIR
For CTM registrations, the Office publishes the entry in the Register of transfers in Part C of the Community Trade Marks Bulletin.
Article 39 CTMR Rule 12, Rule 31(8) CTMIR
When the application to record a transfer relates to a CTM application that has been published pursuant to Article 39 CTMR and Rule 12 CTMIR, the publication of the registration of the mark and the entry in the Register will mention the new proprietor from the outset. The publication of the registration will contain a reference to the earlier publication.
Article 39 CTMR Rule 12 CTMIR
When the transfer relates to a CTM application that has not been published, the publication pursuant to Article 39 CTMR and Rule 12 CTMIR will contain the name of the new proprietor without any indication that the application has been transferred. This also applies when the transfer of an unpublished CTM application is a partial transfer.
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7 Transfers for Registered Community Designs
Article 1(3), Articles 27, 28, 33, 34, Article 107(2)(f) CDR Article 23, Article 61(2), Articles 68(1)(c), 69(2)(i) CDIR Annex Nos 16, 17 CDFR
The legal provisions contained in the CDR, CDIR and CDFR for transfers correspond to the respective provisions in the CTMR, CTMIR and CTMFR.
Therefore, both the legal principles and the procedure for recording trade mark transfers apply mutatis mutandis to Community designs.
There are only a few exceptions and specificities, which are detailed below.
7.1 Rights of prior use for an RCD
Article 22(4) CDR
The right of prior use for an RCD cannot be transferred except where the third person, who owned the right before the filing or priority date of the application for an RCD, is a business, along with that part of the business in the course of which the act was done or the preparations were made.
7.2 Fees
Annex Nos 16, 17 CDFR
The fee of EUR 200 for recording a transfer applies per design and no t per multiple application. The same is true for the ceiling of EUR 1 000 if multiple requests are submitted.
Example 1: Out of a multiple application for 10 designs, 6 designs are transferred to the same successor in title. The fee is EUR 1 000 provided either that only one application to record these 6 t ransfers is filed or that several applications to record transfers are filed on the same day.
Example 2: Out of a multiple application for 10 designs, 5 designs are transferred to the same successor in title. The transfer refers also to another design not contained in that multiple application. The fee is EUR 1 000 provided that:
• only one application to record these 6 transfers is filed or several requests are filed on the same day, and
• the holder of the Community design and t he successor in title is the same in all 6 cases.
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8 Transfers for International Trade Marks
The Madrid System allows for the ‘change of ownership’ of an international registration. All applications to record a change in ownership should be s ubmitted on form MM5 either directly to the International Bureau by the holder on record or to the national Office of the holder on record or to the national Office of the new proprietor (transferee). The application to record a transfer cannot be filed directly with the International Bureau by the new proprietor. OHIM’s own Recordal Application form should not be used.
Detailed information on changes in ownership can be found in paras B.II.60.01-67.02 of the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (www.wipo.int/madrid/en/guide/).
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 3
CTMs AS OBJECTS OF PROPERTY
CHAPTER 2
LICENCES
Licences
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Table of Contents
1 Introduction................................................................................................ 4 1.1 Licence contracts.......................................................................................4 1.2 Advantages of the registration of a licence..............................................5
2 Registration of a Licence for a CTM or CTMA......................................... 5 2.1 Form, requests for more than one licence................................................6 2.2 Languages ..................................................................................................6 2.3 Fees.............................................................................................................6 2.4 Applicants and mandatory content of the application.............................7
2.4.1 Applicants ....................................................................................................... 7 2.4.2 Mandatory indications concerning the licenced CTM and the licensee ......... 7 2.4.3 Requirements concerning the person who makes the request –
Signature, proof of the licence, representation............................................... 8 2.4.4 Representation ............................................................................................. 10
2.5 Optional contents of the request.............................................................10 2.6 Examination of the request for registration............................................11
2.6.1 Fees.............................................................................................................. 11 2.6.2 Examination of the mandatory formalities .................................................... 12 2.6.3 Examination of optional elements ................................................................ 13
2.7 Registration procedure and publications ...............................................14
3 Cancellation or Modification of a Licence for a CTM or a CTMA......... 15 3.1 Competence, languages, presentation of the request ...........................15 3.2 Person making the request......................................................................16
3.2.1 Cancellation of a licence............................................................................... 16 3.2.2 Modification of a licence ............................................................................... 16
3.3 Contents of the request ...........................................................................17 3.4 Fees...........................................................................................................17
3.4.1 Cancellation of a licence............................................................................... 17 3.4.2 Modification of a licence ............................................................................... 18
3.5 Examination of the request......................................................................18 3.5.1 Fees.............................................................................................................. 18 3.5.2 Examination by the Office............................................................................. 18
3.6 Registration and publication ...................................................................19
4 Transfer of a Licence for a CTM or CTMA ............................................. 19 4.1 Definition of the transfer of a licence......................................................19 4.2 Applicable rules........................................................................................19
5 Registration of Licences for Registered Community Designs ............ 20 5.1 Registered Community designs ..............................................................20
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5.2 Multiple applications for registered Community designs...................... 20
6 Registration of Licences for International Trade Marks....................... 21
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1 Introduction
Articles 22, 23, 24 CTMR Articles 27, 32, 33 CDR
Registered Community trade marks (CTMs), as well as Community trade mark applications (CTMAs), may be the subject of licensing contracts (licences).
Registered Community designs (RCDs), as well as applications for a registered Community design, may be the subject of licences.
Paragraphs 1 to 4 below deal with trade mark licences concerning CTMs and CTMAs. The provisions in the CDR and CDIR dealing with design licences are almost identical to the equivalent provisions of the CTMR and C TMIR respectively. Therefore, the following applies mutatis mutandis to Community designs. Exceptions and specificities to Community designs are detailed in paragraph 5 below. Exceptions and specificities to international trade marks are laid down under paragraph 6 below.
1.1 Licence contracts
A trade mark licence is a contract by virtue of which the proprietor or applicant, (hereinafter referred to as the “proprietor”) of a t rade mark (the licensor), whilst retaining his proprietorship, authorises a third person (the licensee) to use the trade mark in the course of trade, under the terms and conditions set out in the contract.
A licence refers to a situation where the rights of the licensee in the CTM arise from a contractual relationship with the proprietor. The proprietor’s consent to, or tolerance of, a third party using the trade mark does not amount to a licence.
Article 16 CTMR
The CTMR does not have the competence to establish unified and complete provisions applicable to licences for CTMs or CTMAs. Rather, Article 16 CTMR refers to the law of a Member State, as far as the acquisition, validity and effects of the CTM as an object of property are concerned. To this end, a licence for a CTM is, in its entirety and for the whole territory of the European Union, assimilated to a licence for a trade mark registered in the Member State in which the CTM proprietor or applicant has its seat or its domicile. If the proprietor does not have a seat or domicile in a Member State, it will be dealt with as a licence for a trade mark registered in the Member State in which the proprietor has an establishment. If the proprietor does not have an establishment in a Member State, it will be dealt with as a licence for a trade mark registered in Spain.
This, however, applies only to the extent that Articles 17 to 24 CTMR do not provide otherwise.
Article 16 CTMR is limited to the effects of a licence as an object of property and does not extend to contract law. Article 16 CTMR does not govern the applicable law or the validity of a licensing contract, which means that the freedom of the contracting parties to submit the licensing contract to a given national law is not affected by the CTMR.
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1.2 Advantages of the registration of a licence
Articles 22(5), 23(1), (2), 50(3) CTMR
It is not compulsory to request an entry in the Register when there is a licence agreement. Moreover, when a party to proceedings before the Office has to prove use of a Community trade mark, if such use has been made by a licensee, it is not necessary for the licence to have been ent ered in the Register for that use to be deemed to be use with the proprietor’s consent pursuant to Article 15(2) CTMR.. However, such a registration has particular advantages.
a) In view of the provision of Article 23(1) CTMR, vis-à-vis third parties who might have acquired, or have entered in the Register, rights in the trade mark which are incompatible with the registered licence, the licensee may avail itself of the rights conferred by this licence only:
• if the licence was entered in the CTM Register, or
• in the absence of registration of the licence, if the third party had acquired such rights after the date of any legal acts such as referred to in Articles 17, 19 and 22 CTMR (such as a transfer, a right in rem or a previous license) knowing of the existence of the licence.
b) In the case where a licence for a CTM is entered in the Register, the surrender or partial surrender of that mark by its proprietor will only be entered in the Register if the proprietor establishes that it has informed the licensee of its intention to surrender.
The holder of a licence which is registered has, therefore, the right to be informed in advance by the proprietor of the trade mark of its intention to surrender the trade mark.
c) In the case where a licence for a Community trade mark is entered in the Register, the Office will notify the licensee at least six months before the expiry of the registration that the registration is approaching expiry. The Office will also notify the licensee of any loss of rights and of the expiry of the registration, where applicable.
d) Registering licences and their modification and/or cancellation is important for maintaining the veracity of the Register, particularly in the event of inter partes proceedings.
2 Registration of a Licence for a CTM or CTMA
Article 22(5) CTMR Rules 33, 34, Rule 84(3)(j) CTMIR
Both CTMAs and CTMs may be the subject of the registration of a licence.
The application for registration of a licence must comply with the following conditions.
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2.1 Form, requests for more than one licence
Rules 83(1)(e), 95(a) and (b) CTMIR
It is strongly recommended that the request for registration of a licence for a CTM be submitted on t he Office’s Recordal Application form. This form is available free of charge in the official languages of the European Union. It can be dow nloaded from OHIM’s website.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 2.2 below. This concerns, in particular, the list of goods and services and/or the territory.
Rules 31(7), 33(1) CTMIR
A single request for the registration of a licence in respect of two or more registered CTMs or CTMAs may be made only if the respective registered proprietor and the licensee are the same and the contracts have the same conditions, limitations and terms in each case (see paragraph 2.5 below).
2.2 Languages
Rule 95(a) CTMIR
The application for the registration of a licence for a CTM application may be made in the first or second language of the CTMA.
Rule 95(b) CTMIR
The application for the registration of a licence for a registered CTM must be made in one of the five languages of the Office, namely, English, French, German, Italian or Spanish.
2.3 Fees
Article 162(2)(c), (d) CTMR Rule 33(1), (4) CTMIR Article 2(23) CTMFR
The application for the registration of a licence is considered not to have been made until the fee is paid. The amount of this fee is EUR 200 for each CTM for which the registration of a licence is requested.
However, where several registrations of licences have been r equested in one s ingle request and the respective registered proprietor and the licensee are the same and the contractual terms are the same in all cases, the fee is limited to a maximum of EUR 1 000.
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The same maximum amount applies where several registrations of licences are applied for at the same time, provided that they could have been filed in one single request and where the respective registered proprietor and the licensee are the same in all cases. Furthermore, the contractual terms must be t he same. For example, an exclusive licence and a non-exclusive licence cannot be filed in the same request, even if they are between the same parties.
Once the corresponding fee is paid, the fee will not be reimbursed if the application for registration of the licence is refused or withdrawn.
2.4 Applicants and mandatory content of the application
2.4.1 Applicants
Article 22(5) CTMR
The registration of a licence may be requested at the Office by:
a) the proprietor of the CTM, or
b) the proprietor of the CTM jointly with the licensee, or
c) the licensee.
The formal conditions with which the request must comply depend on who is making the request. It is recommended that the first or the second of these options be used, since these allow for a speedier and smoother treatment of the request for registration of the licence.
2.4.2 Mandatory indications concerning the licenced CTM and the licensee
Rule 31, Rule 33(1) CTMIR
The request for registration of a licence must contain the following information:
Rule 31(1)(a), Rule 33(1) CTMIR
a) the registration number of the CTM concerned. If the request relates to several CTMs, each of the numbers must be indicated.
Rules 1(1)(b), 31(1)(b), Rule 33(1) CTMIR
b) the licensee’s name, address and nationality and the State in which it is domiciled or has its seat or an establishment.
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Rule 1(1)(e), Rules 31(2), 33(1) CTMIR
c) if the licensee designates a r epresentative, the representative’s name and ID number allocated by the Office should be indicated. If the representative has not yet been assigned an ID number, the business address must be indicated.
2.4.3 Requirements concerning the person who makes the request – Signature, proof of the licence, representation
Rule 79, Rule 82(3) CTMIR
The requirements concerning signature, proof of the licence and r epresentation vary depending on the person who makes the request. Where the requirement of a signature is referred to, in electronic communications, the indication of the sender’s name shall be deemed to be equivalent to the signature.
2.4.3.1 Request made by the CTM proprietor alone
Rule 1(1)(b), Rule 33(1) CTMIR
When a request is made by the CTM proprietor alone, it must be signed by the CTM proprietor
No proof of the licence is necessary.
The Office will not inform the licensee that the registration of the licence has been requested. It will, however, inform the licensee when the licence is recorded in the Register.
Where the licensee files a statement with the Office in which it opposes the registration of the licence, the Office will transmit the statement to the CTM proprietor for information purposes only. The Office will not take any further action on the statement but will register the licence. Following the registration of the licence, any licensee who disagrees with the registration of the licence may use the procedure for requesting the cancellation or amendment of the licence (see paragraph 3 below).
The Office will not take into account whether or not the parties, although having agreed on a licence contract, have agreed to register it at the Office. Any dispute on whether or not and in what manner the licence shall be registered is a matter that must be resolved among the parties concerned under the rules of the relevant national law (Article 16 CTMR).
2.4.3.2 Request made jointly by the CTM proprietor and the licensee
When the request is made jointly by the CTM proprietor and its licensee, it must be signed both by the CTM proprietor and the licensee.
In this case, the signature of both parties constitutes proof of the licence.
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Where there is a formal deficiency regarding the signature of the licensee or regarding the representative, the request will still be accepted as long as it would have also been acceptable if it had been presented by the CTM proprietor alone.
The same applies where there is a de ficiency regarding the signature of the CTM proprietor or regarding its representative but where the request would have been acceptable if it had been presented by the licensee alone.
2.4.3.3 Request made by the licensee alone
The request may also be made by the licensee alone. In this case, it must be signed by the licensee.
In addition, proof of the licence must be submitted.
2.4.3.4 Proof of the licence
There is sufficient proof of the licence if the request for registration of the licence is accompanied by any of the following evidence.
• A declaration that the CTM proprietor agrees to the registration of the licence, signed by the CTM proprietor or its representative.
In accordance with Rule 31(5)(a) CTMIR, it is also considered sufficient proof if the request for registration of the licence is signed by both parties. This case has already been dealt with in paragraph 2.4.3.2 above.
• The licence agreement, or an ex tract therefrom, indicating the parties and the CTM being licensed and bearing their signatures.
It suffices if the licence agreement is filed. In many instances, the parties to the licence agreement will not wish to disclose all the details, which may contain confidential information on the licence royalties or other terms and conditions of the licence. In these cases, it suffices if only a part or an extract of the licence agreement is submitted, as long as it contains the identification of the persons who are parties to the licence agreement, the fact that the CTM in question is the subject of a licence and the signatures of both parties. All other elements may be omitted or blacked out.
• An uncertified statement of licence using the complete WIPO Model International Form for the Request for Recordal of a License (found in the annex to the Joint Recommendation concerning trade mark licenses adopted by The Assembly of the Paris Union and the General Assembly of WIPO on 25/09-03/10/2000). The form must be signed by both the CTM proprietor, or its representative, and the licensee, or its representative. It can be found at:
https://www.wipo.int/export/sites/www/about-ip/en/development_iplaw/pdf/pub835a.pdf.
It suffices if an uncertified statement of licence on the WIPO model form is filed.
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Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient. The original or photocopy does not need to be authenticated or legalised.
Rule 95(a), (b), Rule 96(2) CTMIR
The evidence of the licence must be:
a) in the language of the Office which has become the language of the proceedings for the registration of the licence, see paragraph 2.1 above;
b) in any official language of the European Union other than the language of the proceedings; in this case the Office may require a translation of the document into a language of the Office to be filed within a period specified by the Office.
Where the supporting documents are not submitted in either an official language of the European Union or in the language of the proceedings, the Office may require a translation into the language of the proceedings or, at the choice of the party requesting the registration of the licence, into any language of the Office. The Office will fix a time limit of two months from the date of notification of that communication. If the translation is not submitted within that time limit, the document will not be taken into account and will be deemed not to have been submitted.
2.4.4 Representation
Articles 92(2), 93(1) CTMR
The general rules on representation apply (see the Guidelines, Part A, General Rules, Section 5, Professional Representation).
Where the recordal applicant has no domicile or principal place of business or a real and effective industrial or commercial establishment inside the European Union and has made the request alone, failure to fulfil the requirement of representation will lead to the request not being processed. The recordal applicant will be notified in the form of an information letter and any fees paid will be refunded. The recordal applicant is then free to submit a new request.
2.5 Optional contents of the request
Rule 34 CTMIR
Depending on t he nature of the licence, the request for registration may contain the request to register the licence together with other indications, namely those referred to under paragraphs a) to e) below. These indications may be individual or in any combination, for one l icence (e.g. an exclusive licence limited in time) or for several licences (e.g. one exclusive licence for A as regards Member State X and another for B as regards Member State Y). They are entered in the Register by the Office only if the request for registration of the licence itself clearly requests that they be registered. Without such an explicit request, the Office will not enter in the Register any indications
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contained in the licence agreement that are submitted, for example, as evidence of the licence.
However, if one or more of these indications are requested to be entered in the Register, the following details must be indicated.
Rule 34(1)(c), (2) CTMIR
a) Where registration of a licence limited to only some of the goods or services is requested, the goods or services for which the licence has been granted must be indicated.
Rule 34(1)(d), (2) CTMIR
b) Where the request is to register the licence as a territorially limited licence, the request must indicate the part of the European Union for which the licence has been granted. A part of the European Union may consist of one or several Member States or one or several administrative districts in a Member State.
Article 22(1) CTMR Rule 34(1)(a) CTMIR
c) Where registration of an exclusive licence is sought, a s tatement to this effect must be made in the request for registration.
Rule 34(1)(e) CTMIR
d) Where the registration of a l icence granted for a limited period of time is requested, the expiry date of the licence must be specified. In addition, the date of the commencement of the licence may be indicated.
Rule 34(1)(b) CTMIR
e) Where the licence is granted by a licensee whose licence is already entered in the Register of CTMs, the request for registration may indicate that it is for a sub- licence. Sub-licences cannot be recorded without first recording the parent licence.
2.6 Examination of the request for registration
2.6.1 Fees
Rule 33(2) CTMIR
Where the required fee has not been received, the Office will notify the recordal applicant that the request is deemed not to have been filed because the relevant fee has not been paid. However, a new request may be submitted at any time providing the correct fee is paid from the outset.
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2.6.2 Examination of the mandatory formalities
Rule 33(3) CTMIR
The Office will check whether the request for registration of the licence complies with the formal conditions mentioned in paragraph 2.4 above (indication of the CTM number(s), the required information concerning the licensee, the representative of the licensee where applicable).
The validity of the licence agreement will not be examined.
Article 93(1) CTMR Rules 33, 76, 77 CTMIR
The Office will check whether the request for registration of the licence has been duly signed. Where the request is signed by the licensee’s representative, an authorisation may be required by the Office or, in the context of inter partes proceedings, by the other party to those proceedings. In this event, if no authorisation is submitted, the proceedings will continue as if no representative had been appointed. Where the request for registration of the licence is signed by the proprietor’s representative who has already been des ignated as the representative for the CTM in question, the requirements relating to signature and authorisations are fulfilled.
Articles 92(2), 93(1) CTMR
The examination will include whether the recordal applicant (i.e. the CTM proprietor or the licensee) is obliged to be represented before the Office (see paragraph 2.4.4 above).
Rule 33(3) CTMIR
The Office will inform the recordal applicant in writing of any deficiencies in the application. If the deficiencies are not remedied within the time limit fixed in that communication, which will normally be two months following the date of the notification, the Office will reject the request for registration of the licence.
Where the request has been made jointly by the CTM proprietor and the licensee, the Office will communicate with the CTM proprietor and send a copy to the licensee.
Where the licensee has also made and signed the request, it will not be al lowed to contest the existence or scope of the licence.
Where the request for registration of the licence is filed by the CTM proprietor alone, the Office will not inform the licensee of the recordal request. The examination of proof of the licence will be done ex officio. The Office will disregard any statements or allegations of the licensee regarding the existence or scope of the licence or its registration; the licensee cannot oppose the registration of a licence.
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Rule 33(3) CTMIR
If the request is filed by the licensee on the basis of a copy of the licence contract, and where the Office has reasonable doubts as to the veracity of the documents, it will write to the licensee inviting it to remove those doubts. The licensee will then have the burden of proving that the licence exists, that is, it has to convince the Office of the veracity of the documents and their contents. In such a case, the Office may, within the scope of its ex officio power of examination (Article 76(1) CTMR), invite the CTM proprietor to submit observations. If the proprietor claims that the documents are falsified, this will be enough for the Office to reject the registration of a licence unless the licensee produces a final Court order from an E U Member State in its favour. Where the doubts cannot be removed, the registration of the licence will be refused. In such a case, the procedure always remains ex parte even though the CTM proprietor is heard; it is not a party to the proceedings.
2.6.3 Examination of optional elements
Rule 34 CTMIR
Where it is requested that the licence be registered as one of the following:
• an exclusive licence, • a temporary licence, • a territorially limited licence, • a licence limited to certain goods or services, or • a sub-licence,
the Office will examine whether the particulars mentioned in paragraph 2.4 above are indicated.
Rule 34(1), (2) CTMIR
As concerns the indication ‘exclusive licence’, the Office will only accept this term and will not accept any other wordings. If ‘exclusive licence` is not expressly indicated, the Office will consider the licence to be non-exclusive.
Where the request for the registration indicates that it is for a licence limited to certain goods or services covered by the CTM, the Office will check whether the goods and services are properly grouped and are actually covered by the CTM.
Rule 34(1)(b) CTMIR
As concerns a sub-licence, the Office will check whether it has been granted by a licensee whose licence is already entered in the Register. The Office will refuse the registration of a s ub-licence when the main licence has not been entered in the Register. However, the Office will not check the validity of the request for the registration of a sub-licence as an exclusive licence when the main licence is not an exclusive licence nor will it examine whether the main licence contract excludes granting sub-licences.
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It is up to the licensor to pay attention not to conclude and t o register incompatible contracts and to cancel or modify recordals that are no longer valid. For example, if an exclusive licence has been registered without limitation as to the goods and the territory, and the registration of another exclusive licence is requested, the Office will register that second licence, even though both licenses seem incompatible at first sight. It is to be assumed that the second licence contract is compatible with the first licence contract either from the very beginning (and the recordal is simply not precise as to the territory or the goods) or following a change in the contractual situation which was not communicated to the Register for Community trade marks.
Parties are, however, encouraged to update all register information regularly and swiftly by means of the cancellation or modification of existing licences (see paragraph 3 below).
Article 22(1) CTMR Rules 33(3), 34( CTMIR
If the particulars mentioned in paragraph 2.5 are missing, the Office will invite the recordal applicant for registration of the licence to submit the supplementary information. If the recordal applicant does not reply to that communication, the Office will not take into account the abovementioned indications and will register the licence without mentioning them. The recordal applicant will be notified of this by an appealable decision.
2.7 Registration procedure and publications
Rule 33(4) CTMIR
As concerns CTMAs, the licence will be mentioned in the files kept by the Office for the Community trade mark application concerned.
Rule 84(3)(j), Rule 85(2) CTMIR
When the mark is registered, the licence will be published in the Community Trade Marks Bulletin and mentioned in the Community Trade Marks Register.
Rule 84(5) CTMIR
The Office will notify both parties of the entry of the licence in the files kept by the Office. Where both parties have named a common representative, this representative will be notified.
Article 22(5) CTMR Rule 84(3)(j), Rule 85(2) CTMIR
As concerns CTMs, the Office will enter the licence in the Community Trade Marks Register and publish it in the Community Trade Marks Bulletin.
Where applicable, the entry in the Register will mention that the licence is:
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• an exclusive licence, • a temporary licence, • a territorially limited licence, • a sub-licence, or • a licence limited to certain goods or services covered by the CTM.
Only these bare facts will be mentioned. The following details will not be published:
• the period of validity of a temporary licence, • the territory covered by a territorially limited contract, • the goods and services covered by a partial licence.
Access to this information may be obtained through inspection of files (see the Guidelines, Part E, Register Operations, Section 5, Inspection of Files).
Licences are published in part C.4. of the Bulletin.
Rule 84(5) CTMIR
The Office will inform the recordal applicant of the registration of the licence. When the request for registration of the licence was filed by the licensee, the Office will also inform the CTM proprietor of the registration.
3 Cancellation or Modification of a Licence for a CTM or a CTMA
Rule 35(1) CTMIR
The registration of a l icence will be c ancelled or modified on t he request of an interested party, that is, the applicant or proprietor of the CTM or the registered licensee.
The Office will refuse the cancellation, transfer and/or modification of a licence or a sub-licence when the main licence has not been entered in the Register.
3.1 Competence, languages, presentation of the request
Article 133 CTMR Rule 35(3), (6), (7) CTMIR
Paragraphs 2.1 and 2.2 above are applicable.
It is strongly recommended that the request for cancellation of a licence be presented on the Recordal Application form. This form is available free of charge in the official languages of the European Union. It can be downloaded from OHIM’s website. Parties to the proceedings may also use the WIPO Model International Form No 1, Request for Amendment/Cancellation of a Li cense, which can be do wnloaded at https://www.wipo.int/export/sites/www/about-ip/en/development_iplaw/pdf/pub835a.pdf, or a form with a similar content and format.
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3.2 Person making the request
Rule 35(1) CTMIR
The request for the cancellation or modification of the registration of a licence may be filed by:
a) the applicant or proprietor of the CTM and the licensee jointly,
b) the applicant or proprietor of the CTM, or
c) the registered licensee.
3.2.1 Cancellation of a licence
Rule 35(4) CTMIR
In the case of a joint request filed by the CTM applicant or proprietor and the licensee, or of a request filed by the licensee, no proof for the cancellation of the licence is required since this implies a s tatement from the licensee that it consents to the cancellation of the registration of the licence. When the request for cancellation is filed by the CTM applicant or proprietor, alone, the request must be ac companied by evidence establishing that the registered licence no longer exists or by a dec laration from the licensee to the effect that it consents to the cancellation.
Where the registered licensee makes the request for cancellation alone, the CTM applicant or proprietor will not be informed of this request. Any observations filed by the proprietor will be forwarded to the licensee but will not preclude the cancellation of the licence. Paragraph 2.4.3.1 applies mutatis mutandis.
If the CTM proprietor alleges fraud on the part of the licensee, it must provide a final Court order to this effect. In fact it is not up to the Office to carry out any investigation in that respect.
Where several licences have been r equested simultaneously, it is possible to cancel one of these licences individually. In such a case a new entry number will be created in respect of the cancelled licence.
The entry in the Register of licences which are limited in time, that is, temporary licences, does not automatically expire and must instead be cancelled from the Register.
3.2.2 Modification of a licence
Rule 35(6) CTMIR
In the case of a joint request from the CTM applicant or proprietor and the licensee, no further proof for the amendment of the licence is required.
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If the request is made by the CTM applicant or proprietor, proof of the amendment of the licence is required only where the amendment for which entry in the Register is sought is of such a nature that it would diminish the rights of the registered licensee under the licence. This would be t he case, for example, where the licensee’s name were to change, where an exclusive licence were to become a non-exclusive licence, or where the licence were to become restricted regarding its territorial scope, the period of time for which it is granted, or the goods or services to which it applies.
If the request is made by the registered licensee, proof of the amendment of the licence is required only where the amendment for which entry in the Register is sought is of such a nat ure that it would extend the rights of the registered licensee under the licence. This would be the case, for example, where a non-exclusive licence were to become an exclusive licence, or where any registered restrictions of the licence as to its territorial scope, to the period of time for which it is granted, or to the goods or services to which it applies, were to be cancelled fully or in part.
If proof of the amendment of the licence is necessary, it is sufficient if any of the documents referred to above in paragraph 2.4.3.4 are submitted, subject to the following requirements.
• The written agreement must be signed by the other party to the licence contract and must relate to the registration of the amendment of the licence as requested.
• The Request for Amendment/Cancellation of a License must indicate how the licence has been amended.
• The copy or extract of the licence agreement must be of the licence as amended.
3.3 Contents of the request
Rules 26, 35 CTMIR
Paragraph 2.4 applies, save that the data concerning the licensee need not be indicated except in the case of a modification of the registered licensee’s name.
Paragraph 2.5 applies if a modification of the scope of the licence is requested, for example, if a l icence becomes a temporary licence or if the geographical scope of a licence is changed.
3.4 Fees
3.4.1 Cancellation of a licence
Article 162(2) CTMR Rule 35(3) CTMIR Article 2(24) CTMFR
The request for the cancellation of the registration of a licence is not deemed to have been filed until the required fee is paid, which amounts to EUR 200 for each CTM for which the cancellation is requested. Where several cancellations are requested
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simultaneously or within the same request, and where the respective CTM applicant or proprietor and the licensee are the same in each case, the fee is limited to a maximum of EUR 1 000.
Once the corresponding fee has been paid, the fee will not be reimbursed if the request is refused or withdrawn.
3.4.2 Modification of a licence
Rule 35(6) CTMIR
The modification of the registration of a licence is not subject to a fee.
3.5 Examination of the request
3.5.1 Fees
Rule 35(3) CTMIR
Where the required fee for the request for the cancellation of a licence has not been received, the Office will notify the recordal applicant that the request is deemed not to have been filed.
3.5.2 Examination by the Office
Rule 35(2), (4) CTMIR
As for the mandatory elements of the request, paragraph 2.6.2 applies mutatis mutandis, including in respect of proof of the licence, to the extent that such proof is required.
The Office will notify the recordal applicant of any deficiency, setting a time limit of two months. If the deficiencies are not remedied, the Office will refuse the request for cancellation or modification.
Rules 35(6), 84(5) CTMIR
Paragraph 2.6.3 applies to the extent that the modification of the licence would affect its nature or its limitation to a part of the goods and services covered by the CTM/CTMA.
The registration of the cancellation or modification of the licence will be communicated to the person who made the request; if the request was filed by the licensee, the CTMA applicant or CTM proprietor will receive a copy of that communication.
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3.6 Registration and publication
Rule 84(3)(s), Rule 85(2) CTMIR
In the case of a registered CTM, the creation, cancellation or modification will be entered in the Register of Community Trade Marks and publ ished in the Community Trade Marks Bulletin under C.4.
In the case of a CTM application, the cancellation or modification of the licence will be mentioned in the files of the CTM application concerned. When the registration of the CTM is published, no publications will be made in respect of licences that have been cancelled, and in the case of the modification of the licence, the data as modified will be published under C.4.
4 Transfer of a Licence for a CTM or CTMA
4.1 Definition of the transfer of a licence
Article 22(5) CTMR
A licence concerning a CTMA or a CTM may be transferred. The transfer of a licence is different from a sub-licence insofar as the former licensee loses all its rights under the licence, and will be replaced by a new licensee, whereas in the case of a sub-licence, the main licence remains in force. Likewise, the transfer of a l icence is different to a change of name of the owner where no c hange of ownership is implied (see the Guidelines, Part E, Section 3, CTMs as Objects of Property, Chapter 1, Transfer).
4.2 Applicable rules
Rule 33(1) CTMIR
The procedure for the registration of a transfer of a l icence follows the same rules as the registration of a licence set out in paragraphs 2 and 3 above.
Rule 33(1), (4) CTMIR Article 2(23)(b) CTMFR
The transfer of a l icence is subject to the payment of a fee. Paragraph 2.3 above applies mutatis mutandis.
To the extent that a declaration or a signature of the CTMA applicant or CTM proprietor is required in accordance with the rules, its place shall be t aken by a declaration or signature of the registered licensee (the former licensee).
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5 Registration of Licences for Registered Community Designs
Articles 27, 32, 33, Article 51(4) CDR Articles 24, 25, 26, Article 27(2) CDIR Annex Nos 18, 19 CDFR
The legal provisions contained in the CDR, CDIR and CDFR for licences correspond to the respective provisions in the CTMR, CTMIR and CTMFR.
Therefore, both the legal principles and the procedure for the registration, cancellation or amendment of trade mark licences apply mutatis mutandis to Community designs, save for the following exceptions and specificities.
5.1 Registered Community designs
There is no use requirement in the Community design law, so that the issue of whether use by a licensee is use with the consent of the right holder does not arise.
The CDR and C DIR require the indication of the products in which the design is intended to be incorporated or applied.
A partial licence for only some products in which the design is intended to be incorporated or applied is not possible. It is not possible to register a licence for a registered Community design for only part of the products it covers.
Any such limitations of the scope of the licence will be disregarded by the Office, and the licence will be registered as if the restriction were not present.
5.2 Multiple applications for registered Community designs
Article 37 CDR Article 24(1) CDIR
An application for a registered Community design may be in the form of a multiple application containing several designs.
For the purposes of the legal effect of licences, as well as of the procedure for registering licences, the individual designs contained in a multiple application shall be dealt with as if they were separate applications, and the same continues to apply after registration of the designs contained in the multiple application.
In other words, each design contained in a multiple application may be l icensed independently of the others.
The optional indications as to the kind of licence and t he procedure for their examination referred to above in paragraphs 2.5 and 2.6.1 (with the exception of a licence limited to some products, which is not possible) apply to each of the individual designs contained in a multiple application separately and independently.
Licences
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Annex Nos 18, 19 CDFR
The fee of EUR 200 for the registration of a l icence, the transfer of a l icence or the cancellation of a licence applies per design and not per multiple application. The same is true for the ceiling of EUR 1 000 if multiple requests are submitted.
Example 1: Out of a multiple application for 10 designs, 6 designs are licensed, in favour of the same licensee. The fee is EUR 1 000 provided that one single request for registration of these 6 licences is submitted or several requests are submitted on the same day. The request may indicate that for three out of these six designs the licence is an exclusive licence, without affecting the fees to be paid.
Example 2: Out of a multiple application for 10 designs, 5 designs are licensed in favour of the same licensee. A licence is also granted for another design not contained in that multiple application. The fee is EUR 1 000 provided that
• one single request for registration of these 6 l icences is submitted or several requests are submitted on the same day, and
• the holder of the Community design and the licensee are the same in all 6 cases.
6 Registration of Licences for International Trade Marks
The Madrid System allows for the recording of licences against an international registration. All requests for recording a l icence should be s ubmitted on form MM13 either directly to the International Bureau by the recorded holder or through the Office of the recorded holder or through the Office of a contracting party in respect of which the licence is granted or through the Office of the licensee. The request cannot be submitted directly to the International Bureau by the licensee. The Office’s own Recordal Application form should not be used.
Detailed information on the recording of licences can be found in Sections B.II.93.01 to 99.04 of the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (www.wipo.int/madrid/en/guide/). For further information on international trade marks, see the Guidelines, Part M.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 3
CTMs AS OBJECTS OF PROPERTY
CHAPTER 3
RIGHTS IN REM
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Table of Contents
2 Requirements for a Request for the Registration of a Right in Rem..... 5 2.1 Application form and requests for more than one right in rem...............5 2.2 Languages ..................................................................................................5 2.3 Fees.............................................................................................................6 2.4 Applicants and mandatory content of the application.............................6
2.4.1 Applicants ....................................................................................................... 6 2.4.2 Mandatory indications concerning the CTM and the pledgee ........................ 6 2.4.3 Requirements concerning the person who submits the request –
signature, proof of the right in rem, representation ........................................ 7 2.4.3.1 Request submitted by the CTM proprietor alone .........................................7 2.4.3.2 Request submitted jointly by the CTM proprietor and the pledgee..............8 2.4.3.3 Request submitted by the pledgee alone ....................................................8 2.4.3.4 Proof of the right in rem...............................................................................8
2.4.4 Representation ............................................................................................... 9
2.5 Examination of the request for registration..............................................9 2.5.1 Fees................................................................................................................ 9 2.5.2 Examination of the mandatory formalities .................................................... 10
2.6 Registration procedure and publications ...............................................11
3 Procedure for the Cancellation or Modification of the Registration of a Right in Rem ......................................................................................... 12 3.1 Competence, languages, submission of the request.............................12 3.2 Person submitting the request ................................................................12
3.2.1 Cancellation of the registration of a right in rem........................................... 12 3.2.2 Modification of the registration of a right in rem ........................................... 13
3.3 Contents of the request ...........................................................................14 3.4 Fees...........................................................................................................14
3.4.1 Cancellation of the registration of a right in rem........................................... 14 3.4.2 Modification of the registration of a right in rem ........................................... 14
3.5 Examination of the request......................................................................14 3.5.1 Fees.............................................................................................................. 14 3.5.2 Examination by the Office............................................................................. 14
3.6 Registration and publication ...................................................................15
4 Procedure for the Transfer of a Right in Rem ....................................... 15 4.1 Provision for the transfer of a right in rem .............................................15 4.2 Applicable rules........................................................................................15
5 Rights in Rem for Registered Community Designs.............................. 16 5.1 Multiple applications for registered Community designs...................... 16
6 Rights in Rem for International Trade Marks ........................................ 17
Rights in Rem
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1 Introduction
Article 19 CTMR Rules 33, 35 CTMIR Article 24 CDR
Both registered Community trade marks (CTMs) and Community trade mark applications (CTMAs) may be the subject of rights in rem.
Both registered Community designs (RCDs) and registered Community design applications may be the subject of rights in rem.
Paragraphs 1 to 4 of this chapter deal with rights in rem concerning CTMs and CTMAs. The provisions in the CDR and CDIR dealing with rights in rem concerning designs are almost identical to the equivalent provisions of the CTMR and C TMIR respectively. Therefore, the following applies mutatis mutandis to Community designs. Procedures specific to Community designs are detailed in paragraph 5 below. Procedures specific to international trade marks are detailed in paragraph 6 below.
A ‘right in rem’ or ‘real right’ is a limited property right which is an absolute right. Rights in rem refer to a legal action directed toward property, rather than toward a particular person, allowing the owner of the right the opportunity to recover, possess or enjoy a specific object. These rights may apply to trade marks or designs. They may consist, inter alia, in use rights, usufruct or pledges. ‘In rem’ is different from ‘in personam,’ which is directed toward a particular person.
The most common rights in rem for trade marks or designs are pledges or securities. They secure the repayment of a debt of the proprietor of the trade mark or design (i.e. the debtor) in such a way that, where it cannot repay the debt, the creditor (i.e. the owner of the pledge or security) may receive repayment of the debt by, for example, selling the trade mark or design. Other examples are DE: Pfand, Hypothek; EN: Guarantees, Warranties, Bails and Sureties; ES: Prenda, Hipoteca; FR: Nantissement, Gage, Hypothèque, Garantie, Caution; IT: Pegno, Ipoteca.
There are two types of right in rem that the applicant can ask to be noted in the file or entered in the Register:
• rights in rem that serve the purpose of guaranteeing securities (pledge, charge, etc.)
• rights in rem that do not serve as a guarantee (usufruct).
Article 16 CTMR
The CTMR does not establish unified and complete provisions applicable to rights in rem for CTMs or CTMAs. Rather, Article 16 CTMR refers to the law of a Member State regarding the acquisition, validity and effects of the CTM as an object of property. To this end, a r ight in rem for a CTM is, in its entirety and f or the whole territory of the Community, assimilated to a r ight in rem for a trade mark registered in the Member State in which the CTM proprietor or applicant has its seat or its domicile, or, if this is not the case, to a right in rem for a trade mark registered in the Member State in which the proprietor has an establishment, or if this is not the case, to a right in rem for a
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trade mark registered in Spain (Member State in which the seat of the Office is situated).
This, however, applies only to the extent that Articles 17 to 24 CTMR do not provide otherwise.
Article 16 CTMR is limited to the effects of a right in rem as an object of property, and does not extend to contract law. Article 16 CTMR does not govern the applicable law, or the validity, of a r ight in rem contract, which means that the freedom of the contracting parties to submit the right in rem contract to a given national law is not affected by the CTMR.
Articles 19(2), 23(1) CTMR
It is not compulsory to register rights in rem, nor is registration a condition for considering the use of a trade mark by a pledgee under the terms of the right in rem contract to have been made with the consent of the proprietor pursuant to Article 15(2) CTMR,. However, such a registration has particular advantages.
a) In view of the provision of Article 23(1) CTMR, vis-à-vis third parties who might have acquired or have entered in the Register rights in the trade mark which are incompatible with the registered right in rem, the pledgee may avail itself of the rights conferred by this right in rem only:
• if the right in rem was entered in the Register of Community Trade Marks, or
• in the absence of registration of the right in rem, if the third party had acquired its rights after the date of the acquisition of the rights in rem knowing of the existence of the right in rem.
b) In the event that a right in rem for a C ommunity trade mark is entered in the Register, the surrender of that mark by its proprietor will only be entered in the Register if the proprietor establishes that it has informed the pledgee of its intention to surrender.
The pledgee of a right in rem which is registered has, therefore, the right to be informed in advance by the trade mark’s proprietor of its intention to surrender the trade mark.
c) In the event that a right in rem for a C ommunity trade mark is entered in the Register, the Office will notify the pledgee at least six months before the expiry of the registration that the registration is approaching expiry. The Office will also notify the pledgee of any loss of rights and of the expiry of the registration, where applicable.
d) Recording rights in rem is important for maintaining the veracity of the Register, particularly in the event of inter partes proceedings.
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2 Requirements for a Request for the Registration of a Right in Rem
Article 19(2) CTMR Rule 33, Rule 84(3)(h) CTMIR
Both CTMAs and CTMs may be the subject of the registration of a right in rem.
The application for registration of a r ight in rem must comply with the following conditions.
2.1 Application form and requests for more than one right in rem
Rule 95(a) and (b) CTMIR
It is strongly recommended that the request for registration of a right in rem for a CTM be submitted on the Recordal Application form. This form is available free of charge in the official languages of the European Union. It can be downloaded from OHIM’s website.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 2.2 below.
Rules 31(7), 33(1) CTMIR
A single request for the registration of a right in rem for two or more registered CTMs or CTMAs may be submitted only if the respective registered proprietor and pledgee are the same in each case.
2.2 Languages
Rule 95(a) CTMIR
The application for the registration of a right in rem for a CTMA may be submitted in the first or second language of the CTM application.
Rule 95(b) CTMIR
The application for the registration of a right in rem for a CTM must be submitted in one of the five languages of the Office, namely, English, French, German, Italian or Spanish.
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2.3 Fees
Article 162(2)(c) and (d) CTMR Rule 33(1) and (4) CTMIR Article 2(23) CTMFR
The application for the registration of a r ight in rem is considered not to have been submitted until the fee is paid. The fee is EUR 200 for each Community trade mark for which the registration of a right in rem is requested.
However, where several registrations of rights in rem have been requested in a single request and the registered proprietor and the pledgee are the same in all cases, the fee is limited to a maximum of EUR 1 000.
The same maximum amount applies where several registrations of rights in rem are applied for at the same time, provided that they could have been f iled in a single request and where the registered proprietor and the pledgee are the same in all cases.
Once the corresponding fee is paid, the fee will not be reimbursed if the application for registration of the right in rem is refused or withdrawn (file classified).
2.4 Applicants and mandatory content of the application
2.4.1 Applicants
Article 19(2) CTMR
The registration of a right in rem may be requested by:
a) the proprietor of the CTM, or
b) the proprietor of the CTM jointly with the pledgee, or
c) the pledgee.
The formal conditions with which the request must comply depend on who submits the request. It is recommended that the first or the second of these options be used, since these allow for a speedier and smoother treatment of the request for registration of the right in rem.
2.4.2 Mandatory indications concerning the CTM and the pledgee
Rule 31, Rule 33(1) CTMIR
The request for registration of a right in rem must contain the following information.
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Rule 31(1)(a), Rule 33(1) CTMIR
a) The registration number of the CTM concerned. If the request relates to several CTMs each of the numbers must be indicated.
Rules 1(1)(b), 31(1)(b), Rule 33(1) CTMIR
b) The pledgee’s name, address and nationality and the State in which it is domiciled or has its seat or an establishment.
Rule 1(1)(e), Rules 31(2), 33(1) CTMIR
c) If the pledgee designates a representative, the representative’s name and business address must be i ndicated; the indication of the address may be replaced by the indication of the ID number allocated by the Office.
2.4.3 Requirements concerning the person who submits the request – signature, proof of the right in rem, representation
Rule 79, Rule 82(3) CTMIR
The requirements concerning signature, proof of the right in rem and r epresentation vary depending on the person who submits the request. Where the requirement of a signature is referred to, pursuant to Rule 79 and Rule 82(3) CTMIR, in electronic communications, the indication of the sender’s name will be deemed equivalent to the signature.
2.4.3.1 Request submitted by the CTM proprietor alone
Rule 1(1)(b), Rule 33(1) CTMIR
When a request is submitted on behalf of the CTM proprietor alone, it must be signed by the CTM proprietor.
No proof of the right in rem is necessary.
The Office will not inform the pledgee that the registration of the right in rem has been requested. It will, however, inform the pledgee when the right in rem is recorded in the Register.
Where the pledgee files a statement with the Office in which it opposes the registration of the right in rem, the Office will forward the statement to the CTM proprietor for information purposes only. The Office will not take any further action on s uch a statement. Following the registration of the right in rem, any pledgee who disagrees with the registration of the right in rem may request the cancellation or modification of the registration of the right in rem (see paragraph 3 below).
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The Office will not take into account whether the parties have agreed to register a right in rem contract at the Office. Any dispute on whether or not and in what manner the right in rem should be registered is a matter that must be resolved between the parties concerned under the relevant national law (Article 16 CTMR).
2.4.3.2 Request submitted jointly by the CTM proprietor and the pledgee
When the request is submitted jointly by the CTM proprietor and the pledgee, it must be signed by both parties.
In this case, the signature of both parties constitutes proof of the right in rem.
Where there is a formal deficiency regarding the signature or the representative of the pledgee, the request will still be ac cepted as long as it would have also been acceptable if it had been submitted by the CTM proprietor alone.
The same applies where there is a deficiency regarding the signature or representative of the CTM proprietor but where the request would have been acceptable if it had been submitted by the pledgee alone.
2.4.3.3 Request submitted by the pledgee alone
The request may also be submitted by the pledgee alone. In this case, it must be signed by the pledgee.
In addition, proof of the right in rem must be submitted.
2.4.3.4 Proof of the right in rem
There is sufficient proof of the right in rem if the request for registration of the right in rem is accompanied by any of the following evidence.
• A declaration, signed by the CTM proprietor, that it agrees to the registration of the right in rem.
In accordance with Rule 31(5)(a) CTMIR, it is also considered sufficient proof if the request for registration of the right in rem is signed by both parties. This case has already been dealt with under paragraph 2.4.3.2 above.
• The right in rem contract, or an extract therefrom, indicating the CTM at issue and the parties, and bearing their signatures.
It suffices if the right in rem agreement is submitted. In many instances, the parties to the right in rem contract will not wish to disclose all the details of the contract, which may contain confidential information about the terms and conditions of the pledge. In these cases it suffices if only a part or an extract of the right in rem agreement is submitted, as long as it identifies the parties to the right in rem agreement and the CTM that is subject to a right in rem, and bears the signatures of both parties. All other elements may be omitted or blacked out.
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• An uncertified statement of a right in rem, signed by both the CTM proprietor and the pledgee.
Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient. The original or photocopy does not need to be aut henticated or legalised unless the Office has reasonable doubts as to the veracity of the documents.
Rule 95(a) and (b), Rule 96(2) CTMIR
The evidence of the right in rem must be:
a) in the language of the Office which has become the language of the proceedings for the registration of the right in rem, see paragraph 2.2 above;
b) in any official language of the Community other than the language of the proceedings; in this case the Office may require a t ranslation of the document into a language of the Office to be filed within a period specified by the Office.
Where the supporting documents are not submitted in either an official language of the European Union or in the language of the proceedings, the Office may require a translation into the language of the proceedings or, at the choice of the party requesting the registration of the right in rem, in any language of the Office. The Office will set a time limit of two months from the date of notification of that communication. If the translation is not submitted within that time limit, the document will not be taken into account and will be deemed not to have been submitted.
2.4.4 Representation
Articles 92(2), 93(1) CTMR
The general rules on representation apply (see the Guidelines, Part A, General Rules, Section 5, Professional Representation).
2.5 Examination of the request for registration
2.5.1 Fees
Rule 33(2) CTMIR
Where the required fee has not been received, the Office will notify the recordal applicant that the request is deemed not to have been filed because the relevant fee has not been paid. However, a new request may be submitted at any time providing the correct fee is paid from the outset.
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2.5.2 Examination of the mandatory formalities
Rule 33(3) CTMIR
The Office will check whether the request for registration of the right in rem complies with the formal conditions mentioned in paragraph 2.4 above (indication of the CTM number(s), the required information concerning the pledgee, the representative of the pledgee where applicable).
The validity of the right in rem agreement will not be examined.
Article 93(1) CTMR Rules 33, 76, 77 CTMIR
The Office will check whether the request for registration of the right in rem has been duly signed. Where the request is signed by the pledgee’s representative, an authorisation may be r equired by the Office or, in the context of inter partes proceedings, by the other party to those proceedings. In this event, if no authorisation is submitted, the proceedings will continue as if no representative had been appointed. Where the request for registration of the right in rem is signed by the proprietor’s representative who has already been designated as the representative for the CTM in question, the requirements relating to signature and authorisations are fulfilled.
Articles 92(2), 93(1) CTMR
The examination will include whether the recordal applicant (i.e. the CTM proprietor or the pledgee) is obliged to be r epresented before the Office (see paragraph 2.4.4 above).
Rule 33(3) CTMIR
The Office will inform the recordal applicant in writing of any deficiencies in the application. If the deficiencies are not remedied within the time limit set in that communication, which will normally be two months following the date of the notification, the Office will reject the request for registration of the right in rem.
Where the request has been submitted jointly by the CTM proprietor and the pledgee, the Office will communicate with the CTM proprietor and send a copy to the pledgee.
Where the pledgee has also submitted and signed the request, it will not be allowed to contest the existence or scope of the right in rem agreement.
Where the request for registration of the right in rem is submitted by the CTM proprietor alone, the Office will not inform the pledgee. The examination of evidence of the right in rem will be done ex officio. The Office will disregard any statements or allegations of the pledgee regarding the existence or scope of the right in rem or its registration; the pledgee cannot oppose the registration of a right in rem.
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Rule 33(3) CTMIR
If the request is filed by the pledgee on the basis of a copy of the right in rem agreement, and w here the Office has reasonable doubts as to the veracity of the documents, it will write to the pledgee inviting it to remove those doubts. The pledgee will then have the burden of proving that the right in rem exists, that is, it has to convince the Office of the veracity of the documents. In such a case, the Office may, within the scope of its ex officio power of examination (Article 76(1) CTMR), invite the CTM proprietor to submit observations. If the proprietor claims that the documents are falsified, this will be eno ugh for the Office to reject the registration of a r ight in rem unless the pledgee produces a Court order from an EU Member State in its favour. In any case, if the doubts cannot be removed, the registration of the right in rem will be refused. In such a case, the procedure always remains ex parte even though the CTM proprietor is heard; it is not a party to the proceedings.
2.6 Registration procedure and publications
Rule 33(4) CTMIR
The right in rem for CTMAs will be m entioned in the files kept by the Office for the Community trade mark application concerned.
Rule 84(3)(h), Rule 85(2) CTMIR
When the mark is registered, the right in rem will be published in the Community Trade Marks Bulletin and entered in the Community Trade Mark Register.
Rule 84(5) CTMIR
The Office will notify the recordal applicant of the entry of the right in rem in the files kept by the Office. Where applicable, the CTM applicant will also be notified.
Article 22(5) CTMR Rule 84(3)(h), Rule 85(2) CTMIR
For CTMs, the Office will enter the right in rem in the Community Trade Mark Register and publish it in the Community Trade Marks Bulletin.
Access to this information may be obtained through inspection of files (see the Guidelines, Part E, Register Operations, Section 5, Inspection of Files).
Rights in rem are published in Part C.5. of the Bulletin.
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Rule 84(5) CTMIR
The Office will inform the recordal applicant of the registration of the right in rem. When the request for registration of the right in rem was filed by the pledgee, the Office will also inform the CTM proprietor of the registration.
3 Procedure for the Cancellation or Modification of the Registration of a Right in Rem
Rule 35(1) CTMIR
The registration of a right in rem will be cancelled or modified at the request of an interested party, that is, the applicant or proprietor of the CTM or the registered pledgee.
3.1 Competence, languages, submission of the request
Article 133 CTMR Rule 35(3), (6) and (7) CTMIR
Paragraphs 2.1 and 2.2 above apply.
There is no Office form for registering the cancellation or modification of a right in rem.
3.2 Person submitting the request
Rule 35(1) CTMIR
The request for the cancellation or modification of the registration of a right in rem may be submitted by:
a) the CTM applicant/proprietor and the pledgee jointly,
b) the CTM applicant/proprietor, or
c) the registered pledgee.
3.2.1 Cancellation of the registration of a right in rem
Rule 35(4) CTMIR
If the CTM applicant/proprietor and the pledgee submit a joint request or if the pledgee alone submits a request, no proof of the cancellation of the registration of the right in rem is required since the application itself implies a s tatement by the pledgee that it consents to the cancellation of the registration of the right in rem. When the request for
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cancellation is submitted by the CTM applicant/proprietor, the request must be accompanied by evidence establishing that the registered right in rem no longer exists or by a declaration by the pledgee that it consents to the cancellation.
Where the registered pledgee submits the request for cancellation by itself, the CTM applicant/proprietor will not be informed of this request. Any observations filed by the proprietor will be forwarded to the pledgee but will not preclude the cancellation of the registration of the right in rem. Paragraph 2.4.3.1 above applies mutatis mutandis.
If the CTM proprietor alleges fraud on the part of the pledgee, it must provide a Court order to this effect. It is not up to the Office to carry out any investigation into such a claim.
Where the registration of several rights in rem has been requested simultaneously, it is possible to cancel one o f these registrations individually. In such an event, a new recordal number will be created for the cancelled right in rem.
3.2.2 Modification of the registration of a right in rem
Rule 35(6) CTMIR
If the CTM applicant/proprietor and the pledgee submit a joint request, no further proof for the modification of the registration of the right in rem is required.
If the request is submitted by the CTM applicant/proprietor, proof of the modification of the registration of the right in rem is required only where the modification is of such a nature that it would diminish the rights of the registered pledgee under the right in rem. This would be the case, for example, of a change of the pledgee’s name.
If the request is submitted by the registered pledgee, proof of the modification of the registration of the right in rem is required only where the modification, is of such a nature that it would extend the rights of the registered pledgee under the right in rem.
If proof of the modification of the registration of the right in rem is necessary, it is sufficient if any of the documents referred to above under paragraph 2.4.3.4 are submitted, subject to the following requirements.
• The written agreement must be s igned by the other party to the right in rem agreement and must relate to the registration of the modification of the right in rem as requested.
• The request for modification/cancellation of the registration of a right in rem must show the right in rem in its amended form.
• The copy or extract of the right in rem agreement must show the right in rem in its amended form.
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3.3 Contents of the request
Rules 26, 35 CTMIR
Paragraph 2.4 above applies, except that the data concerning the pledgee need not be indicated except in the event of a modification of the registered pledgee’s name.
3.4 Fees
3.4.1 Cancellation of the registration of a right in rem
Article 162(2) CTMR Rule 35(3) CTMIR Article 2(24) CTMFR
The request for the cancellation of the registration of a right in rem is not deemed to have been f iled until the required fee of EUR 200 per cancellation is paid. Where several cancellations are requested simultaneously or within the same request, and where the CTM applicant/proprietor and the pledgee are the same in each case, the fee is limited to a maximum of EUR 1 000.
Once the corresponding fee has been paid, the fee will not be reimbursed if the request is refused or withdrawn.
3.4.2 Modification of the registration of a right in rem
Rule 35(6) CTMIR
The modification of the registration of a right in rem is not subject to a fee.
3.5 Examination of the request
3.5.1 Fees
Rule 35(3) CTMIR
Where the required fee for the request for the cancellation of the registration of a right in rem has not been r eceived, the Office will notify the recordal applicant that the request is deemed not to have been filed.
3.5.2 Examination by the Office
Rule 35(2) and (4) CTMIR
Paragraph 2.5.2 applies mutatis mutandis to the mandatory elements of the request, even for proof of the right in rem, to the extent that such proof is required.
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The Office will notify the recordal applicant of any deficiency, setting a time limit of two months. If the deficiencies are not remedied, the Office will refuse the request for registering the cancellation or modification.
Rules 35(6), 84(5) CTMIR
The registration of the cancellation or modification of the right in rem will be communicated to the person who submitted the request; if the request was submitted by the pledgee, the CTM applicant/proprietor will receive a copy of the communication.
3.6 Registration and publication
Rule 84(3)(s), Rule 85(2) CTMIR For a registered CTM, the creation, cancellation or modification of a registration of a right in rem will be entered in the Register of Community Trade Marks and published in the Community Trade Marks Bulletin under C.5.
For a CTM application, the cancellation or modification of the right in rem will be mentioned in the files of the CTM application concerned. When the registration of the CTM is published, no publications will be made for rights in rem that have been cancelled, and if a right in rem has been modified, the data as modified will be published under C.5.
4 Procedure for the Transfer of a Right in Rem
4.1 Provision for the transfer of a right in rem
Rule 33(1) CTMIR
A right in rem may be transferred.
4.2 Applicable rules
Rule 33(1) CTMIR
The procedure for the registration of a transfer of a right in rem follows the same rules as the registration of a right in rem set out in paragraph 2 above.
Rule 33(1) and (4) CTMIR Article 2(23)(b) CTMFR
The transfer of a right in rem is subject to the payment of a fee. Paragraph 2.3 above applies mutatis mutandis.
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To the extent that a declaration or a signature of the CTM applicant/proprietor is required in accordance with the rules, it must be replaced by a declaration or signature of the registered pledgee (the former pledgee).
5 Rights in Rem for Registered Community Designs
Articles 27, 29, and 33, Article 51(4) CDR Articles 24 and 26, Article 27(2) CDIR Annex (18) and (19) CDFR
The legal provisions contained in the CDR, CDIR and CDFR in respect of rights in rem correspond to the respective provisions in the CTMR, CTMIR and CTMFR.
Therefore, both the legal principles and t he procedure in respect of the registration, cancellation or modification of trade mark rights in rem apply mutatis mutandis to Community designs, except for the following specific procedures.
5.1 Multiple applications for registered Community designs
Article 37 CDR Article 24(1) CDIR
An application for a registered Community design may be in the form of a multiple application, applying for several designs.
For the purposes of the legal effect of rights in rem, as well as of the procedure for registering rights in rem, individual designs contained in a multiple application will be dealt with as if they were separate applications, and the same continues to apply after registration of the designs contained in the multiple application.
In other words, each design contained in a multiple application may be pl edged independently of the others.
Annex (18) and (19) CDFR
The fee of EUR 200 for the registration of a right in rem or the cancellation of a right in rem applies per design and not per multiple application. The same is true for the ceiling of EUR 1 000 if multiple requests are submitted.
Example 1
Out of a multiple application for 10 des igns, 6 designs are pledged, in favour of the same pledgee. The fee is EUR 1 000 provided that either a single request for registration of these 6 rights in rem is submitted or several requests are submitted on the same day.
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Example 2
Out of a multiple application for 10 des igns, 5 designs are pledged, in favour of the same pledgee. The registration for a right in rem is also requested for another design not contained in that multiple application. The fee is EUR 1 000 Euro provided that:
• either a single request for registration of these 6 rights in rem is submitted or several requests are submitted on the same day, and
• the holder of the Community design and the pledgee are the same in all 6 cases.
6 Rights in Rem for International Trade Marks
The Madrid System allows for the recording of rights in rem against an international registration (see Rule 20 Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and t he Protocol Relating to that Agreement). For the convenience of the users, the MM19 form is available for requesting that a restriction of the holder’s right of disposal be entered in the International Register. The use of this form is strongly recommended to avoid irregularities. Requests should be submitted either directly to the International Bureau by the holder or to the national IP Office of the holder or to the Office of a contracting party to whom the right in rem is granted or to the Office of the pledgee. The request cannot be submitted directly to the International Bureau by the pledgee. OHIM’s own Recordal Application form should not be used.
Detailed information on the recording of rights in rem can be found in Part B, Chapter II, paragraphs 92.01 to 92.04 of the Guide to the International Registration of Marks under the Madrid Agreement and t he Madrid Protocol (www.wipo.int/madrid/en/guide). For further information on international trade marks, see the Guidelines Part M, International Marks.
Levy of Execution
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 3
CTMs AS OBJECTS OF PROPERTY
CHAPTER 4
LEVY OF EXECUTION
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Table of Contents
1 Introduction................................................................................................ 3
2 Requirements for a Request for the Registration of a Levy of Execution ................................................................................................... 4 2.1 Application form and requests for more than one levy of execution .....4 2.2 Languages ..................................................................................................5 2.3 Fees.............................................................................................................5 2.4 Applicants and mandatory content of the application.............................6
2.4.1 Applicants ....................................................................................................... 6 2.4.2 Mandatory indications concerning the CTM and the beneficiary ................... 6 2.4.3 Requirements concerning the person who submits the request –
signature, proof of the levy of execution, representation ............................... 7 2.4.3.1 Request submitted by the CTM proprietor...................................................7 2.4.3.2 Request submitted by the beneficiary .........................................................7 2.4.3.3 Request submitted by a Court or Authority..................................................7 2.4.3.4 Proof of the levy of execution ......................................................................8
2.4.4 Representation ............................................................................................... 8
2.5 Examination of the request for registration..............................................9 2.5.1 Fees................................................................................................................ 9 2.5.2 Examination of the mandatory formalities ...................................................... 9
2.6 Registration procedure and publications ...............................................10
3 Procedure for the Cancellation or Modification of the Registration of a Levy of Execution................................................................................. 10 3.1 Competence, languages, submission of the request.............................11 3.2 Person submitting the request ................................................................11
3.2.1 Cancellation of the registration of a levy of execution.................................. 11 3.2.2 Modification of the registration of a levy of execution .................................. 11
3.3 Contents of the request ...........................................................................12 3.4 Fees...........................................................................................................12
3.4.1 Cancellation of the registration of a levy of execution.................................. 12 3.4.2 Modification of the registration of a levy of execution .................................. 12
3.5 Examination of the request......................................................................12 3.5.1 Fees.............................................................................................................. 12 3.5.2 Examination by the Office............................................................................. 13
3.6 Registration and publication ...................................................................13
4 Levy of Execution for Registered Community Designs ....................... 13 4.1 Multiple applications for registered Community designs...................... 14
5 Levy of Execution for International Trade Marks.................................. 14
Levy of Execution
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1 Introduction
Article 20 CTMR Rules 33, 35 CTMIR Article 29 CDR
Both registered Community trade marks (CTMs) and Community trade mark applications (CTMAs) may be levied in execution.
Both registered Community designs (RCDs) and registered Community design applications may be levied in execution.
Paragraphs 1 to 3 of this chapter deal with levies of execution concerning CTMs and CTMAs. The provisions in the CDR and CDIR dealing with levy of execution concerning designs are almost identical to the equivalent provisions of the CTMR and CTMIR respectively. Therefore, the following applies mutatis mutandis to Community designs. Procedures specific to Community designs are detailed in paragraph 4 below. Procedures specific to international trade marks are detailed in paragraph 5 below.
A levy of execution is the act by which a court officer appropriates a debtor’s property, following a judgment of possession obtained by a plaintiff from a court. In this way a creditor can recover its claim from all the property of the debtor, including from its trade mark rights.
Article 16 CTMR
The CTMR does not establish unified and complete provisions applicable to the levy of execution for CTMs or CTMAs. Rather, Article 16 CTMR refers to the law of a Member State, regarding the procedure for levy of execution. To this end, a levy of execution on a CTM is, in its entirety and for the whole territory of the Community, assimilated to a levy of execution for a trade mark registered in the Member State in which the CTM proprietor or applicant has its seat or its domicile, or, if this is not the case, to a levy of execution for a trade mark registered in the Member State in which the proprietor has an establishment, or if this is not the case, to a levy of execution for a trade mark registered in Spain (Member State in which the seat of the Office is situated).
This, however, applies only to the extent that Articles 17 to 24 CTMR do not provide otherwise.
Articles 20(2), 50(3), 23(3) CTMR Rule 36(2) CTMIR
Registration of a levy of execution is not compulsory; however, such a registration has particular advantages:
a) In view of the provision of Article 23(3) CTMR, vis-à-vis third parties who might have acquired or have entered in the Register rights in the trade mark which are incompatible with the registered levy of execution, the beneficiary may avail itself of the rights conferred by this levy of execution, if national law so permits, only:
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• if the levy of execution was entered in the Register of Community Trade Marks, or
• in the absence of registration of the levy of execution, if the third party had acquired its rights after the date of the adjudication of the levy of execution knowing of the existence of the levy of execution.
b) In the event that a levy of execution against a Community trade mark is entered in the Register, the surrender of that mark by its proprietor will only be entered in the Register if the proprietor establishes that it has informed the beneficiary of its intention to surrender.
The beneficiary of a levy of execution which is registered has, therefore, the right to be informed in advance by the trade mark’s proprietor of its intention to surrender the trade mark.
c) In the event where a levy of execution against a Community trade mark is entered in the Register, the Office will notify the beneficiary at least six months before the expiry of the registration that the registration is approaching expiry. The Office will also notify the beneficiary of any loss of rights and of the expiry of the registration, where applicable.
d) Recording a l evy of execution is important for maintaining the veracity of the Register, particularly in the event of inter partes proceedings.
2 Requirements for a Request for the Registration of a Levy of Execution
Article 20(3) CTMR Rule 33, Rule 84(3)(i) CTMIR
Both CTMAs and CTMs may be the subject of the registration of a levy of execution.
The application for registration of a levy of execution must comply with the following conditions.
2.1 Application form and requests for more than one levy of execution
Rule 95(a) and (b) CTMIR
It is strongly recommended that the request for registration of a levy of execution for a CTM be submitted on the Recordal Application form. This form is available free of charge in the official languages of the European Union. It can be dow nloaded from OHIM’s website.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 2.2 below.
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Rules 31(7), 33(1) CTMIR
A single request for the registration of a levy of execution for two or more registered CTMs or CTMAs may be submitted only if the respective registered proprietor and beneficiary are the same in each case.
2.2 Languages
Rule 95(a) CTMIR
The application for the registration of a l evy of execution against a C TMA may be submitted in the first or second language of the CTM application.
Rule 95(b) CTMIR
The application for the registration of a l evy of execution against a C TM must be submitted in one of the five languages of the Office, namely, English, French, German, Italian or Spanish.
2.3 Fees
Article 162(2)(c) and (d) CTMR Rule 33(1) and (4) CTMIR Article 2(23) CTMFR
The application for the registration of a levy of execution is considered not to have been submitted until the fee is paid. The fee is EUR 200 for each Community trade mark for which the registration of a levy of execution is requested.
However, where several registrations of levy of execution have been r equested in a single request and the registered proprietor and the beneficiary are the same in all cases, the fee is limited to a maximum of EUR 1 000.
The same maximum amount applies where several registrations of levy of execution are applied for at the same time, provided that they could have been filed in a single request and w here the registered proprietor and t he beneficiary are the same in all cases.
Once the corresponding fee is paid, the fee will not be reimbursed if the application for registration of the levy of execution is refused or withdrawn (file classified).
Where the recordal applicant (see paragraph 2.4.1 below) is a Court or an Authority, no fee is to be paid and administrative cooperation is applied.
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2.4 Applicants and mandatory content of the application
2.4.1 Applicants
Article 20(3) CTMR
The registration of a levy of execution may be requested by:
a) the proprietor of the CTM,
b) the beneficiary of the levy of execution,
c) a Court or Authority.
The formal conditions with which the request must comply depend on who submits the request.
2.4.2 Mandatory indications concerning the CTM and the beneficiary
Rule 31, Rule 33(1) CTMIR
The request for registration of a levy of execution must contain the following information.
Rule 31(1)(a), Rule 33(1) CTMIR
a) The registration number of the CTM concerned. If the request relates to several CTMs each of the numbers must be indicated.
Rules 1(1)(b), 31(1)(b), Rule 33(1) CTMIR
b) The beneficiary’s name, address and nat ionality and the State in which it is domiciled or has its seat or an establishment.
Rule 1(1)(e), Rules 31(2), 33(1) CTMIR
c) If the beneficiary designates a representative, the representative’s name and business address must be i ndicated; the indication of the address may be replaced by the indication of the ID number allocated by the Office.
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2.4.3 Requirements concerning the person who submits the request – signature, proof of the levy of execution, representation
Rule 79, Rule 82(3) CTMIR
The requirements concerning signature, proof of the levy of execution and representation vary depending on the person who submits the request. Where the requirement of a signature is referred to, pursuant to Rule 79 and Rule 82(3) CTMIR, in electronic communications, the indication of the sender’s name will be deemed equivalent to the signature.
2.4.3.1 Request submitted by the CTM proprietor
Rule 1(1)(b), Rule 33(1) CTMIR
When a request is submitted on behalf of the CTM proprietor, it must be signed by the CTM proprietor.
The Office will not inform the beneficiary that the registration of the levy of execution has been requested. It will, however, inform the beneficiary when the levy of execution is recorded in the Register.
Where the beneficiary files a s tatement with the Office in which it opposes the registration of the levy of execution, the Office will forward the statement to the CTM proprietor for information purposes only. The Office will not take any further action on such a statement. Following the registration of the levy of execution, any beneficiary who disagrees with the registration of the levy of execution may request the cancellation or modification of the registration of the levy of execution (see paragraph 3 below).
Any dispute on w hether or not and i n what manner the levy of execution should be registered is a matter that must be resolved between the parties concerned under the relevant national law (Article 16 CTMR).
2.4.3.2 Request submitted by the beneficiary
The request may also be submitted by the beneficiary. In this case, it must be signed by the beneficiary.
In addition, proof of the levy of execution must be submitted.
2.4.3.3 Request submitted by a Court or Authority
The request may also be submitted by the Court or Authority issuing the judgment. In this case, it must be signed by the Court or Authority.
In addition, proof of the levy of execution must be submitted.
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2.4.3.4 Proof of the levy of execution
There is sufficient proof of the levy of execution if the request for registration of the levy of execution is accompanied by the Court judgment.
In many instances, the parties to the levy of execution proceedings will not wish to disclose all the details of the judgment, which may contain confidential information. In these cases it suffices if only a part or an extract of the levy of execution judgment is submitted, as long as it identifies the parties to the levy of execution proceedings, the CTM that is subject to the levy of execution and that the judgment is final. All other elements may be omitted or blacked out.
Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient. The original or photocopy does not need t o be aut henticated or legalised unless the Office has reasonable doubts as to the veracity of the documents.
Rule 95(a) and (b), Rule 96(2) CTMIR
The evidence of the levy of execution must be:
a) in the language of the Office which has become the language of the proceedings for the registration of the levy of execution, see paragraph 2.2 above.
b) in any official language of the European Union other than the language of the proceedings; in this case the Office may require a t ranslation of the document into a language of the Office to be filed within a period specified by the Office.
Where the supporting documents are not submitted in either an official language of the European Union or in the language of the proceedings, the Office may require a translation into the language of the proceedings or, at the choice of the party requesting the registration of the levy of execution, in any language of the Office. The Office will set a time limit of two months from the date of notification of that communication. If the translation is not submitted within that time limit, the document will not be taken into account and will be deemed not to have been submitted.
2.4.4 Representation
Articles 92(2), 93(1) CTMR
The general rules on representation apply (see the Guidelines, Part A, General Rules, Section 5, Professional Representation).
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2.5 Examination of the request for registration
2.5.1 Fees
Rule 33(2) CTMIR
Where the required fee has not been received, the Office will notify the recordal applicant (unless the recordal applicant is a Court or Authority, in which case no fee is required, see paragraph 2.3 above) that the request is deemed not to have been filed because the relevant fee has not been paid. However, a new request may be submitted at any time providing the correct fee is paid from the outset.
2.5.2 Examination of the mandatory formalities
Rule 33(3) CTMIR
The Office will check whether the request for registration of the levy of execution complies with the formal conditions mentioned in paragraph 2.4 above (indication of the CTM number(s), the required information concerning the beneficiary, the representative of the beneficiary where applicable).
The validity of the levy of execution judgment will not be examined.
Article 93(1) CTMR Rules 33, 76, 77 CTMIR
The Office will check whether the request for registration of the levy of execution has been duly signed. Where the request is signed by the beneficiary’s representative, an authorisation may be r equired by the Office or, in the context of inter partes proceedings, by the other party to those proceedings. In this event, if no authorisation is submitted, the proceedings will continue as if no representative had been appointed. Where the request for registration of the levy of execution is signed by the proprietor’s representative who has already been designated as the representative for the CTM in question, the requirements relating to signature and authorisations are fulfilled.
Articles 92(2), 93(1) CTMR
The examination will include whether the recordal applicant (i.e. the CTM proprietor or the beneficiary) is obliged to be represented before the Office (see paragraph 2.4.4 above).
Rule 33(3) CTMIR
The Office will inform the recordal applicant in writing of any deficiencies in the application. If the deficiencies are not remedied within the time limit set in that
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communication, which will normally be two months following the date of the notification, the Office will reject the request for registration of the levy of execution.
Where the request for registration of the levy of execution is submitted by the CTM proprietor alone, the Office will not inform the beneficiary. The examination of evidence of the levy of execution will be done ex officio. The Office will disregard any statements or allegations of the beneficiary regarding the existence or scope of the levy of execution or its registration; the beneficiary cannot oppose the registration of a levy of execution.
2.6 Registration procedure and publications
Rules 33(4), 84(5) CTMIR
The levy of execution for CTMAs will be mentioned in the files kept by the Office for the Community trade mark application concerned.
The Office will notify the recordal applicant of the entry of the levy of execution in the files kept by the Office. Where applicable, the CTM applicant will also be notified.
Rule 84(3)(i), Rule 85(2) CTMIR
When the mark is registered, the levy of execution will be published in the Community Trade Marks Bulletin and entered in the Community Trade Marks Register. The Office will inform the recordal applicant of the registration of the levy of execution. Where applicable, the CTM proprietor will also be informed.
Access to this information may be obtained through inspection of files (see the Guidelines, Part E, Register Operations, Section 5, Inspection of Files).
Levies of execution are published in Part C.7. of the Bulletin.
3 Procedure for the Cancellation or Modification of the Registration of a Levy of Execution
Rule 35(1) CTMIR
The registration of a levy of execution will be cancelled or modified at the request of an interested party, that is, the applicant or proprietor of the CTM or the registered beneficiary.
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3.1 Competence, languages, submission of the request
Article 133 CTMR Rule 35(3), (6) and (7) CTMIR
Paragraphs 2.1 and 2.2 above apply.
There is no O ffice form for registering the cancellation or modification of a l evy of execution.
3.2 Person submitting the request
Rule 35(1) CTMIR
The request for the cancellation or modification of the registration of a levy of execution may be submitted by:
a) the CTM applicant/proprietor and the beneficiary jointly,
b) the CTM applicant/proprietor, or
c) the registered beneficiary.
3.2.1 Cancellation of the registration of a levy of execution
Rule 35(4) CTMIR
The request for cancellation of the registration of a levy of execution must be accompanied by evidence establishing that the registered levy of execution no longer exists. This proof comprises the final Court judgment.
Where the registered beneficiary alone submits the request for cancellation, the CTM applicant/proprietor will not be informed of this request. Any observations filed by the proprietor will be forwarded to the beneficiary but will not preclude the cancellation of the registration of the levy of execution. Paragraph 2.4.3.1 above applies mutatis mutandis.
Where the registration of several levies of execution has been requested simultaneously, it is possible to cancel one of these registrations individually. In such an event, a new recordal number will be created for the cancelled levy of execution.
3.2.2 Modification of the registration of a levy of execution
Rule 35(6) CTMIR
A levy of execution may be modified upon submission of the corresponding Court judgment showing such a modification.
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3.3 Contents of the request
Rule 35 CTMIR
Paragraph 2.4 above applies, except that the data concerning the beneficiary need not be indicated except in the case of a modification of the registered beneficiary’s name.
3.4 Fees
3.4.1 Cancellation of the registration of a levy of execution
Article 162(2) CTMR Rule 35(3) CTMIR Article 2(24) CTMFR
The request for the cancellation of the registration of a levy of execution is not deemed to have been filed until the required fee of EUR 200 per cancellation is paid (unless the recordal applicant is a C ourt or Authority, in which case no f ee is required, see paragraph 2.3 above). Where several cancellations are requested simultaneously or within the same request, and where the CTM applicant/proprietor and the beneficiary are the same in each case, the fee is limited to a maximum of EUR 1 000.
Once the corresponding fee has been paid, the fee will not be reimbursed if the request is refused or withdrawn.
3.4.2 Modification of the registration of a levy of execution
Rule 35(6) CTMIR
The modification of the registration of a levy of execution is not subject to a fee.
3.5 Examination of the request
3.5.1 Fees
Rule 35(3) CTMIR
Where the required fee for the request for the cancellation of the registration of a levy of execution has not been received, the Office will notify the recordal applicant that the request is deemed not to have been filed.
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3.5.2 Examination by the Office
Rule 35(2), (4) CTMIR
Paragraph 2.5.2 applies mutatis mutandis to the mandatory elements of the request, even for proof of the levy of execution, to the extent that such proof is required.
The Office will notify the recordal applicant of any deficiency, setting a time limit of two months. If the deficiencies are not remedied, the Office will refuse the request for registering the cancellation or modification.
Rules 35(6), 84(5) CTMIR
The registration of the cancellation or modification of the levy of execution will be communicated to the person who submitted the request; if the request was submitted by the beneficiary, the CTM applicant/CTM proprietor will receive a copy of the communication.
3.6 Registration and publication
Rule 84(3)(s), Rule 85(2) CTMIR
In the case of a r egistered CTM, the creation, cancellation or modification of a registration of a levy of execution will be entered in the Register of Community Trade Marks and published in the Community Trade Marks Bulletin under C.7.
In the case of a C TM application, the cancellation or modification of the levy of execution will be mentioned in the files of the CTM application concerned. When the registration of the CTM is published, no publ ications will be made for levies of execution that have been cancelled, and if a levy of execution has been modified, the data as modified will be published under C.7.2.
4 Levy of Execution for Registered Community Designs
Articles 27, 30, 33, Article 51(4) CDR Articles 24, 26, Article 27(2) CDIR Annex (18) and (19) CDFR
The legal provisions contained in the CDR, CDIR and C DFR in respect of levies of execution correspond to the respective provisions in the CTMR, CTMIR and CTMFR.
Therefore, both the legal principles and t he procedure in respect of the registration, cancellation or modification of trade mark levies of execution apply mutatis mutandis to Community designs, except for the following specific procedures.
Levy of Execution
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4.1 Multiple applications for registered Community designs
Article 37 CDR Article 24(1) CDIR
An application for a registered Community design may be in the form of a multiple application, applying for several designs.
For the purposes of the legal effect of a levy of execution, as well as of the procedure for registering a levy of execution, individual designs contained in a multiple application will be dealt with as if they were separate applications, and the same continues to apply after registration of the designs contained in the multiple application.
In other words, each design contained in a m ultiple application may be levied independently of the others.
Annex (18), (19) CDFR
The fee of EUR 200 for the registration of a levy of execution or the cancellation of a levy of execution applies per design and not per multiple application. The same is true for the ceiling of EUR 1 000 if multiple requests are submitted.
Example 1
Out of a multiple application for 10 designs, 6 designs are levied, in favour of the same beneficiary. The fee is EUR 1 000 provided that either a single request for registration of these 6 levies of execution is submitted or several requests are submitted on the same day.
Example 2
Out of a multiple application for 10 designs, 5 designs are levied, in favour of the same beneficiary. The registration of a levy of execution is also requested for another design not contained in that multiple application. The fee is EUR 1 000 provided that
• either a single request for registration of these 6 levies of execution is submitted, or several requests are submitted on the same day, and
• the holder of the Community design and t he beneficiary are the same in all 6 cases.
5 Levy of Execution for International Trade Marks
The Madrid System allows for the recording of a levy of execution against an international registration (see Rule 20 Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement). For the convenience of the users, the MM19 form is available for requesting that a restriction of the holder's right of disposal be entered in
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the International Register. The use of this form is strongly recommended to avoid irregularities. Requests should be submitted either directly to the International Bureau by the holder or to the national IP Office of the recorded holder or to the Office of a contracting party to whom the levy of execution is granted or to the Office of the beneficiary. The request cannot be submitted directly to the International Bureau by the beneficiary. OHIM’s own Recordal Application form should not be used.
Detailed information on t he recording of levies of execution can be found in Part B, Chapter II, paragraphs 92.01 to 92.04 of the Guide to the International Registration of Marks under the Madrid Agreement and t he Madrid Protocol (www.wipo.int/madrid/en/guide). For further information on international trade marks, see the Guidelines, Part M, International Marks.
Insolvency Proceedings or Similar Proceedings
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 3
CTMs AS OBJECTS OF PROPERTY
CHAPTER 5
INSOLVENCY PROCEEDINGS OR SIMILAR PROCEEDINGS
Insolvency Proceedings or Similar Proceedings
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Table of Contents
1 Introduction................................................................................................ 3
2 Requirements for a Request for the Registration of Insolvency Proceedings or Similar Proceedings ....................................................... 4 2.1 Application form.........................................................................................5 2.2 Languages ..................................................................................................5 2.3 Fees.............................................................................................................5 2.4 Applicants and mandatory content of the application.............................5
2.4.1 Applicants ....................................................................................................... 5 2.4.2 Mandatory indications concerning the CTM and the liquidator ...................... 6 2.4.3 Requirements concerning the person who submits the request –
signature, proof of appointment, representation............................................. 6 2.4.4 Representation ............................................................................................... 7
2.5 Examination of the request for registration..............................................7 2.6 Registration procedure and publications .................................................8
3 Procedure for the Cancellation or Modification of the Registration of Insolvency Proceedings............................................................................ 9 3.1 Competence, languages, submission of the request...............................9 3.2 Person submitting the request ..................................................................9
3.2.1 Cancellation of the registration of an insolvency.......................................... 10 3.2.2 Modification of the registration of an insolvency........................................... 10
3.3 Contents of the request ...........................................................................10 3.4 Fees...........................................................................................................10
3.4.1 Cancellation of the registration of insolvency proceedings .......................... 10 3.4.2 Modification of the registration of insolvency proceedings........................... 10
3.5 Examination of the request......................................................................11 3.6 Registration and publication ...................................................................11
4 Insolvency Proceedings for International Trade Marks ....................... 11
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1 Introduction
Articles 16, 21 CTMR Rules 33, 35 CTMIR Article 31 CDR Council Regulation (EC) No 1346/2000 of 29 May 2000 on insolvency proceedings
Both registered Community trade marks (CTMs) and Community trade mark applications (CTMAs) may be affected by insolvency proceedings or similar proceedings.
Both registered Community designs (RCDs) and registered Community design applications may be affected by insolvency proceedings or similar proceedings.
Paragraphs 1 to 3 of this chapter deal with recording insolvency proceedings or similar proceedings against CTMs and CTMAs. The provisions in the CDR and CDIR dealing with insolvency proceedings and similar proceedings concerning designs are identical to the equivalent provisions of the CTMR and C TMIR respectively. Therefore, the following applies mutatis mutandis to Community designs. Procedures specific to international trade marks are detailed in paragraph 4 below.
For the purposes of these guidelines ‘insolvency proceedings’ are understood as the collective proceedings which entail the partial or total divestment of a debtor and the appointment of a l iquidator. In the United Kingdom, for example, such proceedings include the winding up by or subject to the supervision of the court, creditors’ voluntary winding up ( with confirmation by the court), administration, voluntary arrangements under insolvency legislation and bankruptcy or sequestration; ‘liquidator’ is understood as any person or body whose function is to administer or liquidate assets of which the debtor has been di vested or to supervise the administration of their affairs. In the United Kingdom, for example, such persons or bodies include liquidators, supervisors of a v oluntary arrangement, administrators, official receivers, trustees and j udicial factors; ‘Court’ is understood as the judicial body or any other competent body of a Member State empowered to open insolvency proceedings or to take decisions in the course of such proceedings; ‘judgment’ in relation to the opening of insolvency proceedings or the appointment of a liquidator is understood as including the decision of any Court empowered to open s uch proceedings or to appoint a liquidator (for terminology in other territories, please see Council Regulation (EC) No 1346/2000 of 29 May 2000 on insolvency proceedings).
These guidelines serve to explain the procedure before the Office for registering the opening, modification or closure of insolvency proceedings or similar proceedings. In accordance with Article 16 CTMR, all other provisions are covered by national law. In addition, Council Regulation (EC) No 1346/2000 of 29 May 2000 o n insolvency proceedings regulates the provisions on jurisdiction, recognition and applicable law in the area of insolvency proceedings.
Article 21(1) CTMR
The Regulations specifically state that a Community trade mark may only be involved in insolvency proceedings opened in the Member State in the territory of which the debtor has its centre of main interests, the only exception being when the debtor is an
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insurance undertaking or credit institution in which case the Community trade mark may only be involved in those proceedings opened in the Member State where that undertaking or institution has been authorised. The ‘centre of main interests’ should correspond to the place where the debtor conducts the administration of its interests on a regular basis and is, therefore, ascertainable by third parties.
Articles 21(3), 23(4) CTMR
Registration of the opening, modification and closure of insolvency proceedings is not compulsory, however, such a registration has particular advantages.
a) In view of the provision of Article 23(4) CTMR, vis-à-vis third parties who might have acquired or have entered in the Register rights in the trade mark which are incompatible with the registered insolvency, the effects shall be governed by the law of the Member State in which such proceedings are first brought within the meaning of national law or of conventions applicable in this field.
b) In the event that insolvency proceedings against a C ommunity trade mark are entered in the Register, the CTM proprietor loses its right to act and, therefore, may not perform any actions before the Office (such as withdraw, surrender, transfer, file oppositions, act in inter partes proceedings, etc.).
c) In the event that insolvency proceedings against a C ommunity trade mark are entered in the Register, the Office will notify the liquidator at least six months before the expiry of the registration that the registration is approaching expiry. The Office will also notify the liquidator of any loss of rights and of the expiry of the registration, where applicable.
d) Recording insolvency proceedings is important for maintaining the veracity of the Register, particularly in the event of inter partes proceedings. In this respect please see the Guidelines, Part C, Opposition, Section 1, Procedural Matters, paragraph 6.5.5.2.
The Office strongly recommends that liquidators withdraw, surrender or transfer the CTMs and CTMAs subject to insolvency proceedings prior to the final winding up.
2 Requirements for a Request for the Registration of Insolvency Proceedings or Similar Proceedings
Article 21(3), Article 24 CTMR Rule 33, Rule 84(3)(i) CTMIR
Both CTMAs and CTMs may be the subject of the registration of insolvency proceedings.
The application for registration of insolvency proceedings must comply with the following conditions.
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2.1 Application form
Rule 95(a) and (b) CTMIR
The application must be a formal request for registering insolvency proceedings or similar proceedings.
It is strongly recommended that the request for registration of insolvency proceedings against a CTM be submitted on the Recordal Application form using the ‘others’ option in the ‘Type of recordal’ section of the form. This form is available free of charge in the official languages of the European Union. It can be downloaded from OHIM’s website.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 2.2 below.
2.2 Languages
Rule 95(a) CTMIR
The application for the registration of insolvency proceedings against a CTMA may be submitted in the first or second language of the CTM application.
Rule 95(b) CTMIR
The application for the registration of insolvency proceedings against a CTM must be submitted in one of the five languages of the Office, namely, English, French, German, Italian or Spanish.
2.3 Fees
Article 162(2)(c) and (d )CTMR Rule 33(1) and (4) CTMIR Article 2(23) CTMFR
There is no fee for registering insolvency proceedings or similar proceedings.
2.4 Applicants and mandatory content of the application
2.4.1 Applicants
Article 20(3) CTMR
The registration of insolvency proceedings or similar proceedings may be r equested by:
a) the liquidator,
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b) the Court,
c) the applicant/owner/holder.
2.4.2 Mandatory indications concerning the CTM and the liquidator
Rule 31, Rule 33(1) CTMIR
The request for registration of insolvency proceedings or similar proceedings must contain the following information.
Article 21(2) CTMR Rule 31(1)(a), Rule 33(1) CTMIR
a) The registration number of the CTM concerned.
Where the recordal applicant indicates only some of the CTMs owned by the proprietor, the Office will register the insolvency proceedings against all CTMs and CTMAs linked to the owner’s ID number at the Office.
Where the owner is joint proprietor of a CTM or CTMA, the insolvency proceedings will apply to the share of the joint proprietor.
Rules 1(1)(b), 31(1)(b), Rule 33(1) CTMIR
b) The liquidator’s name, address and nat ionality and t he State in which it is domiciled or has its seat or an establishment.
Rule 1(1)(e), Rules 31(2), 33(1) CTMIR
c) If the liquidator designates a r epresentative, the representative’s name and business address must be indicated; the indication of the address may be replaced by the indication of the ID number allocated by the Office.
2.4.3 Requirements concerning the person who submits the request – signature, proof of appointment, representation
Rule 79, Rule 82(3) CTMIR
Where the requirement of a signature is referred to, pursuant to Rule 79 and Rule 82(3) CTMIR, in electronic communications, the indication of the sender’s name will be deemed equivalent to the signature.
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There is sufficient proof of the appointment of a l iquidator and of the insolvency proceedings if the request for registration of the insolvency proceedings is accompanied by the Court judgment.
It suffices if the insolvency judgment is submitted. In many instances, the parties to the insolvency proceedings will not wish to disclose all the details of the judgment, which may contain confidential information. In these cases it suffices if only a par t or an extract of the judgment is submitted, as long as it identifies the parties to the proceedings. All other elements may be omitted or blacked out.
Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient. The original or photocopy does not need t o be aut henticated or legalised unless the Office has reasonable doubts as to the veracity of the documents.
Rule 95(a) and (b), Rule 96(2) CTMIR
The evidence of the insolvency proceedings must be:
a) in the language of the Office which has become the language of the proceedings for the registration of the insolvency, see paragraph 2.2 above.
b) in any official language of the European Union other than the language of the proceedings; in this case the Office may require a t ranslation of the document into a language of the Office to be filed within a period specified by the Office.
Where the supporting documents are not submitted in either an official language of the European Union or in the language of the proceedings, the Office may require a translation into the language of the proceedings or, at the choice of the party requesting the registration of the insolvency, in any language of the Office. The Office will set a time limit of two months from the date of notification of that communication. If the translation is not submitted within that time limit, the document will not be taken into account and will be deemed not to have been submitted.
2.4.4 Representation
Articles 92(2), 93(1) CTMR
The general rules on representation apply (see the Guidelines, Part A, General Rules, Section 5, Professional Representation).
2.5 Examination of the request for registration
Article 21(1) CTMIR
The Office will check that there are no other pending recordals and that no insolvency proceedings have already been registered for the proprietor concerned. Only a request relating to the Member State in which insolvency proceedings or similar proceedings were first brought may be recorded.
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Rule 33(3) CTMIR
The Office will check whether the request for registration of the insolvency proceedings complies with the formal conditions mentioned in paragraph 2.4 above (indication of the CTM number(s), the required information concerning the liquidator, the liquidator’s representative where applicable).
The validity of the insolvency judgment will not be examined.
Article 93(1) CTMR Rules 33, 76, 77 CTMIR
The Office will check whether the request for registration of the insolvency proceedings has been duly signed. Where the request is signed by the liquidator’s representative, an authorisation may be r equired by the Office or, in the context of inter partes proceedings, by the other party to those proceedings. In this event, if no authorisation is submitted, the proceedings will continue as if no representative had been appointed.
Articles 92(2), 93(1)CTMR
The examination will include whether the recordal applicant (i.e. the liquidator, the Court or the applicant/proprietor/holder) is obliged to be represented before the Office (see paragraph 2.4.4 above).
Rule 33(3) CTMIR
The Office will inform the recordal applicant in writing of any deficiencies in the application. If the deficiencies are not remedied within the time limit set in that communication, which will normally be two months following the date of the notification, the Office will reject the request for registration of the insolvency proceedings.
2.6 Registration procedure and publications
Rule 33(4), 84(5) CTMIR
The insolvency proceedings for CTMAs will be mentioned in the files kept by the Office for the Community trade mark application(s) concerned.
The Office will notify the recordal applicant of the entry of the insolvency proceedings in the files kept by the Office. Where applicable, the CTM applicant will also be notified.
Rule 84(3)(i), Rule 85(2) CTMIR
When the mark is registered, the insolvency proceedings will be published in the Community Trade Marks Bulletin and entered in the Community Trade Mark Register.
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The Office will inform the recordal applicant of the registration of the insolvency proceedings.
The liquidator’s contact details are recorded as the proprietor’s ‘correspondence address’ in OHIM’s owners and representatives database and third parties may consult the full details of the insolvency proceedings through an appl ication for inspection of files (see the Guidelines, Part E, Register Operations, Section 5, Inspection of Files).
Insolvency proceedings are published in part C.6. of the Bulletin. The publication contains the CTM registration number(s), the name of the authority requesting the entry in the Register, the date and number of the entry and the publication date of the entry in the CTM Bulletin.
3 Procedure for the Cancellation or Modification of the Registration of Insolvency Proceedings
Rule 35(1) CTMIR
The registration of insolvency proceedings will be cancelled or modified at the request of an interested party, that is, the applicant or proprietor of the CTM or the registered liquidator.
3.1 Competence, languages, submission of the request
Article 133 CTMR Rules 35(3), (6), (7) CTMIR
Paragraphs 2.1 and 2.2 above apply.
There is no O ffice form for registering the cancellation or modification of insolvency proceedings.
3.2 Person submitting the request
Rule 35(1) CTMIR
The request for the cancellation or modification of the registration of insolvency proceedings may be submitted by:
a) the registered liquidator, b) the Court, c) the applicant/owner/holder.
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3.2.1 Cancellation of the registration of an insolvency
Rule 35(4) CTMIR
The request for registering the cancellation of insolvency proceedings must be accompanied by evidence establishing that the registered insolvency no longer exists. This proof comprises the final Court judgment.
Where the registered liquidator alone submits the request for cancellation, the CTM applicant/proprietor will not be informed of this request. Any observations filed by the proprietor will be forwarded to the liquidator but will not preclude the cancellation of the registration of the insolvency proceedings.
3.2.2 Modification of the registration of an insolvency
Rule 35(6) CTMIR
The registration of insolvency proceedings may be m odified upon submission of the corresponding Court judgment showing such a modification.
3.3 Contents of the request
Rule 35 CTMIR
Paragraph 2.4 above applies, except that the data concerning the liquidator need not be indicated except in the event of a modification of the registered liquidator’s name.
3.4 Fees
3.4.1 Cancellation of the registration of insolvency proceedings
Article 162(2) CTMR Rule 35(3) CTMIR Article 2(24) CTMFR
The request for the cancellation of the registration of insolvency proceedings is not subject to a fee.
3.4.2 Modification of the registration of insolvency proceedings
Rule 35(6) CTMIR
The modification of the registration of insolvency proceedings is not subject to a fee.
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3.5 Examination of the request
Rule 35(2), (4) CTMIR
Paragraph 2.5 applies mutatis mutandis to the mandatory elements of the request, even for proof of the insolvency proceedings.
The Office will notify the recordal applicant of any deficiency, setting a time limit of two months. If the deficiencies are not remedied, the Office will refuse the request for registering the cancellation or modification.
Rules 35(6), 84(5) CTMIR
The registration of the cancellation or modification of the insolvency proceedings will be communicated to the person who submitted the request; if the request was submitted by the liquidator, the CTM applicant/proprietor will receive a c opy of the communication.
3.6 Registration and publication
Rule 84(3)(s), Rule 85(2) CTMIR
In the case of a r egistered CTM, the creation, cancellation or modification of a registration of an insolvency will be entered in the Register of Community Trade Marks and published in the Community Trade Marks Bulletin under C.6.
In the case of a CTM application, the cancellation or modification of the insolvency proceedings will be mentioned in the files of the CTM application concerned. When the registration of the CTM is published, no publ ications will be m ade for insolvency proceedings that have been cancelled, and if the insolvency proceedings have been modified, the data as modified will be published under C.6.2.
4 Insolvency Proceedings for International Trade Marks
The Madrid System allows for the recording of insolvency proceedings against an international registration (see Rule 20 Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement). For the convenience of the users, the MM19 form is available for requesting that a restriction of the holder's right of disposal be entered in the International Register. The use of this form is strongly recommended to avoid irregularities. Requests should be submitted either directly to the International Bureau by the holder or to the national IP Office of the recorded holder or to the Office of a contracting party in respect of whom the insolvency is granted or to the Office of the liquidator. The request cannot be submitted directly to the International Bureau by the liquidator. OHIM’s own Recordal Application form should not be used.
Detailed information on the recording of insolvency proceedings can be found in Part B, Chapter II, paragraphs 92.01 to 92.04 of the Guide to the International Registration of
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Marks under the Madrid Agreement and t he Madrid Protocol (www.wipo.int/madrid/en/guide). For further information on international trade marks, see the Guidelines, Part M, International Marks.
International Marks
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART M
INTERNATIONAL MARKS
International Marks
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Table of Contents
1 Introduction................................................................................................ 4
2 OHIM as Office of Origin ........................................................................... 4 2.1 Examination and forwarding of international applications......................4
2.1.1 Identification of international applications....................................................... 5 2.1.2 Fees................................................................................................................ 5
2.1.2.1 Handling fee ................................................................................................5 2.1.2.2 International fees.........................................................................................5
2.1.3 Forms.............................................................................................................. 6 2.1.3.1 Entitlement to file.........................................................................................7 2.1.3.2 Basic mark...................................................................................................7 2.1.3.3 Priority claim(s)............................................................................................9 2.1.3.4 Designated contracting parties ....................................................................9 2.1.3.5 Signature.....................................................................................................9 2.1.3.6 Form for the designation of the USA ...........................................................9
2.1.4 Examination of the international application by OHIM ................................. 10 2.1.5 Irregularities found by WIPO ........................................................................ 10
2.2 Subsequent designations ........................................................................11 2.3 Notification of facts affecting the basic registration..............................12 2.4 Forwarding of changes affecting the international mark....................... 13
2.4.1 Cases where applications for changes can be forwarded without examination .................................................................................................. 14
2.4.2 Cases where applications for changes will be forwarded after examination .................................................................................................. 14
3 OHIM as Designated Office..................................................................... 15 3.1 Overview ...................................................................................................15 3.2 Professional representation ....................................................................16 3.3 First republication, searches and formalities.........................................16
3.3.1 First republication ......................................................................................... 16 3.3.2 Searches....................................................................................................... 17 3.3.3 Formalities examination................................................................................ 17
3.3.3.1 Languages.................................................................................................17 3.3.3.2 Collective marks ........................................................................................18 3.3.3.3 Seniority claims .........................................................................................19
3.4 Absolute grounds for refusal...................................................................21 3.5 Third-party observations .........................................................................22 3.6 Opposition ................................................................................................22
3.6.1 Timing ........................................................................................................... 22 3.6.2 Receipt and informing the international holder............................................. 23 3.6.3 Fees.............................................................................................................. 23 3.6.4 Admissibility check ....................................................................................... 23 3.6.5 Language of proceedings ............................................................................. 24 3.6.6 Representation of the IR holder.................................................................... 24
3.6.6.1 Opposition receipts....................................................................................24 3.6.6.2 Notification of commencement of opposition proceedings ........................25
3.6.7 Provisional refusal (based on relative grounds) ........................................... 25
International Marks
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3.6.8 Suspension of opposition where there is a pending provisional refusal on absolute grounds .......................................................................................... 26
3.7 Cancellation of the IR or renunciation of the EU designation............... 26 3.8 Limitations of the list of goods and services .........................................26 3.9 Confirmation or withdrawal of provisional refusal and issue of
Statement of Grant of Protection ............................................................27 3.10 Second republication ...............................................................................27 3.11 Transfer of the designation of the EU.....................................................28 3.12 Invalidity, revocation and counterclaims................................................28 3.13 Fee management ......................................................................................29
4 Conversion, Transformation, Replacement .......................................... 29 4.1 Preliminary remarks .................................................................................29 4.2 Conversion................................................................................................30 4.3 Transformation .........................................................................................30
4.3.1 Preliminary remarks...................................................................................... 30 4.3.2 Principle and effects ..................................................................................... 31 4.3.3 Procedure ..................................................................................................... 31 4.3.4 Examination .................................................................................................. 32
4.3.4.1 Application for transformation of IR designating the EU where no particulars have been published................................................................32
4.3.4.2 Application for transformation of IR designating the EU where particulars have been published................................................................32
4.3.5 Transformation and Seniority ....................................................................... 33 4.3.6 Fees.............................................................................................................. 33
4.4 Replacement .............................................................................................33 4.4.1 Preliminary remarks...................................................................................... 33 4.4.2 Principle and effects ..................................................................................... 34 4.4.3 Procedure ..................................................................................................... 34 4.4.4 Fees.............................................................................................................. 35 4.4.5 Publication .................................................................................................... 35 4.4.6 Replacement and seniority ........................................................................... 35 4.4.7 Replacement and transformation ................................................................. 35 4.4.8 Replacement and conversion ....................................................................... 35
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This part of the Guidelines focuses specifically on the examination of international marks. For further details on nor mal aspects of procedure, please also consult the other relevant parts of the Guidelines (examination, opposition, cancellation, etc.).
1 Introduction
The purpose of this part of the Guidelines is to explain how, in practice, the link between the Community trade mark (CTM) and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (‘Madrid Protocol’ or MP) affects procedures and s tandards of examination and oppos ition at OHIM. Paragraph 2 deals with OHIM’s tasks as an office of origin, that is, with ‘outgoing’ international applications. Paragraph 3 deals with its tasks as a designated office, that is, with ‘incoming’ international registrations designating the EU (IR). Paragraph 4 deals with conversion, transformation and replacement.
The Guidelines are not intended to, and cannot, add to or subtract from the substance of new Title XIII CTMR and Rules 102-126 CTMIR. OHIM is also bound by the provisions of the Madrid Protocol and the Common Regulations (CR). Reference may also be made to the ‘Guide to the International Registration of Marks’ published by WIPO as the Guidelines do not intend to repeat what is said there.
2 OHIM as Office of Origin
The tasks of OHIM as office of origin chiefly comprise:
• examining and forwarding international applications; • examining and forwarding subsequent designations; • handling notices of irregularity issued by WIPO; • notifying WIPO of certain facts affecting the basic mark during the five-year
dependency period; • forwarding certain requests for changes in the international register.
2.1 Examination and forwarding of international applications
Article 146 CTMR Rule 102(3) CTMIR
International applications filed with OHIM are subject to:
• payment of the handling fee; • the existence of (a) basic CTM registration(s) or application(s) (‘basic mark(s)’); • identity between the international application and the basic mark(s); • proper completion of the MM2 or EM2 form; • an entitlement to file the international application through OHIM.
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2.1.1 Identification of international applications
An international application will be identified in the OHIM database under the basic CTM(A) number followed by the suffix _01 (e.g. 012345678_01) if it relates to a first international application. Further applications based on the same basic CTM(A) will be identified by _02, _03, etc. International applications based on more than one CTM(A) will be identified by the number of the older CTM(A).
Upon receipt of an international application, the examiner will send a receipt to the applicant, quoting the file number.
2.1.2 Fees
2.1.2.1 Handling fee
Article 147(5), Article 150 CTMR Article 2(31) CTMFR Rule 103(1), Rule 104 CTMIR
An international application is only deemed to have been f iled if the handling fee of EUR 300 has been paid.
Payment of the handling fee must be made to OHIM by one of the accepted means of payment (for details, see the Guidelines Part A, General Rules, Section 3, Payment of Fees, Costs and Charges, paragraph 2, Means of Payment).
Where the applicant chooses to base the international application on a CTM once it is registered, the application for the IR is deemed to have been received on the date of registration of the CTM; therefore, the handling fee will be due on the date of registration of the CTM.
The means of payment used may be communicated to OHIM by ticking the appropriate boxes on the EM2 form or by giving this information in the letter accompanying the MM2 form.
If, in the course of examination of the international application, the examiner finds that the handling fee has not been paid, the examiner will inform the applicant and ask it to pay the fee within two months. If payment is made within the two-month time limit set by the OHIM, the date of receipt which OHIM will communicate to WIPO will be t he date the payment reaches OHIM. If payment is still not made within the two-month time limit set by OHIM, OHIM will inform the applicant that it considers the international application not to have been filed and will close the file.
2.1.2.2 International fees
All international fees must be paid directly to WIPO. None of the fees payable directly to WIPO will be collected by OHIM. Any such fees paid by error to OHIM will be reimbursed to the sender.
If the applicant uses EM2 forms, the Fee C alculation Sheet (Annex to WIPO form MM2) must be submitted in the language in which the international application is to be
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transmitted to WIPO. Alternatively, the applicant can attach a copy of the payment to WIPO. However, OHIM will not examine whether the Fee C alculation Sheet is attached, whether it is correctly filled in, or whether the amount of the international fees has been correctly calculated. Any questions regarding the amount of the international fees and related means of payment should be addressed to WIPO. A fee calculator is available on WIPO’s website.
2.1.3 Forms
Article 147(1) CTMR Rules 83(2)(b), 103(2)(a) CTMIR
Use of one of the official forms is compulsory. The official form is either WIPO form MM2, available in English, French or Spanish, or OHIM form EM2 (OHIM adaptation of MM2), which is available in all official EU languages. Applicants may not use other forms or change the contents and layout of the forms. However, both the WIPO MM2 form and the OHIM EM2 form are available in .doc format allowing as much text as necessary to be entered for each item.
If the application is filed in a language that is not one of the Madrid Protocol languages (English, French, Spanish), the applicant must indicate in which of these three languages the application is to be forwarded to WIPO. All items on the form must be completed in the same language; it is not possible to choose a language other than the language of the form.
OHIM recommends using the OHIM EM2 form. The OHIM EM2 form in English, French and Spanish has almost the same layout and numbering as the WIPO MM2 form but is specifically adapted to the CTM environment:
• applicants can indicate payment details (item 0.4) to OHIM in the introductory item 0 and the number of pages (item 0.5) the application contains;
• certain choices are limited to what is applicable to OHIM (e.g. OHIM is always the office of origin (item 1), and the applicant must be a national of an EU Member State (item 3));
• item 4b has been added for including the representative before OHIM; • the reproduction of the mark need not be submitted in item 7, as OHIM will use
the reproduction available in the basic CTM(A); • the option of seeking protection for the same goods and services contained in the
basic mark by ticking a box has been added in item 10; • since self-designation is not possible, the EU is not included in the list of
Contracting Parties to be designated in item 11; • item 13 has been del eted, as OHIM certifies the international application
electronically.
Where the applicant chooses the OHIM EM2 form in a language version other than English, French or Spanish, the following additional sections of the form have to be completed:
• tick boxes in item 0.1 for indicating the MP language in which the international application is to be transmitted to WIPO;
• tick boxes in item 0.2 for selecting the language in which OHIM is to communicate with the applicant on matters concerning the international
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application, that is, either the language in which the international application is filed or the language in which it is to be transmitted to WIPO (see Article 147(1), second sentence, CTMR);
• tick boxes in item 0.3 for indicating either that a translation of the list of goods and services is included or that OHIM is authorised to produce the translation;
• a final item A with tick boxes for specifying annexes (attached translations).
The appropriate boxes in items 0.1, 0.2 and 0.3 must be ticked. If none of the boxes in item 0.2 is ticked, OHIM will communicate with the applicant in the language of the EM2 form.
All applicable items in the form must be completed following the indications provided on the form itself and in the ‘Guide to the International Registration of Marks’ published by WIPO.
2.1.3.1 Entitlement to file
Article 2(1)(i) Madrid Protocol (MP)
Under item 3 of the official form, an indication must be given regarding entitlement to file. An applicant is entitled to file with OHIM as office of origin if it is a national of, or has domicile or a real and effective industrial or commercial establishment in, an EU Member State. The applicant may choose on which criterion/criteria to base the right to file. For example, a D anish national domiciled in Germany can choose to base entitlement to file either on nationality or domicile. A French national domiciled in Switzerland is entitled to file only based on nationality (however, in this case a representative before OHIM must be appointed). A Swiss company with no domicile or real and effective industrial or commercial establishment in an EU Member State is not entitled to file an international application through OHIM.
Where there are multiple applicants, each must fulfil at least one of the entitlement criteria.
The expression ‘real and effective industrial or commercial establishment in an EU Member State’ is to be interpreted in the same way as in other instances, such as in the context of professional representation (see the Guidelines, Part A, General Rules, Section 5, Professional Representation, paragraph 3.1.1).
2.1.3.2 Basic mark
Rule 103(2)(c), (d), (e) CTMIR Rule 9(4)(a)(v), (vii), (vii bis-xii), Rule 11(2) CR
The Madrid system is founded on the requirement of a basic national or regional trade mark application or registration. Under the MP, an i nternational application may be based on either a mark that has already been registered (‘basic registration’), or a trade mark application (‘basic application’) at any point in the trade mark examination procedure.
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An applicant may choose to base its international application on several basic marks providing it is the applicant/proprietor of all the basic CTMAs and CTMs even where, although containing identical marks, the goods and services covered are different.
All the basic CTMA(s) or CTM(s) must have been accorded a filing date, and must be in force.
The international applicant must be identical to the CTM holder/CTMA applicant. The international application may not be filed by a licensee or an affiliated company of the holder of the basic mark(s). A deficiency in this respect may be overcome by transferring the basic mark to the international application applicant, or by recording a change of name, as applicable (see the Guidelines Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer). Where there are multiple holders or applicants in the basic CTM(s) or CTMA(s), the international application must be submitted by the same persons.
The reproduction of the mark must be identical. Particular attention should be paid to the following:
• Item 7 c) of the official form must be ticked if the mark is in standard characters (word mark).
• Item 8 a) of the official form foresees the possibility of making a colour claim. Where the basic CTM(s) or CTMA(s) contain(s) an i ndication of colours, the same indication must be m ade in the international application (see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 11). Where the basic CTM(s) or CTMA(s) is/are in colour but do(es) not contain an indication of colours the applicant may choose to indicate the colours for the international application.
• If the basic mark is
○ a mark for a colour or colour combination as such, ○ a three-dimensional mark, ○ a sound mark, and/or ○ a collective mark,
the international application must be the same, and item 7 d) or 9 d) must be ticked. If the basic mark is a sound mark, only the graphic representation, i.e. the musical notation, will be transmitted to WIPO as WIPO does not accept electronic sound files.
• If the basic mark includes a description, the same description may be included in the international application (item 9 e)). However, a description of the mark may not be added in the international application if the basic mark(s) do(es) not contain one.
• A disclaimer may be included even if the basic mark(s) do(es) not include one (item 9 g)).
• WIPO requires a transliteration in Latin characters if the mark contains characters other than Latin. If no transliteration is provided, WIPO will raise an irregularity, which must be remedied directly by the applicant. This is true for all types of trade marks, not just word marks.
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The list of goods and services must be identical to or narrower than the list contained in the basic mark(s) on the day the international application is filed.
• The applicant must specify the list of goods and services by class (item 10).
• The list may also be limited for some designated parties.
If the applicant does not provide a translation into the WIPO language chosen by it (English, French or Spanish) but instead authorises OHIM to provide the translation or to use the one available for the basic mark(s), it will not be consulted on the translation.
2.1.3.3 Priority claim(s)
If priority is claimed under item 6 of the official form, the office of earlier filing, the filing number (if available) and the filing date must be indicated. Priority documents should not be submitted. Where the earlier filing claimed as a priority right in an international application does not relate to all the goods and services, those to which it does relate should be indicated. Where priority is claimed from several earlier filings with different dates, the goods and services to which each earlier filing relates should be indicated. The validity of the claim will in principle not be challenged by the examiner, as in most cases either the basic CTM(A) is the first filing for which priority is claimed or the priority of another earlier mark has already been claimed and examined in relation to the basic CTM(A). However, if there is evidence in the file that priority is claimed for a right that is not a first filing, the examiner will object and request that the priority claim be deleted.
2.1.3.4 Designated contracting parties
An international application filed at OHIM is governed exclusively by the Madrid Protocol. Only contracting parties that are party to the Protocol can be designated, regardless of whether they are also bound by the Madrid Agreement.
2.1.3.5 Signature
Rule 9(2)(b) CR
The signature in item 12 of the official form is optional since the data will be forwarded only electronically to WIPO and not as an original document or facsimile copy of the form.
2.1.3.6 Form for the designation of the USA
Where the United States of America is designated, a duly completed and signed WIPO MM18 form must be attached (see item 11, footnote **). This form, which contains the declaration of intention to use the mark, is available only in English and m ust be submitted in that language irrespective of the language of the international application.
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2.1.4 Examination of the international application by OHIM
Article 147 CTMR Rule 103(2), Rule 104 CTMIR Article 3(1) MP
Where examination of the international application reveals deficiencies, OHIM will invite the applicant to remedy them within one month. In principle, this short time limit should enable OHIM to forward the international application to WIPO within two months from the date of receipt and thus maintain that date as the date of international registration.
Examiners may try solving minor deficiencies or seeking clarification over the phone in order to speed up the process.
If the deficiencies are not remedied, OHIM will inform the applicant that it refuses to forward the international application to WIPO. The handling fee will not be refunded.
This does not preclude the filing of another international application at a later date.
As soon as OHIM is satisfied that the international application is in order, it will transmit it to WIPO electronically, with the exception of documents such as the Fee Calculation Sheet or the MM18, which will be transmitted as scanned attachments. The electronic transmission will contain the certification by the office of origin referred to in Article 3(1) MP.
2.1.5 Irregularities found by WIPO
Rule 11(4), Rules 12, 13 CR
If WIPO detects irregularities in the application, it will issue an irregularity notice, which will be forwarded to both the applicant and OHIM as office of origin. The irregularities must be remedied by OHIM or the applicant, depending on their nature. Irregularities relating to the payment of the international fees must be remedied by the applicant. Any of the irregularities mentioned in Rule 11(4) CR must be remedied by OHIM.
Where there are irregularities in the classification of the goods and services, in the indication of the goods and services, or in both, the applicant cannot present its arguments directly to WIPO. Instead, they must be c ommunicated through OHIM. In this case, OHIM will forward the applicant’s communication just as it is to WIPO, as OHIM does not make use of either the option under Rule 12(2) CR to express a different opinion or that under Rule 13(2) CR to make a pr oposal to remedy the irregularity.
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2.2 Subsequent designations
Article 149 CTMR Rule 1(xxvi bis), Rule 24(2) CR Article 2(1)(ii) MP Rule 83(2)(b), Rule 105(1)(a), (c), (d), Rule 105(2), (4) CTMIR
Within the framework of the Madrid System, the holder of an international registration can extend the geographical scope of a r egistration’s protection. There is a specific procedure called ‘subsequent designation to a registration’, which extends the scope of the international registration to other members of the Madrid Union for whom either no designation has been recorded to date or the prior designation is no longer in effect.
Unlike international applications, subsequent designations need not be filed through the office of origin but may be filed directly with WIPO. Direct filing with WIPO is recommended for a speedier process.
Where an IR is transferred to a per son who is not entitled to make a subsequent designation through OHIM, the application for such a subsequent designation cannot be filed through OHIM, but must instead be filed through WIPO or the corresponding office of origin (for more information on entitlement to file, see paragraph 2.1.3.1 above).
Subsequent designations may only be made after an initial international application has been made and has resulted in an international registration.
Subsequent designations are not subject to payment of a handling fee to OHIM.
Subsequent designations must be filed on the official form: the WIPO MM4 form in English, French or Spanish or the OHIM EM4 form in the other EU languages. There is no specific OHIM form in English, French and Spanish as no s pecial indications for OHIM are needed in those languages and the WIPO MM4 form is, therefore, sufficient.
The Fee Calculation Sheet (Annex to the WIPO MM4 form) must be submitted in the language in which the subsequent designation is to be transmitted to WIPO. Alternatively, the applicant can attach a copy of the payment to WIPO. However, OHIM will not examine whether the Fee Calculation Sheet is attached, whether it is correctly filled in, or whether the amount of the international fees has been correctly calculated. Any questions regarding the amount of the international fees and related means of payment should be addressed to the International Bureau. A fee calculator is available on WIPO’s website.
In the MM4 or EM4 forms, the indications to be made are limited to indications concerning the applicant and its entitlement to file, indications concerning the representative, the list of goods and services, and the designation of additional Contracting Parties to the Madrid Protocol. These indications must be made in the same way as in the MM2 form. The only difference in the entitlement to file is that a subsequent designation may be filed at OHIM if the international registration is transferred to a person who is a national of an EU Member State or has their domicile or an establishment in the EU (OHIM as ‘office of the contracting party of the holder’).
A subsequent designation may also be used to extend the scope of the IR to enlarge the goods and/or services coverage of a prior designation
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The list of goods and services may be the same as in the international registration (item 5 a) of the official form) or narrower (item 5 b) or c)). It may not be broader than the scope of protection of the international registration even if covered by the basic mark.
For example, an IR for classes 18 and 25 designating China for class 25 can subsequently extended to China for class 18; however, that same IR could not be subsequently extended to China for class 9 as this class is not covered by the international registration, even if it is covered by the basic mark.
Within these limitations, different lists may be presented for different, subsequently designated, contracting parties.
The mark must be the same as in the initial international registration.
Subsequent designations must be made in the same language as the initial international application, failing which OHIM will refuse to forward the subsequent designation.
If the application is not in English, French or Spanish, the applicant must tick item 0.1 on the OHIM EM4 form and indicate the language in which the subsequent designation is to be transmitted to WIPO. That language may be different from the language of the international registration. Items 0.2 and 0.3 regarding the translation of the list of goods and services and t he language of correspondence between the applicant and O HIM must also be completed.
Where the holder/applicant so requests, a s ubsequent designation may take effect after specific proceedings have been concluded, namely the recording of a change or a cancellation in respect of the IR concerned or the renewal of the IR.
2.3 Notification of facts affecting the basic registration
Articles 44, 49 CTMR Rule 106(1)(a), (b), (c), Rule 106(2), (3), (4) CTMIR
If, within five years of the date of the international registration, the basic mark(s) ceases to exist in whole or in part, the international registration is cancelled to the same extent since it is ‘dependent’ thereon. This occurs not only in the event of a ‘central attack’ by a third party, but also if the basic mark(s) lapse(s) due to action or inaction on the part of its proprietor.
For CTMs, this covers cases where, either fully or partially (for only some goods or services),
• the CTMA(s) on which the IR is based is (are) withdrawn, deemed to be withdrawn or refused;
• the CTM(s) on which the IR is based is (are) surrendered, not renewed, revoked or declared invalid by OHIM or, upon a counterclaim in infringement proceedings, by a CTM court.
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Where the above occurs as a r esult of a decision (by OHIM or a C TM court), the decision must be final.
If the above occurs within the five-year period, OHIM must notify WIPO accordingly.
OHIM must check that the international application has actually been registered before notifying WIPO that the basic CTM has ceased to have effect.
WIPO must also be notified in certain cases where a procedure has been initiated prior to expiry of the five-year period but is not finally decided within that period. This notification is to be made immediately after expiry of the five-year period. The cases involved are:
• a pending refusal of the basic CTMA(s) on absolute grounds (including ensuing appeals before the Boards of Appeal or the GC/CJEU);
• pending opposition proceedings (including ensuing appeals before the Boards or the GC/CJEU);
• pending cancellation proceedings before OHIM (including ensuing appeals before the Boards or the GC/CJEU);
• a counterclaim in infringement proceedings against a CTM, according to the CTM Register, which is pending before a CTM court.
Once a final decision has been taken or the proceedings have been terminated, a further notification must be sent to WIPO stating whether and to what extent the basic mark(s) has (have) ceased to exist or remained valid.
If, within five years of the date of the international registration, the basic CTM(s) or CTMA(s) is (are) divided or partially transferred, this must also be no tified to WIPO. However, in those cases, there will be no ef fect on t he validity of the international registration. The purpose of the notification is merely to keep record of the number of mark(s) on which the IR is based.
No other changes in the basic mark(s) will be notified to WIPO by OHIM. Where the applicant/holder wishes to record the same changes in the international register it should apply for this separately (see paragraph 2.4 below)
2.4 Forwarding of changes affecting the international mark
Rule 107 CTMIR
The international register is kept at WIPO. The possible changes listed below may only be recorded once the mark has been registered.
OHIM will not process requests for renewal or payments of renewal fees.
In principle, most changes relating to international registrations can be filed either directly with WIPO by the holder of the international registration on record or through the office of origin. However, some applications for changes can be filed by another party and through another office, as detailed below.
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2.4.1 Cases where applications for changes can be forwarded without examination
Rules 20, 20 bis, Rule 25(1) CR
The following applications for changes relating to an international registration can be presented to OHIM as an ‘office of the contracting party of the holder’:
• WIPO form MM5: change of ownership, either total or partial, submitted by the IR holder on record (in CTM terminology, this corresponds to a transfer);
• WIPO form MM6: limitation of the list of goods and s ervices for all or some contracting parties;
• WIPO form MM7: renunciation of one or more contracting parties (not all); • WIPO form MM8: full or partial cancellation of the international registration; • WIPO form MM9: change of the name or address of the holder; • WIPO forms MM13/MM14: new licence or amendment to a licence submitted by
the IR holder on record; • WIPO form MM15: for cancelling the recording of a license • WIPO form MM19: restriction of the holder’s right of disposal submitted by the IR
holder on record (in CTM terminology, this corresponds to a right in rem, levy of execution, enforcement measure or insolvency proceedings contemplated in Articles 19, 20 and 21 CTMR).
Such applications made to OHIM by the IR holder will simply be f orwarded to WIPO without further examination. The provisions under the CTMR and C TMIR for the corresponding proceedings do not apply. In particular, the language rules applicable are those under the CR, and there is no OHIM fee to be paid.
These applications can only be f iled through OHIM if it is the office of origin or if it acquires competence in respect of the holder as the result of a t ransfer of the international registration (see Rule 1(xxvi bis) CR). However, this condition will not be examined by OHIM because the latter will simply forward the request, which could have been filed with WIPO directly.
No use will be made of the options provided in Rule 20(1)(a) CR that allow an office of the contracting party of the holder to notify the International Bureau of a restriction of the holder’s right of disposal on its own motion.
2.4.2 Cases where applications for changes will be f orwarded after examination
Rule 20(1)(a), Rule 20 bis(1), Rule 25(1)(b) CR Rule 120 CTMIR
The Common Regulations provide that applications for recording a change of ownership, a l icence or a restriction of the holder’s right of disposal may only be f iled directly with WIPO by the holder of the international registration. It would be practically impossible to record a change of ownership or licence with WIPO where:
• the original holder no longer exists (merger, death), or
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• the holder is either not cooperating with its licensee or (even more likely) is the beneficiary of an enforcement measure.
For these reasons, the new holder, licensee or beneficiary of the right of disposal has no choice but to file their application with the office of the contracting party of the holder. WIPO will register such applications without any substantive examination on the basis that they have been transmitted by that office.
To avoid a third person becoming the owner or licensee of an international registration, it is imperative that OHIM examines all applications presented by any person other than the holder of the IRin order to verify that there is proof of the transfer, licence or other right, as provided in Rule 120 CTMIR. OHIM limits itself to examining proof of the transfer, licence or other right, and Rule 31(1), (5) CTMIR and the corresponding parts of the OHIM Guidelines on transfers, licences, rights in rem, levy of execution and insolvency proceedings apply by analogy. If no proof is furnished, OHIM will refuse to forward the application to WIPO.
This decision is open to appeal.
In all other respects, the rules under the CTMR and CTMIR do not apply. In particular, the application must be in one of the WIPO languages and on the appropriate WIPO form, and no fee is payable to OHIM.
3 OHIM as Designated Office
3.1 Overview
Since 01/10/2004, any person who is a nat ional of, or has a domicile or commercial establishment in, a State which is party to the Madrid Protocol and who is the owner of a national application or registration in that same State (a ‘basic mark’) may, through the national office where the basic mark is applied for or registered (the ‘office of origin’), file an international application or a subsequent designation in which they can designate the European Union.
Once it has examined classification and checked certain formalities (including payment of fees), WIPO will publish the IR in the International Gazette, issue the certificate of registration and no tify the designated offices of the international registration. OHIM receives the data from WIPO exclusively in electronic form.
International registrations designating the EU are identified by OHIM under their WIPO registration number preceded by a ‘W’ and followed by a 0 in the case of a new IR (e.g. W01 234 567) and a 1 in the case of a subsequent designation (e.g. W10 987 654). Further designations of the EU for the same IR will be i dentified as W2, W3, etc. However, when searching in OHIM databases online the ‘W’ should not be indicated.
OHIM has 18 months to inform WIPO of all possible grounds for refusal of the EU designation. The 18-month period starts on the day on which OHIM is notified of the designation.
Where corrections are received from WIPO that affect the mark itself, the goods and services or the designation date, it is up to OHIM to decide if a new 18-month period is to start running from the new notification date. Where a correction affects only part of the goods and services, the new time limit applies only to that part and OHIM would
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have to re-publish the IR in part in the CTM Bulletin and re-open the opposition period only for that part of the goods and services.
The main tasks performed by OHIM as designated office are:
• first republication of IRs designating the EU; • drawing up of Community search reports; • examination of formalities, including seniority claims; • examination on absolute grounds; • examination of oppositions against IRs; • processing of communications from WIPO concerning changes to the IRs.
3.2 Professional representation
Article 92(2) Article 93 CTMR
In principle, the IR holder does not need to appoint a representative before OHIM.
Non-EU holders are, however, obliged to be r epresented (a) further to a provisional refusal, (b) for filing seniority claims directly before OHIM, or (c) further to an objection on a seniority claim (see the Guidelines, Part A, General Rules, Section 5, Professional Representation and Articles 92 and 93 CTMR).
If the non-EU IR holder has appointed a representative before WIPO who also appears in the database of representatives maintained by OHIM, this representative will automatically be considered to be the representative of the IR holder before OHIM.
Where the non-EU IR holder has not appointed a r epresentative or has appointed a representative before WIPO who does not appear in the database of representatives maintained by OHIM, any notifications of provisional refusal or objection will contain an invitation to appoint a representative in compliance with Articles 92 and 93 CTMR. For the particularities of representation in each of the proceedings before OHIM, see paragraphs 3.3.3, 3.4 and 3.6.6 below.
3.3 First republication, searches and formalities
3.3.1 First republication1
Article 152 CTMR
Upon receipt, IRs will immediately be republished in Part M.1 of the CTM Bulletin, except where the second language is missing.
Publication will be l imited to bibliographic data, the reproduction of the mark and the class numbers, and will not include the actual list of goods and services. This means, in particular, that OHIM will not translate international registrations or the list of goods and services. The publication will also indicate the first and second languages of the IR and contain a reference to the publication of the IR in the WIPO Gazette, which should be
1 IRs are published first in the International Gazette and then ‘republished’ by OHIM.
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consulted for further information. For more details, reference is made to the CTM Bulletin on OHIM’s website.
The international registration has, from the date of first republication, the same effect as a published CTM application.
3.3.2 Searches
Article 155 CTMR
As with direct CTM filings, OHIM will draw up a Community search report for each IR, which will cite similar CTMs and I Rs designating the EU. The owners of the earlier marks cited in the report will receive a surveillance letter in accordance with Article 155(4) CTMR. In addition, upon request by the international holder, OHIM will send the IR to the participating national offices to have national searches carried out (see the Guidelines Part B, Examination, Section 1, Proceedings).
The national search request must be filed directly with OHIM. Holders of IRs designating the EU must request the national searches and pay the corresponding fee within a period of one month from when WIPO informs OHIM of the designation. Late or missing payments of search fees will be dealt with as if the request for national searches had not been filed and then only the Community search report will be drawn up.
Payment can be made using any of the means of payment accepted by OHIM (for details, see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges, paragraph 2).
The search reports will be sent directly to the IR holder or, if the latter has appointed a representative before WIPO, to that representative, irrespective of location. The holder will not be r equired to appoint a r epresentative before OHIM for the sole purpose of receiving the search report or requesting national searches.
3.3.3 Formalities examination
The formalities examination carried out by OHIM on IRs is limited to whether a second language has been i ndicated, whether the application is for a c ollective mark and whether there are any seniority claims. OHIM will not review the classification of goods and services performed by WIPO.
3.3.3.1 Languages
Article 119(3), (4) CTMR Rule 96(1), Rules 112, 126 CTMIR Rule 9(5)(g)(ii) CR
Rule 9(5)(g)(ii) CR and Rule 126 CTMIR require the applicant for an international application designating the EU to indicate a second language, different from the first one, selected from the four remaining languages of OHIM by ticking the appropriate box in the contracting parties section of WIPO forms MM2/MM3 or MM4.
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According to Rule 126 CTMIR, the language of filing of the international application will be the language of the proceedings within the meaning of Article 119(4) CTMR. If the language chosen by the international registration holder in written proceedings is not the language of the international application, the holder must supply a translation into that language within one month from when the original document was submitted. If the translation is not received within this time limit, the original document is deemed not to have been received by OHIM.
The second language indicated in the international application will be the second language within the meaning of Article 119(3) CTMR, that is, a possible language of proceedings for opposition, revocation or invalidity proceedings before OHIM.
Where no second language has been indicated, the examiner will issue a provisional refusal of protection and give the holder two months from the day on which OHIM issues the provisional refusal pursuant to Rule 112 CTMIR to remedy the deficiency. Where the IR holder is obliged to be represented in proceedings before OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, the notification of provisional refusal will invite the holder to appoint a representative in compliance with Articles 92 and 93 CTMR. This notification will be r ecorded in the international register, published in the Gazette and communicated to the IR holder. The reply to the provisional refusal must be addressed to OHIM.
If the IR holder remedies the deficiency and complies with the requirement to appoint a representative before OHIM, if applicable, within the prescribed time limit, the IR will proceed to republication.
If the deficiency has not been r emedied and/or a r epresentative has not been appointed (if applicable), OHIM will confirm the refusal to the IR holder. The holder has two months within which to lodge an appeal. Once the decision is final, OHIM will inform WIPO that the provisional refusal is confirmed.
3.3.3.2 Collective marks
Articles 66, 67 CTMR Rule 43, Rule 121(1), (2), (3) CTMIR
In the CTM system, there are only two kinds of mark: individual marks and collective marks (for more details see the Guidelines, Part B, Examination, Section 2, Formalities).
The international application form contains one s ingle indication grouping collective marks, certification marks and guarantee marks. Therefore, if the IR designating the EU is based on a national certification mark, guarantee mark or collective mark, it will be identified as a collective mark before OHIM; this entails the payment of higher fees.
The conditions applying to Community collective marks will also apply to IRs designating the EU as a collective mark.
According to Rule 121(2) CTMIR, the holder must submit the regulations governing use of the mark directly to OHIM within two months of the date on which the International Bureau notified OHIM of the designation.
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If, by then, the regulations on use have not been submitted or contain irregularities, or the holder does not comply with the requirements of Article 66, the examiner will issue a provisional refusal of protection and give the holder two months from the day on which OHIM issues the provisional refusal pursuant to Rule 121(3) CTMIR to remedy the deficiency. Where the IR holder is obliged to be represented in proceedings before OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, the notification of provisional refusal will invite the holder to appoint a representative in compliance with Articles 92 and 93 CTMR. This notification will be recorded in the international register, published in the Gazette and communicated to the IR holder. The reply to the provisional refusal must be addressed to OHIM. If the IR holder remedies the deficiency and complies with the requirement to appoint a representative before OHIM, if applicable, within the prescribed time limit, the international registration will proceed.
If the deficiency has not been r emedied and/or a r epresentative has not been appointed (if applicable), OHIM will confirm the refusal to the IR holder, and grant a two-month time limit for lodging an appeal. Once the decision is final, OHIM will inform WIPO that the provisional refusal is confirmed.
When, in the answer to the provisional refusal, elements are submitted satisfying OHIM that the basic mark is a certification mark or guarantee mark and the IR holder is not qualified to be the owner of a Community collective mark, OHIM will examine the designation as an individual mark. The IR holder will be informed accordingly and will also be r eimbursed with the difference in euros between the fees for an i ndividual designation of the EU and for a collective one.
3.3.3.3 Seniority claims
Seniority claims filed together with the designation
Article 153(1) CTMR Rule 9(3)(d), Rule 9(7), Rule 108, Rule 109(1), (2), (3), (4) CTMIR Rule 9(5)(g)(i), Rule 21 bis CR
The applicant may, when designating the EU in an i nternational application or a subsequent designation, claim the seniority of an earlier mark registered in a Member State. Such a c laim must be pr esented by attaching form MM17 to the international application or subsequent designation request, which should include for each claim:
• the EU Member State in which the earlier right is registered; • the registration number; • the filing date of the relevant registration.
There is no equivalent provision to Rule 8(2) CTMIR applicable to direct CTM filings.
No certificates or documents in support of the seniority claims should be attached to the MM17 form, as they will not be transmitted to OHIM by WIPO. Seniority claims presented together with the international application or subsequent designation will be examined in the same way as seniority claims presented with a Community trade mark application. For more information, please refer to the Guidelines, Part B, Examination, Section 2, Formalities.
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If it is necessary to file documentation in support of the seniority claim or if the claim contains irregularities, the examiner will issue a deficiency letter giving the IR holder two months within which to remedy the deficiency. Where the IR holder is obliged to be represented in proceedings before the OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, the holder will also be invited to appoint a representative before OHIM.
If the seniority claim is accepted by OHIM, the IP offices concerned will be informed. WIPO need not be informed since no change in the international register is required. If the deficiency has not been r emedied and/or a r epresentative has not been appointed (if applicable), the right of seniority will be lost pursuant to Rule 109(2) CTMIR. The IR holder may request a decision, which can be appealed. Once it is final, OHIM will inform WIPO of any loss, refusal or cancellation of the seniority right or of any withdrawal of the seniority claim. Those changes will be recorded in the international register and published by WIPO.
Seniority claims filed directly before OHIM
Article 153(2) CTMR Rule 110(1), (2), (4), (5), (6) CTMIR Rule 21 bis (2) CR
The IR holder may also claim the seniority of an earlier mark registered in a Member State directly before OHIM upon publication of the final acceptance of the IR. Where the IR holder is obliged to be represented in proceedings before OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, OHIM will invite the holder to appoint a representative in compliance with Articles 92 and 93 CTMR.
The reply to the deficiency letter must be addressed to OHIM.
Any seniority claim presented in the interval between the filing of the international application and the publication of the final acceptance of the IR will be deemed to have been received by OHIM on the date of publication of the final acceptance of the IR and will therefore be examined by OHIM after that date.
If it is necessary to file documentation in support of the seniority claim or if the claim contains irregularities, the examiner will issue a deficiency letter giving the IR holder two months within which to remedy the deficiency. Where the holder of the international registration is obliged to be r epresented in proceedings before OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, the holder will also be r equested to appoint a representative before OHIM.
If the seniority claim is accepted by OHIM, it will inform WIPO, which will record this fact in the international register and publish it.
The IP offices concerned will be informed pursuant to Rule 110(6) CTMIR.
If the deficiency is not remedied and/or a r epresentative has not been appointed (if applicable), the seniority right will be refused and the IR holder will be given two
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months within which to lodge an appeal. In such cases, WIPO is not informed. The same applies if the seniority claim is abandoned.
3.4 Absolute grounds for refusal
Article 154(1) CTMR Rule 112(5), 113 CTMIR
International registrations designating the EU shall be s ubject to examination as to absolute grounds for refusal in the same way as direct CTMAs (for details, please consult the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal and Community Collective Marks).
If OHIM finds that the mark is eligible for protection, it will send an interim status of the mark to WIPO, indicating that the ex-officio examination has been completed, but that the IR is still open t o oppositions or third-party observations. This notification will be recorded in the international register, published in the Gazette and communicated to the IR holder.
If OHIM finds that the mark is not eligible for protection, it will send a provisional refusal of protection, giving the holder two months from the day on which the provisional refusal is sent to file observations. Where the holder of the international registration is obliged to be represented in proceedings before OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, the notification of provisional refusal will also invite the holder to appoint a representative in compliance with Articles 92 and 93 C TMR. This notification will be r ecorded in the international register, published in the Gazette and communicated to the IR holder. The reply to the provisional refusal must be addressed to OHIM.
If, after re-examining the case, the objection is waived, the examiner will issue an interim status of the mark to WIPO, provided that the opposition period is still running.
Where no provisional refusal has been issued by OHIM before the start of the opposition period (six months after republication), the absolute grounds examination shall be considered concluded. OHIM will, therefore, send an interim status of the mark to WIPO.
Once the provisional refusal has been sent, further examination is the same as for a direct CTMA; direct exchanges with the holder or its representative will be held as often as required.
Replies received by the IR holder or its representative will not be addr essed where both are located outside the EU.
If the holder fails to overcome the objections or convince the examiner that they are unfounded, or refrains from replying to the objection, the refusal will be confirmed to the extent identified in the provisional refusal. In other words, if the provisional refusal concerned only part of the goods and services, only those goods and services will be refused and the remaining goods and services will be accepted. The IR holder will be given two months within which to lodge an appeal.
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Once the decision is final and provided that the refusal is total, OHIM will inform WIPO that the provisional refusal is confirmed. If the absolute grounds refusal is only partial, the communication to WIPO will be issued once all other procedures (oppositions) are terminated or the opposition period is over with no opposition received (see point 3.9 below).
3.5 Third-party observations
Article 40 CTMR Rule 112(5) CTMIR
Third-party observations can be validly filed at OHIM from the date of notification of the IR to OHIM until at least the end of the opposition period and, if an opposition was filed, as long as the opposition is pending, but not beyond the 18-month period OHIM has for informing WIPO of all possible grounds for refusal (see paragraph 3.1 above).
If third-party observations are received before OHIM communicates the outcome of the absolute grounds examination to WIPO and OHIM considers the observations justified, a provisional refusal will be issued without mentioning the third-party observations.
If third-party observations are received after a provisional refusal on absolute grounds has been i ssued in relation to goods and s ervices other than those to which the observations relate and the OHIM considers the observations justified, a further provisional refusal will be issued without mentioning the third-party observations.
If third-party observations are received after an interim status of the mark has been issued and the OHIM considers them justified, a provisional refusal further to third-party observations will be i ssued. The observations will be at tached to the provisional refusal.
The further examination procedure is identical to the procedure described in the Guidelines, Part B, Examination, Section 1, Proceedings, paragraph 3.1, Procedural aspects concerning observations by third parties and review of absolute grounds.
If OHIM considers the observations unjustified, they will simply be forwarded to the applicant without WIPO being informed.
3.6 Opposition
Article 156 CTMR Rules 114 and 115 CTMIR
3.6.1 Timing
Oppositions may be filed against the international registration between the sixth month and the ninth month following the date of first republication. For example, if the first republication is on 15/02/2012, the opposition period starts on 16/08/2012 and ends on 15/11/2012.
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The opposition period is fixed and is independent of the outcome of the procedure on absolute grounds. Nevertheless, the start of the opposition procedure depends on the outcome of the absolute grounds examination insofar as the opposition procedure may be suspended if an absolute grounds refusal is issued.
Oppositions filed after the republication of the IR but prior to the start of the opposition period will be kept on hold and be deemed to have been filed on the first day of the opposition period. If the opposition is withdrawn before that date, the opposition fee is refunded.
For full details on t he opposition procedure, please consult the Guidelines, Part C, Opposition, Section 1, Procedural Matters.
3.6.2 Receipt and informing the international holder
Rule 16a, Rule 114(3) CTMIR
OHIM will issue a receipt to the opponent. If the opposition has been received before the beginning of the opposition period, a letter will be sent to the opponent, informing it that the opposition will be deem ed to have been received on t he first day of the opposition period and that the opposition will be put on hold until then.
OHIM will also send a copy of the notice of opposition to the IR holder or, if the latter has appointed a representative before WIPO and OHIM holds sufficient contact information, to that representative, irrespective of location, for information purposes.
3.6.3 Fees
Article 156(2) CTMR Rule 54 CTMIR
The opposition shall not be treated as duly entered until the opposition fee has been paid. If payment of the fee within the opposition period cannot be es tablished, the opposition will be deemed not to have been entered.
If the opponent disagrees with this finding, it has the right to request a formal decision on loss of rights. If OHIM decides to confirm the finding, both parties will be informed thereof. If the opponent appeals this decision, OHIM will issue a provisional refusal to WIPO, even if incomplete, for the sole purpose of meeting the 18-month time limit. If the decision becomes final, the provisional refusal will be r eversed. Otherwise, the opposition procedure will start in the normal manner.
3.6.4 Admissibility check
Article 92(2) CTMR Rules 17, 115 CTMIR
OHIM will examine whether the opposition is admissible and whether it contains the particulars required by WIPO.
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If the opposition is considered inadmissible, OHIM will inform the IR holder accordingly and no provisional refusal based on an opposition will be sent to WIPO.
For full details on oppos ition proceedings see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.
3.6.5 Language of proceedings
Article 119(6) CTMR Rule 16(1) CTMIR
Oppositions (like cancellation requests) must be filed in the language of the international registration (the first language) or in the second language that the international holder is obliged to indicate when designating the EU. The opponent may choose one of these two languages as the language of the opposition proceedings. The opposition may also be filed in any of the other three OHIM languages provided that a translation into the language of the proceedings is filed within one month.
OHIM will use:
• the language of the opposition proceedings chosen by the opponent in all communications made directly to the parties;
• the language in which the IR was registered by WIPO (first language) in all communications with WIPO, e.g. the provisional refusal.
3.6.6 Representation of the IR holder
3.6.6.1 Opposition receipts
Rule 16a CTMIR
If applicable, in the opposition receipts OHIM will inform the IR holder that if it does not appoint a representative who complies with the requirements stipulated in Articles 92(3) or 93 CTMR within one month of receipt of the communication, OHIM will communicate the formal requirement to appoint a representative to the IR holder together with the opposition deadlines once the opposition is found admissible.
Where the IR holder has a WIPO representative within the EU who does not appear in the database of representatives maintained by OHIM, OHIM will inform this representative that if they wish to represent the IR holder before OHIM they must specify the basis of their entitlement (i.e. whether they are a legal practitioner or professional representative within the meaning of Article 93(1)(a) or (b) CTMR or an employee representative within the meaning of Article 92(3) CTMR) (see also the Guidelines, Part A, General Rules, Section 5, Professional Representation).
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3.6.6.2 Notification of commencement of opposition proceedings
Rule 18(1) CTMIR
If the opposition has been found admissible and where, despite the invitation pursuant to paragraph 3.6.6.1 above, the IR holder fails to appoint an EU representative before the opposition has been notified as admissible, further processing of the file will depend on whether or not the IR holder is obliged to be represented before OHIM pursuant to Article 92(2) CTMR.
• If the IR holder is not obliged to be represented before OHIM, the proceedings will continue directly with the IR holder, i.e. the IR holder will be sent notification of the admissibility of the opposition and the time limits set for substantiation.
• If the IR holder is obliged to be represented before OHIM, the IR holder will be notified of the admissibility of the opposition and will be formally requested to appoint an EU representative within two months of receipt of the communication (Rule 114(4) CTMIR), failing which the IR will be refused with a right to appeal. Once the decision is final the opposition proceedings will be c losed and WIPO will be informed. For the attribution of costs, the normal rules apply. This means that no decision on the costs will be taken and the opposition fee will not be refunded.
3.6.7 Provisional refusal (based on relative grounds)
Article 156(2) CTMR Rule 18, Rule 115(1) CTMIR Article 5(1), Article 5(2)(a), (b) MP Rule 17(1)(a), (2)(v) CR
Any opposition that is deemed to have been entered and is admissible will lead to a notification of provisional refusal being sent to WIPO based on the pending opposition. WIPO will be informed of every admissible opposition duly entered within the opposition period by means of a separate provisional refusal for each opposition.
The provisional refusal will contain the list of goods and s ervices against which the opposition is directed, the earlier rights invoked, and the relevant list of goods and services on which the opposition is based.
The opponent must provide the list of goods and services on which the opposition is based in the language of the opposition proceedings. OHIM will send this list to WIPO in that language and w ill not translate it into the language in which the international registration was registered.
This notification will be recorded in the international register, published in the Gazette and communicated to the IR holder. It will not, however, contain any time limit, as the time limit for commencement of the proceedings will be set in the direct notification to the parties made in parallel by OHIM, as in the case of a normal CTM.
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3.6.8 Suspension of opposition where there is a pending provisional refusal on absolute grounds
Rule 18(2), 20 (7) CTMIR
If the opposition was filed after OHIM had already sent a notification of provisional refusal on absolute grounds in relation to the same goods and services, OHIM will inform WIPO of the provisional refusal and communicate to the parties that, as from the date of the communication, the opposition procedure is suspended until a final decision on absolute grounds is issued.
If the provisional refusal on absolute grounds leads to a final refusal of protection for all goods and services or for those contested by the opposition, the opposition procedure is closed without proceeding to a decision and the opposition fee is refunded.
If the refusal on absolute grounds is not maintained or is only partially maintained, the opposition procedure is resumed for the remaining goods and services.
3.7 Cancellation of the IR or renunciation of the EU designation
If, further to a provisional refusal on absolute or relative grounds, the holder requests the cancellation of the IR from the international register or renounces its designation of the EU, the file is closed upon r eceipt of the notification by WIPO. If this happens before the start of the adversarial part of the opposition proceedings, the opposition fee is reimbursed to the opponent, since it is equivalent to withdrawal of the CTMA. The IR holder must submit such requests to WIPO (or through the office of origin) using the official form (MM7/MM8). OHIM cannot act as an intermediary and w ill not forward these requests to WIPO.
However, cancellation of the IR at the request of the office of origin (due to a ‘central attack’ during the five-year dependency period) is considered equivalent to rejection of the CTMA in parallel proceedings under Rule 18(2) CTMIR, in which case the opposition fee is not reimbursed.
3.8 Limitations of the list of goods and services
OHIM cannot communicate limitations as such to WIPO.
Therefore, further to a provisional refusal on absolute or relative grounds, the IR holder can choose to limit the list of goods or services:
• either through WIPO, using the appropriate form (MM6/MM8) (in which case, provided the limitation allows the objection to be waived, OHIM will communicate to WIPO that the provisional refusal is withdrawn), or
• directly with OHIM. In this case OHIM will communicate the limitation to WIPO by confirming the provisional refusal. In other words, WIPO’s register will reflect the partial refusal, not the limitation as such.
Where there is no provisional refusal pending, all limitations must be filed only through WIPO.
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Limitations will be examined in the same way as limitations or partial surrenders of a CTM(A) (see the Guidelines, Part B, Examination, Section 3, Classification, and the Guidelines, Part E, Register Operations, Section 1, Changes in a Registration). When the limitation has been submitted through WIPO and i s considered unacceptable by OHIM, a declaration that the limitation has no ef fect in the territory of the EU will be issued pursuant to Rule 27(5) CR. This declaration will not be s ubject to review or appeal.
Partial cancellations at the request of the office of origin (further to a ‘central attack’ during the five-year dependency period) will be recorded as they are by OHIM.
If the limitation is submitted before the start of the adversarial part of the opposition proceedings and allows the opposition proceedings to be terminated, the opposition fee is reimbursed to the opponent.
3.9 Confirmation or w ithdrawal of pro visional refusal and issue of Statement of Grant of Protection
Rules 113(2)(a), 115(5)(a), 116(1) CTMIR
If one o r several notifications of provisional refusal have been s ent to WIPO, OHIM must, once all procedures have been completed and all decisions are final,
• either confirm the provisional refusal(s) to WIPO
• or send a Statement of Grant of Protection to WIPO indicating that the provisional refusal(s) is/are partially or totally withdrawn. The Statement of Grant of Protection must specify for which goods and services the mark is accepted.
If, upon expiry of the opposition period, the IR has not been the subject of any provisional refusal, OHIM will send a Statement of Grant of Protection to WIPO for all the goods and services.
The Statement of Grant of Protection must include the date on w hich the IR was republished in Part M.3 of the CTM Bulletin.
OHIM will not issue any registration certificate for IRs.
3.10 Second republication
Articles 151(2),(3), 152(2), Article 160 CTMR Rule 116(2) CTMIR
The second republication by OHIM will take place when, upon c onclusion of all procedures, the IR is (at least in part) protected in the EU.
The date of the second republication will be the starting point for the five-year use period and the date from which the registration may be invoked against an infringer.
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From the date of second republication, the international application has the same effects as a registered CTM. These effects may therefore come into force before the 18-month time limit has elapsed.
Only the following data will be published in Part M.3.1 of the CTM Bulletin:
111 Number of the international registration; 460 Date of publication in the International Gazette (if applicable); 400 Date(s), number(s) and page(s) of previous publication(s) in the CTM Bulletin; 450 Date of publication of the international registration or subsequent designation in
the CTM Bulletin.
3.11 Transfer of the designation of the EU
Rule 120 CTMIR
The IR represents a single registration for administrative purposes since it is one entry in the international register. However, in practice, it is a bundle of national (regional) marks with regard to substantive effects and the trade mark as an object of property. As regards the link with the basic mark, while the IR must originally be in the name of the proprietor of the basic mark, it may thereafter be transferred independently of the basic mark.
In fact, a ‘transfer of the international registration’ is nothing more than a transfer of the mark with effect for one, several or all designated Contracting Parties. In other words, it is equivalent to a transfer of the corresponding number of national (regional) marks.
Transfers may not be presented directly to OHIM in its capacity as designated office; they must be submitted to WIPO or through the office of the contracting party of the holder using the WIPO MM5 form. Once recorded by WIPO, the change of ownership of the designation of the EU will be notified to OHIM and automatically integrated into the OHIM database.
In its capacity as designated office, OHIM has nothing to examine for the transfer. Rule 27(4) CR allows a designated office to declare to WIPO that, as far as its designation is concerned, a change of ownership has no effect. However, OHIM does not apply this provision since it does not have the authority to re-examine whether the change in the international register was based on proof of the transfer. Furthermore, OHIM does not re-examine the mark for potential deceptiveness either (Article 17(4) CTMR) unless the transfer is filed during the absolute grounds examination phase.
3.12 Invalidity, revocation and counterclaims
Articles 51, 52, 53, Articles 151(2), 152(2), Articles 158, 160 CTMR Rule 117 CTMIR
The effects of an I R designating the EU may be dec lared invalid; the application for invalidation of the effects of an IR designating the EU corresponds, in CTM terminology, to an application for declaration of revocation or for invalidity.
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There is no time limit for filing an application for invalidity/revocation with the following exceptions:
• an application for invalidity of an IR designating the EU is only admissible once the designation has been finally accepted by OHIM, namely once the Statement of Grant of Protection has been sent.
• an application for revocation on the basis of non-use of an IR designating the EU is only admissible if, at the date of filing the request, the final acceptance of the IR had been republished by OHIM at least five years earlier (see Article 160 CTMR, stating that the date of publication pursuant to Article 152(2) takes the place of the date of registration for the purpose of establishing the date as from which the mark that is the subject of an IR designating the EU must be put to genuine use in the European Union).
OHIM will examine the request as if it were directed against a direct CTM (for further information, see the Guidelines, Part D, Cancellation).
If the IR designating the EU is totally or partially invalidated/revoked further to a final decision or a c ounterclaim action, OHIM will notify WIPO according to Article 5(6) Madrid Protocol and Rule 19 CR. WIPO will record the invalidation/revocation and publish it in the International Gazette.
3.13 Fee management
As a c onsequence of setting the equivalent of the registration fee at zero for direct CTMs and the application of this change to Madrid fees on 12/08/2009, there will no longer be any reimbursement of part of the individual fee for IRs designating the EU with a designation date later than the above date that are finally refused or for which the IR holder has renounced protection in respect of the EU prior to the refusal decision becoming final pursuant to Articles 154 and 156 CTMR.
Pursuant to Article 3 (last paragraph) of Commission Regulation (EC) No 355/2009 of 31/03/2009 amending Commission Regulation (EC) No 2869/95 of 13/12/1995 on the fees payable to OHIM, designations of the EU filed before 12/08/2009 will continue to benefit from a refund of the registration fee in the event of refusal or withdrawal as per Article 13 CTMFR in the version in force prior to the entry into force of Commission Regulation No 355/2009.
4 Conversion, Transformation, Replacement
4.1 Preliminary remarks
Conversion or transformation
Both apply when an IR designating the EU ceases to have effect, but for different reasons:
• When an IR ceases to have effect because the mark of origin has been the subject of a ‘central attack’ during the five-year dependency period, transformation into a direct CTM application is possible. Transformation is not available when the IR has been cancelled at the holder’s request or the holder has renounced in part or in whole the designation of the EU. The EU designation
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must still be ef fective when the transformation is requested, that is, it must not have been f inally refused by OHIM; otherwise, there will be not hing left to transform and conversion of the designation would be the only possibility.
• When the IR designating the EU is finally refused by OHIM or ceases to have effect for reasons independent of the basic trade mark, only conversion is available. Conversion is possible within the prescribed time limit even if, in the meanwhile, the IR has also been cancelled from the international register at the request of the office of origin, i.e. via a ‘central attack’.
4.2 Conversion2
Articles 112 to 114, 159 CTMR Rule 24(2)(a)(iii) CR
The legal option of conversion has its origins in the CTM System, which has been adapted to allow a designation of the EU through an IR to be converted into a national trade mark application, just like for a direct CTM. The CTM System and Madrid System have also been adapted to allow for conversion into a designation of Member States party to the Madrid System (known as ‘opting back’). Malta is not party to the Madrid System.
The latter is forwarded to WIPO as a r equest for subsequent designation of the Member State(s). This type of subsequent designation is the only one that, instead of being filed with the office of origin or with WIPO directly, has to be filed through the designated office.
For full details on C onversion, see the Guidelines, Part E, Register Operations, Section 2, Conversion.
4.3 Transformation
Article 6(3), Article 9 quinquies MP Article 161 CTMR Rule 84(1)(p), Rule 124 CTMIR
4.3.1 Preliminary remarks
Transformation has its origins solely in the Madrid Protocol. It was introduced in order to soften the consequences of the five-year dependency period already set in place by the Madrid Agreement. Where an IR is cancelled in whole or in part because the basic mark has ceased to have effect, and the holder files an application for the same mark and same goods and s ervices as the cancelled registration with the office of any contracting party for which the IR had effect, that application will be treated as if it had been filed on the date of the IR or, where the contracting parties had been designated
2 In English, ‘conversion’ is used to describe a specific legal provision of the CTM System (Article 112 et seq.) while ‘transformation’ is used to describe that in Article 9 quinquies of the Madrid Protocol. In other languages, only one word is used to describe these two different legal provisions (e.g. in Spanish ‘transformación’). In order to avoid confusion, the English word ‘conversion’ could be used in parentheses when, for example, the Spanish word ‘transformación’ is used within the meaning of Article 112 CTMR.
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subsequently, on the date of the subsequent designation; it shall also enjoy the same priority, if any.
This filing is not governed by the Protocol, nor is WIPO involved in any way. Unlike conversion, transformation of the EU designation into national applications is not possible. Nor is it possible to transform an EU designation into individual Member State designations. If the EU has been designated, the IR has effect in the EU and not in individual Member States as such.
The EU designation must still be effective when the transformation is requested, that is, it must not have been finally refused by OHIM; otherwise, there will be nothing left to transform and conversion of the designation would be the only possibility.
4.3.2 Principle and effects
Article 27 CTMR
Following a cancellation in whole or in part of an I R designating the EU at the request of the office of origin under Article 9 quinquies of the Protocol (i.e. following a ‘central attack’ during the five-year dependency period), the holder may file a ‘direct’ CTM application for the same mark and same goods and services as the cancelled mark.
The application resulting from the transformation will be treated by OHIM as if it had been filed on the date of the original IR or, where the EU was designated subsequently to the IR, on the date of the subsequent designation; it shall also enjoy the same priority, if any.
The date of the IR or of the subsequent designation will not become the filing date of the Community trade mark application. Article 27 CTMR, which applies mutatis mutandis, lays down clear conditions for the granting of a filing date, subject also to payment of the application fee within one m onth. However, the date of the IR or subsequent designation will be the date that determines the ‘earlier right effect’ of the CTM for the purposes of priority searches, oppositions, etc.
Unlike for priority and seniority claims (Rule 9(8) CTMIR), it is not possible to have a ‘split’ or ‘partial’ date, with one date being only for those goods which were contained in the IR and the filing date of the Community trade mark application being the relevant date for the additional goods and services. No such partial transformation effect is foreseen in Article 9 quinquies of the Madrid Protocol or Article 161 CTMR.
Renewal starts to run from the filing date of the transformed CTM.
4.3.3 Procedure
The conditions for invoking a transformation right under Article 9 quinquies of the Madrid Protocol are:
• that the application is filed within a period of three months from the date on which the IR was cancelled in whole or in part, and
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• that the goods and services of the ensuing application are in fact covered by the list of goods and services of the designation of the EU.
The applicant needs to claim this right in the relevant section provided in the CTM e- filing or CTM application form. The following indications must be given in this section:
1. number of the IR that has been cancelled in whole or in part; 2. date on which the IR was cancelled in whole or in part by WIPO; 3. date of the IR pursuant to Article 3(4) MP or date of territorial extension to the EU
made subsequently to the IR pursuant to Article 3 ter (2) MP; 4. date of priority claimed in the IR, if any.
OHIM will invite the applicant to remedy any deficiencies detected within a per iod of two months. If the deficiencies are not remedied, the right to the date of the IR or the territorial extension and, if any, of the priority of the IR will be lost. In other words, should the transformation be finally refused, the CTMA will be examined as a ‘normal’ application.
4.3.4 Examination
4.3.4.1 Application for transformation of IR designating the EU where no par ticulars have been published
When the application for transformation relates to an IR designating the EU for which the particulars have not been publ ished pursuant to Article 152(2) CTMR (in other words that has not been finally accepted by OHIM), the CTM resulting from transformation will be treated as a normal CTM application; it will be examined as to classification, formalities and absolute grounds and published for opposition purposes. Nothing in the regulations allows OHIM to omit the examination process.
Nevertheless, since this case presupposes that an IR designating the EU had already existed, OHIM can take advantage of the classification of the list of goods and services of the cancelled IR (as far as it complies with OHIM rules) as well as the Community search reports already issued for that IR (since the date of the ensuing CTM application is the same as the date of the original IR, the search report must by definition come to the same results).
The CTM will be published in Part A of the CTM Bulletin for opposition purposes with an additional field under INID code 646, mentioning the details of the transformation. The remainder of the procedure will be the same as for a normal CTM filing, including if an opposition procedure had already been initiated against the IR designating the EU without reaching the final decision stage. In such a c ase, the previous opposition procedure would be closed and a new opposition would need to be filed.
4.3.4.2 Application for transformation of IR designating the EU where particulars have been published
When the application for transformation relates to an IR designating the EU for which the particulars have already been published pursuant to Article 152(2) CTMR, the examination and opposition stage are omitted (Article 37 to 42 CTMR).
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Nevertheless, the list of goods and s ervices will have to be t ranslated into all languages. The CTM will then be publ ished in Part B.2 of the CTM Bulletin with the translations and the additional INID code 646, and the registration certificate will be issued immediately.
4.3.5 Transformation and Seniority
If seniority claims have been accepted by OHIM and are registered by WIPO in the file for the transformed IR designating the EU, there is no need to claim seniority again in the CTM resulting from transformation. This is not explicitly foreseen in Rule 124(2) CTMIR (only priority is mentioned under (d)) but is extended by analogy to seniority in view of the fact that:
• OHIM has already accepted the claims and WIPO has published them, • where the owner had let the earlier marks lapse in the meanwhile, it would not be
able to file new claims before OHIM (one condition of a valid seniority claim being that the earlier right is both registered and in force when the claim is made).
4.3.6 Fees
There is no s pecific ‘transformation’ fee. The CTM application resulting from the transformation of the IR designating the EU is subject to the same fees as a ‘normal’ CTM application, namely the basic fee.
The basic fee for the CTM application must be paid to OHIM within one month of the filing of the CTM requesting transformation in order for the request to comply with Article 27 CTMR and Article 9 quinquies (iii) and the transformation to be accepted. For example, if the end of the three-month time limit for transformation is 01/04/2012 and transformation into a CTMA is filed on 30/3/2012, the deadline for payment of the basic fee is 30/04/2012. If payment occurs after that date, the conditions for transformation are not met, transformation will be refused and the filing date given to the CTMA will be the date of the payment.
4.4 Replacement
Article 157 CTMR Rule 84(2) CTMIR Article 4 bis MP Rule 21 CR
4.4.1 Preliminary remarks
Replacement has its origins in the Madrid Agreement and Madrid Protocol. A mark that is registered with the office of a contracting party is, under certain conditions, deemed to be replaced by an international registration of the same mark without prejudice to the rights already acquired (earlier date). The wording of Article 4 bis (1) MP clearly provides that replacement is deemed to take place automatically, without the need for any action by the holder and without any record having to be made of the replacement. Nevertheless, it is possible to ask OHIM to take note of the replacement in its Register (Rule 21 CR). The purpose of this procedure is to ensure that the relevant information
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concerning the replacement is made available to third parties in the national or regional registers as well as in the international register. In other words, it is not an obligation to have the replacement registered in order to be able to invoke it, but it can be useful.
Apart from the qualification relating to earlier acquired rights, neither the Agreement nor the Protocol elaborates further on replacement.
4.4.2 Principle and effects
In accordance with Article 4 bis of the Agreement and t he Protocol, the holder may request OHIM to take note in its Register that a CTM registration is replaced by a corresponding IR. The holder’s rights in the EU should be deemed to start from the date of the earlier CTM registration. A reference will therefore be introduced in the CTM Register that a direct CTM has been r eplaced by a des ignation of the EU through an IR and published.
4.4.3 Procedure
A request for replacement may be filed at OHIM by the international holder at any time after notification of the EU designation by WIPO.
Once a request to record a replacement has been received, OHIM will carry out a formal examination, checking that the marks are identical, that all the goods and services listed in the CTM are listed in the IR designating the EU, that the parties are identical and that the CTM has been registered prior to the designation of the EU. The IR need not have an identical list of goods and services: the list may be broader in scope. It cannot, however, be narrower.
OHIM considers it sufficient for noting the replacement in the Register if the IR and CTM coexist on the date of the IR. In particular, should the designation of the EU through an IR not yet be finally accepted, OHIM will not wait for final acceptance before recording the replacement. It is up to the international holder to decide when to request the replacement.
If all conditions are met, OHIM will note the replacement in the CTM Register and inform WIPO that a CTM has been replaced by an IR as per Rule 21 CR, indicating:
• the number of the IR • the CTM number • the CTM application date • the CTM registration date • the priority date(s) (if relevant) • the seniority number(s), filing date(s) and country/countries (if relevant) • the list of goods and services of the replacement (if relevant).
After the replacement has been r ecorded, the CTM is maintained normally in the Register as long as the holder renews it. In other words, there is coexistence between the replaced CTM in force and the IR designating the EU.
According to Rule 21(2) of the Common Regulations under the Madrid Agreement and Protocol, WIPO will record the indications notified under paragraph (1) of that rule in the international register, publish them and inform the holder accordingly, in order to
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ensure that the relevant information concerning replacement is made available to third parties. Nevertheless, there is no obligation for OHIM to communicate further changes affecting the replaced CTM.
4.4.4 Fees
The request for taking note of a replacement is free of charge.
4.4.5 Publication
Rule 84(2), Rule 85 CTMIR
The replacement is entered in the CTM Register and publ ished in the CTM Bulletin under Part C.3.7.
4.4.6 Replacement and seniority
Article 4 bis(1)MP
Since replacement occurs ‘without prejudice to any rights acquired’ by virtue of the earlier registration, OHIM will include information on the seniority claims contained in the replaced CTM registration within the content of the notification to be sent to WIPO under Rule 21 CR.
4.4.7 Replacement and transformation
If the IR that replaced the direct CTM ceases to have effect following a ‘central attack’, and provided that the conditions laid down by Article 9 quinquies of the Protocol are met, the holder can request a transformation of the IR under Article 9 quinquies while maintaining the effects of the replacement of the CTM and i ts earlier date effects, including priority or seniority if applicable.
4.4.8 Replacement and conversion
The IR and the CTM should coexist on the date of the IR if the replacement is to be effective. Therefore, if the IR that replaces the direct CTM is finally refused by OHIM (e.g. further to an opposition), the holder can request conversion of the designation of the EU and should be able to maintain the effects of the replacement of the CTM and its earlier date effects, including priority or seniority if applicable.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON REGISTERED COMMUNITY
DESIGNS
EXAMINATION OF APPLICATIONS FOR REGISTERED COMMUNITY DESIGNS
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Table of Contents
1 Introduction................................................................................................ 7 1.1 Purpose of the Guidelines .........................................................................7 1.2 General principles ......................................................................................7
1.2.1 Duty to state reasons...................................................................................... 7 1.2.2 Right to be heard ............................................................................................ 8 1.2.3 Compliance with time limits ............................................................................ 8 1.2.4 Scope of the examination carried out by the Office........................................ 9 1.2.5 User-friendliness............................................................................................. 9
2 Filing an Application at OHIM................................................................. 10 2.1 Introduction ..............................................................................................10 2.2 Form of the application............................................................................10
2.2.1 Different means of filing................................................................................ 10 2.2.2 Use of the official form.................................................................................. 10 2.2.3 Applications sent by post or personal delivery ............................................. 10 2.2.4 E-filing........................................................................................................... 11 2.2.5 Fax................................................................................................................ 11
2.3 Content of the application .......................................................................11 2.4 Language of the application ....................................................................11 2.5 Representation of the applicant ..............................................................12
2.5.1 When is representation mandatory? ............................................................ 12 2.5.2 Who may represent? .................................................................................... 12
2.6 Date of receipt, file number and issue of receipt ...................................13 2.6.1 Applications filed through national offices (Intellectual Property Office of a
Member State or Benelux Office for Intellectual Property (BOIP))............... 13 2.6.2 Applications received directly at the Office................................................... 13
2.7 Registration or examination report .........................................................14 2.7.1 Registration................................................................................................... 14 2.7.2 Examination report and informal communication on possible deficiencies
(‘preliminary examination report’) ................................................................. 14 2.7.2.1 Priority claims and supporting documents.................................................14 2.7.2.2 Priority claims made subsequent to the filing ............................................15 2.7.2.3 Application filed by fax...............................................................................15 2.7.2.4 Payment of fees ........................................................................................15 2.7.2.5 Multiple applications and request for partial deferment .............................16
3 Allocation of a Filing Date....................................................................... 16 3.1 Request for registration...........................................................................16 3.2 Information identifying the applicant ......................................................17 3.3 Representation of the design suitable for reproduction........................ 17
3.3.1 General requirements................................................................................... 17 3.3.2 Neutral background ...................................................................................... 17 3.3.3 Designs retouched with ink or correcting fluid.............................................. 18 3.3.4 Quality........................................................................................................... 19
3.3.4.1 Fax ............................................................................................................19
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3.3.4.2 E-filing .......................................................................................................20 3.3.5 Specimen...................................................................................................... 21
4 Examination of the Substantive Requirements .................................... 21 4.1 Compliance with the definition of a design ............................................22
4.1.1 Blueprints, plans for houses or other architectural plans and interior or landscape designs........................................................................................ 22
4.1.2 Colours per se and combinations of colours ................................................ 22 4.1.3 Icons ............................................................................................................. 23 4.1.4 Mere verbal elements ................................................................................... 23 4.1.5 Music and sounds......................................................................................... 23 4.1.6 Photographs ................................................................................................. 23 4.1.7 Living organisms........................................................................................... 23 4.1.8 Teaching material ......................................................................................... 23 4.1.9 Concepts....................................................................................................... 24
4.2 Public policy and morality .......................................................................24 4.2.1 Common principles....................................................................................... 24 4.2.2 Public policy.................................................................................................. 24 4.2.3 Morality ......................................................................................................... 24
4.3 Objection...................................................................................................25
5 Additional Requirements Regarding the Reproduction of the Design 25 5.1 Number of views.......................................................................................26 5.2 Consistency of the views.........................................................................27
5.2.1 Complex products......................................................................................... 28 5.2.2 Details........................................................................................................... 28 5.2.3 Sets of articles .............................................................................................. 29 5.2.4 Variations of a design ................................................................................... 29 5.2.5 Colours ......................................................................................................... 30 5.2.6 Elements external to the design ................................................................... 31
5.3 Use of identifiers to exclude features from protection ..........................32 5.3.1 Broken lines .................................................................................................. 32 5.3.2 Boundaries.................................................................................................... 32 5.3.3 Colour shading and blurring ......................................................................... 33 5.3.4 Separations................................................................................................... 33
5.4 Explanatory text, wording or symbols ....................................................34 5.5 Amending and supplementing views......................................................34 5.6 Specific requirements ..............................................................................35
5.6.1 Repeating surface patterns .......................................................................... 35 5.6.2 Typographic typefaces ................................................................................. 35
6 Additional Elements that an Application Must or May Contain........... 36 6.1 Mandatory requirements..........................................................................36
6.1.1 Identification of the applicant and its representative .................................... 36 6.1.2 Specification of the languages...................................................................... 37 6.1.3 Signature ...................................................................................................... 37
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6.1.4 Indication of products ................................................................................... 37 6.1.4.1 General principles .....................................................................................37 6.1.4.2 The Locarno and EuroLocarno classifications...........................................38 6.1.4.3 How to indicate products ...........................................................................38 6.1.4.4 Ex officio change of indication ...................................................................39
6.1.5 Long lists of products.................................................................................... 40 6.1.6 Objections to product indications.................................................................. 41
6.1.6.1 No product indication.................................................................................41 6.1.6.2 Deficient product indication .......................................................................41 6.1.6.3 Obvious mismatch.....................................................................................41
6.2 Optional elements ....................................................................................42 6.2.1 Priority and exhibition priority ....................................................................... 42
6.2.1.1 Priority .......................................................................................................42 6.2.1.2 Exhibition priority .......................................................................................48
6.2.2 Description.................................................................................................... 49 6.2.3 Indication of the Locarno Classification........................................................ 50
6.2.3.1 General principles .....................................................................................50 6.2.3.2 Multiple application and the requirement of ‘unity of class’........................50
6.2.4 Citation of the designer(s) ............................................................................ 50 6.2.5 Request for deferment.................................................................................. 51
6.2.5.1 General principles .....................................................................................51 6.2.5.2 Request for deferment...............................................................................52 6.2.5.3 Request for publication..............................................................................52 6.2.5.4 Observation of time limits ..........................................................................52 6.2.5.5 Deficiencies ...............................................................................................53
7 Multiple Applications............................................................................... 54 7.1 General principles ....................................................................................54 7.2 Formal requirements applying to multiple applications........................ 54
7.2.1 General requirements................................................................................... 54 7.2.2 Separate examination................................................................................... 55 7.2.3 The ‘unity of class’ requirement.................................................................... 55
7.2.3.1 Principle.....................................................................................................55 7.2.3.2 Products other than ornamentation ...........................................................55 7.2.3.3 Ornamentation...........................................................................................56 7.2.3.4 Deficiencies ...............................................................................................57
8 Payment of Fees ...................................................................................... 57 8.1 General principles ....................................................................................57 8.2 Currency and amounts.............................................................................58 8.3 Means of payment, details of the payment and refund..........................59
9 Withdrawals and Corrections ................................................................. 59 9.1 Introduction ..............................................................................................59 9.2 Withdrawal of the application..................................................................59 9.3 Corrections to the application.................................................................60
9.3.1 Elements subject to correction ..................................................................... 60 9.3.2 Elements that cannot be corrected............................................................... 60 9.3.3 Procedure for requesting correction ............................................................. 60 9.3.4 Deficiencies .................................................................................................. 61
10 Registration, Publication and Certificates............................................. 61
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10.1 Registration ..............................................................................................61 10.2 Publication................................................................................................62
10.2.1 General principles......................................................................................... 62 10.2.2 Format and structure of the publication........................................................ 62
10.3 Registration certificate.............................................................................64
11 Corrections and Changes in the Register and in the Publication of Community Design Registrations .......................................................... 64 11.1 Corrections ...............................................................................................64
11.1.1 General Principles ........................................................................................ 64 11.1.2 The request for correction ............................................................................ 65 11.1.3 Publication of corrections ............................................................................. 66
11.2 Changes in the Register...........................................................................66 11.2.1 Introduction ................................................................................................... 66 11.2.2 Surrender of the registered Community design............................................ 66
11.2.2.1 General principles .....................................................................................66 11.2.2.2 Formal requirements for a declaration of surrender ..................................67
11.2.3 Changes in the name and address of the applicant / holder and / or its representative ............................................................................................... 68
11.2.4 Transfers....................................................................................................... 69 11.2.4.1 Introduction................................................................................................69 11.2.4.2 Rights of prior use in respect of a registered Community design ..............69 11.2.4.3 Fees ..........................................................................................................69
11.2.5 Licences....................................................................................................... 69 11.2.5.1 General principles .....................................................................................69 11.2.5.2 Registered Community designs.................................................................70 11.2.5.3 Multiple applications for registered Community designs............................70 11.2.5.4 Fees ..........................................................................................................70
12 International Registrations ..................................................................... 70 12.1 General overview of the Hague System..................................................71
12.1.1 The Hague Agreement and the Geneva Act ................................................ 71 12.1.2 Procedure for filing international applications............................................... 71
12.1.2.1 Particularities.............................................................................................71 12.1.2.2 Deferment of publication............................................................................72 12.1.2.3 Fees ..........................................................................................................72
12.1.3 Examination carried out by the International Bureau ................................... 72
12.2 The role of the Office as designated office.............................................73 12.2.1 Receipt of the international registration designating the European Union ... 73 12.2.2 Grounds for non-registrability ....................................................................... 73
12.2.2.1 Compliance with the definition of a design, public policy and morality ......73 12.2.2.2 Time limits .................................................................................................73 12.2.2.3 Languages.................................................................................................74 12.2.2.4 Professional representation.......................................................................74 12.2.2.5 Renunciation and limitation .......................................................................74 12.2.2.6 Grant of protection.....................................................................................75 12.2.2.7 Refusal ......................................................................................................75
12.3 Effects of International registrations ......................................................75
13 Enlargement and the Registered Community Design .......................... 76 13.1 The automatic extension of the Community design to the territories
of the new Member States .......................................................................76
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13.2 Other practical consequences.................................................................77 13.2.1 Filing with national offices............................................................................. 77 13.2.2 Professional representation.......................................................................... 77 13.2.3 First and second language ........................................................................... 77 13.2.4 Translation .................................................................................................... 77
13.3 Examination of grounds for non-registrability .......................................77 13.4 Immunity against cancellation actions based on gr ounds of
invalidity which become applicable merely because of the accession of a new Member State.............................................................................78 13.4.1 General principle .......................................................................................... 78
13.4.1.1 Grounds of invalidity that are applicable independently of the enlargement of the EU...............................................................................78
13.4.1.2 Grounds of invalidity resulting from enlargement of the EU.......................79 13.4.2 Effects of a priority claim .............................................................................. 80
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1 Introduction
1.1 Purpose of the Guidelines
The Guidelines explain how, in practice, the requirements of the Community Design Regulation1 (CDR), the Community Design Implementing Regulation2 (CDIR), and the Fees Regulation3 (CDFR) are applied by OHIM’s Design Service from the receipt of an application for a registered Community design (RCD) up t o its registration and publication. The Office has no c ompetence with regard to unregistered Community designs.
The purpose of the Guidelines is to ensure consistency among the decisions taken by the Designs Service and to ensure a c oherent practice in file handling. These Guidelines are merely a set of consolidated rules setting out the line of conduct which the Office itself proposes to adopt, which means that, to the extent that those rules comply with the legal provisions of a higher authority, they constitute a self-imposed restriction on t he Office, in that it must comply with the rules which it has itself laid down. However, these Guidelines cannot derogate from the CDR, the CDIR or the CDFR, and it is solely in the light of those regulations that the applicant’s capacity to file an application to register a Community design must be assessed.
The Guidelines are structured to follow the sequence of the examination process with each section and sub-section constituting a step in the registration proceedings from the receipt of the application up to registration and publication. The General Principles (see paragraph 1.2 below) should be kept in mind throughout the whole examination process.
1.2 General principles
1.2.1 Duty to state reasons
The decisions of the Office must state the reasons on which they are based (Article 62 CDR). The reasoning must be logical and it must not lead to internal inconsistencies.
The Office is, however, not required to give express reasons for its assessment of the value of each argument and each piece of evidence submitted to it, in particular where it considers that the argument or evidence in question is unimportant or irrelevant to the outcome of the dispute (see, by analogy, judgment of 15/06/2000, C-237/98P, ‘Dorsch Consult Ingenieurgesellschaft mbH’, para. 51). It is sufficient if the Office sets out the
1 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs), by Council Regulation No 1891/2006 of 18 D ecember 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2001 on Community designs, as amended by Commission Regulation (EC) No 876/2007 on 24 July 2007 amending Regulation (EC) No 2245/2002 implementing Council Regulation (EC) No 6/2002 on Community designs following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs 3 Commission Regulation (EC) No 2246/2002 of 16 December 2002 on the fees, as amended by Commission Regulation (EC) No 877/2007 of 24 July 2007 amending Regulation (EC) No 2246/2002 concerning the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs
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facts and legal considerations with decisive importance in the context of the decision (judgment of 12/11/2008, T-7/04, ‘Limoncello’, para. 81).
Whether the reasoning satisfies those requirements is a question to be assessed with reference not only to its wording, but also to its context and the legal rules governing the matter in question (judgment of 07/02/2007, T-317/05, ‘Guitar’, para. 57).
1.2.2 Right to be heard
The decisions of the Office shall be based only on reasons or evidence on which the applicant has had an opportunity to present its comments (Article 62 CDR, second sentence).
The right to be heard covers all the factual and legal evidence which form the basis for the act of taking the decision, but it does not apply to the final position which the Office intends to adopt.
The obligation to state reasons has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the next instance to exercise their power to review the legality of the decision. Moreover, the obligation to state reasons is an essential procedural requirement, as distinct from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure (judgment of 27/06/2013, T-608/11, ‘Instrument for writing II’, para. 67-68 and the case law cited there).
1.2.3 Compliance with time limits
Applicants must respond to the Office’s communications within the time limits set by those communications.
Any written submission or document that has not been submitted within the time limits set by the Office is belated. The same applies to supplementary materials attached only to the confirmation copy of a letter that was in itself sent on time (usually by fax), where this confirmation mail arrives after the expiry of the time limit. This is irrespective of whether such materials are specifically mentioned in the initial letter (for specific rules as regards applications filed by fax, see paragraph 2.7.2.3.).
The Office may disregard facts or evidence which the applicant does not submit in due time (Article 63(2) CDR).
For calculation of time limits see Article 56 CDIR.
A request to extend a time limit by an appl icant has to be made before its expiry (Article 57(1) CDIR).
As a g eneral rule, a first request to extend a time limit will be g ranted. Further extensions will not automatically be granted. Reasons in support of any further request for extension must be submitted to the Office. The request for extension of the time limit must indicate the reasons why the applicant cannot meet the deadline. The
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obstacles faced by the parties’ representatives do not justify an ex tension (see, by analogy, order of 05/03/2009, C-90/08 P, ‘Corpo Livre’, paras 20-23).
The extension cannot result in a time limit longer than six months (Article 57(1) CDIR). The applicant is informed about any extension.
Applicants failing to observe the time limits run the risk that their observations may be disregarded, which may result in a loss of rights. In such a case, the applicant may file a request for restitutio in integrum (Article 67 CDR. See also the Guidelines Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, Section 8, Restitutio in integrum).
1.2.4 Scope of the examination carried out by the Office
When examining an application for a Community design, the Office shall examine the facts of its own motion (Article 63(1) CDR).
The examination procedure is kept to a minimum, that is, mainly an examination of the formalities. However, the grounds for non-registrability foreseen at Article 47 CDR must be examined ex officio by the Office:
(a) whether the subject-matter of the application corresponds to the definition of a design as set forth in Article 3(a) CDR; and
(b) whether the design is contrary to public policy or accepted principles of morality.
Where one of these two grounds is applicable, the procedure explained below in paragraph 4 will apply.
Other protection requirements are not examined by the Office. A Community design which has been r egistered in breach of the protection requirements laid down in Article 25(1)(b) to (g) CDR is liable to be i nvalidated if an i nterested party files a request for a dec laration of invalidity (see the Guidelines on E xamination of Design Invalidity Applications).
1.2.5 User-friendliness
One of the fundamental objectives of the CDR is that the registration of Community designs should present the minimum cost and difficulty to applicants, so as to make it readily available to any applicant including small and m edium-sized enterprises and individual designers.
To that end, examiners are encouraged to contact the applicant or, if a representative has been appointed (see paragraph 2.5 below), its representative by phone, in order to clarify issues arising from the examination of an application for a Community design, before or after an official deficiency letter has been sent.
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2 Filing an Application at OHIM
2.1 Introduction
There are two ways of applying for registration of a Community design, that is, (i) either via a direct filing, at the Office or at the central industrial property office of a Member State or, in Benelux countries, at the Benelux Office for Intellectual Property (BOIP) (Article 35 et seq. CDR) or (ii) via an international registration filed with the International Bureau of the World Intellectual Property Organisation and designating the European Union (Article 106a et seq. CDR).
This section will deal with direct filings. The examination of the formalities relating to international registrations designating the European Union will be ex plained in paragraph 12.
2.2 Form of the application
2.2.1 Different means of filing
An application for a registered Community design may be directly filed at the Office by fax, post, personal delivery or e-filing. It may also be f iled at the central industrial property office of a Member State or in Benelux countries, at the Benelux Office for Intellectual Property (BOIP) (Article 35 CDR).
2.2.2 Use of the official form
The Office provides a form (Article 68(1)(a) CDIR) which may be downloaded from the Office’s website4. The use of the form is not mandatory but it is strongly recommended (Article 68(6) CDIR), in order to facilitate the processing of the application and to avoid errors.
Applicants may use forms of a similar structure or format, such as forms generated by computers on the basis of the information contained in the official form.
2.2.3 Applications sent by post or personal delivery
Applications can be sent to the Office by ordinary post or private delivery services at the following address:
Office for Harmonization in the Internal Market Avenida de Europa, 4
E-03008 Alicante SPAIN
Applications can also be handed i n personally at the reception of the Office from Monday to Friday, except on official holidays, from 08.30 to 13.30 and from 15.00 to 17.00.
4 https://oami.europa.eu/ohimportal/en/forms-and-filings
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The application has to be signed by the applicant or its representative. The name of the signatory must be indicated and the authority of the signatory must be specified (see paragraph 6.1.3 Signature).
2.2.4 E-filing
E-filing is a recommended means of filing to the extent that the system gives guidance to the applicant, thus reducing the number of potential deficiencies and speeding up the examination procedure.
Where a communication is sent to the Office by electronic means, the indication of the sender’s name will be deemed to be equivalent to the signature (see paragraph 6.1.3 Signature).
2.2.5 Fax
Applications can be sent by fax to the following fax number: +34 96 513 1344.
However, filing an appl ication by fax is not recommended because the quality of the representation of the design may deteriorate in the course of the transmission or on receipt by the Office.
Moreover, applicants must be aware of the fact that the processing of their application will be delayed by up to one month (see paragraph 2.7.2.3).
2.3 Content of the application
The application must satisfy all the mandatory requirements set out in Articles 1 (‘content of the application’), 3 ( ‘indication of products’), 4 ( ‘representation of the design’) and 6 CDIR (‘fees for the application’).
Additional requirements apply where the applicant selects one of the following options: a multiple application is filed (Article 2 CDIR), specimens are filed (Article 5 CDIR), a priority or an exhibition priority is claimed (Article 8 and 9 CDIR), or where the applicant chooses to be, or must be, represented (Article 77 CDR).
2.4 Language of the application
The application may be filed in any of the official languages of the European Union (language of filing) (Article 98(1) CDR; Article 1(1)(h) CDIR)5.
5 The European Union has 24 official and working languages, including Irish. Irish became a full EU language on 01/01/ 2007. There is however a temporary derogation for a renewable period extending until 31/12/2016 during which ‘the institutions of the European Union shall not be bound by the obligation to draft all acts in Irish and to publish them in that language in the Official Journal of the European Union’ (see Council Regulation (EC) No 920/2005 of 13/06/2005 (OJ L 156, 18.6.2005, p. 3) and Council Regulation (EU) No 1257/2010 (OJ L 343, 29/12/2010, p. 5). Until then, it is not possible to file an application for a r egistered Community design in Irish. Croatian became an official language on 01/07/2013(see paragraph 13).
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The applicant must indicate a second language which must be a language of the Office that is, Spanish (ES), German (DE), English (EN), French (FR) or Italian (IT). The second language must be different from the language of filing.
All written communications have to be drafted in the language of filing, unless the first language chosen is not one of the five working languages of the Office and the applicant agrees to receive the communication in the second language of the application. The consent to the use of the second language must be given for each individual application for a C ommunity design. It may not be given for all existing or future files.
This language regime applies throughout the application and ex amination procedure until registration.
2.5 Representation of the applicant
2.5.1 When is representation mandatory?
Where the applicant does not have its domicile or its principal place of business or a real and effective industrial or commercial establishment in the European Union, it must be represented by a representative in all proceedings before the Office other than in filing an application (Article 77(2) CDR, Article 10(3)(a) CDIR).
If this requirement is not complied with, the applicant will be requested to appoint a representative within a time limit of two months. Where the applicant does not comply with the request, the application is rejected as inadmissible (Art. 77(2) CDR; Art. 10(3)(a) CDIR). In examining whether an applicant has a r eal and effective industrial or commercial establishment in the European Union, the Office follows the guidance of the Court of Justice of 22/11/1978, C-33/78, ‘Somafer SA’, para. 12 (‘… the concept of branch, agency or other establishment implies a place of business which has the appearance of permanency, such as the extension of a par ent body, has a m anagement and i s materially equipped to negotiate business with third parties …’). Proof that an applicant has a real and effective industrial or commercial establishment in the European Union may consist, inter alia, of articles of incorporation, annual reports, statements in writing, and other business documents.
2.5.2 Who may represent?
Representation of applicants before the Office may be effected only by a legal practitioner or by a professional representative who fulfills the requirements of Article 78(1) CDR.
A natural or legal person whose domicile, principal place of business, or real and effective industrial or commercial establishment is in the European Union may act before the Office through an em ployee. Employees of such a legal person may also represent another legal person having neither its domicile nor its principal place of business nor a r eal and effective industrial or commercial establishment within the European Union, provided there exist economic connections between the two legal persons (Article 77(3) CDR). The Office may request evidence in this respect.
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Employees acting on behalf of natural or legal persons pursuant to Article 77(3) CDR must submit a signed authorisation for insertion in the file (Article 62(2) CDIR).
2.6 Date of receipt, file number and issue of receipt
2.6.1 Applications filed through national offices (Intellectual Property Office of a Member State or Benelux Office for Intellectual Property (BOIP))
If a Community design application is filed at the central industrial property office of a Member State or at the Benelux Office for Intellectual Property (BOIP), it will have the same effect as if it has been filed at the Office on that same day, provided that it is received at the Office within two months from the date it was filed at the national office or, as the case may be, the Benelux Office for Intellectual Property (BOIP) (Article 38(1) CDR).
If the Community design application does not reach the Office within this two-month time limit, it will be deemed to have been filed on t he date that it is received by the Office (Article 38(2) CDR).
Where the Community design application is received shortly after the expiry of this two- month period, the examiner will check whether this time limit is to be extended under one of the conditions provided for at Article 58(3) CDIR.
2.6.2 Applications received directly at the Office
The date of receipt is the date on which the application reaches the Office. This date may not coincide with the ‘date of filing’ where the requirements for such a date to be allocated are not met (see paragraph 3).
The Office is open for the receipt of applications sent by post or private delivery services from Monday to Friday, except on official holidays. An annual decision of the President of the Office specifies the days on which the Office is not open for the receipt of documents and on which ordinary post is not delivered.
Applications sent by fax or e-filing will be r eceived on t he date of successful transmission.
Where the application is sent by post or fax, the applicant will not have any confirmation of a date of receipt or file number until a first communication from an examiner is received (see below).
For electronically filed Community design applications, the system issues an immediate automatic filing receipt which appears on the screen of the computer from which the application was sent. In principle, the applicant should save or print out the automatic receipt. The Office will not send an additional receipt. Receipts for electronically filed applications already contain their provisional filing dates and the file number.
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2.7 Registration or examination report
2.7.1 Registration
If the application for a Community design satisfies all requirements for registration, it will normally be registered within ten working days.
The registration of an a pplication complying with all requirements may, however, be delayed where the indication of the products in which the design is intended to be incorporated, or to which it is intended to be applied, was not made by reference to the list of products included in the EuroLocarno database available on the website of the Office (https://oami.europa.eu/eurolocarno/). In such a case, the indication of the products may have to be sent for translation into the official languages of the Union (see paragraph 6.1.4.4).
An application complying with all registration requirements can be registered within two working days if the following conditions are met:
• the application is filed electronically (e-filing) • both the indication of product(s) and its/their classification are made by using the
EuroLocarno system (see paragraph 6.1.4.4) • priority documents, where a pr iority is claimed, are included with the e-filing
application • the owner and the representative, if any, are registered in OHIM's database and
reference is made to the Office’s internal ID number • fees are to be debited from a current account with the Office • no deficiency is found in the application.
2.7.2 Examination report and i nformal communication on possible deficiencies (‘preliminary examination report’)
Where a deficiency has been de tected in the application, the examiner will issue an examination report summing up the irregularities noted and giving a time limit for the applicant, or the appointed representative, to remedy them.
Before sending such an ex amination report, the examiner can send an i nformal communication, called ‘preliminary examination report’, highlighting some potential deficiencies and ai ming at speeding up t he examination procedure. This informal communication informs the applicant that the examination procedure is pending due to any of the following circumstances.
2.7.2.1 Priority claims and supporting documents
Where the application contains a claim of priority of one or more previous applications without submitting a certified copy thereof, the applicant may still submit a copy within three months of the filing date (Article 42 CDR; Article 8(1) CDIR; see paragraph 6.2.1.1 below).
In such circumstances, the examiner will inform the applicant that the examination of the application will be put on hol d until the missing certified copy of the previous application(s) is submitted. The examination will proceed three months after the filing
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date, unless a copy of the previous application(s), or a declaration that the priority claim is withdrawn, is received earlier.
2.7.2.2 Priority claims made subsequent to the filing
Where the applicant states in the application its intention to claim the priority of one or more previous applications without submitting any details about them, it may still submit, within one month of the filing date, the declaration of priority, stating the date on which, and the country in or for which, the previous application was made (Article 42 CDR; Article 8(2) CDIR; see paragraph 6.2.1.1 below).
In such circumstances, the examiner will inform the applicant that the examination of the application will be put on hol d until the missing information is submitted. The examination will proceed one month after the filing date, unless a declaration of priority, or a declaration that the priority claim is withdrawn, is received earlier.
2.7.2.3 Application filed by fax
Where an application is filed by fax, the examiner will inform the applicant that the examination will proceed one month after the date of receipt of the fax unless a confirmation copy of the application is received earlier by post, private delivery services or personal delivery.
This course of action attempts to avoid situations in which the examination is carried out on the basis of a faxed representation of a design which does not fully disclose all of its features (such as colours) or whose quality is not optimal.
2.7.2.4 Payment of fees
All fees (that is, the registration and publication fees and additional fees in the event of multiple applications) relating to an appl ication must be pai d at the time when the application is submitted to the Office (Article 6 CDIR; see paragraph 8 below).
Lack of payment or unidentified payment
Where the application has not yet been linked with a pay ment of the corresponding fees, the examiner will inform the applicant that the examination will proceed as soon as the payment has been identified and linked to this specific application.
If the applicant does not respond to the Office’s communication, and the payment remains unidentifiable, a deficiency letter will be sent.
Lack of funds
Where the full amount of the fees relating to the application cannot be debited from the current account due to insufficient funds, the examiner will inform the applicant that the examination will begin as soon as the current account has been c redited with the missing amount.
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If the applicant does not respond to the Office’s communication, and the payment remains incomplete, a deficiency letter will be sent.
For more information on the payment of fees, see paragraph 8 below.
2.7.2.5 Multiple applications and request for partial deferment
Where a m ultiple application contains a r equest for deferment in respect of some designs (see paragraph 6.2.5 below), the examiner will send the applicant a summary of the application containing a representation of the first view of each design to be published without delay. The applicant will be requested to confirm the correctness of this summary within one month. In the absence of any reply or contrary instruction from the applicant, the examination will proceed on the basis of the information on file.
3 Allocation of a Filing Date
The date on which a document is ‘filed’ is the date of receipt by the Office rather than the date on which this document was sent (Article 38(1) CDR, Article 7 CDIR).
Where the the application has been filed at the central industrial property office of a Member State or at the Benelux Office for Intellectual Property (BOIP), the date of filing at that office will be deemed the date of receipt by the Office, unless the application reaches the Office more than two months after such date. In this case, the date of filing will be the date of receipt of the application by the Office (Article 38 CDR).
Pursuant to Article 36(1) CDR, the allocation of a filing date requires that the application contain at least:
(a) a request for registration of a Community design, and (b) information identifying the applicant, and (c) a representation of the design suitable for reproduction pursuant to Article 4(1)(d)
and (e) CDIR or, where applicable, a specimen (Article 10 CDIR).
Payment of fees is not a r equirement for allocating a filing date. It is, however, a requirement for the registration of the application (see paragraph 8 below).
3.1 Request for registration
A request for registration is filed where the applicant has completed (at least partly) the application form provided by the Office or its own form, or made use of e-filing (see paragraph 2.2 above).
Where it is obvious that the document received from the applicant is not an application for a Community design, but an appl ication for registration of a Community trade mark, the examiner will forward this document to the competent department of the Office and the examiner will inform the applicant accordingly without delay.
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3.2 Information identifying the applicant
The information identifying the applicant, for the purpose of allocating a filing date, does not have to satisfy all the requirements set out in Article 1(1)(b) CDIR (see paragraph 6.1.1). It is enough that information is supplied regarding the surname and forename(s) of natural persons or the corporate name of legal entities, and that an address for service be indicated or any other data communication link which allows the applicant to be contacted.
3.3 Representation of the design suitable for reproduction
3.3.1 General requirements
The representation of the design shall consist of a graphic and/or photographic reproduction of the design, either in black and white or in colour (Article 4(1) CDIR).
Irrespective of the form used for filing the application (paper, e-filing, or fax), the design must be reproduced on a neutral background and must not be retouched with ink or correcting fluid.
It must be of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished and permitting it to be reduced or enlarged to a size no greater than 8 cm by 16 cm per view for entry in the Register of Community Designs and for publication in the Community Designs Bulletin (Article 4(1)(e) CDIR).
The purpose of that requirement is to allow third parties to determine with accuracy all the details of the Community design for which protection is sought.
Drawings, photographs (except slides), computer-made representations or any other graphical representation are accepted provided they are suitable for reproduction, including on a r egistration certificate in paper format. 3D computer-animated design generating motion simulation is not accepted for that very reason. CD-ROMs and other data carriers are not accepted.
3.3.2 Neutral background
The background in a v iew is considered neutral as long as the design shown in this view is clearly distinguishable from its environment without interference from any other object, accessory or decoration, whose inclusion in the representation could cast doubt on the protection sought (decision of 25/04/2012, R 2230/2011-3 – ‘Webcams’, paras 11-12).
In other words, the requirement of a neu tral background neither demands a ‘neutral’ colour nor an ‘ empty’ background (see also paragraph 5.2.6 below). It is instead decisive that the design stands out so clearly from the background that it remains identifiable (decision of 25/01/2012, R 284/2011-3 – ‘Tool chest’, para. 13).
The views, among the seven allowed for representing a design (Article 4(2) CDIR), which do not have a neutral background will be objected to.
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The examiner will issue a de ficiency letter. The examiner will give the applicant the possibility to remedy the deficiencies within a two-month period by:
• withdrawing those views (which will not form part of the Community design); or • by submitting new views on a neutral background
or by amending the objected views in such a way that the design will be isolated from its background. This latter option will make use of identifiers such as boundaries or colour shading clarifying the features of the design for which protection is sought (see paragraph 5.3 below), as in the seventh view of RCD 2038216-0001 (courtesy of BMC S.r.l.):
Provided the deficiencies are remedied within the time limit set by the Office, the date on which all the deficiencies are remedied will determine the date of filing (Article 10(2) CDIR).
If the deficiencies are not remedied within the time limit set by the Office, the application will not be d ealt with as a Community design application. The f ile will be closed by a decision of the examiner and the applicant will be notified. The examiner will notify the Finance Department that a refund of any fees paid should be made to the applicant (Article 10(2) CDIR).
3.3.3 Designs retouched with ink or correcting fluid
The design shall not be retouched with ink or correcting fluid (Article 4(1)(e) CDIR).
Examiners do not see the paper version of the representation but only scanned representations thereof. Therefore, it is only where the use of ink or correcting fluid
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leaves doubt as to whether the visible correction is or not an ornamental feature forming part of the design, that corrected representations will be objected to and refused for the purpose of allocating a filing date.
The applicant may remedy a deficiency in the same manner as described above under paragraph 3.3.2.
3.3.4 Quality
The requirement that the design must be of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished, for publication purposes, applies equally to all applications, irrespective of the means of filing.
Applications sent by fax and e-filing, however, raise specific issues.
3.3.4.1 Fax
Transmission by telecopy (fax) may not be app ropriate for filing design applications, because the representation of the design may be di storted or blurred or otherwise damaged. Where an application is transmitted by fax, it is highly recommended that a paper confirmation copy be filed without delay, by ordinary mail, private delivery services or personal delivery.
Where an appl ication is transmitted by fax, the examiner will in any event await a confirmation copy for a period of up to one month from the date of receipt of the fax transmission before further processing the application. Once this period has lapsed, the examiner will continue the examination on the basis of the documents on file.
Two deficiencies caused by unsatisfactory fax transmissions may arise:
(i) the reproduction of a design as transmitted by fax is not of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished
(ii) the application is incomplete and/or illegible.
As far as the issue of allocating a filing date is concerned, these two hypotheses must be distinguished.
The Office distinguishes an i llegible transmission from one o f insufficient quality as follows. Where a comparison between the initial transmission and the original reproduction allows drawing a c onclusion on w hether these documents relate to the representation of one and the same design, it must be considered that the initial transmission was merely of insufficient quality. Where such a c omparison is not possible at all, the initial transmission was illegible.
(i) The reproduction of a design as transmitted by fax is not of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished
The original date of filing will be retained if the applicant sends on its own motion or in reply to the Office’s informal communication (see paragraph 2.7.8 above) the original reproduction of the design within one month following the fax transmission, provided its quality permits all the details of the matter for which protection is sought to be clearly distinguished (Article 66(1), second paragraph, CDIR).
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The confirmation copy has to consist of the same document which was used initially for the fax transmission. The examiner will reject a ‘confirmation copy’ which is not strictly identical to the document which was used for the fax transmission. This would be the case for instance if the applicant submitted in its confirmation amended views or additional views of the design(s).
In the event of any discrepancy between the original and the copy previously submitted by fax, only the submission date of the original will be taken into consideration.
If no o riginal reproduction is received within the one-month time limit following the receipt of the fax, the Office will send a formal notification inviting the applicant to submit the original reproduction within a two-month period.
If that request is complied with in due time, the date of filing will be the date on which the Office receives the original reproduction, provided its quality permits all the details of the matter for which protection is sought to be clearly distinguished (Article 66(1), third paragraph, CDIR).
If the deficiencies are not remedied within the time limit set by the Office in its notification, the application will not be deal t with as a Community design application. The file will be closed by a decision of the examiner and the applicant will be notified. The examiner will notify the Finance Department that a refund of any fees paid should be made to the applicant (Article 10(2) CDIR).
Where the Office receives a reproduction of a design where some of the views are deficient due to fax transmission and where the confirmation copy is received later than one month after the date of receipt of the fax transmission, the applicant will be left with the choice of
• having as the date of filing the date of receipt of the confirmation copy; or • keeping the date of receipt of the fax transmission as the date of filing, but only
for the non-deficient views; in such a case, the deficient views will be withdrawn.
(ii) The application is incomplete and/or illegible.
In the case where the fax was incomplete or illegible and where the missing or illegible parts concern the information identifying the applicant or the representation of the design, the Office will issue a formal notification requesting the applicant to resend the application by fax, post or personal delivery within a two-month time limit. If that request is complied with in due t ime, the date of filing will be t he date on which the Office receives the complete and legible documents (Article 66(2) CDIR).
If the deficiencies are not remedied within the time limit set by the Office, the application will not be d ealt with as a Community design application. The f ile will be closed by a decision of the examiner and the applicant will be notified. The examiner will notify the Finance Department that a refund of any fees paid should be made to the applicant (Article 10(2) CDIR).
3.3.4.2 E-filing
The representation of the design must be filed as an at tachment to the electronic application form. Each view must be filed as a single attachment to the electronic application form and must be in .jpeg data format. The size of each attachment cannot
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exceed five MB (see Decision No EX-11-3 of the President of the Office, of 18/04/2011, concerning electronic communication with and by the Office).
Low resolution attachments are likely to be objected to due to their insufficient quality for reproduction and publication purposes where the enlargement of the views to a size of 8 cm by 16 cm causes the details of the design to be blurred.
Where it is clear that the electronic filing was deficient due t o technical problems attributable to the Office, such as the partial uploading of all views, the Office will allow the applicant to resubmit the missing views (or all views) by letter, attaching a copy of the e-filing receipt. The original filing date via e-filing will be retained, provided that no other deficiency affecting the filing date exists.
3.3.5 Specimen
The graphic or photographic reproduction of the design can be s ubstituted by a specimen of the design provided the following cumulative conditions are met:
• the application relates to a two-dimensional design, and • the application contains a r equest for deferment (Article 36(1)(c) CDR;
Article 5(1) CDIR).
In the event of a m ultiple application, the substitution of the representation by a specimen may apply only to some of the designs, provided these designs are two- dimensional and are subject to a request for deferment (see paragraph 6.2.5 below).
A specimen is usually a sample of a piece of material such as textile, wallpaper, lace, leather, etc.
Specimens must not exceed 26.2 cm x 17 cm in size, 50 grams in weight or 3 mm in thickness. They must be capable of being stored and unfolded (Article 5(2) CDIR).
Five samples of every specimen must be filed; in the case of a multiple application, five samples of the specimen must be filed for each design (Article 5(3) CDIR).
The application and the specimen(s) have to be sent in a single delivery either by post or personal delivery. A date of filing will not be accorded until both the application and the specimen(s) have reached the Office.
Where the applicant submits a s pecimen relating to an appl ication which does not contain a request for deferment, the specimen is not admissible. In such a case, the date of filing will be det ermined by the date on which the Office receives a s uitable graphic or photographic reproduction of the design, provided the deficiency is remedied within two months of receipt of the Office’s notification (Article 10(2) CDIR).
4 Examination of the Substantive Requirements
The Office carries out an examination of the substantive protection requirements which is limited to two absolute grounds for refusal.
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An application will be refused if the design does not correspond to the definition provided for in Article 3(a) CDR or if is contrary to public policy or to accepted principles of morality (Article 9 CDR).
4.1 Compliance with the definition of a design
A ‘design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and / or materials of the product itself and / or its ornamentation (Article 3(a) CDR).
A ‘product’ means any industrial or handicraft item, including, inter alia, parts intended to be as sembled into a c omplex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs (Article 3(b) CDR).
Whether the product claimed is actually made or used, or can be made or used, in an industrial or handicraft manner will not be examined.
Whether a design discloses the appearance of the whole or a part of a ‘product’ will be examined in the light of the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function, and of the indication of the products in which the design is intended to be incorporated or to which it is intended to be applied (Article 36(2) CDR).
The following examples, albeit non-exhaustive, illustrate the Office’s practice.
4.1.1 Blueprints, plans for houses or other architectural plans and interior or landscape designs
Blueprints, plans for houses or other architectural plans and interior or landscape designs (e.g. gardens) will be considered ‘products’ for the purpose of applying Article 7(1) CDR and will be accepted only with the corresponding indication of ‘printed matters’ in Class 19-08 of the Locarno Classification.
An objection will be raised if the product indicated in an application for a design consisting of a bl ueprint of a hous e is ‘houses’ in Class 25-03 of the Locarno Classification. This is because a bl ueprint does not disclose the appearance of a finished product such as a house.
4.1.2 Colours per se and combinations of colours
A single colour may of course be an element of a design, but on its own it does not comply with the definition of a design because it does not constitute the ‘appearance of a product’.
Combinations of colours may be accepted if it can be ascertained from the contours of the representation that they relate to a pr oduct such as, for instance, a logo or a graphic symbol in Class 32 of the Locarno Classification.
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4.1.3 Icons
Designs of screen displays and icons and other kinds of visible elements of a computer program are eligible for registration (see Class 14-04 of the Locarno Classification).
4.1.4 Mere verbal elements
Mere words per se and sequences of letters (written in standard characters in black and white) do not comply with the definition of a design because they do not constitute the appearance of a product.
The use of fanciful characters and/or the inclusion of a figurative element, however, render(s) the design eligible for protection either as a logo / graphic symbol in Class 32 of the Locarno Classification, or as the ornamental representation of a part of any product to which the design will be applied.
4.1.5 Music and sounds
Music and sounds per se do not constitute the appearance of a product and, therefore, do not comply with the definition of a design.
However, the graphical representation of a musical composition, in the form of a musical string, would qualify as a design, if applied for as, for example, other printed matter in Class 19-08 or graphic symbols in Class 32 of the Locarno Classification.
4.1.6 Photographs
A photograph per se constitutes the appearance of a product and, therefore, complies with the definition of a design, irrespective of what it discloses. The indication of the product can be writing paper, cards for correspondence and announcements in Class 19-01, other printed matters or photographs in Class 19-08 of the Locarno Classification, or any product to which the design will be applied.
4.1.7 Living organisms
Living organisms are not ‘products’, that is, industrial or handicraft items. A design which discloses the appearance of plants, flowers, fruits etc. in their natural state will, in principle, be refused. However, no objection will be raised if the indication of the product specifies that this product is artificial (see in particular Class 11-04 of the Locarno Classification).
4.1.8 Teaching material
Teaching material such as graphs, charts, maps etc. can be representations of products in Class 19-07 of the Locarno Classification.
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4.1.9 Concepts
A design application is refused where the representation is of a product that is simply one example amongst many of what the applicant wishes to protect. An exclusive right cannot be granted to a ‘non-specific’ design that is capable of taking on a multitude of different appearances. This is the case where the subject-matter of the application relates, inter alia to a concept, an invention or a method for obtaining a product.
4.2 Public policy and morality
4.2.1 Common principles
The concepts of public policy and m orality may vary from one country to another. A restrictive measure based on public policy or morality may be based on a conception which is not necessarily shared by all Member States (judgment of 14/10/2004, C-36/02, ‘Omega’, paras 33 and 37).
Given the unitary character of the registered Community design (Article 1(3) CDR), it is enough that a design be found contrary to public policy in at least part of the Union for this design to be refused under Article 9 CDR (see, by analogy, judgment of 20/09/2011, T-232/10, ‘Coat of arms of the Soviet Union’, paras 37 and 62). This finding can be supported by the legislation and adm inistrative practice of certain Member States.
It is not necessary that the use of the design would be illegal and prohibited. However, illegality of the use of the design under European or national legislation is a strong indication that the design should be refused under Article 9 CDR.
4.2.2 Public policy
The safeguard of public policy may be r elied on t o refuse a Community design application only if there is a g enuine and sufficiently serious threat to a f undamental interest of society (judgment of 14/03/2000, C-54/99, ‘Église de scientologie’, para. 17).
Designs which portray or promote violence or discrimination based on s ex, racial or ethnic origin, religion or belief, disability, age or sexual orientation will be refused on that account (Article 10 of the Treaty on the Functioning of the European Union).
4.2.3 Morality
The safeguard of morality may be relied on to refuse a Community design application if the design is perceived as sufficiently obscene or offensive from the perspective of a reasonable person of normal sensitivity and t olerance (see, by analogy, judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’, para. 21).
Bad taste, as opposed to contrariety to morality, is not a ground for refusal.
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4.3 Objection
Where an objection is raised by the examiner in respect of one or the other of the two above absolute grounds for refusal, the applicant will be given the opportunity of withdrawing or amending the representation of the design or of submitting its observations within a two-month time limit (Article 47(2) CDR, Article 11 CDIR).
If the objection relates to the compliance with the definition of a des ign and i f this objection can be ov ercome by amending the indication of the products in which the design is intended to be incorporated or to which it is intended to be applied, the examiner will propose such an amendment in the communication to the applicant.
Where the applicant opts for submitting an amended representation of the design, this representation will be admissible under the condition that ‘the identity of the design is retained’ (Article 11(2) CDIR).
Maintenance in an a mended form will, therefore, be limited to cases in which the removed or disclaimed features are so insignificant in view of their size or importance that they are likely to pass unnoticed in the perception of the informed user.
Features can be removed or disclaimed by making use of the identifiers referred to in paragraph 5.3 below.
Provided the deficiencies are remedied within the time limit set by the Office, the date on which all the deficiencies are remedied will determine the date of filing (Article 10(2) CDIR).
Where the applicant fails to overcome the grounds for non-registrability within the time limit, the Office will refuse the application. If those grounds concern only some of the designs contained in a multiple application, the Office will refuse the application only in so far as those designs are concerned (Article 11(3) CDIR).
5 Additional Requirements Regarding the Reproduction of the Design
Applicants are reminded that the requirements concerning the format of the representation of the design may vary according to the manner in which the application was filed (paper, e-filing, use of specimen). These requirements are set out in Articles 4 and 5 CDIR.
The following instructions supplement the requirements regarding the quality of the reproduction and the neutral background (see paragraph 3.3 above).
The following instructions apply to all designs, irrespective of the manner in which the application was filed.
Even where a representation of the design has been replaced by a specimen in accordance with Article 5 CDIR (see paragraph 3.3.5 above), the applicant must file a graphic or photographic reproduction of the design at the latest three months before the 30-month deferment period expires (Article 15(1)(c) CDIR; see paragraph 6.2.5.3 below).
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Any deficiency found in an application and relating to one or the other of the requirements under this section will have no bearing on the granting of a filing date. However, if the deficiencies are not remedied within the time limit set by the Office in its examination report, the application will be refused (Article 46(3) CDR). If the deficiencies concern only some of the designs contained in a multiple application, the Office will refuse the application only in so far as those designs are concerned (Article 11(3) CDIR).
Once a date of filing has been granted, refusal of the application does not give rise to a refund of the fees paid by an applicant (Article 13 CDIR).
5.1 Number of views
The purpose of the graphic representation is to disclose the features of the design for which protection is sought. The graphic representation must be self-contained, in order to determine with clarity and precision the subject-matter of the protection afforded by the registered Community design to its proprietor. This rule is dictated by the requirement of legal certainty.
It is the responsibility of the applicant to disclose as thoroughly as possible the features of its design. The Office will not examine whether additional views would be required to fully disclose the appearance of the design, with the exceptions listed under paragraphs 5.2.1 to 5.2.3 below.
A maximum of seven different views can be filed in order to represent the design (Article 4(2) CDIR). The views may be plain, in elevation, cross-sectional, in perspective or exploded. Only one copy of each view should be filed.
An exploded view is a view in which all the components of a complex product are shown disassembled in order to explain how these components can be assembled together, as in the example below (RCD 380969-0002, courtesy of Aygaz Anonim Sirketi, designer Zafer Dikmen).
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The alternative positions of the moveable or removable parts of a design can be shown in separate views, as in the example below (RCD 588694-0012, courtesy of Fujitsu Toshiba Mobile Communications, designer Hideki Hino).
Each of the views must be numbered by the applicant in Arabic numerals by figures separated by a dot, the first being the number of the design, the second being the number of the view. For instance, the 6th view of the second design of a m ultiple application must be numbered: 2.6.
In cases where more than seven views are provided, the Office will disregard any of the extra views for registration and publication purposes (decision of 27/10/2009, R 571/2007-3 – ‘Frames for cycles or motorcycles’, para. 13). The Office will take the views in the consecutive order in which the views are numbered by the applicant (Article 4(2) CDIR).
Where a reproduction comprises less than seven views and the views are not numbered, the examiner will number the views according to the sequence given in the application.
The examiner will not change the order of the views as appearing in the application, or their orientation.
5.2 Consistency of the views
The examiner will check whether the views relate to the same design, that is, to the appearance of one and the same product or of its parts.
Where the views are inconsistent and relate to more than one design, the applicant will be invited either to withdraw some views or to convert the application into a multiple application for different designs, and pay the corresponding fees.
To submit a correct and complete application (including representations of the design) falls within the applicant’s responsibility. The Office is not entitled to remedy any deficiencies in respect of incongruent views once the Community design is registered and published (see decision of 3/12/2013, R 1332/2013-3 ‘Adapters’, para. 14 et seq.)
The consistency of the views may be par ticularly difficult to assess when examining applications for designs relating to complex products, to details of products and to sets of articles.
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5.2.1 Complex products
A complex product is a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product (Article 3(c) CDR).
Applicants must submit, among the seven views allowed, at least one view showing the complex product in its assembled form. See the example below (RCD 238092-0001 courtesy of Eglo Leuchten GmbH):
Each of the component parts could in themselves be a ‘design’. Therefore, where all the views disclose different component parts, without showing these parts connected to each o ther, the examiner will issue a de ficiency letter giving the applicant two options:
• the applicant can convert its application into a multiple application combining the separate designs for each component part in question and pay the corresponding fees; or
• the applicant can limit its application to just one design by withdrawing the views representing other designs.
5.2.2 Details
The same reasoning applies to a design which is not intended to be incorporated in a complex product where the views only show individual details which cannot be related to the appearance of the product as a whole.
Each of the individual details of the product could in themselves be a ‘ design’. Therefore, where all the views disclose different detailed features, without showing these features connected to each other, the examiner will issue a deficiency letter giving the applicant two options:
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• the applicant can convert its application into a multiple application combining the separate designs for each individual detail in question and pay the corresponding fees; or
• the applicant can limit its application to just one design by withdrawing the views representing other designs.
5.2.3 Sets of articles
A set of articles is a group of products of the same kind which are generally regarded as belonging together and are so used. See the example below (RCD 685235-0001, courtesy of Zaklady Porcelany Stolowej KAROLINA Sp. z o.o.)
The difference between a complex product and a set of articles is that, in contrast to a complex product, the articles of a ‘set of articles’ are not mechanically connected.
A set of articles can be a ‘product’ in itself within the meaning of Article 3 CDR. It can be represented in a single design application if the articles making up this set are linked by aesthetic and functional complementarity and are, in normal circumstances, sold altogether as one single product, like a chess board and its pieces or sets of knives, forks and spoons.
It must, however, be clear from the representation that protection is sought for a design resulting from the combination of the articles making up the set.
Applicants must submit, among the 7 views allowed, at least one view showing the set of articles in its entirety.
Otherwise, the examiner will issue a deficiency letter giving the applicant two options:
• the applicant can convert its application into a multiple application combining the separate designs for each article in question and pay the corresponding fees; or
• the applicant can limit its application to just one design by withdrawing the views representing other designs.
5.2.4 Variations of a design
Sets of products should not be confused with variations of a de sign. The different embodiments of a same concept cannot be gr ouped in a s ingle application because each embodiment is a design on its own, as in the example below (RCD 1291652- 0001; -0002; -0003; -0004, courtesy of TESCOMA s.r.o.).
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Where, in an application for a single registered Community design, the views relate to more than one design, the examiner will issue a deficiency letter giving the applicant two options:
• the applicant can convert its application into a multiple application combining the separate designs and pay the corresponding fees; or
• the applicant can limit its application to just one design by withdrawing the views representing other designs.
5.2.5 Colours
The representation of the design may be submitted either in black and w hite (monochrome) or in colour (Article 4(1) CDIR).
Representations combining black and white views with colour views will be objected to due to their inconsistency and the resulting legal uncertainty as to the protection sought.
The same reasoning applies where the same features of a design are represented in different colours in the various views. Such an inconsistency illustrates the fact that the application relates to more than one design (decisions of 31/03/2005, R 965/2004-3 – Tape measure’, paras 18-20; of 12/11/2009, R 1583/2007-3 – ‘Bekleidung’, paras 9-10).
The applicant will, therefore, be invited either to withdraw some of the colour views in order to maintain consistency between the remaining ones, or to convert the application into a multiple application, and pay the corresponding fees.
However, as an exception to the above principle, the same features of a design can be represented in different colours in the various views if the applicant submits evidence that the change of colours at different points in time, while the product is in use, is one of the relevant features of the design, as in the example below (RCD 283817-0001, courtesy of ASEM Industrieberatung und Vermittlung).
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Where the reproduction is in colour, the registration and the publication will also be in colour (Article 14(2)(c) CDIR).
5.2.6 Elements external to the design
Views can include external and f oreign matter to the design provided their inclusion does not cast any doubt on the protection sought and serves only an illustrative purpose (see paragraph 3.3.2 above).
See for instance the following two RCDs, No 210166-0003 (courtesy of Karl Storz GmbH & Co. KG) and No 2068692-0002 (courtesy of Tenzi Sp. z o.o.) in which the inclusion of a hand or buildings and vegetation in some of the views serves the purpose of clarifying how the product in which the design is incorporated will be used or the context in which it will be used:
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5.3 Use of identifiers to exclude features from protection
Unlike Article 37 CTMR, neither the CDR nor the CDIR provides rules for the possibility of including in the application a s tatement that the applicant disclaims any exclusive right to one or more features disclosed in the views.
Use of a description, within the meaning of Article 36(3)(a) CDR, is not appropriate in this regard since a description ‘shall not affect the scope of protection of the design as such’ according to Article 36(6) CDR. Moreover, only an indication that a description has been filed is published, not the description as such (Article 14(2)(d) CDIR). Disclaimers must therefore be apparent from the representation of the design itself.
In an application for registration of a Community design the following identifiers will be allowed:
5.3.1 Broken lines
Broken lines may be us ed in a v iew either to indicate the elements for which no protection is sought (for example, ornamentation applied to the surface of a g iven product whose shape is disclaimed) or to indicate portions of the design that are not visible in that particular view, that is, non-visible lines.
RCD 30606-0005, courtesy of Nokia Corporation (designer: Petteri Kolinen)
5.3.2 Boundaries
Boundaries may be used to surround features of the design for which protection is sought, the remaining parts being considered as having a purely illustrative purpose, that is, to show the environment in which the claimed features are placed.
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RCD 164611-0004, courtesy of Valio Oy (designer: Aki Liukko)
RCD 2038216-0001 courtesy of BMC S.r.l.
5.3.3 Colour shading and blurring
Colour shading and bl urring may be us ed to exclude a num ber of features from protection and thus to highlight claimed features.
RCD 244520-0002, courtesy of Nokian Tyres plc
RCD 222120-0002, courtesy of Altia Plc
RCD 220405-0003, courtesy of KUBOTA CORPORATION (designer:
Yoshitaka Higashikawa)
5.3.4 Separations
Separations can be used to indicate that, for ease of illustration, the precise length of the design is not claimed (indeterminate length).
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RCD 1868753-0001, courtesy of Viskadalens Produktion AB (designer: Johan Larsson)
5.4 Explanatory text, wording or symbols
No explanatory text, wording or symbols, other than the indication ‘top’ or the name or address of the applicant may be displayed in the views (Article 4(1)(c) CDIR).
Where words, letters, numbers and symbols (such as arrows) are clearly not part of the design, the examiner may cut them from the views using the specific informatics tool available for this. If the examiner is not able to cut them out for technical reasons, the applicant will be requested to send in clean views or to withdraw the deficient ones.
Where the words, letters, numbers, etc. are part of the design (graphical symbol), the design is acceptable.
Verbal elements displayed in the representation that are part of the design will be keyed in and entered in the file. Where several verbal elements are displayed, the examiner will only take into account the most prominent one.
Indications such as ‘side’, ‘front view’, etc. will be cut for publication purposes. If the applicant considers such indications to be relevant, it may wish to include them in the box ‘Description’ at the time of filing. Further amendments or the addition of a description will not be allowed.
5.5 Amending and supplementing views
As a matter of principle, the representation may not be altered after the application has been filed. The submission of additional views or the withdrawal of some views will therefore not be accepted (Article 12(2) CDIR), unless expressly allowed or required by the Office.
In particular, the views initially filed may not be replaced with better-quality ones. The representations examined and published will be those that the applicant provided in its original application.
The submission of amended or additional views, where allowed, must be m ade by electronic communication via the OHIM website (not by e-mail), by post or fax (the latter is, however, not recommended; see paragraph 2.2.5 above).
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5.6 Specific requirements
5.6.1 Repeating surface patterns
Where the application concerns a design consisting of a repeating surface pattern, the representation of the design must disclose the complete pattern and a sufficient portion of the repeating surface (Article 4(3) CDIR), in order to show how this pattern is infinitely multiplied.
Where the application does not contain a description making clear that the design consists of a repeating surface pattern, the Office will assume that this is not the case and will not request a sufficient portion of the repeating surface.
If additional views represent the pattern applied to one or more specific products for illustrative purposes, the applicant must make sure that the shape of such products is not claimed as part of the design by using any method referred to under paragraph 5.3 above (RCD 002321232-0002, courtesy of Textiles Visatex SL.):
5.6.2 Typographic typefaces
Where the application concerns a des ign consisting of a typographic typeface, the representation of the design must consist of a string of all the letters of the alphabet, upper case and lower case, and of all the Arabic numerals, as well as of a text of five lines produced using that typeface, all in 16-pitch font (Article 4(4) CDIR).
Where the application does not include a text of five lines using the typeface concerned (Article 4(4) CDIR), the applicant will be requested to submit such a text or to accept a change in the indication of products to ‘set of characters’ in Locarno Class 18.03.
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6 Additional Elements that an Application Must or May Contain
6.1 Mandatory requirements
In addition to the requirements for the grant of a filing date (see paragraph 3 above), the application must properly identify the applicant and, if applicable, its representative (Article 1(b) and ( e) CDIR), specify the two languages of the application (Article 1(h) CDIR), contain a signature (Article 1(i) CDIR) and indicate the products in which the design is intended to be incorporated or to which it is intended to be appl ied (Article 1(d) CDIR).
Even after a date of filing has been granted, the examiner will issue an objection if a deficiency with regard to any of the above requirements is noted in the course of examining the Community design application (Article 10(3)(a) CDIR).
6.1.1 Identification of the applicant and its representative
Pursuant to Article 1(b) CDIR, an application will be objected to if it does not contain the following information regarding the applicant: its name, address and nationality and the State in which it is domiciled or, if the applicant is a legal entity, in which it has its seat or establishment. If the Office has given the applicant an identification number, it is sufficient to mention that number together with the applicant’s name.
Where the application is filed in the name of more than one appl icant, the same requirement applies to each one.
Names of natural persons must give both the family name and t he given name(s). Legal entities must be indicated by their official designation. The State whose law governs such entities must also be indicated.
If the applicant does not have a r epresentative, it is highly recommended that an indication be given of telephone numbers as well as fax numbers and details of other data-communications links, such as electronic mail.
Each applicant must, in principle, indicate only one address. Where several addresses are indicated, only the first address mentioned will be taken into account, except where the applicant designates one of the addresses as an address for service.
If there is more than one applicant, the Office will send its communications to the applicant mentioned first in the application.
If the applicant has appointed a representative, the application must indicate the name of that representative and the address of their place of business. If an appointed representative has been given an identification number by the Office, it will be sufficient to mention that number together with the representative’s name.
If the representative has more than one business address or if there are two or more representatives with different business addresses, the application must indicate which address is to be used as the address for service. Where no such indication is made, the address for service will be taken to be the first address mentioned.
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If there is more than one applicant, the application may appoint one representative to be the common representative for all applicants.
6.1.2 Specification of the languages
The application may be filed in any of the official languages of the European Union (language of filing) (Article 98(1) CDR, see paragraph 2.4). The language used in the application form does not affect the language of the application. It is the language of the content supplied by the applicant that is decisive. The language of filing will be the first language of the application.
The applicant must indicate a second language, which must be a n Office language, that is, Spanish (ES), German (DE), English (EN), French (FR) or Italian (IT).
The second language must be different from the language of filing.
The two-letter ISO CODES (codes set up for identifying languages by the International Organisation for Standards) may be used in the box provided in the application form.
6.1.3 Signature
The application must be signed by the applicant or its representative (Article 1(i) CDIR). Where there is more than one applicant or representative, the signature of one of them will be sufficient.
If an appl ication is filed electronically, it is enough for the name and authority of the signatory to be indicated. If an appl ication is filed by fax, a facsimile signature is considered valid.
For representatives, the signature consisting of the name of the law firm is acceptable.
6.1.4 Indication of products
6.1.4.1 General principles
Pursuant to Article 36(2) CDR, an application for a Community design must indicate the products in which the design is intended to be incorporated or to which it is intended to be applied. Pursuant also to Article 1(1)(d) and Article 3(3) CDIR, the indication of products must be worded in such a way as to indicate clearly the nature of the products and to enable each product to be c lassified in only one c lass of the Locarno classification, preferably using the terms appearing in the list of products set out therein, or in the EuroLocarno database (see below).
Neither the product indication nor the classification affects the scope of protection of a Community design as such (Article 36(6) CDR). Classification serves exclusively administrative purposes, in particular allowing third parties to search the registered Community designs databases (Article 3(2) CDIR).
Applicants do not themselves have to classify the products in which their design is intended to be i ncorporated or to which it is intended to be appl ied (Article 36(3)(d)
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CDR). This is, however, highly recommended in order to speed up t he registration procedure (see paragraph 6.2.3).
The considerations that follow here below only refer to single design applications. As far as multiple design applications are concerned, the ‘unitary class’ requirement applies (see paragraph 7.2.3).
6.1.4.2 The Locarno and EuroLocarno classifications
The Locarno Classification is an i nternational classification for industrial designs. It exists in two official languages, namely English and French. Its structure and contents are adopted and amended by the Committee of Experts from the countries party to the Locarno Agreement. The Classification is administered by the World Intellectual Property Organization (WIPO). The current, tenth, edition contains 32 classes and 219 subclasses.
EuroLocarno is the Office’s design classification tool. It is based on, and has the same structure as, the Locarno Classification (i.e. the same classes and s ubclasses). It contains the alphabetical list of products of the Locarno Classification and i s supplemented by a large number of additional product terms. EuroLocarno is available in all the official languages of the Union at OHIM’s website.
In order to speed up and simplify the registration procedure, it is highly recommended that products be indicated using the terms listed in the EuroLocarno database.
Using the terms listed in the EuroLocarno database obviates the need for translations and thus prevents long delays in the registration procedure. Using these product terms whenever possible will improve the transparency and searchability of the registered Community designs databases.
6.1.4.3 How to indicate products
More than one product can be indicated in the application.
When more than one product is indicated in the application, the products do not have to belong to the same class of the Locarno Classification, unless several designs are combined in a multiple application (Article 37(1) CDR; Article 2(2) CDIR; see paragraph 7.2.3).
Each class and s ubclass of the Locarno Classification and E uroLocarno has a ‘heading’. The class and subclass headings give a general indication of the fields to which the products belong.
In any event, the product(s) must be indicated in such a way as to allow classification in both the relevant class and subclass of the Locarno Classification (Article 1(2)(c) CDIR).
The use of terms listed in the heading of a given class of the Locarno Classification is not per se excluded, but it is not recommended. Applicants should not choose generic terms referred to in the heading of the relevant class (e.g. ‘articles of clothing’ in Class 2), but, instead, select terms listed in the heading of the subclass (e.g. ‘garments’ in subclass 02-02) or more specific terms from among those listed in the subclasses of the class in question (e.g. ‘jackets’ in subclass 02-02).
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Where the product indication does not allow classification in a subclass, the examiner will determine the relevant subclass by reference to the product disclosed in the graphical representation (see paragraph 6.2.3.1 below). For example, where an application contains as a product indication the term ‘Furnishing’ in Class 6 of the Locarno Classification, the examiner will assign a s ubclass by taking account of the design itself insofar as it makes clear the nature of the product, its intended purpose or its function. If the design discloses the appearance of a bed, the examiner will assign the subclass 06-02 to the generic indication ‘Furnishing’.
The use of adjectives in product indications is not per se excluded, even if such adjectives are not part of the alphabetical list of products of the Locarno Classification or of EuroLocarno (e.g. ‘electric tools for drilling’ in subclass 08-01, or ‘cotton pants’ in subclass 02-02). However, it may cause delays in processing the application where a translation of the adjective into all the EU languages is required.
6.1.4.4 Ex officio change of indication
Product terms not listed in the Locarno Classification or EuroLocarno
Where an applicant uses terms that are not in EuroLocarno, the examiner will, in straightforward cases, substitute ex officio the wording used by the applicant with an equivalent or more general term listed in the Locarno Classification or EuroLocarno. The purpose of this is to avoid having to translate terms into all the EU languages, which would result in delays in processing the application.
For instance, where an applicant chooses the term ‘Running trainers’ (a term not listed in EuroLocarno) to indicate the products in which the design will be incorporated, the examiner will change this indication to ‘Footwear’ (which is the heading of subclass 02- 04) or ‘Shoes’ (which is listed under subclass 02-04).
Even though the product indication does not affect the scope of protection of a Community design as such, the examiner will refrain from replacing the terms chosen by the applicant with more specific terms.
Products and their parts; sets
Where a design represents the appearance of one part of a product, and that product as a whole is indicated in the application (e.g. an application for the design of a knife handle specifies that the products in which this design will be incorporated are ‘knives’ in subclass 08-03), the examiner will replace that product indication by the indication ‘Product(s) X (Part of -)’, provided both the part in question and the product as a whole belong to the same class of the Locarno Classification.
Where a design represents a set of products, and these products are indicated in the application (e.g. an application for the design of a s et of dishes specifies that the products in which this design will be incorporated are ‘dishes’ in subclass 07-01), the examiner will replace that indication by ‘Product(s) X (Set of -)’. Ornamentation
The same reasoning applies where the design represents ornamentation for a given product, and that product as a whole is indicated in the application. The examiner will
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replace that product indication by the indication ‘Product(s) X (Ornamentation for -)’. The product will thus be classified under Class 32-00 of the Locarno Classification.
Moreover, where the product indication is ‘Ornamentation’ and the design does not limit itself to representing this ornamentation but also discloses the product to which the ornamentation is applied, or part of that product, without its contours being disclaimed, this product will be added to the product indication, and the classification will be amended accordingly.
A list of products combining ‘Ornamentation’ with other products belonging to different classes of the Locarno Classification will give rise to an obj ection where several designs are combined in a multiple application (see paragraph 7.2.3.).
Notification of the ex officio change of indication
Provided there is no deficiency, the examiner will register the Community design(s) and notify the applicant of the ex officio change of product indication.
Where the applicant objects to such ex officio change, it can apply for correction of the corresponding entry in the Register (see paragraph 11.1.) and request that the original terms used in the application be maintained, provided there are no issues concerning the clarity and pr ecision of these terms or their classification (Article 20 CDIR; see decision of 05/07/2007, R 1421-2006-3, ‘Cash registers’). In this case, however, applicants are informed that translation of the original terms into all official languages of the Union is likely to delay registration of the Community design(s).
6.1.5 Long lists of products
More than one product can be indicated in an application.
However, in order to ensure that the Community designs Register remains searchable and to save translation costs, where an application indicates more than five different products belonging to the same subclass of the Locarno Classification, the examiner will suggest replacing the product indication by the heading of the subclass in question.
For example, let us assume an application contains the following product indication: Locking or closing devices, Keys for vehicles, Anti-theft interlocking strips for doors, Anti-theft posts for motorcycles, Padlocks (part of -), Keepers of locks, Latches, Handcuffs, Handbag frames, Hasps, Lock bolts, Closing devices for doors and windows, Door openers [electric], Door bolts, Locks, Clasps for purses and handbags, Flat bolts [locks], Padlocks, Locking devices, Clasps for leather goods, Door closers, Casement bolts for windows or doors, Catches for venetian blinds, Keys for electric contacts, Cable-type padlocks for cycles, Theftproof locks, Keys, Box fasteners, Door check brakes, Tumbler locks, Door locks for vehicles, Fastenings for motor truck loading gates, Safety locks for bicycles, Clasps for cigarette cases, Shutter turnbuckles, Wheel clamps [boots], Manacles, Locks (part of -).
Since all these products are classified in the same subclass of the Locarno Classification, the examiner will propose replacing this list by the heading of subclass 08-07, that is, ‘Locking or closing devices’.
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Where the product indication contains more than five products that do not belong to the same subclass of the Locarno Classification, the examiner will suggest that the applicant limit the number of products to five and select products accordingly.
If, within the time limit indicated in the examiner’s communication, the applicant expresses its wish to maintain the original list of products, the examination will proceed on the basis of that list.
If the applicant does not respond within the time limit or expressly agrees with the examiner’s proposal, the examination will proceed on t he basis of the product indication as proposed by the examiner.
6.1.6 Objections to product indications
Where the examiner raises an objection, the applicant will be g iven two months to submit its observations and remedy any deficiencies noted (Article 10(3) CDIR).
The examiner may invite the applicant to specify the nature and pur pose of the products in order to allow proper classification, or may suggest product terms from EuroLocarno in order to assist the applicant.
If the deficiency is not remedied within the time limit, the application will be r ejected (Article 10(4) CDIR).
6.1.6.1 No product indication
An objection will be raised where the application gives no i ndication of the products concerned (Article 36(2) CDR). However, if an indication can be found in the description or in the priority document, the examiner will record this as the product indication (decision of 21/03/2011, R 2432/2010-3, ‘Kylkropp för elektronikbärare’, para. 14).
6.1.6.2 Deficient product indication
The examiner will also object to the product indication if it does not enable each product to be classified in only one c lass and s ubclass of the Locarno classification (Article 3(3) CDIR).
This will be the case where the indication is too vague or ambiguous to allow the nature and purpose of the products in question to be determined, for example merchandise, novelty items, gifts, souvenirs, home accessories, electric devices, etc.
This will also be the case where the indication concerns a service rather than a product, for example sending or processing of information.
6.1.6.3 Obvious mismatch
Since one of the main objectives of the product indication and classification is to make the Community designs Register searchable by third parties, the examiner will raise an
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objection where the product indication clearly does not match the product as disclosed in the representation of the design.
6.2 Optional elements
An application may contain a num ber of optional elements, as listed in Article 1(1)(f) and (g) and Article 1(2) CDIR, that is,
• a priority or exhibition priority claim; • a description; • an indication of the Locarno Classification of the products contained in the
application; • the citation of the designer(s); • a request for deferment.
6.2.1 Priority and exhibition priority
6.2.1.1 Priority
General principles
An application for a Community design may claim the priority of one or more previous applications for the same design or utility model in or for any state party to the Paris Convention or to the Agreement establishing the World Trade Organization, or in or for another State with which there is a reciprocity agreement (Article 41 CDR; Article 8 CDIR). This ‘Convention priority’ is of six months from the date of filing of the first application.
The effect of the right of priority is that the date of priority counts as the date of filing of the application for a registered Community design for the purposes of Articles 5, 6, 7 and 22, Article 25(1)(d) and Article 50(1) CDR (Article 43 CDR).
Priority claims are subject to the following requirements:
• priority may be c laimed within six months from the date of filing of the first application;
• a priority may be claimed only from the first filing of a design or a utility model in a country that is a member of the Paris Convention or the World Trade Organization (WTO), or in another State with which there is a r eciprocity agreement;
• the proprietor must be the same, or a transfer document establishing the Community design applicant’s right to claim the priority of a previous application originally filed by another applicant must be provided;
• the priority declaration (containing date, number and country of the first application) must be submitted not later than one month from the date of filing of the RCD application;
• the details and the certified copy of the previous application must be submitted not later than three months from the date of submission of the declaration of priority.
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As a substantive requirement, the Community design must relate to the ‘same design or utility model’ as the one for which priority is claimed (Article 41(1) CDR). This means that the subject-matter of the previous application must be i dentical to that of the corresponding Community design, without the addition or suppression of any features. A priority claim is however valid if the Community design and the previous application for a design right or a utility model differ only in immaterial details within the meaning of Article 5 CDR.
When examining an application for a Community design, the Office does not verify whether the application relates to the ‘same design or utility model’ as the one whose priority is claimed. Therefore, the applicant alone is responsible for ensuring that this requirement is satisfied, failing which the validity of the priority claim could be challenged at a later stage.
A priority claim will be examined for the purposes of Articles 5, 6 and 7 and Article 25(1)(d) CDR by the Office during invalidity proceedings if a third party challenges the validity of such a priority claim or if the holder challenges the effects of the disclosure of a design, where this disclosure occurred within the priority period (see the Guidelines on the Examination of Design Invalidity Applications, paragraph 5.5.1.8: Disclosure within the priority period).
During the examination phase of an application for a Community design, the Office will limit itself to verifying whether the formalities relating to a pr iority claim are complied with (Article 45(2)(d) CDR).
Claiming priority
The applicant may claim the priority of one or more previous design or utility model applications. Thus, the priority of more than one previous application can be claimed where two or more Community designs are combined in a multiple application.
If the priority of the same previous application is claimed for all designs of a multiple application, the box ‘Same priority for all designs’ should be t icked in the (paper) application form.
Any filing that is equivalent to a regular national filing under the domestic law applicable to it will be recognised as giving rise to the right of priority. A regular national filing means any filing that is suitable for establishing the date on which the application was filed in the country concerned, whatever the subsequent outcome of that application (Article 41(3) CDR).
Priority may be claimed either when filing the Community design application or within a period of one month of the filing date. During this one-month period, the applicant must submit the declaration of priority and indicate the date on which and the country in which the previous application was made (Article 8(2) CDIR).
Where there is no indication of the claim in the application, the submission of priority documents within one month of the filing date will be c onstrued as a dec laration of priority.
Unless it is expressly indicated in the application that a priority claim will be made subsequently, the application will be ex amined without delay and, if no deficiency is
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found, will be r egistered without waiting one month for any potential declaration of priority. If a declaration of priority is validly filed after registration of the Community design application, a corresponding entry will subsequently be made in the Register.
The applicant must provide the Office with the file number(s) of the previous application(s) and a certified copy of the previous application(s) (Article 8 CDIR) within three months of either the filing date or, as the case may be, receipt of the declaration of priority by the Office.
Deficiencies
The Office will limit itself to verifying whether the formalities relating to a priority claim have been complied with (Article 45(2)(d) CDR), that is,
• whether priority was claimed within six months of filing the first application; • whether priority was claimed when filing the application or within one m onth of
the filing date; • whether the details and the copy of the previous application were submitted in
due time (within three months of either the filing date or, as the case may be, receipt of the declaration of priority);
• whether the previous application concerns a design or a utility model; • whether the previous application was filed in a country that is a member of the
Paris Convention or the World Trade Organization (WTO), or in another state with which there is a reciprocity agreement;
• whether the previous application was a first filing (meaning that a priority claim should be rejected if the priority application in turn claimed priority);
• whether the proprietor is the same or whether a transfer document establishes the Community design applicant’s right to claim the priority of a previous application originally filed by another applicant.
Where remediable deficiencies are found, the examiner will request the applicant to remedy them within two months.
If the deficiencies are not remedied in due time or cannot be remedied, the Office will inform the applicant of the loss of the priority right and of the possibility of requesting a formal (i.e. appealable) decision on that loss (Article 46(1) and (4) CDR; Article 40(2) CDIR).
If the deficiencies that are not remedied concern only some of the designs contained in a multiple application, the right of priority will be lost in respect only of the individual designs concerned (Article 10(8) CDIR).
Whether priority is claimed within six months of filing the first application
The examiner will examine whether the date of filing allocated to the Community design is no later than six months from the filing date of the first application. Applicants should note that the date of filing allocated by the Office may not always correspond to the date of receipt of the Community design application (see paragraph 3).
In order to speed up registration proceedings, where the date of filing of the Community design application is indisputably and irremediably well beyond this six-month period,
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the Office will reject the priority claim without formally notifying the applicant of this deficiency.
Where the date of filing of the Community design application is only slightly beyond the six-month period, the examiner will check whether the period has to be extended under one of the conditions provided for in Article 58 CDIR.
The priority right claimed must always be a pr evious application, which, for this very reason, cannot bear the same date as the Community design application.
Whether priority is claimed when filing the application or within one month of the filing date
The examiner will check that priority has been claimed no later than one month after the filing date of the Community design.
Whether the details of the previous application and the copy of the priority document were submitted in due time
Where priority is claimed when filing or by submitting a declaration of priority, the applicant must indicate the date on which, and the country in or for which the previous application was made (Article 1(1)(f) CDIR). Failure to do so will, however, not lead to an objection: the examiner will wait for the priority document to be submitted.
The file number and the priority document must be submitted within three months of the filing date of the Community design application or submission of the declaration of priority (Article 8 CDIR).
The priority document must consist of a c ertified copy of the previous application or registration, issued by the authority that received it, and be accompanied by a certificate stating the filing date of that application. The priority document may be filed in the form of an original or as an accurate photocopy. Insofar as the original document contains a representation of the design in colour, the photocopy must also be in colour (Decision No EX-03-05 of the President of the Office of 20/01/2003 concerning the formal requirements of a priority or seniority claim). Applicants claiming the priority of a U.S. patent (design) application are allowed to submit the certified copy of this application in CD-ROM format (Communication No 12/04 of the President of the Office of 20/10/2004).
Where the priority of a previous registered Community design is claimed, the applicant must indicate the number of the previous application and its date of filing. No additional information or document is required (Decision No EX-03-05 of the President of the Office of 20/01/2003 concerning the formal requirements of a priority or seniority claim).
If the language of the previous application is not one of the five Office languages, the examiner may invite the applicant to file a t ranslation within two months (Article 42 CDR). It is not necessary for the whole document to be translated, but only that information allowing the examiner to check the nature of the right (design or utility model), the country of filing, the file number, the filing date and the applicant’s name.
In order to speed up registration proceedings, where an examiner detects deficiencies in the priority claim, a deficiency letter will be issued before the time limit expires for
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submitting all the details of the previous application, including the file number and priority document. The time limit for remedying deficiencies will be no less than three months from the filing date or date of receipt of the declaration of priority.
Whether the previous application concerns a design or a utility model
The priority of a previous design or utility model application may be claimed, including that of a previous Community design or an international design registration.
Many national laws do not provide for the protection of utility models, for example the laws of the United States of America. In the European Union, utility models can be registered in, inter alia, Austria, Czech Republic, Denmark, Finland, Germany, Italy, Hungary, Poland, Portugal, Slovakia and S pain. Utility models can be also be registered in Japan.
A priority claim based on a previous patent application will in principle be refused. However, the priority of an international application filed under the Patent Cooperation Treaty (PCT) can be claimed since Article 2 of the PCT defines the term ‘patent’ in a broad sense that covers utility models.
A priority claim can be based on a pr evious application filed with the United States Patent and Trademark Office (USPTO) only if the subject-matter of the previous application relates to a ‘design patent’, not a ‘patent’.
In order to speed up registration proceedings, where the previous application indisputably and irremediably involves a right that is not a design or a utility model, the Office will reject the priority claim without formally notifying the applicant of this deficiency.
Whether the previous application was filed in a country that is member of the Paris Convention or the World Trade Organization (WTO), or in another State with which there is a reciprocity agreement
The states and o ther territories listed below are not members of any of the relevant conventions, nor do they benefit from reciprocity agreements. Therefore, priority claims based on filings in the following countries and territories will be refused:
Afghanistan (AF) Abkhazia American Samoa (AS) Anguilla (AI) Aruba (AW) Bermuda (BM) Cayman Islands (KY) Cook Islands (CK) Eritrea (ER) Ethiopia (ET) Falkland Islands (FK) Guernsey (Channel Islands) (GG) Isle of Man (IM) Jersey (Channel Islands) (JE) Kiribati (KI)
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Marshall Islands (MH) Micronesia (Federated States of) (FM) Montserrat (MS) Nauru (NR) Palau (PW) Pitcairn (Island) (PN) Saint Helena (SH) Somalia (SO) Turks and Caicos Islands (TC) Tuvalu (TV) Virgin Islands, British (VG)
In order to speed up registration proceedings, where the previous application was filed indisputably and irremediably in one of the above countries or territories, the Office will reject the priority claim without formally notifying the applicant of the deficiency.
Whether the previous application is a first filing
As a matter of principle, the previous application must be a first filing. The examiner will therefore check that the priority document does not refer to priority being claimed in respect of an even earlier application.
In order to speed up r egistration proceedings, where the previous application is indisputably and i rremediably not a first filing, the Office will reject the priority claim without formally notifying the applicant of the deficiency.
As an e xception, a s ubsequent application for a des ign that was the subject of a previous first application and has been filed in or in respect of the same state, will be considered as a first application for the purpose of determining priority, provided that, at the date of filing of the subsequent application, the previous application had been withdrawn, abandoned or refused without being open to public inspection and without leaving any rights outstanding, and had not served as a basis for claiming priority. The previous application may not thereafter serve as a basis for claiming a right of priority (Article 41(4) CDR).
Whether the proprietor is the same or a transfer has occurred
Priority can be claimed by the applicant of the first application or its successor in title. In the latter case, the first application must have been transferred prior to the filing date of the Community design application, and documentation to this effect must be provided.
The right of priority as such may be transferred independently of the first application. Priority can therefore be accepted even if the owners of the Community design and the previous application are different, provided that evidence of assignment of the priority right is supplied. In this case, the execution date of the assignment must be prior to the filing date of the Community design application.
Subsidiary or associated companies of the applicant are not considered to be the same legal entity as the Community design applicant itself.
When, in reply to an objection by the examiner on a discrepancy between the identity of the applicant and that of the previous application holder, the applicant explains that
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this is due to a corporate name change, a document establishing this change of corporate name must be submitted within two months.
6.2.1.2 Exhibition priority
General principles
The effect of exhibition priority is that the date on which the design was displayed at an officially recognised exhibition is deemed to be the date of filing of the application for a registered Community design for the purposes of Articles 5, 6, 7 and 22, Article 25(1)(d) and Article 50(1) CDR (Article 43 CDR).
The applicant can claim exhibition priority within six months of the first display. Evidence of the display must be filed (Article 44(1) and (2) CDR).
Exhibition priority cannot extend the six-month period of ‘Convention priority’ (Article 44(3) CDR).
Claiming exhibition priority
Like ‘Convention priority’ (see paragraph 6.2.1 above), exhibition priority can be claimed either when filing a Community design application or subsequently. Where the applicant wishes to claim exhibition priority after having filed an application, the declaration of priority, indicating the name of the exhibition and the date of first display of the product, must be submitted within a p eriod of one month of the filing date (Article 9(2) CDIR).
The applicant must, within three months of the filing date or receipt of the declaration of priority, provide the Office with a certificate issued at the exhibition by the responsible authority. This certificate must state that the design was disclosed at the exhibition, specify the opening date of the exhibition and, where first public use did not coincide with the opening date of the exhibition, the date of first public use. The certificate must be accompanied by identification of the actual disclosure of the product in which the design is incorporated, duly certified by the authority (Article 9(1) and (2) CDIR).
Priority can only be g ranted where the application for a C ommunity design is filed within six months of first display at an exhibition recognised for this purpose, namely a world exhibition within the meaning of the Convention on International Exhibitions signed in Paris on 22/11/1928. These exhibitions are rare and Article 44 CDR does not cover display at other, national or international, exhibitions. The exhibitions can be found on the website of the Paris ‘Bureau International des Expositions’: http://www.bie-paris.org/site/en/.
Deficiencies
The Office will limit itself to verifying whether the formalities relating to an exhibition priority claim have been satisfied (Article 45(2)(d) CDR), that is,
• whether the filing date of the Community design falls within the six-month period following the first display of the product;
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• whether priority was claimed when filing the application or within one m onth of the filing date;
• whether the application or the subsequent declaration of priority gives details of the name of the exhibition and the date of first display of the product;
• whether the exhibition was a world exhibition within the meaning of the Convention on International Exhibitions of 22/11/1928;
• whether the certificate issued at the exhibition by the responsible authority was submitted in due time;
• whether the proprietor named in this certificate is the same as the applicant.
Where remediable deficiencies are found, the examiner will request the applicant to remedy them within a time limit no shorter than the three-month time limit for submitting the certificate referred to above.
If the deficiencies are not remediable or are not remedied in due time, the Office will inform the applicant of the loss of the priority right and of the possibility of requesting a formal (i.e. appealable) decision on that loss (Article 46(1) and (4) CDR; Article 40(2) CDIR).
If the deficiency concerns only some of the designs contained in a multiple application, the right of priority shall be lost in respect only of the individual designs concerned (Article 10(8) CDIR).
6.2.2 Description
The application may include a description not exceeding 100 w ords explaining the representation of the design or the specimen (see paragraph 3.3.5 above). The description must relate only to those features that appear in the reproductions of the design or the specimen. It may not contain statements concerning the purported novelty or individual character of the design or its technical value (Article 1(2)(a) CDIR).
The description does not affect the scope of protection of a Community design as such (Article 36(6) CDR).
The description may, however, clarify the nature or purpose of some features of the design in order to overcome a possible objection. For instance, where different views of the same design display different colours, thus raising doubts as to consistency between them (see paragraph 5.2.5 above), the description may explain that the colours of the design change when the product in which this design is incorporated is in use.
Descriptions submitted after the date of filing of the application will not be accepted.
The Register will include a mention that a description has been filed, but the description as such will not be pu blished. The description, however, will remain part of the administrative file of the application and will be open t o public inspection by third parties under the conditions set out at Article 74 CDR and Articles 74 and 75 CDIR.
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6.2.3 Indication of the Locarno Classification
6.2.3.1 General principles
The applicant may itself identify the classification, in accordance with the Locarno Classification, of the products indicated in the application (see paragraph 6.1.4 above).
If the applicant provides a classification, the products must be grouped in accordance with the classes of the Locarno Classification, each group being preceded by the number of the relevant class, and presented in the order of the classes and subclasses (Article 3 CDIR).
Since classification is optional, no objection will be r aised if the applicant does not submit a classification or does not group or sort the products as required, provided that no objection is raised with regard to the indication of products (paragraph 4.6 above). If no such objection is raised, the examiner will classify the products ex officio according to the Locarno Classification.
Where the applicant has indicated only the main class and no subclass, the examiner will assign the subclass that appears suitable in view of the design shown in the representation. For instance, where a design application indicates packaging in Class 9 of the Locarno Classification, and the design represents a bot tle, the examiner will assign subclass 09-01 (the heading of which is Bottles, flasks, pots, carboys, demijohns, and containers with dynamic dispensing means).
Where the applicant has given the wrong classification, the examiner will assign the correct one ex officio.
Products that combine different elements so as to perform more than one function may be classified in as many classes and subclasses as the number of purposes served. For instance, the product indication Refrigerating boxes with radios and CD players will be classified under Classes 14-01 (Equipment for the recording or reproduction of sounds or pictures), 14-03 (Communications equipment, wireless remote controls and radio amplifiers) and 15-07 (Refrigeration machinery and apparatus) of the Locarno Classification.
6.2.3.2 Multiple application and the requirement of ‘unity of class’
If the same product indication applies to all designs contained in a multiple application, the relevant box ‘Same indication of product for all designs’ should be ticked in the (paper) application form and the field ‘Indication of product’ left blank for the subsequent designs.
Where several designs other than ornamentation are combined in a m ultiple application, the application will be divided if the products in which the designs are intended to be incorporated or to which they are intended to be applied belong to more than one class of the Locarno Classification (Article 37(1) CDR); Article 2(2) CDIR; see paragraph 7.2.3).
6.2.4 Citation of the designer(s)
The application may include
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(a) a citation of the designer(s), or (b) a collective designation for a team of designers, or (c) an indication that the designer(s) or team of designers has/have waived the right
to be cited (Article 18 CDR; Article 1(2)(d) CDIR).
The citation, the waiver and an indication regarding the designer(s) are merely optional and are not subject to examination.
If the designer or the team of designers is the same for all designs applied for in a multiple application, this should be indicated by ticking the box ‘Same designer for all designs’ in the (paper) application form.
Since the right to be cited as the designer is not limited in time, the designer’s name can also be ent ered into the Register after registration of the design (Article 69(2)(j) CDIR).
6.2.5 Request for deferment
6.2.5.1 General principles
The applicant for a r egistered Community design may, when filing the application, request that its publication be def erred for 30 months from the date of filing or, if a priority is claimed, from the date of priority (Article 50(1) CDR).
Where no deficiency is found, the Community design will be registered. The information published in Part A.2. of the Community Designs Bulletin consists of the file number, date of filing, date of entry in the Register, registration number, name and address of the holder and na me and business address of the representative (if applicable). No other particulars such as the representation of the design or the indication of products are published (Article 14(3) CDIR).
Nevertheless, third parties may inspect the entire file if they have obtained the applicant’s prior approval or if they can establish a legitimate interest (Article 74(1) and (2) CDR).
In particular, there is a legitimate interest where an interested person submits evidence that the holder of the registered Community design whose publication is deferred has taken steps with a view to invoking the right against them.
No registration certificate will be made available as long as the publication of a design is deferred. The holder of the design registration subject to deferment may, however, request a certified or uncertified extract of the registration, containing the representation of the design or other particulars identifying its appearance (Article 73(b) CDIR), for the purpose of invoking its rights against third parties (Article 50(6) CDR).
The procedure described in this Section does not apply to international registrations designating the European Union (see paragraph 12 below).
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6.2.5.2 Request for deferment
Deferment of publication must be requested in the application (Article 50(1) CDR). Subsequent requests will not be accepted, even if received on the same day.
Applicants should be aware that designs can be r egistered and ac cepted for publication within two working days and ev en sometimes on the day that the application is received (see paragraph 2.7.1 above). If, by mistake, an application does not contain a request for deferment, the application should be w ithdrawn in order to prevent publication. Given the speed of the registration and publication processes, this should be done immediately after filing. The applicant should also contact an examiner on the day of the withdrawal.
A request for deferment of publication may concern only some of the designs of a multiple application. In this case, the designs to be deferred must be clearly identified by ticking the box ‘Request for deferment of publication’ on the (paper) form or the box ‘Publication to be deferred’ (e-filing) for each individual design.
The applicant must pay a fee for deferment of publication along with the registration fee (see paragraph 8 below). Payment of the publication fee is optional at the filing stage.
6.2.5.3 Request for publication
When applying, or at the latest three months before the 30-month period expires (that is, on the last day of the 27th month following the filing date or priority date, as the case may be), the applicant must comply with what are known as the ‘publication request requirements’ (Article 15 CDIR), by:
• paying the publication fee for the design(s) to be deferred (see paragraph 8); • in cases where a representation of the design has been replaced by a specimen
in accordance with Article 5 CDIR (see paragraph 3.3.5 above), filing a representation of the design in accordance with Article 4 CDIR (see paragraph 5);
• in the case of a multiple registration, clearly indicating which of the designs among those identified for deferment are to be published or surrendered, or for which designs deferment is to be continued, as the case may be.
Where the Community design holder notifies the Office, any time before the 27 months have expired, of its wish to have the design(s) published (‘request for anticipated publication’), it must specify whether publication should take place as soon as technically possible (Article 16(1) CDIR)) or when the 30-month deferment period expires. Where there is no specific request from the applicant, the designs will be published when the deferment period expires.
If the holder, despite a previous request for publication, decides that the design should not be published after all, it must submit a written request for surrender well before the design is due to be published. Any publication fees already paid will not be refunded.
6.2.5.4 Observation of time limits
Community design holders should be aware that the Office will not issue reminders regarding the expiry of the 27-month period before which the publication request requirements must be complied with. It is therefore the responsibility of the applicant
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(or, as the case may be, its representative) to make sure that the time limits are observed.
Particular attention must be paid where a priority date was claimed either at the time of or after filing, since this priority date will determine the time limits applicable to deferment. Moreover, the time limits applicable to deferment may differ for each of the designs of a multiple registration, if different priority dates are claimed for each individual design.
Where the time limit for complying with ‘the publication request requirements’ is not met, thus resulting in a loss of rights, the Community design holder may file a request for restitutio in integrum (Article 67 CDR; See also the Guidelines Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, Section 8, Restitutio in integrum).
6.2.5.5 Deficiencies
Deficiencies at the examination stage
If the information contained in the application is contradictory (e.g. the deferment fee has been paid, but the applicant has not ticked the box ‘Request for deferment of publication’) or inconsistent (e.g. the amount of the deferment fees paid for a multiple application does not correspond to the number of designs to be deferred), the examiner will issue a deficiency letter asking the applicant to confirm that deferment is requested and, where applicable, for which specific design(s) of a multiple application, and/or to pay the corresponding fees.
Deficiencies relating to the ‘publication request requirements’
If, once the 27-month period following the filing date or priority date of the Community design registration has expired, the holder has failed to comply with the ‘publication request requirements’, the examiner will issue a deficiency letter giving two months for the deficiencies to be remedied (Article 15(2) CDIR).
Where a deficiency concerns the payment of publication fees, the applicant will be requested to pay the correct amount plus fees for late payment (that is, EUR 30 for a design and, in the case of a multiple application, 25% of the fees for publication for each additional design; Article 15(4) CDIR; Articles 8 and 10 of the Annex to the CDFR).
Applicants should be aware that the time limit set by the examiner cannot be extended beyond the 30-month period of deferment (Article 15(2) CDIR).
If deficiencies are not remedied within the set time limit, the registered Community design(s) to be deferred will be deem ed from the outset not to have had t he effects specified in the CDR (Article 15(3)(a) CDIR).
The examiner will notify the holder accordingly, after the 30-month period of deferment has expired.
In the case of a ‘request for anticipated publication’ (see paragraph 6.2.5.3), failure to comply with the publication request requirements will result in the request being
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deemed not to have been f iled (Article 15(3)(a) CDIR). The publication fee will be refunded if it has already been paid. Where there are still more than 3 months before the 27-month period expires, the holder may, however, submit another request for publication.
Where the deficiency concerns a payment that is insufficient to cover the publication fees for all the designs that are to be deferred in a multiple application, including any fees for late payment, the designs not covered by the amount paid will be deemed from the outset not to have had the effects specified in the CDR. Unless the holder made it clear which designs were to be covered by the amount paid, the examiner will take the designs in consecutive numerical order (Article 15(4) CDIR).
Publication after deferment
Where there are no def iciencies or deficiencies have been overcome in due time, the registration will be published in Part A.1 of the Community Designs Bulletin.
The holder may request that only some of the designs of a multiple application are published.
Mention will be made in the publication of the fact that deferment was originally applied for and, where applicable, that a specimen was initially filed (Article 16 CDIR).
7 Multiple Applications
7.1 General principles
A multiple application is a request for the registration of more than one design within the same application. Each of the designs contained in a multiple application or registration is examined and deal t with separately. In particular, each design may, separately, be enforced, be licensed, be the subject of a right in rem, a levy of execution or insolvency proceedings, be s urrendered, renewed or assigned, be t he subject of deferred publication or be declared invalid (Article 37(4) CDR).
Multiple applications are subject to specific registration and publ ication fees, which decrease in proportion to the number of designs (see paragraph 8 below).
7.2 Formal requirements applying to multiple applications
7.2.1 General requirements
All the designs in a multiple application must have the same owner(s) and the same representative(s) (if any).
The number of designs contained in a multiple application is unlimited. The designs need not be related to one another or be otherwise similar in terms of appearance, nature or purpose.
The number of designs should not be c onfused with the ‘number of views’ that represent the designs (see paragraph 5.1 above).
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Applicants must number the designs contained in a multiple application consecutively, using Arabic numerals (Article 2(4) CDIR).
A suitable representation of each design contained in a multiple application must be provided (see Paragraph 5 above) and an indication given of the product in which the design is intended to be incorporated or to be applied (Article 2(3) CDIR, see paragraph 6.1.4 above).
7.2.2 Separate examination
Each of the designs contained in a multiple application is examined separately. If a deficiency concerning some of the designs contained in a multiple application is not remedied within the time limit set by the Office, the application will be refused only in so far as those designs are concerned (Article 10(8) CDIR).
The decisions on the registration or refusal of the designs contained in a m ultiple application will all be taken at the same time.
Even if some of the designs in a multiple application already comply with both the substantive and formal requirements, they will not be registered until any deficiencies affecting other designs have been r emedied or the designs in question have been refused by the decision of an examiner.
7.2.3 The ‘unity of class’ requirement
7.2.3.1 Principle
As a rule, all the product(s) indicated for the designs contained in a multiple application must be classified in only one of the 32 Locarno classes.
As an exception, the indication Ornamentation or Product(s) X (Ornamentation for -) in Class 32-00 can be combined with indications of products belonging to another Locarno class.
7.2.3.2 Products other than ornamentation
The products indicated for each design in a multiple application may differ from those indicated for others.
However, except in cases of ornamentation (see paragraph 7.2.3.3 below), any products that are indicated for each and every design of a m ultiple application must belong to the same class of the Locarno Classification (Article 37(1) CDR; Article 2(2) CDIR). This ‘unity of class’ requirement is considered to be complied with even if the products belong to different subclasses of the same class of the Locarno Classification.
For instance, a m ultiple application is acceptable if it contains one de sign with the product indication Motor vehicles (Class 12, subclass 08) and one design with the product indication Vehicle interiors (Class 12, subclass 16), or if both designs indicate both these terms. This is an example of two designs in different subclasses but in the same class, namely Class 12 of the Locarno Classification.
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An objection would, however, be raised if, in the above example, the products indicated were Motor vehicles (Class 12, subclass 08) and Lights for vehicles, since the second term belongs to Class 26, subclass 06 of the Locarno Classification. The examiner would then require the multiple application to be di vided, as explained under paragraph 7.2.3.4 below.
A multiple application cannot be divided unless there is a deficiency affecting the ‘unity of class’ requirement (Article 37(4) CDR).
7.2.3.3 Ornamentation
Ornamentation is a dec orative element capable of being applied to the surface of a variety of products without affecting their contours. It can be a two-dimensional pattern or a three-dimensional moulding or carving, in which the design stands out from a flat surface.
Although ornamentation is, in itself, a product within the meaning of the Locarno Classification (Class 32), its primary purpose is to constitute one o f the features of other products.
A multiple application can therefore combine designs for ornamentation with designs for products such as those to which this ornamentation will be applied, provided that all the products belong to the same class of the Locarno Classification.
For some designs, the indication Ornamentation or Product(s) X (Ornamentation for) in Class 32 of the Locarno Classification is neutral and therefore ignored for the purpose of examining whether the product indication for the remaining designs meets the ‘unity of class’ requirement.
The same reasoning applies to the following product indications in Class 32 of the Locarno Classification: Graphic symbols, Logos and Surface patterns.
For example, a multiple application is acceptable if it combines designs for Ornamentation or China (Ornamentation for) in Class 32 with designs representing pieces of a tea set for China in Class 7, subclass 01. In turn, if Linen (Table -) were indicated as a product for one of these designs, an objection would be raised as this product belongs in Class 6, subclass 13 of the Locarno Classification, that is, a different class.
Where the applicant has indicated the product as Ornamentation or Product(s) X (Ornamentation for), the examiner will prima facie examine whether it is really for ornamentation by looking at the design in question. Where the examiner agrees that it is for ornamentation, the product will be classified in Class 32.
Where the examiner does not agree that the design is for ornamentation, a deficiency letter must be sent on the grounds of an obvious mismatch between the products indicated and the design (see paragraph 6.1.6.3 above).
Where the representation of the design is not limited to ornamentation itself but also discloses the product to which such ornamentation is applied, without the contours of this product being disclaimed, this specific product must be added to the list of products and the classification must be amended accordingly (see paragraph 6.1.4.4).
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This may lead to an objection where a multiple application combines a number of such designs applied to products that belong to different classes of the Locarno Classification.
7.2.3.4 Deficiencies
For example, let us assume that three designs representing cars are combined in one multiple application, and the product indication for each design is Motor cars (subclass 12-08) and Scale models (subclass 21-01).
The examiner will issue an objection and request the applicant to:
• delete some of the product indications so that the remaining products can be classified in only one Locarno class; or
• divide the application into two multiple applications for each of the Locarno classes concerned, and pay the corresponding additional fees; or
• divide the application into three single applications for each design concerned, and pay the corresponding additional fees.
In some cases, it will not be possible to delete product indications, for example where a given product must be classified in two or more classes on account of the plurality of purposes it serves (see Paragraph 6.2.3.1).
The applicant will be invited to comply with the examiner’s request within two months and pay the total amount of fees for all applications resulting from the division of the multiple application or to delete some products in order to meet the ‘unity of class’ requirement.
The total amount to be paid is calculated by the examiner and notified to the applicant in the examination report. The examiner proposes the most cost-effective option between dividing the multiple application into as many applications as Locarno classes concerned or as many applications as designs concerned.
Where the applicant does not remedy the deficiencies in due t ime, the multiple application is refused in its entirety.
8 Payment of Fees
8.1 General principles
Community design applications are subject to various fees, which the applicant must pay at the time of filing (Article 6(1) CDIR), including the registration fee and t he publication fee or, where the application includes a r equest for deferment of the publication, the deferment fee.
In the case of multiple applications, additional registration, publication or deferment fees must be paid for each additional design. If payment has not been made when filing the application, late payment fees must also be paid.
In the case of deferment, applicants can, when filing, choose to pay not only the registration and deferment fee, but also the publication fee.
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For the fee payable with respect to an international application designating the European Union see paragraph 12.1.2.3 Fee.
8.2 Currency and amounts
Fees must be paid in euros. Payments made in other currencies are not accepted.
The fees for filing an application are as follows:
Registration fees
Single design or first design in a multiple application €230
2nd to 10th design in a multiple application €115 per design
11th+ design in a multiple application €50 per design
Publication fees
Single design or first design to be published in a multiple application €120
2nd to 10th design to be published in a multiple application €60 per design
11th+ design to be published in a multiple application €30 per design
Deferment fees (where deferment of publication is requested)
Single design or first design with deferment of publication in a multiple application €40
2nd to 10th design with deferment of publication in a multiple application €20 per design
11th+ design with deferment of publication in a multiple application €10 per design
Example of fees due for the filing of a multiple application where the publication of only some designs is to be deferred
Design number deferment Registration fee Publication fee Deferment fee
xxxxxxxx-0001 Yes €230 - €40
xxxxxxxx-0002 Yes €115 - €20
xxxxxxxx-0003 No €115 €120 -
xxxxxxxx-0004 No €115 €60 -
xxxxxxxx-0005 No €115 €60 -
If, after registration, publication is requested for design xxxxxxxx-0001, this will in effect be the fourth design to be published and the publication fee will be EUR 60.
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8.3 Means of payment, details of the payment and refund
The means of payment, the details to accompany the payment and the conditions for a refund of fees paid are explained in The Guidelines, Part A, Section 3, Payment of fees, costs and charges.
Fees are refunded when the application is withdrawn or refused without a f iling date having been granted (application ‘not dealt with as a Community design application’)
The Office also refunds amounts paid that are insufficient to cover the registration and publication (or deferment) fees for the design or at least one design of a multiple application.
9 Withdrawals and Corrections
9.1 Introduction
The applicant may at any time during the examination withdraw an a pplication for a registered Community design or, in the case of a multiple application, withdraw some of the designs contained in the multiple application. Corrections are allowed only in some specific situations.
Any correction or change to the Register and/or publication, that is after the design has been registered by the examiner, must be dealt with in accordance with paragraph 11 below.
9.2 Withdrawal of the application
Prior to registration the applicant may at any time withdraw an application for a Community design or, in the case of a m ultiple application, withdraw some of the designs contained in the multiple application (Article 12(1) CDIR). The examiner will send confirmation of the withdrawal.
Requests for withdrawal must be submitted in writing and include:
• the file number of the application for a registered Community design or, where the request for withdrawal is submitted before an application number has been allocated, any information enabling the application to be identified, such as the reference number of the applicant / representative and / or the provisional file number referred to in the automatic receipt for applications filed via the e-filing system;
• in the case of a multiple application, an indication of the design(s) that the applicant wants to withdraw if only some are to be withdrawn; and
• the name and addr ess of the applicant and / or, if applicable, the name and address of the representative.
The ‘date of withdrawal’ is the date on which the Office receives the request for withdrawal.
Fees will not be refunded if a filing date has been granted, except where the amount of fees paid by the applicant is insufficient to cover the fees relating to registration and
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publication (or deferment as the case may be) for the design, or for at least one design of a multiple application.
Requests for withdrawal received by the Office on or after the date of registration of the design will be dealt with as requests for surrender.
Requests for withdrawal received by the Office on the filing date of the design application will be accepted even if the design is registered that same day.
9.3 Corrections to the application
9.3.1 Elements subject to correction
Only the name and address of the applicant or the representative, errors of wording or of copying, or obvious mistakes may be c orrected, at the request of the applicant (Article 12(2) CDIR).
Apart from the name and address of the applicant or representative, the following elements may be corrected at the applicant’s request if they contain errors of wording or of copying or obvious mistakes: • the date of filing, where the application was filed with the central industrial
property office of a M ember State or, in Benelux countries, with the Benelux Office for Intellectual Property (BOIP), upon notification by the office concerned that an error regarding the date of receipt has been made;
• the name of the designer or team of designers; • the second language; • an indication of the product(s); • the Locarno classification of the product(s) contained in the application; • the country, date and number of the prior application where Convention priority is
claimed; • the name, place and dat e of the first exhibition of the design where exhibition
priority is claimed; • the description.
9.3.2 Elements that cannot be corrected
As a matter of principle, the representation of the design(s) cannot be altered after the application has been filed (Article 12(2) CDIR). The submission of additional views or the withdrawal of any views at a later stage will not be accepted, unless expressly required or proposed by the Office (see paragraphs 5.2 and 5.5 above).
Where a request for correction amends the representation of the design(s), the applicant will be informed that its request is not acceptable. The applicant must decide whether it wishes to continue the registration process or to file a fresh application for which it will have to pay the applicable fees.
9.3.3 Procedure for requesting correction
A request for correction of the application must contain:
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a) the file number of the application; b) the name and address of the applicant; c) where the applicant has appointed a r epresentative, the name and bus iness
address of the representative; d) an indication of the element of the application to be corrected and the corrected
version of that.
A single request may be m ade for correction of the same element in two or more applications belonging to the same applicant.
If all the requirements are met, the examiner will send confirmation of the correction.
Corrections and amendments after registration are dealt with by the Operations Support Department (see paragraph 11 below).
9.3.4 Deficiencies
Where a request for correction does not meet the above requirements and t he deficiency found can be remedied, the examiner will invite the applicant to remedy the deficiency within two months. If the deficiency is not remedied in due time, the examiner will refuse the request for correction.
Requests for correction that would have the effect of amending the representation of the design(s) will be refused irremediably.
Descriptions submitted after the date of filing of the application are not accepted (see paragraph 6.2.2 above). Requests for correction that involve submitting a description after the date of filing of the application will therefore be refused.
10 Registration, Publication and Certificates
10.1 Registration
Once examination of absolute grounds for refusal and formalities is completed, the examiner must ensure that all the particulars referred to in Article 14 CDIR have been provided (particulars which are mandatory for the applicant and which must be indicated in the application are highlighted):
(a) the filing date of the application; (b) the file number of the application and of each individual design included in a
multiple application; (c) the date of publication of the registration; (d) the name, address and nationality of the applicant and the state in which it
is domiciled or has its seat or establishment; (e) the name and business address of the representative, other than an
employee acting as representative in accordance with the first sentence of Article 77(3) CDR; where there is more than one representative, only the name and business address of the first-named representative, followed by the words ‘et al’, will be recorded; where an association of representatives is appointed, only the name and address of the association will be recorded;
(f) the representation of the design;
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(g) an indication of the product(s) by name, preceded by the number(s) of and grouped according to the class(es) and subclass(es) of the Locarno Classification;
(h) particulars of priority claims pursuant to Article 42 CDR; (i) particulars of exhibition priority claims pursuant to Article 44 CDR; (j) the citation of the designer or team of designers or a statement that the designer
or team of designers has waived the right to be cited; (k) the language in which the application was filed and t he second l anguage
indicated by the applicant pursuant to Article 98(2) CDR; (l) the date of registration of the design in the Register and the registration number; (m) a mention of any request for deferment of publication pursuant to Article 50(3)
CDR, specifying the date of expiry of the period of deferment; (n) a mention that a specimen has been filed pursuant to Article 5 CDIR; (o) a mention that a description was filed pursuant to Article 1(2)(a) CDIR; (p) a mention that the representation of the design contains a verbal element.
Once all the particulars in the check-list are on file, the examiner will check whether all the applicable fees have been paid.
Where no deficiency is found, the application is registered.
10.2 Publication
10.2.1 General principles
All registered Community designs are published in the Community Designs Bulletin, which is published in electronic format only, on the OHIM website.
However, international registrations designating the European Union are published by WIPO (Hague Express Bulletin) (see paragraph 12 below).
Unless an application contains a request for deferment of publication, publication will take place immediately after registration; publication is daily.
Where an application contains a request for deferment of publication, publication is made in Part A.2 of the Bulletin and is limited to the following particulars: the design number, filing date, registration date and the names of the applicant and the representative, if any.
Where an application contains a request for deferment of publication for only some of the designs of a multiple application, only the designs for which deferment has not been requested are published in full.
10.2.2 Format and structure of the publication
The Community Designs Bulletin is available in two formats:
• HTML • PDF.
Both formats are equally valid for publication and search purposes.
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The Community Designs Bulletin comprises the following four parts:
• Part A deals with Community design registrations and consists of three sections:
o Part A.1: Community design registrations in accordance with Articles 48 and 50 CDR.
o Part A.2: Community design registrations with requests for deferment and their first publication in accordance with Article 50 CDR and Article 14(3) CDIR.
o Part A.3: Errors in Part A (mistakes and er rors in registrations). A.3.1: absolute errors; A.3.2: relative errors.
• Part B deals with entries in the Register subsequent to registration, such as amendments, transfers, licences, etc. and consists of eight sections:
o Part B.1: mistakes and errors o Part B.2: transfers o Part B.3: invalidity and entitlement proceedings o Part B.4: surrenders and designs without effects o Part B.5: licences o Part B.6: rights in rem o Part B.7: insolvency proceedings o Part B.8: levy of execution (seizures).
• Part C deals with renewals and i nformation on expired registrations and is subdivided into three sections:
o Part C.1: Renewals in accordance with Article 13(4) CDR and Article 69(3)(m) CDIR.
o Part C.2: Expired registrations according to Articles 22(5) and 69(3)(n) CDIR.
o Part C.3: Correction of errors or mistakes in renewals and ex pired registrations.
• Part D deals with Restitutio in integrum (Article 67 CDR) and is divided into two sections:
o Part D.1: Restitutio in integrum. o Part D.2: Correction of errors or mistakes in Part D.
In the Bulletin, each item is preceded by the corresponding INID code in accordance with WIPO standard ST.80. Where appropriate, information is published in all official EU languages (Article 70(4) CDIR).
The INID codes used for items published in for example Part A.1 of the Bulletin are as follows:
21 File number 25 Language of filing and second language 22 Date of filing 15 Date of entry into the Register 45 Date of publication 11 Registration number 46 Date of expiry of the deferment
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72 Name(s) of designer(s) or team of designers 73 Name and address of the holder 74 Name and business address of the representative 51 Locarno classification 54 Indication of the product(s) 30 Country, date and number of application for which priority is claimed (Convention
priority) 23 Name, place and date on which the design was first exhibited (exhibition priority) 29 Indication that a specimen was filed 57 Indication that a description was filed 55 Representation of the design
The publication is made in all EU languages that are official on the date of the application.
10.3 Registration certificate
A registration certificate is issued after the registered Community design has been published in full (i.e. publication in Part A.1).
However, the Office does not issue registration certificates for international registrations designating the European Union (see paragraph 12 below).
Since 15/11/2010, registration certificates have been issued only as online e-certificates. Holders of Community design registrations are invited to download the certificate from the day after publication, using the “eSearch plus” tool on t he OHIM website. . No paper copy of the certificate of registration will be i ssued. However, certified or uncertified copies of the registration certificate may be requested.
The certificate contains all the particulars entered in the Community designs Register at the date of registration. No new certificate is issued following changes made in the Register after the date of registration. However, an extract from the Register, which reflects the current administrative status of the design(s), may be requested.
A corrected certificate is issued after publication of a relative error detected in a design registration (Part A.3.2) or after publication of a relative error detected in a recordal (Part B.1.2). A relative error is an error attributable to the Office that modifies the scope of the registration.
11 Corrections and Changes in the Register and in the Publication of Community Design Registrations
11.1 Corrections
11.1.1 General Principles
Only the name and address of the applicant, errors of wording or of copying, or obvious mistakes may be c orrected, at the request of the applicant and p rovided that such correction does not change the representation of the design (Article 12(2) CDIR) (decision of 3/12/2013, R 1332/2013-3 ‘Adapters’, para. 14 et seq.). There is no fee for such requests.
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Where the registration of a des ign or the publication of the registration contains a mistake or error attributable to the Office, the Office will correct the error or mistake of its own motion or at the request of the holder (Article 20 CDIR). There is no fee for such requests.
A request for correction of mistakes made by the Office can only refer to the contents of the publication of the registration (Articles 49, 73 and 99 CDR and Articles 14 and 70 CDIR) and the entries in the Register (Articles 48, 72 and 99 CDR and Articles 13 and 69 CDIR).
Unless the Office itself made an e rror when publishing the representation of the design(s) (e.g. by distorting or truncating the representation), the holder will not be allowed to request the correction of its Community design if this has the effect of altering the representation (Article 12(2) CDIR) (decision of 3/12/2013, R 1332/2013- 3 ‘Adapters’, para. 14 et seq.).
Corrections will be made as soon as the mistake is detected, including, where necessary, years after the original entry in the Register.
11.1.2 The request for correction
According to Articles 12 and 19 CDIR, requests for the correction of mistakes and errors in the Register and in the publication of the registration must contain:
a) the registration number of the registered Community design; b) the name and address of the holder as registered in the Register or the name of
the holder and the identification number assigned to the holder by the Office; c) where the holder has appointed a representative, the name and business
address of the representative or the name of the representative and the identification number assigned to the representative by the Office; and
d) an indication of the entry in the Register and/or of the content of the publication of the registration to be corrected and the corrected version of the element in question.
A single request may be made for the correction of errors and mistakes in respect of two or more registrations belonging to the same holder (Article 19(4) and Article 20 CDIR).
If the requirements for such corrections are not fulfilled, the Office will inform the applicant of the deficiency. If the deficiency is not remedied within the two months specified by the Office, the request for correction will be refused (Article 19(5) and 20 CDIR).
Requests for the correction of mistakes or errors that are not entries in the Register and / or that do no t concern the contents of the publication of registrations will be refused. Accordingly, requests for correction of the description explaining the representation of the design or the specimen will be refused.
Errors in the translation of the product indication into the official EU languages are considered attributable to the Office and will be corrected because the translations are considered as entries in the Register and as part of the contents of the publication of the registration, despite the fact that the translations are done not by the Office but by
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the Translation Centre for the Bodies of the European Union (Communication No 4/05 of the President of the Office of 14/06/2005 concerning the correction of mistakes and errors in the Register and in the publication of the registration of Community designs).
In cases of doubt, the text in the Office language in which the application for a registered Community design was filed will be authentic (Article 99(3) CDR). If the application was filed in an official EU language other than one of the Office languages, the text in the second language indicated by the applicant will be authentic.
11.1.3 Publication of corrections
The holder will be notified of any changes in the Register (Article 69(5) CDIR).
Corrections will be published by the Office in Part A.3 of the Community Designs Bulletin and entered in the Register together with the date on which they were recorded (Article 20 and 69(3)(e) CDIR).
Where the mistake or error is attributable to the Office, the Office will, after publication of the mistake or error, issue the holder with a certificate of registration containing the entries in the Register (Article 69(2) CDIR) and a s tatement to the effect that those entries have been recorded in the Register (Article 17 CDIR).
In cases where the mistake or error is the holder’s, a certificate of registration reflecting the corrected mistake or error will be issued only where no certificate has previously been issued. In any event, holders can always request the Office to issue an extract of the Register (in certified or simple form) to reflect the current status of their design(s).
11.2 Changes in the Register
11.2.1 Introduction
This section describes the changes in the Community designs Register, as follows:
• surrender of a Community design with or without deferment, in particular partial surrender;
• changes in the name and address of the applicant and / or of the representative, where applicable, of which the Office was notified before registration of the Community design (i.e., before issue of the notification of registration);
• changes in the name and address of the holder and / or of the representative, where applicable, for a Community design with deferred publication that has not been published yet;
• recordal of transfers; • recordal of licences.
11.2.2 Surrender of the registered Community design
11.2.2.1 General principles
A Community design may be surrendered by the holder at any time after registration. A surrender must be declared to the Office in writing (Article 51 CDR).
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However, a request for renunciation of an i nternational design designating the European Union must be filed with, and recorded by, the International Bureau (see Article 16 of the Geneva Act and paragraph 12.2.2.5 below).
Surrender can also be declared for only some of the designs contained in a multiple registration (Article 27(1)(d) CDIR).
The effect of a declaration of surrender begins on the date on which the surrender is entered in the Community designs Register, without any retroactive effect (Article 51(1) CDR). However, if a C ommunity design for which publication has been deferred is surrendered, it will be deemed from the outset not to have had the effects specified in the CDR (Article 51(2) CDR).
A registered Community design may be partially surrendered provided that its amended form complies with the requirements for protection and the identity of the design is retained (Article 51(3) CDR). Partial surrender will therefore be limited to cases in which the features removed or disclaimed do not contribute to the novelty or individual character of a Community design, in particular:
• where the Community design is incorporated in a product that constitutes a component part of a complex product, and the removed or disclaimed features are invisible during normal use of this complex product (Article 4(2) CDR); or
• where the removed or disclaimed features are dictated by a f unction or by interconnection purposes (Article 8(1) and (2) CDR); or
• where the removed or disclaimed features are so insignificant in view of their size or importance that they are likely to go unnoticed by the informed user.
The surrender will be entered in the Register only with the agreement of the proprietor of a right entered in the Register (Article 51(4) CDR). Persons having a registered right include the holders of a registered licence, the proprietors of a registered right in rem, the creditors of a registered levy of execution or the authority competent for the registered bankruptcy or similar procedures.
In the case of licences registered in the Community design Register, the surrender of a Community design is entered in the Register only upon receipt of evidence that the right holder has informed licensee(s) of the surrender accordingly. The surrender is entered in the Register three months after the date on which the Office obtains proof that the holder has informed licensee(s) of the surrender accordingly or earlier if proof is obtained of the licensee’s(licensees’) consent to the surrender (Article 51(4) CDR; Article 27(2) CDIR).
Where a claim relating to the entitlement to a registered Community design has been brought before a court pursuant to Article 15 CDR, the surrender is entered in the Register only with the agreement of the claimant (Article 27(3) CDIR).
11.2.2.2 Formal requirements for a declaration of surrender
A declaration of surrender must contain the particulars referred to in Article 27(1) CDIR:
a) registration number of the registered Community design; b) name and address of the holder; c) name and address of the representative, where appointed;
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d) indication of the designs for which the surrender is declared in the case of multiple registrations;
e) representation of the amended design in accordance with Article 4 CDIR in the case of partial surrender.
In the case of a partial surrender, the holder must submit a representation of the Community design as amended (Article 27(1)(e) CDIR).
If a declaration of surrender does not contain all the particulars listed above and does not fulfill all the above requirements, depending on the situation, the Office will notify the holder of the deficiencies and request that they be remedied within the prescribed time limit. Where the deficiencies are not remedied within the time limit, the surrender will not be entered in the Register and the Community design holder will be informed thereof in writing (Article 27(4) CDIR).
11.2.3 Changes in the name and address of the applicant / holder and / or its representative
The Community design holder may request recordal of the change of name or address in the Register by submitting a written request to the Office. Recordals of changes of name and / or address are free of charge.
The request for recordal of a change of name or address in respect of an international design designating the European Union must be filed with the International Bureau (see Article 16 of the Geneva Act).
For the differences between a change of name and a transfer, see the Guidelines on Community Trade Marks, Part E, Section 3, Chapter 1, on ‘Transfers and changes of name’.
A single request may be made for a change of name or address in respect of two or more registrations belonging to the same holder.
A request for a c hange of name or address by a Community design holder must contain:
a) the registration number of the Community design; b) the holder’s name and address as recorded in the Register or the holder’s
identification number; c) an indication of the holder’s name and address as changed; d) the name and address of the representative, where appointed.
If the above requirements are not fulfilled, the Office will send a deficiency letter. If the deficiency is not remedied within the specified time limit, the Office will refuse the request (Article 19(5) CDIR).
Changes of name and address for Community design applicants in connection with applications for Community designs are not entered in the Register but must be recorded in the files kept by the Office concerning Community design applications (Article 19(7) CDIR).
Changes in the holders of Community design registrations are published in Part B.2.2 of the Community designs Bulletin, while transfers of rights are published in Part B.2.1.
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Changes in the representatives are published in Part B.9 of the Community designs Bulletin.
11.2.4 Transfers
11.2.4.1 Introduction
A Community design registration may be transferred by the holder, and transfers are recorded upon request in the Register. However, the request for recording a transfer in respect of an international design designating the European Union must be filed with the International Bureau (see Article 16 of the Geneva Act).
The legal provisions contained in the CDR, CDIR and C DFR in respect of transfers correspond to the provisions in the CTMR, CTMIR and CTMFR respectively (see the Guidelines on Community Trade Marks, Part E, Chapter 1, on Transfer). The legal principles and procedure for the recordal of trade mark transfers apply mutatis mutandis to Community designs with the following particularities.
11.2.4.2 Rights of prior use in respect of a registered Community design
The right of prior use in respect of a registered Community design cannot be transferred except, where the third person, who claimed said right before the filing or priority date of the application for a registered Community design, is a business, along with that part of the business in the course of which the act was done or the preparations were made (Article 22(4) CDR).
11.2.4.3 Fees
The fee of EUR 200 for the recordal of a transfer applies per design, with an upper limit of EUR 1 000 if multiple requests are submitted in the same application (points 16 and 17 of the annex to the CDFR).
11.2.5 Licences
11.2.5.1 General principles
Community design registrations may be l icensed by the holder and the licences recorded upon request in the Register. The provisions of the CDR and CDIR dealing with Community design licences (Articles 27, 32 and 33, and Article 51(4) CDR; Articles 24 and 25, and Article 27(2) CDIR) are almost identical to those in the CTMR and CTMIR (see the Guidelines on Community Trade Marks, Part E, Chapter 2, on Licences).
The legal principles and procedure for the recordal of licences in respect of Community trade marks apply mutatis mutandis to Community designs (Article 24(1) CDIR) with the following particularities.
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11.2.5.2 Registered Community designs
There is no use requirement in Community design law. Therefore, the issue of whether use by a licensee is use with the consent of the right holder does not arise.
The CDR and CDIR require an indication of the products in which the design is intended to be incorporated or applied (see paragraph 6.1.4 above.). A partial licence for only some of the products in which the design is intended to be i ncorporated or applied is not possible.
Any limitations of the scope of the licence will therefore be disregarded by the Office, and the licence will be registered as if there were no such limitations.
11.2.5.3 Multiple applications for registered Community designs
An application for a registered Community design may take the form of a multiple application combining several designs (Article 37 CDR).
Each design contained in a multiple application may be licensed independently of the others (Article 24(1) CDIR).
11.2.5.4 Fees
The fee of EUR 200 for the recordal, transfer or cancellation of a licence applies per design, not per application, with a ceiling of EUR 1 000 if multiple requests are submitted in the same application (points 18 and 19 of the annex to the CDFR).
Example 1: From a multiple application for ten designs, six designs are licensed to the same licensee. The fee for registering the licences is EUR 1 000, provided that
• all six licences are included in a single registration request, or • all the relevant requests are submitted on the same day.
The request may indicate that, for three of these six designs, the licence is an exclusive one, without this having any impact on the fees to be paid.
Example 2: From a multiple application for ten designs, five designs are licensed to the same licensee. A licence is also granted for another design not contained in that multiple application. The fee is EUR 1 000, provided that:
• all six licences are included in a single registration request, or that all the relevant requests are submitted on the same day, and
• the holder of the Community design and the licensee are the same in all six cases.
12 International Registrations
This part of the Guidelines deals with the particularities of examining international registrations designating the European Union that result from applications filed with the International Bureau of the World Intellectual Property Organisation (hereinafter referred to as ‘international registrations’ and ‘the International Bureau’) under the
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Geneva Act of 02/07/1999 of the Hague Agreement concerning the international registration of industrial designs.
12.1 General overview of the Hague System
12.1.1 The Hague Agreement and the Geneva Act
The Hague Agreement is an international registration system that makes it possible to obtain protection for designs in a nu mber of States and/or intergovernmental organisations, such as the European Union or the African Intellectual Property Organization, by means of a single international application filed with the International Bureau. Under the Hague Agreement, a single international application replaces a whole series of applications which, otherwise, would have had to be filed with different national intellectual property offices or intergovernmental organisations.
The Hague Agreement consists of three separate international treaties: the London (1934) Act, the application of which has been frozen since 01/01/2010, the Hague (1960) Act and the Geneva (1999) Act. Each Act has a different set of legal provisions, which are independent of one another.
International registrations designating the European Union are governed by the Geneva Act.
Unlike the Madrid ‘Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks’, neither the Geneva Act nor the CDR provides for procedures for converting or transforming an international registration into Community or national designs or into designations of Member States party to the Hague System, or for replacing Community or national designs by an international registration designating the contracting party in question.
12.1.2 Procedure for filing international applications
12.1.2.1 Particularities
Another difference with the Madrid System is that the Geneva Act does neither allow nor require an international registration to be based on a previously filed Community or national design. OHIM can only be a ‘designated office’, not an ‘office of origin’. International applications must therefore be filed directly with the International Bureau (Article 106b CDR).
The Geneva Act and the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement (‘CR’) contain specific rules, which may differ from those applicable to ‘direct filings’ of Community designs, that is, applications filed directly with OHIM or via the central industrial property office of a Member State or, in Benelux countries, the Benelux Office for Intellectual Property (BOIP) (see paragraph 2.2.1 above). These specific rules relate, in particular, to entitlement to file an international application, the contents of an international application, fees, deferment of publication, the number of designs that may be i ncluded in a m ultiple application (up to 100), representation before the International Bureau and the use of languages (an international application must be in English, French, or Spanish).
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12.1.2.2 Deferment of publication
An international application may contain a request that publication of the design, or of all the designs contained in a multiple application, be deferred. The Geneva Act does not allow deferment of publication to be r equested for only some of the designs contained in a multiple application (Article 11 of the Geneva Act).
The period of deferment of publication for an international application designating the European Union is 30 months from the filing date or, where priority is claimed, the priority date. The application will be published at the end of this 30-month period, unless the holder submits a request for earlier publication to the International Bureau (Article 11 of the Geneva Act).
The procedure described in paragraph 6.2.5 above does not apply as the Office is not responsible for publishing international registrations designating the European Union.
12.1.2.3 Fees
Three types of fees6 must be pai d for an international application designating the European Union, namely:
• a basic fee • a publication fee • an individual designation fee, that is, EUR 62 per design, converted into Swiss
francs (Article 106c CDR; Article 1a to the Annex of the CDFR; Rule 28 CR).
12.1.3 Examination carried out by the International Bureau
When it receives an international application, the International Bureau checks that it complies with the prescribed formal requirements, such as those relating to the quality of the reproductions of the design(s) and the payment of the required fees. The applicant is informed of any deficiency, which must be corrected within the prescribed time limit of three months, failing which the international application is considered to be abandoned.
Where an international application complies with the prescribed formal requirements, the International Bureau records it in the International Register and (unless deferment of publication has been r equested) publishes the corresponding registration in the ‘International Designs Bulletin’. Publication takes place electronically on the website of the World Intellectual Property Organization (‘WIPO’) and contains all relevant data concerning the international registration, including a reproduction of the design(s).
The International Bureau notifies the international registration to all designated offices, which then have the option of refusing protection on substantive grounds.
6 See www.wipo.int/hague/en/fees
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12.2 The role of the Office as designated office
It will be e xplained below how international registrations are dealt with by the Office from notification by the International Bureau through to the final decision to accept or refuse the designation of the European Union.
The main steps before the Office as designated office are:
• receipt of the international registration designating the European Union; • examination of the grounds for non-registrability.
12.2.1 Receipt of the international registration designating the European Union
Communications between the Office and the International Bureau are by electronic means (Article 43(3) CDIR).
12.2.2 Grounds for non-registrability
Once the international registration designating the European Union has been notified to the Office by the International Bureau, the rules laid down under Title XIa CDR a nd Article 11a CDIR (Examination of grounds for refusal) apply (Article 106a(1) CDR).
12.2.2.1 Compliance with the definition of a design, public policy and morality
An international registration may not be refused on the grounds of non-compliance with formal requirements, since such requirements are to be c onsidered as already satisfied following examination by the International Bureau.
The Office limits its examination to the two grounds for non-registrabiity (Article 11a CDIR). An international application will be refused if a design does not correspond to the definition in Article 3(a) CDR or if it is contrary to public policy or accepted principles of morality (Article 9 CDR) (see paragraph 4 above).
The examination of grounds for non-registrability for international registrations will be carried out as if the design(s) had been appl ied for directly with the Office. The time limits and other general procedural aspects governing said examination are the same as those that apply in the case of design applications filed directly at the Office (see Introduction, paragraph 1.2.3, and paragraph 4.3 above).
12.2.2.2 Time limits
The Office must inform the International Bureau of any refusal of protection within six months of publication of the international registration on the WIPO website (Article 11a(1) CDIR).
A preliminary refusal must be reasoned and s tate the grounds on w hich refusal is based, and the holder of the international registration must be given an opportunity to be heard (Article 106e(1) and (2) CDR).
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Thus, within two months of the date of receipt of the notification of provisional refusal by the international registration holder, the latter will be g iven the opportunity to renounce the international registration, to limit the international registration to one or some of the designs for the European Union or to submit observations (Article 11a(2) CDIR).
The International Bureau will forward the notification of provisional refusal to the holder (or to its representative before WIPO if applicable). The holder must reply direct to the Office or, if applicable, through his representative (see paragraph 12.2.2.4 below).
For time-limit extensions, see Introduction, paragraph 1.2.3.
12.2.2.3 Languages
An international application must be filed in English, French or Spanish (Rule 6(1) CR). The recording and publication of the international registration will indicate the language in which the international application was received by the International Bureau (Rule 6(2) CR). In practice, this language can be identified from the product indication (INID code 54): the first language used in the product indication is the language in which the international application was received by the International Bureau. The indications given in the other two languages are translations provided by the International Bureau (Rule 6(2) CR).
The language in which the international application was received by the International Bureau will be the first language of the EU designation and will therefore become the language of the examination proceedings (Article 98(1) and (3) CDR).
In all communications with the International Bureau, the Office will therefore use the language in which the international registration was filed.
If the holder wishes to use a different Office language, it must supply a translation into the language in which the international registration was filed, within one month of the date of submission of the original document (Article 98(3) CDR; Article 81(1) CDIR). If no translation is received within this time limit, the original document is deemed not to have been received by the Office.
12.2.2.4 Professional representation
The holder may, if representation is mandatory under Article 77(2) CDR (see paragraph 2.5 above), be requested to appoint, within two months, a professional representative before the Office in accordance with Article 78(1) CDR (Article 11a(3) CDIR).
If the holder fails to appoint a representative within the specified time limit, the Office will refuse protection of the international registration (Article 11a(4) CDIR).
12.2.2.5 Renunciation and limitation
Where the holder renounces the international registration or limits it to one or some of the designs for the European Union, it must inform the International Bureau by way of recording procedure in accordance with Article 16(1)(iv) and (v) of the Geneva Act. The
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holder can inform the Office by submitting a c orresponding statement (Article 11a(6) CDIR).
12.2.2.6 Grant of protection
Where the Office finds no grounds for refusing protection or where a preliminary refusal is withdrawn, the Office must inform the International Bureau accordingly without delay.
12.2.2.7 Refusal
Where the holder does not submit observations that satisfy the Office within the specified time limit, the Office will confirm its decision refusing protection for the international registration. If the refusal concerns only some of the designs contained in a multiple international registration, the Office will refuse the latter only insofar as those designs are concerned (Article 11(3) CDIR).
There is no l egal provision in the CDR or CDIR allowing an appl icant to request an amendment of the design in order to overcome an objection concerning an international registration. On the other hand, an applicant may renounce the designation of the European Union by addressing WIPO directly, who will then notify the Office.
The holder of the international registration has the same remedies available to it as it would have had i f it had filed the design(s) in question directly with the Office. The ensuing procedure takes place solely at Office level. An appeal against a decision to refuse protection must be submitted by the holder to the Boards of Appeal, within the time limit and in accordance with the conditions set out in Articles 55 to 60 CDR and Articles 34 to 37 CDIR (Article 11a(5) CDIR). The International Bureau is not involved in this procedure at all.
Once the decision to refuse or accept the international registration is final, a final notification will be sent to the International Bureau, indicating whether the design(s) has / have been finally refused or accepted.
Where the final refusal relates to only some of the designs contained in a multiple application, the notification to the International Bureau will indicate which designs have been refused and which accepted.
12.3 Effects of International registrations
If no r efusal is notified by the Office within six months of the publication of the international registration on t he WIPO website, or if a no tice of preliminary refusal is withdrawn, the international registration will, from the date of registration granted by the International Bureau, as referred to in Article 10(2) of the Geneva Act (Article 106a(2) CDR), have the same effect as if it had been applied for with, and registered by, the Office.
International registrations can be subject to invalidity proceedings under the same conditions and procedural rules as ‘direct filings’ (Article 106f CDR; see the Guidelines on the Examination of Design Invalidity Applications). Since the language of filing of an international registration designating the European Union is necessarily an Office
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language, an application for a declaration of invalidity against such an international registration must be filed in this language.
The Office will notify the holder or their representative direct of any request for a declaration of invalidity The holder must reply direct to the Office or, if applicable, through a representative who is on the Office’s list in accordance with Article 78 CDR (see paragraph 2.5 above).
Where the Office declares the effects of an i nternational registration invalid in the territory of the European Union, it must inform the International Bureau of its decision as soon as the latter becomes final (Article 106f(2) CDR; Article 71(3) CDIR).
The particularities of the procedures governing the renewal of international registrations and recordals of changes of name, transfers, renunciation or limitation of certain designs, for any or all of the designated contracting parties, are dealt with in the Guidelines Concerning Proceedings before the Office on Renewal of Registered Community Designs and at paragraphs 11.2.2 to 11.2.4 (Articles 16 and 17 o f the Geneva Act; Article 22a CDIR).
13 Enlargement and the Registered Community Design
This section discusses the rules relating to the accession of new Member States to the European Union and t he consequences thereof for applicants for, and hol ders of, registered Community designs.
Ten new Member States joined the European Union on 01/05/2004 (Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia and Slovakia), two on 01/01/2007 (Bulgaria and Romania) and one on 01/07/2013 (Croatia), bringing the number of Member States up to 28.
Article 110a CDR contains provisions relating to enlargement as regards registered Community designs. These provisions were inserted in the CDR when the EU was enlarged in 2004 and r emain applicable for successive enlargements. The only modification to the text of the CDR is the addition of the names of the new Member States.
As far as registrability and validity of Community designs are concerned, the effects of the enlargement of the European Union on registered Community design rights are the following.
13.1 The automatic extension of the Community design to the territories of the new Member States
Pursuant to Article 110a(1) CDR, the effects of all Community design rights filed before 01/05/2004, 01/01/2007 or 01/07/2013 extend automatically to the territories of the Member States that acceded on those dates (Article 110a(1) CDR).
Extension is automatic in the sense that it does not have to undergo any administrative formality and does not give rise to any extra fees. Moreover, it cannot be opposed by the Community design holder or any third party.
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13.2 Other practical consequences
13.2.1 Filing with national offices
As from the enlargement date, a C ommunity design application may also be f iled through the industrial property office of a new Member State.
13.2.2 Professional representation
As from the accession date, applicants (as well as other parties to proceedings before the Office) who have their seat or domicile in a new Member State no longer need to be represented by a professional representative. As from the accession date, professional representatives from a new Member State may be entered on the list of professional representatives maintained by the Office pursuant to Article 78 CDR and may then represent third parties before the Office.
13.2.3 First and second language
Since 01/01/2004 there have been nine new official EU languages, namely Czech, Estonian, Latvian, Lithuanian, Hungarian, Maltese, Polish, Slovak and Slovenian. A further two languages (Bulgarian and R omanian) were added on 01/01/20077 and a further one (Croatian) on 01/07/2013.
These languages may be us ed as the first language only for Community design applications filed on or after the accession date concerned.
13.2.4 Translation
Community design applications with a filing date prior to the accession date, or existing Community design registrations, will neither be translated into, nor republished in the language of the new Member State(s). Community design applications filed after the accession date will be translated and published in all official EU languages.
13.3 Examination of grounds for non-registrability
The Office limits its examination of the substantive protection requirements to only two grounds for non-registrability (Article 47(1) CDR). An application will be refused if the design does not correspond to the definition provided for at Article 3(a) CDR or if it is contrary to public policy or to accepted principles of morality (Article 9 CDR) (see paragraph 4 above).
An application for a registered Community design cannot be refused on the basis of any of the grounds for non-registrability listed in Article 47(1) CDR if these grounds become applicable merely because of the accession of a new Member State (Article 110a(2) CDR).
7 For Irish, see paragraph 2.4
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Whether a C ommunity design is in conformity with Article 3 CDR o r complies with public order and accepted principles of morality is normally assessed without reference to any particular national or linguistic context.
However, where a C ommunity design contains an of fensive word element in a language which, as a r esult of the accession of a new Member State, becomes an official language of the European Union after the date of filing, the absolute ground of refusal provided for under Article 9 CDR does not apply.
13.4 Immunity against cancellation actions based on gro unds of invalidity which become applicable merely because of the accession of a new Member State
13.4.1 General principle
Community designs filed or registered before 01/05/2004, 01/01/2007 or 01/07/2013 will not be c ancelled on the basis of grounds for invalidity that exist in one of the Member States acceding to the European Union on those dates if the ground for invalidity only became opposable as from the accession date in question (Article 110a(3) CDR). This is an expression of the need to respect acquired rights.
Not all grounds of invalidity set out in Article 25(1) CDR may become ‘applicable merely because of the accession of a new Member State’.
13.4.1.1 Grounds of invalidity that are applicable independently of the enlargement of the EU
The accession of a new Member State has no effect on the applicability of the following four grounds for invalidity. Article 110a(3) CDR therefore does not offer any protection against their application to Community designs filed before 01/05/2004, 01/01/2007 or 01/07/2013 respectively.
Non-visibility and functionality
The non-visibility of a Community design applied to a part of a complex product and the restrictions applying to features of a design that are solely dictated by technical function or the requirements of interconnection, are grounds of invalidity that must be evaluated on the basis of the design itself and not of a factual situation that exists in any given Member State (Article 25(1)(b) CDR read in combination with Article 4 and 8 CDR).
Novelty and individual character
Under normal circumstances, lack of novelty or individual character of a Community design will not be affected by enlargement of the EU (Article 25(1)(b) CDR read in combination with Article 5 and 6 CDR).
The disclosure of a design prior to the filing or priority date of a Community design can destroy the latter’s novelty or individual character, even if such disclosure took place in a country before the date of its accession to the EU. The sole requirement is that such disclosure could ‘reasonably have become known in the normal course of business in
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the circles specialised in the sector concerned operating in the Community’ (Article 7(1) CDR).
Entitlement to the Community design
The fact that the holder is not entitled to the Community design as a result of a court decision is another ground for invalidity that is not affected by enlargement (Article 25(1)(c) CDR). Article 14 CDR does not impose any nationality requirement for the person claiming to be entitled to the Community design, nor does it require that the court decision originates from a court located in a Member State.
Improper use of one or more of the elements listed in Article 6ter of the Paris Convention
The invalidity ground of improper use of one or more of the elements listed in Article 6ter of the Paris Convention is not affected by enlargement of the EU either. There is no requirement for the sign of which use is prohibited to come from a Member State (Article 25(1)(g) CDR).
13.4.1.2 Grounds of invalidity resulting from enlargement of the EU
A Community design filed on or before 30/04/2004, 31/12/2006 or 30/06/2013 respectively cannot be invalidated on the basis of the four grounds of invalidity referred to below where any of these grounds becomes opposable as a result of the accession of a new Member State on those dates (Article 110a(3) CDR).
Conflict with a prior design right protected in a new Member State (Article 25(1)(d) CDR)
A Community design filed before the date of accession of a Member State cannot be invalidated on the basis of a conflict with an earlier design that has enjoyed protection in the new Member State since a date prior to the filing or priority date of the Community design but that was disclosed to the public at a later date.
Use of an earlier distinctive sign (Article 25(1)(e) CDR)
A Community design filed before the date of accession of a Member State cannot be invalidated on account of the use of a distinctive sign that has enjoyed protection in the new Member State since a date prior to the filing or priority date of the Community design.
Unauthorised use of a work protected under the copyright law of a Member State (Article 25(1)(f) CDR)
A Community design filed before the date of accession of a Member State cannot be invalidated on account of the non-authorised use of a work that has been protected by the copyright law of the new Member State since a date prior to the filing or priority date of the Community design.
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Improper use of signs, emblems, coats of arms, other than those covered by Article 6ter of the Paris Convention (Article 25(1)(g) CDR)
A Community design filed before the date of accession of a Member State cannot be invalidated on account of the improper use of signs, emblems or coats of arms, other than those covered by Article 6ter of the Paris Convention, that are of particular public interest for the new Member State.
Public policy and morality
A Community design filed before the date of accession of a new Member State cannot be invalidated on account that it is contrary to public policy or morality in the territory of that new Member State.
13.4.2 Effects of a priority claim
Community designs with a filing date on or after 01/05/2004, 01/01/2007 or 01/07/2013 respectively may be invalidated on the basis of the four grounds mentioned above.
This applies even if the priority date of the Community design in question precedes the relevant accession date. The priority right does not protect the Community design holder against any change in the law that is applicable to the validity of its design.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON REGISTERED COMMUNITY
DESIGNS
RENEWAL OF REGISTERED COMMUNITY DESIGNS
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Table of Contents
1. Introduction................................................................................................ 3
2. FRAUD WARNING ..................................................................................... 3 2.1. Private companies sending misleading invoices.....................................3 2.2. Renewal by unauthorised third persons...................................................4 2.3. Contact........................................................................................................4
3. Term of Protection..................................................................................... 4
4. Notification of Expiry of Registration ...................................................... 4
5. Fees and Other Formal Requirements for the Request for Renewal .... 5 5.1 Persons who may submit a request for renewal ......................................5 5.2 Content of the request for renewal...........................................................6 5.3 Languages ..................................................................................................6 5.4 Fees.............................................................................................................7 5.5 Time limits ..................................................................................................7
5.5.1. Six months period for renewal before expiry (basic period) ........................... 7 5.5.2 Six months grace period following expiry (grace period) ............................... 8
5.6 Means of payment ......................................................................................8
6 Procedure before the Office ..................................................................... 9 6.1 Competence................................................................................................9 6.2 Examination of formal requirements.........................................................9
6.2.1 Observance of time limits ............................................................................... 9 6.2.2 Compliance with formal requirements .......................................................... 11
6.3 Items not to be examined.........................................................................11 6.4 Alteration ..................................................................................................12 6.5 Restitutio in integrum ..............................................................................12
7 Entries in the Register............................................................................. 12
8 Date of Effect of Renewal or Expiry ....................................................... 13
9 Renewal of International Design Registrations Designating the European Union....................................................................................... 13
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1. Introduction
There are two ways of applying for a registered Community design: either (i) via a ‘direct filing’ at the Office or a national Office (Article 35 et seq. CDR) or (ii) via an international registration filed with the International Bureau of the World Intellectual Property Organisation and designating the European Union (Article 106a et seq. CDR).
The purpose of the Guidelines is to explain how, in practice, the requirements of the Community Design Regulation1 (CDR), the Community Design Implementing Regulation2 (CDIR) and the Fees Regulation3 (CDFR) are applied by the Office in respect of renewal procedures relating to ‘direct filings’ of Community designs (see paragraphs 3 to 8 below). The Guidelines are not intended to, and cannot, add to or subtract from the legal contents of the Regulations.
Paragraph 9 below makes reference to the relevant instruments applicable to the renewal of international registrations designating the European Union.
2. FRAUD WARNING
2.1. Private companies sending misleading invoices
The Office is aware that users in Europe are receiving an i ncreasing amount of unsolicited mail from companies requesting payment for trade mark and design services such as renewal.
A list of letters from firms or registers, which users have complained are misleading, is published on t he Office website. Please note that these services are not connected with any official trade mark or design registration services provided by IP Offices or other public bodies within the European Union such as OHIM.
If you receive a letter or invoice please check carefully what is being offered to you, and its source. Please note that the OHIM never sends invoices to users or letters requesting direct payment for services (see the Guidelines, Part A, General Rules, Section 3, Payment of fees, cost and charges).
1 Council Regulation (EC) No 6/2002 of 12 December 2001 on C ommunity Designs), as amended by Council Regulation No 1891/2006 of 18 December 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2001 on Community designs, as amended by Commission Regulation (EC) No 876/2007 on 24 July 2007 amending Regulation (EC) No 2245/2002 implementing Council Regulation (EC) No 6/2002 on Community designs following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs 3 Commission Regulation (EC) No 2246/2002 of 16 December 2002 on t he fees, as amended by Commission Regulation (EC) No 877/2007 of 24 July 2007 amending Regulation (EC) No 2246/2002 concerning the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs
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2.2. Renewal by unauthorised third persons
The Office is also aware that fraudsters have targeted the e-renewal module, applying for renewal without proprietors’ consent and thus blocking renewal via the module for persons legitimately authorised to renew in this way. The technical block is designed to prevent a renewal being paid for twice. If, when you file a request for e-renewal, you discover that the mark is ‘blocked’ because renewal has already been requested, please contact the Office.
2.3. Contact
If you have any doubts or detect any new cases, please check with your legal advisers or contact us by telephone on +34 965 139 100 or by e-mail at information@oami.europa.eu
3. Term of Protection
Articles 12, 38 CDR Article 10 CDIR
The term of protection of a registered Community design (RCD) is five years from the date of filing of the application (Article 12 CDR).
The date of filing of the application is determined according to Article 38 CDR a nd Article 10 CDIR (see the Guidelines concerning Applications for Registered Community Designs, Section 2, ‘Allocation of a filing date’).
Registration may be renewed for one or more periods of 5 years each, up to a total of 25 years from the date of filing.
4. Notification of Expiry of Registration
Article 13(2) CDR Article 21 CDIR
At least six months before the expiry of the registration, the Office will inform:
• the holder of the Community design and • any person having a registered right in respect of the Community design
that the registration is approaching expiry. Persons having a registered right include the holders of a registered licence, the proprietors of a registered right in rem, the creditors of a registered levy of execution or the authority competent to act on behalf of the proprietor in insolvency procedures.
Failure to give such information does not affect the expiry of the registration and does not involve the responsibility of the Office.
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5. Fees and Other Formal Requirements for the Request for Renewal
Article 22(8), Articles 65, 66, 67, Article 68(1) (e) CDIR
The general rules concerning communications to the Office apply, which means that the request for renewal may be submitted as follows:
• by electronic means available on the OHIM Website (e-renewal). Entering the name and surname in the appropriate place on the electronic form is deemed to be a signature. Using e-renewal offers advantages such as the receipt of immediate electronic confirmation of the renewal request automatically or the use of the renewal manager feature to complete the form quickly for as many registered Community designs as needed.
• by transmitting a signed original form by fax, mail, or by any other means. A standard form is available on t he OHIM website. Forms have to be s igned but annexes need not be.
It is strongly recommended to renew Community design registrations by electronic means (‘e-renewal’). The process of electronic renewal automatically checks and validates the requirements laid down in the CDIR.
A single application for renewal may be submitted for two or more designs, whether or not part of the same multiple registration, upon payment of the required fees for each of the designs, provided that the Community design holders or the representatives are the same in each case.
For Fees see paragraph 5.4, for Compliance with formal requirements see paragraph 6.2.2.
5.1 Persons who may submit a request for renewal
Article 13(1) CDR
Requests for renewal may be submitted by:
• the registered proprietor of a Community design; • the successor in title where a Community design has been transferred, with effect
from when the request for registration of the transfer was received by the Office; • a person authorised by the proprietor of a Community design to do so. Such a
person may, for instance, be a registered licensee, a non-registered licensee or any other person who has obtained the proprietor’s authorisation to renew the Community design;
• a representative acting on behalf of any of the above persons.
Persons obliged to be represented before the Office pursuant to Article 77(2) CDR can submit a request for renewal directly.
When the renewal request is submitted by a per son other than the registered proprietor, an authorisation will have to exist in its favour; however, it does not need to be filed with the Office unless the Office requests it. For example, if the Office receives
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fees from two different sources, the owner will be contacted in order to know which person is authorised to file the renewal request. Where no reply is received from the owner, the Office will validate the payment that reached the Office first (see, by analogy, judgment of 12/05/2009, T-410/07, ‘Jurado’, paras 16-24).
5.2 Content of the request for renewal
Article 22(1) CDIR
A request for renewal of registration must contain the following:
• The name of the person requesting renewal (that is, the Community design proprietor or an authorised person or representative; see paragraph 3.1). If the Office has allocated an ID number to the applicant for renewal, it is sufficient to indicate this number.
• The registration number of the registered Community design. This number is always composed of a nine-digit root, followed by a four-digit ending (e.g. XXXXXXXXX-YYYY).
• In the case of a multiple registration, an indication that renewal is requested for all the designs covered by the multiple registration or, if the renewal is not requested for all the designs, an indication of those for which it is requested.
Where the Community design holder has appointed a representative, the name of the representative should be m entioned. If the representative is already on record, the indication of their ID number is sufficient. If a new representative is appointed in the request for renewal, their name and a ddress must be given in accordance with Article 1(1)(e) CDIR
Payment alone can constitute a v alid request for renewal providing such payment timely reaches the Office and contains the name of the payer, the registration number of the Community design and the indication ‘renew’. In such circumstances no further formalities need be complied with (see The Guidelines Concerning Proceedings Before The Office for Harmonization In The Internal Market (Trade Marks And Designs) Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).
5.3 Languages
Article 80(b) CDIR
The request for renewal may be filed in any of the five languages of the Office. This language becomes the language of the renewal proceedings. However, when the request for renewal is filed by using the form provided by the Office pursuant to Article 68 CDIR, such a form may be used in any of the official languages of the Community, provided that the form is completed in one o f the languages of the Office, as far as textual elements are concerned.
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5.4 Fees
Article 13(3) CDR Article 22(2) (a), (b) CDIR Article 7(1) CDFR Annex to the CDFR, points 11 and 12
The fees payable for the renewal of a Community design consist of:
• a renewal fee, which, where several designs are covered by a multiple registration, is proportionate to the number of designs covered by the renewal;
• any additional fee applicable for late payment of the renewal fee or late submission of the request for renewal.
The amount of the renewal fee, per design, whether or not included in a m ultiple registration, is as follows:
• for the first period of renewal: EUR 90 • for the second period of renewal: EUR 120 • for the third period of renewal: EUR 150 • for the fourth period of renewal: EUR 180.
The fee must be paid within a period of six months ending on the last day of the month in which protection ends (see paragraph 5.5 below).
The fee may be paid within a further period of six months following the last day of the month in which protection ends, provided that an additional fee of 25% of the total renewal fee is paid (see paragraph 5.5.2 below).
When the payment is made by transfer or payment to an Office bank account, the date on which payment is deemed to have been made is the date on which the amount is credited to the Office’s bank account.
5.5 Time limits
Article 13 CDR Articles 22(2), 58(1) CDIR
5.5.1. Six months period for renewal before expiry (basic period)
The request for renewal and the renewal fee must be submitted within a period of six months ending on t he last day of the month in which protection ends (hereinafter referred to as ‘the basic period’).
If this time limit expires on a day on which the Office is not open for receipt of documents or on which ordinary mail is not delivered in Alicante, it will extend until the first day thereafter on which the Office is open for receipt of documents and on which ordinary mail is delivered. Other exceptions are provided for at Article 58(2) and (4) CDIR. For example, where the Community design has a filing date of 01/04/2013, the last day of the month in which protection ends will be 30/04/2018. Therefore, a request for
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renewal must be introduced and the renewal fee paid between 01/11/2017 and 30/04/2018 or, where this is a Saturday, Sunday or other day on which the Office is closed or does not receive ordinary mail, the first following working day on which the Office is open to the public and does receive ordinary mail.
5.5.2 Six months grace period following expiry (grace period)
Where the relevant time limit is not met, the request for renewal may still be submitted and the renewal fee may still be paid within a further period (hereinafter the ‘grace period’) of six months following the last day of the month in which the basic period ends, provided that an additional fee of 25% of the total renewal fee is paid within the grace period (see Article 13.3 CDR). Thus, renewal will only be successfully effected if payment of all fees (renewal fees and addi tional fees for late payment, where applicable) reaches the Office within the grace period.
In the above example, the grace period during which a request for renewal may still be introduced upon payment of the renewal fee plus the additional fee is counted from the day after 30/04/2018, namely from 01/05/2018, and end s on 31 /10/2018 or, if 31/10/2018 is a Saturday, Sunday or other day on which the Office is closed or does not receive ordinary mail, the first following working day on which the Office is open to the public and does receive ordinary mail. This applies even if, in the above example, 30/04/2018 was a Saturday or Sunday; the rule that a time limit to be observed vis-à- vis the Office is extended until the next working day applies only once and to the end of the first period, not to the starting date of the grace period.
Fees which are paid before the start of the first six-month period will not, in principle, be taken into consideration and will be refunded.
5.6 Means of payment
Article 5 CDFR
The admissible means of payment are bank transfers, credit cards (only if renewal is applied for electronically via the e-renewal module) and depos its in current accounts held with the Office. Payment cannot be made by cheque. Fees and charges must be paid in euros.
Where the Community design proprietor has a current account at the Office, the fee will be debited automatically from the account once a request for renewal is filed. Unless different instructions are given, the renewal fee will be debited on the last day of the six-month time limit provided for in Article 13(3) CDR, i.e. on the last day of the month in which protection ends.
If a request for renewal is filed late (see paragraph 5.5.2 above), the debit will take place, unless different instructions are given, with effect from the day on which the belated request was filed, and will be subject to a surcharge.
Where the request is submitted by a professional representative within the meaning of Article 78 CDR, who represents the Community design proprietor, and t he
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representative has a current account before the Office, the renewal fee will be debited from the representative’s current account.
Payment may also be made by the other persons identified in paragraph 5.1 above.
Payment by debiting a current account held by a third party requires explicit authorisation from the holder of the current account that the account can be debited for the fee in question. In such cases, the Office will check if authorisation has been given. If none has been given, a letter will be sent to the renewal applicant asking them to submit the authorisation to debit the third party account. In such cases, payment is considered to be made on the date the Office receives the authorisation.
Where the fees (renewal fees and, where applicable, additional fee for late payment) have been paid, but the registered Community design is not renewed (i.e. where the fee has been paid only after expiry of the grace period, or where the fee paid amounts to less than the basic fee plus the fee for late payment/late submission of the request for renewal, or where certain other deficiencies have not been remedied; see paragraph 6.2.2 below), the fees in question will be refunded.
6 Procedure before the Office
6.1 Competence
Article 104 CDR
The Operations Support Department is responsible for treating renewal requests and entering them in the Register.
6.2 Examination of formal requirements
Examination of a request for renewal is limited to formalities as follows.
6.2.1 Observance of time limits
(a) Before expiry of the basic period
Article 13 CDR Article 22(3) CDIR Article 5, Article 6(1) CDFR
Where the request for renewal is filed and the renewal fee paid within the basic period, the Office will record the renewal, provided the other conditions laid down in the CDR and CDIR are fulfilled.
Where no request has been filed before the basic period expires, but the Office receives a payment of the renewal fee that contains the minimum indications (name of the person requesting the renewal and t he registration number of the renewed
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Community design(s)), this will constitute a valid request and no further formalities will need to be complied with.
However, where no request for renewal has been filed but a renewal fee has been paid that does not contain the minimum indications (name of the person requesting the renewal and the registration number of the renewed Community design(s)), the Office will invite the Community design proprietor to submit a request for renewal and pay , where applicable, the additional fee for late submission of the request for renewal. A letter will be sent out as early as possible after receipt of the fee, so as to enable the request to be filed before the additional fee becomes due.
Where a request has been submitted within the basic period, but the renewal fee has not been paid or has not been paid in full, the Office will invite the person requesting renewal to pay the renewal fee or the remaining part thereof along with the additional fee for late payment.
If the request for renewal is filed by a per son authorised by the proprietor of the Community design, the proprietor of the Community design will receive a copy of the notification.
(b) Before expiry of the grace period
Article 13(3) CDR Article 22(4) CDIR
Where a r equest has been submitted within the additional grace period, but the renewal fee has not been paid or has not been paid in full, the Office will invite the person requesting renewal to pay the renewal fee or the remaining part thereof along with the additional fee for late payment.
Renewal will be effected only if payment of all fees (renewal fees and additional fee for late payment) is made or considered to be made before expiry of the l grace period (see paragraphs 3.5 and 3.6 above).
(c) Situation where the proprietor or representative holds a current account
The Office will not debit a c urrent account unless there is an ex press request for renewal. It will debit the account of the person performing the action (the Community design proprietor, the representative thereof or a third person).
Where the request is filed within the basic period, the Office will debit the renewal fees without any surcharge.
Where the request is filed within the additional period, the Office will debit the renewal fee along with a 25% surcharge (see paragraph 3.4).
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6.2.2 Compliance with formal requirements
Article 22, and Article 40 CDIR
Where a request for renewal does not comply with formal requirements (see paragraph 5 Fees and O ther Formal Requirements for the Request for Renewal) but such deficiencies can be remedied, the Office will invite the renewal applicant to remedy the deficiencies within a t ime limit of two months. This time limit applies even if the additional period has already expired.
If the request for renewal is filed by a per son authorised by the proprietor of the Community design, the proprietor of the Community design will receive a copy of the notification.
Where a request for renewal has been submitted by two different persons claiming to be authorised by the proprietor of the Community design, the Office will seek clarification on who is the authorised person by contacting the proprietor directly.
Where the deficiencies are not remedied before the relevant time limit expires, the Office will proceed as follows:
• If the deficiency lies in the fact that there is no indication of the designs of a multiple registration to be renewed, and the fees paid are insufficient to cover all the designs for which renewal is requested, the Office will establish which designs the amount paid is intended to cover. In the absence of any other criteria for determining which designs are intended to be covered, the Office will take the designs in the numerical order in which they are represented. The Office will check that the registration has expired for all designs for which the renewal fees have not been paid in part or in full.
• In the case of other deficiencies, the Office will check that the registration has expired and issue a notification of loss of rights to the proprietor or their representative or, where applicable, to the person requesting renewal and any person recorded in the Register as having rights in the Community design(s).
The proprietor may apply for a decision on the matter under Article 40(2) CDIR within two months.
Where the renewal fees have been paid but the registration is not renewed, those fees will be refunded.
6.3 Items not to be examined
No examination will be carried out on renewal in respect of the registrability of the design or correct classification of the design’s products. Nor will a r egistration be reclassified that was registered in accordance with an edi tion of the Locarno Classification no l onger in force at the time of renewal. Such reclassification will not even be available at the proprietor’s request.
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6.4 Alteration
Article 12(2) CDIR
As a matter of principle, since the representation of a Community design may not be altered after the filing of the application, the submission of additional views or withdrawal of some views at the time of renewal is not accepted.
Other changes that do not alter the representation of the Community design itself (changes of name, address, etc.), and which the owner wishes to have recorded in the Register when the registration is renewed, must be c ommunicated separately to the Office according to the applicable procedures (see the Guidelines concerning Applications for Registered Community Designs, Section 10). They will be included in the data recorded at renewal only if they are recorded in the Register no later than the date of expiry of the Community design registration.
6.5 Restitutio in integrum
Article 67 CDR Article 15 of the Annex to the CDFR
A party to proceedings before the Office may be reinstated in their rights (restitutio in integrum) if they were unable to observe a time limit vis-à-vis the Office in spite of all due care having been taken as required by the circumstances, provided that the failure to observe the time limit had the direct consequence, by virtue of the provisions of the Regulations, of causing the loss of a right or means of redress.
Restitutio in integrum is only available upon application to the Office and is subject to a fee (EUR 200).
The application must be made within two months from removal of the cause of non- compliance but in any event not later than one year after expiry of the unobserved time limit. The act omitted must be completed within the same period.
In the case of failure to submit a request for renewal or to pay the renewal fee, the time limit of one year starts on the day on which the protection ends (basic period), not on the date of expiry of the further period of six months (additional period).
7 Entries in the Register
Article 13(4) CDR Article 40, Article 22(6), Article 69(3)(m), Article 69(5), Article 71 CDIR
Where the request for renewal complies with all the requirements, the renewal will be entered in the Register.
The Office will notify the Community design proprietor or their representative of the renewal of the design, its entry in the Register and the date from which renewal takes effect.
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The Office, where it has determined that the registration has expired, will inform the Community design proprietor or their representative and any person recorded in the Register as having rights in the Community design of the expiry of the registration and its cancellation from the Register.
The proprietor may apply for a decision on the matter under Article 40(2) CDIR within two months.
8 Date of Effect of Renewal or Expiry
Article 13(4) CDR Article 22(6), Article 56 CDIR
Renewal will take effect from the day following that on which the existing registration expires.
Where the Community design has expired and i s cancelled from the Register, the cancellation will take effect from the day following that on which the existing registration expired.
9 Renewal of International Design Registrations Designating the European Union
Article 17 of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the ‘Geneva Act’) Article 12 CDR
International registrations designating the European Union are protected for an initial term of 5 years from the date of the international registration, and may be renewed for additional terms of 5 years, up to a total term of 25 years from the date of registration.
Pursuant to Article 11a of the Annex to the CDFR, the individual renewal fees for an international registration designating the European Union, per design, are as follows:
• for the first period of renewal: EUR 31 • for the second period of renewal: EUR 31 • for the third period of renewal: EUR 31 • for the fourth period of renewal: EUR 31.
International registrations must be renewed directly at the International Bureau of WIPO in compliance with Article 17 of the Geneva Act (Article 22a CDIR). The Office will not deal with renewal requests or payments of renewal fees in respect of international registrations.
The procedure for the renewal of international marks is managed entirely by the International Bureau, which sends out the notice for renewal, receives the renewal fees and records the renewal in the International Register. When international registrations designating the EU are renewed, the International Bureau also notifies the Office.
DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS Y
LOS DIBUJOS Y MODELOS COMUNITARIOS REGISTRADOS
NOTA EDITORIAL E INTRODUCCIÓN GENERAL
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Índice
1 Objeto ......................................................................................................... 3
2 Objetivo de las directrices........................................................................ 3
3 Proceso de revisión de las directrices .................................................... 4
4 Estructura de las directrices .................................................................... 5
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1 Objeto
El Reglamento (CE) nº 40/94 del Consejo, de 20 de diciembre de 1993, en su versión modificada y codificada por el Reglamento (CE) nº 207/2009 del Consejo, de 26 de febrero de 2009, (RMC), estableció, paralelamente a los sistemas nacionales, un sistema comunitario de marca destinado a hacer desaparecer uno de los principales obstáculos con los que tropieza el desarrollo del mercado único europeo. El Reglamento (CE) nº 6/02 del Consejo, de 12 d e diciembre de 2001, (RDC), hizo lo mismo con los dibujos y modelos comunitarios. Hasta entonces el derecho que reglamentaba el registro y el uso de las marcas o dibujos y modelos había sido únicamente nacional y hacía difícil el uso de la misma marca o dibujo y modelo en toda la Unión Europea.
La Oficina de Armonización del Mercado Interior (Marcas, Dibujos y Modelos) (la OAMI o la Oficina), con sede en A licante, es la encargada del registro de las marcas comunitarias (MC) y de los dibujos y modelos comunitarios registrados (DMC). Estos registros confieren a las marcas, dibujos y modelos una protección uniforme en toda la Unión Europea.
La Oficina aplica los procedimientos de registro (incluido el examen de las solicitudes de motivos de denegación absolutos y, cuando se haya presentado un escrito de oposición contra una s olicitud de marca comunitaria, los motivos de denegación relativos), mantiene los registros públicos de estos derechos y resuelve sobre las solicitudes de declaración de nulidad de los mismos después de s u registro. Las directrices de la Oficina abarcan la totalidad de las prácticas en todas estas áreas.
2 Objetivo de las directrices
El objetivo de l as directrices sobre la marca comunitaria y de las directrices sobre dibujos y modelos comunitarios consiste en mejorar la coherencia, la previsibilidad y la calidad de las decisiones de la Oficina. Las directrices están diseñadas para aunar de forma sistemática los principios de l as prácticas derivadas de l a jurisprudencia del Tribunal de Justicia de la Unión Europea, de la jurisprudencia de las Salas de Recurso de la Oficina, de las resoluciones del Departamento de Operaciones de la Oficina y del resultado de los Programas de Convergencia de la Oficina con las oficinas de PI de la Unión Europea. Ofrecen una fuente única de referencia sobre las prácticas de la Oficina con respecto a las marcas comunitarias y los dibujos y modelos comunitarios y se han redactado con criterio pragmático para que sirvan al personal de la Oficina encargado de los diferentes procedimientos y a los usuarios de los servicios de la Oficina.
Las directrices se han formulado con la intención de reflejar las prácticas de la Oficina en las situaciones más frecuentes. Solo contienen instrucciones generales que se deben adaptar a las particularidades de cada caso. Así pues, no son textos de carácter legislativo y, por tanto, no son vinculantes. En caso necesario, las partes, igual que la Oficina, deben remitirse al RMC, al RCD y a sus respectivos Reglamentos de ejecución, al Reglamento de tasas, al Reglamento (CE) nº 216/96 de la Comisión, de 5 de febrero de 1996, por el que se establece el reglamento de p rocedimiento de l as salas de recurso y, por último, a la interpretación que de ellos han dado las salas de recurso y el Tribunal de Justicia de la Unión Europea, incluido el Tribunal General.
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Puesto que la jurisprudencia está en constante evolución, las directrices deberán evolucionar también. Se deberán adaptar anualmente en función de la evolución de la práctica de l a Oficina por medio de un ej ercicio continuo de r evisión (véase infra el apartado 3).
3 Proceso de revisión de las directrices
En tanto que fuente única de referencia sobre las prácticas de la Oficina relativas a las marcas comunitarias y a los dibujos y modelos comunitarios, las directrices están disponibles en t odas las lenguas oficiales de l a Unión Europea. Se revisan en los Círculos de conocimiento de los distintos departamentos de la Oficina mediante un proceso cíclico y abierto: «cíclico», porque las prácticas se actualizan anualmente examinando la jurisprudencia del año anterior, teniendo en cuenta las necesidades operativas y el resultado de l as iniciativas de c onvergencia, y «abierto», porque las partes interesadas externas participan en la definición de las prácticas.
La participación de las oficinas nacionales y de las asociaciones de usuarios no solo beneficia a la calidad de las directrices, sino que también se espera que facilite la convergencia, es decir, el proceso de exploración de l os aspectos comunes en aquellos temas en l os que divergen las prácticas. Gracias a l a publicación de l as directrices en todas las lenguas de la Unión Europea, mejorará el conocimiento sobre las prácticas de la Oficina entre los Estados miembros y los usuarios y se facilitará la identificación de las diferencias en cuanto a las prácticas.
El trabajo anual se divide en dos «paquetes de trabajo»: el Paquete de trabajo 1 (PT1) se desarrolla en un pe ríodo de doc e meses cada año, de enero a di ciembre, y el Paquete de trabajo 2 (PT2) en un período de doce meses cada año, de julio a junio.
Este proceso consta de las siguientes fases:
a. Iniciación de actualización por las partes interesadas
Siendo conocedores de los planes de revisión de la Oficina, en particular qué se va a revisar y cuándo, se invita a las oficinas nacionales y a las asociaciones de usuarios a presentar sus comentarios antes de enero (para el PT1) y antes de julio (para el PT2). Los comentarios que no se reciban a tiempo se tendrán en cuenta durante el siguiente ciclo o se podrán presentar durante la fase c.
b. Preparación del borrador de las directrices por parte de la Oficina
Durante esta fase, los Círculos de conocimiento de la Oficina crean el borrador de las directrices. El proceso comienza cada año en enero (para el PT1) y en julio (para el PT2). Se tienen en cuenta los comentarios e información presentados anteriormente por los usuarios. Deben completarse los tres pasos del proceso- análisis, redacción y debate- a su debido tiempo. Para el análisis, los Círculos de conocimiento extraen tendencias de l a jurisprudencia del año anterior, estudian las conclusiones de los proyectos de convergencia y tienen en cuenta los comentarios de los usuarios de la Oficina, así como de las partes interesadas internas. En el siguiente paso, los Círculos de conocimiento redactan las directrices. Por último, las diferentes unidades y departamentos de la Oficina debaten sobre los textos.
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c. Aprobación de las directrices
En esta última fase, el borrador de las directrices se envía para su traducción a las lenguas de la Oficina. Los textos y las traducciones se envían a las asociaciones de usuarios y a las oficinas de PI de la Unión Europea con el objeto de recibir comentarios antes de l a siguiente reunión del Consejo de Administración (CA) de la Oficina. Después de consultar al CA, de acuerdo con el artículo 126, apartado 4, del RMC y el artículo 101, letra b), del RCD, el Presidente aprueba la actualización de las directrices. Se pretende que el texto oficial, compuesto por las versiones en l as cinco lenguas de la Oficina, se publique en enero (PT1) y en julio (PT2) de cada año. En caso de discrepancias entre las versiones de las diferentes lenguas, prevalece la versión de la lengua de redacción (inglés). Una vez aprobadas, las directrices se traducirán al resto de lenguas oficiales de la Unión Europea por cortesía y transparencia. Estas traducciones adicionales se publicarán en el sitio web de la Oficina. Las partes interesadas externas, ya sean oficinas nacionales o as ociaciones de usuarios, podrán realizar comentarios sobre su calidad; las modificaciones lingüísticas efectuadas como resultado de es tos comentarios informales se incorporarán a los textos sin llevar a cabo ningún procedimiento formal.
d. Procedimiento por la vía rápida
Cuando un evento externo importante tiene un efecto inmediato sobre las prácticas de la Oficina (por ejemplo, algunas sentencias del Tribunal de Justicia), la Oficina puede modificar las directrices mediante un procedimiento por la vía rápida fuera de los plazos normales indicados anteriormente. Sin embargo, este procedimiento es excepcional. Como el proceso es cíclico, estos cambios estarán siempre abiertos a comentarios y a revisiones en el siguiente ciclo.
4 Estructura de las directrices
A continuación se indican los temas tratados en el PT1 y en el PT2, respectivamente. En circunstancias excepcionales, algunos elementos de las prácticas pueden cambiar de un P T al otro. En caso de que suceda tal cambio, se comunicará a las partes interesadas.
MARCA COMUNITARIA:
PT1 PT2
Parte A: Disposiciones generales Parte A: Disposiciones generales
Sección 3, Pago de las tasas, costas y gastos Sección 1, Medios de comunicación, plazos
Sección 5, Representación profesional Sección 2, Principios generales que han de r espetarse en el procedimiento
Sección 4, Lengua de procedimiento
Sección 6, Revocación de resoluciones, anulación de inscripciones en el registro y corrección de errores
Sección 7, Revisión
Sección 8, Restitutio in Integrum
Sección 9, Ampliación
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Parte B: Examen Parte B: Examen
Sección 2, Formalidades Sección 1, Procedimientos
Sección 4, Motivos de denegac ión absolutos artículo 7, apartado 1, letra a)
Sección 3, Clasificación
Sección 4, Motivos de denegac ión absolutos artículo 7, apartado 1, letra b)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1, letra f)
Sección 4, Motivos de denegac ión absolutos artículo 7, apartado 1, letra c)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1, letra g)
Sección 4, Motivos de denegac ión absolutos artículo 7, apartado 1, letra d)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1), letras h) e i)
Sección 4, Motivos de denegac ión absolutos artículo 7, apartado 1, letra e)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1, letras j) y k)
Sección 4, Motivos de denegac ión absolutos artículo 7, apartado 3
Sección 4, Marcas colectivas
Parte C: Oposición Parte C: Oposición
Sección 0, Introducción
Sección 1, Aspectos procesales
Sección 3, Solicitud presentada por el agente sin el consentimiento del titular de l a marca (Artículo 8, apartado 3, del RMC)
Sección 2, Doble identidad y riesgo de confusión.
Capítulo 1, Principios generales y metodología
Sección 4, Derechos contemplados en el artículo 8, apartado 4, del RMC
Sección 5, Marcas renombradas artículo 8, apartado 5, del RMC
Capítulo 2, Comparación de productos y servicios
Capítulo 3, Comparación de los signos
Capítulo 4, Carácter distintivo
Capítulo 5, Carácter dominante
Capítulo 6, Público destinatario y grado de atención
Capítulo 7, Otros factores
Capítulo 8, Apreciación global
Sección 6, Prueba del uso
Parte D: Anulación Parte D: Anulación
Sección 1, Procedimientos de anulación Sección 2, Normas sustantivas
Parte E: Operaciones de registro Parte E: Operaciones de registro
Sección 2, Transformación Sección 1, Cambios en un registro
Sección 4, Renovación Sección 3, La marca comunitaria como objeto de propiedad
Sección 5, Consulta pública Capítulo 1, Cesión
Sección 6, Otras inscripciones en el Registro Capítulo 2, Licencias
Capítulo 1, Reconvención Capítulo 3, Derechos reales
Capítulo 4, Ejecución forzosa
Capítulo 5, Procedimientos de i nsolvencia o
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similares
Parte M: Marcas internacionales
DIBUJOS Y MODELOS COMUNITARIOS REGISTRADOS:
PT1 PT2
Examen de Solicitudes de Nulidad de Dibujos y Modelos Examen de l as solicitudes de Dibujos y Modelos Comunitarios Registrados
Renovación de Dibujos y Modelos Comunitarios Registrados
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE A
DISPOSICIONES GENERALES
SECCIÓN 1
MEDIOS DE COMUNICACIÓN, PLAZOS
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Índice
1 Introducción............................................................................................... 3
2 Procedimientos de presentación y de comunicación con la Oficina.... 3
3 Notificación y transmisión de los documentos ...................................... 4 3.1 Transmisiones hacia la Oficina .................................................................4
3.1.1 Mediante fax ................................................................................................... 4 3.1.2 Por medios electrónicos ................................................................................. 4 3.1.3 Por vía postal, servicio de mensajería o presentación directa....................... 5
3.2 Notificación por la Oficina .........................................................................5 3.2.1 Mediante fax ................................................................................................... 6 3.2.2 Mediante correo ordinario............................................................................... 6 3.2.3 Mediante depósito en un buzón ..................................................................... 6 3.2.4 Mediante entrega directa................................................................................ 6 3.2.5 A través del sitio web oficial de la Oficina ...................................................... 6 3.2.6 Mediante notificación pública ......................................................................... 7
3.3 Destinatarios...............................................................................................7
4 Plazos ......................................................................................................... 7 4.1 Plazos fijados por la Oficina......................................................................8
4.1.1 Duración de los plazos fijados por la Oficina ................................................. 8 4.1.2 Vencimiento de los plazos.............................................................................. 8 4.1.3 Prórroga de los plazos.................................................................................... 9 4.1.4 Prosecución del procedimiento .................................................................... 10 4.1.5 Restitutio in integrum.................................................................................... 12
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1 Introducción
Esta parte de las Directrices comprende todas las disposiciones comunes a todos los procedimientos ante la Oficina en materia de marcas comunitarias, excepto los recursos.
En aras de la eficiencia y para evitar que las partes se vean sometidas a prácticas distintas, la Oficina aplicará las reglas de procedimiento de forma coherente.
Los procedimientos ante la Oficina se pueden clasificar en dos grandes categorías: los procedimientos ex parte, que afectan a una pa rte, y los procedimientos inter partes, que enfrentan al menos a dos partes.
La primera categoría agrupa especialmente los procedimientos de solicitud de registro o de renovación de una marca comunitaria, las inscripciones en el Registro relativas a las cesiones, las licencias, los procedimientos de ejecución forzosa o de quiebra y los procedimientos relacionados con la antigüedad y la transformación.
La segunda categoría comprende los procedimientos de oposición y de anulación (caducidad o declaración de nulidad de una marca comunitaria registrada).
2 Procedimientos de presentación y de comunicación con la Oficina
Artículo 25 del RMC Regla 79 del REMC
La solicitud de marca comunitaria (MC) podrá presentarse directamente en la Oficina o bien a través de la oficina nacional de un Estado miembro de la Unión Europea, incluida la Oficina de Marcas del Benelux.
Los demás documentos sólo pueden presentarse directamente en la Oficina.
Todos los documentos podrán enviarse a l a Oficina mediante correo ordinario o servicios privados de mensajería, entregarse en persona en la recepción de la Oficina (Avenida de Europa, 4, 03008 Alicante) durante el horario de apertura de la misma (de lunes a v iernes, 8:30 – 13:30 y 15:00 – 17:00), o por fax. Las solicitudes de m arcas comunitarias, las oposiciones y las renovaciones también se podrán presentar a través de la página web oficial de l a Oficina. Como parte de su estrategia de comercio electrónico, la Oficina facilitará progresivamente la posibilidad de utilizar los medios de comunicación electrónica para presentar otros documentos en todo tipo de procedimiento.
La Oficina ha puesto a disposición pública varios impresos, en todas las lenguas oficiales de la UE. Su uso no es obligatorio, con una úni ca excepción, pero sí recomendado. La excepción citada se refiere a la presentación de una solicitud de registro internacional o de una designación posterior conforme al Protocolo de Madrid, que han de realizarse obligatoriamente con el impreso MM 2 o M M 4 de la OMPI o utilizando la versión EM 2 o E M 4 de l a OAMI. Todos estos impresos pueden descargarse en la página web oficial de la OAMI.
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3 Notificación y transmisión de los documentos
El REMC distingue entre los documentos procedentes de las partes y destinados a la Oficina y las notificaciones de los documentos emitidos por la Oficina.
3.1 Transmisiones hacia la Oficina
Regla 79, regla 79bis, regla 80 y regla 82 del REMC Decisión nº EX-13-2 del Presidente de la Oficina
3.1.1 Mediante fax
Cuando se comunique un documento a la Oficina mediante fax, el original ha de i r firmado de forma que en el fax recibido por la Oficina aparezca la representación gráfica de l a firma. Si un documento transmitido a l a Oficina no v a firmado, ésta invitará a la parte implicada a subsanar esa irregularidad en un plazo determinado. Si el documento no se presenta firmado dentro de ese plazo, se declarará inadmisible la solicitud correspondiente, o no se tendrá en cuenta el documento, según el caso.
No obstante, si el fax se ha elaborado de forma electrónica en un ordenador (en adelante «fax electrónico»), se considerará que la mención del nombre del remitente equivale a su firma.
No será necesaria la confirmación posterior del fax por correo electrónico. La Oficina no acusará recibo del fax salvo en los casos expresamente establecidos por el REMC, concretamente cuando se presenta una solicitud de MC. Así pues, la Oficina no acusará recibo de un fax, pero si la comunicación es incompleta o ilegible o la Oficina tiene dudas razonables sobre la precisión de la transmisión, informará de ello al remitente y le invitará a que repita su comunicación en un plazo que ella establezca. Si la segunda transmisión está completa, se considerará que la fecha de recepción es la de la primera transmisión, excepto a los efectos de establecer la fecha de presentación de una solicitud de marca comunitaria. De lo contrario, la Oficina no tendrá en cuenta la transmisión, o considerará sólo las partes recibidas y/o legibles (resolución de 4/7/2012, R 2305/2010-4, «Houbigant/PARFUMS HOUBIGANT PARIS et al»).
Para más información respecto a l a fecha de presentación, véanse las Directrices, Parte B, Examen, Sección 2, Formalidades.
En el caso de envíos de doc umentos en color, será suficiente que se envíe el documento por fax y se presente el original en color en un plazo de un mes a partir de la fecha de env ío del fax, salvo disposición en contrario del RMC. En este caso, se considerará que la fecha de recepción del original en color es la fecha de recepción del fax por la Oficina, también a los efectos de establecer la fecha de presentación de una solicitud de marca comunitaria.
3.1.2 Por medios electrónicos
De conformidad con lo dispuesto en la regla 82 del REMC, si se presenta una solicitud de marca comunitaria mediante el sistema e-filing, o se envía una comunicación a la
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Oficina por elementos electrónicos, se considerará que la mención del nombre del remitente equivale a su firma.
3.1.3 Por vía postal, servicio de mensajería o presentación directa
Los documentos enviados por correo deberán ir dirigidos a la Oficina, a la dirección indicada en las notas explicativas que acompañan a los impresos facilitados por la Oficina.
Los documentos presentados por correo, servicio privado de mensajería o de forma directa han de estar firmados. Si un documento transmitido a la Oficina no va firmado, ésta invitará a la parte implicada a subsanar dicha irregularidad en un plazo determinado. Si el documento no se presenta firmado dentro de ese plazo, se declarará inadmisible la solicitud correspondiente, o no se tendrá en cuenta el documento, según el caso.
3.2 Notificación por la Oficina
Reglas 61-69 del REMC Decisión nº EX-97-1 del Presidente de la Oficina Decisión nº EX-5-6 del Presidente de la Oficina
Las comunicaciones escritas de l a Oficina con la parte o l as partes en u n procedimiento serán «notificadas». La «Notificación» se refiere a la forma en que el documento es enviado al destinatario, no a una formalidad de pr ocedimiento («notificación legal»). Notificación quiere decir que el documento ha e ntrado en l a esfera del destinatario, independientemente de si éste ha tomado conocimiento del mismo. La forma y la fecha pertinente de no tificación dependerán de las distintas modalidades de comunicación.
Excepto en el caso de notificación pública, y en función del hecho de que algunas modalidades de notificación requieren el consentimiento previo de la parte, la Oficina podrá elegir libremente el medio de notificación (apartado 3 de la regla 61 del REMC).
En la práctica, siempre que sea posible y que el número de páginas que se han de enviar no sea excesivamente elevado, la Oficina optará siempre por la notificación por medios electrónicos, si están disponibles.
Si se sigue el procedimiento adecuado de notificación, el documento se considerará notificado a menos que el destinatario demuestre que no ha recibido el documento, o que lo ha recibido con posterioridad. Por el contrario, en el caso de que no se siga el procedimiento adecuado de no tificación, el documento se considerará notificado a pesar de todo si la Oficina puede demostrar que el destinatario recibió realmente el documento.
La Oficina notificará el original firmado, por correo, o bien una copia del documento, que no p recisa firma, puesto que el Presidente de l a Oficina ha hecho uso en l a Decisión nº EX-97-1 de la facultad establecida en el apartado 2 de la regla 55 del REMC, según la cual basta indicar el (los) nombre(s) del (de los) funcionario(s).
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3.2.1 Mediante fax
La Oficina puede hacer uso de este medio de notificación si la parte ha indicado un número de fax. Podrán notificarse por este medio todos los documentos, y así se hará, incluidas las resoluciones. La Oficina conservará los registros de fax a fin de poder demostrar la hora y el contenido de la transmisión.
3.2.2 Mediante correo ordinario
Por lo que se refiere a notificación por vía postal, el tratamiento será diferente según la naturaleza del documento notificado.
Si el destinatario tiene su sede o domicilio en la UE o ha designado a un representante profesional (como establecen las Directrices, Parte A, Disposiciones Generales, Sección 5, Representatción profesional), las resoluciones sujetas a un plazo de recurso, así como las citaciones o cualquier otro documento que determine el Presidente de la Oficina se notificarán por carta certificada con acuse de recibo.
En el resto de los casos, es decir, cuando la dirección del destinatario no esté situada en la UE o el destinatario no haya designado a un representante profesional o para cualquier otro documento que hay a que notificar, la Oficina enviará los documentos por correo ordinario. La notificación se considerará hecha el décimo día a par tir del envío del documento por correo. El destinatario sólo podrá refutar esa presunción si aporta pruebas de que no ha recibido el documento, o de que lo ha recibido en una fecha posterior.
3.2.3 Mediante depósito en un buzón
En el caso de los destinatarios que hayan decidido mantener un buzón en la Oficina, la notificación también podrá realizarse mediante el depósito en di cho buzón del documento notificado. La Oficina registrará la fecha del depósito. Se considerará hecha la notificación cinco días después del depósito del documento.
3.2.4 Mediante entrega directa
La notificación también se podrá realizar mediante entrega directa del documento al destinatario, si se encuentra presente en la Oficina. Esta forma de notificación constituirá una ex cepción. Se conservará en el expediente una copia de di cho documento, con acuse de recibo fechado y firmado por el destinatario.
3.2.5 A través del sitio web oficial de la Oficina
Conforme a la Decisión nº EX-13-2 del Presidente de la Oficina de 26 de noviembre de 2013, también podrá enviarse la notificación a través del sitio web oficial de la Oficina, si el titular de la cuenta electrónica con la Oficina acepta este medio de notificación. La notificación consiste en poner el documento electrónico en el buzón de entrada del titular. Se considera hecha la notificación del documento cinco días después de su colocación en el buzón de en trada, independientemente de que el destinatario haya abierto y leído o no el documento. La fecha en la que se coloca el
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documento se mencionará en el buzón de entrada del titular y será registrada por la Oficina (resolución de 17/1/2011, R 0956/2010-4 «DURAMAXX/DURAMAX»).
3.2.6 Mediante notificación pública
La notificación pública se realizará cuando se desconozca la dirección del destinatario o cuando la notificación por vía postal sea devuelta a la Oficina después de al menos un intento.
Esto se refiere, en primer lugar, al correo devuelto a l a Oficina por el servicio de correos con la indicación «desconocido en l a dirección indicada» y al correo no reclamado por su destinatario.
Los anuncios se publicarán en el sitio web de la Oficina. Se considerará hecha la notificación un m es después del día en que el anuncio se haya hecho público en Internet.
3.3 Destinatarios
Regla 67 del REMC Artículo 92 y artículo 93 del RMC
Todas las notificaciones se harán al representante (sentencia de 12/7/2012, T-279/09, «100% Capri/CAPRI»), siempre que se haya nombrado debidamente un representante profesional. «Nombrado debidamente» significa que el representante entra dentro del grupo de personas facultadas para ejercer la representación y ha sido designado de forma apropiada, y que no existe ningún impedimento general (como la representación ilícita de am bas partes en un pr ocedimiento inter partes) para que dicha persona acepte la representación. No será preciso presentar un poder para ser receptor de las notificaciones de l a OAMI. Para más información, véanse las Directrices, Parte A, Disposiciones Generales, Sección 5, Representación profesional.
Toda notificación hecha al representante tendrá el mismo efecto que si fuera dirigida al representado. Del mismo modo, toda comunicación dirigida a la Oficina por un representante se considerará procedente de la persona representada.
4 Plazos
Reglas 70-72 del REMC
Los plazos ante la Oficina pueden dividirse en dos categorías:
• aquellos establecidos por el RMC o el REMC que, por tanto, son obligatorios;
• aquellos fijados por la Oficina que, por tanto, no son obligatorios y pueden prorrogarse en determinadas circunstancias.
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4.1 Plazos fijados por la Oficina
Los plazos son un instrumento esencial para la conducción ordenada y razonablemente rápida de los procedimientos. Además, los plazos constituyen una cuestión de orden público y su cumplimiento riguroso es necesario para garantizar la claridad y la seguridad jurídica.
Por lo que se refiere a las medidas que mitigan la aplicación rigurosa del principio del cumplimiento estricto de los plazos, el Reglamento prevé tres medios, en función de si el plazo está todavía en curso o ha expirado.
Si todavía existe un plazo en curso, la parte podrá solicitar una prórroga del mismo con arreglo a la regla 71, apartado 1 del REMC.
Si el plazo ha vencido, la parte que no ha cumplido el plazo todavía tiene dos posibles líneas de acción: solicitar la prosecución del procedimiento (con arreglo al artículo 82 del RMC), que sólo requiere cumplir determinados requisitos formales o solicitar la restitutio in integrum (con arreglo al artículo 81 del RMC), que exige que se cumplan requisitos formales y sustantivos (como mostrar toda la diligencia).
Se facilita información adicional en los apartados 4.1.4. y 4.1.5.
4.1.1 Duración de los plazos fijados por la Oficina
A excepción de los plazos expresamente establecidos en el RMC o en el REMC, los plazos concedidos por la Oficina, cuando la parte en cuestión tiene su domicilio, su sede o un establecimiento industrial dentro de la Unión Europea, no podrán ser inferiores a un mes ni superiores a seis. Si la parte afectada no tiene su domicilio, sede social o es tablecimiento industrial en l a Unión Europea, los plazos no podrán ser inferiores a do s meses ni superiores a seis. La práctica general es conceder dos meses.
Para más información, véanse las Directrices, Parte A, Disposiciones Generales, Sección 5, Representación profesional.
4.1.2 Vencimiento de los plazos
Cuando se establece un plazo en una not ificación de la Oficina, el «hecho pertinente» será la fecha en la que se notifica o se considerada notificado un documento, dependiendo de las normas que rigen las modalidades de notificación.
Cuando el plazo se exprese en meses, vencerá el día del mes posterior que corresponda que tenga el mismo número que el día en q ue ocurrió el «hecho pertinente».
Por lo tanto, si la comunicación de la Oficina establece un plazo de dos meses que se notifica por fax el 28 de junio, el plazo vencerá el 28 de agosto. No será relevante si el «hecho pertinente» tuvo lugar en un día hábil o festivo o domingo; sólo será relevante para el vencimiento del plazo.
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En caso de que el mes posterior correspondiente no tenga un día con el mismo número o de que el día en que ocurrió el hecho mencionado fuera el último del mes, el plazo vencerá el último día de ese mes. Un plazo de dos meses establecido en una notificación del 31 de julio vencerá, por lo tanto, el 30 de septiembre. De igual forma, un plazo de dos meses establecido en una notificación del 30 de junio vencerá el 31 de agosto.
Todo plazo se considerará vencido a las 24 horas del último día.
Todo plazo que vence en un día en que la Oficina no está abierta para la recepción de documentos o en que el correo ordinario no se distribuya en la localidad en que tiene su sede la Oficina, se prorrogará hasta el primer día hábil siguiente. En este caso se hace referencia a los sábados, domingos y días festivos. A ese respecto, el Presidente de la Oficina fijará los días en los que la Oficina está cerrada, antes del comienzo de cada año c ivil. Esta prórroga es automática pero se aplica sólo al final del plazo (resolución de 12/5/2011, R 0924/2010-1, «whisper power-WHISPER»).
En caso de interrupción general del servicio de distribución del correo en España, el plazo que venza en ese periodo se prorrogará hasta el primer día hábil siguiente al periodo de i nterrupción. Estos periodos serán determinados por el Presidente de l a Oficina y la prórroga se aplicará a todas las partes en el procedimiento.
En caso de que se produzcan acontecimientos excepcionales (huelga, catástrofe natural...) que provoquen una perturbación en el funcionamiento de la Oficina o un grave impedimento en sus comunicaciones con el exterior, se podrán prorrogar los plazos por un periodo a determinar por el Presidente de la Oficina.
4.1.3 Prórroga de los plazos
Podrá concederse una prórroga del plazo si la solicitud la realiza la parte afectada antes del vencimiento del plazo original.
En los procedimientos ex parte ante la Oficina, si el solicitante solicita la prórroga antes del vencimiento de un plazo, podrá concederse otro plazo para un período, en función de las circunstancias del caso, que no podrá superar los seis meses.
Cuando no se acepte la petición de pr órroga de un plazo antes del vencimiento del mismo, se le concederá a l a parte afectada al menos un dí a para cumplir el plazo, incluso si dicha petición de prórroga se realiza en el último día del plazo.
Respecto de las normas aplicables a la prórroga de los plazos en los procedimientos inter partes (es decir, cuando existen dos o más partes implicadas, como en el procedimiento de oposición, nulidad y/o caducidad), véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales.
Salvo disposición en c ontrario contenida en el Reglamento o en los párrafos específicos de las presentes Directrices, por regla general toda petición de prórroga que se reciba dentro de plazo se concederá siempre con independencia de la explicación que la parte que la solicita aporte. No obstante, se denegará toda solicitud posterior de prórroga del mismo plazo, salvo si la parte que la solicita explica y justifica debidamente las «circunstancias excepcionales» que evitan el cumplimiento del plazo original y la primera prórroga y el motivo por el que es necesaria la nueva prórroga.
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Las explicaciones generales, imprecisas o estándar no justificarán una segunda prórroga.
Las «circunstancias excepcionales» se refieren a los hechos que están más allá del control razonable de las partes.
La parte que solicita la prórroga debe explicar y justificar las circunstancias excepcionales que a) le impidieron realizar la acción necesaria durante los dos plazos anteriores y b) que todavía le impiden llevarla a cabo, por lo que necesita más tiempo.
Constituyen ejemplos de justificación admisible:
• «Estamos reuniendo pruebas procedentes de varios Estados miembros/todos nuestros licenciatarios/nuestros proveedores. Hasta el momento hemos reunido documentos de algunos de ellos, aunque debido a la estructura comercial de la empresa (que se muestra en el documento adjunto) no hemos podido ponernos en contacto con el resto hasta hace poco»;
• «A fin de demostrar que la marca ha adquirido un carácter distintivo a través del uso, iniciamos encuestas de mercado al inicio del período (con fecha de X). Sin embargo, hasta hace poco no ha acabado el trabajo de c ampo (tal como se indica en l os documentos adjuntos); como consecuencia de l o anterior, es necesaria una s egunda prórroga para finalizar el análisis y preparar nuestras presentaciones a la Oficina»;
• El «fallecimiento» también se considera una «circunstancia excepcional». Lo mismo es aplicable a la enfermedad grave, siempre que no estuviera disponible una sustitución razonable;
• Por último, las «circunstancias excepcionales» también incluyen situaciones de «fuerza mayor». Se define como «fuerza mayor» toda catástrofe natural e inevitable que interrumpe el curso previsto de los acontecimientos. En ella se incluyen los desastres naturales, las guerras, los actos terroristas y los acontecimientos inevitables que van más allá del control de las partes.
4.1.4 Prosecución del procedimiento
Artículo 82 del RMC Comunicación nº 6/05 del Presidente de la Oficina
Las expresiones «continuación del procedimiento» y «prosecución del procedimiento» son equivalentes y se utilizan indistintamente en las presentes Directrices.
El artículo 82 del RMC establece la posibilidad de q ue prosiga el procedimiento cuando han expirado los plazos.
La Comunicación nº 6/05 del Presidente de l a Oficina, de 16 de septiembre de 2005 relativa a la prosecución del procedimiento indica que el artículo 82 del RMC excluye varios plazos previstos en algunos artículos del RMC. Con algunas pocas excepciones, la mayoría de estas referencias se explican por sí mismas.
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• Al excluir los plazos previstos en el artículo 81 del RMC, el artículo 82 del RMC evita la duplicación de los medios de reparación para un mismo plazo.
• Al excluir los plazos contemplados en el artículo 112 del RMC, el artículo 82 del RMC dispone que la prosecución del procedimiento no podrá solicitarse durante los tres meses de que el solicitante o titular dispone para solicitar la transformación y pagar la tasa correspondiente. Por el contrario, quedan abiertos a una solicitud de prosecución del procedimiento el resto de plazos fijados por la Oficina en el transcurso de un procedimiento de transformación.
• El artículo 82 excluye igualmente los plazos previstos en los artículos 41 y 42 del RMC.
○ La referencia al artículo 41 debe interpretarse de la misma forma que en el apartado 5 del artículo 81 del RMC. Por lo tanto, por lo que respecta al artículo 41, y de ac uerdo con la regla general de que los plazos que no están disponibles para la restitutio tampoco lo están para prosecución del procedimiento, sólo quedan excluidos para la prosecución el plazo para presentar la oposición y el plazo para abonar la tasa de oposición.
○ El apartado 1 del artículo 42 del RMC dispone que la Oficina fijará un plazo para que las partes presenten observaciones en el marco del procedimiento de oposición. Por lo tanto, todos los plazos fijados por la Oficina según lo dispuesto en el apartado 1 del artículo 42 del RMC quedan excluidos para la prosecución del procedimiento. Esto excluye todos los plazos de que el oponente dispone para justificar su oposición con arreglo a lo dispuesto en la regla 19 del REMC, el plazo previsto en el apartado 2 de la regla 20 para que el solicitante responda, el plazo contemplado en el apartado 4 de la regla 20 para que el oponente presente sus alegaciones, así como el plazo previsto para cualquier otro intercambio de argumentos, si así lo hubiere considerado oportuno la Oficina (resolución de 7/12/2011, R 2463/2010-1, «Pierre Robert/Pierre Robert»).
De conformidad con la segunda frase del apartado 1 de la regla 50 del REMC, estos plazos (o los plazos correspondientes) seguirán estando excluidos en segunda instancia, ante las Salas de Recurso.
El resto de plazos de un procedimiento de oposición no se contemplan en el artículo 42 del RMC y, por lo tanto, no quedan excluidos para la prosecución del procedimiento. En consecuencia, la Oficina concederá la prosecución del procedimiento para:
○ el plazo previsto en el apartado 6 del artículo 119 del RMC y en el apartado 1 de la Regla 16 del REMC para traducir el escrito de oposición;
○ el plazo previsto en el apartado 4 de la regla 17 del REMC para subsanar las deficiencias que afectan a la admisibilidad de la oposición;
○ el plazo previsto en el apartado 1 de la regla 22 del REMC para que el solicitante invite al oponente a que aporte prueba del uso de su marca anterior;
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○ el plazo previsto en el apartado 2 de la regla 22 del REMC para que el oponente aporte la prueba del uso de su marca anterior;
○ el plazo previsto en el apartado 6 de la regla 22 del REMC para traducir la prueba del uso.
• El artículo 82 del RMC no ex cluye ninguno de los plazos que se fijan en los procedimientos de caducidad o de declaración de nulidad.
La parte que solicita la prosecución del procedimiento debe realizar la petición, que está sujeta al pago de una tasa prevista en el RTMC, en el plazo de dos meses desde el vencimiento del plazo original, y llevar a cabo el acto omitido en el momento en que se recibe la petición de prosecución.
El plazo de dos meses no podr á ser objeto de prórroga ni de prosecución. No es necesario llevar a cabo ningún requisito sustantivo, como es el caso cuando se solicita la restitutio in integrum.
4.1.5 Restitutio in integrum
Aquella parte en un procedimiento seguido ante la Oficina que, aun habiendo obrado con toda la diligencia requerida por las circunstancias, no hubiera podido observar un plazo con respecto a la Oficina, podrá ser restituida en sus derechos (restitutio in integrum) si la inobservancia del plazo tuviese como consecuencia directa, en virtud de las disposiciones de los Reglamentos, la pérdida de un derecho o de una v ía de recurso.
Para más información, véanse las Directrices, Parte A, Disposiciones Generales, Sección 8, Restitutio in Integrum.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE A
DISPOSICIONES GENERALES
SECCIÓN 2
PRINCIPIOS GENERALES QUE HAN DE RESPETARSE EN EL PROCEDIMIENTO
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Índice
1 Motivación suficiente ................................................................................ 3
2 Derecho a ser oído .................................................................................... 3 2.1 Examen de oficio........................................................................................3 2.2 Examen limitado a los hechos y pruebas alegados.................................4
3 Principios generales del Derecho de la UE............................................. 4
4 Diligencias de instrucción ........................................................................ 4 4.1 Pruebas escritas.........................................................................................5 4.2 Prueba oral..................................................................................................5 4.3 Prueba pericial............................................................................................6 4.4 Diligencias de comprobación....................................................................7 4.5 Declaraciones juradas ...............................................................................7 4.6 Costas de la instrucción ............................................................................7
5 Procedimiento oral .................................................................................... 8 5.1 Apertura del procedimiento oral ...............................................................8 5.2 Desarrollo del procedimiento oral.............................................................9
6 Acta de las diligencias de instrucción y del procedimiento .................. 9
7 Resoluciones ............................................................................................. 9 7.1 Contenido ...................................................................................................9 7.2 Reparto de gastos ....................................................................................10
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1 Motivación suficiente
Artículos 75-78 y artículo 85 del RMC
Las resoluciones adoptadas por la Oficina deberán ser escritas y motivadas. Dicho deber tiene dos propósitos, a saber, que las partes interesadas conozcan la justificación de la medida adoptada para permitir que protejan sus derechos, y permitir que los Tribunales de la Unión Europea ejerzan su potestad de revisar la legalidad de la resolución (véase la sentencia de 12 de julio de 2012, T-389/11, «GUDDY», no publicada en la Recopilación, apartado 16 y la jurisprudencia citada).
Sin embargo, la Oficina no incumple la obligación de motivación cuando no responde a todas las alegaciones presentadas por las partes.
Basta con que establezca los hechos y las consideraciones jurídicas de importancia fundamental en el contexto de la resolución.
(Véanse la sentencia de 16 de mayo de 2012, en el asunto T-580/10, «Kindertraum», y la sentencia de 10 de noviembre de 2012, en el asunto T-569/10, «BIMBO DOUGHNUTS»)
2 Derecho a ser oído
En todos los procedimientos ante la Oficina, las partes siempre dispondrán de l a posibilidad de ex presar sus posiciones y sus alegaciones. Estas últimas deberán presentarse, en principio, por escrito.
Los procedimientos ante la Oficina serán principalmente escritos y las resoluciones solo podrán fundamentarse en motivos sobre los que las partes hayan podido pronunciarse.
No obstante, la Oficina no está obligada a emitir una opinión jurídica antes de adoptar una resolución (véase la sentencia de 8 de marzo de 2012, en el asunto T-298/10, «BIODANZA»).
El alcance del examen de la Oficina variará, en primer lugar, según se trate de un procedimiento ex parte o inter partes. Pero dicho examen podrá variar también según se refiera el procedimiento al examen de los motivos absolutos o de los motivos relativos de denegación de registro o a la nulidad.
2.1 Examen de oficio
La Oficina procederá al examen de oficio de los hechos:
• en los procedimientos ex parte, en particular al examen de una solicitud de marca comunitaria hasta su publicación.
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2.2 Examen limitado a los hechos y pruebas alegados
La Oficina se limita estrictamente a los hechos, las pruebas y las alegaciones presentados por las partes:
• en los procedimientos inter partes (oposiciones, anulaciones).
Si se presentan los documentos o al egaciones tras el vencimiento del plazo establecido por la Oficina, estos se considerarán extemporáneos y no se tendrán en cuenta.
Como excepción a lo anteriormente dicho, las cuestiones de derecho serán tomadas en cuenta por la Oficina aunque no hayan sido alegadas por las partes, como por ejemplo, en la evaluación de la similitud entre signos o productos, realizada basándose en la comparación de dos solicitudes/registros de marca comunitaria.
Al igual se tendrán en cuenta las circunstancias que ocurran a lo largo del procedimiento. Por ejemplo, si durante un procedimiento de oposición expira el derecho anterior en el que se funda la oposición (por ejemplo, no se renueva, o s e declara nulo), este hecho siempre se tendrá en cuenta.
3 Principios generales del Derecho de la UE
La Oficina debe respetar los principios generales del Derecho de la UE, tales como la igualdad de trato y de buena administración (véase la sentencia de 24 de enero de 2012, en el asunto T-260/08, «VISUAL MAP»).
El principio de i gualdad de trato debe aplicarse, en cambio, de un modo que sea coherente con el principio de legalidad, según el cual nadie puede invocar, en beneficio propio, una ilegalidad cometida en el marco de otro procedimiento (véase la sentencia de 2 de mayo de 2012,en el asunto T-435/11, «UniversalPHOLED»).
4 Diligencias de instrucción
Artículo 78 del RMC Reglas 57–59 del REMC
En todos los procedimientos ante la Oficina, se podrán llevar a c abo diligencias de instrucción. Las diligencias de instrucción se enumeran en el artículo 78 del RMC y en la regla 57 del REMC, aunque dicha lista no es exhaustiva.
Las diligencias de instrucción son las siguientes:
• audiencia de las partes; • solicitud de información; • presentación de documentos y de muestras; • audiencia de testigos; • peritaje;
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• declaraciones escritas prestadas bajo juramento, o de claraciones solemnes o que, con arreglo a la legislación del Estado en que se realicen, tengan efectos equivalentes;
• diligencias de comprobación.
Algunas de dichas diligencias serán más frecuentes, como la solicitud de información, las declaraciones escritas y, principalmente, la presentación de do cumentos y muestras. Solo a título excepcional se recurrirá a las demás diligencias, como la audiencia de las partes, de testigos o de peritos, las diligencias de comprobación, etc.
Corresponderá exclusivamente a la Oficina determinar la oportunidad de practicar dichas diligencias y solo las llevará a cabo si las considera necesarias para el examen del expediente.
Una resolución denegatoria de una solicitud de diligencia de instrucción no podrá ser objeto de un recurso independiente y solo podrá recurrirse junto con la resolución final.
El procedimiento que habrá de aplicar la Oficina variará en función de la naturaleza de la diligencia de instrucción de que se trate.
4.1 Pruebas escritas
La Oficina, en el marco de las diligencias de instrucción, se limitará, en la mayoría de casos, a las pruebas escritas, que son las menos onerosas, las más sencillas y flexibles.
A ese respecto la Oficina concederá preferencia a la presentación de documentos y muestras. Pero entre las posibles pruebas escritas figuran, además, no solo la solicitud de información o l as declaraciones escritas prestadas bajo juramento o l as declaraciones solemnes o que, con arreglo a l a legislación del Estado en que se realicen, tengan efectos equivalentes, sino también a los peritajes, que pueden limitarse a la presentación de un informe escrito.
El Reglamento no establece ninguna formalidad ni procedimiento particular. Así, pues, se aplicarán las normas generales de procedimiento de la Oficina.
En particular, toda la información, documentos y muestras aportados por una parte serán comunicados a las demás partes en el plazo más breve posible y la Oficina concederá a estas últimas un plazo, en principio de dos meses, para que puedan presentar alegaciones al respecto.
La Oficina fundamentará su resolución sólo en los motivos respecto de los cuales ambas partes han tenido la oportunidad de presentar sus observaciones.
4.2 Prueba oral
Se trata de las pruebas que se realizan en el marco de un procedimiento oral, como la audiencia de las partes, de testigos o de peritos.
Recuérdese: la Oficina solo decidirá practicar esas pruebas a título excepcional, debido, en par ticular, a su lentitud, que puede prolongar un pr ocedimiento, y a s us
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costas, con las que, en última instancia, habrá de correr la parte vencida en un procedimiento inter partes o incluso, en ciertos casos, las dos partes.
Siempre que la Oficina considere necesario oír a l as partes, a testigos o a per itos, deberá adoptar una resolución en la que precise el tipo de diligencia que desea practicar (en este caso, una audiencia), los hechos pertinentes que se deban probar y la fecha de la audiencia.
Si una de las partes ha solicitado la audiencia, la resolución deberá fijar igualmente a dicha parte el plazo, en principio de un mes, en el que deberá comunicar los nombres y direcciones de los testigos y peritos que desee sean oídos.
Tras la adopción de s u resolución previa, la Oficina citará a l as partes, testigos o peritos. El plazo de comparecencia será de un mes como mínimo, a no ser que los interesados acuerden un plazo más breve. En la citación deberá figurar, además de la fecha de la audiencia y los elementos fácticos sobre los que versará la misma, los nombres de las partes en el procedimiento y la naturaleza de los gastos que, llegado el caso, podría reembolsar la Oficina a los testigos o peritos.
Si la Oficina invita a una parte a declarar oralmente, deberá informar de ello a las demás partes, que podrán intervenir.
Asimismo, cuando la Oficina cite a un perito o a un testigo para una audiencia, deberá comunicarlo a l as partes, que podrán estar presentes y formular preguntas a l a persona oída.
4.3 Prueba pericial
El recurso a las diligencias examinadas en este punto será excepcional por las razones antes citadas. Más en particular, el peritaje o las diligencias de comprobación sólo deberán aplicarse en última instancia, para evitar los importantes gastos y la prolongación del procedimiento que ocasionan.
La Oficina decidirá si procede pedir la opinión de un perito, y qué persona se nombra como perito. La Oficina no tiene una lista o comité especial de peritos, dado el carácter excepcional de esa diligencia de prueba.
En el mandato de dicho perito deberá indicarse:
• la descripción precisa de su misión; • el plazo que se le fije para elaborar el informe; • los nombres de las partes en el procedimiento; • la naturaleza de los gastos que, llegado el caso, podría reembolsarle la Oficina.
Tan pronto como reciba el informe del perito, la Oficina transmitirá a l as partes una copia del mismo.
Si la Oficina considera suficiente el informe y si las partes aceptan esa modalidad de informe, se utilizará, en principio, tan sólo en su forma escrita. Así pues, la deposición de un informe oral o la audiencia del perito quedará al arbitrio de la Oficina.
Las partes podrán recusar a un pe rito por incompetencia, porque tenga un i nterés personal en el asunto, porque haya intervenido ya en el litigio o p orque infunda
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sospechas de parcialidad. Ninguna recusación podrá fundarse en la nacionalidad del perito designado. Si alguna parte recusa al perito, la Oficina resolverá sobre la recusación. Las razones que pueden alegarse para la recusación de un perito serán las mismas que para la revocación de un examinador o de un miembro de una Sala de Recurso, en virtud del artículo 137 del RMC.
4.4 Diligencias de comprobación
Solo en circunstancias muy excepcionales, la Oficina considerará necesario proceder a diligencias de comprobación in situ. En ese caso, deberá adoptar una resolución en la que precise el tipo de prueba prevista (en este caso, las diligencias de comprobación), los hechos pertinentes que se deban probar y la fecha de l a citada diligencia de comprobación.
La fecha de la diligencia de comprobación deberá fijarse de modo que se conceda a la parte interesada un tiempo suficiente para prepararla.
4.5 Declaraciones juradas
De igual forma, se admitirán como pruebas las declaraciones escritas prestadas bajo juramento o las declaraciones solemnes, siempre que las aporte una parte. No obstante, deberá considerarse la credibilidad de di chas declaraciones, teniendo en cuenta si la información es correcta y exacta, si proviene de una fuente independiente y/o estuviera sustentada por información escrita (por ejemplo, declaraciones en las cuales la persona firmante confirma que los libros de s u empresa contienen cierta información). No se admitirá que las partes abusen del artículo 78, apartado 1, letra f), del RMC para testificar sobre ellas mismas.
Para que una declaración se considere jurada o solemne, ha de demostrarse que la declaración falsa se considera delito penal con arreglo a la legislación del Estado miembro donde se redacta el documento. Es precisamente esa potencial sanción penal lo que obliga al declarante a decir la verdad, y permite que la Oficina tenga el convencimiento de la veracidad de los hechos alegados.
Cuando no s ea este el caso, el documento se considerará simplemente otro documento o declaración escrita sin valor de prueba concluyente.
4.6 Costas de la instrucción
La Oficina podrá supeditar la práctica de una diligencia de instrucción al depósito de una suma por la parte que la haya solicitado. La Oficina calculará su importe sobre la base de una estimación de las costas.
Los testigos y peritos citados u oídos por la Oficina tendrán derecho al reembolso de los gastos de desplazamiento y de estancia. Se les podrá conceder un anticipo de los mismos. Los testigos y peritos tendrán igualmente derecho a una indemnización apropiada por lucro cesante o a hono rarios como remuneración de s u trabajo, respectivamente.
El Presidente de la Oficina establecerá el importe de los reembolsos y de los anticipos sobre los gastos, que se publicará en el Diario Oficial de l a Oficina. Para más
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información, véase la Decisión nº EX-99-1 del Presidente de la Oficina, modificada por la Decisión nº EX-03-2, de 20 de enero de 2003.
Cuando la Oficina acuerde de o ficio una di ligencia de i nstrucción que requiera la audiencia de testigos y de peritos, las costas correrán a cargo de la Oficina. En cambio, si la audiencia ha sido solicitada por una de las partes, las costas correrán a su cargo, sin perjuicio de l a resolución sobre el reparto de costas en el caso de l os procedimientos inter partes.
5 Procedimiento oral
Artículo 77 del RMC
El artículo 77 del RMC dispone que la Oficina podrá utilizar el procedimiento oral.
Cualquier contacto oficioso, como, por ejemplo, una conversación telefónica, no se considerará constitutivo de un procedimiento oral, en el sentido del artículo 77 del RMC.
La Oficina recurrirá al procedimiento oral de oficio o a instancia de u na parte del procedimiento cuando lo considere verdaderamente necesario. En la gran mayoría de los casos será suficiente que las partes puedan presentar sus observaciones por escrito y será difícil presentar material probatorio adicional en una vista sin incumplir el principio de que los hechos y pruebas se han de presentar dentro de los plazos establecidos en el procedimiento escrito.
5.1 Apertura del procedimiento oral
Cuando la Oficina haya decidido recurrir a un procedimiento oral y citar a las partes, el plazo de comparecencia no podrá ser inferior a un mes salvo que las partes acuerden un plazo más breve.
Como el objeto de todo procedimiento oral es el de elucidar todas las cuestiones que queden por resolver antes de que se adopte la resolución definitiva, la Oficina, en su citación, debería indicar a las partes los puntos que, en su opinión, precisen ser debatidos para adoptar la resolución.
En la medida en que la Oficina considere que ciertas cuestiones lo exijan y para facilitar el procedimiento oral, podrá invitar a las partes a que presenten observaciones escritas o pruebas antes de la vista. Al fijar el plazo para la recepción de di chas observaciones, la Oficina deberá tener en cuenta que éstas deberán recibirse en la Oficina en un plazo razonable para que puedan ser transmitidas a las otras partes.
Las partes podrán asimismo presentar, por iniciativa propia, pruebas en apoyo de su argumentación. No obstante, en c aso de que dichas pruebas hubieran debido presentarse en una fase anterior del procedimiento, incumbirá exclusivamente a l a Oficina pronunciarse sobre la admisibilidad de es os elementos de prueba, de conformidad, en su caso, con el principio de contradicción.
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5.2 Desarrollo del procedimiento oral
El procedimiento oral ante los examinadores, la División de O posición y el departamento encargado del Registro no será público.
Ante la División de Anulación y las Salas de Recurso, el procedimiento oral, incluida la lectura de la resolución, será público, como principio general. Si una de las partes debidamente citada en un procedimiento oral no compareciese ante la Oficina, el procedimiento podrá proseguir en su ausencia.
Al final del procedimiento oral, la Oficina concederá a las partes la posibilidad de presentar sus conclusiones definitivas.
6 Acta de las diligencias de instrucción y del procedimiento
Regla 60 del REMC
El acta de las diligencias de instrucción y del procedimiento oral se limitará a los elementos esenciales. En particular, no c ontendrá las declaraciones literales realizadas, ni se someterá a aprobación. No obstante, las declaraciones de los peritos o los testigos serán grabadas de forma que, en instancias ulteriores, se puedan verificar las declaraciones exactas, y las partes recibirán una copia del acta (no de las declaraciones grabadas).
7 Resoluciones
7.1 Contenido
Artículo 75 del RMC Regla 55 del REMC
Las resoluciones de la Oficina se motivarán de forma que su legalidad se pueda evaluar en la fase de recurso o ante el Tribunal General o el Tribunal de Justicia.
La resolución abordará los principales puntos planteados por las partes. En particular, si existen distintos resultados para algunos productos y servicios de l a solicitud o registro de marca comunitaria en cuestión, la resolución dejará claro cuáles de los productos y servicios se deniegan y cuáles no se deniegan.
El nombre o los nombres de las personas que adoptaron la resolución figurarán al final de la misma (regla 55 del REMC).
Al final de la resolución, se añadirá una nota sobre la posibilidad de interponer recurso.
La ausencia de dicha nota sobre la posibilidad de recurso no afectará a la legalidad de la resolución ni al plazo de presentación de recurso.
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7.2 Reparto de gastos
Artículo 82, apartado 5, y artículo 85 del RMC Regla 51 y regla 94 del REMC
En los procedimientos ex parte no se dicta resolución sobre las costas, ni sobre el reparto de l os gastos. Las tasas abonadas a l a Oficina no s e reembolsarán (excepciones: regla 51 del REMC, restitución de la tasa de recurso en ciertos casos, así como artículo 82, apartado 5, del RMC, reembolso de la tasa de prosecución del procedimiento si éste se desestima).
Las resoluciones sobre las costas o la fijación de la cuantía de las mismas se circunscriben a l os procedimientos de oposición y anulación (incluidos los procedimientos de recurso o los procedimientos ante el Tribunal General o el Tribunal de Justicia). Las «costas» engloban los gastos sufragados por las partes en el procedimiento, principalmente los gastos de representación (aunque siempre sujetos a unos importes máximos) así como los gastos derivados de l a participación en l as audiencias. Las «costas» también incluyen la tasa de oposición o de anulación abonada por el oponente o por un tercero.
«Reparto de los gastos» quiere decir que la Oficina se pronunciará sobre si las partes han de reembolsarse mutuamente estas cantidades y en qué medida. No incluye las relacionadas con la Oficina (tasas abonadas, costas internas de la Oficina).
Por lo tanto, en la resolución que se dicte en los procedimientos inter partes, la Oficina deberá pronunciarse sobre el reparto de gastos. Recaerán en la parte vencida las tasas y los gastos sufragados por la otra parte, indispensables para la instrucción del procedimiento. Si las dos partes pierden en uno o varios de los elementos del litigio y en la medida en que la equidad lo exija, la Oficina podrá disponer un reparto de los gastos diferente.
Cuando la cuantía de los gastos se limite a los gastos de representación en que ha incurrido la otra parte (o, posiblemente al reembolso de l a tasa de o posición o de anulación), la resolución fijará los gastos que deben abonar las partes vencidas, no siendo necesaria a estos efectos ninguna prueba de haber incurrido en estos gastos.
«Gastos de representación» comprende solo los gastos de los representantes profesionales a efectos de lo dispuesto en el artículo 93 del RMC, no de los empleados (ni siquiera un empleado de otra empresa con vínculos económicos).
Esta parte de l a resolución constituye un título que se podrá ejecutar en procedimientos simplificados en todos los Estados miembros.
En los casos de retirada o de renuncia de la solicitud de MC o de la MC impugnada o de retirada de la oposición o de la solicitud de anulación, la Oficina no decidirá sobre el fondo del asunto pero sí dictará resolución sobre las costas. Recaerán en la parte que ponga fin al procedimiento las tasas y los gastos sufragados por la otra. En los casos en que se concluya el asunto por otros motivos, la Oficina fijará libremente los gastos. En ningún caso se fundamentará la resolución sobre los gastos en supuestos hipotéticos o p ronósticos sobre quién habría ganado el procedimiento si hubiera habido que dictar una resolución sobre el fondo. Por otra parte, en el plazo de un mes a partir de la notificación en la que se fije la cuantía de las costas, la parte interesada podrá presentar una solicitud de modificación de la resolución. Esta solicitud deberá
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estar motivada e i r acompañada de la correspondiente tasa (artículo 2, apartado 30, del RTMC).
Lengua de procedimiento
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
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PARTE A
DISPOSICIONES GENERALES
SECCIÓN 4
LENGUA DE PROCEDIMIENTO
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Índice
1 Introducción................................................................................................3 2 De la presentación al registro (excepto oposición) .................................3
2.1 Solicitud .......................................................................................................... 3 2.2 Otras solicitudes ............................................................................................. 4
3 Con posterioridad al registro (excepto anulación) ..................................4 4 Oposición y anulación ...............................................................................4 5 Naturaleza invariable del régimen de lenguas .........................................5 6 Traducciones y su certificación ................................................................5 7 No conformidad con el régimen lingüístico .............................................5
Lengua de procedimiento
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1 Introducción
Artículo 119 del RMC Regla 95, regla 96 y regla 98 del REMC Comunicación nº 4/04 del Presidente de la Oficina
Hay cinco lenguas oficiales en la Oficina: el inglés, el francés, el alemán, el italiano y el español. No obstante, la solicitud de marca comunitaria podrá presentarse en cualquiera de las lenguas oficiales de la Unión Europea. El RMC establece las normas para la determinación y el uso de la lengua de procedimiento. Estas normas pueden variar no sólo de un procedimiento a otro, sino también y sobre todo según se trate de un procedimiento ex parte o de un procedimiento inter partes.
En esta sección se abordan únicamente las disposiciones comunes a todos los procedimientos. Las excepciones que afectan a un procedimiento particular se tratan en la sección correspondiente de las Directrices que afectan al procedimiento.
2 De la presentación al registro (excepto oposición)
2.1 Solicitud
La solicitud de marca comunitaria (solicitud de MC) se podrá presentar en cualquiera de las lenguas oficiales de la Unión Europea.
Se indicará una segunda lengua de entre las cinco lenguas oficiales de la Oficina.
Durante el procedimiento, el solicitante podrá usar:
• la primera lengua, si es una lengua de la Oficina;
• o la segunda lengua, a su elección, si la primera lengua no es una de las lenguas de la Oficina.
La Oficina usará:
• sólo la primera lengua, si es una lengua de la Oficina;
• la primera lengua, si no es una lengua de la Oficina, en virtud de lo dispuesto en la sentencia «Kik» del TJUE (sentencia de 9/9/2003, C-361/01 P), a menos que el solicitante haya consentido por escrito el uso, por la Oficina, de la segunda lengua, en cuyo caso la Oficina podrá obrar en consecuencia. El consentimiento de uso de l a segunda lengua se otorgará para cada expediente; no s e podrá otorgar para todos los expedientes actuales o futuros.
Este régimen de lenguas se aplica a todo el procedimiento de solicitud y examen hasta su registro, excepto en el procedimiento de oposición y peticiones accesorias (véase el siguiente apartado).
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2.2 Otras solicitudes
Regla 95, letra a) del REMC
Durante el período que se extiende desde la presentación de la solicitud hasta su registro, cualquier petición, solicitud o dec laración que no esté relacionada con el examen de la solicitud como tal, sino que inicie un procedimiento accesorio (consulta pública de ex pedientes, inscripción de una cesión o licencia, solicitud de transformación, declaración de división), podrá presentarse en la primera o en la segunda lengua, a elección del solicitante de la marca comunitaria o del tercero. Esa lengua se convertirá entonces en la lengua de p rocedimiento para esos procedimientos accesorios, independientemente de si la primera lengua es una de las lenguas de la Oficina.
3 Con posterioridad al registro (excepto anulación)
Regla 95, letra b) del REMC
Toda petición, solicitud o de claración de división o de renuncia, exceptuando la solicitud de anulación, realizada con posterioridad al registro de la marca, se podrá presentar en una de las cinco lenguas de la Oficina.
Ejemplo: con posterioridad al registro de una M C, el titular de l a marca comunitaria podrá presentar una solicitud de i nscripción de una l icencia en inglés y, semanas después, presentar una solicitud de renovación en italiano.
4 Oposición y anulación
Regla 16 y regla 38, apartado 1, del REMC
Las oposiciones o solicitudes de anulación (solicitud de caducidad o de declaración de nulidad) podrán presentarse:
• a elección del oponente/solicitante de l a anulación, en l a primera o s egunda lengua de la solicitud de marca comunitaria, si la primera lengua es una de las cinco lenguas de la Oficina;
• en la segunda lengua, si la primera lengua no es una de las lenguas de la Oficina.
Esta lengua se convertirá en la lengua del procedimiento de oposición o de anulación, a menos que las partes acuerden otra lengua de procedimiento (de entre las lenguas oficiales de la UE).
La oposición o solicitud de anulación podrá asimismo presentarse en cualquiera de las otras lenguas de la Oficina, siempre que en el plazo de un mes desde la expiración del período de opos ición o dentro del plazo de un mes a partir de la presentación de la solicitud de anulación, el oponente/solicitante de la anulación presente una traducción en una de las lenguas que cabe utilizar como lenguas de procedimiento.
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5 Naturaleza invariable del régimen de lenguas
Los Reglamentos permiten en oc asiones elegir entre las lenguas disponibles en el curso del procedimiento (véase más arriba) y, permiten, dentro de unos plazos específicos, optar por otra lengua como lengua de procedimiento para los procedimientos de opo sición y anulación. No obstante, con esas excepciones, el régimen de lenguas es invariable. En especial, la primera y segunda lengua no se podrán modificar en el curso del procedimiento.
6 Traducciones y su certificación
Regla 98 del REMC
La regla general es que cuando se precise la traducción de un documento, ésta ha de recibirse en la Oficina dentro del plazo establecido para la presentación del documento original. Lo anterior se aplicará a menos que los Reglamentos contemplen expresamente una excepción a esta norma.
La traducción debe identificar el documento al que se refiere y reproducir la estructura y contenido del documento original. La Oficina podrá exigir la presentación, en un plazo específico, de una traducción certificada, sólo en el caso en que existan razones para dudar de la fidelidad de la traducción.
7 No conformidad con el régimen lingüístico
En caso de no conformidad con el régimen lingüístico la Oficina emitirá la correspondiente deficiencia. En caso de no sanearse dicha deficiencia la solicitud o petición será denegada.
Para más información sobre los regímenes lingüísticos particulares aplicables a los procedimientos específicos, véanse en las secciones correspondientes de las Directrices.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE A
DISPOSICIONES GENERALES
SECCIÓN 6
REVOCACIÓN DE RESOLUCIONES, ANULACIÓN DE INSCRIPCIONES EN EL
REGISTRO Y CORRECCIÓN DE ERRORES
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Índice
1 Revocación de resoluciones y anulación de inscripciones en el Registro ...................................................................................................... 3 1.1 Error evidente en el procedimiento imputable a la Oficina ........... 3 1.2 ¿Quién resuelve las solicitudes de revocación/anulación?.......... 4 1.3 Aspectos procesales ........................................................................ 5
1.3.1 Apreciación........................................................................................5 1.3.2 Distinción entre una y dos partes.......................................................5
1.3.2.1 Procedimiento para una parte.......................................................... 6 1.3.2.2 Procedimiento para más de una parte ............................................. 7
2 Corrección de errores en las resoluciones y otras notificaciones ....... 8 2.1 Corrección de errores en las resoluciones..................................... 8
2.1.1 Observaciones generales ..................................................................8 2.1.2 Aspectos procesales .........................................................................9
2.1.2.1 Plazos............................................................................................... 9 2.1.2.2 Apreciación....................................................................................... 9 2.1.2.3 Procedimiento .................................................................................. 9
2.2 Corrección de errores en las notificaciones distintas de las resoluciones...................................................................................... 9
3 Corrección de errores en las publicaciones y corrección de errores en el Registro o en la publicación del Registro .................................... 10
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1 Revocación de resoluciones y anulación de inscripciones en el Registro
Artículo 80 del RMC
En determinadas circunstancias, podrán revocarse las resoluciones adoptadas por la Oficina o anularse las inscripciones en el Registro. Esta parte de las Directrices aborda los aspectos prácticos de la revocación/anulación con arreglo al artículo 80 del RMC. Lo aquí indicado no será aplicable a los dibujos y modelos comunitarios registrados (DMC).
El procedimiento de revocación podrá ser iniciado tanto a instancia de una d e las partes del procedimiento como de oficio por la Oficina.
Las resoluciones solo pueden ser revocadas por medio de otra resolución. Lo mismo ocurre con las anulaciones de inscripciones en el Registro.
1.1 Error evidente en el procedimiento imputable a la Oficina
Las resoluciones únicamente puede s er revocadas y las inscripciones del Registro anuladas cuando incluyan un error evidente en el procedimiento que sea imputable a la Oficina.
Una resolución/inscripción incluye un error evidente en el procedimiento cuando existe un error en el procedimiento (por lo general se ha omitido un acto de procedimiento fundamental) o cuando la resolución/inscripción ignora una actuación procesal realizada por las partes. Los errores en el procedimiento deben distinguirse de los errores materiales, que no pueden ser revocados. La resolución/inscripción es incorrecta desde un punto de vista procesal (es decir, adolece de un error evidente de procedimiento) si no se ha seguido correctamente el procedimiento establecido en los Reglamentos.
La siguiente lista, que no tiene carácter exhaustivo, incluye algunos ejemplos de errores evidentes de procedimiento por los puede solicitarse una revocación:
• La MC ha sido registrada a pesar de haber sido retirada con anterioridad;
• La oposición ha sido admitida a pesar de que no se cumplían algunos requisitos de admisibilidad (véase la sentencia del TJUE de 18 de octubre de 2012, C-402/11 P, «REDTUBE»);
• La MC ha sido registrada a pesar de existir una irregularidad en el pago de las tasas de solicitud;
• La MC ha sido registrada a pesar de que se ha admitido una oposición;
• La denegación de una MC basada en motivos absolutos se notifica antes de que expire el plazo concedido al solicitante para presentar observaciones en respuesta a la objeción, o ignorando las observaciones que el solicitante
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presentó dentro de plazo (si el solicitante ha c ontestado dentro del plazo, el examinador puede continuar con la tramitación de la solicitud, por ejemplo, emitiendo una resolución, y no es necesario esperar hasta que expire el plazo señalado en la carta de recusación.);
• La MC se deniega basándose en motivos absolutos, ignorando una solicitud válida del solicitante para presentar pruebas del carácter distintivo adquirido (artículo 7, apartado 3, del RMC);
• La MC se deniega basándose en motivos absolutos, ignorando las pruebas del carácter distintivo adquirido que han sido debidamente presentadas;
• La División de Oposición deniega la MC, ignorando una solicitud no tramitada de prueba del uso o sin tratar la cuestión de la prueba del uso;
• La MC ha sido registrada a pesar de que existe una oposición pendiente;
• La oposición ha sido denegada basándose en la falta de prueba del uso aunque ○ no se le concedió expresamente al solicitante un plazo para presentar
dicha prueba; ○ la prueba del uso se presentó dentro del plazo pero no se tuvo en cuenta;
• La resolución de oposición se emitió mientras el procedimiento había sido suspendido o interrumpido o, de forma más general, mientras aún estaba vigente un plazo para una de las partes;
• Toda vulneración del derecho a ser oído (observaciones no env iadas a la otra parte cuando se le debía haber concedido un plazo para responder, con arreglo al Reglamento o a la práctica de la Oficina);
• Al cerrar el expediente debido a la limitación o a la retirada de la MC impugnada, la Oficina ha emitido una resolución sobre las costas, sin tener en cuenta un acuerdo sobre las costas entre las partes que fue presentado dentro del plazo;
• La cesión de titularidad se inscribió en el Registro, a pesar de no existir pruebas suficientes de la misma.
Carece de relevancia si dichos errores de procedimiento han resultado de un error humano o del funcionamiento incorrecto de una herramienta informática.
El efecto de la revocación de una resolución o de la anulación de una inscripción en el Registro es que se considera que la resolución o i nscripción nunca ha existido. El expediente se devuelve a la fase procesal en la que se encontraba antes de que se adoptara la resolución o inscripción errónea.
1.2 ¿Quién resuelve las solicitudes de revocación/anulación?
El departamento o la unidad que haya efectuado la inscripción o adoptado la resolución será quien se encargue de las resoluciones relativas a la revocación/anulación.
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1.3 Aspectos procesales
Artículo 80 del RMC
1.3.1 Apreciación
Los examinadores deben verificar, en p rimer lugar, si la resolución o la inscripción incluyen un error evidente de procedimiento; en segundo lugar, si han transcurrido más de seis meses desde la notificación de la resolución o de la inscripción en el Registro; y en tercer lugar, si se ha i nterpuesto un recurso contra la resolución/inscripción en el Registro.
(a) Apreciación: debe verificarse si la resolución o la inscripción incluyen un error evidente de procedimiento. Para más información véase el apartado 1.1.
(b) Período de seis meses: cuando el examinador identifique un error evidente de procedimiento, deberá determinarse si han pasado más de seis meses desde la notificación de la resolución o de la inscripción en el Registro. No será posible proceder a la revocación/anulación si han pasado más de seis meses (artículo 80, apartado 2, del RMC).
El artículo 80 del RMC indica que la anulación o revocación «se adoptarán» en un plazo de seis meses desde la fecha de inscripción en el Registro o de adopción de l a resolución. Esto implica que, incluso si el plazo ha e xpirado, podrá anularse la inscripción o revocarse la resolución si la Oficina tiene conocimiento por escrito de l a existencia de un er ror evidente en el procedimiento en dicha inscripción o resolución en un plazo de seis meses desde la notificación de dicha inscripción/resolución. Asimismo implica que podrá anularse una inscripción y revocarse una resolución después de un período de seis meses si la Oficina envía una notificación que dé inicio al procedimiento de anulación/revocación en un plazo de seis meses desde la notificación de dicha inscripción o resolución.
(c) Resolución/inscripción contra la que está pendiente un recurso: antes de emitir una carta en la que se notifique a las partes su intención de anular una inscripción o revocar una resolución, y antes de que se lleve a cabo la misma, la Oficina deberá verificar si se ha interpuesto un recurso contra la resolución o la inscripción en el Registro. Una resolución o u na inscripción no pue de ser revocada/anulada si existe un r ecurso pendiente contra la misma interpuesto ante las Salas (Resolución de 28 de abril de 2009, R 323/2008- G,«BEHAVIOURAL INDEXING»).
1.3.2 Distinción entre una y dos partes
El procedimiento en el que solo resulta afectada una parte se describe en el apartado 1.3.2.1. Encontramos algunos ejemplos en los casos en que la Oficina recibe correctamente observaciones de terceros que plantean dudas pero la solicitud de MC no se bloquea y continúa el procedimiento hasta su registro, y cuando se registra una solicitud de MC a pesar de no haber sido abonada la tasa de solicitud.
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Los errores relativos a la tramitación incorrecta de los expedientes después de que se haya adoptado una resolución, por ejemplo cuando se registra una solicitud de MC a pesar de haber sido denegada basándose en motivos absolutos, afectan sólo a una parte: el solicitante.
Si es probable que la revocación de una r esolución afecte a más de una parte, deberá seguirse el procedimiento descrito en el apartado 1.3.2.2. Por ejemplo, resultará afectada más de una parte por la revocación de una resolución en los procedimientos de oposición cuando la Oficina no haya tenido en cuenta una solicitud de prueba del uso.
Se considera que los errores que afectan a la tramitación incorrecta de los expedientes después de que haya sido adoptada una resolución de oposición, como la denegación completa de una solicitud de MC que sigue registrada, conciernen tanto al solicitante como al oponente.
Los errores de registro de una c esión de t itularidad también afectan a más de un a parte. Cuando el procedimiento es fundamentalmente ex parte, la Oficina podrá, en función del caso, considerar que existe más de una parte afectada: el nuevo titular, el antiguo titular y el tercero, que deberían haber sido inscritos en el Registro.
1.3.2.1 Procedimiento para una parte
Error detectado por la Oficina
Si la propia Oficina detecta que se ha producido un error, informará al solicitante/titular de su intención de revocar la resolución/anular la inscripción y señalará un plazo de un mes para presentar observaciones si el solicitante/titular tiene su oficina principal en la UE o de dos meses si no tiene su oficina principal en la UE. La carta deberá indicar los motivos de revocación/anulación.
Si el solicitante/titular está de acuerdo o no presenta observaciones, la Oficina revocará la resolución o anulará la inscripción.
Si el solicitante/titular no está de acuerdo con la revocación o la anulación, deberá adoptarse una resolución formal, con sujeción a l os requisitos habituales contemplados en l as Directrices, Parte A, Disposiciones generales, Sección 2, Principios generales que han de respetarse en el procedimiento, apartado 7, Resoluciones.
Error notificado por la parte afectada
Si el solicitante/titular informa a la Oficina por escrito de un e rror, no será necesario que se soliciten observaciones. En dichos casos, deberá establecerse si la solicitud de revocación/anulación es procedente. En tal caso, la resolución o la inscripción en el Registro será revocada o anulada. Si la Oficina considera que no existen motivos para la revocación/anulación, denegará la solicitud de la parte mediante una resolución, en la que se indicará los motivos de la denegación.
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1.3.2.2 Procedimiento para más de una parte
Error detectado por la Oficina
Si la propia Oficina detecta de oficio que se ha producido un error, informará a ambas partes de su intención de revocar la resolución/anular la inscripción y señalará un plazo de, en principio, dos meses para presentar observaciones (que se reduce a un mes si ambas partes tienen sus oficinas principales en la UE).
Si las partes están de acuerdo o no presentan observaciones en respuesta, la Oficina deberá revocar la resolución/anular la inscripción en el Registro.
Si una de las partes no está de acuerdo con la revocación/anulación, deberá adoptarse una resolución motivada, con sujeción a l os requisitos habituales contemplados en l as Directrices, Parte A, Disposiciones generales, Sección 2, Principios generales, que han de respetarse en el procedimiento, apartado 7, Resoluciones.
Error notificado por una de las partes
Si la parte afectada por el error informa por escrito a l a Oficina del mismo, debe establecerse si la solicitud de revocación/anulación es procedente. En caso de que así sea, la Oficina notificará a la parte que se haya beneficiado del error (la otra parte) de su intención de revocación/anulación (y enviará, a título informativo, una copia de esta notificación a la primera parte). Se señalará un plazo para observaciones de, en principio, dos meses (que puede reducirse a un mes si la parte cuyas pretensiones son desestimadas tiene su oficina principal en la UE).
Si la otra parte está de acuerdo o no presenta observaciones, la Oficina revocará la resolución o anulará la inscripción.
Si la otra parte no está de acuerdo con la revocación o la anulación, deberá adoptarse una resolución formal, con sujeción a los requisitos habituales contemplados en las Directrices, Parte A, Disposiciones generales, Sección 2, Principios generales que han de respetarse en el procedimiento, apartado 7, Resoluciones.
Por ejemplo, si el oponente cuya oposición ha sido mantenida, habiéndose denegado la solicitud de M C, informa a la Oficina de que, sin embargo, se ha procedido al registro de dicha solicitud, deberá informarse al solicitante y concedérsele un plazo de dos meses para que presente observaciones. La inscripción se anulará, con independencia de si el solicitante está de acuerdo o no contesta.
Si la parte que resultó beneficiada del error informa por escrito a la Oficina, deberá establecerse si la solicitud de revocación/anulación es procedente. En ese caso, deberá informarse de ello a l a parte perjudicada por el error. Dado que la revocación/anulación beneficiará a esta última, la resolución puede ser revocada o la inscripción anulada al mismo tiempo que se envía la carta (a ambas partes). No es necesario que la parte que se benefició del error presente observaciones, ya que la carta en la que informaba a l a Oficina del error puede considerarse como su aceptación de la revocación/anulación.
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Por ejemplo, si un solicitante informa a la Oficina de que su solicitud de MC ha sido registrada a pesar de haber sido denegada mediante resolución de la Oficina, deberá anularse la inscripción en el Registro, sin que sea necesario dar audiencia al oponente.
Por último, una vez que la revocación o la anulación sea definitiva, esta debe publicarse si la inscripción incorrecta en el Registro ya ha sido publicada. Si la Oficina considera que no existen motivos para la revocación de la resolución/anulación de la inscripción, enviará una carta por la que se denegará la solicitud y remitirá copias tanto de esta carta como de la solicitud original a la otra parte, a título informativo.
2 Corrección de errores en las resoluciones y otras notificaciones
Regla 53 del REMC
2.1 Corrección de errores en las resoluciones
2.1.1 Observaciones generales
De conformidad con la regla 53 del REMC, cuando la Oficina detecte, por sí misma o a petición de una parte en el procedimiento, errores lingüísticos, de transcripción o faltas manifiestas en una resolución, se asegurará de que el departamento o la división responsable los corrija. Del texto se desprende que el único propósito legítimo de las correcciones que se realizan con arreglo a esta disposición es corregir los errores de ortografía o de gramática, los errores de transcripción —como los errores relativos a los nombres de las partes o las formas escritas de los signos— o los errores que son tan evidentes por cuanto no cabía entender ningún otro texto salvo el resultante de la rectificación. Sin embargo, cuando el error afecta al fallo de una resolución, solo es posible su revocación y siempre y cuando se cumplan todas las condiciones.
La Oficina define un « error evidente» como en el n.º B.16 de las Declaraciones conjuntas del Consejo y la Comisión contenidas en las actas de la reunión del Consejo en la que se adoptó el RMC, en relación con el artículo 44, apartado 2, del RMC y la regla 53 del REMC: «“por errores manifiestos” debe entenderse aquellos cuya rectificación es manifiestamente necesaria por cuanto no cabía contemplar ningún otro texto salvo el resultante de la rectificación.»
La diferencia entre revocación con arreglo al artículo 80 del RMC y corrección con arreglo a la regla 53 del REMC es que la revocación anula la resolución, mientras que la corrección de errores no a fecta a la validez de la resolución y no inicia un nuevo plazo de recurso.
Un ejemplo de error de transcripción lo encontramos cuando se hace una referencia incorrecta a una marca, por ejemplo, se menciona «HAMMER» en lugar de «HUMMER».
Un ejemplo de error evidente lo encontramos cuando la marca anterior y la marca impugnada se intercambian en la comparación de los signos.
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2.1.2 Aspectos procesales
2.1.2.1 Plazos
Los Reglamentos no señalan un plazo para corregir los errores en las resoluciones, lo cual sugiere que las correcciones pueden realizarse en cualquier momento, siempre que no entren en conflicto con el principio de equidad.
2.1.2.2 Apreciación
Los examinadores deberán verificar, en primer lugar, si el error que debe corregirse es un error lingüístico, un error de transcripción o un error evidente y, en segundo lugar, si se ha interpuesto un recurso contra la resolución.
(a) Apreciación: antes de enviar una c arta de rectificación, el examinador debe verificar si el error que debe c orregirse es un error lingüístico, un error de transcripción o un error evidente.
(b) Recurso: el examinador también debe verificar si la resolución ha sido objeto de recurso. No pueden h acerse correcciones si todavía está pendiente una resolución ante las Salas, aunque las Salas deben s er informadas de l a situación.
2.1.2.3 Procedimiento
Los errores lingüísticos, los errores de transcripción y los errores evidentes se corrigen enviando una r ectificación a la parte o las partes afectadas. La carta de acompañamiento debe explicar brevemente las correcciones.
Una vez que se ha llevado a cabo la corrección, el examinador se asegurará de que los cambios se reflejan en la resolución tal como aparece en la base de datos de la Oficina.
La fecha de la resolución o de la inscripción se mantendrá inalterada después de la rectificación. Por lo tanto, el plazo de recurso no queda afectado.
Cuando la fijación de las costas forma parte del fallo de la resolución, solo puede ser rectificada mediante la revocación.
2.2 Corrección de errores en la s notificaciones distintas de las resoluciones
Los errores en las notificaciones distintas de las resoluciones pueden subsanarse enviando una notificación corregida, en la que se indique que esta última sustituye y anula la anterior. La notificación deberá incluir una disculpa por cualquier inconveniente que ello haya podido causar.
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3 Corrección de errores en las publicaciones y corrección de errores en el Registro o en la publicación del Registro
Artículo 39 del RMC Regla 14, regla 27, regla 84 y regla 85 del REMC
El artículo 39 del RMC establece que la solicitud de marca comunitaria que no haya sido desestimada basándose en motivos absolutos se publicará en el plazo de un mes a partir de que se emita el informe de búsqueda.
La regla 14 del REMC hace referencia a la corrección de errores y faltas en las publicaciones de la solicitud con arreglo al artículo 39 del RMC.
La regla 27 del REMC hace referencia a los errores y faltas en el registro de una MC o en una inscripción realizada en el Registro, de conformidad con la regla 84 del REMC, incluidas las resoluciones del Presidente con arreglo a la regla 84, apartado 4, del REMC, y los errores en la publicación de dichas inscripciones en el Registro.
La principal diferencia entre la corrección de una inscripción en el Registro con arreglo a la regla 27 y la anulación de una inscripción en el Registro con arreglo al artículo 80 del RMC estriba en que la primera hace referencia sólo a una parte de la publicación, mientras que la segunda anula toda la inscripción en el Registro.
Cuando existe un error imputable a la Oficina, esta lo corregirá de oficio (cuando es la propia Oficina quien se da cuenta del error) o a instancia del titular.
Las correcciones de errores en las solicitudes de MC que no exigen una nueva publicación de la solicitud a efectos de oposición no se publicarán en la Sección B.2. del Boletín. Las correcciones con arreglo a la regla 14 del REMC que no exigen una nueva publicación de la solicitud a efectos de oposición se publican en la Sección A.2. Sin embargo, se exigirá la nueva publicación sólo si en la publicación inicial se indicó una lista más limitada de productos y servicios.
En todos los casos, se notificarán a la parte o partes afectadas las correcciones de conformidad con la regla 14 o 27.
A continuación, se incluyen ejemplos de errores que pueden ser corregidos (regla 27, apartado 1, del REMC).
• La MC ha sido publicada para una clase menos de las que se solicitaron.
• Se solicitó el signo «x» y la publicación hace referencia al signo «y», o la lista de productos y servicios publicada no es correcta.
• La MC ha sido registrada sin tener en cuenta una limitación.
Las correcciones de errores en las solicitudes de MC que no exigen una nueva publicación de la solicitud a efectos de oposición se publicarán en la Sección B.4.2. del Boletín. Las correcciones con arreglo a la regla 27 del REMC que exigen una nueva publicación de parte de la solicitud a efectos de opos ición se publicarán en l a subsección A.2.1.2.
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Se exigirá siempre la nueva publicación a efectos de oposición cuando la corrección implique cambios en l a representación de l a marca o una a mpliación de l a lista de productos y servicios ya publicada. Respecto de o tras correcciones, la nueva publicación podrá decidirse caso a caso.
Las correcciones de las inscripciones en el Registro deberán publicarse con arreglo a la regla 27, apartado 3, y a la regla 85, apartado 2, del REMC. Las correcciones de errores relativos en una inscripción en el Registro se publicarán en la subsección B.4.2. del Boletín. Todos los ejemplos incluidos en l a lista anterior (de correcciones y de revocación/anulaciones) exigen publicación.
No será necesario publicar las correcciones con arreglo a la regla 27 del REMC cuando la publicación inicial se incluyó en una s ección incorrecta del Boletín. De conformidad con la Comunicación nº 11/98 del Presidente de l a Oficina de 15 de diciembre de 1998, «el efecto jurídico de la publicación contemplado en el apartado 3 del artículo 9 del Reglamento sobre la marca comunitaria permanece inalterado con independencia de si la publicación se efectúa en la Parte B.1. o en la Parte B.2. del Boletín».
Plazo: de conformidad con la regla 14 o 27 del REMC, no ex iste un plazo para efectuar las correcciones, por lo que pueden realizarse en cualquier momento en que se detecte el error.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE A
DISPOSICIONES GENERALES
SECCIÓN 7
REVISIÓN
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Índice
1 Principios generales.................................................................................. 3 1.1 Introducción................................................................................................3 1.2 En los asuntos ex parte .............................................................................3 1.3 En los asuntos inter partes........................................................................3
2 Procedimiento en caso de que la revisión sea procedente ................... 4 2.1 Examen sobre si el recurso se considera presentado.............................4 2.2 Examen de la admisibilidad del recurso...................................................4 2.3 Examen del fundamento del recurso ........................................................5
2.3.1 Situaciones en que la resolución inicial es susceptible de rectificación ........ 5 2.3.2 Situaciones en que el recurso es fundado pero no procede la revisión ........ 5
2.4 Efectos de una petición de restitutio in integrum ....................................6 2.5 Resolución de concesión de la revisión...................................................6
2.5.1 Plazos para adoptar la resolución .................................................................. 6 2.5.2 Contenido de la resolución ............................................................................. 6
2.6 Recurso contra la resolución ....................................................................7 2.7 Notificación de la resolución.....................................................................7
3 Procedimiento en caso de denegación de la revisión............................ 7
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1 Principios generales
Artículo 61 y artículo 62 del RMC
1.1 Introducción
Es responsabilidad de las Salas de Recurso resolver sobre una resolución impugnada. En virtud de los artículos 61 y 62 del RMC, la Sala remitirá la resolución impugnada al departamento que la adoptó para que éste la revise, lo cual permite que el órgano decisor en primera instancia rectifique la decisión si se tiene el recurso por admisible y fundado. Los asuntos inter partes únicamente podrán ser rectificados si así lo autoriza la otra parte (véase la resolución de 11/08/2009, R 1199/2008- 4,«DIPLOMÃTICO/DIPLOMAT»).
El objeto de l a revisión es evitar que las Salas de R ecurso se inunden de recursos contra resoluciones que la Oficina considera necesario rectificar. Sin embargo, el objeto de la revisión no es rectificar errores cometidos en resoluciones de la Oficina sin modificar el resultado de un asunto, sino acoger la pretensión del recurrente.
1.2 En los asuntos ex parte
Podrá concederse la revisión siempre que se haya interpuesto un recurso contra una resolución comprendida en el ámbito de competencia de las Salas de Recursos según lo dispuesto en el artículo 58 del RMC.
Si la división o instancia de la Oficina cuya resolución se impugne tuviere el recurso por admisible y fundado, deberá rectificar su resolución.
Si no se estimare el recurso en el plazo de un mes después de recibido el escrito en el que se expongan los motivos del recurso, deberá remitirse inmediatamente a la Sala de Recurso, sin pronunciamiento sobre el fondo.
1.3 En los asuntos inter partes
La revisión también podrá concederse en p rocedimientos inter partes, esto es, en procedimientos de opo sición (incluidas las resoluciones de inadmisibilidad de l a oposición), los procedimientos relativos a s olicitudes de caducidad o de nul idad, y determinados procedimientos relativos a la consulta pública de expedientes.
No se concederá la revisión en caso de vencimiento del plazo de un mes a partir de la recepción por la Oficina del escrito en el que se exponen los motivos del recurso.
La revisión requiere la existencia de un recurso pendiente. No tendrá lugar si el recurso fuese retirado antes de la expiración del plazo de un mes previsto para la revisión y si no se ha adoptado una resolución de concesión de la revisión.
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2 Procedimiento en caso de que la revisión sea procedente
Artículo 61 y artículo 130 del RMC
Cuando proceda la revisión, el Secretario de las Salas de Recurso transmitirá los documentos integrantes del recurso y toda comunicación posterior relacionada con el recurso a la división de la Oficina que dictó la resolución.
La correspondiente división examinará si puede concederse la revisión.
La revisión se concederá únicamente si el recurso es admisible y fundado.
2.1 Examen sobre si el recurso se considera presentado
Artículo 60 del RMC Regla 49, apartado 3, del REMC Artículo 2, apartado 18, artículo 8, apartados 3 y 4 del RTMC
Dado que el recurso sólo se considera interpuesto una vez pagada la tasa de recurso, las resoluciones impugnadas para las que no se ha abonado l a tasa no s erán consideradas a efectos de la revisión.
Así pues, la división competente deberá verificar si la tasa de recurso ha sido abonada en su totalidad en el plazo de dos meses a partir del día de l a notificación de l a resolución impugnada.
En caso contrario, la resolución impugnada no será revisada y deberá remitirse inmediatamente (y no necesariamente al final del periodo de un mes) al Secretario de las Salas de Recurso.
Para más información sobre las tasas, véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos.
2.2 Examen de la admisibilidad del recurso
Artículo 58 y artículo 60 del RMC Regla 48, regla 49, apartados 1 y 2 del REMC
La división competente deberá estar convencida de la admisibilidad del recurso, el cual deberá cumplir los requisitos que establecen los artículos 58 a 60 del RMC y los apartados 1, letra c) y 2 de la regla 48 del REMC, así como todos los demás requisitos a los que se refiere el apartado 2 de la regla 49 del REMC.
La división competente no podrá en ningún caso comunicarse con el recurrente para que subsane irregularidades de fondo o de forma del recurso. Esta prohibición incluye las comunicaciones de carácter verbal. Cuando no se cumplan los requisitos de admisibilidad, el asunto deberá remitirse inmediatamente a las Salas de Recurso.
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Si la lengua utilizada no es la adecuada para la interposición del recurso, no se concederá la revisión.
En caso de omisión de datos necesarios, tales como el nombre y la dirección del recurrente, o de que falte la firma o el poder exigido, no se concederá la revisión.
2.3 Examen del fundamento del recurso
La división competente deberá examinar si el recurso es fundado.
2.3.1 Situaciones en que la resolución inicial es susceptible de rectificación
La fecha en que debe verificarse si el recurso es fundado es la fecha en que la división competente examina si debe concederse o no la revisión.
El recurso es fundado si la resolución impugnada era incorrecta.
2.3.2 Situaciones en que el recurso es fundado pero no procede la revisión
Artículo 7, apartado 3, y artículo 37, apartado 1, del RMC Regla 9, regla 11 y regla 13 del REMC
Sólo podrá concederse la revisión si se subsanan totalmente las objeciones formuladas por la Oficina.
Por ejemplo, la revisión no tendrá lugar cuando el solicitante de la MC subsane sólo parcialmente las irregularidades señaladas por la Oficina.
Constituye otro ejemplo el supuesto en que el examinador se opone a la lista de productos y servicios y el solicitante de la MC presenta una nueva lista de productos y servicios que no responde completamente a l as objeciones del examinador y por lo tanto requiere un nuevo examen.
Un nuevo ejemplo es el caso en que la Oficina deniega una s olicitud por motivos absolutos pero el solicitante de la MC invoca, en su recurso, que la marca ha adquirido carácter distintivo como consecuencia del uso que se ha hec ho de la misma y esto debiera acreditarse.
La revisión no procede cuando su concesión conduciría a una mera reapertura del asunto sin resolverlo. La revisión no t iene que conducir necesariamente a un a resolución estimatoria del asunto principal (por ejemplo, en caso de solicitud de MC, registro o, al menos, publicación), sino que puede satisfacer al solicitante en la medida en que pretende la revocación de la resolución. Para determinar si una revisión puede acoger la pretensión formulada, constituyen la base de dicha resolución la resolución impugnada y la motivación que la sustenta.
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2.4 Efectos de una petición de restitutio in integrum
Artículo 60 y artículo 81 del RMC
La revisión no podrá concederse cuando el recurso, o el escrito en el que se exponen los motivos del recurso, no haya sido interpuesto dentro de plazo pero vaya acompañado de una petición de restitutio in integrum que solicite el restablecimiento del plazo de dos meses para la interposición del recurso o para la presentación del escrito. El recurso será remitido inmediatamente a las Salas de Recurso.
2.5 Resolución de concesión de la revisión
Artículo 61, apartado 2, del RMC Regla 51 y regla 52 del REMC
Si la división competente llega a l a conclusión de que debe concederse la revisión, deberá adoptar la resolución correspondiente dentro del plazo de un mes a partir de la recepción del escrito en el que se exponen los motivos del recurso.
2.5.1 Plazos para adoptar la resolución
La resolución deberá enviarse, a más tardar, el último día del plazo. No importa si la fecha de notificación de la resolución es posterior a dicha fecha. Si, por ejemplo, la resolución se notifica por correo certificado, la carta certificada deberá ser enviada por correo, a más tardar, el último día del plazo.
2.5.2 Contenido de la resolución
El contenido de la resolución deberá acordar, al menos, la revocación de la resolución inicial y puede disponer el curso que debe darse al asunto, p. ej., que la solicitud de MC sea registrada o que la cesión cuyo registro ha sido solicitado sea introducida en el expediente de la solicitud de MC.
Asimismo, la resolución deberá establecer si procede o no la restitución de la tasa de recurso.
Sólo se ordenará la restitución de la tasa de recurso si la restitución es justa en razón de la existencia de un vicio sustancial de procedimiento. La consideración básica es si en la fecha de adop ción de l a resolución impugnada existía un v icio imputable a l a Oficina. Si la resolución impugnada fuere considerada incorrecta en sí misma, se concederá la restitución. Si la citada resolución era correcta en l a fecha de s u adopción, se denegará la restitución salvo que se demuestre que un documento u observación que subsana la irregularidad invocada por la Oficina fue recibido por ésta antes de que se adoptara la resolución pero no fue incluido a tiempo en el expediente.
En caso de que las tasas se abonen mediante cuenta corriente, la restitución de la tasa se efectuará mediante el abono en dicha cuenta corriente. Si el cargo de la tasa
Revisión
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de recurso no se hubiere cursado todavía, se indicará en la resolución que no se dará orden de cargo de la tasa de recurso.
2.6 Recurso contra la resolución
Artículo 58 del RMC
Las resoluciones por las que se acuerdan la concesión de una revisión no s on susceptibles de recurso.
Las resoluciones que denieguen la restitución de la tasa de recurso podrán recurrirse de forma separada.
2.7 Notificación de la resolución
Una vez que se conceda la revisión, la división competente informará de ello al Secretario de las Salas de Recurso.
3 Procedimiento en caso de denegación de la revisión
Artículo 61, apartado 2, del RMC
Cuando la división competente considere que no se cumplen los requisitos para la concesión de la revisión, y, a más tardar, cuando haya vencido el plazo de un mes que establece el apartado 2 del artículo 61, deberá remitir el asunto a las Salas de Recurso sin ningún comentario o declaración.
Cuando la división competente remite el asunto sin comentarios, no debe adoptarse ninguna resolución denegatoria de la revisión.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE A
DISPOSICIONES GENERALES
SECCIÓN 8
RESTITUTIO IN INTEGRUM
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Índice
1 Principios generales.................................................................................. 3
2 Criterios que rigen la concesión de la restitutio..................................... 3 2.1 Procedimientos a los que resulta aplicable la restitutio..........................3 2.2 Partes ..........................................................................................................4 2.3 Plazo de que d isponen las oficinas nacionales para remitir una
solicitud a la Oficina...................................................................................4 2.4 Plazos excluidos de la restitutio in integrum ...........................................4 2.5 Pérdida de derechos o de vías de recurso causada directamente por
el incumplimiento del plazo.......................................................................5 2.6 Efecto de la restitutio in integrum .............................................................6
3 Procedimiento............................................................................................ 6 3.1 Plazo............................................................................................................7 3.2 Tasa.............................................................................................................7 3.3 Lenguas ......................................................................................................7 3.4 Pormenores y pruebas...............................................................................8 3.5 Competencia...............................................................................................8 3.6 Publicaciones .............................................................................................8 3.7 Resolución, papel de otras partes en el procedimiento de restitutio .....9
4 Procedimiento de tercería......................................................................... 9
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1 Principios generales
Artículo 81 del RMC Artículo 67 del RDC
Aquella parte en un procedimiento seguido ante la Oficina que, aun habiendo obrado con toda la diligencia requerida por las circunstancias, no hubiera podido observar un plazo con respecto a la Oficina, podrá ser restituida en sus derechos (restitutio in integrum) si la inobservancia del plazo tuviese como consecuencia directa, en virtud de las disposiciones de l os Reglamentos, la pérdida de un derecho o de una v ía de recurso (véase la sentencia de 28 de junio de 2012, en el asunto T-314/10, «Cook’s», apartados 16 y 17).
La restitutio in integrum solo podrá obtenerse previa solicitud ante la Oficina. Dicha solicitud está sujeta al pago de una tasa.
2 Criterios que rigen la concesión de la restitutio
La restitutio in integrum se concederá únicamente en circunstancias excepcionales, que sean imprevisibles e independientes de la voluntad de la parte de que se trate, entre las que se incluyen, por ejemplo, los errores cometidos por un servicio de mensajería privada durante la entrega de una comunicación a la Oficina, un error inducido o cometido por la Oficina o una huelga general.
Por el contrario, no se considerarán circunstancias excepcionales los errores humanos cometidos durante la gestión de l os procedimientos de r enovación por parte del representante o de la propia parte, los problemas informáticos, los retrasos postales, las dificultades económicas y los errores a la hora de calcular los plazos o la incomprensión de la legislación aplicable (resolución de 14 de junio de 2012, R 2235/2011-1, «KA» y sentencia de 19 de septiembre de 2012, en el asunto T-267/11, «VR»).
2.1 Procedimientos a los que resulta aplicable la restitutio
La restitutio puede solicitarse en relación con todos los procedimientos seguidos ante la Oficina.
Esto incluye los procedimientos previstos en el RMC, así como los procedimientos relativos a l os dibujos y modelos comunitarios registrados en virtud del RDC. Sus respectivas disposiciones no se diferencian sustancialmente entre sí.
La restitutio puede solicitarse en los procedimientos ex parte, en los procedimientos inter partes y en los procedimientos de recurso.
Para más información sobre la restitutio en caso de inobservancia del plazo para interponer un recurso y su relación con la revisión, véanse las Directrices, Parte A, Disposiciones generales, Sección 7, Revisión.
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2.2 Partes
Artículo 81 del RMC Artículo 67 del RDC
Puede solicitar la restitutio cualquier parte en un procedimiento ante la Oficina, es decir, no solo el solicitante o el titular de una marca comunitaria o el solicitante o titular de un dibujo o modelo comunitario registrado, sino también el oponente, el solicitante de una declaración de c aducidad o de nul idad, o el presunto infractor que intervenga como parte en un pr ocedimiento de nul idad, de conformidad con lo dispuesto en el artículo 54 del RDC.
El incumplimiento del plazo debe s er imputable a l a parte interesada o a s u representante.
2.3 Plazo de que disponen las oficinas nacionales para remitir una solicitud a la Oficina
Artículo 25, apartado 2, del RMC Artículo 35, apartado 1, y artículo 38, apartado 2, del RDC
El cumplimiento del plazo de un mes para la transmisión de una s olicitud de marca comunitaria o de dos meses para la transmisión de una solicitud de dibujo o modelo comunitario presentadas ante una oficina nacional corresponde a la oficina nacional, y no al solicitante y, en consecuencia, no puede dar lugar a una restitutio in integrum.
De conformidad con el artículo 38, apartado 2, del RDC, la transmisión tardía de una solicitud de dibujo o modelo comunitario tendrá por efecto el aplazamiento de la fecha de presentación de la misma a l a fecha en la que la solicitud sea efectivamente recibida en la Oficina.
Asimismo, en el supuesto de incumplimiento del plazo previsto en el artículo 25, apartado 3, del RMC para la transmisión de una solicitud de marca comunitaria, en lugar de considerarla retirada, la Oficina actuará como si hubiera recibido la solicitud directamente, y no a través de una oficina nacional, lo que significa que se tendrá por fecha de presentación de la solicitud el día en que hubiera sido efectivamente recibida por la OAMI.
2.4 Plazos excluidos de la restitutio in integrum
Artículo 81, apartado 5, del RMC Artículo 67, apartado 5, del RDC
En aras de l a seguridad jurídica, la restitutio in integrum no es aplicable a l os siguientes plazos:
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Artículo 29, apartado 1, y artículo 81, apartado 5, del RMC Regla 6, apartado 1, del REMC Artículo 41, apartado 1, y artículo 67, apartado 5, del RDC Artículo 8, apartado 1, del REDC
• El plazo de pr ioridad, es decir, el plazo de seis meses previsto para la presentación de una solicitud en l a que se reivindique la prioridad de una solicitud anterior de una marca, dibujo o modelo de conformidad con el artículo 29, apartado 1, del RMC o el artículo 41, apartado 1, del RDC. Sin embargo, la restitutio sí se aplica al plazo de tres meses previsto para indicar el número de expediente de la solicitud anterior y presentar copia de la misma al que se refiere la regla 6, apartado 1, del REMC o el artículo 8, apartado 1, del REDC.
Artículo 41, apartados 1 y 3, y artículo 81, apartado 5, del RMC
• El plazo para presentar una opos ición de conformidad con el artículo 41, apartado 1, del RMC, incluyendo el plazo previsto para el pago de l a tasa de oposición a la que se refiere el artículo 41, apartado 3 del RMC.
Artículo 81, apartados 2 y 5, del RMC Artículo 6, apartados 2 y 5, del RDC
• Los plazos previstos para la propia restitutio, a saber:
○ el plazo de dos meses a partir de la desaparición de la causa que imposibilitaba la presentación de la solicitud de restitutio in integrum;
○ el plazo de dos meses a partir de di cha fecha para llevar a cabo el acto omitido;
○ el plazo de un año a partir de la expiración del plazo incumplido para presentar la solicitud de restitutio in integrum.
2.5 Pérdida de derechos o de vías de re curso causada directamente por el incumplimiento del plazo
Artículo 81, apartado 1, del RMC
El incumplimiento del plazo debe haber tenido como consecuencia directa la pérdida de derechos o de vías de recurso.
Artículo 42, apartado 2, artículo 76, apartado 2, y artículo 77, apartado 1, del RMC Regla 19, regla 20, apartados 1 a 5, y regla 40, apartados 1 a 3, del REMC
Esto no rige en aquellos casos en los que los Reglamentos ofrecen alternativas procesales de las que las partes en el procedimiento pueden servirse, aunque n o estén obligadas a ello, como por ejemplo solicitar la celebración de una vista oral, solicitar que el oponente aporte pruebas de haber hecho un uso efectivo de su marca
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anterior o pedir una prórroga del periodo de reflexión, de acuerdo con lo dispuesto en la regla 19 del REMC. El periodo de reflexión en sí mismo tampoco está sujeto a restitutio, porque no es un plazo durante el cual la parte deba realizar actuaciones.
Artículo 36, apartados 1 y 4, y artículo 37 del RMC Regla 9, apartados 3 y 4, regla 10 y regla 11, apartados 1 y 3, del REMC
Por otro lado, la restitutio in integrum sí procede en el supuesto de una contestación tardía a l a notificación de un ex aminador en l a que se anuncia la denegación de l a solicitud si ésta no se subsana dentro del plazo indicado, porque en este caso existe una relación directa entre el incumplimiento del plazo y la eventual denegación.
La restitutio también podrá solicitarse en c aso de al egación tardía de hechos y argumentos o de presentación tardía de observaciones a las declaraciones hechas por la otra parte, en los procedimientos inter partes, siempre y cuando la Oficina no las haya admitido por esta causa. La pé rdida de d erechos consiste en es te caso en l a exclusión de dichas alegaciones y observaciones de los hechos y argumentos sobre los que la Oficina basa su resolución (es práctica común de la Oficina la inadmisión de toda declaración presentada en un p rocedimiento inter partes fuera del plazo establecido a tal fin.)
2.6 Efecto de la restitutio in integrum
La concesión de la restitutio in integrum tendrá como consecuencia jurídica, con efecto retroactivo, que el plazo incumplido se tenga por respetado, y que cualquier pérdida de derechos acaecida durante el período provisional se tenga por no producida. Cualquier resolución adoptada por la Oficina durante el periodo provisional sobre la base del incumplimiento del plazo será declarada nula, con la consecuencia de q ue, una vez concedida la restitutio, ya no s erá necesario interponer un r ecurso contra dicha resolución de la Oficina para obtener su revocación. La restitutio reestablece de manera efectiva al solicitante en todos sus derechos.
3 Procedimiento
Artículo 81, apartado 2, del RMC Regla 83, apartado 1, letra h), del REMC Artículo 67, apartado 2, del RDC Artículo 68, apartado 1, letra g), del REDC
La restitutio in integrum deberá solicitarse por escrito y la solicitud deberá enviarse a la Oficina.
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3.1 Plazo
Artículo 47, apartado 3, y artículo 81, apartado 2, del RMC Artículo 13, apartado 3, y artículo 67, apartado 2, del RDC
La petición deberá presentarse en el plazo de dos meses a partir del cese de la causa que motivó el incumplimiento, y nunca después de transcurrido un período de un año a partir de la expiración del plazo incumplido. El acto omitido deberá llevarse a cabo dentro de e ste mismo periodo. La fecha de cese de l a causa que motivó el incumplimiento será la primera fecha en que la parte tuvo conocimiento o debiera haberlo tenido de los hechos que provocaron el incumplimiento. En caso de que la causa del incumplimiento fuera la ausencia o en fermedad del representante profesional encargado del asunto, la fecha de cese de la causa que motivó el incumplimiento será la fecha en que el representante reanude su actividad laboral. En caso de no haberse presentado solicitud de renovación o de no haberse abonado la tasa de renovación, el plazo de un año empieza a contar el día en que finaliza la protección, y no en la fecha de expiración del plazo suplementario de seis meses.
3.2 Tasa
Artículo 81, apartado 3, del RMC Artículo 2, apartado 19, del RTMC Artículo 67, apartado 3, del RDC Anexo, punto 15, del RTDC
En el transcurso de este mismo plazo, deberá asimismo abonarse la tasa de l a restitutio in integrum. Si no se abona la tasa dentro del plazo, la petición de restitutio in integrum se tendrá por no presentada.
3.3 Lenguas
Artículo 119 del RMC Regla 95 del REMC Artículo 98 del RDC Artículo 80 del REDC
La petición de la restitutio in integrum deberá presentarse en la lengua o en una de las lenguas que pueden s er lengua de p rocedimiento en el que haya tenido lugar el incumplimiento del plazo. Así, por ejemplo, en el procedimiento de registro, la primera lengua indicada en la solicitud; en el procedimiento de opos ición, la lengua del procedimiento de oposición; y en el procedimiento de renovación, cualquiera de las cinco lenguas de la Oficina.
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3.4 Pormenores y pruebas
Artículo 78 y artículo 81 del RMC Artículo 65 y artículo 67 del RDC
La petición de restitutio debe estar motivada e indicar los hechos y las justificaciones que se aleguen en su apoyo. Dado que la concesión de la restitutio es, en esencia, una cuestión fáctica, se recomienda que la parte solicitante aporte pruebas mediante declaraciones prestadas bajo juramento o declaraciones solemnes.
Además, el acto omitido deberá cumplirse, junto con la petición de restitutio, a más tardar antes de que expire el plazo para presentar la petición de restitutio.
3.5 Competencia
Artículo 81 del RMC Artículo 67 del RDC
La competencia para resolver las solicitudes de restitutio corresponde a la división o departamento competente para decidir sobre el acto omitido, es decir, competente en el procedimiento en el que tuvo lugar el incumplimiento del plazo.
3.6 Publicaciones
Artículo 81, apartado 7, del RMC Regla 30, apartados 4 y 5, regla 84, apartado 3, letras k) y l), y regla 85, apartado 2, del REMC Artículo 67 del RDC Artículo 22, apartados 4 y 5, artículo 69, apartado 3, letras m) y n), y artículo 70, apartado 2, del REDC
El RMC y el RDC prevén la publicación en el Boletín de una mención sobre la restitución de los derechos. Dicha mención sólo se publicará en el supuesto de que el plazo incumplido que originó la petición de restitutio diera efectivamente lugar a la publicación del cambio de estatus de la solicitud o del registro de la marca, dibujo y modelo comunitarios, porque sólo en este caso podría un tercero haberse beneficiado de la falta de dichos derechos. Así, por ejemplo, se publicará una mención de la concesión de restitutio en caso de que la Oficina hubiere publicado una mención de la expiración del registro como consecuencia del incumplimiento del plazo para el abono de la tasa de renovación.
En el supuesto de que tenga lugar dicha publicación, se procederá asimismo a la inclusión de la correspondiente anotación en el Registro.
No se publicará mención alguna sobre la recepción de una petición de restitutio.
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3.7 Resolución, papel de otras partes en el procedimiento de restitutio
Artículo 58 y artículo 59 del RMC
Únicamente podrá ser parte en el procedimiento de restitutio el solicitante de la misma, aun cuando el incumplimiento del plazo hubiera tenido lugar en un procedimiento inter partes.
La decisión que deniegue la restitutio se motivará sobre la base del incumplimiento del plazo y, siempre que sea posible, deberá adoptarse dentro de la resolución que ponga fin al procedimiento. En el supuesto de que por alguna razón particular se adoptase una resolución separada sobre la solicitud de restitutio, tal resolución no podrá por lo general ser objeto de un recurso independiente. El solicitante de la restitutio podrá recurrir al mismo tiempo la denegación de su petición de restitutio y la resolución que pone fin al procedimiento.
La resolución por la que se concede la restitutio no puede ser objeto de recurso.
La otra parte en el procedimiento inter partes deberá ser informada de la petición de restitutio, así como del resultado de tal procedimiento. Si finalmente se concediera la restitutio, la única vía de r ecurso que tendría la otra parte consistiría en i nstar un procedimiento de tercería (véase el apartado 4).
4 Procedimiento de tercería
Artículo 81 del RMC Artículo 67 del RDC
Un tercero que, en el transcurso del período provisional desde la solicitud de restitutio hasta la publicación de la mención de restitución de los derechos
• hubiere, de buena fe, comercializado productos o p restado servicios bajo un signo idéntico o similar a la marca comunitaria, o
• en el caso de un di bujo o modelo comunitario, hubiere, de bue na fe, comercializado productos a los que hubiere incorporado o aplicado un dibujo o modelo comprendido en el ámbito de protección del dibujo o modelo comunitario registrado,
podrá interponer tercería contra la resolución que restablezca en s us derechos al solicitante o titular de una marca, dibujo o modelo comunitarios.
Esta solicitud deberá presentarse en el plazo de dos meses, que comenzará a contar:
• en caso de que la publicación haya tenido lugar, en l a fecha de dicha publicación;
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• en caso de que la publicación no haya tenido lugar, en la fecha en que la resolución de concesión de la restitutio surte efectos.
Los Reglamentos no contienen disposición alguna aplicable a este procedimiento. En caso de tercería, la competencia corresponde al departamento o unidad que adoptó la resolución de restituir los derechos. La Oficina iniciará un procedimiento contradictorio inter partes.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE A
DISPOSICIONES GENERALES
SECCIÓN 9
AMPLIACIÓN
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Índice
1 Introducción............................................................................................... 3
2 Procedimiento de examen ........................................................................ 3 2.1 Extensión automática de las MC a los nuevos Estados miembros ........3 2.2 Solicitudes de MC pendientes...................................................................3 2.3 Carácter distintivo adquirido por el uso ...................................................4 2.4 Mala fe.........................................................................................................5 2.5 Transformación ..........................................................................................5 2.6 Otras consecuencias prácticas.................................................................5
2.6.1 Presentación ante las Oficinas nacionales..................................................... 5 2.6.2 Representación profesional............................................................................ 6 2.6.3 Primera y segunda lengua.............................................................................. 6 2.6.4 Traducción ...................................................................................................... 6 2.6.5 Antigüedad...................................................................................................... 6 2.6.6 Búsqueda........................................................................................................ 7
3 Tratamiento regulador de las oposiciones y anulaciones ..................... 7
Anexo 1 ........................................................................................................... 10
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1 Introducción
Este capítulo aborda la normativa reguladora de la adhesión de nue vos Estados miembros a l a Unión Europea y las consecuencias para los titulares de m arcas comunitarias, y trata tanto los motivos absolutos como los relativos.
El artículo 165, apartado 1, del RMC contiene las disposiciones reguladoras en materia de ampliación y marcas comunitarias. Estas disposiciones fueron introducidas en el Reglamento en virtud del proceso de ampliación de 2004 (en aquel momento, el artículo 147a del RMC) y se han mantenido inalteradas durante los sucesivos procesos de ampliación. La única modificación introducida en el texto del Reglamento es la incorporación de los nombres de los nuevos Estados miembros.
Los nuevos Estados miembros se enumeran en un cuadro en el Anexo 1, junto con las fechas de su adhesión y sus lenguas oficiales.
2 Procedimiento de examen
2.1 Extensión automática de las MC a los nuevos Estados miembros
El artículo 165, apartado 1, del RMC establece la regla básica de la ampliación, que consiste en que todas las solicitudes de MC y las MC registradas existentes se hagan automáticamente extensivas a los nuevos Estados miembros sin ningún tipo de intervención adicional de la OAMI, de ningún otro organismo ni de los titulares de los derechos afectados. No es necesario el pago de ninguna cuota adicional ni la realización de otras formalidades administrativas. La ex tensión de las solicitudes de MC o las MC existentes a los territorios de los nuevos Estados miembros garantizará que dichos derechos tengan el mismo efecto en toda la UE y cumplan el principio fundamental del carácter unitario del sistema de la MC.
2.2 Solicitudes de MC pendientes
El artículo 165, apartado 2, del RMC consagra una importante disposición transitoria, en virtud de la cual las solicitudes de MC pendientes en la fecha de adhesión no podrán denegarse alegando ningún motivo de dene gación absoluto si este resulta aplicable meramente por la adhesión de un nu evo Estado miembro («cláusula de anterioridad»). En la práctica, esto significa que si una solicitud de MC no tiene carácter distintivo, o bien es descriptiva, genérica, engañosa o contraria al orden público o a la moral lingüística o territorial de un nuevo Estado miembro, no será rechazada si su fecha de presentación es anterior a la fecha de adhesión de dicho Estado.
En cuanto a las solicitudes presentadas después de la fecha de adhesión, los motivos de denegación del artículo 7, apartado 1, del RMC serán asimismo aplicables al nuevo Estado miembro; aunque la fecha de prioridad de la solicitud de MC fuera anterior a la correspondiente fecha de adhesión. El derecho de prioridad no protege al solicitante de l a MC frente a ni nguna modificación de la legislación aplicable a s u solicitud. Por lo tanto, los examinadores deberán emplear los mismos criterios de
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examen que en el caso de todas las demás lenguas oficiales de la UE, es decir, el examinador tendrá que comprobar si la solicitud de MC es descriptiva, etc., también en el nuevo Estado miembro.
Sin embargo, este principio debería aplicarse con cautela, ya que simplemente significa que los criterios para la aplicación del artículo 7, apartado 1, del RMC no deberían hacerse más estrictos como resultado de l a adhesión de nuevos Estados miembros. La conclusión inversa de que los términos que son descriptivos en una lengua o en el territorio de un nuev o Estado miembro podrán, en c ualquier caso, registrarse como solicitudes de MC presentadas con anterioridad a la fecha de adhesión no siempre será correcta. Por ejemplo, ciertos términos descriptivos de idiomas de los nuevos Estados miembros pueden haberse introducido como un término habitual en las lenguas de los actuales Estados miembros o ser ampliamente conocidos en ellos (por ejemplo, vodka) y puede que indicaciones geográficas deban rechazarse como términos descriptivos (por ejemplo, Balaton o Tokaj). También se deben tener en cuenta las indicaciones geográficas ya protegidas en los nuevos Estados miembros y la protección derivada de la legislación comunitaria o los tratados bilaterales entre los nuevos Estados miembros y la UE o los Estados miembros actuales.
Más concretamente, los motivos de denegación del artículo 7, apartado 1, letras f) y g), del RMC, que hacen referencia a las marcas contrarias al orden público o la moral y a las marcas engañosas, respectivamente, se ven únicamente afectados por esta disposición en la medida en q ue el engaño o i ncumplimiento del orden público o la moral se deba a un significado que solamente se entienda en una lengua de un nuevo Estado miembro. La Oficina interpreta el artículo 7, apartado 1, letra f), del RMC, de conformidad con los criterios de ámbito comunitario, con independencia de los niveles relativos de moralidad aplicables en los distintos países de la UE.
Por último, la disposición del artículo 165, apartado 2, del RMC no afecta a los motivos de denegación del artículo 7, apartado 1, letra e) o letra i), del RMC: el primero se refiere a los signos constituidos exclusivamente por la forma del propio producto, la forma de un producto necesaria para la obtención de un resultado técnico o la forma que afecte al valor intrínseco del producto; y el segundo se refiere a los que incluyan insignias y emblemas distintos de los protegidos por el artículo 6 ter del Convenio de París pero que sean de interés público especial.
2.3 Carácter distintivo adquirido por el uso
Según la práctica de la Oficina, el carácter distintivo adquirido por el uso (artículo 7, apartado 3, del RMC) debe existir en l a fecha de pr esentación de l a MC y subsistir hasta su fecha de registro. Si un solicitante de una solicitud de MC presentada antes de la fecha de la adhesión es capaz de demostrar que el carácter distintivo adquirido ya existía en la fecha de presentación, el artículo 165, apartado 2, del RMC excluye la objeción basada en el motivo de que no ha adquirido carácter distintivo por el uso en los nuevos Estados miembros. Por lo tanto, el solicitante no t iene que demostrar el carácter distintivo adquirido en los nuevos Estados miembros.
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2.4 Mala fe
La Oficina considerará que una solicitud de MC se ha realizado de mala fe si se ha presentado antes de l a fecha de adhes ión en relación con un término de carácter descriptivo o que no sea susceptible de registro por cualquier otro motivo en la lengua de un nuevo Estado miembro, con el único propósito de obtener derechos exclusivos sobre un término no apto para registro o con fines objetables por otro motivo.
Esto no tiene ningún efecto práctico durante la fase de examen, ya que la mala fe no constituye un motivo absoluto de denegación y, en consecuencia, la Oficina no tiene competencia para oponerse ex officio. La Oficina ejercerá sus funciones en r elación con las «solicitudes de mala fe» únicamente cuando se presente una s olicitud de declaración de nul idad (artículo 52, apartado 1, letra b), del RMC). Las Oficinas nacionales de los nuevos Estados miembros están dispuestas a actuar contra la mala fe en el contexto de la ampliación. Los solicitantes de MC deben, por lo tanto, tener en cuenta que, incluso si no existen motivos para la denegación durante el procedimiento de registro, sus registros de MC podrán ser impugnados en una fecha posterior, en base al artículo 52, apartado 1, letra b), del RMC.
2.5 Transformación
Los nuevos Estados miembros podrán solicitar la transformación de una solicitud de MC en solicitudes de marcas registradas nacionales a partir de la fecha de adhesión de dichos Estados. La transformación también es posible cuando la fecha de presentación de la MC es anterior a la fecha de adhesión. Sin embargo, en el caso de un nuevo Estado miembro, la solicitud transformada tendrá el efecto de un der echo anterior, en el marco de la legislación nacional. La legislación nacional de los nuevos Estados miembros ha adoptado disposiciones equivalentes al artículo 165 del RMC, que establece que las MC que hayan extendido su protección tienen el efecto de derechos anteriores en los nuevos Estados miembros únicamente a partir de la fecha de adhesión. En la práctica, ello implica que la «fecha de transformación» en un nuevo Estado miembro no puede ser anterior a la fecha de adhesión de dicho Estado.
Tomando la adhesión de Croacia como ejemplo, esto significa que incluso si una MC transformada tiene como fecha de pr esentación el 1/5/2005 en Croacia, la fecha de transformación no será el 1/5/2005 sino el 1/7/2013, es decir, la fecha de adhesión de Croacia.
La fecha de la ampliación no inicia un nuevo plazo de tres meses para solicitar la transformación, en virtud del artículo 112, apartado 4, del RMC.
2.6 Otras consecuencias prácticas
2.6.1 Presentación ante las Oficinas nacionales
A partir de la fecha de adhesión de un nuev o Estado miembro, una solicitud de MC también podrá presentarse a través de la Oficina nacional de dicho Estado.
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2.6.2 Representación profesional
A partir de la fecha de adhesión de un nuev o Estado miembro, los solicitantes (así como otras partes intervinientes en el procedimiento ante la Oficina) con sede o domicilio en ese Estado ya no necesitarán ser representados por un representante profesional. A partir de la fecha de adhes ión de un nuev o Estado miembro, los representantes profesionales de dicho Estado pueden entrar a formar parte de la lista de representantes profesionales de la Oficina en virtud del artículo 93 del RMC y desde aquel momento pueden representar a terceros ante la Oficina.
2.6.3 Primera y segunda lengua
A partir de la fecha de adhesión de un nuevo Estado miembro (véase el anexo 1), se podrá utilizar la lengua oficial (o las lenguas oficiales) de dicho Estado como primera lengua en las solicitudes de MC presentadas a partir de esa fecha.
2.6.4 Traducción
Las solicitudes de MC cuya fecha de presentación sea anterior a la fecha de adhesión de un nuevo Estado miembro y los registros de MC existentes no se traducirán ni publicarán de nuevo en la lengua de dicho Estado. Las solicitudes de MC presentadas después de la fecha de adhesión de un nuevo Estado miembro sí se traducirán y publicarán en todas las lenguas oficiales de la UE.
2.6.5 Antigüedad
Se puede reivindicar la antigüedad de una marca nacional que se hubiera registrado antes de la adhesión del nuevo Estado miembro en cuestión o incluso antes de la creación de l a Unión Europea. La reivindicación de ant igüedad solamente se puede presentar, no obstante, después de la fecha de adhesión. La marca registrada en el nuevo Estado miembro debe ser «anterior» a la MC. Dado que una MC que haya extendido su protección tiene, en el nuevo Estado miembro, el efecto de un derecho anterior a par tir de l a fecha de adhes ión, la reivindicación de ant igüedad solo tiene sentido cuando la marca nacional previa tenga una fecha de p resentación o de prioridad anterior a la fecha de adhesión.
Ejemplo 1: La misma persona presenta una solicitud de MC el 1/4/1996 y una solicitud de marca nacional en Rumanía el 1/1/1999. Con posterioridad al 1/1/2007 (fecha de adhesión de Rumanía) se podrá reivindicar la antigüedad de la solicitud de marca nacional rumana.
Ejemplo 2: La misma persona es propietaria de un registro internacional que designa a l a UE el 1/1/2005 y posteriormente designa a Rumanía el 1/1/2006. Con posterioridad al 1/1/2007 se podrá reivindicar la antigüedad de dicha designación rumana a pesar de que la propia designación sea posterior al RI que designa a la UE. Ello se debe a que la MC ampliada entra en vigor a partir de la fecha de adhesión del nuevo Estado miembro (en este caso, el 1/1/2007).
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2.6.6 Búsqueda
Las Oficinas nacionales de los nuevos Estados miembros podrán realizar búsquedas (artículo 38, apartados 2 y 3, del RMC) a par tir de l a fecha de adhesión de dicho Estado. Únicamente las solicitudes de MC cuya fecha de presentación coincida con, o sea posterior a, la adhesión se enviarán a las Oficinas nacionales para ser objeto de una búsqueda.
3 Tratamiento regulador de las oposiciones y anulaciones
1. De acuerdo con el artículo 165, apartado 4, letra b), del RMC, no se puede presentar una oposición contra una solicitud de MC ni esta puede ser declarada nula basándose en un derecho nacional anterior adquirido en un nuevo Estado miembro antes de la fecha de adhesión de dicho Estado.
Sin embargo, las solicitudes de MC presentadas en la fecha de adhesión o con posterioridad a la misma no se beneficiarán de esta «cláusula de mantenimiento de los derechos adquiridos» y pueden denegarse mediante oposición o ser objeto de una dec laración de nul idad, basada en un derecho nacional anterior existente en un nuev o Estado miembro, siempre que tal derecho anterior sea «previo» a la fecha de presentación y, en su caso, a la fecha de prioridad.
2. El artículo 165, apartado 3, del RMC que regula las oposiciones establece una excepción a esta regla (transitoria): si se presentara una solicitud de registro de una MC durante los seis meses previos a la fecha de adhesión, podrá presentarse oposición en virtud de un derecho nacional anterior existente en un nuevo Estado miembro en la fecha de la adhesión, a condición de que tal derecho:
a) tuviera una fecha de presentación o prioridad anterior; y b) hubiera sido adquirido de buena fe.
3. La fecha de pr esentación, y no la fecha de pr ioridad, es el elemento decisivo para determinar cuándo se puede presentar una oposición contra una solicitud de MC en base a un derecho anterior en un nuev o Estado miembro. En la práctica, las disposiciones antes mencionadas tienen las consecuencias que se ilustran en los ejemplos siguientes con referencia a la adhesión de Croacia (1/7/2013):
a) No se puede pr esentar una opos ición contra una s olicitud de M C presentada antes del 1/1/2013 (la fecha de prioridad es irrelevante en este contexto) en base a un derecho nacional anterior en un nuev o Estado miembro bajo ninguna circunstancia;
b) Una marca croata puede presentar una opos ición contra una solicitud de MC presentada entre el 1/1/2013 y el 30/6/2013 (es decir, durante los seis meses anteriores a la fecha de adhesión), siempre y cuando la fecha de presentación o prioridad de l a marca croata sea anterior a la fecha de presentación o prioridad de la solicitud de MC contra la que ha presentado oposición y la marca nacional se solicitara de buena fe;
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c) Podrá presentarse oposición contra una solicitud de MC con una fecha de presentación del 1/7/2013 o posterior o declararla nula en base a una marca registrada en Croacia si la fecha de presentación o de prioridad de dicha marca fuera anterior con arreglo a las disposiciones normalmente aplicables. La adquisición de buena fe no es una condición. Esto se aplica a todas las marcas nacionales y a los derechos anteriores no registrados que se hubieran presentado o adq uirido en u n nuevo Estado miembro antes de su adhesión;
d) Podrá presentarse oposición contra una solicitud de MC con una fecha de presentación del 1/7/2013 o pos terior, pero con una fecha de p rioridad anterior al 1/7/2013 en base a una marca nacional registrada en Croacia si la fecha de presentación o de prioridad de dicha marca es anterior con arreglo a las disposiciones normalmente aplicables.
Esta excepción transitoria se limita al derecho a pr esentar una opos ición y no incluye el derecho a presentar una solicitud de cancelación por motivos relativos. Lo anterior significa que una v ez vencido el plazo de opos ición antes mencionado de seis meses sin que se haya presentado una oposición, la solicitud de MC ya no podrá ser impugnada por una oposición o una solicitud de declaración de nulidad.
4. Según el artículo 165, apartado 5, del RMC, puede prohibirse el uso de una MC cuya fecha de pr esentación sea anterior a l a fecha de adhes ión de u n nuevo Estado miembro en v irtud de l os artículos 110 y 111 del RMC, en base a una marca nacional anterior registrada en el nuevo Estado miembro en el que esta tenga una fecha de presentación o de prioridad anterior a la fecha de la adhesión y se registrara de buena fe.
Esta disposición se aplica asimismo a:
• las solicitudes de m arca nacional presentadas en los nuevos Estados miembros, condicionadas a su posterior registro;
• los derechos no r egistrados adquiridos en los nuevos Estados miembros contemplados en el artículo 8, apartado 4, o en el artículo 53, apartado 2, del RMC, a condición de que la fecha de adquisición del derecho con arreglo a la legislación nacional sustituya a l a fecha de presentación o de prioridad.
5. En el caso de que una oposición se base en una marca nacional registrada u otro derecho nacional en un nue vo Estado miembro, la cuestión de s aber si puede invocarse válidamente como motivo de oposición contra una solicitud de MC es una cuestión concerniente al fundamento de l a oposición y no una cuestión de admisibilidad.
6. La buena fe de la marca nacional anterior se presumirá, lo que significa que, si se pone en d uda la buena fe, incumbe a la otra parte en el procedimiento (el solicitante de l a solicitud de MC impugnada en el caso del artículo 165, apartado 4, del RMC o el titular de la MC registrada en el caso del artículo 165, apartado 5, del RMC) demostrar que el titular del derecho nacional anterior adquirido en un nuevo Estado miembro actuó de mala fe en el momento de la presentación de la solicitud nacional o de la adquisición del derecho de cualquier otro modo.
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7. El artículo 165 del RMC no contiene disposiciones transitorias relativas a la exigencia de uso (artículos 15 y 42 del RMC). En el procedimiento de oposición, la obligación de us o efectivo de l a marca nace cuando el solicitante de la solicitud de MC impugnada pide que el oponente acredite el uso de la marca anterior según lo dispuesto en el artículo 42, apartados 2 y 3, del RMC y la regla 22. En relación con la ampliación, se plantean cuestiones relacionadas con el momento y el lugar del uso de la marca anterior.
A este respecto, cabe distinguir dos supuestos:
a) La marca anterior es una marca nacional registrada en un nue vo Estado miembro
Que el oponente deba probar el uso efectivo de una marca anterior registrada en un nuevo estado miembro es una situación que solo puede darse en el contexto de una oposición dirigida contra una solicitud de MC con fecha de presentación posterior a la fecha de la adhesión o contra una solicitud de MC presentada durante los seis meses anteriores a la fecha de adhesión.
La marca nacional anterior debe habe r sido objeto de u n uso efectivo en el territorio en el que está protegida en el curso de los cinco años anteriores a la fecha de publicación de la solicitud de MC impugnada. A este respecto, carece de relevancia el hecho de que el uso se refiera a un período en el cual el Estado en cuestión ya fuera miembro de la Unión Europea. En otras palabras, la prueba del uso puede referirse también a un período anterior a la fecha de adhesión (en el caso de Croacia, el 1/7/2013).
b) La marca anterior es una MC
En caso de que el titular de la MC anterior pueda demostrar su uso únicamente en el territorio de un nuevo Estado miembro o de varios de los nuevos Estados miembros, puesto que la obligación de uso se refiere al período de cinco años anterior a la fecha de publicación de la solicitud de MC impugnada, el uso en un nuevo Estado miembro (o en varios de los nuevos Estados miembros) solo podrá tenerse en c uenta si el Estado en cuestión era ya un Estado miembro de l a Unión Europea en la fecha de publicación de la solicitud de MC impugnada (el artículo 43, apartado 1, del RMC exige el uso «en la Comunidad»). Con anterioridad a su fecha de adhes ión, los nuevos Estados no s on «Estados miembros de la Comunidad», por lo que no es posible probar su uso «en la Comunidad».
Por lo tanto, el período de cinco años debe contarse únicamente a partir de la correspondiente fecha de adhesión.
8. En lo concerniente al procedimiento de oposición, no s e plantean problemas transitorios especiales. El derecho conferido por el artículo 119, apartado 7, del RMC, de elegir como lengua de procedimiento una lengua que no sea una de las cinco lenguas de la Oficina se aplica a partir de la fecha de adhesión con respecto a las demás lenguas oficiales de la Unión Europea.
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Anexo 1
Estados miembros Fecha de adhesión Lenguas
República Checa, Chipre, Estonia, Letonia, Lituania, Hungría, Malta, Polonia, Eslovaquia y Eslovenia.
1/5/2004 Checo, estonio, húngaro, letón, lituano, maltés, polaco, eslovaco y esloveno
Bulgaria y Rumanía 1/1/2007 Búlgaro y rumano
Croacia 1/7/2013 Croata
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE B
EXAMEN
SECCIÓN 1
PROCEDIMIENTOS
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Índice
1 Introducción: Aspectos generales del procedimiento de examen........ 3
2 Búsqueda ................................................................................................... 4 2.1 Búsqueda comunitaria...............................................................................4 2.2 Búsqueda nacional.....................................................................................4
3 Principios generales relativos al proceso de examen............................ 5 3.1 Aspectos procesales relativos a l as observaciones de t erceros y
revisión de motivos absolutos ..................................................................5 3.2 Decisiones ..................................................................................................6
3.2.1 Recursos......................................................................................................... 6
3.3 Registros internacionales que designan a la Unión Europea .................7
4 Publicación ................................................................................................ 7
5 Modificaciones a la solicitud de marca comunitaria .............................. 8 5.1 Retirada de una solicitud de marca comunitaria......................................8
5.1.1 Declaración de retirada .................................................................................. 8 5.1.2 Carácter incondicional y vinculante de la declaración ................................... 9 5.1.3 Medidas a adoptar.......................................................................................... 9
5.2 Limitación de la lista de productos y servicios en una solicitud de marca comunitaria....................................................................................10 5.2.1 Admisibilidad procesal de una limitación...................................................... 10
5.3 Otras modificaciones ...............................................................................10 5.3.1 Nombre, dirección y nacionalidad del solicitante o representante ............... 11 5.3.2 Otros elementos de una solicitud ................................................................. 12 5.3.3 Registro y publicación de modificaciones .................................................... 13
5.4 División de la solicitud de marca comunitaria .......................................13 5.4.1 Requisitos ..................................................................................................... 13 5.4.2 Aceptación .................................................................................................... 14 5.4.3 Nuevo expediente y publicación................................................................... 15
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1 Introducción: Aspectos generales del procedimiento de examen
La presente parte de las Directrices describe el procedimiento de examen, desde la presentación de una solicitud hasta la publicación de la marca comunitaria (MC).
Una vez que se presenta una solicitud de marca comunitaria, se acuerda una fecha de presentación provisional y la Oficina emite un recibo. En esta primera fase, la Oficina sólo comprueba si se han cumplido determinados requisitos del Reglamento relativos a la fecha de presentación. La fecha de presentación solo será la definitiva una vez que se haya realizado el pago de la tasa de solicitud.
El solicitante deberá comprobar con detenimiento el recibo y, si hay algún dato incorrecto, deberá notificarlo de i nmediato a l a Oficina. El solicitante solo podrá corregir los datos que repercutan en la fecha de presentación, como el nombre del solicitante, la representación de l a marca y la lista de pr oductos y servicios, si la Oficina es notificada en la misma fecha en la que se presentaron los datos incorrectos. A partir de esta fecha, cualquier modificación está sujeta a las disposiciones del RMC y el REMC, en particular los artículos 17 y 43 del RMC. Para más información, véanse el apartado 5 siguiente y las Directrices, Parte B, Examen, Sección 2, Formalidades.
Una vez que se ha ex pedido el recibo, la Oficina lleva a c abo una c omprobación lingüística de los elementos verbales de la marca en todas las lenguas oficiales de la UE, seguida de una búsqueda comunitaria.
El pago de la tasa de solicitud y de la tasa de búsqueda nacional (si procede) se valida a más tardar un mes después de la presentación de la solicitud de marca comunitaria. Si el solicitante ha solicitado una búsqueda nacional y ha pagado la tasa pertinente, la Oficina remitirá la solicitud a las Oficinas de los Estados miembros para que lleven a cabo las búsquedas nacionales. Para más información sobre búsquedas, véase el apartado 2 siguiente. Para más información sobre tasas, véanse las Directrices, Parte A, Normas Generales, Sección 3, Pago de Tasas, Costas y Gastos.
Durante el proceso de examen, la Oficina examina los siguientes aspectos: fecha de presentación, formalidades, clasificación, prioridad y/o antigüedad cuando proceda, las normas que regulan el uso de la marca para marcas colectivas y los motivos de denegación absolutos. Todos estos pasos de examen se pueden llevar a cabo en paralelo, dado que no existe una secuencia estricta en los procesos de examen.
Cualquier deficiencia deberá notificarse al solicitante, quien dispondrá de dos meses para solventar dicha deficiencia y/o presentar observaciones. Todas las decisiones por las que se deniegue en parte o en su totalidad una solicitud de marca comunitaria deben indicar los motivos por los que se deniega la solicitud de marca comunitaria y se deberá informar al solicitante de l a posibilidad de recurso. Para más información, véanse los apartados 3.2 y 3.2.1 siguientes.
Las solicitudes que cumplan los requisitos del Reglamento serán aceptadas para su publicación y se traducirán a todas las lenguas oficiales de la UE.
El último paso en el procedimiento de examen es la publicación de la solicitud en la Parte A del Boletín de Marcas Comunitarias. La publicación tiene lugar un mes después de l a notificación de l os informes de búsqueda (búsqueda comunitaria y
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búsqueda nacional, si se solicitan) y el solicitante podrá, si así lo desea, abandonar su solicitud. Para más detalles sobre la publicación, véase el apartado 4 siguiente.
2 Búsqueda
Artículo 38 del RMC Regla 5 bis y Regla 10, del REMC Comunicaciones 4/99, 5/00 y 4/01 del Presidente de la Oficina
El informe de bús queda identifica los derechos anteriores que podrían entrar en conflicto con la solicitud de marca comunitaria. Sin embargo, incluso si el informe de búsqueda no indica ningún derecho anterior similar, se podría presentar una oposición en contra de la solicitud de marca comunitaria tras su publicación.
Los resultados del informe de búsqueda solo tienen fines informativos y pretenden ofrecer al solicitante la opción de retirar la solicitud de marca comunitaria antes de su publicación. Las cartas de vigilancia informan a los titulares de marcas comunitarias anteriores sobre solicitudes de nuevas marcas similares.
Los elementos figurativos se clasifican conforme a la Clasificación de Viena.
2.1 Búsqueda comunitaria
Tras emitir el recibo, la Oficina elabora un informe de búsqueda comunitaria que cubre:
1. Solicitudes con fechas de presentación o de p rioridad anteriores a las de l a solicitud en cuestión;
2. Marcas comunitarias previamente registradas; 3. Registros internacionales anteriores que designan a la Unión Europea.
La búsqueda comunitaria tiene en cuenta la fecha de p resentación, los elementos verbales de la marca, los elementos figurativos de la marca (si procede) y las clasificaciones de productos y servicios conforme a la clasificación de Niza. La búsqueda se designa para identificar marcas anteriores presentadas para las mismas categorías o para categorías que la Oficina considera que contienen productos y/o servicios similares.
El informe de búsqueda comunitaria se envía al solicitante en una carta estándar. Una vez que se ha publicado la solicitud, la Oficina envía una carta de vigilancia a los titulares de marcas comunitarias anteriores o solicitudes de marca comunitaria que se citan en el informe de búsqueda.
2.2 Búsqueda nacional
Las solicitudes de marca comunitaria que incluyan una petición válida de búsquedas nacionales se envían a l as oficinas nacionales participantes una vez que se ha acordado la fecha y se ha validado la clasificación. Una petición se considera válida si se realiza en el momento de la presentación y se ha pagado la tasa pertinente.
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Los informes de búsqueda nacional son preparados por las oficinas que participan en el sistema de búsqueda.
Una petición de búsquedas nacionales implica que todas las oficinas nacionales participantes llevarán a cabo la búsqueda en un plazo de dos meses de conformidad con la Regla 5 bis del REMC. Esta política de «todo o nada» significa que el solicitante no puede elegir qué oficinas participantes llevarán a cabo la búsqueda.
Los titulares de r egistros internacionales que designan a l a UE que deseen solicitar búsquedas nacionales deben enviar la petición y pagar la tasa pertinente a la OAMI en el plazo de un mes a partir de la fecha de notificación del RI de la OMPI.
La responsabilidad acerca del formato y contenido del informe de búsqueda nacional recae en las oficinas nacionales. El papel de la Oficina se limita a recibir los informes nacionales y a enviarlos junto con el informe de búsqueda comunitaria. El solicitante es libre de pedir más información directamente a las oficinas nacionales.
3 Principios generales relativos al proceso de examen
La presente sección describe solo los aspectos procesales relativos al examen de los motivos absolutos de denegación. Para los aspectos sustantivos del examen de los motivos absolutos de denegación, véanse las Directrices, Parte B, Examen, Sección 4, Motivos absolutos de denegación y Marcas comunitarias colectivas.
El Reglamento de l a marca comunitaria (RMC) tiene como objetivo permitir a l os propietarios registrar un derecho con validez en toda la Unión Europea en la medida en que no usurpe los derechos de terceros. Aunque los derechos solo se pueden conferir de conformidad con las disposiciones del RMC, la función de la Oficina es no obstruir sino facilitar las solicitudes.
Durante el examen de cada solicitud hay que tener en cuenta la marca y los productos o servicios de l a solicitud. La Oficina tiene que tener en c uenta la naturaleza de l a marca en cuestión, la manera en la que se suministran los productos y se prestan los servicios y el público destinatario, por ejemplo, si se trata de especialistas o de público general.
3.1 Aspectos procesales relativos a l as observaciones de terceros y revisión de motivos absolutos
Artículo 40 del RMC Comunicación 02/09 del Presidente de la Oficina
Una vez que se ha publicado una s olicitud, terceras partes pueden plantear observaciones relativas a l a existencia de un motivo absoluto de denegación. Las observaciones de terceras partes recibidas antes de la publicación de una solicitud de marca comunitaria son tramitadas durante el examen de l os motivos absolutos de denegación. La Oficina acepta observaciones recibidas durante el periodo de oposición (tres meses a partir de la fecha de publicación) o presentadas antes de que se cierren las oposiciones pendientes. Las observaciones deben presentarse en uno de las lenguas de la Oficina, a saber: alemán, español, francés, inglés o italiano.
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La Oficina expide un r ecibo al autor de l as observaciones confirmando que las observaciones se han recibido y han s ido remitidas al solicitante. El autor de l as observaciones no pasa a ser una parte del proceso ante la Oficina pero puede consultar las herramientas de bús queda en línea para comprobar el estado de l a solicitud de m arca comunitaria pertinente. La Oficina no informa al autor de las observaciones de ni nguna de l as medidas adoptadas, en c oncreto de s i las observaciones han dado lugar a una objeción o no.
Todas las observaciones son remitidas al solicitante, al que se invita a pr esentar comentarios si lo considera necesario. La Oficina considera si las observaciones están bien fundamentadas, es decir, si existe un motivo absoluto de denegación. En caso afirmativo, la Oficina emite una objeción y puede rechazar la solicitud de marca comunitaria, si no se solventa la objeción mediante los comentarios del solicitante o mediante la restricción de la lista de productos y servicios.
Si una cuestión planteada en las observaciones ya ha sido considerada durante el examen de una s olicitud, no es probable que plantee serias dudas después de l a publicación.
Asimismo, la Oficina podría reabrir el examen sobre los motivos absolutos por cualquier otro motivo y en cualquier momento antes del registro, por ejemplo si una tercera parte presenta observaciones antes de la publicación de la solicitud o si la propia Oficina considera que se ha pasado por alto un motivo de denegación. Tras la publicación de l a solicitud, esta opción debería ejercerse únicamente en casos muy claros.
Para más información, véanse las Directrices, Parte B, Examen, Sección 4, Motivos de denegación absolutos.
3.2 Decisiones
En todos los casos en los que la Oficina emite decisiones desfavorables a l os solicitantes se deben indicar los motivos de la decisión. Se deben abordar los argumentos planteados por el solicitante en sus observaciones en la medida en que sean pertinentes. Las decisiones no solo deben hacer referencia a los apartados pertinentes del RMC y del REMC, sino también, excepto en los casos más evidentes (por ejemplo, cuando falte un doc umento o no se haya pagado una tasa), ofrecer motivos explícitos.
Por ejemplo, en el caso de que se tome una decisión sobre la base de búsqueda en Internet, la Oficina debe proporcionar al solicitante una prueba de estas búsquedas.
3.2.1 Recursos
Artículo 58 y artículo 65 del RMC Decisión 2009-1 del 16/6 de 2009 del Presidium de las Salas de Recurso
Los solicitantes tienen derecho a recurrir una decisión por la que se dé por terminado un procedimiento y que les sea desfavorable. A efectos prácticos, cualquier decisión emitida por la Oficina que dé por terminado un procedimiento y que no sea aceptada por el solicitante se inscribe en esta categoría. Cualquier comunicación escrita de esta
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decisión también debe informar al solicitante de que dispone de un plazo de dos meses para recurrir la decisión.
Los recursos tienen un efecto de suspensión. Dentro del periodo en el que se puede presentar un recurso, la Oficina no debería adoptar ninguna medida que no se pueda revertir de manera sencilla (por ejemplo, publicación o ent rada en el Registro). Lo mismo se aplica para el periodo hasta el que se toma una decisión en caso de que el asunto sea remitido al TG o al TJUE de conformidad con el artículo 65.
3.3 Registros internacionales que designan a la Unión Europea
Los detalles sobre el examen de una solicitud de marca comunitaria resultante de la transformación de un registro internacional que designe a la Unión Europea se indican en las Directrices, Parte M, Marcas Internacionales.
4 Publicación
Artículo 39 del RMC Regla 12, regla 14 y regla 46 del REMC
La publicación se lleva a cabo una vez que los informes de búsqueda se han enviado al solicitante, siempre y cuando la solicitud cumpla todas las condiciones necesarias para la aceptación.
Las solicitudes se publican en todas las lenguas oficiales de la UE.
El examinador debe garantizar que existan, si procede, los siguientes detalles:
(a) número de archivo de la solicitud; (b) fecha de presentación; (c) reproducción de la marca; (d) indicación de marca colectiva; (e) indicación del tipo de marca distinto a l as marcas denominativas, por ejemplo
marcas figurativas, marcas tridimensionales, hologramas, marcas sonoras, marcas de color per se, otras marcas;
(f) descripción de la marca; (g) indicaciones de color; (h) elementos figurativos conforme a la Clasificación de Viena; (i) renuncia a invocar derechos exclusivos; (j) adquisición de carácter distintivo a través del uso; (k) nombre del solicitante, dirección y nacionalidad; (l) nombre y dirección del representante; (m) primera y segunda lengua; (n) productos y servicios conforme a la Clasificación de Niza; (o) datos de prioridad, si procede; (p) datos de prioridad de exposición; (q) datos de antigüedad; (r) datos de transformación.
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Una vez que estos elementos estén ordenados y se haya recibido la traducción a todas las lenguas de la UE, la solicitud se remitirá a la Sección de Publicaciones.
5 Modificaciones a la solicitud de marca comunitaria
Esta parte de las Directrices solo cubre las cuestiones pertinentes relativas a l as modificaciones de una solicitud de marca comunitaria.
Para las modificaciones de las marcas comunitarias registradas, véanse las Directrices, Parte E, Operaciones de Registro, Sección 1, Cambios en un registro.
5.1 Retirada de una solicitud de marca comunitaria
Artículo 43, artículo 58, apartado 1, artículo 64, apartado 3, y artículo 119, del RMC
5.1.1 Declaración de retirada
Es posible retirar una solicitud de marca comunitaria en cualquier momento antes de que se tome una decisión final sobre su asunto.
Tras la decisión en primera instancia de la Oficina, a nivel de recurso, se puede retirar una solicitud dentro del plazo de recurso de dos meses, incluso aunque no se haya presentado realmente un recurso o hasta que la Sala de Recursos haya tomado una decisión sobre el recurso; esto se aplica tanto a los procedimientos ex parte como inter partes (resolución de 27/9/2006, R 0331/2006-G – «Optima»).
A nivel del Tribunal General (TG), una solicitud se puede retirar dentro del plazo de recurso de dos meses o hasta que se complete el proceso de recurso ante el Tribunal.
A nivel del Tribunal de Justicia (TJUE), una solicitud se puede retirar dentro del plazo de dos meses para la presentación de un r ecurso ante el TJUE o hasta que el TJUE haya dictado una dec isión final y vinculante (auto de 18/9/2012, C-588/11, «OMNICARE»).
Cuando el asunto esté pendiente ante el TG o ante el TJUE, la retirada se debe solicitar ante la Oficina (no ante el TG ni el TJUE). A continuación, la Oficina informa al TG o al TJUE de si considera la retirada aceptable o válida, pero la retirada no tendrá efecto hasta que el TG o el TJUE hayan dictado una decisión final sobre el asunto (por analogía, véase la sentencia de 16/5/2013, T-104/12, «VORTEX»).
Cualquier declaración de retirada presentada antes del transcurso del período de recurso resultará inadmisible.
La declaración de retirada se deberá realizar por escrito. La Oficina no proporciona ningún formulario especial. La declaración no está sujeta a ninguna tasa.
La declaración de retirada se puede realizar en la primera o segunda lengua indicada por el solicitante en su solicitud de marca comunitaria.
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Lo mismo se aplica durante los procedimientos de opos ición. Sin embargo, para obtener más detalles de procedimiento cuando se hace una restricción en una lengua distinta a la lengua del procedimiento de opos ición, véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales.
Para los detalles sobre restricciones, véase el apartado 5.2 siguiente.
5.1.2 Carácter incondicional y vinculante de la declaración
Una declaración de retirada se hace efectiva una vez que es recibida por la Oficina, siempre y cuando no llegue el mismo día a la Oficina una retirada de la declaración.
Esto significa que, si una declaración de retirada y una carta por la que se retira dicha declaración llegan a la Oficina el mismo día (independientemente de la hora real de recepción), la carta anula a la declaración.
Una vez que se hace efectiva, una declaración no se puede retirar.
Una declaración de retirada es nula cuando contiene condiciones o limitaciones temporales. Por ejemplo, no debe exigir a la Oficina que adopte una decisión concreta o, en procedimientos de oposición, que exija a la otra parte que realice una declaración procesal. Este requisito es considerado, en cambio, como una mera sugerencia para resolver el caso; la Oficina informa al oponente en consecuencia y puede invitar a l as partes a que lleguen a un acuerdo amistoso. Asimismo, una declaración no se hace efectiva, si se hace con respecto a productos y/o servicios (retirada parcial) con la que condición de que la Oficina acepte la solicitud para el resto de productos y/o servicios. En cambio, esta declaración es considerada una sugerencia para que la Oficina llegue a una lista aceptable de productos y servicios.
Cuando un solicitante reaccione a una acción oficial presentando una lista limitada de productos y servicios (retirada parcial), la Oficina verifica si el solicitante está declarando la retirada inequívoca de l os productos y servicios restantes o si la lista modificada de productos y servicios es una propuesta o una contrapropuesta por parte del solicitante con el acuerdo de la Oficina.
5.1.3 Medidas a adoptar
La Oficina tramitará una declaración de retirada, garantizará la publicación de la retirada parcial o t otal en el Boletín, si la solicitud de m arca comunitaria ya está publicada, y archivará el expediente de la solicitud de marca comunitaria en el caso de una retirada total.
Para las consecuencias de una retirada total o par cial en el procedimiento de oposición, véanse las Directrices, Parte C, Oposición, Sección 1, Asuntos procesales.
Para más información sobre la devolución de l as tasas de solicitud véanse las Directrices, Parte A, Normas Generales, Sección 3, Pago de las tasas y costas.
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5.2 Limitación de la lista de productos y servicios en una solicitud de marca comunitaria
Artículo 43 y artículo 119 del RMC
El solicitante podrá limitar la lista de productos y servicios de s u solicitud de marca comunitaria en cualquier momento, bien por voluntad propia, o en respuesta a una objeción relativa a la clasificación o motivos absolutos, o durante el procedimiento de oposición.
En principio, las declaraciones de limitación siguen las mismas normas que las declaraciones de retirada; véase el apartado 5.1 anterior.
Cuando el asunto esté pendiente ante el Tribunal General (TG) o el Tribunal de Justicia (TJUE), la limitación se deberá presentar ante la Oficina (no ante el TG o el TJUE). A continuación, la Oficina informará al TG o al TJUE de si considera que la limitación es aceptable y válida, pero la limitación no se aplicará hasta que el TG o el TJUE hayan dictado una decisión final sobre el asunto (por analogía, véase la sentencia de 16/5/2013, T-104/12, «VORTEX»)
5.2.1 Admisibilidad procesal de una limitación
La limitación deberá ser admisible desde el punto de v ista procesal; véase el apartado 5.1.2 anterior.
Como principio, una limitación se hace efectiva en la fecha en que es recibida en la Oficina. La limitación solo se podrá retirar, si la retirada se recibe en la misma fecha que la propia limitación.
Se deben cumplir dos requisitos para admitir una limitación:
1. La nueva formulación no debe constituir una ampliación de la lista de productos y servicios.
2. La limitación debe constituir una descripción válida de pr oductos y servicios y aplicarse a pr oductos o servicios aceptables que apar ecen en l a solicitud de marca comunitaria original. Para más detalles sobre limitaciones de una solicitud de marca comunitaria, véanse las Directrices, Parte B, Examen, Sección 3, Clasificación.
De otro modo, la Oficina deberá rechazar la limitación propuesta y la lista de productos y servicios no se modificará.
5.3 Otras modificaciones
Artículo 43 del RMC Regla 13 y regla 26 del REMC
Este apartado y las disposiciones legales citadas anteriormente se refieren exclusivamente a las modificaciones de la solicitud de marca comunitaria que inste el
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solicitante por iniciativa propia, y no a las modificaciones o limitaciones que se realicen a raíz de un ex amen, un p rocedimiento de oposición o r ecurso en virtud de la resolución de un examinador, de la División de Oposición o de la Sala de Recurso.
Del mismo modo, este apartado no se aplica a las correcciones de e rrores en las publicaciones de la Oficina, que se efectuarán de oficio conforme a la regla 14 del REMC.
Las modificaciones requieren una petición a este efecto realizada por escrito en la primera o segunda lengua indicada por el solicitante en s u solicitud de m arca comunitaria. No están sujetas a ninguna tasa.
Pueden modificarse los siguientes elementos de una solicitud de marca comunitaria:
• el nombre y la dirección del solicitante o su representante (véase el apartado 5.3.1 siguiente);
• errores de expresión o de transcripción o errores manifiestos, siempre que dicha rectificación no afecte sustancialmente a la marca (para más detalles sobre estas modificaciones, véanse las Directrices, Parte B, Examen, Sección 2, Formalidades);
• la lista de productos y servicios (véase el apartado 5.2 anterior).
5.3.1 Nombre, dirección y nacionalidad del solicitante o representante
Regla 1, apartado 1, letras b) y e), regla 26 y regla 84, del REMC Artículo 1, apartado 1, letra b), artículo 19, apartado 7, y artículo 69, apartado 2 letra d), del REDC
El nombre y dirección de un s olicitante o del representante pueden modificarse a voluntad, siempre que
• en lo que respecta al nombre de un solicitante, el cambio no sea consecuencia de una cesión,
y
• en lo que respecta al nombre de un representante, el representante no sea sustituido por otro representante.
La indicación de la nacionalidad de una per sona jurídica también puede modificarse libremente, siempre que no sea consecuencia de una cesión.
Un cambio de nombre del solicitante que no afecta a la identidad del solicitante es un cambio aceptable, mientras que un cambio en la identidad del solicitante es una cesión. Para más detalles y el procedimiento aplicable en c aso de duda de si un cambio es considerado una cesión, véanse las Directrices, Parte E, Operaciones de Registro, Sección 3, Marcas comunitarias como objetos de pr opiedad, Capítulo 1, Cesión.
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Los cambios del nombre del representante también se limitan a los que no afectan a la identidad del representante designado, por ejemplo cuando cambia su apellido (por matrimonio o di vorcio) o cuando cambia la denominación de una a sociación de representantes. Estos cambios de nombre tienen que distinguirse de la sustitución de un representante por otro, lo que está sujeto a las normas que regulan la designación de representantes. Para más detalles sobre los representantes, véanse las Directrices, Parte A, Disposiciones Generales, Sección 5, Representación Profesional.
Los cambios de no mbre, dirección o nacionalidad pueden ser consecuencia de un cambio de circunstancias o de un error cometido en el momento de la presentación de la solicitud.
El cambio de nombre y dirección debe solicitarlo el solicitante o su representante y ha de incluir el número de solicitud de la marca comunitaria, al igual que el nombre y la dirección del solicitante o del representante, ambos tal y como constan en el expediente y han quedado modificados.
No es necesario aportar una prueba que acredite el cambio. Las solicitudes de cambio de nombre o dirección no están sujetas al pago de ninguna tasa.
El solicitante debe indicar su nombre y dirección oficial en una solicitud en un formato específico según las disposiciones legales antes mencionadas, y podrá cambiarla posteriormente usando el mismo formato. Se registrarán tanto el nombre como la dirección.
Las personas jurídicas solo pueden t ener una dirección oficial. En caso de duda, la Oficina podrá solicitar una prueba de la forma jurídica, el estado de constitución y/o la dirección. El nombre y la dirección oficiales se copian como la dirección de servicio por defecto. Lo i dóneo es que el solicitante tuviera una sola dirección de servicio. Los cambios en la designación oficial del solicitante o dirección oficial se registrarán para todas las solicitudes de marca comunitaria, marcas comunitarias registradas y dibujos y modelos comunitarios registrados y, a diferencia de la dirección de servicio, no se pueden registrar únicamente para paquetes específicos de derechos. En principio, estas normas se aplican a los representantes por analogía.
5.3.2 Otros elementos de una solicitud
También se pueden cambiar otros elementos de una solicitud de marca comunitaria, como la representación, el tipo de marca, la descripción de la marca y las renuncias a invocar derechos exclusivos.
Por ejemplo, en reivindicaciones de prioridad, se pueden corregir errores manifiestos en la indicación del país en el que se presentó la primera solicitud de marca y la fecha de presentación, dado que el documento de prioridad obviamente mostrará la versión correcta.
Para más detalles sobre estos cambios, véanse las Directrices, Parte B, Examen, Sección 2, Formalidades.
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5.3.3 Registro y publicación de modificaciones
Artículo 41, apartado 2, del RMC
Si se admite una modificación, se hará constar en el expediente.
Si la solicitud de marca comunitaria no ha sido publicada todavía, la publicación de la solicitud en el Boletín de Marcas Comunitarias se realizará en su forma modificada.
Si la solicitud de la marca comunitaria ya se ha publicado, y únicamente en el caso de que la modificación se refiera a la lista de productos y servicios o a la representación de la marca, la solicitud de marca comunitaria se publicará en su forma modificada en el Boletín de Marcas Comunitarias. La publicación de la solicitud modificada abre un nuevo plazo de oposición de tres meses.
Las demás modificaciones no s e publicarán por separado, sino que únicamente aparecerán en la publicación del registro.
5.4 División de la solicitud de marca comunitaria
Artículo 44 del RMC Regla 13 bis del REMC
Una solicitud de marca comunitaria puede dividirse en diferentes partes no solo a raíz de una c esión parcial (véanse las Directrices, Parte E, Operaciones de registro, Sección 3, Marcas comunitarias como objetos de propiedad, Capítulo 1, Cesiones), sino también por voluntad propia del solicitante. La división resulta particularmente útil para aislar una s olicitud de marca comunitaria impugnada para determinados productos o servicios, al tiempo que se mantiene la solicitud original para el resto. Para más información sobre las divisiones de marcas comunitarias, véanse las Directrices, Parte E, Operaciones de registro, Sección 1, Cambios de registro.
Mientras que una cesión parcial está exenta del pago de tasas e implica un cambio de propiedad, una solicitud de división de una solicitud de marca comunitaria está sujeta al pago de una tasa y la solicitud sigue en manos del mismo solicitante. Si no se paga la tasa, se considera que la petición no se ha presentado. Puede presentarse en una de las dos lenguas indicadas por el solicitante en su solicitud de marca comunitaria.
La división no es admisible en r elación con registros internacionales en v irtud del Protocolo de Madrid que designa a la UE. El registro internacional se conserva en la OMPI. LA OAMI carece de autoridad para dividir un registro internacional que designe a la UE.
5.4.1 Requisitos
La petición de división debe contener:
• el número de expediente de la solicitud de marca que se desea dividir;
• el nombre y la dirección, o el nombre y el número de identificación del solicitante;
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• la lista de productos y servicios que conformarán la solicitud divisional, o cuando se persiga la división en más de una solicitud divisional, la lista de productos y servicios correspondientes a cada solicitud divisional;
• la lista de pr oductos y servicios que se mantengan en l a solicitud de marca comunitaria inicial.
Además, los productos y servicios de la solicitud divisional no deben solaparse con la lista de productos y servicios de la solicitud inicial.
Cualquier irregularidad a este respecto será notificada al solicitante y se le concederán dos meses para subsanarla, en cuyo defecto se rechazará la declaración de división.
También existen ciertos periodos durante los cuales, por motivos de economía procesal o para salvaguardar los derechos de terceros, no se admite una declaración de división. Estos períodos se explican a continuación.
1. En el curso de una oposición, solo pueden dividirse aquellos productos y servicios contra los que no se dirige la oposición. Lo mismo se aplica si el caso está pendiente ante las Salas de Recurso o los Tribunales. La Oficina interpreta las disposiciones legales antes mencionadas en el sentido de que excluye una división parcial o total de los productos que son objeto de la oposición para formar una nuev a solicitud, con el efecto de que tendrían que dividirse los procedimientos de oposición. Si se presenta esta petición de división, se dará al solicitante la oportunidad de modificar la declaración de di visión dividiendo los productos y servicios que no son objeto de la oposición.
2. Además, no se admite la división durante los tres meses siguientes a la publicación de la solicitud. Permitir una división en este periodo contrarrestaría el objetivo de no di vidir un procedimiento de oposición, y frustraría a los terceros que deben basarse en el Boletín de M arcas Comunitarias para saber a qué tienen que oponerse.
3. La división tampoco se admite durante el periodo anterior a la asignación de una fecha de presentación. Esto no coincide necesariamente con el primer mes posterior a la presentación. Para más detalles sobre la fecha de presentación, véanse las Directrices, Parte B, Examen, Sección 2, Formalidades.
Por razones de orden práctico, en el período posterior a la publicación de la solicitud, una división solo es admisible si se ha presentado una oposición contra la solicitud y únicamente con respecto a la parte no impugnada. Este es precisamente el objetivo de la disposición: que el solicitante pueda r egistrar rápidamente los productos no impugnados sin tener que esperar el resultado de un largo procedimiento de oposición.
5.4.2 Aceptación
Artículo 44, apartado 6, del RMC
Si la Oficina acepta la declaración de división, se crea una nueva solicitud con la fecha de la aceptación (no con efecto retroactivo a la fecha de la declaración).
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La nueva solicitud mantendrá la fecha de presentación, al igual que cualquier fecha de prioridad o de antigüedad. El efecto de antigüedad será entonces parcial.
Todas las peticiones y solicitudes presentadas, y todas las tasas pagadas, antes de la fecha en la que la Oficina reciba la declaración de división se considerarán también realizadas o abonadas respecto a la solicitud divisional. No obstante, las tasas debidamente abonadas por la solicitud original no serán reembolsadas.
Los efectos prácticos de esta disposición pueden ilustrarse con los siguientes ejemplos:
• Si se ha presentado una solicitud de inscripción de una licencia, y al mismo tiempo se ha abonado la tasa de i nscripción de la licencia, antes de que la Oficina recibiera la declaración de división, la petición es válida en relación con ambas solicitudes. No han de abonarse más tasas.
• Si una solicitud de marca comunitaria en la que se reivindican seis clases va a dividirse en dos solicitudes de tres clases cada una, no hay que abonar tasas por clase a partir de la fecha en que la Oficina reciba la declaración de división. No obstante, las tasas que hayan sido abonadas con anterioridad a es a fecha no pueden reembolsarse.
Si la división no es admitida, la solicitud inicial permanece inalterada. No importa si:
• la declaración de división se ha considerado no presentada por impago de la tasa;
• la declaración ha sido rechazada porque no cumplía los requisitos de forma;
• la declaración se ha considerado inadmisible porque se presentó en un día incluido en uno de los períodos en los que estaba excluida la división.
La peor hipótesis para el solicitante es que la declaración de división no sea aceptada, pero este hecho nunca tendrá incidencia en l a solicitud inicial. El solicitante podrá repetir posteriormente la declaración de división, sujeto al pago de una nueva tasa.
5.4.3 Nuevo expediente y publicación
Es preciso crear un nuevo expediente para la solicitud divisional. Este debe contener todos los documentos que obraban en el expediente de la solicitud inicial, junto con toda la correspondencia relacionada con la declaración de división y toda la correspondencia futura asociada a l a nueva solicitud. La c onsulta pública de es te expediente no estará sujeta a limitaciones.
Si la declaración de división se refiere a una solicitud de marca comunitaria que todavía no es tá publicada, tanto la solicitud divisional como la solicitud inicial se publicarán por separado y del modo habitual, y sin referencia expresa de la una a la otra.
Si la declaración de di visión se refiere a una solicitud de m arca comunitaria que ya está publicada, el hecho de q ue se ha p roducido una di visión se publicará con respecto a la solicitud inicial. Además, la nueva solicitud deberá publicarse con todos
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los datos que han de publicarse en las solicitudes; no obstante, no se abrirá un nuevo plazo de oposición. Una división solo es admisible en relación con aquellos productos para los que ya está abierto un plazo de opo sición pero no s e ha hecho uso del mismo.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE B
EXAMEN
SECCIÓN 3
CLASIFICACIÓN
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Índice
1 Introducción............................................................................................... 3
2 La Clasificación de Niza............................................................................ 3
3 Herramientas administrativas a efectos de clasificación ...................... 4
4 Elaboración de una lista de productos y servicios ................................ 5 4.1 Claridad y precisión ...................................................................................5
4.1.1 Principios generales ....................................................................................... 5 4.1.2 Uso de ex presiones (por ejemplo, «en c oncreto», «en particular») para
determinar el alcance de la lista de productos o servicios............................. 5 4.1.3 Uso del término «y/o»..................................................................................... 6 4.1.4 Puntuación...................................................................................................... 7 4.1.5 Inclusión de siglas y acrónimos en las listas de productos y servicios .......... 7
4.2 Términos y expresiones que carecen de claridad y precisión................8 4.2.1 Indicaciones generales de los títulos de clase de la Clasificación de Niza,
que no se consideran lo suficientemente claras y precisas ........................... 8 4.2.2 Términos vagos ............................................................................................ 12 4.2.3 Reivindicación de todos los productos o s ervicios de esta clase o de
todos los productos o servicios de la lista alfabética de esta clase ............. 12 4.2.4 Referencia a otras clases dentro de la lista ................................................. 13 4.2.5 Marcas en una lista de productos o servicios .............................................. 13 4.2.6 Inclusión de los términos partes y piezas; componentes y accesorios en
las listas de productos y servicios ................................................................ 14 4.2.7 Uso de calificativos indefinidos..................................................................... 14
5 Procedimiento de examen ...................................................................... 14 5.1 Solicitudes paralelas................................................................................14 5.2 Objeciones................................................................................................14 5.3 Modificaciones .........................................................................................15 5.4 Adición de clases .....................................................................................16
6 Anexo 1..................................................................................................... 18
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1 Introducción
Toda solicitud de marca comunitaria deberá incluir una lista de productos y servicios como requisito para que se le otorgue una fecha de p resentación (artículo 26, apartado 1, letra c), del RMC). La lista deberá clasificarse en virtud del Arreglo de Niza (artículo 28 del RMC y regla 2, apartado 1, del REMC).
La lista debe formularse de tal modo que (a) indique claramente la naturaleza de los productos y servicios, y (b) haga posible que cada artículo esté clasificado en una sola clase de la Clasificación de Niza (regla 2, apartado 2, del REMC).
Se recomienda encarecidamente el uso de las herramientas informáticas administrativas de l a Oficina (véase el apartado 3). Cualquier parte de la lista de productos y servicios que no coincida con los datos de las herramientas se examinará con arreglo a l os principios establecidos en l as Directrices. Cuando el solicitante seleccione un t érmino de l as herramientas disponibles, no se cont inuará con el examen y se acelerará el procedimiento de registro.
La Oficina interpretará los productos y servicios cubiertos por una solicitud de marca comunitaria, entre otros las indicaciones generales de los títulos de clase, basándose en su significado natural y habitual. La práctica anterior de la Oficina, con arreglo a la cual el uso de todas las indicaciones generales incluidas en la lista del título de clase de una clase particular constituía una reivindicación de todos los productos o servicios pertenecientes a la clase, se abandonó en junio de 2012, tras la sentencia de 19/6/2012, en el asunto C-307/10, «IP Translator».
El propósito de esta parte de las Directrices es describir la práctica de la Oficina en el examen de la clasificación de los productos y servicios.
La primera parte (apartados 1 a 4) establece los principios aplicados por la Oficina. La segunda parte (apartado 5) resume el procedimiento de ex amen de l a lista de productos y servicios.
En resumen, al examinar la clasificación de una l ista de pr oductos y servicios la Oficina realiza cuatro tareas:
• comprueba que cada uno de los productos y servicios es lo suficientemente claro y preciso;
• comprueba que cada término es adecuado para la clase que se solicita; • notifica cualquier irregularidad; • deniega la solicitud, total o parcialmente, cuando no se subsana la irregularidad
(regla 9, apartados 4 y 8, del REMC).
2 La Clasificación de Niza
Se aplicará la versión de la clasificación prevista en el Arreglo de Niza en vigor en el momento de la fecha de presentación a la clasificación de los productos y servicios de la solicitud (disponible en: http://tmclass.tmdn.org). La regla 2 requiere que el solicitante proporcione una lista de productos y servicios de la siguiente manera:
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• La lista debe formularse de tal modo que indique claramente el tipo de productos y servicios y haga posible que cada artículo esté clasificado;
• Los productos y servicios se agruparán de ac uerdo con la clasificación del Arreglo de N iza, cada grupo irá precedido del número de l a clase a la que pertenecen los productos o servicios y figurarán en el orden de la clasificación.
La Clasificación de Niza está constituida, para cada clase, por los siguientes elementos:
1. Títulos de clase: los títulos de clase son indicaciones generales relacionadas con el ámbito al que, en principio, pertenecen los productos o servicios;
2. Notas explicativas: las notas explicativas explican qué productos y servicios aparecen o no apar ecen en l os títulos de c lase y se considerarán una parte integral de la clasificación;
3. La lista alfabética: la lista alfabética muestra cómo los productos o servicios individuales resultan adecuados para una clase;
4. Observaciones generales: las observaciones explican qué criterios deben aplicarse si un término no puede clasificarse con arreglo a los títulos de clase o la lista alfabética.
Puede encontrarse más información relacionada con la Clasificación de Niza en el sitio web de la Organización Mundial de Propiedad Intelectual (OMPI) en https://www.wipo.int.
3 Herramientas administrativas a efectos de clasificación
Al presentar una s olicitud electrónica a t ravés del e-filing los usuarios pueden seleccionar términos aprobados previamente para elaborar su lista de productos y servicios. Todos estos términos seleccionables proceden de una bas e de dat os armonizada y se aceptarán automáticamente a ef ectos de c lasificación. El uso de estos términos aprobados previamente agilizará el procedimiento de registro de la marca. La base de datos armonizada recoge los términos que son aceptados a efectos de clasificación en una serie de oficinas de la UE.
En los casos en que el solicitante utilice una lista de productos y servicios que incluyen términos que no se encuentran en la base de datos armonizada, la Oficina verificará mediante un procedimiento de examen si dichos términos pueden ser aceptados.
Antes de presentar una solicitud, podrá consultarse el contenido de la base de datos armonizada a t ravés de l a herramienta TMclass de l a Oficina (http://tmclass.tmdn.org/ec2/). Esta herramienta reúne las bases de dat os de clasificación de l as oficinas participantes tanto de dent ro como de fuera de l a UE y muestra si un término puede ser aceptado en una jurisdicción en particular. Dentro de la herramienta TMclass, los productos y servicios se agrupan con arreglo a l as características compartidas desde una perspectiva de mercado, desde el más general al más específico. En este sentido, se ofrece al usuario una búsqueda simplificada y una visión general del contenido de cada clase, facilitando de este modo la selección de los términos adecuados.
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Este agrupamiento y clasificación, también denominada «Taxonomía», no tiene efectos legales. En particular, el alcance de p rotección de una m arca comunitaria siempre se define con el significado natural y habitual de los términos elegidos, no por la posición de los términos en las herramientas de clasificación de la Oficina.
4 Elaboración de una lista de productos y servicios
4.1 Claridad y precisión
4.1.1 Principios generales
Los productos y servicios para los que se solicita la protección de la marca deben ser identificados por el solicitante con suficiente claridad y precisión, de modo que permita a las autoridades competentes y los operadores económicos determinar sobre esa única base el alcance de la protección solicitada (sentencia de 19/6/2012, en el asunto C-307/10, «IP Translator», apartado 49).
La descripción de los productos y servicios es lo suficientemente clara y precisa cuando su alcance de protección puede entenderse en su sentido natural y habitual. Si no puede entenderse este alcance de protección, debe alcanzarse la suficiente claridad y precisión identificando factores como las características, la finalidad y/o el sector de mercado identificable. Los elementos que podrían ayudar a identificar el sector de mercado1 podrán ser, entre otros, los siguientes:
• los consumidores y/o los canales de venta; • las capacidades y conocimientos especializados que deben utilizarse/producirse; • las capacidades técnicas que deben utilizarse/producirse.
Un término puede ser parte de la descripción de los productos y servicios en una serie de clases; podrá ser claro y preciso en una c lase particular sin más especificaciones. Por ejemplo: mobiliario (clase 20), prendas de vestir (clase 25), guantes (clase 25).
Si se busca protección para una categoría especializada de productos y servicios o un sector de mercado especializado que pertenece a una clase diferente, será necesario especificar con más detalle el término. Por ejemplo: mobiliario especialmente finalizado para uso médico (clase 10), mobiliario especial de l aboratorio (clase 9), artículos de vestir de protección (clase 9), ropa especial para quirófano (clase 10), ropa para animales de compañía (clase 18), guantes de jardinería (clase 21), guantes de béisbol (clase 28).
Están disponibles herramientas como TMclass (http://tmclass.tmdn.org/ec2/) para determinar si una categoría particular de pr oductos y servicios precisa ser o no especificada con mayor detalle.
4.1.2 Uso de expresiones (por ejemplo, «en concreto», «en particular») para determinar el alcance de la lista de productos o servicios
Se admite el uso de expresiones «en concreto» o «siendo», aunque debe entenderse como una limitación para los productos y servicios específicos incluidos en dicha lista.
1 El sector de mercado describe una serie de empresas que compran y venden dichos productos y servicios similares, quienes compiten directamente entre sí.
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Por ejemplo, productos farmacéuticos, en concreto analgésicos de la clase 5 implica que la solicitud abarca solamente a los analgésicos y no a ningún otro tipo de producto farmacéutico.
La expresión «en particular» también puede aceptarse cuando sirve para indicar un ejemplo de los productos y servicios que se solicitan. Por ejemplo, productos farmacéuticos, en particular analgésicos significa que la solicitud abarca cualquier tipo de productos farmacéuticos, siendo los analgésicos un ejemplo.
La misma interpretación es aplicable al uso de los términos «incluyendo», «incluyendo (entre otros)», «especialmente» o «principalmente», como en el ejemplo productos farmacéuticos, incluyendo analgésicos.
Un término que, por lo general, se consideraría poco claro o i mpreciso puede s er admisible siempre que se especifique con más detalle, por ejemplo, utilizando «en concreto» y una l ista de términos admisibles. Un ejemplo podría ser aparatos eléctricos, en concreto ordenadores para los productos de la clase 9.
Ejemplos adicionales de uso admisible
Clase 29: Productos lácteos, en concreto queso y mantequilla
Esto limitaría los productos a únicamente al queso y a la mantequilla y excluiría el resto de productos lácteos.
Clase 41: Suministro de instalaciones deportivas, todas ellas de exterior.
Esto limitaría los servicios a únicamente las instalaciones al aire libre y excluiría las instalaciones interiores.
Clase 25: Prendas de vestir, siendo todas ellas ropa interior
Esto limitaría los productos comprendidos a únicamente aquellos que se consideran ropa interior y excluiría el resto de prendas de vestir.
Otras palabras o frases solo pueden resaltar que determinados productos son importantes, por lo que la inclusión del término no limitaría la lista posterior. Entre los ejemplos se incluyen los siguientes:
Clase 29: Productos lácteos, en particular queso y mantequilla
La cobertura incluiría todos los productos lácteos; el queso y la mantequilla son posiblemente los productos del titular de la marca comunitaria que tienen más éxito.
Clase 41: Suministro de instalaciones deportivas, por ejemplo, pistas de atletismo exteriores.
La cobertura simplemente da un ejemplo de una de las diversas posibilidades.
Clase 25: Prendas de vestir, incluyendo ropa interior
La cobertura se extiende a todas las prendas de vestir y no solo a la ropa interior.
4.1.3 Uso del término «y/o»
El uso de barras oblicuas es admisible en las listas de productos y servicios. Su uso más común es en la frase «y/o», que significa que tanto los productos como los servicios mencionados quedan comprendidos dentro de una misma clase. Por ejemplo:
• Productos químicos/bioquímicos • Productos químicos y/o bioquímicos • Productos químicos de uso industrial/científico
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• Productos químicos de uso industrial y/o científico • Servicios de agencia de importación/exportación
4.1.4 Puntuación
El uso de una puntuación correcta es muy importante en una lista de productos y servicios, casi tan importante como las palabras que incluye.
El uso de comas sirve para separar elementos dentro de una c ategoría o expresión similar. Por ejemplo, debe interpretarse que harinas y preparaciones hechas de cereales, pan, pastelería y confitería de la clase 30 se refiere a productos que pueden estar hechos o que están hechos de estos materiales.
El uso del punto y coma implica una separación entre las expresiones. Por ejemplo, en la clase 30 harina y preparaciones a bas e de c ereales, pan, pastelería y confitería, helados; miel, jarabe de melaza; levadura, polvos de hornear debe interpretarse que los términos miel y jarabe de melaza son independientes del resto de términos y que no forman parte de preparaciones a base de…
La separación de los términos con una puntuación incorrecta puede producir cambios de significado así como una clasificación incorrecta.
Tómese el ejemplo de software para su uso con máquinas agrícolas; máquinas agrícolas de la clase 9. En esta lista de productos y servicios, la inclusión de un punto y coma significa que el término máquina agrícola debe considerarse una categoría de productos independiente. Sin embargo, estas máquinas son adecuadas para la clase 7, con independencia de si la intención fue proteger un programa informático que debe utilizarse en el ámbito de las máquinas agrícolas o de la maquinaria agrícola.
Otro ejemplo serían servicios de venta minorista de vestidos, calzados, sombrerería de la clase 35. El uso del punto y coma convierte a los términos calzado y sombrerería en productos separados y no incluidos en los servicios de venta minorista. En dichos casos, el examinador separará los términos con comas, informará al solicitante y le dará la oportunidad de formular observaciones a la propuesta del examinador.
4.1.5 Inclusión de siglas y acrónimos en las listas de productos y servicios
Las siglas se admitirán con cautela en las listas de productos y servicios. Las marcas pueden tener una duración indefinida mientras que la interpretación de una sigla puede variar a l o largo del tiempo. Sin embargo, la sigla se admitirá siempre que posea un único significado en relación con la clase de productos o servicios que se solicita. Los ejemplos conocidos de CD-ROM y DVD son admisibles en la clase 9. Si la sigla es notoriamente conocida en el ámbito de la actividad será admisible aunque una solución más práctica sería que los examinadores efectuaran en primer lugar una búsqueda en Internet de la sigla para determinar si es necesario escribirla en su forma extendida o s i puede e scribirse como sigla o acrónimo, seguida de l a sigla entre corchetes (siguiendo el ejemplo de la OMPI).
Ejemplo
Clase 45 Servicios de asesoramiento sobre la solicitud y el registro de MC.
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Esto podría escribirse in extenso:
Clase 45 Servicios de as esoramiento sobre la solicitud y el registro de m arcas comunitarias;
o
Clase 45 Servicios de asesoramiento sobre la solicitud y el registro de MC [marcas comunitarias].
Los acrónimos son admisibles en una lista de productos o servicios siempre que sean comprensibles y adecuados para la clase que se solicita.
4.2 Términos y expresiones que carecen de claridad y precisión
4.2.1 Indicaciones generales de l os títulos de c lase de l a Clasificación de Niza, que no se consideran lo suficientemente claras y precisas
En colaboración con las Oficinas de m arcas de l a Unión Europea, otras organizaciones, oficinas (inter)nacionales y asociaciones de us uarios, la Oficina ha establecido una l ista de indicaciones generales de l os títulos de c lase de l a Clasificación de N iza que no s e consideran lo suficientemente claras y precisas, de conformidad con la sentencia de 19/6/2012, en el asunto C-307/10, «IP Translator».
Las 197 indicaciones generales de los títulos de clase de Niza fueron examinadas en relación con los requisitos de claridad y precisión y se consideró que a 11 de ellas les faltaba claridad y precisión a la hora de es pecificar el alcance de la protección que proporcionarían y, en consecuencia, no podían admitirse si no se especificaban con más detalle. Dichas indicaciones se indican en negrita.
Clase 6 Productos metálicos no comprendidos en otras clases Clase 7 Máquinas y máquinas herramientas Clase 14 Metales preciosos y sus aleaciones, así como productos de estas
materias o chapados no comprendidos en otras clases Clase 16 Papel, cartón y artículos de es tas materias [papel y cartón] no
comprendidos en otras clases Clase 17 Caucho, gutapercha, goma, amianto, mica y productos de estas materias
[caucho, gutapercha, goma, amianto y mica] no comprendidos en otras clases
Clase 18 Cuero y cuero de imitación, productos de estas materias [cuero y cuero de imitación] no comprendidos en otras clases
Clase 20 Productos de madera, corcho, caña, junco, mimbre, cuerno, hueso, marfil, ballena, concha, ámbar, nácar, espuma de mar, sucedáneos de estos materiales o de materias plásticas, no com prendidos en ot ras clases
Clase 37 Servicios de reparación Clase 37 Servicios de instalación Clase 40 Tratamiento de materiales Clase 45 Servicios personales y sociales prestados por terceros para
satisfacer necesidades individuales
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Los restantes 186 términos de los títulos de clase de Niza cumplen los requisitos de claridad y precisión y, por tanto, son admisibles a efectos de clasificación.
Las razones por las que se consideró que cada uno de estos once términos de título de clase no era claro ni preciso se describen a continuación.
Clase 6 Productos metálicos no comprendidos en otras clases A la luz de la necesidad de claridad y precisión, este término no ofrece una indicación clara de qué productos están comprendidos ya que sólo indica de qué están hechos los productos y no q ué productos son. Comprende una amplia gama de productos que pueden tener características y/o finalidades muy distintas, que pueden requerir diferentes niveles de capacidades técnicas y conocimientos especializados para ser producidos y/o utilizados, que podrían estar dirigidos a consumidores distintos, venderse a través de canales de venta distintos y, por lo tanto, estar relacionados con diferentes sectores de mercado.
Clase 7 Máquinas y máquinas herramientas A la luz de la necesidad de c laridad y precisión, el término máquinas no ofrece una indicación clara de qué máquinas quedan comprendidas en el mismo. Las máquinas pueden tener características y/o finalidades muy distintas, pueden requerir diferentes niveles de capacidades técnicas y conocimientos especializados para ser producidos y/o utilizados, que podrían estar dirigidos a consumidores distintos, venderse a través de canales de venta distintos y, por lo tanto, estar relacionados con diferentes sectores de mercado.
Clase 14 Metales preciosos y sus aleaciones, así como productos de est as materias o chapados no comprendidos en otras clases A la luz de la necesidad de c laridad y precisión, el término productos de estas materias o chapados no comprendidos en otras clases no ofrece una indicación clara de qué productos están comprendidos ya que sólo indica de qué están hechos los productos y no q ué productos son. Comprende una amplia gama de p roductos que pueden tener características muy distintas, que pueden requerir diferentes niveles de capacidades técnicas y conocimientos especializados para ser producidos, que podrían estar dirigidos a consumidores distintos, venderse a través de canales de venta distintos y, por lo tanto, estar relacionados con diferentes sectores de mercado.
Clase 16 Papel, cartón y artículos de estas materias no comprendidos en otras clases A la luz de la necesidad de claridad y precisión, el término artículos de estas materias [papel y cartón], no c omprendidos en ot ras clases, no ofrece una indicación clara de qué productos están comprendidos ya que sólo indica de q ué están hechos los productos y no q ué productos son. Comprende una amplia gama de productos que pueden tener características y/o finalidades muy distintas, que pueden requerir diferentes niveles de capacidades técnicas y conocimientos especializados para ser producidos y/o utilizados, que podrían estar dirigidos a consumidores distintos, venderse a t ravés de canales de venta distintos y, por lo tanto, estar relacionados con diferentes sectores de mercado.
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Clase 17 Caucho, gutapercha, goma, amianto, mica y productos de estas materias no comprendidos en otras clases A la luz de la necesidad de c laridad y precisión, el término productos de estas materias [caucho, gutapercha, goma, amianto y mica], no comprendidos en ot ras clases, no ofrece una indicación clara de q ué productos comprende ya que sólo indica de qué están hechos los productos y no q ué productos son. Comprende una am plia gama de productos que pueden t ener características y/o finalidades muy distintas, que pueden requerir diferentes niveles de c apacidades y conocimientos técnicos para ser producidos y/o utilizados, que podrían estar dirigidos a consumidores distintos, venderse a través de canales de venta distintos y, por lo tanto, estar relacionados con diferentes sectores de mercado.
Clase 18 Cuero y cuero de imitación, productos de est as materias no comprendidos en otras clases A la luz de la necesidad de c laridad y precisión, el término productos de estas materias [cuero y cuero de imitación] no comprendidos en otras clases, no ofrece una indicación clara de qué productos están comprendidos ya que sólo indica de qué están hechos los productos y no qué productos son. Comprende una am plia gama de pr oductos que pueden tener características y/o finalidades muy distintas, que pueden requerir diferentes niveles de capacidades y conocimientos técnicos para ser producidos y/o utilizados, que podrían estar dirigidos a consumidores distintos, venderse a t ravés de canales de venta distintos y, por lo tanto, estar relacionados con diferentes sectores de mercado.
Clase 20 Productos de madera, corcho, caña, junco, mimbre, cuerno, hueso, marfil, ballena, concha, ámbar, nácar, espuma de mar, sucedáneos de todos estos materiales o de materias plásticas, no comprendidos en otras clases A la luz de la necesidad de claridad y precisión, este término no ofrece una indicación clara de qué productos están comprendidos ya que sólo indica de qué están hechos los productos y no q ué productos son. Comprende una amplia gama de productos que pueden tener características y/o finalidades muy distintas, que pueden requerir diferentes niveles de capacidades y conocimientos técnicos para ser producidos y/o utilizados, que podrían estar dirigidos a consumidores distintos, venderse a través de canales de venta distintos y, por lo tanto, estar relacionados con diferentes sectores de mercado.
Clase 37 Servicios de reparación En aras de la necesidad de claridad y precisión, este término no ofrece una indicación clara de q ué servicios se prestan ya que sólo indica que son servicios de reparación pero no indica cuál es el objeto de la reparación. Como los productos que deben repararse pueden tener características distintas, los servicios de reparación se realizarán por proveedores de servicio con distintos niveles de c apacidades y conocimientos técnicos y pueden estar relacionados con diferentes sectores de mercado.
Clase 37 Servicios de instalación A la luz de la necesidad de claridad y precisión, este término no ofrece una indicación clara de qué servicios se prestan ya que sólo indica qué son los servicios de instalación pero no indica cuál es el objeto de la instalación.
Clasificación
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Como los productos que deben instalarse pueden tener características distintas, los servicios de i nstalación serán llevados a c abo por proveedores de s ervicio con distintos niveles de c apacidades y conocimientos técnicos y pueden es tar relacionados con diferentes sectores de mercado.
Clase 40 Tratamiento de materiales A la luz de la necesidad de claridad y precisión, este término no ofrece una indicación clara de qué servicios se prestan. La naturaleza del tratamiento no está claro, ya que lo que se trata son los materiales. Estos servicios abarcan una am plia gama de ac tividades realizadas por distintos proveedores de servicios sobre materiales con distintas características que requieren distintos niveles de capacidades y conocimientos técnicos, y que pueden estar relacionados con diferentes sectores de mercado.
Clase 45 Servicios personales y sociales prestados por terceros para satisfacer necesidades individuales A la luz de la necesidad de claridad y precisión, este término no ofrece una indicación clara de qué servicios se prestan. Estos servicios abarcan una amplia gama de actividades realizadas por distintos proveedores que requieren distintos niveles de capacidad y conocimientos especializados, y que pueden estar relacionados con diferentes sectores de mercado.
Las solicitudes de m arca comunitaria que incluyan una de l as once indicaciones generales citadas anteriormente serán susceptibles de obj eción por ser demasiado vagas. Se exigirá al solicitante que especifique el término vago.
Las indicaciones generales no admisibles que se han citado pueden volverse claras y precisas si el solicitante sigue los principios que se han establecido en el apartado 3.4.1 Principios de claridad y precisión. A continuación, se incluye una lista no exhaustiva de especificaciones admisibles.
El término no es claro ni preciso Ejemplo de término claro y preciso
Productos metálicos no comprendidos en otras clases (clase 6)
Elementos de construcción metálicos (clase 6) Materiales de construcción metálicos (clase 6)
Máquinas (clase 7)
Máquinas agrícolas (clase 7) Máquinas para la transformación de materias plásticas (clase 7) Ordeñadoras [máquinas] (clase 7)
Artículos de metales preciosos o de c hapado (clase 14) Obras de arte de metales preciosos (clase 14)
Artículos de papel y de cartón (clase 16) Filtros y materiales filtrantes de papel (clase 16)
Artículos hechos de c aucho, gutapercha, goma, amianto y mica (clase 17) Anillos de caucho (clase 17)
Productos de estas materias [cuero e imitaciones de cuero] (clase 18) Carteras [marroquinería] (clase 18)
Productos de madera, corcho, caña, junco, mimbre, cuerno, hueso, marfil, ballena, concha, ámbar, nácar, espuma de mar, sucedáneos de todos estos materiales o de materias plásticas, comprendidos en otras clases (clase 20)
Accesorios de puertas hechos de plástico (clase 20) Figuritas de madera (clase 20)
Servicios de reparación (clase 37) Reparación de calzado (clase 37)Reparación de hardware de ordenadores (clase 37)
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Servicios de instalación (clase 37) Instalación de ventanas y puertas (clase 37)Instalaciones de alarma antirrobo (clase 37)
Tratamiento de materiales (clase 40) Tratamiento de aguas tóxicas (clase 40)Purificación del aire (clase 40)
Servicios personales y sociales prestados por terceros para satisfacer necesidades individuales (clase 45)
Investigación de antecedentes personales (clase 45) Servicios de compra personal para terceros (clase 45) Servicios de agencias de adopción (clase 45)
Nótese que los términos vagos no s erían específicos ni admisibles aunque se añadieran los términos incluyendo o en particular. El ejemplo máquinas, incluyendo las máquinas ordeñadoras no sería admisible porque sigue siendo vago (véase el apartado 4.1.2.).
4.2.2 Términos vagos
Los mismos principios relativos a la claridad y la precisión, tal como se han descrito arriba, son aplicables a todos los productos y servicios mencionados en la solicitud. Son susceptibles de objeción los términos que no establecen una indicación clara de los productos incluidos. Ejemplos de tales expresiones son:
• Aparatos/instrumentos eléctricos/electrónicos; • Servicios de asociación; • Servicios de gestión de instalaciones.
Todas deben es pecificarse tal como se ha descrito anteriormente, es decir, identificando factores como las características, la finalidad y/o el sector del mercado identificable.
4.2.3 Reivindicación de t odos los productos o s ervicios de es ta clase o de todos los productos o servicios de la lista alfabética de esta clase
Si el solicitante tiene intención de proteger todos los productos o servicios incluidos en la lista alfabética de una clase particular, deberá indicarlo expresamente mediante la especificación explícita e individual de estos productos o servicios. Con el fin de ayudar a los solicitantes, se recomienda utilizar la estructura jerárquica (véase el apartado 3, Herramientas administrativas a efectos de clasificación).
Las solicitudes se presentan a veces para todos los productos de la clase X, todos los servicios de l a clase X, todos los productos o servicios de es ta clase o todos los productos o servicios de la lista alfabética de esta clase (o similares). Dicha especificación no c umple con el artículo 26, apartado 1, letra c), del RMC que exige una lista de l os productos o s ervicios respecto de los que se solicita el registro. En consecuencia, no se concederá una fecha de presentación.
En otras ocasiones, el solicitante ha indicado correctamente algunos de los productos y/o servicios que deben cubrirse y añadirse, al final de la enumeración de cada clase, la expresión y todos los demás productos/servicios en es ta clase o y todos los productos/servicios de la lista alfabética en esta clase (o similares). En dichos casos,
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la solicitud podrá continuar sólo para la parte de los productos y/o servicios que están incluidos correctamente en la lista. La Oficina informará al solicitante de que estas declaraciones no son admisibles a efectos de clasificación y, por lo tanto, deberán suprimirse.
4.2.4 Referencia a otras clases dentro de la lista
Las referencias a ot ros números de c lase dentro de una c lase no s on admisibles a efectos de c lasificación. Por ejemplo, las descripciones (en la clase 39) servicios de transporte de todos los productos de l as clases 32 y 33 o (en la clase 9) software informático en el ámbito de los servicios de las clases 41 y 45 no son admisibles, ya que en ambos casos los términos se consideran poco claros e imprecisos y carecen de seguridad jurídica, respecto de q ué productos y servicios quedan cubiertos. El único modo de subsanar las objeciones de estas listas de productos y servicios será especificar los correspondientes productos de las clases 32 y 33, y los servicios de las clases 41 y 45.
La expresión …productos no incluidos en otras clases… no es admisible en las clases de servicio porque esta expresión sólo tiene sentido en su clase de productos original.
Observemos, por ejemplo, el título de la clase 22 cuyo texto es cuerdas, bramantes, redes, tiendas de campaña, lonas, velas, sacos (no comprendidos en otras clases). En este contexto, la referencia a la expresión …no comprendidos en ot ras clases es significativa. Sin embargo, esa misma expresión carecerá de sentido si se utiliza en una lista de clase de servicio de productos y servicios. Por ejemplo, no serán admisibles servicios de transporte de cuerdas, bramantes, redes, tiendas de campaña, lonas, velas, sacos (no comprendidos en otras clases) de la clase 39. Debe suprimirse la mención de … (no comprendidos en otras clases).
4.2.5 Marcas en una lista de productos o servicios
Las marcas no pueden aparecer en una l ista de productos y servicios como si fueran un término genérico o una categoría de pr oductos. En dichos casos, la Oficina se opondrá a la inclusión del término, y solicitará su sustitución por un término genérico para los productos o servicios.
Ejemplo
Clase 9: Dispositivos electrónicos de t ransmisión de s onidos e i mágenes; lectores de vídeo; reproductores de discos compactos; iPods.
Dado que iPod™ es una marca, se le pedirá al solicitante que lo sustituya por un sinónimo como pequeño reproductor de audio digital portátil para almacenar datos en diversos formatos, incluido MP3.
Otros ejemplos son Caterpillar™ (la clasificación correcta sería vehículo oruga), Discman™ (reproductor de di sco compacto portátil), Band-Aid™ (emplastos), discos de Blu Ray™ (discos de al macenamiento óptico) o Teflon™ (revestimiento no adhesivo de politetrafluoretileno). Esta lista no es exhaustiva y, en caso de duda, los examinadores deben remitir los asuntos a los correspondientes expertos de la Oficina.
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4.2.6 Inclusión de los términos partes y piezas; componentes y accesorios en las listas de productos y servicios
Los términos partes y piezas; componentes y accesorios no son, por sí mismos o en combinación entre sí, ni lo suficientemente claros ni precisos a efectos de clasificación. Cada término requiere una calificación adicional para que sea admisible en su propia clase. Tales términos serían admisibles si identifican factores como las características, la finalidad y/o el sector del mercado identificable. Por ejemplo:
• Partes y piezas para vehículos a motor es admisible en la clase 12; • Componentes de construcción de madera es admisible en la clase 19. • Accesorios musicales es admisible en la clase 15.
4.2.7 Uso de calificativos indefinidos
El uso de calificativos como: “y similares; “auxiliares”, “asociados” y “etc.” en una lista de productos o servicios no es admisible, ya que no cumplen los requisitos de claridad y precisión (véase el apartado 4.1.).
5 Procedimiento de examen
5.1 Solicitudes paralelas
A pesar de que la Oficina siempre busca la coherencia, el hecho de que una lista de productos y servicios haya sido admitida aunque haya sido clasificada de f orma incorrecta, esto no lleva a q ue la misma lista sea admitida en las solicitudes posteriores.
5.2 Objeciones
Si la Oficina considera necesario modificar la lista de productos y servicios, deberá consultar esta cuestión con el solicitante, si es posible. Cuando sea razonablemente posible, el examinador deberá ofrecer una p ropuesta de c lasificación correcta. Si el solicitante presenta una larga lista de productos o servicios que no está agrupada con números de c lase ni está en absoluto clasificada, el examinador planteará entonces una objeción con arreglo a la regla 2, y pedirá al solicitante que proporcione la lista en una forma que sea satisfactoria.
La respuesta del solicitante, en ningún caso, deberá ampliar el alcance o la gama de productos o servicios (artículo 43, apartado 2, del RMC).
Si el solicitante no ha podido identificar ninguna clase, o ha i dentificado de forma incorrecta la(s) clase(s) para los productos o servicios, cualquier explicación adicional del alcance de la solicitud podrá ampliar el número de clases exigidos para adaptar la lista de productos y servicios. De ello no se desprende automáticamente que la propia lista haya sido ampliada.
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Ejemplo
Debería corregirse una solicitud que comprenda cerveza, vino y té de la clase 33 por:
Clase 30: Té.
Clase 32: Cerveza.
Clase 33: Vino.
Aunque ahora existen tres clases que abarcan los productos, la lista de productos no ha sido ampliada.
Cuando el solicitante ha as ignado correctamente un núm ero de c lase a un t érmino particular, esto limita los productos a aquellos que estén comprendidos dentro de dicha clase. Por ejemplo, una solicitud de té de la clase 30 no podrá modificarse por té medicinal de la clase 5 ya que esto ampliaría los productos más allá de aquellos que se solicitan.
Cuando exista la necesidad de m odificar la clasificación, la Oficina enviará una comunicación motivada, señalando el error o los errores detectados respecto de la lista de productos y servicios. Se le pedirá al solicitante que modifique y/o especifique la lista y la Oficina podrá proponer el modo en que se clasificarán los artículos.
El plazo original permitido para presentar observaciones en una carta de irregularidad de clasificación solo podrá ampliarse una vez. No se concederán más ampliaciones salvo si concurren circunstancias excepcionales.
La Oficina enviará una carta en la que se informe al solicitante de la lista convenida definitiva de términos admisibles.
5.3 Modificaciones
Véanse asimismo las Directrices, Parte E, Operaciones de registro, Sección 1, Cambios en el registro.
El artículo 43, apartado 2, del RMC permite la modificación de una s olicitud. Esto incluye la modificación de l a lista de pr oductos y servicios siempre que «tal rectificación no a fecte sustancialmente a la marca ni amplíe la lista de pr oductos o servicios».
La modificación puede realizarse tanto en términos positivos como negativos. Se consideran admisibles los siguientes ejemplos:
• Bebidas alcohólicas siendo todas whisky y ginebra; • Bebidas alcohólicas ninguna de ellas whisky y ginebra.
A efectos de clasificación, deben c umplirse dos requisitos básicos para que la modificación sea admisible:
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1. el nuevo texto no debe c onstituir de hec ho una am pliación de la lista de productos y servicios;
2. la limitación debe constituir una descripción válida de los productos y servicios y debe ser aplicable solamente a los productos o servicios que figuran en la solicitud original.
De lo contrario, la Oficina debe rechazar la limitación propuesta y la lista de productos y servicios permanecerá inalterada.
Como consecuencia de lo establecido en los puntos 1 y 2, dichas modificaciones deberán tener carácter de l imitación o de s upresión de al gunos de los términos incluidos originalmente en la solicitud. Una vez que la Oficina haya recibido (y posteriormente aceptado) dichas modificaciones (supresiones), los términos suprimidos no pod rán reintroducirse ni podrá ampliarse la lista de productos y servicios restante.
Las limitaciones podrán dar como resultado una lista de productos y servicios más larga de la que se presentó. Por ejemplo, la lista de productos y servicios original podrá haber sido presentada como bebidas alcohólicas, pero podría limitarse a bebidas alcohólicas siendo vinos y bebidas espirituosas, pero sin incluir whisky o ginebra y sin incluir licores, cócteles o c ombinaciones de bebi das que contienen elementos de whisky o ginebra.
A la luz de todo lo anterior, se indican a continuación algunos ejemplos de modificaciones no admisibles:
• Una solicitud de modificación de la lista de productos y servicios de vehículos; aparatos de transporte terrestre, aéreo y acuático de la clase 12 en baterías para vehículos, dado que dichos productos son adecuados para la clase 9 y, por lo tanto, no fueron incluidos en la lista original;
• De instrumentos musicales a Pianos Steinway & Sons, dado que la lista modificada de productos y servicios contiene una marca;
• Una solicitud de limitación de l os productos de lavadoras a lavadoras para su venta en Francia, dado que la modificación va contra el concepto del carácter unitario de la marca comunitaria.
En determinadas circunstancias las limitaciones son admisibles siempre que el término original siga figurando en la lista de productos y servicios. Ejemplos de descripciones admisibles:
• • prendas de v estir para la industria de l a restauración, dado que esto implica ropa de vestir profesional específica;
• servicios de restauración, solo en centros de vacaciones, dado que los servicios pueden ser reconocidos como servicios de restauración;
• periódicos, vendidos únicamente en estaciones de tren, dado que los productos pueden ser reconocidos como periódicos;
5.4 Adición de clases
De conformidad con las disposiciones del artículo 43, apartado 2, del RMC (que se han enumerado arriba), es posible añadir una o varias clases a una solicitud, aunque sólo cuando los productos o s ervicios incluidos en l a solicitud original hayan sido
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incluidos claramente en una clase equivocada o cuando un producto o servicio haya sido aclarado y precise ser clasificado en una nueva clase o clases. Por ejemplo, si asumimos que la lista original de pr oductos tiene la siguiente redacción:
Clase 33: Bebidas alcohólicas, incluyendo cerveza, vino y espirituosos.
Dado que cerveza es adecuada para la clase 32, se le pedirá al solicitante que traslade el término a la clase 32, incluso si la clase 32 no estaba incluida en la solicitud original. Si el solicitante accede a este cambio, la solicitud abarcará productos de las clases 32 y 33.
Cuando se añaden clases, podrán aplicarse tasas adicionales y deberá informarse de ello al solicitante.
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6 Anexo 1
Índice
Introducción..............................................................................................................20 Servicios de publicidad............................................................................................20 Preparaciones para refrescar y perfumar el aire ....................................................20 Juegos y aparatos recreativos electrónicos...........................................................20 Servicios de asoci ación o ser vicios prestados por una asoci ación a sus miembros ..................................................................................................................21 Aparatos estéticos....................................................................................................21 Recopilación de servicios........................................................................................21 Servicios de difusión y/o transmisión.....................................................................22 Servicios de corretaje...............................................................................................22 Bolsas y estuches de transporte .............................................................................22 Servicios de beneficencia ........................................................................................22 Servicios de almacenamiento y recogida ...............................................................23 Juegos de ordenador y aparatos de juegos de ordenador....................................23 Cortinas y persianas.................................................................................................24 Fabricación a medida/fabricación para terceros ....................................................25 Servicios relacionados con datos ...........................................................................25 Servicios de diseño ..................................................................................................25 Servicios de imagen digital......................................................................................25 Productos descargables ..........................................................................................26 Electricidad y energía...............................................................................................26 Aparatos electrónicos y eléctricos..........................................................................26 Cigarrillos electrónicos ............................................................................................27 Franquicias ...............................................................................................................27 Sistemas de GPS – posición, seguimiento y navegación......................................27 Peluquerías ...............................................................................................................29 Servicios de alquiler .................................................................................................29 Servicios de ayuda humanitaria ..............................................................................29 Servicios de Internet, servicios en línea .................................................................29 Conjuntos y juegos...................................................................................................30 Servicios de arrendamiento .....................................................................................31 Pedidos por correo...................................................................................................31 Manuales (para ordenadores, etc.) ..........................................................................31 Servicios de fabricación...........................................................................................31 Servicios de noticias ................................................................................................32 Servicios en línea .....................................................................................................32 Realización de servicios ..........................................................................................32
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Productos ambientadores perfumados y para refrescar el aire ............................32 Servicios personales y sociales prestados por terceros para satisfacer necesidades individuales.........................................................................................33 Artículos de metales preciosos ...............................................................................33 Ropa de protección ..................................................................................................34 Servicios de alquiler .................................................................................................34 Servicios de venta mayorista y minorista...............................................................35 Seguimiento vía satélite ...........................................................................................36 Juegos.......................................................................................................................36 Servicios de conexión en red social .......................................................................36 Publicación de software...........................................................................................36 Energía solar.............................................................................................................37 Servicios de almacenamiento..................................................................................37 Suministro de............................................................................................................37 Sistemas....................................................................................................................37 Billetes (de viaje, entretenimiento, etc.) ..................................................................38 Videojuegos ..............................................................................................................38 Entorno virtual ..........................................................................................................38
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Introducción
A la hora de llevar a cabo la clasificación, deberán aplicarse los principios generales de la Clasificación de Niza.
La finalidad del presente anexo es aclarar la clasificación de det erminados términos problemáticos. También se proporcionan notas sobre la práctica de clasificación (que incluyen palabras o frases que no deberían utilizarse).
La base de dat os de c lasificación TMclass de l a Oficina está disponible en http://tmclass.tmdn.org
Servicios de publicidad
En principio, los servicios de publicidad pertenecen a l a clase 35. Las principales entradas en los servicios de publ icidad en la lista de servicios de la Clasificación de Niza son:
• Publicidad. • Publicidad radiofónica. • Publicidad televisada. • Servicios de composición de página con fines publicitarios. • Publicación de textos publicitarios. • Producción de películas publicitarias.
Estas entradas comprenden el diseño de m aterial publicitario y la producción de anuncios comerciales, ya que son servicios que proporcionan las agencias de publicidad.
Preparaciones para refrescar y perfumar el aire
Véase productos ambientadores perfumados y para refrescar el aire.
Juegos y aparatos recreativos electrónicos
Tras los cambios realizados en l a Clasificación de N iza el 1/1/2012, (10ª edición), todos los juegos (ya sean electrónicos o no) están clasificados en la clase 28.
Estos se muestran en la siguiente lista alfabética:
• Juegos (aparatos para -). • Videojuegos (máquinas de). • Videojuegos electrónicos (máquinas de -) para salas de juego.
La mayoría de es tos dispositivos de l a clase 28 vienen cargados con juegos. Sin embargo, estos juegos no están cargados en los dispositivos, sino que se graban en soportes de da tos o pueden ser descargados. En estos casos, los juegos se
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consideran programas de juegos que están especialmente adaptados para el uso en los dispositivos de juego y, por lo tanto, se clasificarán en la clase 9.
Véase asimismo juegos de ordenador.
Servicios de asociación o servicios prestados por una asociación a sus miembros
Estos y otros términos similares son demasiado vagos para ser admisibles. Es preciso indicar el tipo o el alcance del servicio que se presta. Ejemplos de es pecificaciones admisibles:
Clase 35: Servicios de asociación del tipo de administración de negocios.
Clase 45: Servicios prestados por una as ociación a sus miembros en f orma de servicios jurídicos.
Véase asimismo servicios de beneficencia.
Aparatos estéticos
Clase 7: Pulverizadores (máquinas) para aplicar preparaciones bronceadoras artificiales.
Clase 8: Herramientas manuales e instrumentos con una finalidad de belleza. Aparatos/agujas de tatuar. Aparatos de depilación (eléctricos y no eléctricos).
Clase 10: Masajes (aparatos de -). Aparatos de microabrasión. Aparatos para el tratamiento de la celulitis. Láseres para tratamiento cosméticos de belleza. Aparatos de fotodepilación. Aparatos de fotodepilación.
La fotodepilación es un procedimiento realizado con dispositivos de luz pulsada. Estos dispositivos emplean el mismo principio que los láseres (es decir, calentamiento del folículo capilar), aunque no son láseres.
Clase 11: Lámparas solares de rayos ultravioletas para fines cosméticos. Camas solares. Aparatos de vapor para limpiar la piel.
Clase 21: Aplicadores y cepillos cosméticos.
Recopilación de servicios
Véase servicios de pedidos y servicios de venta mayorista y minorista.
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Servicios de difusión y/o transmisión
Estos servicios son adecuados para la clase 38 y hacen referencia al mismo objeto. Los servicios prestados en este ámbito solo comprenden el suministro de los medios de comunicación (por ejemplo, el suministro de una red de cables de fibra óptica; el suministro de emisiones y transmisiones a través de instalaciones de transmisión por satélite geoestacionario, el alquiler de apa ratos y sistemas de c omunicación). La clase 38 no abarca los programas, la publicidad, la información o el asesoramiento que puedan transmitirse a través de la tecnología de telecomunicaciones o de emisión. Estos servicios seguirían estando incluidos en las correspondientes clases.
Servicios de corretaje
Estos son servicios prestados por una persona física o una empresa en que se compran y venden bienes de consumo por un honorario o comisión. La comisión podrá cobrarse al comprador o al vendedor de dicho bienes (o a ambos). Es posible que el corredor nunca vea los productos o servicios en cuestión.
Existen tres clases de servicios de corretaje, que son:
Clase 35: Corretaje de listas basadas en nombres y direcciones.
Clase 36: [Un gran número de l istas de] corretaje de f uturos, créditos de c arbono, servicios inmobiliarios, bonos, valores y otras partidas financieras.
Clase 39: Servicios de corretaje en relación con el almacenamiento, distribución y transporte.
Bolsas y estuches de transporte
Las bolsas y estuches de transporte adaptados para llevar o transportar el producto para los que están destinados se clasifican, en un pr incipio, en la misma clase que el producto al cual está adaptado. Por ejemplo bolsas de portátil pertenecen a la clase 9.
Todos los estuches de transporte no adaptados están en la clase 18.
Servicios de beneficencia
Este término es demasiado vago para ser admisible en cualquier clase sin especificarse con más detalle.
Los servicios de bene ficencia se definen por el servicio que ofrecen. Por lo tanto, podrán clasificarse en cualquiera de las clases de servicio, dada la definición correcta. Por ejemplo:
Clase 35: Servicios de beneficencia, en concreto, administración y trabajos de oficina en general.
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Clase 36: Organización de c olecciones benéficas; recaudación de f ondos de beneficencia.
Clase 38: Servicios de telecomunicaciones para fines benéficos.
Clase 39: Servicios de beneficencia, en concreto transporte de ambulancia.
Clase 40: Servicios de beneficencia, en concreto servicios de tratamiento de aguas.
Clase 41: Servicios de beneficencia, en concreto educación y formación.
Clase 42: Servicios de benef icencia, en c oncreto servicios de pr otección del medio ambiente.
Clase 43: Servicios de benef icencia, en c oncreto facilitación de c omida y bebida y alojamiento temporal.
Clase 44: Servicios de beneficencia, en concreto suministro de servicios médicos.
Clase 45: Servicios de beneficencia, en concreto orientación [personal o espiritual].
Servicios de almacenamiento y recogida
En el caso de productos físicos, tanto los servicios de almacenamiento como de recogida serían adecuados para la clase 39. Esta clase incluye en sus listas el transporte y el almacenamiento de mercancías. También incluiría la recogida y el almacenamiento físico de dat os, ya sea en f orma escrita o grabada en soportes (la Clasificación de Niza indica almacenamiento de soportes de datos o de documentos almacenados electrónicamente en la clase 39).
El término servicios de oficina de la recogida, el cotejo y la manipulación electrónica de datos son adecuados para la clase 35.
El almacenamiento de datos digitales y el almacenamiento electrónico de datos se consideran análogos a los servicios de hos pedaje de s itios web de l a clase 42. El suministro de servicios de al macenamiento de datos y de c omputación en nube también es adecuado para la clase 42.
Juegos de ordenador y aparatos de juegos de ordenador
Los términos juegos de ordenador y videojuegos son muy similares y, por lo tanto, se tratan del mismo modo.
La referencia del diccionario para videojuegos es la siguiente: 1. (sustantivo) «cualquiera de los diversos juegos, grabados en cinta o en disco
para utilizar en un ordenador doméstico, en los que se juegan manipulando un ratón, un mando, o las teclas del teclado de un ordenador, como respuesta a los gráficos de l a pantalla», (traducción al español de l a definición en i nglés del diccionario Collins English Dictionary).
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Los términos juegos de ordenador/videojuegos como tales, sólo son admisibles, por tanto, en la clase 9. La referencia del diccionario del término establece claramente que debe tratarse de un juego, es decir, de un programa informático. Por lo tanto, los términos pueden ser admisibles en la clase 9, sin que se exijan más aclaraciones.
Los juegos que son admisibles en la clase 28 vienen cargados con software de juegos. Por ejemplo, los siguientes términos son admisibles en la clase 28:
• Juegos recreativos. • Máquinas recreativas de vídeo. • Consolas de juegos de ordenador. • Aparatos para juegos. • Dispositivos de juegos de ordenador portátiles. • Máquinas de videojuegos.
Cortinas y persianas
Las persianas, en todas sus formas, pueden utilizarse por fuera o por dentro de las ventanas. La clasificación de estos productos depende de la finalidad del producto y de su composición material.
Las cortinas, por lo general, se utilizan en el interior y, de forma similar, se clasifican en función de su composición material.
Ejemplos de entradas admisibles:
Clase 6: Persianas de exterior metálicas. Persianas de ex terior metálicas como parte de un edi ficio con fines de seguridad.
Clase 17: Cortinas de seguridad de amianto (el material y la finalidad determinan la clasificación).
Clase 19: Persianas de exterior no metálicas ni de materias textiles. (Probablemente estos productos están hechos de madera).
Clase 20: Persianas de laminillas para interiores. Persianas venecianas y persianas verticales. Persianas de interior de ventanas. Persianas de interior para ventanas [mobiliario]. Cortinas de bambú. Estores de papel. Cortinas de cuentas para decorar.
Clase 24: Persianas textiles exteriores.
La gran mayoría de cortinas están comprendidas en la clase 24, dado que la mayoría de cortinas domésticas (a las que a veces se denominan «cortinajes») están hechas de materia textil o plástica.
Se debe tener cuidado con cualquier referencia a los muros cortinas o a las paredes de cortina, que se refieren a un t ipo de técnica de construcción relacionada con los
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edificios y los productos asociados son los materiales de c onstrucción y son adecuados para la clase 6 (para productos metálicos) o l a clase 19 (productos no metálicos).
Fabricación a medida/fabricación para terceros
Véanse servicios de fabricación.
Servicios relacionados con datos
El término no puede ser admisible por sí mismo, si no que debe especificarse.
El suministro de datos puede ser adecuado para varias clases, en función del modo en que se suministren los datos o la naturaleza de l os datos que se faciliten. En cada caso, será necesario establecer la naturaleza exacta del servicio que se ofrece, no será suficiente indicar el suministro de datos. A continuación, se indican ejemplos de términos admisibles y su correspondiente clasificación:
Clase 44: Prestación de datos (información) relativos al uso de productos farmacéuticos. (Esto haría referencia a la recopilación sistematizada de datos que sólo podría ser interpretada por alguien con formación médica especializada.)
Clase 45: Prestación e interpretación de datos relativos al rastreo de animales. (Esto haría referencia a los servicios relativos al traslado de animales perdidos o robados). Si los datos se destinaran a o tros fines, la clasificación sería adecuada para otras clases, por ejemplo, la clase 42 por motivos de medición o científicos.)
Servicios de diseño
Los servicios de diseño como tal son adecuados para la clase 42.
Tanto el diseño publicitario como el diseño de marcas son adecuados para la clase 35, ya que ambos forman parte de los servicios de publicidad.
De igual modo, el diseño paisajístico, diseño floral, diseño de césped y planificación [diseño] de j ardines son adecuados para la clase 44 ya que estos son servicios de horticultura.
Servicios de imagen digital
El término servicios de imagen digital ha sido suprimido de la clase 41 en l a 10ª edición de la Clasificación de Niza. Por lo tanto, el término no puede admitirse en la clase 41 si no incluye más especificaciones. Ello es así porque la imagen digital puede clasificarse en más de una clase en función del ámbito al que se refiere el servicio, es decir, médico, tecnología de la información o fotografía.
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Entre los términos admisibles se incluyen:
• Imagen digital (edición fotográfica) de la clase 41. • Servicios de imagenología médica de la clase 44. • Representación gráfica digital (servicios informáticos) de la clase 42.
Productos descargables
Todos los materiales que son descargables son adecuados para la clase 9, entre los que se incluyen publicaciones, música, tonos de l lamada, imágenes, fotografías, películas o extractos de películas. El resultado de la descarga es que el material queda almacenado en unidades o en l a memoria de un ordenador, teléfono o PDA, donde funcionará con independencia de l a fuente de donde pr oceda. También pueden denominarse productos virtuales. Todos estos productos descargables pueden s er vendidos al por menor.
Electricidad y energía
A continuación, se incluye una guía para algunos de los productos y servicios que giran en torno a la electricidad.
Clase 4: Energía eléctrica.
Clase 7: Generadores de electricidad.
Clase 9: Aparatos e i nstrumentos de c onducción, distribución, transformación, acumulación, regulación o control de la electricidad. Células solares para la producción de electricidad. Módulos y células fotovoltaicas.
Clase 36: Corretaje de electricidad (véase también la nota de servicios de corretaje).
Clase 39: Suministro eléctrico. Almacenamiento de electricidad.
Clase 40: Generación de electricidad.
Véase energía solar.
Aparatos electrónicos y eléctricos
El término aparatos, instrumentos y mecanismos eléctricos y electrónicos es demasiado vago a efectos de clasificación; no es admisible para ninguna clase de productos y debe ser especificado.
Tenga en c uenta que las especificaciones de aparatos, instrumentos y mecanismos eléctricos y electrónicos como los que se incluyen en la siguiente lista se consideran también demasiado vagos:
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• para controlar el entorno. • para uso doméstico. • para su uso en salones de peluquería.
Cigarrillos electrónicos
Los cigarrillos electrónicos, los cigarrillos eléctricos o e-cigarrillos únicamente son admisibles, a efectos de clasificación, en la clase 34, incluso si tienen un fin médico. Las partes no el ectrónicas de es tos tipos de cigarrillos, como los cartuchos, atomizadores o sustancias (aroma) para dichos cigarrillos también se clasifican en la clase 34.
Las partes electrónicas como las baterías o circuitos controlados por microordenador para los cigarrillos electrónicos no s on admisibles en es tas clases y, habitualmente, pertenecen a la clase 9.
Franquicias
El verbo «franquiciar» hace referencia a la concesión o venta de una f ranquicia a otra parte. Como nombre, «franquicia» significa «la autorización concedida a una per sona física o a un grupo por parte de una empresa para vender sus productos o servicios en un ámbito particular» (traducción al español de la definición en inglés del diccionario Oxford English Dictionary).
Sin ninguna otra especificación, la Oficina no admitirá el término servicio de franquicia o servicios de franquicias en la clase 35. Para que sea admitido se exige aclaracion. Por ejemplo:
Clase 35: Servicios de asesoramiento de negocios relacionados con franquicias. Clase 36: Servicios de financiación relativos a las franquicias.
Clase 45: Servicios jurídicos relacionados con la concesión de franquicias.
Sistemas de GPS – posición, seguimiento y navegación
El GPS y los sistemas de navegación por satélite (clase 9) proporcionan servicios de posición, seguimiento y navegación a fin de facilitar información al usuario.
El modo más sencillo para clasificar estos servicios es dividirlos entre aquellos servicios que ofrecen las telecomunicaciones que ej ecutan los servicios (clase 38) y aquellos servicios que ofrecen información a través de un dispositivo GPS. La variedad de información que se proporciona va más allá de una simple información sobre la ruta de viaje (clase 39). Puede incluir información sobre restaurantes y alojamientos (clase 43), información sobre almacenes comerciales (clase 35) o números de teléfono (clase 38).
El uso de dispositivos de GPS en relación con el desplazamiento de vehículos y de personas también puede conllevar clasificaciones en una variedad de clases. También se han mencionado los servicios de planificación de rutas (clase 39). Esta clasificación
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se extendería asimismo a las empresas de logística o de m udanzas de flete que dan un seguimiento a sus vehículos a través de los mismos dispositivos.
Los sistemas de G PS también pueden ut ilizarse junto con otras tecnologías, para localizar la fuente de una s eñal de teléfono móvil. Si esto se lleva a cabo como parte del servicio de t elecomunicaciones sería adecuado para la clase 38. Si, en cambio, esto se hace como parte de un servicio de investigación penal, sería adecuado para la clase 45.
Existen otros servicios que pueden estar asociados a l os servicios que se han mencionado anteriormente. Por ejemplo, la creación de mapas para los sistemas de GPS es adecuada para la clase 42. Las aplicaciones descargables que ejecutan el servicio u ofrecen «voces» alternativas son adecuadas para la clase 9, mientras que los servicios de venta al por menor para ofrecer solicitudes descargables lo son para la clase 35.
Los siguientes ejemplos muestran cómo se clasifican estos y otros términos.
Clase 35: Recopilación y suministro de información del directorio comercial relativa a los proveedores de servicios de navegación GPS.
Clase 38: Transmisiones vía satélite. Acceso a una guía pública de abonados para la navegación GPS. Acceso a información general suministrada vía satélite. Servicios de t elecomunicaciones para localizar y rastrear personas y objetos. Rastreo de teléfonos móviles a través de señales vía satélite. Localización de teléfonos móviles a través de señales de satélite. Acceso a servicios de navegación GPS por transmisión vía satélite. Transmisión vía satélite de datos de navegación.
Clase 39: Suministro de servicios de navegación GPS. Prestación de servicios de información de tráfico por transmisión vía satélite. Suministro de servicios de i nformación de carretera por transmisión vía satélite. Servicios de localización de vehículos y productos con fines logísticos. Servicios de seguimiento de vehículos y productos con fines logísticos.
Clase 42: Suministro de información meteorológica por transmisión vía satélite. Creación de mapas GPS.
Clase 45: Acceso a una guía de información cívica y de u tilidad pública para navegación GPS. Rastreo y localización de personas desaparecidas por transmisión vía satélite. Rastreo de personas que llevan dispositivos de etiquetado electrónicos. Servicios de rastreo de seguridad de vehículos. Servicios de localización de seguridad de vehículos.
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Peluquerías
La mayoría de aparatos eléctricos y no eléctricos para peinar el cabello están clasificados en la clase 8 (por ejemplo, rizadores eléctricos para el cabello; pinzas para el cabello [instrumentos de m ano no eléctricos]; tenacillas de r izar eléctricas, etc.). Excepto:
Clase 26: Rulos y bigudíes eléctricos (por ejemplo, CARMEN™ CURLERS).
Clase 26: Bigudíes/rulos, distintos a los instrumentos manuales.
Clase 11: Secadores de pelo.
Clase 21: Peines y cepillos (eléctricos y no eléctricos).
Servicios de alquiler
Véase servicios de alquiler.
Servicios de ayuda humanitaria
La práctica de la Oficina respecto de los servicios de ayuda humanitaria es la misma que para los servicios de beneficencia, es decir, debe especificarse la naturaleza de los servicios (véanse los servicios de beneficencia).
Servicios de Internet, servicios en línea
El término servicios de I nternet no queda claro ni es preciso para ser aceptado en ninguna clase, por lo que debe ser definido con más detalle.
Existe una g ama de servicios, ofrecidos por personas físicas y empresas a otras personas físicas y empresas, que están relacionados con el establecimiento, el funcionamiento y la instalación de s itios web de Internet. Dichos servicios están cubiertos por las correspondientes entradas en una serie de clases.
Existe una gama aún más amplia de servicios que se ofrecen a los clientes por medio de las telecomunicaciones, incluso por Internet. Es posible realizar compras en Internet, obtener asesoramiento bancario, aprender una nueva lengua, o escuchar una emisora de radio «local», que está situada al otro lado del mundo.
La aplicación del sistema de Clasificación de Niza se realiza, por lo general, con independencia de si el servicio se presta presencialmente, en locales específicos, por teléfono, en línea desde una base de datos o desde un sitio web de Internet.
Entre los términos admisibles se incluyen:
Clase 35: Servicios de publicidad prestados a través de Internet.
Clase 36: Servicios bancarios en línea.
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Clase 38: Servicios de proveedor de servicios de Internet.
Clase 41: Servicios de juegos en línea.
Clase 42: Servicios de ayuda en línea para usuarios de programas de ordenador.
Clase 45: Servicios de conexión en red social en línea.
Conjuntos y juegos
Es frecuente en el comercio que determinados productos se vendan en grupos de más de un artículo. Si los artículos son todos iguales, es decir, un paquete con tres cepillos de dientes, la clasificación será sencilla en ese caso. Sin embargo, a veces el conjunto de productos pueden ser componentes de otro artículo o t ener una función que no queda definida a través de l os productos individuales. Estos grupos de productos a veces tienen nombres colectivos como conjunto o j uego. Estas pequeñas palabras pueden tener un gran impacto en (1) su admisibilidad como un grupo de productos y (2) su correcta clasificación.
Un conjunto puede ser:
1. un grupo de partes con las que construir un objeto (por ejemplo: un conjunto de maqueta de avión) o
2. un conjunto de herramientas o equipos que se utilizarán para un fin específico (por ejemplo: botiquín de primeros auxilios).
Un juego es una serie de artículos considerados como un grupo, que puede o no tener un número definido (por ejemplo, un juego de llaves, un juego de sartenes, un juego de clubs de golf; un juego de palos de golf, un juego de cuchillos).
Los conjuntos aparecen en la Clasificación de Niza, por ejemplo, en el siguiente ejemplo:
Clase 3: Juegos de cosméticos.
Clase 5: Botiquines de primeros auxilios (considerados como un conjunto de emplastos y tratamientos).
A veces ocurre que los productos individuales que componen el conjunto o j uego normalmente se clasificarían en más de una clase. Sin embargo, la Oficina no objetará la admisibilidad de dichos términos colectivos, siempre que tengan sentido y/o sean de uso común.
Cuando se determina la correcta clasificación de un c onjunto o juego, es necesario entender para qué se va a ut ilizar el conjunto o, en s u caso, si se va a c onstruir o hacer algo con sus componentes, cuál será el artículo acabado que resultará.
Ejemplos de términos admisibles son:
Clase 8: Estuches de manicura y pedicura.
Clase 9: Kits manos libres para teléfonos.
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Clase 12: Juegos de r eparación de ruedas (para la reparación de una par te de vehículo que está comprendida en la clase 12).
Clase 27: Equipos para hacer alfombras.
Clase 28: Kits de modelos a escala [juguetes]. Maquetas de juguete para montar.
Clase 32: Kits para hacer cerveza.
Clase 33: Kits para hacer vino.
Servicios de arrendamiento
Las observaciones generales de la Clasificación de Niza (10ª edición) indican que: «los servicios de arrendamiento son similares a los servicios de alquiler y por lo tanto deberán clasificarse de la misma manera. Sin embargo, el arrendamiento con opción de compra (leasing) se clasifica en la clase 36, por tratarse de un servicio financiero.»
Véase asimismo servicios de alquiler.
Pedidos por correo
Véase servicios de venta mayorista y minorista.
Manuales (para ordenadores, etc.)
Los artículos electrónicos como ordenadores, impresoras, fotocopiadoras y otros artículos electrónicos se suelen ofrecer al cliente como productos nuevos con una lista de instrucciones de funcionamiento. Las instrucciones pueden ser en formato en papel (impresas), o en formato electrónico, como la grabación en un disco, o c omo un documento descargable o no descargable, disponible en el sitio web del fabricante.
Ejemplos de lo anterior serían:
Clase 9: Hardware y software informático y manuales relacionados en formato electrónico vendidos como unidad.
Clase 16: Manuales vendidos como unidad con software y hardware informático.
Servicios de fabricación
La fabricación solo se considera un s ervicio cuando la realizan terceros y debe s er especificada como tal. La fabricación personalizada de un único producto por parte de terceros, por ejemplo, un barco de vela o un auto deportivo, por parte de un especialista en di cho ámbito sería adecuado para la clase 40. La c onstrucción personalizada de, por ejemplo, módulos de cocina hechos a medida estaría incluida en la clase 40, aunque su instalación sería adecuada para la clase 37.
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Servicios de noticias
Los servicios de agencias de prensa son adecuados para la clase 38. Estas agencias son esencialmente un centro o un punto de recogida a través del cual los periodistas y otras personas pueden presentar y obtener materiales de interés periodístico (en forma de hi storias, guiones o f otografías). No realizan ninguna otra función, como servicios de edición o verificación.
Los servicios de r eporteros son adecuados para la clase 41. Las noticias no t ienen límites, pudiendo ser el objeto de las mismas cualquier cosa.
Entre otros ejemplos se incluyen:
Clase 38: Servicios de difusión de programas informativos.
Clase 40: Impresión de periódicos.
Clase 41: Programas de noticias. Publicación de noticias. Edición de noticias.
Por lo que se refiere a las publicaciones electrónicas de noticias, podcasts de noticias descargables, vídeos de noticias, artículos periodísticos, publicaciones periodísticas, etc., son todos productos adecuados en la clase 9.
Servicios en línea
Véase servicios de Internet.
Realización de servicios
La realización de pedidos de productos y servicios para terceros puede ser admisible en la clase 35 como servicio de neg ocios o trabajo de o ficina. Se trata de personas físicas y empresas que ofrecen servicios de suministro de soluciones a una diversidad de problemas en nombre de otras personas, por ejemplo, si necesita arreglar un grifo estropeado, el intermediario (proveedor de s ervicio) contratará los servicios de un fontanero para usted. Esta clasificación es análoga a la entrada de la Clasificación de Niza servicios de abastecimiento para terceros [compra de productos y servicios para otras empresas].
Productos ambientadores perfumados y para refrescar el aire
Se trata de pr eparaciones que sirven simplemente para enmascarar los olores desagradables (perfumes) y de preparaciones que «envuelven» químicamente y eliminan los olores desagradables (desodorizantes) y sus aparatos. A continuación, se indican su correspondiente clasificación:
Clase 3: Productos para perfumar el ambiente. Incienso. Potpurrí.
Clasificación
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 33
FINAL VERSION 1.0 DATE 01/08/2014
Bolsitas para perfumar la ropa. Madera perfumada. Productos de fumigación [perfumes]. Pulverizadores para habitaciones.
Clase 5: Desodorizantes de ambiente. Productos para purificar el aire.
Clase 11: Aparatos para desodorizar el aire.
Otros productos que pueden liberar olores agradables son las velas perfumadas (la emisión de per fume es una c aracterística secundaria) y forros de cajón en papel aromatizado (adecuado para la clase 16 como producto análogo al material de embalaje y que normalmente es de papel).
Servicios personales y sociales prestados por terceros para satisfacer necesidades individuales
La indicación general servicios personales y sociales prestados por terceros para satisfacer necesidades individuales no es una i ndicación lo suficientemente clara y precisa y no será admisible por la Oficina (véase asimismo el apartado 3.4.2).
El solicitante deberá especificar el texto.
Existen muchos servicios personales y sociales que son clasificables pero que son adecuados para clases distintas de la clase 45, entre los que se incluyen:
Clase 36: Servicios de seguros personales (como los seguros de vida).
Clase 41: Clases particulares.
Clase 44: Servicios médicos personales.
Clase 45: Escoltas personales. Servicios de consultas sobre aspecto personal. Servicios de guías turísticos personales. Servicios personales de compra.
Artículos de metales preciosos
La indicación general artículos de metales preciosos o de chapado no comprendidos en otras clases de la clase 14 no es lo suficiente clara ni precisa y no será admisible por la Oficina (véase asimismo el apartado 3.4.2). El solicitante deberá especificar el texto del término.
Al clasificar los productos hechos con metales preciosos se debe actuar con precaución.
Tradicionalmente, casi todos los productos que estaban fabricados con metales preciosos o c hapados con los mismos se agrupaban en l a clase 14, ya que se
Clasificación
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 34
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consideraba que el material influía en el motivo por el que se compraban los productos y que, a su vez, determinaba en qué clase se clasificaban dichos productos.
Desde el 1 de enero de 2007, se ha r ealizado una reclasificación de m uchos de l os productos que habrían podido estar en la clase 14. La reclasificación de los productos está basada en la función de los mismos, en lugar de en el material con que están hechos.
Los siguientes productos son ejemplos de productos que han sido clasificados según su función o finalidad:
Clase 8: Cubertería de metales preciosos.
Clase 16: Plumas para escribir de oro.
Clase 21: Teteras de metales preciosos.
Clase 34: Cajas de cigarrillos o de puros de metales preciosos.
Ropa de protección
Si los artículos que se llevan puestos (o a veces que se cargan) tiene como función principal la prevención de daños graves y/o permanentes, de l a muerte o si la protección que ofrecen es frente a, por ejemplo, una exposición a temperaturas extremas, productos químicos, radiaciones, incendios o peligros atmosféricos o medioambientales, dichos productos podrían ser adecuados para la clase 9.
Entre los ejemplos de di chos productos de pr otección se incluirían los sombreros rígidos en las obras y los cascos que llevan los agentes de seguridad, los jinetes, los motociclistas y los jugadores de fútbol americano. Los chalecos antibalas, el calzado con puntera metálica, las chaquetas ignífugas y los guantes metálicos de carnicero son algunos ejemplos de este tipo de productos, ya que no son prendas de vestir como tales. Los delantales, las batas y los monos que solo protegen de las manchas y la suciedad no s on adecuados para la clase 9 sino para la clase 25, ya que son prendas de v estir en g eneral. Los artículos de deporte de pr otección (excepto los cascos) son adecuados para la clase 28, ya que ninguno de el los protege contra la pérdida de la vida o de un miembro.
Servicios de alquiler
Los servicios de alquiler o de ar rendamiento se clasifican, en pr incipio, en la misma clase que los servicios que se prestan. Por ejemplo, el alquiler de v ehículos queda comprendido dentro de la clase 39 (transporte), el alquiler de teléfonos en la clase 38 (telecomunicaciones), el alquiler de máquinas expendedoras de la clase 35 (venta al por menor). El mismo principio es aplicable a l os servicios de a rrendamiento que pueden encontrarse en la herramienta TMclass en todas las clases de servicios.
Clasificación
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 35
FINAL VERSION 1.0 DATE 01/08/2014
Servicios de venta mayorista y minorista
Un servicio de venta al por menor se define como «la actividad o negocio de vender productos en cantidades relativamente pequeñas para su uso o consumo» (traducido al español de la definición en inglés del Oxford English Dictionary), lo cual define el alcance de los servicios cubiertos por dicho término.
En la nota explicativa de la lista de l a clase 35 de l a Clasificación de N iza hay una indicación de que la expresión el agrupamiento, en beneficio de terceros, de productos diversos (excepto su transporte), para que l os consumidores puedan ex aminarlos y comprarlos a s u conveniencia es admisible en la clase 35. Los servicios de v enta minorista se clasifican por analogía con esta entrada.
Sin embargo, por lo que se refiere a los servicios minoristas u otros servicios similares de la clase 35 relacionados con la venta de productos, como los servicios mayoristas, los servicios de env ío por correo y los servicios de c omercio electrónico, la Oficina aplica lo establecido en l a sentencia de 7/7/2005, en el asunto C-418/02, «PRAKTIKER»: el término servicios de comercio al por menor solo es admisible para los productos que se venden tal como se ha indicado. Para más información, véase la Comunicación nº 07/05 del Presidente de la Oficina.
Si la naturaleza del lugar en que se venden los productos es lo suficientemente específica para permitir que se reconozca la categoría de los productos, esto también será admisible. Entre los textos admisibles se incluyen:
• Servicios de venta al por menor relacionados con tiendas de ropa. • Servicios de venta minorista relacionados con centros de jardinería. • Servicios de venta minorista relacionados con panaderías.
Tal como muestra la Comunicación del Presidente, el término servicios de venta minorista de un s upermercado y, por extensión, servicios de v enta al por menor en relación con grandes almacenes y términos similares no s on admisibles ya que los productos que se venden no quedan definidos.
La 10ª edición de la Clasificación de Niza (versión de 2013) incluye venta al por menor o al mayor de pr eparaciones farmacéuticas, veterinarias y sanitarias, así como suministros médicos, lo cual muestra cómo pueden expresarse los términos.
Entre los ejemplos de categorías de productos que pueden considerarse demasiado vagos a efectos de clasificación se incluyen:
• Artículos de comercialización. • Productos del comercio equitativo. • Accesorios de estilo de vida. • Artículos de regalo. • Recuerdos. • Artículos coleccionables. • Artículos de menaje.
Entre los ejemplos de categorías de productos que no son admisibles en relación con los servicios de venta al por menor cuando se consideran un servicio adecuado para una clase distinta se incluyen:
Clasificación
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 36
FINAL VERSION 1.0 DATE 01/08/2014
• Productos financieros – estos servicios son, de hecho, servicios financieros clasificados en la clase 36.
• Billetes de lotería – estos son servicios de lotería clasificados en la clase 41. • Billetes de avión – estos forman parte de los servicios de agencias de viajes de
la clase 39.
Por último, los servicios de venta al por menor para las indicaciones generales no admisibles de los títulos de clase (véase el apartado 3.4.2) no son admisibles. Por ejemplo, la Oficina no admitirá los servicios de v enta minorista de máquinas. Sin embargo, los servicios de venta al por menor en relación con las máquinas agrícolas serían lo suficientemente precisos y admisibles.
La especificación de los productos con términos como “incluyendo, en particular, por ejemplo, que presenta, específicamente, tales como” no es lo suficientemente precisa ya que todos estos términos significan, en p rincipio, “por ejemplo”. No limitan los productos que siguen a continuación. En consecuencia, los términos citados anteriormente deben ser sustituidos por «en concreto o siendo» ya que los productos que siguen a estos términos quedarán limitados.
Seguimiento vía satélite
Véase sistemas de GPS – posición, seguimiento y navegación.
Juegos
Véase conjuntos y juegos.
Servicios de conexión en red social
Los servicios de c onexión en r ed social es un término admisible en l a clase 45. Se considerarán un servicio personal que incluye la identificación y la presentación de personas con una línea de pensamiento afín a efectos sociales.
Existen otros aspectos de la industria de «red social» que pueden ser adecuados para clases distintas de la clase 45, por ejemplo:
Clase 38: Dirección de charlas universitarias. Acceso a foros en línea.
Publicación de software
La publicación de s oftware pertenece a l a clase 41. Un editor de s oftware es una editorial de s oftware sectorial entre el desarrollador y el distribuidor. La publ icación, según su definición, incluye la publicación de periódicos y la publicación de software.
Clasificación
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 37
FINAL VERSION 1.0 DATE 01/08/2014
Energía solar
La energía solar es la energía que se deriva del sol y se convierte en c alor o electricidad.
Los productos relacionados con la generación y el almacenamiento de corriente a partir de energía solar se clasifican en la clase 9.
Los productos relacionados con la generación y el almacenamiento de calor a partir de energía solar se clasifican en la clase 11.
Los servicios relacionados con la generación de corriente a partir de energía solar se clasifican en la clase 40.
Clase 9: Células fotovoltaicas. Paneles, módulos y células solares.
Clase 11: Colectores solares para calefacción.
Clase 40: Producción de energía.
Véase electricidad y energía.
Servicios de almacenamiento
Véase servicios de almacenamiento y recogida.
Suministro de...
Debe tenerse cuidado a la hora de admitir este término cuando se utiliza para calificar servicios. Es admisible en al gunas circunstancias, por ejemplo, suministro de electricidad en la clase 39, cuando el término está estrechamente relacionado con la distribución. También es admisible en el término servicios de abastecimiento para el suministro de c omidas (en la clase 43), porque se ha especificado tanto el material suministrado como la naturaleza del servicio.
En el término suministro de s oftware informático (en la clase 42) no es tá claro qué servicios se suministran. Mientras que esta clase no incluye los servicios de diseño, alquiler, actualización y mantenimiento de software informático no está claro si algunos de estos servicios queda incluidos en el término general suministro. La palabra se suele utilizar como un sinónimo aparente para los servicios de venta al por menor aunque la clase 42 no incluye estos servicios, que serían adecuados para la clase 35.
Sistemas
Existe otro término que puede ser demasiado poco claro o impreciso para ser admisible.
Solo puede admitirse cuando se califiquen de un modo que tenga un significado claro o inequívoco. Por ejemplo, son admisibles los siguientes términos:
Clasificación
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 38
FINAL VERSION 1.0 DATE 01/08/2014
Clase 7: Tubos de escape.
Clase 9: Sistemas de telecomunicaciones. Sistemas informáticos. Sistemas de alarmas.
Clase 16: Sistemas de archivo.
Billetes (de viaje, entretenimiento, etc.)
Un billete es una «promesa de suministro» en relación con un servicio, un servicio de reserva, el derecho al servicio. Entre los ejemplos se incluyen:
Clase 39: Emisión de billetes de avión.
Clase 41: Servicios de venta de entradas (taquilla).
Téngase en cuenta que los billetes no se consideran productos vendidos al por menor de la clase 35.
Videojuegos
Véase juegos de ordenador.
Entorno virtual
El término suministro de un entorno virtual ni es lo suficientemente claro ni preciso ya que puede estar relacionado con distintos ámbitos de actividades y clases, por lo que debe ser definido con más detalle.
Entre los términos admisibles se incluyen:
Clase 38: Acceso a salas de conversación virtuales. Servicios de acceso a entornos virtuales.
Clase 42: Hospedaje de un entorno virtual. Mantenimiento de un entorno virtual.
Clasificación
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 39
FINAL VERSION 1.0 DATE 01/08/2014
Historial de revisión
Versión Fecha Autor Descripción 1.1 6.9.2013 CDD Borrador preliminar del documento 1.2 6.9.2013 CDD Se incorporan las observaciones del AP
y TC 1.3 13.9.2013 CDD Borrador adaptado tras la reunión del
CP1 de 12 de septiembre de 2013 1.4 16.9.2013 CDD Borrador adaptado tras la reunión del
proceso de i ntensificación de 11 de septiembre de 2013
1.5 22.9.2013 CDD Se incluyen todos los cambios para el ciclo de revisión
1.6 27.9.2013 AP/AW/KK/MJ Se han incluido los cambios propuestos por los miembros KC + QS
1.7 1.10.2013 JL Se ha i ncluido el cambio propuesto por JL sobre las directrices de admisibilidad
1.8 4.10.2013 CDD Propuesta para los miembros del KC 1.9 9.10.2013 ZS Se han i ncluido las observaciones del
miembro del KC 2.0 20.11.2013 CDD Revisión tras las observaciones del OD 2.1 16.12.2013 CDD Corrección + últimos cambios CP1 –
CC3, listo para traducción
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 1
FINAL VERSION 1.0 DATE 01/08/2014
DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE B
EXAMEN
SECCIÓN 4
MOTIVOS DE DENEGACIÓN ABSOLUTOS
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 2
FINAL VERSION 1.0 DATE 01/08/2014
Índice
2.6 El orden público y las buenas costumbres (artículo 7, apartado 1, letra f), del RMC)...................................................................................................... 4
2.6.1 «Orden público» ...................................................................................................... 4 2.6.1.1 Concepto y categorías .........................................................................................4 2.6.1.2 Denominaciones de variedades vegetales...........................................................5
2.6.2 Buenas costumbres................................................................................................. 7
2.7 Posibilidad de inducir a error: Artículo 7, apartado 1, letra g), del RMC. 10 2.7.1 Examen del carácter engañoso............................................................................ 10 2.7.2 La realidad del mercado y los hábitos y percepciones de los
consumidores ........................................................................................................ 12 2.7.3 Marcas con connotaciones geográficas relativas a la ubicación del
solicitante o el lugar de origen de los productos o servicios .................................13 2.7.4 Marcas que hacen referencia a una aprobación, estado o r econocimiento
«oficial» ................................................................................................................. 14 2.7.5 Relación con otras disposiciones del RMC .......................................................... 14
2.8 Protección de banderas y de otros símbolos – artículo 7, apartado 1, letras h) e i), del RMC................................................................................ 16
2.8.1. P rotección de los escudos de armas, banderas, otros emblemas de Estado, signos y punzones oficiales de control y de garantía, con arreglo al artículo 7, apartado 1, letra h), del RMC – artículo 6 ter, apartado 1, letra a), y apartado 2, del Convenio de París................................................................ 17
2.8.1.1 Examen de marcas que consistan en una bandera de Estado o que la contengan....................................................................................................20
2.8.1.2. Examen de las marcas que consistan en escudos de armas y otros emblemas de Estado o que los contengan......................................................24
2.8.1.3 Examen de las marcas que consistan en signos y punzones oficiales de control y de garantía o que los contengan..................................................26
2.8.2. Protección de los escudos de armas, banderas, otros emblemas, siglas y denominaciones de organizaciones internacionales intergubernamentales con arreglo al artículo 7, apartado 1, letra h) del RMC – artículo 6 ter, apartado 1, letras b) y c), del Convenio de París.........................27
2.8.3. Protección de distintivos, emblemas o blasones distintos de los incluidos en el artículo 6 ter del Convenio d e París, con arreglo al artículo 7, apartado 1, letra i), del RMC ................................................................ 34
2.9 Artículo 7, apartado 1, letra j), del RMC .................................................... 40 2.9.1 Introducción ......................................................................................................... 40 2.9.2 La aplicación del artículo 7, apartado 1, letra j), del RMC...................................42
2.9.2.1 DOP/IGP pertinentes ........................................................................................42 2.9.2.2 Situaciones contempladas por el artículo 103 del Reglamento (UE) nº
1308/2013 y el artículo 16 del Reglamento (CE) nº 110/2008. ........................44 2.9.2.3 Productos pertinentes .......................................................................................52
2.9.3 DOP/IGP no protegidas con arreglo a los Reglamentos nº 1308/2013 y nº 110/2008 ............................................................................................................... 54
2.9.3.1 DOP/IGP protegidas a escala nacional en un Estado miembro de la UE .........54 2.9.3.2 DOP/IGP de terceros países.............................................................................55
2.10 Artículo 7, apartado 1, letra k), del RMC ................................................... 57 2.10.1 Introducción ......................................................................................................... 57 2.10.2 La aplicación del artículo 7, apartado 1, letra k), del RMC..................................59
2.10.2.1 DOP/IGP pertinentes.........................................................................................59
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 3
FINAL VERSION 1.0 DATE 01/08/2014
2.10.2.2 Situaciones contempladas en el artículo 13, apartado 1, del Reglamento (UE) nº 1151/2012...........................................................................................60
2.10.2.3 Productos pertinentes .......................................................................................69 2.10.3 DOP/IGP no protegidas conforme al Reglamento (UE) nº 1151/2012................72
2.10.3.1 DOP/IGP protegidas a escala nacional en un Estado miembro de la UE..........72 2.10.3.2 DOP/IGP de terceros países .............................................................................73
2.11 Marcas comunitarias colectivas................................................................ 75 2.11.1 Carácter de las marcas colectivas........................................................................ 75 2.11.2 Titularidad............................................................................................................. 76 2.11.3 Particularidades respecto de los motivos de denegación absolutos....................77
2.11.3.1 Signos descriptivos ...........................................................................................78 2.11.3.2 Carácter engañoso en cuanto a su naturaleza..................................................78 2.11.3.3 Reglamento de uso contrario al orden público y a las buenas costumbres.......79
2.12 Carácter distintivo adquirido..................................................................... 79 2.12.1 Introducción .......................................................................................................... 79 2.12.2 Solicitud ................................................................................................................ 80 2.12.3 Fecha a la que deben referirse las pruebas......................................................... 80
2.12.3.1 Procedimientos de examen...............................................................................80 2.12.3.2 Procedimientos de cancelación.........................................................................80
2.12.4 Consumidor ......................................................................................................... 80 2.12.5 Productos y servicios............................................................................................ 81 2.12.6 Aspectos territoriales ............................................................................................ 81
2.12.6.1 Disposiciones especiales respecto a la adhesión de nuevos Estados miembros...........................................................................................82
2.12.6.2 Marcas en 3D, colores per se y marcas figurativas...........................................82 2.12.6.3 Zona lingüística .................................................................................................82
2.12.7 Qué debe demostrarse......................................................................................... 84 2.12.8 Las pruebas y su evaluación ................................................................................ 85
2.12.8.1 Tipo de pruebas que pueden presentarse.........................................................85 2.12.8.2 Evaluación de pruebas en su conjunto..............................................................86 2.12.8.3 Cuota de mercado.............................................................................................86 2.12.8.4 Encuestas y sondeos de opinión.......................................................................86 2.12.8.5 Volumen de negocios y publicidad ....................................................................87 2.12.8.6 Pruebas de uso indirectas.................................................................................88 2.12.8.7 Extrapolación ....................................................................................................88 2.12.8.8 Modo de uso .....................................................................................................89 2.12.8.9 Duración del uso ...............................................................................................89 2.12.8.10 Pruebas posteriores a la fecha de presentación .............................................89
2.12.9 Consecuencias del carácter distintivo adquirido ..................................................89
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 4
FINAL VERSION 1.0 DATE 01/08/2014
2.6 El orden público y las buenas costumbres (artículo 7, apartado 1, letra f), del RMC)
El artículo 7, apartado 1, letra f), del RMC excluye del registro las marcas que sean contrarias al orden público o a las buenas costumbres. La finalidad de esta disposición es excluir del registro aquellas marcas en las que la concesión de un m onopolio contravendría el Estado de de recho o sería percibido por el público destinatario como directamente contraria a las normas morales básicas de la sociedad.
La Oficina considera que el «orden público» y las «buenas costumbres» son dos conceptos diferentes, que a menudo se solapan.
La cuestión de si los productos o servicios solicitados pueden ofrecerse legalmente en el mercado de un determinado Estado miembro es irrelevante para la cuestión de si el signo en sí está incluido en el artículo 7, apartado 1, letra f), del RMC (sentencia de 13/9/2005, en el asunto T-140/02, «INTERTOPS», apartado 33). Para determinar si una m arca es contraria o no al orden público o a l as buenas costumbres debe atenderse a las cualidades intrínsecas de la marca solicitada y no a c ircunstancias relativas al comportamiento de la persona solicitante (sentencia de 13/9/2005, en el asunto T-140/02, «INTERTOPS», apartado 28). En su sentencia de 20/9/2011, en el asunto T-232/10, «Escudo soviético», el Tribunal General consideró que los conceptos de «orden público» y «buenas costumbres» deben interpretarse no solo en consideración a las circunstancias comunes al conjunto de los Estados miembros de l a Unión, sino también a «las circunstancias particulares de l os Estados miembros individualmente considerados que puedan influir en la percepción del público destinatario situado en el territorio de tales Estados» (apartado 34).
En este contexto (puede tenerse en cuenta también la legislación y la práctica administrativa de determinados Estados miembros, no por su valor normativo, sino como prueba de hechos que permiten evaluar la percepción del público destinatario de esos Estados (sentencia de 20/9/2011, en el asunto T-232/10, «Escudo soviético», apartado 57). En este caso, la ilegalidad de la MC solicitada no es el factor determinante de la aplicación del artículo 7, apartado 1, letra f), del RMC, sino que más bien tiene un valor probatorio de la percepción del público destinatario en el Estado miembro en cuestión.
Dado que las circunstancias específicas de los Estados miembros individualmente considerados pueden no ser de conocimiento general en el territorio europeo, la carta de objeción debe explicar claramente estas circunstancias, para garantizar que el solicitante comprende plenamente los motivos de objeción y puede responder de forma adecuada.
2.6.1 «Orden público»
2.6.1.1 Concepto y categorías
Esta objeción se deriva de una evaluación basada en criterios objetivos. El «orden público» se refiere a la legislación de la Unión aplicable en una determinada área, así como al ordenamiento jurídico y el Estado de derecho tal como se definen en los Tratados y en el Derecho derivado, que refleja un ent endimiento común de c iertos principios y valores básicos, como los derechos humanos.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 5
FINAL VERSION 1.0 DATE 01/08/2014
A continuación se expone una lista no exhaustiva de ejemplos de signos a los que es de aplicación esta prohibición.
1. El 27/12/2001 el Consejo de la Unión Europea adoptó la Posición Común 2001/931/PESC sobre la aplicación de medidas específicas de lucha contra el terrorismo (DO L 344 de 28/12/2001, p. 93), posteriormente actualizada por la Posición Común del Consejo 2009/64/PESC (DO L 23 de 27/1/2009, p. 37 y disponible en línea en: http://eur- lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:023:0025:0029:ES:PDF), que contiene una lista de personas, grupos y entidades que facilitan, tratan de cometer o cometen actos terroristas en el territorio de la UE. Cualquier MC solicitada que pueda considerarse que apoya o beneficia a una persona, un grupo o una entidad de esta lista será denegada por ser contraria al orden público.
2. El uso de símbolos y nombres de organizaciones nazis está prohibido en Alemania (artículo 86a del StGB (Código penal alemán), BGBl. Nr. I 75/1998) y en Austria (artículo 1 de la Abzeichengesetz (Ley sobre insignias), BGBl. Nr. 84/1960, en conjunción con el artículo 1 de la Verbotsgesetz (Ley de prohibición), BGBl. Nr. 25/1947). Una solicitud de MC que utilice estos símbolos o nombres será denegada por ser contraria al orden público.
3. Teniendo en cuenta que el concepto de «orden público» incluye también la legislación específica de la UE vigente en un determinado campo y que hasta el momento existe un reglamento de la Unión y un convenio internacional vinculante para la Unión Europea que impide conceder derechos exclusivos sobre el nombre de una variedad vegetal registrada en la Unión, resulta contrario al orden público europeo conceder derechos exclusivos de marca sobre el nombre de una variedad vegetal registrada en la Unión Europea, el cual se considera legalmente, por tanto, como descriptivo.
2.6.1.2 Denominaciones de variedades vegetales
Los nombres de las variedades vegetales describen variedades o subespecies cultivadas de plantas vivas o semillas agrícolas. El Reglamento (CE) nº 2100/2004, relativo a la protección comunitaria de las variedades vegetales (RPCVV) establece un sistema de protección comunitaria de variedades vegetales como única y exclusiva forma de protección comunitaria de variedades vegetales.
Una denominación de variedad vegetal debe asegurar la identificación clara e indudable de la variedad, cumpliendo diferentes criterios (Artículo 63 RPCVV). El solicitante de una VG debe da r una deno minación apropiada de la variedad, que deberá ser usada por cualquiera que la ponga en el mercado en el territorio de un miembro de la Unión para la protección de obtenciones vegetales (UPOV), incluso después de la expiración del derecho del obtentor (artículo 17 del Convenio de la UPOV.
La Unión Europea es parte del Convenio Internacional para la Protección de las Obtenciones Vegetales (Convenio de la UPOV), que forma parte del ordenamiento jurídico de l a Unión. Con arreglo al artículo 20, apartado 1, de di cho Convenio, la obtención se designará por una denominación que será su nombre genérico. Cada Parte Contratante se asegurará de que ningún derecho relativo a la designación registrada como la denominación de la variedad obstaculice la libre utilización de la denominación en relación con la variedad, incluso después de la terminación del derecho de obtentor.
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Por lo tanto, tanto el RPCVV como el Convenio de l a UPOV imponen la obligación de utilizar las denominaciones de variedades con el fin de comercializar las variedades o variedades protegidas cuya protección ha terminado.
La utilización de las denominaciones de v ariedades permite a l a persona interesada conocer la variedad que está utilizando o comprando y, posiblemente, el obtentor y el origen de la variedad. La obligación de utilizar las denominaciones de variedades contribuye a la regulación del mercado y a la seguridad de las transacciones en el sector agrícola y alimentario, evitando el potencial engaño al público y la falsificación. Por tanto, es un asunto de interés público y de seguridad pública utilizar la adecuada denominación varietal en relación con una variedad.
De acuerdo con el art. 18, apartado 2 CPOV (, un tercero puede obstaculizar la libre utilización de la denominación varietal sólo si se concedieron los derechos respecto de una designación que sea idéntica a l a denominación de l a variedad antes de que esa denominación de la variedad fuera designada con arreglo al artículo 63 CPOV
A contrario, el art. 18, apartado 2 CPOV implica que no podrán concederse derechos exclusivos respecto de una designación que sea idéntica a la denominación de l a variedad, una vez que dicha denominación varietal haya sido designada de conformidad con el art. 63 CPOV.
Por lo tanto, la OAMI considera que el registro de una marca comunitaria que obstaculice la libre utilización de la denominación de una variedad después de la concesión de una protección comunitaria a la variedad correspondiente es contrario al orden público.
Como consecuencia de ello, las solicitudes de MC que consistan o contengan signos que, si fueran registrados, conducirían a una monopolización indebida de una denominación de variedad que designa una variedad protegida por una protección comunitaria o de una variedad que ya no está protegida por una protección comunitaria, deberán ser denegadas sobre la base de ser contrarias al orden público en virtud del artículo 7 (1) (f) del RMC, en relación con el artículo 18, apartado 2 RPOV, que prevé el libre uso por terceros de la denominación de una variedad vegetal en relación con la variedad en sí (es decir, el uso descriptivo).
La Oficina Comunitaria de Variedades Vegetales (OCVV), con sede en Angers (Francia), es la agencia de la Unión Europea responsable de la implementación de un sistema para la protección de las obtenciones vegetales.
La OCVV mantiene un registro de v ariedades vegetales protegidas. Las variedades protegidas y de las variedades cuyo derecho haya expirado se pueden buscar, en base a su denominación de la variedad y / o otros criterios de búsqueda, a través del Buscador de Variedad de la OCVV1, disponible en la intranet de la Oficina, que debe ser consultada por los examinadores como herramienta de referencia cada vez que el tipo de productos y / o servicios objeto de la solicitud de marca comunitaria así lo aconseje. En particular, cuando la especificación de una solicitud de marca comunitaria se refiera a las plantas vivas, semillas agrícolas, frutas frescas, vegetales frescos o expresiones equivalentes, el examinador debe verificar que el término o términos que componen la marca no coincidan con la denominación de variedad registrada o con la denominación de una variedad cuya protección haya terminado, caducado o se haya renunciado a la misma. El examinador comprobará la base de datos de la OCVV a fin de determinar si el término o términos que componen la solicitud de marca comunitaria coinciden con una
1 http://www.cpvo.europa.eu/main/en/home/databases/cpvo-variety-finder
Motivos de denegación absolutos
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denominación varietal ya inscrita en el registro de la OCVV mencionada. La búsqueda debe limitarse a las denominaciones de variedades registradas por la Unión. Si la búsqueda revela que la CTM solicitada consiste en o contiene una reproducción idéntica de l a denominación de l a variedad (ya sea en una palabra o en una marca figurativa), el examinador debe formular una objeción de conformidad con el artículo 7 (1) (f) del RMC respecto de la planta correspondiente, semillas y frutas, así como las frutas secas, en conserva y congeladas, ya que el registro de una marca comunitaria que consta de una denominación de v ariedad inscrita en el registro de la UE antes mencionado es contraria al orden público. Si, por ejemplo, una marca comunitaria solicitada para 'flores' contiene una denominación para un tipo de rosa, la lista de productos tendrá que ser limitada a fin de excluir "rosas". Por otra parte, si más de una denominación figura en una marca comunitaria solicitada –por ejemplo, una denominación de 'manzanas' y otra de ‘fresas’-, la lista de p roductos tendrá que ser limitada a fin de ex cluir los productos que designa cada denominación, es decir, las manzanas y las fresas
Por último, cuando se utiliza una denominación de las variedades vegetales en el mercado, pero no ha sido registrada o publicada en la OCVV, o en caso de una denominación nacional, pueden resultar aplicables los artículos 7 (c) (1) y 7 (1) (d) (ver secciones 2.3 y 2.4).
2.6.2 Buenas costumbres
Esta objeción hace referencia a valores subjetivos, pero que el examinador debe aplicar del modo más objetivo posible. El artículo 7, apartado 1, letra f), del RMC excluye del registro las palabras o frases blasfemas, racistas o discriminatorias, pero únicamente si la marca cuyo registro se solicita transmite su significado inequívocamente y sin ambigüedad; la apreciación debe hacerse sobre la base de los criterios de una persona razonable con unos umbrales medios de sensibilidad y tolerancia (sentencia de 9/3/2012, en el asunto T-417/10, «¡QUE BUENU YE! HIJOPUTA», apartado 21).
Normalmente es necesario considerar los productos y servicios para los que se solicita el registro de la marca, ya que el público destinatario puede ser diferente para distintos productos y servicios y, por tanto, puede tener distintos umbrales sobre lo que se considera de forma clara inaceptablemente ofensivo. Por ejemplo, la Sala Ampliada consideró en su resolución de 6/7/2006, R 0495/2005-G – «SCREW YOU», apartado 29, que «una persona suficientemente interesada en [juguetes sexuales] para advertir las marcas bajo las que se venden no se sentirá probablemente ofendida por un término con connotaciones sexuales groseras.» No obstante, aunque el Tribunal ha considerado que los productos y servicios solicitados son importantes para identificar al público destinatario cuya percepción debe examinarse; ha señalado también con claridad que el público destinatario no es necesariamente el que compra los productos y servicios cubiertos por la marca, ya que puede encontrar la marca un público más amplio que el de los consumidores objetivo (sentencia de 5/10/2011, en el asunto T- 526/09, «PAKI», apartados 17 y 18, respectivamente). Por tanto, el contexto comercial de una marca, en el sentido del público al que se dirigen los productos y servicios, no es siempre el factor determinante de si la marca es contraria a las buenas costumbres (sentencia de 9/3/2012, en el asunto T-417/10, «¡QUE BUENU YE! HIJOPUTA», apartado 24). Véase también la resolución de 15/3/2013, R 2073/2012-4, − «CURVE», apartados 17 y 18 (T-266/13 – pendiente).
No solo los signos con connotación «negativa» pueden ser ofensivos. Puede serlo también el uso banal de ciertos signos con connotación muy positiva (por ejemplo,
Motivos de denegación absolutos
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términos con significado religioso o símbolos nacionales con valor espiritual y político, como ATATURK para el público general europeo de origen turco (resolución de 17/9/2012, R 2613/2011-2 – «ATATURK», apartado 31). No es necesario que exista una ilegalidad para que se aplique esta parte del artículo 7, apartado 1, letra f), del RMC: hay palabras y signos que no dan lugar a un procedimiento ante las autoridades administrativas o judiciales pero son suficientemente ofensivos para el público en general como para no registrarlos como marcas (resolución de 1/9/2011, R 0168/2011-1 – «fucking freezing! by TÜRPITZ», apartado 16). Por otra parte, hay que velar por que los niños y jóvenes, aunque no sean el público destinatario de los productos y servicios en cuestión, no encuentren palabras ofensivas en tiendas abiertas al público en general. Las definiciones del diccionario pueden aportar una indicación preliminar acerca de si la palabra en cuestión tiene un significado ofensivo en la lengua en cuestión (resolución de 1/9/2011, R 0168/2011-1 – «fucking freezing! by TÜRPITZ», apartado 25), pero el factor clave debe ser la percepción del público destinatario en el contexto específico de cómo y dónde se encontrarán los productos o servicios.
Por otra parte, la Sala de Recurso consideró que la palabra KURO no transmitía al público húngaro el significado ofensivo de la palabra «kúró» («hijoputa» o «cabrón» en español), pues las vocales «ó» y «ú» son letras diferentes a «o» y «u» y se pronuncian de modo distinto (resolución de 22/12/2012, R 482/2012-1 – «kuro», apartado 12 y siguientes).
Existe un riesgo evidente de aplicación subjetiva del artículo 7, apartado 1, letra f), para excluir marcas que no sean del gusto del examinador. No obstante, para suscitar una objeción, la palabra o palabras deben ofender de forma inequívoca a las personas con un grado normal de sensibilidad (sentencia de 9/3/2012, en el asunto T-417/10, «¡QUE BUENU YE! HIJOPUTA», apartado 21).
El concepto de moralidad del artículo 7, apartado 1, letra f), no concierne al mal gusto ni a la protección de los sentimientos de las personas. Para desestimar el registro de una marca en virtud de ese precepto, la marca debe ser percibida por el público destinatario, o al menos por una parte importante del mismo, como algo que contraviene directamente las normas morales básicas de la sociedad.
No es necesario acreditar que el solicitante desee perturbar o insultar al público en cuestión; basta con el hecho objetivo de que la MC solicitada pueda considerarse como una perturbación o un insulto (resolución de 23/10/2009, R 1805/2007-1 – «PAKI», apartado 27, confirmada por la sentencia de 5/10/2011, en el asunto T-526/09, «PAKI», apartado 20 y siguientes).
Por último, la aplicación del artículo 7, apartado 1, letra f), del RMC no está limitada por el principio de libertad de expresión (artículo 10 del Convenio Europeo de Derechos Humanos), ya que la denegación del registro sólo significa que el signo no recibe protección con arreglo al Derecho de marcas, pero no impide su uso, ni aun en la actividad empresarial (sentencia de 9/3/2012, en el asunto T-417/10, ««¡QUE BUENU YE! HIJOPUTA», apartado 26).
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 9
FINAL VERSION 1.0 DATE 01/08/2014
Ejemplos de marcas comunitarias desestimadas (orden público y buenas costumbres)
Signo Consumidoresrelevantes Orden público / buenas costumbres Asunto
BIN LADIN Consumidoresgenerales
Buenas costumbres y orden público: la marca solicitada será entendida por el público general como el nombre del dirigente de la conocida organización terrorista Al Qaeda; los delitos terroristas son contrarios al orden público y las buenas costumbres (apartado 17)
R 0176/2004-2
CURVE 300 Consumidoresgenerales
Buenas costumbres: «CURVE» es en rumano una palabra ofensiva y vulgar (significa «putas»).
R 0288/2012-2
CURVE Consumidoresgenerales
Buenas costumbres: «CURVE» es en rumano una palabra ofensiva y vulgar (significa «putas»).
R 2073/2012-4 (T-266/13 – pendiente)
Consumidores generales
Buenas costumbres: «fucking» es en inglés una palabra ofensiva y vulgar. R 0168/2011-1
Consumidores generales
Buenas costumbres: «HIJOPUTA» es en español una palabra ofensiva y vulgar.
T-417/10
Consumidores generales
El Código penal húngaro prohíbe ciertos «símbolos de despotismo», entre ellos la hoz y el martillo y la estrella roja de cinco puntas que simbolizan a la antigua URSS. Esta disposición no es aplicable por su valor normativo, sino como prueba de la percepción del público destinatario (apartados 59 a 63).
T-232/10
PAKI Consumidoresgenerales Buenas costumbres. «PAKI» es en inglés un insulto racista. T-526/09
SCREW YOU Consumidores generales (productos no sexuales)
Buenas costumbres: una parte sustancial de los ciudadanos normales de Gran Bretaña e Irlanda encontrarían las palabras «SCREW YOU» ofensivas y objetables (apartado 26).
R 0495/2005-G
FICKEN Consumidoresgenerales
Buenas costumbres: «FICKEN» es en alemán una palabra ofensiva y vulgar (significa «joder»).
(T-52/13)
ATATURK
Consumidor medio del público general europeo de origen turco
El uso banal de signos con una fuerte connotación positiva puede ser ofensivo con arreglo al artículo 7, apartado 1, letra f). ATATURK es un símbolo nacional con valor espiritual y político para el público general europeo de origen turco.
R 2613/2011-2
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Ejemplos de marcas comunitarias aceptadas
Signo Consumidoresrelevantes Orden público / buenas costumbres Asunto
KURO Consumidoresgenerales
El hecho de que un término, nombre o abreviatura extranjero tenga ciertas similitudes con una palabra ofensiva (como kúró) no es en sí suficiente para denegar la marca comunitaria solicitada (apartado 20). Las vocales húngaras «ó» y «ú» son claramente diferentes de las vocales no acentuadas «o» y «u». Por otra parte, las palabras húngaras no terminan nunca en una «o» no acentuada (apartados 15 a 18).
R 482/2012-1
SCREW YOU Consumidores generales (productos sexuales)
No es probable que una persona que entre en un sex shop se sienta ofendida por una marca comercial que use un lenguaje ordinario con una fuerte connotación sexual (apartado 26).
R 495/2005-G
DE PUTA MADRE Consumidoresgenerales
Aunque en español «puta» significa «prostituta», la expresión DE PUTA MADRE significa en esta lengua «muy bien» o «muy bueno» (coloquial).
CTM 3 798 469 CTM 4 781 662 CTM 5 028 477
2.7 Posibilidad de inducir a error: Artículo 7, apartado 1, letra g), del RMC
2.7.1 Examen del carácter engañoso
El artículo 7, apartado 1, letra g), del RMC establece que se denegará el registro de las marcas que puedan inducir al público a error, por ejemplo, sobre la naturaleza, la calidad o la procedencia geográfica del producto o servicio.
De conformidad con la jurisprudencia relativa al artículo 3, apartado 1, letra g), de la Primera Directiva de Marcas, cuyo texto es idéntico al del artículo 7, apartado 1, letra g), del RMC, los casos de denegación de registro previstos en el artículo 3, apartado 1, letra g), del RMC suponen que pueda considerarse la existencia de un engaño efectivo o de un riesgo suficientemente grave de engaño al consumidor (véase la sentencia de 30/05/2006, C-259/04, en el asunto «Elizabeth Emanuel», apartado 47 y la jurisprudencia que se menciona en la misma).
En vista de lo anterior, la Oficina, en la práctica, supone dos cosas, a saber:
1. No existen motivos para presumir que una marca se solicita de forma intencionada para engañar a los clientes. No se pueden plantear objeciones de posibilidad de que la marca induzca a error si es posible un uso no engañoso de la marca con respecto de los productos y servicios especificados, es decir, se supone que, de ser posible, se hará un uso no engañoso del signo.
2. El consumidor medio es razonablemente atento y no debe considerarse que es especialmente vulnerable a ser engañado. Por lo general, puede plantearse una objeción cuando la marca conduce a una expectativa clara que es abiertamente
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contradictoria, por ejemplo, con la naturaleza o la calidad o la procedencia geográfica de los productos.
Debe plantearse una objeción cuando la lista de productos/servicios está escrita de tal forma que es imposible un uso no engañoso de la marca.
A continuación, se indican dos ejemplos de marcas en los que se consideró que podían inducir a error con respecto a todos o a parte de los productos reivindicados2.
Marca y productos Motivación Asunto
LACTOFREE
para lactosa en la clase 5
La naturaleza del signo llevaría inmediatamente al consumidor pertinente a creer que el producto en cuestión, es decir, «lactosa» no contiene lactosa. Queda claro que si el producto se comercializa con el signo «LACTOFREE» se trata, en realidad, de lactosa, por lo que la marca es claramente engañosa. NB: El signo resulta también incurso en el motivo de denegación del Articulo 7.1.c)
R 0892/2009-1
TITAN (término alemán para «titanio»)
para construcciones portátiles y reubicables; c onstrucciones modulares transportables para su uso en la construcción de edificios prefabricados móviles; construcciones reubicables prefabricadas construidas con unidades de construcción modular portátil, ninguno de los productos arriba mencionados contiene o es tá hecho de titanio de las clases 6 y 19.
El solicitante, durante el procedimiento de recurso, en un intento de salvar una objeción de carácter engañoso, ofreció restringir la lista para ambas clases añadiendo, al final, la indicación ninguno de los productos arriba mencionados contiene o está hecho de titanio. La Sala sostuvo que dicha restricción, en caso de ser aceptada, t endría el efecto de convertir a la marca en engañosa desde el punto de vista del público germanófono, ya que éste asumiría que los productos están hechos de titanio, cuando la realidad no es ésa.
R 0789/2001-3
Debe plantearse una objeción cuando la lista de productos/servicios, redactada de forma detallada, incluye productos y servicios respecto de los cuales es imposible un uso no engañoso de la marca.
En el asunto (inventado) de la marca «KODAK VODKA» para vodka, ron, ginebra, whisky, debe plantearse una objeción respecto de los productos específicos en relación con los cuales no es posible un us o engañoso de la marca, es decir, ron, ginebra, whisky. Dichos casos son sustancialmente distintos de aquellos en los que se utilizan términos/categorías amplios (véase a continuación) y en los que es posible un uso no engañoso del signo. Por ejemplo, no debe plantearse una objeción respecto de «KODAK VODKA» presentada para bebidas alcohólicas, dado que en esta categoría amplia se incluye el vodka, respecto del cual la marca no es engañosa.
2 Estos ejemplos tratan sólo la cuestión de si debe o no plantearse una objeción de posibilidad de inducir a error. Este apartado no trata, pues, las posibles objeciones relativas a otros motivos de denegación absolutos. Por lo tanto, aquí no se contempla la posibilidad de que una determinada marca parezca a primera vista impugnable, con arreglo a lo dispuesto en el artículo 7, apartado 1, letras b) y/o c), del RMC (u otras disposiciones sobre dicha cuestión).
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Debe plantearse una objeción cuando la lista de productos/servicios está redactada de un modo amplio tal que es posible un uso no engañoso. Cuando se utilizan categorías amplias en la lista de productos o servicios, se plantea la cuestión de si debe plantearse una objeción respecto de toda una categoría, dado que la marca es engañosa sólo respecto de algunos productos/servicios que están comprendidos en esa categoría. La política de la Oficina es no plantear una objeción en estas circunstancias. El examinador deberá presumir que la marca se utilizará de forma no engañosa. Dicho de otro modo, no se planteará una objeción basándose en la posibilidad de inducir a error cuando pueda señalarse (en una categoría) un uso no engañoso.
Por lo tanto, la norma es que el artículo 7, apartado 1, letra g), del RMC no es aplicable si la lista incluye categorías amplias que comprenden productos/servicios cuyo uso de la marca no sería engañoso. Por ejemplo, en el caso de la marca «ARCADIA» que se solicitó para «vinos», la objeción con arreglo al artículo 7, apartado 1, letra g), del RMC no sería adecuada dado que la categoría amplia «vinos» también comprende a los vinos que proceden de Arcadia (y dado que Arcadia, que identifica a una región vinícola de Grecia, no es una indicación geográfica protegida a escala comunitaria, el solicitante no está obligado a limitar la lista únicamente a los vinos con origen en Arcadia).
2.7.2 La realidad del mercado y los hábitos y percepciones de los consumidores
Al apreciar si una determinada marca induce o no a error, debe tenerse en cuenta la realidad del mercado y los hábitos y percepciones de los consumidores.
Para evaluar el carácter engañoso de la marca con arreglo a lo dispuesto en el artículo 7, apartado 1, letra g), del RMC, debe tenerse en cuenta la realidad del mercado (es decir, el modo en que los productos y servicios se distribuyen/se venden/se compran/se prestan, etc.), así como los hábitos de consumo y la percepción del público destinatario, que normalmente está compuesto por personas normalmente informadas, razonablemente atentas y perspicaces.
Por ejemplo, en la marca (inventada) «ELDORADO CAFÈ LATINO» que comprende café, chocolate, preparaciones para utilizar como sucedáneos de chocolate; té, cacao; azúcar, arroz, tapioca, sagú; harinas y preparaciones a base de cereales, pan, pastelería y confitería, helados; miel, jarabe de melaza; levadura, polvos de hornear; sal, mostaza; vinagre, salsas (condimentos); especias; helados de la clase 30, el examen debe conducir a las siguientes conclusiones:
• Estaría justificada una objeción con arreglo al artículo 7, apartado 1, letra g), del RMC respecto de las preparaciones para usar como sucedáneos del café, café artificial, achicoria, aromatizantes de achicoria dado que el uso de la marca en relación con estos productos sería necesariamente engañoso, puesto que se presumiría que se está comprando café y éste no sería el caso.
• Asimismo, quedaría justificada una objeción con arreglo al artículo 7, apartado 1, letra g), del RMC respecto de chocolate, té y cacao (en el supuesto de que tales productos no contengan café). Dado que dichos productos pueden venderse en envases bastante similares a los que utiliza el café y se suelen comprar de una forma bastante apresurada, es probable que muchos consumidores no se detengan a analizar el texto del envase, sino que elegirán estos productos de un estante con la creencia (errónea) de que son café.
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• Sin embargo, por lo que al café se refiere, no existe una «clara contradicción» entre la reivindicación para el café y el texto «CAFÈ LATINO», dado que la categoría general café también puede incluir el café procedente de América Latina. Por lo tanto, no se plantea una objeción con arreglo a lo dispuesto en el artículo 7, apartado 1, letra g), del RMC para la categoría propia de café. La misma lógica es aplicable respecto de los productos que pueden contener aroma de café (como chocolate, helados y pastelería y confitería). Debe presumirse un uso no engañoso y que no se plantea necesariamente una contradicción entre el propio texto y los productos.
• Por último, para el resto de los productos de que se trate, es decir, miel, pan, vinagre, etc., la presencia del texto «CAFÈ LATINO» no creará ninguna expectativa. Respecto de dichos productos, se considerará que este texto es claramente no descriptivo y, por lo tanto, no es posible un engaño real. En el mercado «real», el café no se exhibe en las mismas estanterías o secciones de los establecimientos que el pan, la miel o el vinagre. Asimismo, los productos de que se trate tienen una apariencia y gusto diferentes y normalmente se distribuyen en envases distintos.
2.7.3 Marcas con connotaciones geográficas relativas a la ubicación del solicitante o el lugar de origen de los productos o servicios
En relación con las marcas que tienen ciertas connotaciones «geográficas» relativas a la ubicación del solicitante o el lugar de origen de los productos o servicios, debe señalarse lo siguiente.
Por norma general, la Oficina no planteará una objeción relativa a la posibilidad de inducir a error basada en la ubicación geográfica del solicitante (dirección). De hecho, dicha ubicación geográfica no guarda relación, en principio, con la procedencia geográfica de los productos y servicios, es decir, el lugar real de producción/oferta de los productos y servicios comprendidos por la marca.
Por ejemplo, una marca figurativa que incluya las palabras MADE IN USA para prendas de vestir en la clase 25 presentada por una empresa que tiene su sede en Suecia no será susceptible de recibir objeciones con arreglo al artículo 7, apartado 1, letra g), del RMC. En dichos casos, la Oficina presume un uso no engañoso de la marca por parte del titular.
La posibilidad de inducir a error se plantearía, sin embargo, en el caso hipotético de que una marca figurativa que contiene las palabras MADE IN USA, presentada por una empresa que tiene su sede en los Estados Unidos de América, se presente para una lista de productos específicamente limitada: artículos de vestir hechos en Vietnam, aunque en la práctica, parece improbable que se planteen estos casos.
En determinados casos, los consumidores pueden asociar algunas impresiones/expectativas, respecto de la procedencia geográfica de los productos o del autor de los mismos y que puede que no se correspondan con la realidad. Por ejemplo, marcas como ALESSANDRO PERETTI o GIUSEPPE LANARO (ejemplos inventados) que comprenden prendas de vestir o productos de moda en general pueden sugerir al público destinatario que estos productos están diseñados y producidos por un estilista italiano, que puede no ser el caso.
Sin embargo, dicha circunstancia no basta por sí sola para determinar que dichas marcas son engañosas. De hecho, las «falsas impresiones/expectativas» que la marca provoca
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no equivalen a un engaño real cuando el signo es simplemente evocador. En dichos casos, no existe un claro contraste entre la impresión/expectativa que un signo puede evocar y las características/cualidades de los productos y servicios que comprende.
2.7.4 Marcas que hacen referencia a una aprobación, estado o reconocimiento «oficial»
Debe señalarse que, en la práctica de la Oficina, se admiten las marcas que pueden evocar una aprobación, estado o reconocimiento oficial, dando la firme impresión de que los productos/servicios proceden o e stán aprobados por un órgano público o u na organización reconocida.
A continuación, se indican dos ejemplos en los que las marcas en cuestión no se consideraron engañosas, a pesar de ser alusivas o sugerentes:
Marca y servicios Motivación Asunto
THE ECOMMERCE AUTHORITY
para servicios de negocios, en concreto, facilitando clasificaciones de otra información relativa a los proveedores de comercio electrónico, productos y servicios a través de Internet en la clase 35 y servicios de investigación y de asesoría e información en el ámbito del comercio electrónico en la clase 42.
La Sala consideró que la marca no era engañosa, ya que no daba la firme impresión de que los servicios procedieran de una organización gubernamental o reconocida (la Sala, en cambio, confirmó la denegación con arreglo al artículo 7, apartado 1, letra b) al considerar que la marca carecía de carácter distintivo, ya que el público angloparlante la percibiría como una simple declaración de autopromoción que reivindica algo sobre la competencia de los proveedores de servicio.
R 0803/2000-1
para, entre otras cosas, enseñanza de esquí en la clase 41.
La Sala consideró que los consumidores franceses entenderían que la marca alude al hecho de que los servicios se suministran en Francia, a través de un centro de enseñanza francés, y que hacen referencia al aprendizaje del esquí «a la manera francesa». Añadió que el público francés no tenía motivos para creer, simplemente debido a la presencia de un logotipo tricolor (que no es una reproducción de la bandera francesa), que los servicios los prestan las autoridades públicas o que incluso están autorizados por dichas autoridades.
R 0235/2009-1 confirmada
por el Tribunal General en la sentencia
T-41/10
2.7.5 Relación con otras disposiciones del RMC
Las explicaciones arriba indicadas tienen por objeto definir el ámbito de aplicación del artículo 7, apartado 1, la letra g) del RMC. A p esar de que se ha tratado en las correspondientes secciones de las Directrices, en el contexto del examen de los motivos de denegación absolutos y de los posibles escenarios de engaño, las siguientes disposiciones pueden tener una especial relevancia. Artículo 7, apartado 1, letras b) y c), del RMC
Con arreglo a la práctica actual de la oficina, si después de una objeción del carácter descriptivo y/o la falta de carácter distintivo, el solicitante de MC propone una
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limitación en un intento de salvarla, y s iempre que la limitación propuesta cumpla los requisitos previstos (solicitud incondicional y adecuadamente redactada), se limitará como corresponda la lista original de los productos y/o servicios. Sin embargo, si la limitación en cuestión (aunque salve la objeción inicial) tiene el efecto de hacer que la marca solicitada sea engañosa, el examinador planteará una objeción del carácter engañoso con arreglo a lo dispuesto en e l artículo 7, apartado 1, letra g), del RMC. El siguiente ejemplo ilustra dicha situación:
La marca «ARCADIA» se solicitó originalmente respecto de vinos, bebidas espirituosas y licores en la clase 33. El examinador se opuso porque la marca era descriptiva de la procedencia geográfica de los vinos, en la medida en que Arcadia es una región griega conocida por su producción vinícola (en cambio, cabe señalar que Arcadia no es una indicación geográfica protegida). El solicitante ofreció limitar la lista de productos para excluir los vinos fabricados en Grecia o, si se prefiere, para incluir sólo a vinos producidos en Italia. El examinador consideró que la limitación propuesta haría que la marca fuera engañosa dado que expresaría una información falsa respecto de la procedencia de los productos. En el recurso, la Sala confirmó la motivación del examinador (véase la resolución de 27/3/2000, R 246/1999-1 – en el asunto «ARCADIA», apartado 14).
Artículo 7, apartado 1, letra h), del RMC
Esta disposición excluye del registro a aquellas MC que están compuestas/incluyen banderas y otros símbolos de los Estados, por un lado, y banderas y otros símbolos de organizaciones intergubernamentales internacionales, y por otro lado, que están protegidas con arreglo al artículo 6ter del Convenio de París y cuya inclusión en la marca no ha sido expresamente autorizada por las autoridades competentes. Respecto de las banderas y otros símbolos de organizaciones intergubernamentales internacionales, el problema se plantea cuando el público podría creer erróneamente que, a la vista de los productos/servicios de que se trate, existe una conexión entre el solicitante de la MC y la organización internacional cuya bandera o símbolo aparece en la MC.
Artículo 7, apartado 1, letras j) y k), del RMC (indicaciones geográficas protegidas)
Estas disposiciones excluyen las marcas para vinos o bebidas espirituosas, por un lado, y otros productos agrícolas por el otro, que incluyen o consisten en indicaciones geográficas protegidas (IGP) o denominaciones geográficas protegidas (DGP) cuando la lista de los productos correspondientes no especifica que tienen la supuesta procedencia geográfica. Con arreglo a las normas directamente aplicables al correspondiente Reglamento europeo específico en el que se apoyan estas disposiciones, la Oficina debe oponerse a las solicitudes de MC cuando la indicación geográfica protegida se utiliza de forma incorrecta o expresa cualquier otra indicación falsa o engañosa respecto de la procedencia, el origen, la naturaleza o las cualidades esenciales de los productos de que se trate.
Artículo 17, apartado 4, del RMC (cesión)
Con arreglo a esta disposición, cuando de los documentos de la cesión quede claro, que, debido a la cesión, la marca comunitaria podría inducir al público a error sobre la naturaleza, la calidad o la procedencia geográfica de los productos o de los servicios para los cuales esté registrada, la Oficina no registrará la cesión a no ser que el nuevo titular
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acepte limitar la inscripción de la MC a productos o servicios para los cuales no es probable que sea engañosa (ver asimismo Parte E. Sección 3. Capítulo 1. Apartado 3.6).
Artículo 51, apartado 1, letra c), del RMC (motivos de denegación)
Mientras que al examinar una marca con arreglo al artículo 7, apartado 1, letra g) del RMC, el examinador deberá limitar la apreciación al significado que expresa el signo respecto de los productos/servicios de que se trate (lo que significa que el modo en que se utiliza el signo carece de importancia), con arreglo al artículo 51, apartado 1, letra c) del RMC, el modo en que se utiliza el signo es decisivo, dado que, con arreglo a esta disposición, una MC registrada puede declararse revocada si, a consecuencia del uso realizado del signo por parte de su titular o con su consentimiento, la marca es susceptible de inducir al público a error, en especial en relación con la naturaleza, la calidad o el origen geográfico de los productos/servicios de que se trate.
2.8 Protección de banderas y de otros símbolos – artículo 7, apartado 1, letras h) e i), del RMC
El objetivo del artículo 6 ter del Convenio de París es excluir el registro y el uso de las marcas que son idénticas o de algún modo similares a los emblemas de Estado o de emblemas, siglas y denominaciones de organizaciones internacionales intergubernamentales.
«Los motivos de ello es que dicho registro o uso podría vulnerar el derecho del Estado a controlar el uso de los símbolos de su soberanía y, además, que podría inducir a error al público en cuanto al origen de los productos a los que se aplicaría la marca.» (G.H.C. Bodenhausen, Guía para la aplicación del Convenio de París para la protección de la propiedad industrial, revisada en Estocolmo en 1967, página 96.). En este sentido, el origen debe entenderse como procedencia o aprobación por parte de la correspondiente administración, no como producción en el territorio del Estado o, en el caso de la Unión Europea, en la UE.
El artículo 7, apartado 1, letra h), hace referencia a los símbolos siguientes:
• Escudos de armas, banderas, otros emblemas, signos y punzones oficiales que pertenecen a los Estados y que se hayan comunicado a la OMPI, aunque en el caso de las banderas dicha comunicación no es obligatoria.
• Escudos de armas, banderas, otros emblemas, siglas y denominaciones de organizaciones internacionales intergubernamentales que hayan sido comunicados a la OMPI, con excepción de aquellos que hayan sido objeto de acuerdos internacionales destinados a asegurar su protección (véase, por ejemplo, el Convenio de Ginebra para mejorar la suerte de los Heridos y Enfermos de las Fuerzas Armadas en Campaña, de 12/8/1949, cuyo artículo 44 protege los emblemas de la Cruz Roja sobre fondo blanco y las palabras «Cruz Roja» o «Cruz de Ginebra», así como los emblemas análogos).
El Tribunal de Justicia ha dejado claro que estas disposiciones pueden aplicarse con independencia de si la solicitud afecta a productos o servicios, así como que los ámbitos de aplicación del artículo 7, apartado 1, letra h), y del artículo 7, apartado 1, letra i), del RMC son análogos. Debe considerarse que ambos artículos conceden al menos el mismo alcance de protección, puesto que persiguen el mismo objetivo, es decir, prohibir la utilización de emblemas específicos de interés público sin el consentimiento de
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las autoridades competentes (véase la sentencia de 16/7/2009, en los asuntos acumulados C-202/08 P y C-208/08 P, «RW Hoja de arce», apartados 78, 79 y 80).
2.8.1. Protección de los escudos de armas, banderas, otros emblemas de Estado, signos y punzones oficiales de control y de garantía, con arreglo al artículo 7, apartado 1, letra h), del RMC – artículo 6 ter, apartado 1, letra a), y apartado 2, del Convenio de París
De conformidad con el artículo 6 ter, apartado 1, letra a), del Convenio de París, se denegará el registro, tanto de una marca como de un elemento de la misma, de escudos de armas, banderas, y otros emblemas de Estado de los países de la Unión (es decir, de los países en que se aplica el Convenio de París), o de los signos y punzones oficiales de control y de garantía adoptados por los Estados, así como toda imitación desde el punto de vista heráldico, cuando la autoridad competente no haya concedido permiso.
Los miembros de la Organización Mundial del Comercio (OMC) disfrutan de la misma protección con arreglo al artículo 2, apartado 1, del Acuerdo sobre los ADPIC, en virtud del cual los miembros de la OMC deben cumplir con lo establecido en los artículos 1 a 12 y 19 del Convenio de París.
Por lo tanto, para contravenir lo dispuesto en el artículo 7, apartado 1, letra h), del RMC, las marcas deben:
• consistir únicamente en una reproducción idéntica o en una «imitación heráldica» de los mencionados símbolos;
• contener una reproducción idéntica o una «imitación heráldica» de los mencionados símbolos.
Además, la autoridad competente no debe haber dado su autorización.
Los escudos de armas consisten en un dibujo o modelo o imagen representada en un escudo. Véase el siguiente ejemplo:
Escudo de armas búlgaro – base de datos del artículo 6 ter nº BG2
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Las banderas de Estado normalmente consisten en un diseño rectangular distintivo que se utiliza como símbolo de una nación. Véase el siguiente ejemplo:
Bandera croata La expresión «otros emblemas de Estado» resulta bastante vaga. Normalmente se refiere a cualquier emblema que constituye el símbolo de la soberanía de un Estado, entre otros, los blasones de las casas reinantes, así como los emblemas de los Estados que componen un Estado federativo que sea parte en el Convenio de París. Véase el siguiente ejemplo:
Emblema de Estado danés – base de datos del artículo 6 ter nº DK3
El propósito de los signos y punzones oficiales de control y de garantía es el de certificar que un Estado o una organización designada a tal efecto y en debida forma por un Estado ha controlado que ciertos productos cumplen con normas específicas o tienen un nivel determinado de calidad. Existen signos y punzones oficiales de control y de garantía en diversos Estados para los metales preciosos o para productos como la mantequilla, el queso, la carne, los equipos eléctricos, etc. Los signos y punzones oficiales también pueden aplicarse a los servicios, por ejemplo los relativos a la educación, al turismo, etc. Véanse a continuación los siguientes ejemplos.
Signo oficial español para la promoción de las exportaciones nº ES1
Punzón británico para artículos de platino nº GB 40
Debe señalarse que el artículo 6 ter del Convenio de París no protege a los mencionados símbolos contra todas las imitaciones, sino solo contra las «imitaciones heráldicas». El concepto de «imitación heráldica» debe interpretarse en el sentido de que
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«la prohibición de imitación de un emblema se refiere únicamente a las imitaciones de éste desde el punto de vista heráldico, es decir, aquellas que reúnen las connotaciones heráldicas que distinguen el emblema de otros signos. Por lo tanto, la protección contra toda imitación desde el punto de vista heráldico se refiere no a la imagen como tal sino a su expresión heráldica. Igualmente, para determinar si la marca contiene una imitación desde el punto de vista heráldico, procede considerar la descripción heráldica del emblema de que se trate» (véase la sentencia del TJUE, de 16 de julio de 2009, en los asuntos acumulados C-202/08 P y C-208/08 P, apartado. 48).
Por consiguiente, al comparar «desde un punto de vista heráldico» en el sentido del artículo 6 ter del Convenio de París, debe tenerse en cuenta la descripción heráldica del emblema de que se trate y no la descripción geométrica de dicho emblema, la cual es mucho más detallada por naturaleza. De hecho, si se tuviera en cuenta la descripción geométrica del emblema, esto «llevaría a denegar la protección del artículo 6 ter, apartado 1, letra a), del Convenio de París al emblema amparándose en cualquier pequeña diferencia de matiz entre ambas descripciones. Por otra parte, el caso de la conformidad gráfica con el emblema utilizado por la marca ya se contempla en la primera parte de dicha disposición, por lo que la expresión «toda imitación desde el punto de vista heráldico» debe interpretarse en el sentido de que posee un alcance adicional» (véase ibídem, apartado. 49).
Por ejemplo, un examinador deberá tener en cuenta la descripción heráldica del emblema
europeo – «sobre fondo azul, un círculo formado por doce estrellas dorados de cinco puntas que no se tocan entre sí» – y no su descripción geométrica: «el emblema consiste en una bandera rectangular de color azul, cuya longitud equivale a tres medios de su anchura. Las doce estrellas doradas y equidistantes forman un círculo imaginario cuyo centro es el punto de intersección de las diagonales del rectángulo. El radio del círculo equivale a un tercio de la anchura de la bandera. Cada una de las estrellas de cinco puntas se inscribe en un círculo imaginario cuyo radio equivale a un dieciochavo de la anchura de la bandera. Todas las estrellas son verticales, es decir, con una punta arriba y otras dos apoyándose en una línea imaginaria, perpendicular al asta de la bandera. Las posiciones de las estrellas corresponden a la disposición de las horas en la esfera de un reloj. Su número es invariable.».
Asimismo, los escudos de armas y otros emblemas heráldicos son diseñados tomando como base una descripción relativamente simple que incluye indicaciones sobre la composición y el color del fondo, así como la enumeración de los diferentes elementos (como, por ejemplo, un león, un águila, una flor, etc.) que constituyen el emblema, con la mención de sus colores y sus posiciones en el emblema. Sin embargo, la descripción heráldica no incluye indicaciones detalladas sobre el dibujo del emblema y los elementos concretos que lo constituyen, de forma que, tomando como base la misma descripción heráldica, son posibles diversas interpretaciones artísticas del mismo emblema. Si bien, cada una de estas interpretaciones puede presentar diferencias de detalle con respecto a las otras, no deja de ser cierto que todas serán imitaciones «desde el punto de vista heráldico» del emblema de que se trate (asunto T-215/06, de 28/2/2008, apartados. 71 y 72). En consecuencia, una marca que no reproduzca exactamente un emblema de Estado puede, no obstante, estar comprendida en el ámbito de aplicación del artículo 6 ter, apartado 1, letra a), del Convenio de París, cuando el público interesado, en el presente caso el consumidor medio, la percibe como imitación de tal emblema. En lo tocante a la expresión «imitación desde el punto de vista heráldico» contenida en
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dicha disposición, procede, sin embargo, precisar que toda diferencia entre la marca cuyo registro se solicita y el emblema de Estado, detectada por un especialista del arte heráldico, no será necesariamente percibida por el consumidor medio, el cual, a pesar de algunas diferencias en cuanto a determinados detalles heráldicos, puede ver en la marca una imitación del emblema de que se trate (véase la sentencia del TJUE, de 16/7/2009, en los asuntos acumulados C-202/08 P y C-208/08 P, apartados. 50 y 51).
Asimismo, para que sea aplicable el artículo 6 ter, apartado 1, letra a), del Convenio de París, no es necesario examinar la impresión de conjunto producida por la marca, teniendo en cuenta también otros elementos (palabras, dispositivos, etc.). De hecho, el artículo 6 ter, apartado 1, letra a), del Convenio de París se aplica no sólo a las marcas sino también a los elementos de marcas que reproducen o imitan emblemas de Estado. Bastará, por tanto, que se aplique un único elemento de la marca para representar dicho emblema o la imitación de la misma para denegar el registro de dicha marca como marca comunitaria (véase asimismo la sentencia de 21/4/2004, en el asunto T-127/02, «ECA», apartados. 40 a 41).
2.8.1.1 Examen de marcas que consistan en una bandera de Estado o que la contengan
Estos son los tres pasos a seguir en el examen de marcas que consistan en una bandera de Estado o que la contengan:
1 Encontrar una reproducción oficial de la bandera protegida. 2 Comparar la bandera con la marca solicitada. ¿La marca solicitada consiste
únicamente en una reproducción idéntica de la bandera o contiene dicha reproducción (a)? O, ¿la marca consiste únicamente en una imitación heráldica de dicha bandera o contiene dicha imitación (b)?
3 Comprobar si el expediente demuestra que la autoridad competente ha permitido el registro de la bandera.
1 Encontrar la bandera protegida
Tal como se ha indicado anteriormente, los Estados no están obligados a incluir las banderas en la lista de emblemas que deben ser comunicados a la OMPI, porque se supone que las banderas son notoriamente conocidas.
Sin embargo, algunas banderas han sido incluidas en la lista, la cual es accesible a través de la herramienta «Búsqueda estructurada Artículo 6 ter», disponible en la OMPI. De lo contrario, los examinadores deben consultar los sitios web oficiales de los correspondientes gobiernos, y las enciclopedias y/o diccionarios para hallar una reproducción exacta de la bandera del Estado.
2 Comparar la bandera con la marca solicitada
(a) ¿La marca solicitada consiste únicamente en una reproducción idéntica de la bandera o contiene dicha reproducción? En ese caso, vaya al paso siguiente.
(b) ¿La marca consiste únicamente en una imitación heráldica de una bandera o contiene dicha imitación?
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En el caso de las banderas, la marca debe ser comparada con la descripción heráldica de la bandera de que se trate. Por ejemplo, en el asunto T-41/10 de 5/5/2011 (ESF École du ski français), la bandera francesa fue descrita como una bandera rectangular o cuadrada compuesta por tres franjas verticales iguales de color azul, blanco y rojo.
El examinador utilizará la descripción heráldica, que ofrece detalles sobre la composición y el color de fondo, incluye una lista de los distintos elementos (como un león, un águila, una flor, etc.) que componen la bandera y especifica el color, la posición y las proporciones de estos últimos para llegar a una conclusión sobre la imitación heráldica.
Por regla general, la bandera y la marca (o la parte de la marca donde se reproduzca la bandera) deben ser bastante similares para considerar que existe una imitación heráldica. Véase el siguiente ejemplo en el que se consideró que existía una «imitación heráldica» de una bandera:
Bandera Solicitud de MC denegada
Bandera suiza CTMA 8 426 876
El uso de una bandera en blanco y negro también puede considerarse una imitación heráldica cuando la bandera consiste o contiene rasgos heráldicos únicos. Por ejemplo, se considera que la representación en blanco y negro de la bandera canadiense del siguiente ejemplo es una imitación heráldica.
Bandera Solicitud de MC denegada
Bandera canadiense CTMA 2 793 495
Por otro lado, respecto de las banderas que consisten únicamente en franjas de tres colores (ya sean verticales u horizontales), no se considerará que una reproducción en blanco y negro es una imitación heráldica porque las banderas de este tipo son bastantes comunes.
Tal como se ha indicado anteriormente, es irrelevante la presencia de otros elementos en las marcas.
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Si un elemento tiene una forma distinta a una bandera (por ejemplo, circular), no se considerará una imitación heráldica. En los siguientes ejemplos, se muestran otras formas distintas que no son imitaciones heráldicas:
Bandera Solicitud de MC aceptada
CTMA 5 851 721
Bandera italiana CTMA 5 514 062
Bandera suiza CTMA 6 015 473
Bandera finlandesa CTMA 7 087 281
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Bandera Solicitud de MC aceptada
Bandera sueca CTMA 8 600 132
Bandera danesa CTMA 8 600 173
Bandera francesa CTM 4 624 987, asunto T-41/10
Cabe señalar la distinción entre los casos examinados en la CTMA nº 8 426 876 (se han formulado objeciones) y la CTMA nº 6 015 473 (no se han formulado objeciones). En esta última, se decidió no formular objeciones debido al número de cambios: un cambio de forma (de cuadrada a circular), un cambio en las proporciones (las líneas blancas de la cruz de la CTMA nº 6 015 473 son más largas y delgadas que las de la bandera) y un cambio de color, ya que la cruz de la solicitud de marca comunitaria CTMA nº 6 015 473 tiene una sombra.
3 Comprobar si el registro ha sido autorizado
Una vez que el examinador ha considerado que la marca consiste en una bandera o una imitación heráldica de una bandera o que las contenga, se deberá comprobar si el expediente demuestra que el registro ha sido autorizado por la autoridad competente.
Cuando no existe dicha prueba, el examinador formulará objeciones al registro de la marca solicitada. La objeción reproducirá la bandera oficial en colores e indicará la fuente de la reproducción.
Únicamente podrá renunciarse a dicha objeción si el solicitante aporta pruebas de que la autoridad competente del Estado de que se trate ha autorizado el registro de la marca.
Alcance de la denegación: en el caso de las banderas de Estado, las marcas que vulneren el artículo 7, apartado 1, letra h), del RMC deberán ser denegadas para todos los productos y servicios que se solicitan.
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2.8.1.2. Examen de las marcas que consistan en escudos de armas y otros emblemas de Estado o que los contengan
En el examen de marcas que consistan en escudos de armas u otros emblemas de Estado o que los contengan deberán seguirse los mismos pasos que se han indicado en relación con las banderas de Estado.
Sin embargo, para que puedan gozar de protección, los escudos de armas y otros símbolos de Estado deberán estar incluidos en la «lista de escudos de armas y emblemas de Estado». Puede accederse a esta lista a través de la herramienta «Búsqueda estructurada Artículo 6 ter», disponible en la OMPI, en la siguiente dirección: https://www.wipo.int/ipdl/es/6ter/.
La base de datos del Artículo 6 ter de la OMPI ofrece detalles de los elementos escritos y contiene referencias a las categorías del código de clasificación de Viena. Por lo tanto, la mejor manera de realizar la búsqueda es utilizando dicho código.
En dichos casos, el símbolo protegido, que suele consistir en o contiene elementos recurrentes como coronas, unicornios, águilas, leones, etc., y la marca (o la parte de la marca en que se reproduce el símbolo) deben ser muy similares.
Para obtener información sobre esta cuestión y las descripciones heráldicas, consúltese la explicación facilitada en el apartado 2.8.1.1 «Examen de las marcas que consistan en una bandera de Estado o que la contengan» supra.
Véanse a continuación dos ejemplos en los que se consideró que existía una «imitación heráldica» de un símbolo de Estado:
Emblema protegido Solicitud de MC denegada
Emblema británico: Número 6 ter: GB4 CTMA 5 627 245, asunto T-397/09
.
Emblema canadiense: Número 6 ter: CA2 CTMA 2 785 368 (asunto C-202/08 del TJUE)
El Tribunal General señaló que los elementos de apoyo incluidos en la solicitud de marca comunitaria CTMA nº 5 627 245 eran casi idénticos a aquellos incluidos en el emblema
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protegido con el signo GB4. La única diferencia está basada en las coronas de ambos signos. Sin embargo, el TG dictaminó que cualquier diferencia entre la marca y el emblema del Estado detectada por un experto en heráldica no se percibirá necesariamente por el consumidor medio quien, a pesar de algunas diferencias en detalles heráldicos, puede valorar la marca como una imitación del emblema. Por lo tanto, el TG concluyó que la Sala había considerado acertadamente que la marca solicitada incluía una imitación desde una perspectiva heráldica del emblema GB4, protegida en virtud del Artículo 6 ter del Convenio de París (asunto T-397/09, apdos. 24 a 25).
Por otro lado, se consideró que la siguiente marca (CTM nº 6 832 571)
no contenía una imitación heráldica del emblema británico arriba mencionado. De hecho, tal como hemos visto, los leones y los unicornios se utilizan habitualmente en este tipo de símbolos.
Cabe señalar que las reproducciones en blanco y negro de escudos de armas y de otros emblemas de Estado podrán considerarse imitaciones heráldicas cuando los símbolos protegidos consistan en características heráldicas únicas o las contengan (véase el ejemplo del emblema canadiense).
Además, es irrelevante la presencia de otros elementos en las marcas denegadas.
También existirá una imitación heráldica cuando el símbolo protegido haya sido reproducido solo parcialmente siempre que la parte que se ha reproducido parcialmente represente (un) elemento(s) significativo del símbolo protegido y (una) característica(s) heráldica(s) única(s).
El siguiente ejemplo ilustra una imitación heráldica parcial ya que el elemento significativo del símbolo protegido, el águila con las flechas sobre el emblema, es un elemento heráldico único y la solicitud de marca comunitaria imita sus características heráldicas:
Emblema protegido Solicitud de MC denegada
Emblema del Departamento de Justicia de los EE.UU.; número 6 ter: US40
CTMA 4 820 213
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En el siguiente ejemplo no existe una imitación heráldica de un emblema de Estado:
Emblema protegido Solicitud de MC aceptada
Número 6 ter: AT10 CTMA 8 298 077
La solicitud de marca comunitaria CTMA nº 8 298 077 no es una imitación heráldica de un símbolo austríaco porque su forma es diferente y las líneas de dentro de la cruz blanca en el símbolo austríaco no están presentes en la solicitud.
Una vez que el examinador ha considerado que una marca reproduce un símbolo (o que es una imitación heráldica del mismo), se deberá comprobar si el expediente demuestra que el registro ha sido autorizado por la autoridad competente.
Cuando no existe dicha prueba, el examinador formulará objeciones al registro de la marca solicitada. La objeción reproducirá el símbolo protegido, indicando el número 6 ter.
Únicamente podrá renunciarse a dicha objeción si el solicitante aporta pruebas de que la autoridad competente del Estado de que se trate ha autorizado el registro de la marca.
Alcance de la denegación: en el caso de los símbolos de Estado, las marcas que vulneren el artículo 7, apartado 1, letra h), del RMC deberán ser denegadas para todos los productos y servicios solicitados.
2.8.1.3 Examen de las marcas que consistan en signos y punzones oficiales de control y de garantía o que los contengan
Los pasos que debe seguir el examinador son los mismos que se han indicado para las banderas de Estado, los escudos de armas protegidos y otros emblemas de Estados mencionados anteriormente.
Sin embargo, el alcance de la denegación es limitado. Las marcas que consistan en una reproducción idéntica/imitación heráldica de signos y punzones oficiales de control y de garantía o que la contengan serán denegadas únicamente para los productos que son idénticos o similares a aquellos en los que se aplican dichos símbolos (artículo 6 ter, apartado 2, del Convenio de París).
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2.8.2. Protección de los escudos de armas, banderas, otros emblemas, siglas y denominaciones de organizaciones internacionales intergubernamentales con arreglo al artículo 7, apartado 1, letra h) del RMC – artículo 6 ter, apartado 1, letras b) y c), del Convenio de París
De conformidad con el artículo 6 ter, apartado 1, letras b) y c), del Convenio de París, se denegará el registro, tanto de una marca como de un elemento de la misma, de escudos de armas, banderas, otros emblemas, siglas y denominaciones de las organizaciones internacionales intergubernamentales (de las cuales uno o varios países de la Unión de París sean miembros), o cualquier imitación desde un punto de vista heráldico, si la autoridad competente no ha concedido su permiso.
Los miembros de la OMC disfrutan de la misma protección con arreglo al artículo 2, apartado 1, del Acuerdo sobre los ADPIC, en virtud del cual los miembros de la OMC deben cumplir con lo establecido en los artículos 1 a 12 y 19 del Convenio de París.
Asimismo, la marca debe tener una naturaleza tal que le sugiera al público que existe un vínculo entre la organización de que se trate y el escudo de armas, banderas, emblemas, siglas o denominaciones, o para inducir a error al público, respecto de la existencia de un vínculo entre el titular y la organización.
Entre las organizaciones internacionales intergubernamentales se incluyen organismos como la Organización de Naciones Unidas, la Unión Postal Universal, la Organización Mundial del Turismo, la OMPI, etc.
En este sentido, la Unión Europea no se considera ni una organización internacional en el sentido habitual, ni una asociación de Estados sino más bien una «organización supranacional», es decir, una entidad autónoma con sus propios derechos soberanos y un ordenamiento jurídico independiente de los Estados miembros, a los cuales quedan sometidos en los ámbitos de competencia de la UE, tanto los propios Estados miembros como sus nacionales.
Por un lado, los Tratados han dado lugar al establecimiento de una Unión independiente a la que los Estados miembros han cedido algunos de sus poderes soberanos. Las tareas que han sido asignadas a la UE son muy distintas de aquellas de otras organizaciones internacionales. Mientras que estas últimas han definido de forma clara tareas de carácter técnico, la Unión Europea dispone de ámbitos de responsabilidad que considerados conjuntamente constituyen los atributos esenciales de un Estado.
Por otro lado, las instituciones de la UE también tienen competencias en determinados ámbitos para perseguir los objetivos contemplados en los Tratados. Estas instituciones no tienen libertad para elegir sus objetivos del mismo modo en que lo hace un Estado soberano. Asimismo, la UE tampoco posee la jurisdicción exhaustiva de la que gozan los Estados soberanos ni los poderes para establecer nuevos ámbitos de responsabilidad («jurisdicción sobre jurisdicción»).
A pesar de la naturaleza jurídica particular de la UE, y a los solos efectos de la aplicación del artículo 7, apartado 1, letra h), la Unión Europea puede asimilarse a una organización internacional. En la práctica, debe tenerse en cuenta el hecho de que el ámbito de actividad de la UE es tan amplio (véase la sentencia de 15/1/2013, en el asunto T- 413/11 «EUROPEAN DRIVESHAFT SERVICES», apartado 69) que es probable que el examinador establezca un vínculo entre los productos y servicios de que se trate y las actividades de la UE.
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Las banderas y símbolos de la UE más relevantes, protegidos por el Consejo de Europa son los siguientes:
Número 6 ter: QO188 Número 6 ter: QO189
La Comisión ha protegido los siguientes símbolos:
Número 6 ter: QO245 Número 6 ter: QO246 Número 6 ter: QO247
El Banco Central Europeo ha protegido los siguientes símbolos:
Número 6 ter: QO852 Número 6 ter: QO867
Existen cuatro pasos a seguir para examinar las marcas que contienen escudos de armas, banderas u otros símbolos de una organización intergubernamental internacional.
1 Encontrar una reproducción oficial del símbolo protegido (que puede ser una sigla o una denominación).
2 Comparar el símbolo con la marca solicitada.
3 Comprobar si la marca que se solicita sugiere al público destinatario que existe un vínculo entre el titular y la organización internacional o induce a error al público respecto de la existencia de dicho vínculo.
4 Comprobar si el expediente demuestra que el registro ha sido autorizado por la autoridad competente.
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1 Encontrar el símbolo protegido (o la sigla o denominación)
Para que puedan ser protegidos, los símbolos de organizaciones internacionales intergubernamentales deben estar incorporados en la correspondiente lista. A diferencia de lo que ocurre con las banderas de Estado, este requisito también se aplica a las banderas de las organizaciones internacionales.
A través de la herramienta «Búsqueda estructurada del Artículo 6 ter», que ofrece la OMPI, puede accederse a la correspondiente base de datos. También en este caso, la mejor manera de realizar la búsqueda es utilizando el código de clasificación de Viena.
2 Comparar el símbolo con la marca solicitada
¿La marca solicitada consiste únicamente en una reproducción idéntica del símbolo protegido de una organización internacional intergubernamental o la contiene o bien consiste en una imitación heráldica o contiene una imitación heráldica de la misma?
(a) ¿La marca solicitada consiste únicamente en una reproducción idéntica del símbolo protegido o la contiene? En ese caso, vaya al paso siguiente.
(b) ¿La marca solicitada consiste únicamente en una imitación heráldica o contiene una imitación heráldica de la misma?
La prueba es la misma que para las banderas y símbolos de Estado, es decir, el símbolo protegido y la marca (o la parte de la marca en que se reproduce el símbolo protegido) deben ser muy similares. Lo mismo es aplicable a las siglas y denominaciones de organizaciones internacionales intergubernamentales (véase la Decisión de la Sala de Recurso en el asunto R 1414/2007-1 – «ESA»).
Las siguientes marcas fueron denegadas porque se consideró que incluían «imitaciones heráldicas» de la bandera de la Unión Europea, protegida con arreglo al número QO188:
CTMA 2 305 399 CTMA 448 266 CTMA 6 449 524
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CTMA 7 117 658 CTMA 1 106 442 (asunto T-127/02) CTM 4 081 014 (1640 C)
CTMA 2 180 800 (asunto T-413/11)
En relación con las imitaciones heráldicas de la bandera de la Unión Europea (QO188 supra), se considera relevante que a) existan doce estrellas de cinco puntas, b) las estrellas formen un círculo y que no se toquen entre sí, y c) las estrellas contrastan sobre un fondo más oscuro.
En particular, debe tenerse en cuenta que el «elemento en forma de círculo con doce estrellas» es el elemento más importante en el emblema de la Unión Europea (en adelante, «el emblema») porque expresa mensajes sólidos: a) el círculo de estrellas doradas simboliza la solidaridad y la armonía entre los pueblos de Europa y b) el número doce evoca la perfección, lo completo y la unidad. El otro elemento del emblema es el fondo que está coloreado para resaltar el elemento» (véase la resolución de la Sala de Recurso en el asunto R 1401/2011-1, apartado 21).
De lo anterior se desprende que la representación de la bandera de la UE en b lanco y negro todavía puede considerarse una imitación heráldica cuando las estrellas contrastan con un fondo oscuro de tal modo que dé la impresión de que es una reproducción en blanco y negro de la bandera de la UE (véase la solicitud de marca comunitaria CTMA 1 106 442 supra).
Sin embargo, el siguiente ejemplo ilustra un caso en que la reproducción en blanco y negro de un círculo de estrellas no da la impresión de ser una reproducción en blanco y negro de la bandera de la UE:
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Los tres casos siguientes no se consideran imitaciones heráldicas de la bandera de la Unión Europea porque no reproducen doce estrellas en un círculo (es decir, las tres marcas fueron aceptadas):
CTMA 7 142 731 CTMA 5 639 984 CTMA 6 156 624
La siguiente no es una imitación heráldica porque, a pesar de que las estrellas son amarillas, no tiene un fondo azul (o de color oscuro):
3 Comprobar si la marca solicitada sugiere al público destinatario que existe un vínculo entre el titular y la organización internacional o induce a error al público respecto de la existencia de dicho vínculo.
Se sugiere un vínculo no sólo en el caso en que el público pudiera creer que los productos o servicios proceden de la organización de que se trate, sino también en el caso que el público pudiera creer que los productos o servicios cuentan con la aprobación o la garantía, o están vinculados de cualquier otro modo, con dicha organización (véase la sentencia de 15/1/2013, en el asunto T-413/11, «EUROPEAN DRIVESHAFT SERVICES», apartado 61).
Para valorar correctamente las circunstancias, el examinador deberá tener en cuenta lo siguiente:
- los productos y/o servicios comprendidos por la solicitud de marca comunitaria;
- el público destinatario;
- la impresión general producida por la marca.
Respecto de la bandera de la Unión Europea, el examinador debe evaluar si existe algún solapamiento entre los productos y/o servicios reivindicados y las actividades de la Unión Europea, teniendo en cuenta que la Unión Europea está activa en muchos sectores y regula productos y servicios en todos los ámbitos de la industria y el comercio, tal como se deriva claramente de la amplia variedad de Directivas que ha adoptado. El examinador debe tener en cuenta igualmente que incluso los consumidores medios
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podrían conocer dichas actividades, lo cual significa, en la práctica, que es probable que el examinador establezca un vínculo en la mayoría de los casos.
Por último, a diferencia del artículo 6 ter, apartado 1, letra a), del Convenio de París, para el cual basta que el signo contenga o consista en el emblema o una imitación heráldica del mismo, el artículo 6 ter, apartado 1, letra c), del Convenio de París exige una apreciación global.
De lo que antecede se deduce que, a diferencia de los emblemas de Estado y las banderas, el examinador también debe tener en cuenta el resto de elementos que componen la marca. Por lo que no puede dictaminarse que el resto de elementos del signo llevarían a la conclusión de que el público no vincularía el signo con una organización internacional intergubernamental (véase la sentencia de 15/1/2013, en el asunto T-413/11 «EUROPEAN DRIVESHAFT SERVICES», apartado 59).
También con respecto a la bandera de la UE, cabe señalar que, como regla general, los elementos denominativos como «EURO»/«EUROPEO» en una solicitud de marca comunitaria es probable que sugieran aún más que existe un vínculo, ya que podría percibirse que conlleva la aprobación por parte de una agencia oficial de la UE, un control de calidad o servicios de garantía, respecto de los productos y servicios reivindicados.
A continuación, se incluyen dos ejemplos en los que se consideró que existía un vínculo con la UE:
Productos y servicios
Clase 16: Publicaciones periódicas y no periódicas Clase 42: Preparación de informes o estudios relacionados con automóviles, motocicletas y bicicletas
Motivos
Se denegó la marca para todos los productos y servicios, por los siguientes motivos: (26) Los consumidores de este mercado son conscientes de cuán importante es la credibilidad para las empresas que proporcionan encuestas e informes sobre productos onerosos y potencialmente peligrosos como los vehículos. Los consumidores también podrán ser conscientes de que la propia Unión Europea participa en dichas actividades a través de su asociación con el programa Euro E.N.C.A.P., el cual facilita a los consumidores del sector automovilístico evaluaciones independientes de seguridad y rendimiento de los automóviles vendidos en el mercado europeo. Teniendo en cuenta estos hechos, y el hecho de que la marca del titular incluye un elemento heráldico reconocible del emblema europeo, es probable que el público asumiera que la inclusión de las doce estrellas doradas del emblema de la UE en la marca comunitaria señale un vínculo entre el titular y la UE.
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Productos y servicios
Clase 9: Hardware, software, soportes de registro grabados. Clase 41: Organización y realización de coloquios, seminarios, simposios, congresos y conferencias; formación, enseñanza; asesoramiento en materia de formación y perfeccionamiento. Clase 42: Elaboración, actualización y mantenimiento de programas de ordenador; diseño de programas de ordenador; asesoramiento en materia de ordenadores; alquiler de hardware y software para ordenadores; alquiler de tiempos de acceso a una base de datos informática.
Motivos
Se denegó la marca para todos los productos y servicios, por los siguientes motivos: la Sala de Recurso consideró que, al contrario de lo que el solicitante reivindicaba, existía solapamiento entre los productos y servicios ofrecidos por el solicitante y las actividades del Consejo de Europa y de la Unión Europea. La Sala de Recurso hizo referencia, entre otros, al Diario Oficial de la Unión Europea, que está disponible en CD-ROM (es decir, en un soporte de datos grabado), los seminarios, los programas de formación y las conferencias que ofrecen el Consejo de Europea y la Unión Europea en una variedad de ámbitos, y a un gran número de bases de datos puestas a disposición del público por dichas instituciones, en particular EUR-Lex. Debe señalarse que, dada la gran variedad de los servicios y productos que el Consejo de Europa y la Unión Europea pueden ofrecer, la naturaleza de los productos o servicios para los que se solicitó el registro no excluye la posibilidad de que el público afectado crea que existe un vínculo entre la demandante y estas instituciones. Por tanto, la Sala de Recurso concluyó acertadamente que el registro de la marca solicitada podía dar al público la impresión de que existía un vínculo entre la marca solicitada y las instituciones de que se trata.
4 Comprobar si el registro ha sido autorizado
Cuando no existen pruebas de que se ha permitido el registro de la marca solicitada, el examinador formulará objeciones a su registro. La objeción debe reproducir el símbolo protegido, indicando el número 6 ter.
El examinador deberá asimismo indicar claramente los productos y servicios denegados y motivar por qué la marca sugiere al público un vínculo con la organización de que se trate.
Únicamente podrá renunciarse a dicha objeción si el solicitante aporta pruebas de que la autoridad competente ha autorizado el registro de la marca.
Alcance de la denegación: en el caso de las banderas y los símbolos de organizaciones internacionales intergubernamentales, la denegación debe especificar los productos y/o servicios de que se trate, es decir, aquellos respecto de los cuales el público podría apreciar, en opinión del examinador, un vínculo entre la marca y una organización.
Motivos de denegación absolutos
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2.8.3. Protección de distintivos, emblemas o blasones distintos de los incluidos en el artículo 6 ter del Convenio de París, con arreglo al artículo 7, apartado 1, letra i), del RMC
De conformidad con el artículo 7, apartado 1, letra i), del RMC, las marcas no se registrarán si incluyen distintivos, emblemas o blasones distintos de los incluidos en el artículo 6 ter del Convenio de París y que tienen un especial interés público, salvo que la autoridad competente haya consentido su registro.
Tal como se ha visto anteriormente, el artículo 7, apartado 1, letra i), del RMC hace referencia a otros distintivos, emblemas o blasones que no hayan sido comunicados, de conformidad con el artículo 6 ter, apartado 3, letra a), del Convenio de París, con independencia de si son emblemas de un Estado o de una organización internacional intergubernamental en el sentido del artículo 6 ter, apartado 1, letras a) y b), del Convenio de París o de organismos públicos o administraciones distintas de las referidas en el Artículo 6ter del Convenio de París, como las provincias o los municipios.
Asimismo, de conformidad con la jurisprudencia, el artículo 7, apartado 1, letra i), y el artículo 7, apartado 1, letra h), del RMC tienen un ámbito de aplicación similar y conceden al menos niveles de protección equivalentes.
Esto significa que el artículo 7, apartado 1, letra i), del RMC resulta aplicable no sólo en los casos en que los mencionados símbolos se reproducen de forma idéntica a la marca o a parte de la misma, sino también cuando la marca consiste en una imitación de dichos símbolos o la contiene. Cualquier otra interpretación de esta disposición conllevaría una protección menor con arreglo al artículo 7, apartado 1, letra i), del RMC que aquella proporcionada por el artículo 7, apartado 1, letra h), del RMC. Siguiendo la misma línea de razonamiento, el artículo 7, apartado 1, letra i), del RMC es aplicable cuando la marca puede inducir a error al público respecto de la existencia de un vínculo entre el titular de la marca y el organismo al que hacen referencia dichos símbolos. En otras palabras, la protección que proporciona el artículo 7, apartado 1, letra i), del RMC está condicionada a la existencia de un vínculo entre la marca y el símbolo. De lo contrario, las marcas a las que resulta aplicable el artículo 7, apartado 1, letra i), del RMC obtendrían una protección mayor que las mencionadas en el artículo 7, apartado 1, letra h), del RMC (véase la sentencia de 10/7/2013, en el asunto T-3/12, «MEMBER OF €E EURO EXPERTS»).
El artículo 7, apartado 1, letra i), no define los símbolos de un «especial interés público». Sin embargo, es razonable presumir que la naturaleza de los mismos podría variar para incluir, por ejemplo, los símbolos religiosos, los símbolos políticos o los símbolos de organismos públicos o administraciones distintas de las referidas en el Artículo 6ter del Convenio de París, como las provincias o los municipios. En cualquier caso, el «especial interés público» implicado debe quedar reflejado en un documento público, por ejemplo, en un instrumento jurídico, reglamento u otro acto normativo nacional o internacional.
El Tribunal General declaró que existía un «especial interés público» cuando el emblema tiene un vínculo particular con una de las actividades realizadas por una organización internacional intergubernamental (véase la sentencia de 10/7/2013, en el asunto T-3/12 «MEMBER OF €E EURO EXPERTS», apartadodo 44). En particular, el Tribunal especificó que el artículo 7, apartado 1, letra i), del RMC era aplicable también cuando el emblema se limitaba a evocar uno de los ámbitos de aplicación de la Unión Europea, e incluso si dicha actividad afectaba solo a algunos de los Estados de la UE (véase ibídem, apartados 45 y 46).
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Esto confirma que la protección contemplada en el artículo 7, apartado 1, letra i), del RMC es aplicable también a los símbolos que son de especial interés público solamente en un único Estado miembro o en parte del mismo (artículo 7, apartado 2, del RMC).
Existen cuatro pasos para examinar las marcas que contienen distintivos, emblemas y blasones de especial interés público.
1 Considerar si el símbolo es de especial interés público.
2 Comparar el símbolo con la marca solicitada.
3 Comprobar si la marca que se solicita sugiere al público destinatario que existe un vínculo entre el titular y la autoridad a la que hace referencia el símbolo o induce a error al público respecto de la existencia de dicho vínculo.
4 Comprobar si el expediente demuestra que el registro ha sido autorizado por la autoridad adecuada.
1 Considerar si el símbolo es de especial interés público
En la actualidad, no existe una lista o base de datos que permita a los examinadores identificar qué símbolos son de especial interés público, en particular en un Estado miembro o en una parte del mismo. Por lo tanto, es probable que las observaciones de terceros sigan siendo el origen de muchas de las objeciones a dichos símbolos.
Un ejemplo de un símbolo de especial interés público es la Cruz Roja, que está protegido por el Convenio de Ginebra para mejorar la suerte de los Heridos y Enfermos de las Fuerzas Armadas en Campaña, firmado en Ginebra (http://www.icrc.org/ y http://www.icrc.org/spa/war-and-law/treaties-customary- law/geneva- conventions/index.jsp).
Los siguientes símbolos están protegidos en virtud del Convenio de Ginebra:
Aparte de los símbolos, también se protegen sus nombres (de izquierda a derecha), tal como se indica a continuación: «Cruz Roja», «Media Luna Roja» y «Cristal Rojo».
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Otro ejemplo de símbolo de especial interés público es el símbolo olímpico tal como queda definido en el Tratado de Nairobi sobre la protección del Símbolo Olímpico. Según la definición en el Tratado de Nairobi, «el Símbolo Olímpico está constituido por cinco anillos entrelazados: azul, amarillo, negro, verde y rojo, colocados en este orden de izquierda a derecha. Sólo los anillos lo constituyen, sean éstos empleados en uno o varios colores.».
Se consideró que el siguiente símbolo no era un símbolo de especial interés público:
El símbolo de reciclaje (en la izquierda) no se consideró protegido en virtud de esta disposición porque es un símbolo comercial.
2 Comparar el símbolo con la marca solicitada
¿La marca solicitada consiste únicamente en una reproducción idéntica del símbolo de especial interés público o la contiene? ¿O la marca solicitada consiste en una imitación heráldica o contiene una imitación heráldica de la misma?
a) ¿La marca solicitada consiste únicamente en una reproducción idéntica del símbolo o la contiene? En ese caso, vaya al paso siguiente.
b) ¿La marca solicitada consiste únicamente en una imitación heráldica del símbolo o la contiene?
La prueba es igual que para las banderas y símbolos de organizaciones internacionales intergubernamentales, es decir, el símbolo y la marca (o la parte de la marca en que se reproduce el símbolo) deben ser bastante similares.
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A continuación se incluyen ejemplos de marcas que fueron denegadas porque incluían el símbolo de la Cruz Roja o una imitación heráldica del mismo.
Solicitudes de MC denegadas
WO 964 979 CTMA 2 966 265 CTMA 5 988 985
Por otro lado, tradicionalmente se han utilizado una serie de cruces rojas ampliamente conocidas y todavía se utilizan, cuya incorporación en una marca no se consideraría una reproducción de la «Cruz Roja». Entre los ejemplos de estas cruces famosas se incluyen los siguientes:
Cruz templaria Cruz de San Jorge Cruz de Malta
Se admitieron las siguientes marcas comunitarias porque contenían dos reproducciones de la cruz templaria.
Una marca que contiene una cruz en blanco y negro (o en tonos de gris) no puede ser susceptible de objeción. Tampoco puede formularse una objeción contra una cruz de color distinto al rojo, con arreglo al artículo 7, apartado 1, letra i), del RMC.
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Solicitudes de MC aceptadas
CTMA 8 986 069 CTMA 9 019 647 CTMA 9 025 768
3 Comprobar si la marca que se solicita sugiere al público destinatario que existe un vínculo entre el titular y la autoridad a la que hace referencia el símbolo o induce a error al público respecto de la existencia de dicho vínculo.
Se sugiere un vínculo no sólo en el caso en que el público pudiera creer que los productos o servicios proceden de la autoridad de que se trate, sino que también en el caso que el público pudiera creer que los productos o servicios cuentan con la aprobación o la garantía de dicha autoridad, o están vinculados de cualquier otro modo con la misma (véase la sentencia de 10/7/2013, en el asunto T-3/12, «MEMBER OF €E EURO EXPERTS», apartado 78).
Para valorar correctamente las circunstancias, el examinador deberá tener en cuenta, tal como se indicó anteriormente, las siguientes cuestiones:
- los productos y/o servicios cubiertos por la solicitud de marca comunitaria;
- el público destinatario;
- la impresión general producida por la marca.
El examinador debe evaluar si existe solapamiento entre los productos y/o servicios reivindicados y las actividades de la autoridad de que se trate y si el público destinatario podría ser consciente del mismo.
En particular, por lo que a la Unión Europea se refiere, el examinador deberá tener en cuenta que esta última está activa en muchos ámbitos, tal como se deriva claramente de la amplia variedad de Directivas que ha adoptado.
Asimismo, el examinador deberá tener en cuenta el resto de elementos que componen la marca. Por lo que no puede dictaminarse que el resto de elementos del signo no llevaría a la conclusión de que el público no vincularía el signo con la autoridad de que se trate (véase la sentencia del TG de 10/7/2013, en el asunto T-3/12 «MEMBER OF €E EURO EXPERTS», apartado 107).
También con respecto a la UE, cabe señalar que, como regla general, los elementos denominativos como «EURO»/«EUROPEO» en una solicitud de marca comunitaria es probable que sugieran aún más que existe un vínculo, ya que podría percibirse que conlleva la aprobación por parte de la UE (véase la sentencia del TG de 10/7/2013, en el asunto T-3/12 «MEMBER OF €E EURO EXPERTS», apartado 113).
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Por ejemplo, el Tribunal General (en el asunto T-3/12) confirmó que la siguiente marca (CTMA nº 6 110 423, que comprende las clases 9, 16, 35, 36, 39, 41, 42, 44 y 45)
contravenía el artículo 7, apartado 1, letra i), del RMC ya que incluía una imitación (heráldica) del símbolo «Euro».
4 Comprobar si el registro ha sido autorizado
¿El expediente demuestra que la correspondiente autoridad ha autorizado el registro?
Cuando no existe dicha prueba, el examinador formulará objeciones al registro de la marca solicitada. La objeción reproducirá el símbolo y proporcionará al solicitante toda la información necesaria y, en particular, la información sobre por qué el símbolo es de «especial interés público» (por ejemplo, si está protegido por un instrumento internacional, deberá realizarse una referencia a dicho instrumentos; en el caso de la Cruz Roja, este instrumento es el Convenio de Ginebra para mejorar la suerte de los Heridos y Enfermos de las Fuerzas Armadas en Campaña, firmado en Ginebra (http://www.icrc.org/ y http://www.icrc.org/spa/war-and-law/treaties-customary- law/geneva-conventions/index.jsp )).
Únicamente podrá renunciarse a dicha objeción si el solicitante aporta pruebas de que la correspondiente autoridad ha autorizado el registro de la marca.
Alcance de la denegación: en el caso de los símbolos de especial interés público, la denegación debe especificar los productos y/o servicios de que se trate, es decir, aquellos respecto de los cuales el público podría apreciar, en opinión del examinador, un vínculo entre la marca y la autoridad.
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2.9 Artículo 7, apartado 1, letra j), del RMC
2.9.1 Introducción
El artículo 7, apartado 1, letra j), del RMC se aplica a las MC que entran en conflicto con las indicaciones geográficas correspondientes a vinos y bebidas espirituosas.
Más en concreto, establece la denegación de las MC de vinos que incluyan o consistan en una indicación geográfica que identifique los vinos, o las marcas de bebidas espirituosas que contengan o consistan en una indicación geográfica que identifique las bebidas espirituosas, cuando dichos vinos o bebidas no tengan dicho origen.
El artículo 7, a partado 1, letra j), del RMC no alude explícitamente a reglamentos específicos de la UE sobre la protección de las indicaciones geográficas de vinos y bebidas espirituosas. En este sentido, la Oficina sigue un enfoque sistemático e interpreta el artículo 7, apartado 1, letra j), del RMC con arreglo a la letra k) de ese mismo artículo y apartado. Es decir, la Oficina aplica el artículo 7, apartado 1, letra j), del RMC conjuntamente con las disposiciones pertinentes de los reglamentos de la UE sobre protección de las indicaciones geográficas de vinos y bebidas espirituosas, y en concreto, el Reglamento (UE) nº 1 3 0 8 / 2 0 1 3 3 del Consejo y del Reglamento (CE) nº 110/2008 del Parlamento Europeo y del Consejo4 , respectivamente.
Con arreglo al artículo 93, apartado 1, del Reglamento (UE) nº 1308/2013, se entenderá por:
a) «denominación de origen»: el nombre de una región, de un lugar determinado o, en casos excepcionales, de un país, que sirve para designar un vino que cumple los requisitos siguientes:
(i) su calidad y sus características se deben básica o exclusivamente a un entorno geográfico particular, con los factores naturales y humanos inherentes a él;
(ii) las uvas utilizadas en su elaboración proceden exclusivamente de esa zona geográfica;
(iii) la elaboración tiene lugar en esa zona geográfica; (iv) se obtiene de variedades de vid de la especie Vitis vinifera.
b) «indicación geográfica»: una indicación que se refiere a una región, a un lugar determinado o, en casos excepcionales, a un país, que sirve para designar un vino que cumple los requisitos siguientes:
(i) posee una calidad, una reputación u otras características específicas atribuibles a su origen geográfico;
(ii) al menos el 85 % de la uva utilizada en su elaboración procede exclusivamente de esa zona geográfica;
(iii) la elaboración tiene lugar en esa zona geográfica; (iv) se obtiene de variedades de vid de la especie Vitis vinifera o de un cruce
entre esta especie y otras especies del género Vitis.
3 Reglamento (UE) No 1308/2013 del parlamento Europeo y del Consejo de 17 de diciembre de 2013 por el que se crea la organización común de mercados de los productos agrarios. 4 Reglamento (CE) No 110/2008 del Parlamento Europeo y del Consejo de 15 de enero de 2008, relativo a la definición, designación, presentación, etiquetado y protección de la indicación geográfica de bebidas espirituosas y por el que se deroga el Reglamento (CEE) No 1576/89 del Consejo.
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De conformidad con el artículo 15, apartado 1, del Reglamento (CE) nº 110/2008, una «indicación geográfica» es aquella que identifique a una bebida espirituosa como originaria del territorio de un país o de una región o localidad de ese territorio, si determinada calidad, reputación u otras características de la bebida espirituosa son imputables fundamentalmente a su origen geográfico.
Por tanto, las denominaciones de origen protegidas (DOP) mantienen un vínculo estrecho con la zona geográfica. No obstante, tal distinción no afecta al ámbito de protección, que es el mismo para las DOP y las IGP (indicaciones geográficas protegidas). En otras palabras, el artículo 7, apartado 1, letra j), del RMC se aplica por igual a todas las designaciones que contempla el Reglamento (UE) nº 1308/2013, independientemente de que se encuentren registradas como DOP o IGP. El Reglamento nº 110/2008, sin embargo, regula únicamente las IGP, no las DOP.
La protección se otorga a las DOP y las IGP con el fin, entre otras cosas, de proteger los intereses legítimos de consumidores y productores.
En este sentido, debe subrayarse además que los conceptos de DOP e IGP difieren de la «indicación de procedencia geográfica simple». En esta última no existe un vínculo directo entre una calidad específica, o una reputación u otra característica del producto, y su origen geográfico concreto, lo que determina que no esté comprendida en el ámbito del artículo 93, apartado 1, del Reglamento (UE) nº 1308/2013, ni del artículo 15, apartado 1, del Reglamento (CE) nº 110/2008 (véase, por analogía, la sentencia de 7/11/2000, C-312/98, «Warsteiner Brauerei», apartados 43 y 44). Por ejemplo, «Rioja» es una DOP de vinos, puesto que designa un vino con características particulares que cumplen la definición de DOP. Por el contrario, el vino elaborado en Tabarca (una «indicación geográfica simple» que designa a una pequeña isla cercana a Alicante) no puede aspirar a la obtención de una DOP o una IGP si no satisface determinados requisitos.
Con arreglo al artículo 102, apartado 1, del Reglamento (UE) nº 1308/2013, el registro de una marca que contenga o consista en una denominación de origen o una indicación geográfica protegida que no se ajuste a la especificación del producto en cuestión, o cuya utilización se contemple en el artículo 103, apartado 2, y se refiera a uno de los productos enumerados en la parte II del anexo VII se rechazará cuando la solicitud de registro de la marca se presente después de la fecha de presentación a la Comisión de la solicitud de protección de l a denominación de or igen o i ndicación geográfica y la denominación de origen o la indicación geográfica reciba posteriormente la protección.
Por otra parte, de conformidad con el artículo 23, apartado 1, del Reglamento (CE) nº 110/2008, «se rechazará o invalidará el registro de marcas que incluyan o consistan de una indicación geográfica registrada en el anexo III que identifique una bebida espirituosa, si su uso pudiera dar lugar a las situaciones contempladas en el artículo 16.»
En el artículo 103, apartado 2, del Reglamento (UE) nº 1308/2013 y en el artículo 16 del Reglamento (CE) nº 110/2008 se señalan las situaciones que infringen los derechos derivados de una DOP o una IGP: (i) todo uso comercial directo o indirecto de la DOP o la IGP; (ii) toda usurpación, imitación o evocación; (iii) otras prácticas que puedan inducir a error.
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Tres condiciones acumulativas son necesarias para que sea aplicable el artículo 7, apartado 1, letra j), del RMC:
1. La DOP/IGP en cuestión debe estar registrada a escala de la UE (véase más adelante el apartado 2.9.2.1).
2. El uso de la MC que incluya o consista en una DOP/IGP en el caso de los vinos, o en una IGP en el de las bebidas espirituosas, debe constituir una de las situaciones previstas en el artículo 103, apartado 2, del Reglamento (UE) nº 1308/2013, o en el artículo 16 del Reglamento (CE) nº 110/2008 (véase más adelante el apartado 2.9.2.2).
3. La solicitud de MC debe incluir productos que sean idénticos o «comparables» a aquéllos que abarca la DOP/IGP (véase más adelante el apartado 2.9.2.3).
Respecto a estas tres condiciones, se hace referencia más adelante a: (i) qué DOP/IGP pueden dar lugar a una objeción con arreglo al artículo 7, apartado 1, letra j), del RMC; (ii) en qué circunstancias una MC incluye o consiste en una DOP/IGP de manera que le sea aplicable lo dispuesto en el artículo 103, apartado 2, del Reglamento (UE) nº 1308/2013, o en el artículo 16 del Reglamento (CE) nº 110/2008; (iii) los productos de la solicitud de MC afectados por la protección otorgada a la DOP/IGP. Por último, también se hace referencia más adelante al modo en que pueden limitarse los productos con el fin de eludir una objeción.
2.9.2 La aplicación del artículo 7, apartado 1, letra j), del RMC
2.9.2.1 DOP/IGP pertinentes
El artículo 7, apartado 1, letra j), del RMC se aplica en los casos en que las DOP/IGP (ya sean de un Estado miembro de la UE o de un tercer país) se han registrado con arreglo al procedimiento previsto en los Reglamentos nº 1308/2013 y 110/2008.
En cuanto a las DOP/IGP de terceros países que disfrutan de protección en la Unión Europa en virtud de acuerdos internacionales suscritos por dichos países y la Unión, véase más adelante el apartado 2.9.3.2.
Puede obtenerse información relevante acerca de las DOP/IGP de vinos en la base de datos «E-Bacchus» mantenida por la Comisión, a la que es posible acceder a través de la dirección de Internet http://ec.europa.eu/agriculture/markets/wine/e-bacchus/. Las IGP de bebidas espirituosas figuran en el anexo III del Reglamento nº 110/2008 (artículo 15, apartado 2, del Reglamento nº 110/2008), modificado, al que puede accederse en http://eur- lex.europa.eu/Notice.do?val=464638:cs&lang=en&list=531377:cs,500631:cs,500623:c s,500621:cs,464638:cs,&pos=5&page=1&nbl=5&pgs=10&hwords=. La Comisión también mantiene una base de datos, denominada «E-Spirit-Drinks», accesible en http://ec.europa.eu/agriculture/spirits/. No obstante, no se trata de un registro oficial y, por tanto, su carácter es meramente informativo.
La protección se otorga únicamente al nombre de la DOP/IGP y no se extiende ipso iure a los nombres de subregiones, subdenominaciones, áreas administrativas locales ni localidades del territorio contemplado por la DOP/IGP en cuestión. En este sentido, debe distinguirse entre la doctrina del Tribunal General en la sentencia de 11/5/2010, T-237/08, «CUVÉE PALOMAR», y el marco jurídico actual. En dicha sentencia se alude a un sistema de competencias de los Estados miembros para la
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designación de indicaciones geográficas d e vinos que existían con arreglo al anterior Reglamento (CE) nº 1493/1999, pero que ya no se encuentran en vigor. De conformidad con el artículo 67 del Reglamento (CE) nº 607/2009 de la Comisión (véase asimismo el artículo 120, apartado 1, letra g), del Reglamento (UE) nº 1308/2013, las denominaciones de tales áreas geográficas menores se consideran ahora datos meramente opcionales en las etiquetas.
Por otra parte, los acuerdos comerciales suscritos por la UE con terceros países suelen incluir como anexo una lista de las DOP/IGP registradas a escala de la UE que han de recibir protección asimismo en esos países (véase la sentencia de 11/5/2010, T-237/08, «CUVÉE PALOMAR», apartados 104 a 108, y la resolución de 19/6/2013, R1546/2011-4 – «FONT DE LA FIGUERA»). No obstante, los examinadores no deben utilizar tales listas como fuente de información sobre las DOP/IGP de la UE, sino que han de consultar las bases de datos correspondientes antes mencionadas. En primer lugar, las listas de DOP/IGP de la UE que deben protegerse en el extranjero pueden variar de un acuerdo a otro, dependiendo de las particularidades de las negociaciones. En segundo lugar, los anexos a tales acuerdos suelen modificarse y actualizarse mediante «canjes de notas».
El artículo 7, apartado 1, letra j), del RMC se aplica únicamente a las DOP/IGP solicitadas antes de la MC correspondiente y que se encuentran registradas en las fechas en que se examina la MC. Las fechas pertinentes para establecer la prioridad de una marca y de una DOP/IGP son la de solicitud de la MC (o la prioridad denominada del Convenio de París, si se reivindica), y la fecha de solicitud de protección de la DOP/IGP a la Comisión, respectivamente.
Por tanto, no se formulará ninguna objeción conforme al artículo 7, apartado 1, letra j), del RMC cuando la DOP/IGP se haya solicitado después de la fecha de presentación (o la fecha de prioridad, en su caso) de la solicitud de la MC. En el caso de los vinos, cuando no exista información relevante sobre la fecha en el extracto de «E- Bacchus», esto significa que la DOP/IGP en cuestión ya existía a 1/8/2009, fecha en la que se constituyó el registro. Para toda DOP/IGP de vinos añadida con posterioridad, el extracto de «E-Bacchus» incluye una referencia a la publicación en el Diario Oficial, en la que figura la información pertinente. En el caso de las bebidas espirituosas, la publicación inicial del anexo III del Reglamento (CE) nº 110/2008 contenía todas las IGP de las bebidas espirituosas que existían a 20/2/2008, fecha de entrada en vigor de ese Reglamento. En lo que respecta a las IGP de bebidas espirituosas añadidas con posterioridad, el Reglamento modificado correspondiente contiene la información pertinente.
No obstante lo anterior, y atendiendo al hecho de que la amplia mayoría de solicitudes de DOP/IGP normalmente acaban siendo registradas, se formulará una objeción cuando la DOP/IGP se haya solicitado antes de la fecha de presentación (o la fecha de prioridad, en su caso) de la solicitud de MC, pero no se haya registrado aún en las fechas de examen de la solicitud de la MC. Sin embargo, si el solicitante de l a MC alega que la DOP/IGP no ha sido aún registrada, el procedimiento se suspenderá a la espera del resultado final del proceso de registro de la DOP/IGP.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 44
FINAL VERSION 1.0 DATE 01/08/2014
2.9.2.2 Situaciones contempladas por el artículo 103 del Reglamento (UE) nº 1308/2013 y el artículo 16 del Reglamento (CE) nº 110/2008.
El artículo 7, apartado 1, letra j), del RMC se aplica (siempre que se den las restantes condiciones) en las situaciones siguientes:
1. la MC consiste únicamente en una DOP/IGP completa («uso directo»); 2. la MC contiene una DOP/IGP completa, además de otros términos o elementos figurativos («uso directo o indirecto»); 3. la MC contiene o consiste en una imitación o una evocación de una DOP/IGP; 4. otras indicaciones o prácticas que puedan inducir a error; 5. la reputación de DOP/IGP.
La MC consiste únicamente en una DOP/IGP completa («uso directo»).
Esta situación comprende el «uso directo» de una DOP/IGP como MC, es decir, se da cuando la marca consiste únicamente en el nombre de la DOP/IGP.
Ejemplos
DOP/IGP Marca comunitaria
MADEIRA
(PDO-PT-A0038)
MADEIRA
(MC colectiva nº 3 540 911)
MANZANILLA
(PDO-ES-A1482)
MANZANILLA
(MC colectiva nº 1 723 345)
Si la marca consiste únicamente en la DOP/IGP, la MC se encuentra sujeta asimismo a lo dispuesto en el artículo 7, apartado 1, letra c), del RMC, puesto que se la considera descriptiva del origen geográfico de los productos en cuestión. Esto significa que la objeción del examinador dará lugar simultáneamente a motivos de denegación absolutos con arreglo tanto al artículo 7, apartado 1, letra j), del RMC como a la letra c) de ese mismo artículo. Existe una excepción al respecto, con arreglo al artículo 66, apartado 2, del RMC, cuando la MC sea una marca colectiva y la normativa que regule su uso incluya los elementos específicos previstos en el artículo 67, apartado 2 (para la situación contraria, cuando la marca se hubiera solicitado como marca individual, véase la resolución de 7/3/2006, R 1073/2005-1 – «TEQUILA», apartado 15).
Mientras que la limitación de los productos pertinentes (para cumplir los requisitos del pliego de condiciones de la DOP/IGP) suele constituir un medio para eludir la objeción con arreglo al artículo 7, apartado 1, letra j), del RMC (véase más adelante el apartado 2.9.2.3), tal limitación es irrelevante para el artículo 7, apartado 1, letra c), del RMC.
Por ejemplo, una solicitud de la marca denominativa «Bergerac» para vinos será objeto de objeción simultáneamente con arreglo al artículo 7, apartado 1, letras c) y j), del RMC: consiste únicamente en la DOP «Bergerac» y, por tanto, es descriptiva. Si los productos se limitan posteriormente a los vinos que cumplen el pliego de condiciones de la DOP «Bergerac», la objeción con arreglo al artículo 7, apartado 1, letra j), del RMC dejará de aplicarse, pero la marca seguirá siendo descriptiva y susceptible de objeción con arreglo al artículo 7, apartado 1, letra c), del RMC, salvo que se haya
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 45
FINAL VERSION 1.0 DATE 01/08/2014
solicitado como marca colectiva conforme con el artículo 67, apartado 2, del RMC.
La MC contiene una DOP/IGP completa, además de otros elementos denominativos o figurativos («uso directo o indirecto»).
Esta situación incluye asimismo el «uso directo» de una DOP/IGP en una MC mediante la reproducción del nombre de la DOP/IGP, junto con otros elementos.
Se considera que las MC que siguen cumplen lo previsto en el artículo 7, apartado 1, letra j), del RMC puesto que contienen la denominación completa de una DOP/IGP.
DOP/IGP Marca comunitaria
BEAUJOLAIS
(PDO-FR-A0934)
BEAUX JOURS BEAUJOLAIS
(MC nº 1 503 259)
CHAMPAGNE
(PDO-FR-A1359)
CHAMPAGNE VEUVE DEVANLAY
(MC nº 11 593 381)
BEAUJOLAIS
(PDO-FR-A0934)
(MC nº 1 561 646)
De conformidad con el artículo 7, apartado 1, letra j), del RMC, es irrelevante que los otros términos o elementos figurativos doten o no a la marca de un carácter distintivo. El signo puede ser aceptable en su conjunto con arreglo al artículo 7, apartado 1, letras b) y c), del RMC, y aun así, ser susceptible de objeción (como en los casos anteriores) de acuerdo con el artículo 7, apartado 1, letra j), del RMC.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 46
FINAL VERSION 1.0 DATE 01/08/2014
Existe un «uso indirecto» de una DOP/IGP, por ejemplo, cuando ésta figura en una marca compleja (como la representación de una etiqueta) en caracteres de pequeño tamaño, a modo de información acerca del origen o el tipo de producto, o como parte de la dirección del productor. En tales casos, la marca será susceptible de objeción, independientemente de la posición o el tamaño de la DOP/IGP en el conjunto de la marca, siempre que la DOP/IGP resulte visible.
DOP/IGP Marca comunitaria
OPORTO
(PDO-PT-A1540)
(MC nº 11 907 334 y 2 281 970)
La MC contiene o consiste en una imitación o una evocación de una DOP/IGP.
Ni el RMC ni los Reglamentos (UE) nº 1308/2013 y (CE) nº 110/2008 definen el significado de «imitación» o «evocación». En gran medida, se trata de conceptos estrechamente relacionados.
De acuerdo con el Tribunal, «el concepto de evocación […] abarca un supuesto en el que el término utilizado para designar un producto incorpora una parte de una denominación protegida, de modo que, al ver el nombre del producto, el consumidor piensa, como imagen de referencia, en la mercancía que se beneficia de la denominación» (sentencia de 4/3/1999, C-87/97, «Cambozola», apartado 25, y sentencia de 26/2/2008, C-132/05, apartado 44).
Lo anterior significa que puede haber evocación cuando la MC reproduce parte de una DOP/IGP, como (uno de sus) elementos denominativos geográficamente significativos (en el sentido de que no se trata de un elemento genérico, como «cabernet» o «ron» en la DOP/IGP «Cabernet d’Anjou», o «Ron de Granada»), o incluso parte de un término, como una raíz o un sufijo característicos (más adelante figuran algunos ejemplos).
Por otra parte, el artículo 103, apartado 2, letra b), del Reglamento (UE) nº 1308/2013 y el artículo 16 del Reglamento (CE) nº 110/2008 protegen las DOP/IGP contra cualquier tipo de usurpación, imitación o evocación, «aunque se indique el origen verdadero del producto […] o si el nombre protegido se traduce o va acompañado de los términos “estilo”, “tipo”, “método”, “producido como”, “imitación”, “sabor”, “parecido” u otros análogos», aun cuando no se induzca a error a los consumidores.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 47
FINAL VERSION 1.0 DATE 01/08/2014
De acuerdo con el Abogado General (conclusiones de 17/12/1998, C- 87/97, «Cambozola», apartado 33), «el término “evocación” es objetivo, por lo que no es necesario demostrar que el titular de la marca pretendía evocar el nombre protegido».
En este sentido, y a efectos del artículo 7, apartado 1, letra j), del RMC, la Oficina evaluará de un modo igualmente objetivo las situaciones antes descritas, independientemente de la intención real del solicitante de la MC.
Asimismo, la Oficina considera los términos «imitación» y «evocación» como dos corolarios de un concepto esencialmente idéntico. La marca «imita» (remeda, reproduce elementos de, etc.), con el resultado de que se «evoca» (se trae a la mente) el producto designado por la DOP/IGP.
A la luz de lo anterior, la Oficina cree que existe evocación o imitación de una DOP cuando:
(a) la MC incorpora la parte geográficamente significativa (en el sentido de que no es el elemento genérico) de la DOP/IGP;
(b) la MC contiene un adjetivo o sustantivo equivalente que indica el mismo origen geográfico;
(c) la DOP/IGP se traduce; (d) la MC incluye una expresión «deslocalizadora» además de la DOP/IGP o su
evocación.
La MC incorpora parte de la DOP/IGP.
De acuerdo con el Tribunal (sentencia de 4/3/1999, C-87/97, «Cambozola», y sentencia de 26/2/2008, C-132/05, citadas anteriormente), la MC debe suscitar en la mente del consumidor la imagen del producto que se beneficia de la denominación.
El Tribunal ha establecido además que «puede haber evocación de una denominación protegida aun cuando no haya riesgo alguno de confusión entre los productos de que se trata» (sentencia de 4/3/1999, C-87/97, «Cambozola», apartado 26).
Es importante señalar que la evocación no se evalúa del mismo modo que el riesgo de confusión (véanse las conclusiones del Abogado General de 17/12/1998, C-87/97, «Cambozola», apartado 37). Debe establecerse un vínculo con el producto cuya denominación se protege. Por tanto, la existencia o no de evocación no se analizará con arreglo a los principios formulados por el TJUE en la sentencia de 11/11/1997, C- 251/95, «SABEL».
Como se ha señalado anteriormente, se entiende que la evocación engloba no sólo las situaciones en las que la MC incorpora (uno de) los términos geográficamente significativos (frente a los elementos genéricos) de una DOP/IGP, sino también aquéllas en las que la MC reproduce otras partes de la DOP/IGP, como una raíz o un sufijo característicos.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 48
FINAL VERSION 1.0 DATE 01/08/2014
Aunque los ejemplos que siguen atañen a productos alimenticios, sirven igualmente para demostrar la «imitación» y la «evocación» en el caso de los vinos y las bebidas espirituosas.
DOP/IGP Marca Aclaración
CHIANTI CLASSICO
(IT/PDO/0005/0108)
(MC 9 567 851)
El término «chianti» evoca la DOP «Chianti Classico».
(R 1474/2011-2, «AZIENDA OLEARIA CHIANTI», apartados 14- 15).
GORGONZOLA
(IT/PDO/0017/0010) CAMBOZOLA
«existe evocación de una denominación protegida cuando el término utilizado para designarlo termina en dos sílabas iguales a las de esta denominación y contiene el mismo número de sílabas que ésta, de lo que resulta una semejanza fonética y óptica manifiesta entre ambos términos.»
(C-87/97, apartado 27).
Si una DOP/IGP contiene o evoca el nombre de un producto que se considera genérico, la protección no se extiende al elemento genérico. Por ejemplo, en la IGP «Ron de Málaga», es un hecho notorio que el término «ron» es genérico y, por tanto, no merece protección. En consecuencia, no se formulará objeción alguna respecto al mero hecho de que una MC contenga un término genérico que forme parte de una DOP/IGP.
Cuando la naturaleza genérica de un elemento en una DOP/IGP pueda establecerse mediante definiciones de diccionario normalizadas, es determinante la perspectiva del público en el país de origen de la DOP/IGP. Así, en los ejemplos antes citados basta con que el término «ron» sea genérico para los consumidores españoles para que se concluya su carácter genérico, independientemente de que pueda ser entendido o no por otras partes del público en la Unión Europea.
Por el contrario, cuando no se encuentre una definición en un diccionario normalizado y reconocido, la naturaleza genérica del término de que se trate deberá evaluarse con arreglo a los criterios formulados por el Tribunal (véase la sentencia de 26/2/2008, C- 132/05, y la sentencia de 12/9/2007, T-291/03, «GRANA BIRAGHI»), por ejemplo la legislación nacional y de la UE pertinente, el modo en que el público percibe el término, y las circunstancias relativas a la comercialización del producto en cuestión.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 49
FINAL VERSION 1.0 DATE 01/08/2014
Por último, en algunos casos, una MC podrá constituir un uso directo o indirecto o una evocación de más de una DOP/IGP al mismo tiempo. Tal situación se dará probablemente cuando contenga un elemento (que no sea genérico) que figure en más de una DOP/IGP.
DOP/IGP RIOJA (PDO-ES-A0117)
SANTIAGO (IGP chilena)
Marca comunitaria RIOJA SANTIAGO
Aclaración
La marca solicitada consta de los términos «RIOJA» y «SANTIAGO», y cada uno de ellos coincide con una denominación de origen protegida de vinos: el primero («RIOJA») lo protege la Unión Europea, y el segundo («SANTIAGO»), es una indicación geográfica de un vino originario de Chile, protegido por un acuerdo bilateral entre la Unión Europea y la República de Chile.
No es posible aceptar ninguna limitación que incluya un «vino» procedente del territorio de una de las dos denominaciones de origen, puesto que tal limitación excluye automáticamente los vinos procedentes de la otra denominación de origen, lo que significa inevitablemente que la marca solicitada dará lugar a confusión. Por el mismo motivo, una limitación hipotética de la lista de productos respecto al vino procedente de la zona geográfica objeto de una de las denominaciones de origen (p. ej., «vinos de la denominación de origen “Rioja” y vinos de la denominación de origen “Santiago”») en la clase 33 sería objeto de la prohibición del artículo 7, apartado 1, letra j), del RMC, en la medida en que la marca, de manera inevitable, y confusa, identifica a vinos con un origen geográfico distinto del de las respectivas denominaciones de origen incluidas en la marca. Evitar tal eventualidad es el propósito principal de tal artículo.
(R 0053/2010-2, «RIOJA SANTIAGO»)
Siempre que la MC abarque los productos pertinentes, se formulará objeción respecto a la totalidad de las DOP/IGP de que se trate. No obstante, el examinador indicará que la objeción es insalvable, porque limitar los productos a aquéllos que cumplan con una o la totalidad de las DOP/IGP daría lugar necesariamente a otra objeción con arreglo al artículo 7, apartado 1, letra j), del RMC, puesto que tal limitación identificaría los vinos, de manera inevitable y confusa, con un origen geográfico distinto al de la DOP/IGP en cuestión.
Adjetivos/sustantivos equivalentes
El uso de un adjetivo/sustantivo equivalente para indicar el mismo origen constituye una evocación de una DOP/IGP.
DOP/IGP Marca comunitaria(ejemplos inventados) Aclaración
IBIZA
(PGI-ES-A0110) IBICENCO Nombre en la DOP → adjetivo en la MC.
AÇORES
(PGI-PT-A1447) AÇORIANO Nombre en la DOP → adjetivo en la MC.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 50
FINAL VERSION 1.0 DATE 01/08/2014
BORDEAUX
(PDO-FR-A0821) BORDELAIS Nombre en la DOP → adjetivo en la MC.
DOP/IGP traducidas
Del mismo modo, existe evocación o imitación de la DOP/IGP cuando la MC contiene o consiste en una traducción de la totalidad o de una parte de la DOP/IGP en cualquiera de las lenguas de la UE.
DOP/IGP Marca comunitaria Aclaración
COGNAC KONJAKKI Se considerará que una MC que contiene el término «Konjakki» evoca «Cognac» en finés.
BOURGOGNE “Borgoña” es la traducción española de la DOP francesa “Bourgogne”
Las marcas que consistan en estos términos deberán denegarse con arreglo al artículo 7, apartado 1, letras j) y c), del RMC, y no únicamente en virtud de la letra c) de dicho artículo y apartado.
Expresiones utilizadas como «deslocalizadores»
De conformidad con el artículo 103, apartado 2, letra b), del Reglamento (UE) nº 1308/2013 y el artículo 16 ter del Reglamento (CE) nº 110/2008, las DOP/IGP se protegen «aunque se indique el origen verdadero del producto […] o si el nombre protegido […] va acompañado de los términos “estilo”, “tipo”, “método”, “producido como”, “imitación”, “sabor”, “parecido” u otros análogos». Por tanto, el hecho de que la DOP/IGP reproducida o evocada en la MC se acompañe de tales expresiones no incide en la aplicación del artículo 7, apartado 1, letra j), del RMC. En otras palabras, aun cuando se informe al público con dichas expresiones del origen real del producto, seguirá formulándose objeción con arreglo al artículo 7, apartado 1, letra j), del RMC. En cualquier caso, la marca resultará engañosa conforme al artículo 7, apartado 1, letra g), del RMC, puesto que existirá una contradicción entre los productos (limitados a la DOP/IGP específica), y el mensaje transmitido por la marca (que las mercancías no son productos «auténticos» de la DOP/IGP), lo que dará lugar necesariamente a una objeción ulterior con arreglo a dicho artículo.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 51
FINAL VERSION 1.0 DATE 01/08/2014
DOP/IGP Marca comunitaria
(ejemplos inventados) Aclaración
RIOJA
(PDO-ES-A0117) VINO TINTO TIPO RIOJA
Se considerará que una MC que contenga una expresión como «Vino tinto tipo Rioja» evoca la DOP «Rioja», aun cuando transmita la idea de que el producto en cuestión no es un «auténtico» vino de la DOP «Rioja».
El lugar donde se encuentre el domicilio social del solicitante es irrelevante para evaluar la aplicación del artículo 7, apartado 1, letra j), del RMC. El artículo 103, apartado 1, del Reglamento (UE) nº 1308/2013 establece que las denominaciones de origen protegidas y las indicaciones geográficas protegidas podrán ser utilizadas por cualquier agente económico que comercialice vino elaborado de conformidad con el pliego de condiciones del producto correspondiente. En este sentido, siempre que los productos cumplan el pliego de condiciones de la DOP/IGP en cuestión (lo que se garantiza limitándolos debidamente), el lugar del domicilio social del solicitante indicado en la solicitud de MC es irrelevante. Por ejemplo, una empresa con domicilio social en Polonia puede poseer un viñedo ubicado en España que produzca vino conforme con el pliego de condiciones de la DOP «Ribera del Duero».
Otras indicaciones o prácticas que pueden inducir a error
El artículo 103, apartado 2, letras c) y d), del Reglamento (UE) nº 1308/2013, y el artículo 16, letras c) y d) del Reglamento (CE) nº 110/2008, protegen las DOP/IGP frente a diversas indicaciones falsas o que puedan inducir a error en cuanto a la procedencia, el origen, la naturaleza o las características esenciales del producto de que se trate.
Aunque depende en gran medida de las particularidades de cada caso, que, por tanto, deberán evaluarse de manera individual, una MC puede considerarse engañosa cuando, por ejemplo, contenga elementos figurativos que suelan asociarse con la zona geográfica en cuestión (como monumentos históricos sobradamente conocidos).
Lo expuesto debe interpretarse de modo restrictivo: se refiere únicamente a las MC que contienen una imagen singular y reconocida que se toma de forma habitual como símbolo del lugar de origen específico de los productos objeto de la DOP/IGP.
DOP/IGP Marca comunitaria(ejemplos inventados) Aclaración
PORTO
(PDO-PT-A1540)
MC en la que se muestra el puente de «Dom Luís I» de
la ciudad de Oporto
La imagen del puente de Dom Luís I sobre el río Duero constituye un emblema bien conocido de la ciudad de Oporto. A la utilización de tal imagen en vinos distintos de los que son objeto de la DOP «Porto» le sería aplicable lo dispuesto en el artículo 103, apartado 2, letras c) y d), del Reglamento (UE) nº 1308/2013.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 52
FINAL VERSION 1.0 DATE 01/08/2014
Dada la dificultad inherente de identificar elementos figurativos evocadores, sobre todo en los casos menos obvios, la Oficina se basará fundamentalmente en tales situaciones en las objeciones formuladas por terceros.
La reputación de las DOP/IGP
La Oficina no considera que, en el contexto del examen de los motivos de denegación absolutos, la reputación de una DOP/IGP permita extender su protección a productos diferentes.
Con arreglo al artículo 103, apartado 2, letra a), del Reglamento (UE) nº 1308/2013, y al artículo 16, letra a), del Reglamento (CE) nº 110/2008, los nombres registrados están protegidos contra el uso que aproveche su reputación. Tal protección se extiende incluso a productos diferentes (véase, por analogía, la sentencia de 12/6/2007, asuntos acumulados T-53/04 a T-56/04, T-58/04 y T-59/04, «BUDWEISER», apartado 176). No obstante, el ámbito de tal protección debe interpretarse con arreglo al mandato contenido en el artículo 102 del Reglamento (UE) nº 1308/2013, que limita la denegación de marcas a los productos consignados en su anexo VII, parte II.
Por tanto, la Oficina considera que, en el contexto del examen de los motivos de denegación absolutos, la protección de una DOP/IGP se limita a los productos consignados en el anexo VII, parte II.
No obstante, el ámbito de protección extendido de una DOP/IGP con renombre puede invocarse en el contexto del artículo 8, apartado 4, del RMC (véanse las Directrices, Parte C, Oposición, Sección 4, Derechos con arreglo al artículo 8, apartado 4, del RMC).
2.9.2.3 Productos pertinentes
Productos comparables
Las objeciones basadas en el artículo 7, apartado 1, letra j), del RMC únicamente son aplicables a los productos específicos de la solicitud de MC en cuestión, es decir, aquéllos que son idénticos o «comparables» a los amparados por la DOP/IGP.
Los diferentes términos utilizados en los artículos 102, apartado 1, y 103, apartado 2, del Reglamento (UE) nº 1308/2013 («producto perteneciente a una de las categorías enumeradas en el anexo VII, parte II» y «productos comparables», respectivamente) son interpretados por la Oficina como sinónimos referidos al mismo concepto.
Para facilitar la consulta, las categorías consignadas en el anexo VII, parte II pueden agruparse en: vino; (ii) vino espumoso; (iii) mosto de uva; (iv) vinagre de vino.
El concepto de productos comparables debe interpretarse restrictivamente y es independiente del análisis de la similitud entre productos en el Derecho de marcas. En este sentido, no han de cumplirse necesariamente los criterios expuestos en la sentencia de 29/9/1998, C-39/97, «CANON», aunque algunos pueden resultar útiles. Por ejemplo, dado que una DOP/IGP sirve para indicar el origen geográfico y las calidades particulares
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de un producto, criterios como la naturaleza o composición de éste son más relevantes que, por ejemplo, el hecho de que los productos son o no complementarios.
En particular, el TJUE (en la sentencia de 14/7/2011, asuntos acumulados C-4/10 y C- 27/10, «BNI COGNAC», apartado 54) refirió los criterios que siguen para determinar si los productos son comparables:
• si tienen o no características objetivas comunes (como el método de elaboración, la apariencia física del producto o la utilización de las mismas materias primas);
• si, desde el punto de vista del público interesado, corresponden a ocasiones de consumo en gran medida idénticas;
• si se distribuyen o no a través de las mismas redes y están sujetos a normas de comercialización similares.
Aunque en las presentes Directrices no es posible consignar todos los supuestos posibles, he aquí algunos ejemplos de productos comparables.
Productos objeto de la DOP/IGP Productos comparables
Vino Todos los tipos de vino (incluidos los espumosos), mosto de uva; vinagre de vino; bebidas basadas en el vino (p. ej., la «sangría»).
Bebidas espirituosas Todo tipo de bebidas espirituosas; bebidasbasadas en éstas.
Limitaciones de la lista de productos
Conforme al artículo 103, apartado 1, del Reglamento (UE) nº 1308/2013, las denominaciones de origen protegidas y las indicaciones geográficas protegidas podrán ser utilizadas por cualquier agente económico que comercialice vino elaborado de conformidad con el pliego de condiciones del producto correspondiente.
Las objeciones formuladas con arreglo al artículo 7, apartado 1, letra j), del RMC podrán eludirse si se limitan los productos pertinentes para cumplir el pliego de condiciones de la DOP/IGP en cuestión.
La limitación de los productos puede ser una tarea compleja, y es posible que dependa en gran medida de un examen caso por caso.
• Los productos del mismo tipo que los amparados por la DOP/IGP deben limitarse para cumplir el pliego de condiciones de la DOP/IGP en cuestión. El texto correcto será como sigue: «[nombre del producto] conforme con el pliego de condiciones de la [DOP/IGP “X”]». No se propondrá ni permitirá otra redacción. Limitaciones como «[nombre del producto] con la [DOP/IGP “X”] O [nombre del producto] originario de [nombre de un lugar]» no son aceptables.
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DOP/IGP en la marca comunitaria Lista de productos aceptable
Slovácká
(PDO-CZ-A0890)
Vino conforme con el pliego de condiciones de la DOP «Slovácká»
• La categoría de productos que incluya los amparados por la DOP/IGP debe limitarse para designar «vinos» que cumplan el pliego de condiciones de la DOP/IGP en cuestión. En el caso de las bebidas espirituosas, la limitación debe designar la categoría exacta de producto (p. ej., «whisky», «ron», «aguardiente de fruta», de conformidad con el anexo III del Reglamento (CE) nº 110/2008) conforme con el pliego de condiciones de la DOP/IGP de que se trate.
DOP/IGP en la marca comunitaria
Especificación original (no aceptable)
Lista de productos aceptable Aclaración
TOKAJI
(PDO-HU-A1254) Vinos
Vino conforme con el pliego de condiciones de la DOP «Tokaji».
La MC puede aceptarse únicamente respecto al vino objeto de la DOP.
• Los productos comparables se limitan a aquellos que, dentro de la categoría de productos comparables, son objeto de la DOP/IGP.
DOP/IGP en la marca comunitaria
Especificación original (no aceptable)
Lista de productos aceptable Aclaración
MOSLAVINA
(PDO-HR-A1653)
Bebidas alcohólicas (excepto cervezas)
Vino conforme con el pliego de condiciones de la DOP «Moslavina»; bebidas alcohólicas distintas del vino.
La MC puede aceptarse únicamente respecto al vino objeto de la DOP, y a las bebidas alcohólicas distintas del vino.
Puede haber casos en los que no pueda eludirse la objeción mediante una limitación, como ocurre cuando los productos solicitados, aunque «comparables», no incluyen el producto objeto de la DOP/IGP (p. ej., cuando la IGP comprenda el «whisky», y los productos solicitados sean «ron»).
2.9.3 DOP/IGP no protegidas con arreglo a los Reglamentos nº 1308/2013 y nº 110/2008
2.9.3.1 DOP/IGP protegidas a escala nacional en un Estado miembro de la UE
El Tribunal de Justicia ha establecido (sentencia de 8/9/2009, C-478/07, «BUD») que el sistema de protección de la UE para las DOP/IGP de productos agrarios y alimenticios previsto en el Reglamento (CE) nº 510/2006 [entonces vigente] es «de carácter exhaustivo». La Oficina aplica un enfoque análogo para las DOP/IGP de vinos y bebidas espirituosas, por los motivos que siguen.
La anterior protección a escala nacional de indicaciones geográficas de vinos y bebidas espirituosas que cumplen ahora las condiciones para la obtención de una DOP/IGP con arreglo al Reglamento (UE) nº 1308/2013 y el Reglamento (CE) nº 110/2008, respectivamente, se suspendió una vez que tales indicaciones se
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registraron a escala de la UE (véase el artículo 107 del Reglamento (UE) nº 1308/2013 y el artículo 15, apartado 2, y artículo 20, apartado 1, del Reglamento (CE) nº 110/2008).
Las indicaciones geográficas de vinos que cumplen ahora las condiciones para la obtención de una DOP/IGP con arreglo al Reglamento (UE) nº 1308/2013, y en el pasado disfrutaron de protección en virtud de la legislación nacional correspondiente, no están sujetas a lo dispuesto en el artículo 7, apartado 1, letra j), del RMC. En este sentido, no constituyen como tales, y por ese motivo únicamente, un motivo de denegación conforme al artículo 7, apartado 1, letra j), del RMC, salvo que también hayan estado registradas a escala de la UE. Por tanto, si, por ejemplo, un tercero argumenta que una MC contiene o consiste en una indicación geográfica de vinos que estuvo registrada en el pasado a escala nacional en un Estado miembro de la UE, el examinador comprobará si tal indicación también estuvo registrada a escala de la UE como DOP/IGP. Si no estuvo registrada a escala de la UE, se considerará que las observaciones del tercero no plantean serias dudas en lo que atañe al artículo 7, apartado 1, letra j), del RMC.
2.9.3.2 DOP/IGP de terceros países
Las situaciones que siguen aluden a las DOP/IGP de terceros países que no se encuentran registradas simultáneamente a escala de la UE.
La indicación geográfica está protegida únicamente en el país de origen con arreglo a la legislación nacional.
No se aplica el artículo 7, apartado 1, letra j), del RMC, puesto que la indicación geográfica de terceros países no se reconoce ni protege expressis verbis conforme a la legislación de la UE. En este sentido, nótese que las disposiciones del Acuerdo sobre los ADPIC no confieren derechos a los particulares que estos puedan invocar directamente ante los tribunales en virtud del Derecho de las UE (sentencia de 14/12/2000, asuntos acumulados C-300/98 y C-392/98, apartado 44).
En cualquier caso, cuando la MC contiene o consiste en una indicación geográfica protegida como la referida, deberá evaluarse asimismo si la MC puede considerarse o no descriptiva o engañosa con arreglo al artículo 7, apartado 1, letras c) y g), del RMC, de conformidad con las normas generales expuestas en las presentes Directrices. Por ejemplo, si un tercero observa que una MC consiste en el término «Murakami» (ejemplo inventado), que es una IGP de bebidas espirituosas con arreglo a la legislación nacional del país X, no se aplicará el artículo 7, apartado 1, letra j), del RMC por los motivos expuestos anteriormente, pero deberá examinarse si la MC será percibida o no como un signo descriptivo o engañoso por los consumidores pertinentes de la UE.
La indicación geográfica está protegida conforme a un acuerdo del que la Unión Europea es parte contratante.
La UE ha suscrito con terceros países diversos acuerdos comerciales que protegen indicaciones geográficas. Estos instrumentos suelen incluir una lista de tales indicaciones, así como distintas disposiciones sobre sus conflictos con las marcas. El contenido y el grado de precisión pueden variar en cualquier caso de un acuerdo a otro. Las
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indicaciones geográficas de terceros países se protegen a escala de la UE después de que el acuerdo correspondiente haya entrado en vigor.
A este respecto, según reiterada jurisprudencia, una disposición de un acuerdo celebrado por la UE con terceros países debe considerarse directamente aplicable cuando, a la vista del tenor, del objeto y de la naturaleza del acuerdo, puede llegarse a la conclusión de que dicha disposición contiene una obligación clara, precisa e incondicional, que no se subordina, en su ejecución o en sus efectos, a la adopción de acto ulterior alguno (sentencia de 14/12/2000, asuntos acumulados C-300/98 y C-392/98, apartado 42).
El ámbito de protección otorgado a estas IGP por terceros países se define mediante las disposiciones sustantivas del acuerdo en cuestión. Mientras que los acuerdos de mayor antigüedad suelen contener únicamente disposiciones generales, los acuerdos comerciales de «última generación» aluden a la relación entre las marcas y las IGP en términos similares a los artículos 102 y 103 del Reglamento (UE) nº 1308/2013 (véanse, por ejemplo, los artículos 210 y 211 del «Acuerdo comercial entre la Unión Europea y sus Estados miembros, por una parte, y Colombia y el Perú, por otra», DO L 354, 21/12/2012).
A la luz de lo referido anteriormente, las MC que contienen o consisten en una DOP/IGP de un tercer país protegida mediante un acuerdo del que la UE sea parte contratante (y que no se encuentra registrada simultáneamente con arreglo al Reglamento (UE) nº 1308/2013) se examinan, caso por caso, de conformidad con las disposiciones sustantivas específicas del acuerdo en cuestión sobre la denegación de marcas en conflicto, teniendo en cuenta la jurisprudencia citada más arriba. El mero hecho de que la DOP/IGP de un tercer país esté protegida por tales instrumentos no implica automáticamente que una MC que contenga o consista en la DOP/IGP en cuestión deba denegarse: esto dependerá del contenido y el alcance de las disposiciones pertinentes del acuerdo de que se trate.
La indicación geográfica está protegida con arreglo a un acuerdo internacional suscrito únicamente por Estados miembros.
La protección de indicaciones geográficas conforme a acuerdos entre dos Estados miembros queda excluida con arreglo a la normativa vigente de la UE en materia de DOP/IGP (véase la doctrina al respecto en la sentencia de 8/9/2009, C-478/07, «BUD», aplicada por la Oficina por analogía a las DOP/IGP de vinos y bebidas espirituosas). Tales acuerdos son redundantes y carecen de efecto legal.
En lo que atañe a los acuerdos internacionales suscritos exclusivamente por los Estados miembros con terceros países (en particular, el Arreglo de Lisboa relativo a la Protección de las Denominaciones de Origen y su Registro Internacional), y a efectos únicamente del examen de los motivos de denegación absolutos, la UE no es una parte contratante de tales acuerdos, y estos no imponen obligación alguna a la UE (véase, por analogía, la sentencia de 14/10/1980, 812/79, apartado 9).
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2.10 Artículo 7, apartado 1, letra k), del RMC
2.10.1 Introducción
El artículo 7, apartado 1, letra k), del RMC se aplica a las MC en conflicto con denominaciones de origen o indicaciones geográficas protegidas (DOP/IGP) de productos agrícolas y alimenticios registrados a escala de la UE.
Más en concreto, establece la denegación de las MC que incluyan o es tén compuestas por una DOP/IGP de productos agrícolas o alimenticios registrada de conformidad con el Reglamento (UE) nº 1151/20125, siempre que la situación corresponda a una de las contempladas en dicho Reglamento.
De acuerdo con el Reglamento (UE) nº 1151/2012, las DOP/IGP amparan productos en los que existe un vínculo intrínseco entre sus características, y su origen geográfico.
Más en concreto, se entenderá por:
«Denominación de origen» un nombre que identifica un producto:
1. originario de un lugar determinado, una región o, excepcionalmente, un país; 2. cuya calidad y características se deben fundamental o exclusivamente a un
medio geográfico particular, con los factores naturales y humanos inherentes a él;
3. cuyas fases de producción tengan lugar en su totalidad en la zona geográfica definida.
«Indicación geográfica» un nombre que identifica un producto:
1. originario de un lugar determinado, una región o un país; 2. que posea una cualidad determinada, una reputación u otra característica que
pueda atribuirse esencialmente a su origen geográfico; 3. de cuyas fases de producción, una al menos tenga lugar en la zona geográfica
definida.
DOP es el término utilizado para describir alimentos que se producen, transforman y preparan en una zona geográfica determinada, utilizando conocimientos técnicos reconocidos. Una IGP indica un vínculo con la zona en al menos una de las fases de la producción, transformación o preparación. Por tanto, las DOP se caracterizan por una mayor vinculación con la zona de que se trate.
No obstante, esta distinción no afecta al ámbito de protección, que es el mismo para las DOP y las IGP. En otras palabras, el artículo 7, apartado 1, letra k), del RMC se aplica indistintamente a todas las designaciones que contempla el Reglamento (UE) nº 1151/2012, independientemente de que se encuentren registradas como DOP o IGP.
5 Reglamento (UE) nº 1151/2012 del Parlamento Europeo y del Consejo, de 21 de noviembre de 2012, sobre los regímenes de calidad de los productos agrícolas y alimenticios. Sustituye y deroga al Reglamento (CE) nº 510/2006.
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La protección se otorga a las DOP/IGP para garantizar su uso leal y evitar prácticas que puedan inducir a error a los consumidores (véase el considerando 29 del Reglamento (UE) nº 1151/2012).
En este sentido, debe subrayarse además que los conceptos de DOP e IGP difieren de la «indicación de procedencia geográfica simple». En esta última, no existe un vínculo directo entre una calidad específica, una reputación u otra característica del producto y su origen geográfico concreto, lo que determina que no esté comprendido en el ámbito del artículo 5, apartado 2, del Reglamento (UE) nº 1151/2012 (sentencia de 7/11/2000, C- 312/98, «Haus Cramer», apartados 43 y 44). Por ejemplo, «Queso Manchego» es una DOP de queso, puesto que designa un producto con características particulares que se atienen a la definición de una DOP. Sin embargo, «Queso de Alicante» (una «indicación geográfica simple») no puede aspirar a la obtención de una DOP/IGP, puesto que no reúne tales características ni cumple dichos requisitos.
Con arreglo al artículo 14, apartado 1, del Reglamento (UE) nº 1151/2012,
«cuando una denominación de origen o una indicación geográfica esté registrada en virtud del presente Reglamento, el registro de una marca cuyo uso infrinja el artículo 13, apartado 1, y que se refiera a un producto del mismo tipo que la denominación de origen o la indicación geográfica será denegado si la solicitud de registro de la marca se presenta con posterioridad a la fecha de presentación a la Comisión de la solicitud de registro de la denominación de origen o la indicación geográfica.»
El artículo 13, apartado 1, del Reglamento (UE) nº 1151/2012 establece las situaciones que infringen los derechos derivados de una DOP/IGP: (i) todo uso comercial directo o indirecto de la DOP o la IGP; (ii) todo uso indebido, imitación o evocación; (iii) otras prácticas que puedan inducir a error.
Tres condiciones acumulativas son necesarias para que el artículo 7, apartado 1, letra k), del RMC sea aplicable:
• la DOP/IGP en cuestión debe registrarse a escala de la UE con arreglo al procedimiento previsto en el Reglamento nº 1151/2012 (véase más adelante el apartado 2.10.2.1);
• el uso de la MC que consista o contenga una DOP/IGP de productos agrarios o alimenticios debe constituir una de las situaciones previstas en el artículo 13, apartado 1, del Reglamento (UE) nº 1151/2012 (véase más adelante el apartado 2.10.2.2);
• la solicitud de MC debe incluir productos que sean idénticos o «comparables» a aquéllos que cubre la DOP/IGP (véase más adelante el apartado 2.10.2.3).
Respecto a estas tres condiciones, se hace referencia más adelante a: (i) qué DOP/IGP pueden dar lugar a una objeción con arreglo al artículo 7, apartado 1, letra k), del RMC; (ii) en qué circunstancias una MC contiene o consiste en una DOP/IGP de manera que le sea aplicable lo dispuesto en el artículo 13, apartado 1, del Reglamento (UE) nº 1151/2012; (iii) los productos de la solicitud de MC afectados por la protección otorgada a la DOP/IGP. Por último, también se hace referencia más adelante al modo en que pueden limitarse los productos para eludir una objeción.
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2.10.2 La aplicación del artículo 7, apartado 1, letra k), del RMC
2.10.2.1 DOP/IGP pertinentes
El artículo 7, apartado 1, letra k), del RMC se aplica en los casos en que las DOP/IGP (ya sean de un Estado miembro de la UE o de un tercer país) se han registrado con arreglo al procedimiento previsto en el Reglamento (UE) nº 1151/2012.
Para las DOP/IGP de terceros países que disfrutan de protección en la Unión Europa en virtud de acuerdos internacionales suscritos por dichos países y la Unión, véase más adelante el apartado 2.10.3.2.
Puede obtenerse información relevante acerca de las DOP/IGP registradas conforme al Reglamento (UE) nº 1151/2012 en la base de datos «DOOR», mantenida por la Comisión, a la que es posible acceder en la dirección de Internet http://ec.europa.eu/agriculture/quality/door/list.html.
La protección se otorga únicamente al nombre de la DOP/IGP registrado (véase el artículo 13, apartado 1, del Reglamento (UE) nº 1151/2012) y no se extiende ipso iure a los nombres de subregiones, subdenominaciones, áreas administrativas locales ni localidades del territorio contemplado por la DOP/IGP en cuestión. En este sentido, debe distinguirse entre la doctrina del Tribunal General en la sentencia de 11/5/2010, T- 237/08, «CUVÉE PALOMAR», y el marco jurídico actual. En dicha sentencia se alude a un sistema de competencias de los Estados miembros para la designación de indicaciones geográficas de vinos que existían con arreglo al anterior Reglamento (CE) nº 1493/1999, pero que ya no se encuentran en vigor.
Por otra parte, los acuerdos comerciales suscritos por la UE con terceros países suelen incluir como anexo una lista de las DOP/IGP registradas a escala de la UE que han de recibir protección asimismo en esos países (véase la sentencia de 11/5/2010, T- 237/08, «CUVÉE PALOMAR», apartados 104 a 108, y la resolución de 19/6/2013, R 1546/2011-4 – «FONT DE LA FIGUERA»). No obstante, los examinadores no deben utilizar tales listas como fuente de información acerca de las DOP/IGP de la UE, sino que han de consultar la base de datos citada con anterioridad. En primer lugar, las listas de DOP/IGP de la UE que deben protegerse en el extranjero pueden variar de un acuerdo a otro, dependiendo de las particularidades de las negociaciones. En segundo lugar, los anexos a tales acuerdos suelen modificarse y actualizarse mediante «canjes de notas».
El artículo 7, apartado 1, letra k), del RMC se aplica únicamente a las DOP/IGP solicitadas antes de la MC correspondiente y que se encuentran registradas en las fechas en que se examina la MC. Las fechas pertinentes para establecer la prioridad de una marca y de una DOP/IGP son la de solicitud de la MC (o la denominada prioridad del Convenio de París, si se reivindica), y la fecha de solicitud de protección de una DOP/IGP a la Comisión, respectivamente.
Por tanto, no se formulará ninguna objeción conforme al artículo 7, apartado 1, letra k), del RMC cuando la DOP/IGP se haya solicitado después de la fecha de presentación (o la fecha de prioridad, en su caso) de la solicitud de la MC. Los datos pormenorizados de la fecha de solicitud de la DOP/IGP se encuentran disponibles en la base de datos «DOOR».
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No obstante lo anterior, y atendiendo al hecho de que la amplia mayoría de solicitudes de DOP/IGP normalmente acaban siendo registradas, se formulará una objeción cuando la DOP/IGP se haya solicitado antes de la fecha de presentación (o la fecha de prioridad, en su caso) de la solicitud de MC, pero no se haya registrado aún en las fechas de examen de la solicitud de la MC. Sin embargo, si el solicitante de la MC alega que la DOP/IGP no ha sido aún registrada, el procedimiento se suspenderá a la espera del resultado final del proceso de registro de la DOP/IGP.
2.10.2.2 Situaciones contempladas en el artículo 13, apartado 1, del Reglamento (UE) nº 1151/2012
El artículo 7, apartado 1, letra k), del RMC se aplica (siempre que las demás condiciones también sean aplicables) en las situaciones siguientes:
1. la MC consiste únicamente en una DOP/IGP completa («uso directo»); 2. la MC contiene una DOP/IGP completa, además de otros elementos verbales o
figurativos («uso directo o indirecto»); 3. la MC contiene o consiste en una imitación o una evocación de una DOP/IGP; 4. otras indicaciones o prácticas que puedan inducir a error; 5. la reputación de las DOP/IGP.
La MC consiste únicamente en una DOP/IGP completa («uso directo»).
Esta situación comprende el «uso directo» de una DOP/IGP como MC, es decir, se da cuando la marca consiste únicamente en el nombre de la DOP/IGP.
Ejemplos
DOP/IGP Marca comunitaria
DRESDNER CHRISTSTOLLEN (DE/PGI/005/0704)
DRESDNER CHRISTSTOLLEN (MC colectiva nº 262 949)
PROSCIUTTO DI PARMA (IT/PDO/0117/0067)
PROSCIUTTO DI PARMA (MC colectiva nº 1 116 458)
Si la marca consiste únicamente en la DOP/IGP, la MC se encuentra sujeta asimismo a lo dispuesto en el artículo 7, apartado 1, letra c), del RMC, puesto que se la considera descriptiva del origen geográfico de los productos en cuestión. Esto significa que la objeción del examinador dará lugar simultáneamente a motivos de denegación absolutos con arreglo tanto al artículo 7, apartado 1, letra k), del RMC como a la letra c) de ese mismo artículo. Existe una excepción al respecto, con arreglo al artículo 66, apartado 2 del RMC, cuando la MC sea una marca colectiva y la normativa que regule su uso incluya los elementos específicos previstos en el artículo 67, apartado 2 (respecto a la situación contraria, cuando la marca se hubiera solicitado como marca individual, véase la resolución de 7/3/2006, R 1073/2005-1, «TEQUILA», apartado 15).
Mientras que la limitación de los productos pertinentes (para cumplir el pliego de condiciones de la DOP/IGP) suele constituir un medio para eludir la objeción con arreglo
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al artículo 7, apartado 1, letra k), del RMC (véase más adelante el apartado 2.10.2.3), tal limitación es irrelevante para el artículo 7, apartado 1, letra c), del RMC.
Por ejemplo, una MC que consista en la expresión «PROSCIUTTO DI PARMA» para carne será objetada simultáneamente con arreglo al artículo 7, apartado 1, letras c) y k), del RMC: consiste únicamente en la DOP «Prosciutto di Parma», que es objeto de protección para productos cárnicos, en concreto, un tipo específico de jamón y, por tanto, es descriptiva. Si los productos se limitan posteriormente al jamón que cumple el pliego de condiciones de la DOP «Prosciutto di Parma», dejará de aplicarse la objeción con arreglo al artículo 7, apartado 1, letra k), del RMC, pero la marca sigue siendo descriptiva, y susceptible de objeción con arreglo al artículo 7, apartado 1, letra c) del RMC, salvo que se haya solicitado como marca colectiva conforme con el artículo 67, apartado 2, del RMC.
La MC contiene una DOP/IGP completa, además de otros elementos verbales o figurativos («uso directo o indirecto»).
Esta situación comprende asimismo el «uso directo» de una DOP/IGP en una MC mediante la reproducción del nombre de la DOP/IGP, junto con otros elementos.
Se considera que las MC siguientes están sujetas a lo dispuesto en el artículo 7, apartado 1, letra k), del RMC, puesto que contienen la denominación completa de una DOP/IGP:
DOP/IGP Marca comunitaria
PROSCIUTTO DI PARMA
(IT/PDO/0117/0067)
CONSORZIO DEL PROSCIUTTO DI PARMA
(MC nº 6 380 141)
DRESDNER CHRISTSTOLLEN
(DE/PGI/005/0704)
(MC nº 5 966 668)
PARMIGIANO REGGIANO
(IT/PDO/0117/0016)
(MC nº 6 380 141)
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De conformidad con el artículo 7, apartado 1, letra k), del RMC, es irrelevante que los otros elementos verbales o figurativos doten o no a la marca de un carácter distintivo. El signo puede ser aceptable en su conjunto con arreglo al artículo 7, apartado 1, letras b) y c), del RMC, y aun así, ser susceptible de objeción (como en los casos anteriores) de acuerdo con el artículo 7, apartado 1, letra k), del RMC.
Existe un «uso indirecto» de una DOP/IGP, por ejemplo, cuando ésta figura en una marca compleja (como la representación de una etiqueta) en caracteres de pequeño tamaño, a modo de información acerca del origen o el tipo de producto, o como parte de la dirección del productor. En tales casos, la marca será susceptible de objeción, independientemente de la posición o el tamaño de la DOP/IGP en el conjunto de la marca, siempre que la DOP/IGP resulte visible.
DOP/IGP Marca comunitaria
WELSH LAMB
(UK/PGI/0005/0081)
(MC nº 11 927 472)
DOP/IGP Marca comunitaria
WELSH BEEF
(UK/PGI/0005/0057)
(MC nº 10 513 729)
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DOP/IGP Marca comunitaria
QUESO MANCHEGO
(ES/PDO/0117/0087)
(MC nº 5 582 267)
La MC contiene o consiste en una imitación o una evocación de una DOP/IGP.
Ni el RMC ni el Reglamento (UE) nº 1151/2012 define el significado de «imitación» o «evocación». En gran medida, se trata de conceptos estrechamente relacionados.
De acuerdo con el Tribunal, «el concepto de evocación […] abarca un supuesto en el que el término utilizado para designar un producto incorpora parte de una denominación protegida, de modo que, al ver el nombre del producto, el consumidor piensa, como imagen de referencia, en la mercancía que se beneficia de la denominación» (sentencia de 4/3/1999, C-87/97, «Cambozola», apartado 25, y sentencia de 26/2/2008, C-132/05, apartado 44).
Lo anterior significa que puede haber evocación cuando la MC reproduce parte de una DOP/IGP, como (uno de sus) elementos denominativos geográficamente significativos (en el sentido de que no se trata de un elemento genérico), o incluso parte de un término, como una raíz o un sufijo característicos (más adelante figuran algunos ejemplos).
Por otra parte, el artículo 13, apartado 1, letra b), del Reglamento (UE) nº 1151/2012 protege las DOP/IGP contra cualquier tipo de uso indebido, imitación o evocación, incluso si se indica el verdadero origen de los productos o servicios o si el nombre protegido se traduce o se acompaña de expresiones tales como «estilo», «tipo», «método», «producido como en» «imitación» o expresiones similares (negrita añadida), aun cuando no se induzca a error a los consumidores.
De acuerdo con el Abogado General (conclusiones de 17/12/1998, C-87/97, «Cambozola», apartado 33), «el término “evocación” es objetivo, por lo que no es necesario demostrar que el titular de la marca pretendía evocar el nombre protegido».
En este sentido, y a efectos del artículo 7, apartado 1, letra k), del RMC, la Oficina evaluará de un modo igualmente objetivo las situaciones antes descritas, independientemente de la intención real del solicitante de la MC.
Asimismo, la Oficina considera los términos «imitación» y «evocación» como dos corolarios de un concepto esencialmente idéntico. La marca «imita» (remeda, reproduce elementos de, etc.), con el resultado de que se «evocan» (se traen a la mente) los productos designados por la DOP/IGP.
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A la luz de lo anterior, existe evocación o imitación de una DOP/IGP cuando:
(a) la MC incorpora la parte geográficamente significativa (en el sentido de que no es el elemento genérico) de la DOP/IGP;
(b) la MC contiene un adjetivo o sustantivo equivalente que indica el mismo origen geográfico;
(c) la DOP/IGP se traduce; (d) la MC incluye una expresión «deslocalizadora» además de la DOP/IGP o su
evocación.
La MC incorpora parte de la DOP/IGP.
De acuerdo con el Tribunal (sentencia de 4/3/1999, C-87/97, «Cambozola», y sentencia de 26/2/2008, C-132/05, citadas anteriormente), la MC debe suscitar en la mente del consumidor la imagen del producto que se beneficia de la denominación.
El Tribunal ha establecido además que «puede haber evocación de una denominación protegida aun cuando no haya riesgo alguno de confusión entre los productos de que se trata» (sentencia de 4/3/1999, C-87/97, «Cambozola», apartado 26).
Es importante señalar que la evocación no se evalúa del mismo modo que el riesgo de confusión (véanse las conclusiones del Abogado General de 17/12/1998, C-87/97, «Cambozola», apartado 37). Debe establecerse un vínculo con el producto cuya denominación se protege. Por tanto, la existencia o no de evocación no se analizará con arreglo a los principios formulados por el TJUE en la sentencia de 11/11/1997, C- 251/95, «SABEL»».
Como se ha señalado anteriormente, se entiende que la evocación engloba no sólo las situaciones en las que la MC incorpora (uno de) los términos geográficamente significativos (frente a los elementos genéricos) de una DOP/IGP, sino también aquéllas en las que la MC reproduce otras partes de la DOP/IGP, como una raíz o un sufijo característicos.
DOP/IGP Marca Aclaración
CHIANTI CLASSICO
(IT/PDO/0005/0108)
(MC nº 9 567 851)
El término «chianti» evoca la DOP «Chianti Classico».
(R 1474/2011-2, «AZIENDA OLEARIA CHIANTI», apartados 14-15)
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DOP/IGP Marca Aclaración
GORGONZOLA
(IT/PDO/0017/0010) CAMBOZOLA
«existe evocación de una denominación protegida cuando el término utilizado para designarlo termina en dos sílabas iguales a las de esta denominación y contiene el mismo número de sílabas que ésta, de lo que resulta una semejanza fonética y óptica manifiesta entre ambos términos.»
(C-87/97, apartado 27)
NÜRNBERGER BRATWÜRSTE/NÜRNBERGER
ROSTBRATWÜRSTE
(DE/PGI/0005/0184)
NUERNBERGA
(MC nº 9 691 577)
«debido a la equivalencia fonética, NUERNBERGA se interpreta en el sentido de la indicación geográfica Nürnberger».
(R 1331/2011-4, «NUERNBERGA», apartado 12)
Si una DOP/IGP contiene o evoca el nombre de un producto que se considera genérico, la protección no se extiende al elemento genérico (véase el artículo 13, apartado 1, del Reglamento (UE) nº 1151/2012, in fine y la sentencia de 12/9/2007, T- 291/03, «GRANA BIRAGHI», apartados 58 y 60). Por ejemplo, en las IGP «Maçã de Alcobaça» y «Jambon d'Ardenne», es un hecho notorio que los términos «maçã» (manzana en portugués) y «jambon» (jamón en francés) son genéricos y, por tanto, no merecen protección. En consecuencia, no procede objeción alguna respecto al mero hecho de que una MC contenga términos genéricos que formen parte de una DOP/IGP.
En particular, cabe mencionar asimismo que los términos «camembert» y « brie» son genéricos (véase la sentencia de 26/2/2008, C-132/05, apartado 36). Otros ejemplos son los de «cheddar» y «gouda» (véase el Reglamento (CE) nº 1107/96, notas al pie a las DOP «West Country farmhouse Cheddar» y «Noord-Hollandse Gouda»). Por tanto, no se formuló ninguna objeción en el siguiente caso:
DOP/IGP Marca comunitaria
(ninguna, porque «camembert» no es una indicación geográfica, sino un término genérico)
(MC nº 7 389 158)
Cuando la naturaleza genérica de un elemento en una DOP/IGP pueda establecerse mediante definiciones de diccionario normalizadas, es determinante la perspectiva del público en el país de origen de la DOP/IGP. Así, en los ejemplos citados anteriormente, basta con que los términos «maçã» y «jambon» sean genéricos para los consumidores portugueses y franceses, respectivamente, para que se concluya su
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carácter genérico, independientemente de que tales términos puedan ser entendidos o no por otras partes del público en la Unión Europea.
Por el contrario, cuando no se encuentre una definición en un diccionario normalizado y reconocido, la naturaleza genérica del término de que se trate deberá evaluarse con arreglo a los criterios formulados por el Tribunal (véase la sentencia de 26/2/2008, C- 132/05, y la sentencia de 12/9/2007, T-291/03, «GRANA BIRAGHI»), tales como la legislación nacional y de la UE pertinente, el modo en que el público percibe el término, y las circunstancias relativas a la comercialización del producto en cuestión.
Por último, en algunos casos, una MC podrá constituir un uso directo o indirecto o una evocación de más de una DOP/IGP al mismo tiempo. Tal situación se dará probablemente cuando la MC contenga un elemento (que no sea genérico) que figure en más de una DOP/IGP.
DOP/IGP Marca comunitaria Aclaración
Amarene Brusche di Modena
(MC nº 11 338 779)
La MC contiene el elemento «MODENA», que evoca todas las DOP/IGP que incluyen «MODENA».
Aceto Balsamico di Modena
Aceto balsamico tradizionale di Modena
Cotechino Modena
Zampone Modena
Prosciutto di Modena
Siempre que la MC abarque los productos pertinentes, se formulará objeción respecto a la totalidad de las DOP/IGP de que se trate. No obstante, el examinador indicará que la objeción es insalvable, porque limitar los productos a aquéllos que cumplen con una o la totalidad de las DOP/IGP daría lugar necesariamente a otra objeción con arreglo al artículo 7, apartado 1, letra k), del RMC, puesto que tal limitación identificaría los productos, de manera inevitable y confusa, con un origen geográfico distinto al de la DOP/IGP en cuestión.
Adjetivos/sustantivos equivalentes
El uso de un adjetivo/sustantivo equivalente para indicar el mismo origen constituye una evocación de una DOP/IGP:
DOP/IGP Marca comunitaria(ejemplos inventados) Aclaración
JAGNIĘCINA PODHALAŃSKA
(PL/PGI/0005/00837) JAGNIĘCINA Z PODHALA Adjetivo en la IGP → sustantivo enla MC.
MEL DO ALENTEJO
(PT/PDO/0017/0252) MEL ALENTEJANA Nombre en la DOP → adjetivo en laMC.
SCOTTISH WILD SALMON
(GB/PGI/0005/00863)
WILD SALMON FROM SCOTLAND
Adjetivo en la IGP → sustantivo en la MC.
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DOP/IGP traducidas
Del mismo modo, existe evocación o imitación de la DOP/IGP cuando la MC contiene o consiste en una traducción de la totalidad o de una parte de la DOP/IGP en cualquiera de las lenguas de la UE.
DOP/IGP Marca comunitaria (ejemploinventado) Aclaración
PÂTES D'ALSACE
(FR/PGI/0005/0324) ALSATIAN PASTA
Se considerará que una MC que contenga la expresión «Alsatian Pasta» evoca la IGP «Pâtes d’Alsace».
Las marcas que consistan en estos términos deberán denegarse con arreglo al artículo 7, apartado 1, letras k) y c), del RMC, y no únicamente en virtud de la letra c) de dicho artículo y apartado.
Expresiones utilizadas como «deslocalizadores»
De conformidad con el artículo 13, apartado 1, letra b), del Reglamento (CE) nº 1151/2012, las DOP/IGP se protegen «incluso si se indica el verdadero origen de los productos o servicios o si el nombre protegido […] se acompaña de expresiones tales como “estilo”, “tipo”, “método”, “producido como en”, “imitación” o expresiones similares».
Por tanto, el hecho de que la DOP/IGP reproducida o evocada en la MC se acompañe de tales expresiones no incide en la aplicación del artículo 7, apartado 1, letra k), del RMC. En otras palabras, aun cuando se informe al público con dichas expresiones del origen real del producto, seguirá formulándose objeción con arreglo al artículo 7, apartado 1, letra k), del RMC. En cualquier caso, la marca podrá inducir a error conforme al artículo 7, apartado 1, letra g), del RMC, puesto que existirá una contradicción entre los productos (limitados a la DOP/IGP específica), y el mensaje transmitido por la marca (que las mercancías no son productos «auténticos» de la DOP/IGP), lo que dará lugar necesariamente a una objeción ulterior con arreglo a dicho artículo.
DOP/IGP Marca comunitaria(ejemplos inventados) Aclaración
FETA
(EL/PDO/0017/0427)
GREEK STYLE PLAIN FETA
ARABIAN FETA
Se considerará que una MC que contenga expresiones como «Greek Style Plain Feta» o «Arabian Feta» evoca la DOP «Feta», aun cuando transmita la idea de que el producto en cuestión no es un «auténtico» queso de la DOP «Feta».
El lugar donde se encuentre el domicilio legal del solicitante es irrelevante para la aplicación del artículo 7, apartado 1, letra k), del RMC. El artículo 12, apartado 1, del Reglamento (UE) nº 1151/2012 establece que las denominaciones de origen protegidas y las indicaciones geográficas protegidas podrán ser utilizadas por cualquier operador que comercialice productos conformes con el pliego de condiciones correspondiente. En este sentido, siempre que los productos cumplan el pliego de condiciones de la DOP/IGP en cuestión (lo que se garantiza limitándolos debidamente), el lugar del domicilio social del solicitante indicado en la solicitud de MC es
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irrelevante. Por ejemplo, una empresa con domicilio social en Lituania puede poseer una fábrica situada en España que elabore productos conformes con la IGP «Chorizo de Cantimpalos».
Otras indicaciones o prácticas que pueden inducir a error
El artículo 13, apartado 1, letras c) y d), del Reglamento (UE) nº 1151/2012 protege las DOP/IGP frente a diversas indicaciones falsas o que puedan inducir a error acerca de la procedencia, el origen, la naturaleza o las características esenciales del producto de que se trate.
Aunque depende en gran medida de las particularidades de cada caso, que, por tanto, deberán evaluarse de manera individual, una MC puede considerarse engañosa cuando, por ejemplo, contenga elementos figurativos que suelan asociarse con la zona geográfica en cuestión (como monumentos históricos sobradamente conocidos), o cuando reproduzca una forma específica del producto.
Lo expuesto debe interpretarse de modo restrictivo: se refiere únicamente a las MC que contienen una imagen singular y reconocida que se toma de manera habitual como símbolo del lugar de origen específico de los productos objeto de la DOP/IGP, o una forma singular del producto que se describe en el pliego de condiciones de la DOP/IGP.
DOP/IGP Marca comunitaria(ejemplos inventados) Aclaración
MOULES DE BOUCHOT DE LA BAIE DU MONT-SAINT-
MICHEL
(FR/PDO/0005/0547)
Una MC que contiene una imagen de la Abadía del
Mont-Saint-Michel.
La imagen de la Abadía del Mont-Saint- Michel es un emblema reconocido de la ciudad y la isla de Mont Saint Michel en Normandía. Al uso de esta imagen para comercializar marisco ajeno al que es objeto de la DOP «Moules de Bouchot de la Baie du Mont-Saint-Michel» le sería aplicable el artículo 13, apartado 1, letras c) y d), del Reglamento (UE) nº 1151/2012.
QUESO TETILLA
(ES/PDO/0017/0088)
Una MC que contiene la imagen de un queso de forma
cónica.
La forma singular del producto se describe en el pliego de condiciones de la DOP «Queso Tetilla».
Dada la dificultad inherente de identificar elementos figurativos evocadores, sobre todo en los casos menos obvios, la Oficina se basará fundamentalmente en tales situaciones en las objeciones formuladas por terceros.
La reputación de las DOP/IGP
Con arreglo al artículo 13, apartado 1, letra a), del Reglamento (UE) nº 1151/2012, los nombres registrados están protegidos contra el uso que aproveche la reputación del nombre protegido. Tal protección se extiende incluso a productos diferentes (véase la sentencia de 12/6/2007, asuntos acumulados T-53/04 a T-56/04, T-58/04 y T-59/04, «BUDWEISER», apartado 176).
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No obstante, el ámbito de la protección debe interpretarse con arreglo al mandato contenido en el artículo 14 del mismo Reglamento, que limita la denegación de marcas a los productos «del mismo tipo».
Por tanto, la Oficina considera que, en el contexto del examen de los motivos de denegación absolutos, la protección de una DOP/IGP se limita a los productos idénticos y comparables.
No obstante, el ámbito de protección extendido de una DOP/IGP con renombre puede invocarse en el contexto del artículo 8, apartado 4, del RMC (véanse las Directrices, Parte C, Oposición, Sección 4, Derechos con arreglo al artículo 8, apartado 4, del RMC).
2.10.2.3 Productos pertinentes
Productos comparables
Las objeciones basadas en el artículo 7, apartado 1, letra k), del RMC pueden formularse únicamente respecto a los productos específicos de la solicitud de MC en cuestión, es decir, aquéllos que son idénticos o «comparables» a los cubiertos por la DOP/IGP.
Los diferentes términos utilizados en los artículos 13 y 14 del Reglamento (CE) nº 1151/2012 («productos comparables», y «productos del mismo tipo», respectivamente) son interpretados por la Oficina como sinónimos referidos al mismo concepto.
El concepto de productos comparables debe interpretarse restrictivamente y es independiente del análisis de la similitud entre productos en el Derecho de marcas. En este sentido, no han de cumplirse necesariamente los criterios expuestos en la sentencia de 29 de septiembre de 1998, C-39/97, «Canon», aunque algunos pueden resultar útiles. Por ejemplo, dado que una DOP/IGP sirve para indicar el origen geográfico y las características particulares de un producto, criterios como la naturaleza de éste o su composición son más relevantes que, por ejemplo, si los productos son o no complementarios.
En particular, el TJUE (en la sentencia de 14/7/2011, asuntos acumulados C-4/10 y C- 27/10, «BNI COGNAC», apartado 54) refirió los criterios que siguen para determinar si los productos son comparables:
• si tienen o no características objetivas comunes (como el método de elaboración, la apariencia física del producto o la utilización de las mismas materias primas);
• si, desde el punto de vista del público destinatario, corresponden o no a ocasiones de consumo en gran medida idénticas;
• si se distribuyen o no a través de las mismas redes y están sujetos a normas de comercialización similares.
Aunque en las presentes Directrices no es posible consignar todos los supuestos posibles, los que siguen son algunos ejemplos de productos comparables.
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Productos objeto de la DOP/IGP Productos comparables
Carne específica y preparados de carne específicos.
Cualquier carne y cualquier preparado de carne. (R 659/2012-5, p.14-17)
Leche Queso y otros productos lácteos.
Fruta fresca
Frutas en conserva, congeladas, secas y cocidas (gelatinas, mermeladas y compotas no son «productos comparables», pero la fruta objeto de la DOP/IGP puede ser un ingrediente comercialmente relevante; véase más abajo en «Productos utilizados como ingredientes»).
Hortalizas frescas
Hortalizas en conserva, congeladas, secas y cocidas (gelatinas y mermeladas no son «productos comparables», pero las hortalizas objeto de la DOP/IGP puede ser un ingrediente comercialmente relevante; véase más abajo en «Productos utilizados como ingredientes»).
Limitaciones de la lista de productos
Conforme al artículo 12, apartado 1, del Reglamento (UE) nº 1151/2012, «las denominaciones de origen protegidas y las indicaciones geográficas protegidas podrán ser utilizadas por cualquier operador que comercialice productos conformes al pliego de condiciones correspondiente».
Las objeciones formuladas con arreglo al artículo 7, apartado 1, letra k), del RMC podrán eludirse si se limitan los productos pertinentes para cumplir el pliego de condiciones de la DOP/IGP en cuestión.
La limitación de los productos puede ser una tarea compleja, y es posible que dependa en gran medida de un examen caso por caso.
• Los productos del mismo tipo que los amparados por la DOP/IGP deben limitarse para cumplir el pliego de condiciones de la DOP/IGP en cuestión. El texto correcto será como sigue: «[nombre del producto] conforme con el pliego de condiciones de la [DOP/IGP “X”]». No se propondrá ni permitirá otra redacción. Limitaciones como «[nombre del producto] con la [DOP/IGP “X”]» o «[nombre del producto] originario de [nombre de un lugar]» no son aceptables.
DOP/IGP en la MC Lista de productos aceptable
WELSH BEEF
(UK/PGI/0005/0057)
Carne de vacuno conforme con el pliego de condiciones de la IGP «Welsh Beef».
La categoría de productos que incluye los amparados por la DOP/IGP en cuestión puede consultarse en la base de datos «DOOR». El producto exacto protegido puede encontrarse en el documento de solicitud adjunto a la publicación en el Diario Oficial, al que puede accederse asimismo a través de «DOOR».
• La categoría de productos que incluye los amparados por la DOP/IGP debe limitarse para designar exactamente los «productos» objeto de la DOP/IGP que cumplen el pliego de condiciones de ésta.
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DOP/IGP en la MC Especificación original(no aceptable) Lista de productos
aceptable Aclaración
WELSH BEEF
(UK/PGI/0005/0057) Carne
Carne de vacuno conforme con el pliego de condiciones de la IGP «Welsh Beef».
«Carne» incluye productos (p. ej., la carne de cerdo) que no pueden cumplir el pliego de condiciones de una DOP/IGP concreta que cubra el producto específico «carne de vacuno».
POMME DU LIMOUSIN
(FR/PDO/0005/0442 Frutas
Manzanas conformes con el pliego de
condiciones de la DOP «Pomme du
Limousin».
La categoría «frutas» incluye productos como las peras o los melocotones que no pueden cumplir el pliego de condiciones de una DOP que cubra exclusivamente las manzanas.
• Los productos comparables se limitan a aquellos productos que, dentro de la categoría de productos comparables, son objeto de la DOP/IGP:
DOP/IGP en la MC Especificación original(no aceptable) Lista de productos
aceptable Aclaración
POMME DU LIMOUSIN
(FR/PDO/0005/0442
Frutas en conserva, congeladas, secas y
cocidas.
Manzanas en conserva, congeladas,
secas y cocidas conformes con el
pliego de condiciones de la DOP «Pomme du
Limousin».
«Frutas en conserva, congeladas, secas y cocidas» incluye productos elaborados con otras frutas que no pueden cumplir el pliego de condiciones de una DOP que cubre exclusivamente manzanas. Téngase en cuenta asimismo que la limitación no debe ser para «manzanas».
Puede haber casos en los que la objeción no pueda eludirse mediante una limitación, como cuando los productos solicitados, aunque «comparables», no incluyan el producto objeto de la DOP/IGP (p. ej., cuando la DOP comprenda el «queso», y los productos solicitados sean «leche»).
• Productos utilizados como ingredientes: si los productos objeto de la DOP/IGP pueden utilizarse como ingredientes comercialmente relevantes (en el sentido de que pueden determinar la elección del producto principal) de cualquiera de los productos incluidos en la solicitud de MC, se requerirá una limitación. Tal es el caso porque el artículo 13, apartado 1, letras a) y b), del Reglamento (UE) nº 1151/2012 extiende expresamente el ámbito de protección de una DOP/IGP registrada para un determinado producto «cuando esos productos se utilicen como ingredientes».
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DOP/IGP en la MC Especificación original(no aceptable) Lista de productos
aceptable Aclaración
POMME DU LIMOUSIN
(FR/PDO/0005/0442) Mermeladas y compotas
Mermeladas y compotas de manzana
conformes con el pliego de condiciones
de la DOP «Pomme du Limousin».
La fruta es el ingrediente principal de mermeladas y compotas.
PROSCIUTTO DI PARMA
(IT/PDO/0117/0067)
Pizzas
Pizzas con jamón conforme con el pliego de condiciones de la DOP «Prosciutto di
Parma».
Se trata del ingrediente principal de una pizza, y el que determina la elección del consumidor.
No es necesaria una limitación si los productos amparados por la DOP/IGP se utilizan como ingrediente secundario, no relevante comercialmente de los productos reivindicados.
DOP/IGP en la MC Especificación original Lista de productosaceptable Aclaración
ACEITE DE LA ALCARRIA
(ES/PDO/0005/0562)
Pasteles Pasteles
No es necesario limitar los productos por el mero hecho de que se utilice tal aceite en su elaboración. El «aceite» es un ingrediente secundario que no es relevante comercialmente.
2.10.3 DOP/IGP no protegidas conforme al Reglamento (UE) nº 1151/2012
2.10.3.1 DOP/IGP protegidas a escala nacional en un Estado miembro de la UE
El Tribunal de Justicia ha establecido (sentencia de 8/9/2009, C-478/07, «BUD») que el sistema de protección de la UE para las DOP/IGP de productos agrarios y alimenticios previsto en el Reglamento (CE) nº 510/2006 [entonces vigente] es «de carácter exhaustivo».
El artículo 9 del Reglamento (UE) nº 1151/2012 establece que
«Los Estados miembros podrán conceder, solo de forma transitoria y a escala nacional, protección a un nombre de conformidad con el presente Reglamento con efectos desde la fecha en que se haya presentado la solicitud de ese nombre a la Comisión. Tal protección nacional cesará a partir de la fecha en que se tome una decisión de registro en virtud del presente Reglamento o en que se retire la solicitud.» Las medidas que adopte un Estado miembro «producirán efectos a escala nacional y no tendrán incidencia alguna en el comercio interior de la Unión ni en el comercio internacional.»
Esta disposición es conforme con el considerando 24 del mismo Reglamento, en el que se declara que:
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«Para poder ser protegidas en el territorio de los Estados miembros, las denominaciones de origen y las indicaciones geográficas solo tienen que registrarse a e scala de la Unión. Con efectos a partir de la fecha de solicitud de tal registro a escala de la Unión, los Estados miembros deben poder conceder a nivel nacional una protección transitoria que no afecte al comercio interior de la Unión ni al comercio internacional.»
Por otra parte, debe hacerse referencia asimismo al Reglamento (CEE) nº 2081/92 del Consejo, relativo a la protección de las indicaciones geográficas y de las denominaciones de origen de los productos agrícolas y alimenticios. Tal Reglamento (que precedió y fue derogado por el Reglamento (CE) nº 510/2006) establece en su artículo 17, apartado 1, que los Estados miembros «comunicarán a la Comisión cuáles, entre sus denominaciones legalmente protegidas, […] desean que se registren» en virtud de dicho Reglamento. En el apartado 3 se añade que los Estados miembros podrán «mantener la protección nacional de las denominaciones comunicadas con arreglo al apartado 1 hasta la fecha en que se tome una decisión sobre su registro» (véase a este respecto la sentencia de 4/3/1999, C-87/97, «Cambozola», apartado 18).
Como consecuencia, la anterior protección a escala nacional de indicaciones geográficas de productos agrícolas y alimenticios se suspendió una vez que tales indicaciones se registraron a escala de la UE.
Las indicaciones geográficas para estos tipos de productos que disfrutaron de protección en el pasado en virtud de la legislación nacional no son objeto del ámbito de aplicación del artículo 7, apartado 1, letra k), del RMC. En este sentido, no constituyen como tales, y por ese motivo únicamente, un motivo de denegación conforme al artículo 7, apartado 1, letra k), del RMC, salvo que también hayan estado registradas a escala de la UE. Por tanto, si, por ejemplo, un tercero argumenta que una MC contiene o consiste en una indicación geográfica de productos agrícolas y alimenticios que estuvo registrada en el pasado a escala nacional en un Estado miembro de la UE, el examinador comprobará si tal indicación también estuvo registrada a escala de la UE como DOP/IGP. Si no estuvo registrada a escala de la UE, se considerará que las observaciones del tercero no plantean serias dudas en lo que atañe al artículo 7, apartado 1, letra k), del RMC.
2.10.3.2 DOP/IGP de terceros países
Las situaciones que siguen aluden a las DOP/IGP de terceros países que no se encuentran registradas simultáneamente a escala de la UE.
La indicación geográfica está protegida únicamente en el país de origen con arreglo a la legislación nacional.
El artículo 7, apartado 1, letra k), del RMC no se aplica, puesto que la indicación geográfica de terceros países no se reconoce ni protege expressis verbis conforme a la legislación de la UE. En este sentido, nótese que las disposiciones del Acuerdo sobre los ADPIC no confieren derechos a los particulares que estos puedan invocar directamente ante los tribunales en virtud del Derecho comunitario (sentencia de 14/12/2000, asuntos acumulados C-300/98 y C-392/98, apartado 44).
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En cualquier caso, cuando la MC contiene o consiste en una indicación geográfica protegida como la referida, deberá evaluarse asimismo si la MC puede considerarse o no descriptiva o susceptible de inducir a error con arreglo al artículo 7, apartado 1, letras c) y g), del RMC, de conformidad con las normas generales expuestas en las presentes Directrices. Por ejemplo, si un tercero observa que una MC consiste en la expresión «Té Murakami» (ejemplo inventado), que es una IGP con arreglo a la legislación nacional del país X, el artículo 7, apartado 1, letra k), del RMC no se aplicará por los motivos expuestos anteriormente, pero deberá examinarse si la MC será percibida como un signo descriptivo o susceptible de inducir a error por parte de las consumidores pertinentes de la UE.
La indicación geográfica está protegida conforme a un acuerdo del que la Unión Europea es parte contratante.
La UE ha suscrito con terceros países diversos acuerdos comerciales que protegen indicaciones geográficas. Estos instrumentos suelen incluir una lista de tales indicaciones, así como distintas disposiciones sobre sus conflictos con las marcas. El contenido y el grado de precisión pueden variar en cualquier caso de un acuerdo a otro. Las indicaciones geográficas de terceros países se protegen a escala de la UE después de que el acuerdo correspondiente haya entrado en vigor.
A este respecto, según reiterada jurisprudencia, una disposición de un acuerdo celebrado por la UE con terceros países debe considerarse directamente aplicable cuando, a la vista del tenor, del objeto y de la naturaleza del acuerdo, puede llegarse a la conclusión de que dicha disposición contiene una obligación clara, precisa e incondicional, que no se subordina, en su ejecución o en s us efectos, a la adopción de acto ulterior alguno (sentencia de 14/12/2000, asuntos acumulados C-300/98 y C-392/98, apartado 42).
El ámbito de protección otorgado a estas IGP por terceros países se define mediante las disposiciones sustantivas del acuerdo en cuestión. Mientras que los acuerdos de mayor antigüedad (en particular, en el ámbito de los vinos y las bebidas espirituosas) suelen contener únicamente disposiciones generales, los acuerdos comerciales de «última generación» aluden a la relación entre las marcas y las IGP en términos similares a los artículos 13 y 14 del Reglamento (UE) nº 1151/2012 (véanse, por ejemplo, los artículos 210 y 211 del «Acuerdo comercial entre la Unión Europea y sus Estados miembros, por una parte, y Colombia y el Perú, por otra», DO L 354, 21/12/2012).
A la luz de lo referido anteriormente, las MC que contienen o consisten en una DOP/IGP de un tercer país protegida mediante un acuerdo del que la UE es parte contratante (y que no se encuentra registrada simultáneamente con arreglo al Reglamento (UE) nº 1151/2012) se examinan, caso por caso, de conformidad con las disposiciones sustantivas específicas del acuerdo en cuestión sobre la denegación de marcas en conflicto, teniendo en cuenta la jurisprudencia citada más arriba. El mero hecho de que la DOP/IGP de un tercer país esté protegida por tales instrumentos no implica automáticamente que una MC que contenga o consista en la DOP/IGP en cuestión deba denegarse: esto dependerá del contenido y el alcance de las disposiciones pertinentes del acuerdo de que se trate.
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La indicación geográfica está protegida con arreglo a un acuerdo internacional suscrito únicamente por Estados miembros.
La protección de indicaciones geográficas conforme a acuerdos entre dos Estados miembros queda excluida con arreglo a la normativa vigente de la UE en materia de DOP/IGP de productos agrícolas y alimenticios (véase la sentencia de 8/9/2009, C- 478/07, «BUD»). Tales acuerdos son redundantes y carecen de efecto legal.
En lo que atañe a los acuerdos internacionales suscritos exclusivamente por Estados miembros con terceros países (en particular, el Arreglo de Lisboa relativo a la Protección de las Denominaciones de Origen y su Registro Internacional), y a efectos únicamente del examen de los motivos de denegación absolutos, la UE no es una parte contratante de tales acuerdos, y estos no imponen obligación alguna a la UE (véase, por analogía, la sentencia de 14/10/1980, 812/79, apartado 9).
2.11 Marcas comunitarias colectivas
2.11.1 Carácter de las marcas colectivas
De conformidad con lo dispuesto en el artículo 66, apartado 1, del RMC, pueden constituir una marca comunitaria colectiva, que es un tipo específico de marca comunitaria, las marcas comunitarias «así designadas al efectuarse la presentación de la solicitud que sean adecuadas para distinguir los productos o servicios de los miembros de la asociación que sea su titular, frente a los productos o servicios de otras empresas».
La marca comunitaria colectiva tiene por objeto distinguir los productos y servicios de los miembros de la asociación que es su titular de los de otros de otras empresas que no pertenecen a la asociación. Por lo tanto, este tipo de marca indica el origen comercial de determinados productos y servicios informando al consumidor de que el productor de los productos o el proveedor de los servicios pertenece a una determinada asociación y que tiene derecho a utilizar la marca. Las marcas comunitarias colectivas son utilizadas normalmente por empresas, junto con sus propias marcas individuales, para indicar que son miembros de una determinada asociación. Por ejemplo, la Asociación Española de Fabricantes de Calzado puede desear solicitar la marca colectiva «Asociación Española de Fabricantes de Calzado» que, aunque pertenece a la asociación, será utilizada por todos sus miembros. Es posible que uno de los miembros de la asociación desee utilizar la marca colectiva además de su propia marca individual, por ejemplo, «Calzados Luis».
Las marcas colectivas no certifican necesariamente la calidad de los productos, aunque éste sea a veces el caso. Por ejemplo, los reglamentos de uso con frecuencia incluyen disposiciones para certificar la calidad de los productos y servicios de los miembros de la asociación, lo cual es admisible (véase la resolución de 10/5/2012, en el asunto R 1007/2011-2, apartado 13).
Corresponde al solicitante decidir si la marca cumple los requisitos de una marca colectiva o de una marca individual, lo que significa que, en principio, puede solicitarse el mismo signo como marca individual o, si se cumplen las condiciones descritas en el presente capítulo, como una marca colectiva. Las diferencias entre las marcas
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individuales y las colectivas no dependen de los signos de por sí, sino del resto de características como la titularidad o las condiciones de uso de la marca.
Por ejemplo, una asociación puede presentar una solicitud para la marca denominativa «Tamaki» como marca individual o como marca colectiva, en función del uso previsto de la marca (sólo por la propia asociación o también por los miembros de la misma). Si se solicita una marca c omunitaria colectiva, deben cumplirse ciertas formalidades adicionales, como presentar un reglamento de uso, etc.
Después de la presentación, los cambios en el tipo de marca (de colectiva a individual o viceversa) se aceptarán únicamente en determinadas circunstancias (véanse las Directrices, Parte B, Examen, Sección 2, Examen de las formalidades, apartado 8.2.5).
Las disposiciones del RMC son aplicables a las marcas comunitarias colectivas, salvo disposición en contrario de los artículos 67 a 74 de dicho Reglamento. Por lo tanto, dichas marcas están sujetas, por un lado, al régimen de MC general y, por otro, a algunas excepciones y particularidades.
De lo cual resulta, en primer lugar, que una marca comunitaria colectiva se someterá, en general, al mismo procedimiento y requisitos que las marcas individuales. En general, la clasificación de los productos y servicios, el examen de las formalidades y los motivos de denegación absolutos se llevan a cabo siguiendo el mismo procedimiento que resulta aplicable a las marcas individuales. Por ejemplo, los examinadores comprobarán la lista de productos y servicios o las exigencias lingüísticas del mismo modo en que se lleva a cabo para las marcas individuales. Del mismo modo, también se examinará si la marca comunitaria colectiva queda comprendida en uno de los motivos de denegación del artículo 7 del RMC.
En segundo lugar, su examen también tendrá en cuenta las excepciones y particularidades de este tipo de marca. Dichas excepciones y particularidades hacen referencia tanto a las disposiciones formales como a las sustantivas. Por lo que se refiere a las formalidades, el requisito del reglamento de uso de la marca es, por ejemplo, una característica específica de u na marca comunitaria colectiva. (Para más información sobre el examen de las formalidades de las marcas comunitarias colectivas, incluido el reglamento de uso de la marca, véanse las Directrices, Parte B, Examen, Sección 2, Examen de las formalidades, apartado 8.2 Marcas colectivas).
A continuación, se especifican las excepciones y particularidades sustantivas que se aplican a las marcas comunitarias colectivas.
2.11.2 Titularidad
La titularidad de las marcas comunitarias colectivas queda limitada a i) las asociaciones de fabricantes, productores, prestadores de servicios o comerciantes que, a tenor de la legislación que les sea aplicable, tengan capacidad, en su propio nombre, para ser titulares de derechos y obligaciones de cualquier tipo, de celebrar contratos o de realizar otros actos jurídicos y tengan capacidad procesal; y a ii) las personas jurídicas de derecho público.
En el primer tipo de titulares se incluyen normalmente las asociaciones privadas con intereses u objetivos comunes. Deberán tener personalidad jurídica propia y capacidad para actuar. Por lo tanto, las empresas privadas como las sociedades anónimas,
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Gesellschaften mit beschränkter Haftung, etc., varios solicitantes con personalidad jurídica independiente o las uniones temporales de empresas no pueden ser titulares de una marca comunitaria colectiva. Tal como se establece en las Directrices, Parte B, Examen, Sección 2, Examen de las formalidades, apartado 8.2.1, «por colectivas no se entiende que la marca pertenezca a varias personas (cosolicitantes y cotitulares) ni designe ni cubra a más de un país».
En cuanto al segundo tipo de titulares, el concepto «personas jurídicas de derecho público» debe ser interpretado de forma amplia. Este concepto incluye, por un lado, las asociaciones, corporaciones y otras entidades de derecho público, como, por ejemplo, es el caso de los «Consejos Reguladores» o los «Colegios Profesionales» contemplados en el Derecho español. Por otro lado, también incluye al resto de personas jurídicas de derecho público, por ejemplo, la Unión Europea, los Estados o municipios, que no cuentan necesariamente con una estructura corporativa o asociativa, pero que, sin embargo, pueden ser titulares de marcas comunitarias colectivas. En estos casos, no resulta aplicable el requisito relativo a las condiciones de afiliación de conformidad con lo dispuesto en del artículo 67, apartado 2, del RMC (véase la resolución de 22/11/2011, en el asunto R 828/2011-1, apartado 18 y la resolución de 10/5/2012, en el asunto R 1007/2011-2, apartado 17 y 18). Es decir, cuando el solicitante de una marca comunitaria colectiva es una persona jurídica de derecho público que no necesariamente cuenta con una estructura corporativa o asociativa, tal como la Unión Europea, un Estado o municipio, el reglamento de uso de la marca no incluye detalles relativos a la afiliación.
2.11.3 Particularidades respecto de los motivos de denegación absolutos
Los motivos de denegación absolutos contemplados en el artículo 7, apartado 1, del RMC son aplicables a las marcas comunitarias colectivas, lo que significa que estas marcas primero deberán ser examinadas con arreglo a estas disposiciones para comprobar, por ejemplo, si poseen o no carácter distintivo, si inducen al error o si se han convertido en un s igno habitual. Si, por ejemplo, una marca no p osee un carácter distintivo intrínseco con arreglo al artículo 7, apartado 1, letra b), del RMC, la marca será denegada (véase la resolución de 18/7/2008, en el asunto R 229/2006-4, apartado 7).
Sin embargo, existen algunas excepciones y particularidades que también deben tenerse en cuenta al examinar los motivos de denegación absolutos para las marcas comunitarias colectivas. Además de los motivos de denegación de una solicitud de MC contemplados en el artículo 7, apartado 1, del RMC, los examinadores también apreciarán los siguientes motivos específicos:
• signos descriptivos • carácter engañoso en cuanto a su naturaleza • reglamento de uso contrario al orden público y a las buenas costumbres.
Estos motivos de denegación específicos también pueden ser objeto de observaciones presentadas por terceros.
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2.11.3.1 Signos descriptivos
Los signos o indicaciones que pueden servir en el comercio para designar la procedencia geográfica de los productos y servicios pueden constituir marcas comunitarias colectivas (véase la sentencia de 15/10/2003, en el asunto T-295/01, apartado 32 y la sentencia de 25/10/2005, en el asunto T-379/03, apartado 35).
De ello resulta que un signo que describe exclusivamente la procedencia geográfica de los productos y servicios (y que puede ser denegado si se solicita para una MC individual) puede ser aceptado si i) se solicita válidamente como marca comunitaria colectiva y ii) si cumple el requisito de autorización previsto en el artículo 67, apartado 2, del RMC (véase la resolución de 5/10/2006, en el asunto R 280/2006-1, apartados 16 y 17).
De conformidad con esta disposición, el reglamento de uso de una marca comunitaria colectiva que es descriptiva deberá autorizar a cualquier persona cuyos productos o servicios procedan de la zona geográfica de que se trate a hacerse miembro de la asociación titular de la marca.
Por ejemplo, deberá denegarse una solicitud de la marca denominativa «Alicante», que especifique servicios turísticos, con arreglo a lo dispuesto en el artículo 7, apartado 1, letra c), del ,del RMC si se solicita para una MC individual, ya que describe la procedencia geográfica de los servicios. Sin embargo, a modo de excepción, si se ha presentado una solicitud de marca comunitaria colectiva válida (es decir, ha sido solicitada por una asociación o una persona jurídica de derecho público y cumple el resto de requisitos de las marcas comunitarias colectivas) y el reglamento de uso de la marca incluye la autorización prevista en el artículo 67, apartado 2, del RMC, se aceptará con arreglo al artículo 7, apartado 1, letra c), del RMC.
Esta excepción se aplica exclusivamente a aquellos signos que son descriptivos de la procedencia geográfica de los productos y servicios. Si la marca comunitaria colectiva es descriptiva de otras características de los productos y servicios, esta excepción no será aplicable y la solicitud se denegará con arreglo a lo dispuesto en el artículo 7, apartado 1, la letra c), del RMC.
Por ejemplo, si se solicita la marca denominativa «Bricolaje» como marca comunitaria colectiva para herramientas de la clase 7, se considerará descriptiva del uso previsto de los productos. Dado que el signo es descriptivo de determinadas características de los productos distintas de su procedencia geográfica, será denegado con arreglo al artículo 7, apartado 1, letra c), del RMC, a pesar de haber sido solicitado como marca comunitaria colectiva (véase la resolución de 8/7/2010, en el asunto R 934/2010-1, apartado 35).
2.11.3.2 Carácter engañoso en cuanto a su naturaleza
El examinador deberá desestimar la solicitud cuando se corra el riesgo de inducir al público a error sobre el carácter o el significado de la marca, en particular cuando pueda dar la impresión de ser algo distinto de una marca colectiva.
La marca colectiva, que se encuentra disponible exclusivamente para su utilización por parte de los miembros de una asociación que sea su titular, puede inducir a error si da la impresión de que está disponible para el uso de cualquiera que pueda satisfacer ciertas características objetivas.
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2.11.3.3 Reglamento de uso contrario al orden público y a las buenas costumbres
La solicitud de marca comunitaria colectiva podrá ser denegada si el reglamento de uso de la marca es contrario al orden público y a las buenas costumbres.
Este motivo de denegación debe distinguirse del contemplado en el artículo 7, apartado 1, letra f), del RMC que prohíbe el registro de aquellas marcas que son en sí mismas contrarias al orden público o a las buenas costumbres.
La denegación prevista en el artículo 68, apartado 1, del RMC hace referencia a las situaciones en que, con independencia de la marca, el reglamento de uso de la marca incluye una disposición que es contraria al orden público o a las buenas costumbres, por ejemplo, reglas que discriminación por razón de sexo, religión o raza. Por ejemplo, si el reglamento incluye una cláusula que prohíbe a las mujeres utilizar la marca, la solicitud de marca comunitaria colectiva se desestimará, incluso si la marca no entra dentro del artículo 7, apartado 1, letra f), del RMC.
Puede renunciarse a la objeción del examinador si se modifica el reglamento para eliminar la disposición conflictiva. En el ejemplo anterior, se admitirá la solicitud de marca comunitaria colectiva si se elimina del reglamento la cláusula que prohíbe el uso por parte de las mujeres.
2.12 Carácter distintivo adquirido
2.12.1 Introducción
De conformidad con el artículo 7, apartado 3, del RMC, una marca podrá registrarse en cualquier caso aunque incumpla lo dispuesto en el artículo 7, apartado 1, letras b), c) y d), del RMC, siempre que «la marca hubiere adquirido, para los productos o servicios para los cuales se solicite el registro, un carácter distintivo como consecuencia del uso que se ha hecho de la misma».
El artículo 7, apartado 3, del RMC constituye una excepción a la norma establecida en el artículo 7, apartado 1, letras b), c) o d), del RMC, con arreglo a las cuales, deberá denegarse el registro de las marcas que, per se, carezcan de carácter distintivo, de las marcas descriptivas, y de las marcas que consistan exclusivamente en indicaciones que se hayan convertido en habituales en el lenguaje común o en las costumbres leales y constantes del comercio.
El carácter distintivo adquirido mediante el uso significa que, aunque el signo ab initio carezca de tal carácter distintivo inherente respecto a los productos y s ervicios reivindicados, a causa del uso que se hace del mismo en el mercado, el público pertinente ha pasado a percibir dicho signo como un elemento identificativo de los productos y servicios objeto de la solicitud de MC como procedentes de una determinada empresa. De este modo, el signo ha adquirido la capacidad de distinguir ciertos productos y servicios de los de otras empresas, porque se perciben como originarios de una empresa concreta. En este sentido, un signo en principio no susceptible de ser registrado con arreglo al artículo 7, apartado 1, letras b),c) o d), del RMC puede adquirir una nueva importancia, y su connotación, que deja de ser meramente descriptiva o no distintiva, le permite superar tales motivos absolutos de denegación del registro como marca que, de otro modo, se habrían aplicado.
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2.12.2 Solicitud
La Oficina examinará el carácter distintivo adquirido si media una solicitud al respecto del solicitante de la marca comunitaria, que podrá formularse en cualquier momento durante el procedimiento de examen.
2.12.3 Fecha a la que deben referirse las pruebas
Las pruebas deberán demostrar que tal carácter distintivo a través del uso se adquirió previamente a la fecha de presentación de la solicitud de MC. En el caso de un RI, la fecha pertinente es la de registro por parte de la Oficina Internacional. Cuando se reivindique prioridad, la fecha considerada será la fecha de prioridad. En lo sucesivo, se aludirá a todas estas fechas como la «fecha de presentación».
2.12.3.1 Procedimientos de examen
Puesto que una marca disfruta de protección desde su fecha de presentación, y dado que la fecha de presentación de la solicitud de registro determina la prioridad de una marca sobre otra, una marca deberá ser registrable en tal fecha. En consecuencia, el solicitante deberá demostrar que el carácter distintivo se ha adquirido mediante el uso de la marca previamente a la fecha de solicitud del registro (sentencia de 11/6/2009, C-542/07P, «PURE DIGITAL», apartados 49 y 51, y sentencia de 7/9/2006, C-108/05, «EUROPOLIS», apartado 22). Los datos que acrediten el uso de la marca con posterioridad a tal fecha no deberán descartarse automáticamente, en la medida en que puedan proporcionar información indicativa respecto a la situación previa a la fecha de solicitud (sentencia de 28/10/2009, T-137/08, «GREEN/YELLOW», apartado 49).
2.12.3.2 Procedimientos de cancelación
En los procedimientos de cancelación, aunque una marca se hubiera registrado contraviniendo lo dispuesto en el artículo 7, apartado 1, letras b), c) o d), del RMC, no podrá ser declarada nula si, por el uso que se haya hecho de ella, hubiera adquirido después de su registro un carácter distintivo respecto a los productos o servicios para los cuales esté registrada (artículo 52, apartado 2, del RMC).
La finalidad precisa de esta norma consiste en mantener el registro de las marcas que, debido al uso que se ha hecho de ellas, han adquirido entretanto (es decir, después de su registro) un carácter distintivo respecto a los productos o los servicios para los cuáles se registraron, a pesar del hecho de que, cuando se efectuó el registro, este contravenía el artículo 7 del RMC (sentencia de 14/122011, T-237/10, «Louis Vuitton», apartado 86, y sentencia de 15/10/2008, T-405/05, «MANPOWER», apartado 127).
2.12.4 Consumidor
El carácter distintivo de un signo, incluido el adquirido mediante el uso, debe evaluarse en relación con la supuesta percepción del consumidor medio de la categoría de productos o servicios en c uestión. Estos consumidores se consideran razonablemente bien informados, atentos y perspicaces. La definición del público destinatario está vinculada al
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examen de los destinatarios de los productos o servicios de que se trate, puesto que la marca debe desempeñar su función esencial en relación con ellos. En consecuencia, tal definición debe efectuarse a la luz de la función esencial de las marcas, es decir, garantizar al consumidor o al usuario final la identidad de origen del producto o servicio designado por la marca, permitiéndole distinguir sin confusión posible ese producto o servicio de los que tienen otra procedencia (sentencia de 29/9/2010, T-378/07, «ROJO/NEGRO/GRIS (Superficies exteriores de un tractor)», apartados 33, 38).
Por tanto, el consumidor destinatario incluye no solo a las personas que han adquirido efectivamente los productos y servicios, sino también a toda persona potencialmente interesada, en el sentido estricto de futuros compradores (sentencia de 29/9/2010, T- 378/07, «ROJO/NEGRO/GRIS (Superficies exteriores de un tractor)», apartados 41 y siguientes).
Los futuros compradores se definen con arreglo al producto o servicio concreto para el que se procura el registro. Si los productos o servicios reivindicados son generales (por ejemplo, bolsos o relojes), es irrelevante que los productos ofrecidos de manera concreta bajo el signo en cuestión sean artículos de lujo extremadamente caros; el público incluirá a todos los futuros compradores de los productos reivindicados en la solicitud de MC, incluidos los que no sean de lujo y los de menor precio si la reivindicación se refiere a la categoría general.
2.12.5 Productos y servicios
Puesto que una de las funciones principales de una marca es garantizar el origen de los productos y los servicios, el carácter distintivo adquirido debe evaluarse respecto a los productos y servicios de que se trate. En consecuencia, las pruebas del solicitante deberán demostrar la existencia de un vínculo entre el signo y los productos y servicios para los que se solicita dicho signo, estableciendo que los sectores interesados, o al menos una parte significativa de estos, identifican, gracias a la marca, el producto atribuyéndole una procedencia empresarial determinada (sentencia de 4/5/1999, C-108/97 y C-109/97, «CHIEMSEE», apartado 52; y sentencia de 19/5/2009, T-211/06, «CYBERCREDIT et al.», apartado 51).
2.12.6 Aspectos territoriales
En virtud del artículo 1 del RMC, una marca comunitaria tiene un carácter unitario y produce los mismos efectos en el conjunto de la Unión Europea. El artículo 7, apartado 2, del RMC establece que el registro de una marca deberá denegarse si los motivos absolutos solo existieren en una parte de la Unión Europea.
Como consecuencia lógica de lo referido, el carácter distintivo adquirido deberá establecerse en todo el territorio en el que la marca, ab initio, carecía de tal carácter (sentencia de 22/6/2006, C-25/05P, «Envoltorio de caramelo», apartados 83 y 86; y sentencia de 29/9/2010, T-378/07, «ROJO/NEGRO/GRIS (Superficies exteriores de un tractor)», apartado 30).
Esto se debe a que el carácter unitario de la marca comunitaria exige que un signo posea carácter distintivo, inherente o adquirido por el uso, en toda la Unión Europea (sentencia de 17/5/2011, T-7/10, «υγεία», apartado 40). Resultaría paradójico aceptar, por un lado,
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en virtud del artículo 3, apartado 1, letra b), de la DM, que un Estado miembro tenga que denegar el registro como marca nacional de un signo privado de todo carácter distintivo en su territorio y, por otro, que ese mismo Estado miembro deba respetar una marca comunitaria relativa a tal signo por el único motivo de que este ha adquirido un carácter distintivo en el territorio de otro Estado miembro (sentencia de 14/12/2011, T- 237/10, «Louis Vuitton», apartado 100).
2.12.6.1 Disposiciones especiales respecto a la adhesión de nuevos Estados miembros
De conformidad con lo dispuesto en los Tratados de Adhesión de la UE, una MC solicitada antes de la fecha de adhesión de un determinado Estado miembro solo podrá denegarse por motivos que ya existían con anterioridad a tal fecha. En este sentido, en los procedimientos de examen de la Oficina, el carácter distintivo adquirido deberá demostrarse únicamente respecto a los Estados miembros de la UE en la fecha de la solicitud de la MC, y no a aquellos que se hayan incorporado a la UE con posterioridad.
2.12.6.2 Marcas en 3D, colores per se y marcas figurativas
Si existe una objeción formulada en toda la Unión Europea, como suele suceder en el caso de las marcas en 3D, los colores per se y las marcas figurativas que consisten exclusivamente en la representación de los productos en cuestión, el carácter distintivo adquirido deberá demostrarse en el conjunto de la Unión Europea. Respecto a la posibilidad de extrapolar las pruebas, véase más adelante el apartado 2.12.8.7.
2.12.6.3 Zona lingüística
En los casos en los que la MC solicitada se deniegue en relación con su significado en una lengua determinada, el carácter distintivo por el uso deberá demostrarse al menos con respecto a los Estados miembros en los que tal lengua sea oficial.
Deberá actuarse con especial precaución cuando una lengua sea oficial en varios Estados miembros de la UE. En tales casos, al tramitar una objeción por motivos absolutos basada en el significado de los términos en una lengua determinada, el carácter distintivo por el uso deberá demostrarse para cada uno de los Estados miembros en los que tal lengua sea oficial (así como en cualquier otro Estado miembro o mercado en el que dichos términos serán entendidos).
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(a) Entre los ejemplos de lenguas oficiales en más de un Estado miembro de la UE figuran:
• Alemán
El alemán es lengua oficial en Alemania y Austria, así como en Luxemburgo y Bélgica. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en alemán deberá examinarse automáticamente respecto a todos esos países.
• Griego
El griego es lengua oficial no solo en Grecia, sino también en Chipre. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en griego deberá examinarse automáticamente respecto a esos dos países.
• Inglés
El inglés es lengua oficial en el Reino Unido, Irlanda y Malta. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en inglés deberá examinarse automáticamente respecto a todos esos países.
• Francés
El francés es lengua oficial no solo en Francia, sino también en Bélgica y Luxemburgo. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en francés deberá examinarse automáticamente respecto a todos esos países.
• Neerlandés
El neerlandés es lengua oficial no solo en los Países Bajos, sino también en Bélgica. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en neerlandés deberá examinarse automáticamente respecto a esos dos países.
• Sueco
El sueco es lengua oficial no s olo en Suecia, sino también en Finlandia. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en sueco deberá examinarse automáticamente respecto a esos dos países.
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(b) Comprensión de la lengua de un Estado miembro en Estados miembros en los que no es oficial
Además de los Estados miembros donde la lengua de los términos de un signo es oficial en la UE, deberá considerarse asimismo si una determinada lengua oficial de la Unión se comprende en otros Estados miembros en los que no es oficial. Tal situación puede darse porque, dependiendo de los productos y servicios designados en la solicitud de MC, el público pertinente en el Estado miembro en cuestión cuente con un conocimiento elemental de la lengua de que se trate, o porque el público pertinente consiste en especialistas que comprenden ciertos términos técnicos en la lengua oficial de otro Estado miembro de la UE. En tal caso, el carácter distintivo adquirido deberá demostrarse respecto al público pertinente en esos otros Estados miembros, y no solo en aquellos en los que la lengua en cuestión es oficial.
Por ejemplo, el TG determinó que una proporción muy elevada de consumidores y profesionales europeos cuenta con un conocimiento elemental del inglés (sentencia de 26/9/2012, T-301/09, «CITIGATE», apartado 41). En consecuencia, dependiendo del consumidor destinatario de los productos y servicios en cuestión, y de si el signo consiste en un término elemental en inglés o no, es posible que el carácter distintivo adquirido tenga que evaluarse asimismo respecto a otros Estados miembros.
Pasando del público general a otro más especializado para productos y servicios, el TG determinó que ciertos términos ingleses en los ámbitos médico (sentencia de 29/3/2012, T-242/11, «3D eXam», apartado 26), técnico (sentencia de 9/3/2012, T-172/10, «BASE-SEAL», apartado 54) y financiero (sentencia de 26/9/2012,T-301/09, «CITIGATE», apartado 41), serán comprendidos por los profesionales correspondientes en toda la Unión Europea, ya que el inglés es la lengua profesional utilizada comúnmente en tales ámbitos.
Por otro lado, puesto que la comprensión de las lenguas no se encuentra limitada estrictamente por las fronteras geográficas, es perfectamente posible que por razones históricas, culturales o de mercados transfronterizos, cierto vocabulario (normalmente elemental) de una lengua determinada se extienda y pueda ser entendido de manera amplia por el público general de otro Estado miembro, y en particular, de aquéllos con fronteras terrestres en común. Por ejemplo, el alemán y el francés se utilizan habitualmente en las regiones italianas del Trentino-Alto Adigio y del Valle de Aosta, respectivamente.
2.12.7 Qué debe demostrarse
El Tribunal de Justicia ha establecido directrices relativas a las condiciones que deben dar lugar a la determinación de que una marca ha adquirido un carácter distintivo por el uso: « la autoridad competente estima que, gracias a la marca, una parte significativa de los sectores interesados identifica el producto atribuyéndole una procedencia empresarial determinada, dicha autoridad debe extraer la conclusión, en todo caso, de que la condición exigida para el registro de la marca se cumple.»(sentencia de 4/5/1999, C-108/97 y C-109/97, «CHIEMSEE», apartado 45 y siguientes).
En este sentido, las pruebas deben demostrar que una proporción significativa del público destinatario de los productos y servicios reivindicados en el territorio en cuestión percibe la marca como un elemento identificativo de dichos productos o
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servicios de una empresa determinada; en otras palabras, que el uso dado a la marca ha generado un vínculo en la mente del público pertinente con los productos o servicios de una empresa concreta, con independencia de que los términos en cuestión carezcan del carácter distintivo para crear tal vínculo si tal uso no hubiera tenido lugar.
En lo que atañe al alcance de la penetración en el mercado y el reconocimiento del público destinatario que una marca debe lograr para que se establezca que ha adquirido un carácter distintivo por el uso, en cuanto que se ha convertido en un elemento identificativo de los productos y servicios de una determinada empresa frente a los de otras para el público destinatario, la jurisprudencia no prescribe porcentajes fijos de reconocimiento del mercado para dicho público. En lugar de utilizar un porcentaje fijo del público destinatario en un mercado determinado, las pruebas deben demostrar que una proporción significativa del público percibe la marca como un elemento identificativo de productos o servicios específicos.
Por último, las pruebas deberán referirse a cada uno de los productos o servicios designados en la solicitud de MC. Tras una objeción inicial por motivos absolutos con arreglo al artículo 7, apartado 1, letras b), c) o d), del RMC, únicamente los productos o servicios designados en la solicitud respecto a los que se haya demostrado su carácter distintivo adquirido por el uso serán registrables.
2.12.8 Las pruebas y su evaluación
Para establecer el carácter distintivo adquirido, podrán tenerse en cuenta las pruebas de los elementos que siguen: la cuota de mercado que posee la marca; la intensidad, la extensión geográfica y la duración del uso de la marca; la importancia de las inversiones realizadas por la empresa para promocionarla; la proporción de los sectores interesados que identifica el producto o servicio atribuyéndole una procedencia empresarial determinada gracias a la marca, así como las declaraciones de cámaras de comercio e industria o de otras asociaciones profesionales (sentencia de 4/5/1999, C-108/97 y C-109/97, «CHIEMSEE», apartado 31; y sentencia de 29/9/2010, T-378/07, «ROJO/NEGRO/GRIS (Superficies exteriores de un tractor)», apartado 32).
La Oficina no está obligada a examinar los hechos que puedan conferir a la marca solicitada un carácter distintivo adquirido por el uso en el sentido del artículo 7, apartado 3, salvo que el solicitante los haya invocado (sentencia de 12/12/2002, T-247/01, «ECOPY», apartado 47).
2.12.8.1 Tipo de pruebas que pueden presentarse
Entre los ejemplos de pruebas que pueden utilizarse para indicar algunos o la totalidad de los factores anteriores, que pueden poner de relieve el carácter distintivo adquirido, figuran elementos como folletos de ventas, catálogos, listas de precios, facturas, informes anuales, cifras de volumen de negocio, cifras e informes de inversión en publicidad, anuncios publicitarios (recortes de prensa, carteles en vallas publicitarias, anuncios en televisión), junto con pruebas de su intensidad y alcance, así como encuestas a clientes o estudios de mercado.
Los solicitantes deberán poner especial cuidado para asegurarse de que las pruebas demuestren no solo el uso de la marca solicitada, sino también que resultan suficientes para identificar las fechas de tal uso y el territorio geográfico específico de
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la utilización en la UE. Normalmente, las pruebas no fechadas resultarán insuficientes para demostrar que el carácter distintivo se adquirió antes de la fecha de presentación, y las pruebas de uso fuera de la UE no pueden demostrar el reconocimiento del mercado requerido por parte del público destinatario de la Unión. Además, si las pruebas combinan materiales relativos a territorios de la UE, y a otros no pertenecientes a esta, y no permiten a la Oficina identificar el alcance concreto del uso específico en la UE, carecerán igualmente de valor probativo para el público destinatario de la Unión.
En el artículo 78 del RMC figura una relación no exhaustiva de las diligencias de instrucción en los procedimientos ante la Oficina, que puede servir para la orientación de los solicitantes.
2.12.8.2 Evaluación de pruebas en su conjunto
Puesto que la Oficina debe evaluar las pruebas en su conjunto (R 0159/2005-4, «Metavit/MEXA-VIT C et al.», apartado 37), no es necesario que ninguna de ellas por separado pueda demostrar el asunto en cuestión. Tal demostración puede derivarse de una evaluación conjunta de todos los elementos de prueba presentados (sentencia de 7/6/2005, T-303/03, «SALVITA», apartado 42; y resolución de 8/3/2006, R 0358/2004-4, «MediQi/MEDICE», apartado 34). Para evaluar el valor probatorio de un documento, debe considerarse su credibilidad. También es necesario tener en cuenta el origen del documento, las circunstancias en las que se llevó a cabo, la persona a la que se dirigió y si el documento parece ser sólido y digno de crédito (sentencia de 7/6/2005, T-303/03, «SALVITA», apartado 42; y sentencia de 16/12/2008, T-86/07, «DEITECH» [marca figurativa], apartados 46 y siguientes).
2.12.8.3 Cuota de mercado
La cuota de mercado de la marca puede resultar relevante para evaluar si esta ha adquirido un carácter distintivo por el uso, en la medida en que tal penetración en el mercado puede capacitar a la Oficina para inferir si el público destinatario reconocería la marca como un elemento identificativo de los productos o servicios de una empresa concreta, distinguiendo estos así de los de otras empresas.
El volumen de publicidad en el mercado correspondiente de los productos o servicios reivindicados (representado por la inversión en publicidad para la promoción de una marca) también puede ser relevante para evaluar si la marca en cuestión ha adquirido un carácter distintivo por el uso (sentencia de 22/6/2006, C-25/05P, «Envoltorio de caramelo», apartados 76 y siguientes). No obstante, muchos intentos de demostrar el carácter distintivo adquirido por el uso fracasan porque las pruebas del solicitante no son suficientes para establecer la existencia de un vínculo entre la cuota de mercado y la publicidad, por un lado, y la percepción del consumidor, por el otro.
2.12.8.4 Encuestas y sondeos de opinión
Las encuestas relativas al nivel de reconocimiento de la marca por el público destinatario en el mercado del que se trate, si se realizan debidamente, pueden constituir uno de los tipos de prueba más directos, ya que sirven para demostrar la percepción real de dicho público. No obstante, no es tarea fácil formular y efectuar de
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manera correcta una encuesta, de forma que pueda percibirse como un elemento auténticamente neutral y representativo. Las preguntas que sugieren la respuesta, las muestras de p oblación poco representativas y la modificación indebida de las contestaciones deben evitarse, ya que estas prácticas pueden aminorar el valor probativo de tales encuestas.
El TG ha determinado que, en principio, no es inconcebible que una encuesta efectuada poco antes o después de la fecha de presentación pueda contener indicaciones de utilidad, aunque no cabe duda de que su valor probatorio variará probablemente en función de si el período comprendido es cercano o no a la fecha de presentación o d e prioridad de la solicitud de marca en cuestión. Asimismo, su valor probatorio dependerá del método de encuesta utilizado (sentencia de 12/7/2006, T-277/04, «VITACOAT», apartados 38 y 39).
En este sentido, toda prueba derivada de una encuesta de opinión deberá evaluarse con cautela. Es importante que las preguntas formuladas sean pertinentes y no sugieran la respuesta. Los criterios para la selección del público entrevistado deberán examinarse con detenimiento. La muestra ha de ser indicativa del público destinatario en su conjunto y, en este sentido, deberá seleccionarse aleatoriamente.
También deberán examinarse las pruebas procedentes de asociaciones comerciales independientes, organizaciones de consumidores y competidores. En general, a las pruebas aportadas por proveedores o d istribuidores deberá otorgárseles menor peso, puesto que es menos probable que dichas pruebas se faciliten desde la perspectiva de un tercero independiente. En este sentido, el grado de independencia de tales terceros influirá en el peso que deberá otorgarse a dichas pruebas por parte de la Oficina (sentencia de 28/10/2009, T-137/08, «GREEN/YELLOW»).
2.12.8.5 Volumen de negocios y publicidad
La información relativa al volumen de negocios es una de las formas de prueba a las que las empresas pueden acceder con mayor facilidad. Lo mismo ocurre en el caso de los gastos de publicidad.
Estas cifras pueden ejercer un efecto significativo en la evaluación de las pruebas, pero, en la gran mayoría de los casos, no son suficientes por sí solas para demostrar la cuestión del carácter distintivo adquirido por el uso de una marca. Tal insuficiencia obedece a que el volumen de negocios y los costes de publicidad por sí solos, sin otros datos corroborativos adicionales, son con frecuencia demasiado generales para extraer conclusiones concretas acerca del uso de una marca en particular: ha de ser posible identificar con precisión las cifras de facturación y publicidad y las pruebas relativas a la marca solicitada, y los productos o servicios en cuestión también deben ser identificables.
A menudo, los productos y servicios se comercializan bajo varias marcas, lo que dificulta la tarea de determinar cuál es la percepción del cliente destinatario respecto a la marca solicitada en concreto, y la facturación o la publicidad pueden incluir con frecuencia cifras de venta o promoción de otras marcas, o de formas significativamente diferentes de la marca en cuestión (por ejemplo, marcas figurativas en lugar de marcas denominativas, o elementos escritos distintos en una marca figurativa), o son demasiado generales para permitir la identificación de los mercados específicos objeto de consideración. En consecuencia, puede que las cifras de
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 88
DRAFT VERSION 1.0 DATE 01/07/2014
facturación o publicidad consolidadas de manera general no basten para probar si el público pertinente percibe la marca en cuestión como una indicación del origen o no.
Cuando se aportan cifras de facturación o publicidad, estas deben corresponder no sólo a la marca cuyo registro se procura, sino también específicamente a los productos o servicios designados por tal marca. Sería conveniente que las cifras de facturación se presenten divididas por años y por mercados. Los períodos específicos de uso (incluidos los datos pormenorizados relativos a la fecha de comienzo de tal uso) deben demostrarse mediante pruebas, de modo que la Oficina pueda cerciorarse de que estas prueban que la marca adquirió un carácter distintivo antes de la fecha de presentación.
2.12.8.6 Pruebas de uso indirectas
Las pruebas podrán contener o consistir en registros obtenidos en un Estado miembro sobre la base de la adquisición del carácter distintivo.
La fecha a la que se refieren las pruebas presentadas a escala nacional suele diferir de la fecha de presentación de la solicitud de MC. Tales registros podrán tenerse en cuenta, aunque no son vinculantes, cuando el examinador pueda evaluar las pruebas que se aportaron a la oficina nacional de la PI.
2.12.8.7 Extrapolación
Otra cuestión importante en la evaluación de las pruebas es si la Oficina puede servirse de la extrapolación basada en una cierta selección de las mismas para extraer conclusiones más amplias. A tal efecto, es relevante la medida en que las pruebas que demuestran el carácter distintivo adquirido por el uso en ciertos Estados miembros pueden utilizarse para sacar conclusiones respecto a la situación del mercado en otros Estados miembros no considerados en tales pruebas.
Extrapolar de este modo para extraer conclusiones más generales reviste especial importancia para una Unión Europea ampliada que comprende numerosos Estados miembros, ya que es muy poco probable que una parte pueda aportar pruebas relativas a la Unión Europea en su conjunto, y tenderá más bien a concentrarse en determinadas áreas.
La extrapolación es posible en los casos en los que el mercado es homogéneo y si se aportan al menos algunas pruebas. Las condiciones de los mercados y los hábitos de los consumidores han de ser comparables. En consecuencia, reviste especial importancia que el solicitante presente datos relativos al tamaño del mercado, a la cuota de mercado propia, y, si es posible, a la de sus principales competidores, así como a sus gastos de comercialización. Únicamente si todos los datos son comparables, la Oficina podrá extrapolar los resultados de un territorio a otro. Por ejemplo, si la MC se utiliza en todo el territorio en cuestión, pero las pruebas se refieren únicamente a una parte del mismo, la inferencia es posible si las circunstancias son comparables. Sin embargo, si la MC sólo se utiliza en parte del territorio en cuestión (y las pruebas se refieren a este), normalmente resultará difícil extrapolar tales datos a otras partes del territorio.
Motivos de denegación absolutos
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2.12.8.8 Modo de uso
Las pruebas deben ofrecer ejemplos del modo en que se usa la marca (en folletos, embalajes, muestras de los productos etc.). No se debe conceder peso alguno al uso de una marca sustancialmente diferente.
A veces se da el caso de que el uso mostrado corresponde a un signo que, aunque similar a la marca cuyo registro se solicita, es en sí mismo distinto. En estos casos tales pruebas se deben desestimar. El carácter distintivo adquirido debe demostrarse respecto al signo solicitado. No obstante, de conformidad con el artículo 15, apartado 1, letra a), del RMC, podrán permitirse las modificaciones de menor importancia del signo que no alteren el carácter distintivo del mismo (resolución de 15/1/2010, R 0735/2009-2, «PLAYNOW», y resolución de 9/2/2010, R 1291/2009-2, «EUROFLORIST»).
Es posible demostrar el carácter distintivo adquirido de un signo que se ha utilizado junto con otras marcas (sentencia de 28/10/2009,T-137/08, «Green/Yellow», apartado 27), siempre que el consumidor destinatario atribuya al signo en cuestión la función de identificación (sentencia de 7/7/2005, C-353/03, «HAVE A BREAK»; sentencia de 30/9/2009 T-75/08, «!» [marca figurativa], apartado 43; y sentencia de 28/10/2009, T-137/08, «GREEN/YELLOW», apartado 46).
2.12.8.9 Duración del uso
Las pruebas deben indicar cuándo comenzó el uso, y han de demostrar asimismo que este fue continuo, o indicar los motivos si existieron interrupciones en el período de uso.
2.12.8.10 Pruebas posteriores a la fecha de presentación
Las pruebas deben demostrar que, previamente a la fecha de presentación, la marca había adquirido un carácter distintivo por el uso.
No obstante, las pruebas no pueden rechazarse únicamente porque su fecha sea posterior a la de presentación, ya que pueden proporcionar indicaciones relativas a la situación anterior a esta última fecha. En consecuencia, tales pruebas deberán evaluarse, y habrá que otorgarles el peso que corresponda.
Por ejemplo, una marca que disfrute de un reconocimiento particularmente relevante en el mercado o que posea una cuota de mercado significativa unos meses después de la fecha de presentación puede contar con un carácter distintivo adquirido también en dicha fecha.
2.12.9 Consecuencias del carácter distintivo adquirido
Una marca registrada de conformidad con el artículo 7, apartado 3, del RMC disfruta de la misma protección que cualquier otra que haya sido considerada registrable de manera inherente tras su examen. Si la solicitud de MC se acepta con arreglo al artículo 7, apartado 3, del RMC, esta información se publica en el Boletín de Marcas Comunitarias, utilizando el código INID 521.
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 1
FINAL VERSION 1.0 DATE 01/08/2014
DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 3
SOLICITUD PRESENTADA POR EL AGENTE SIN EL CONSENTIMIENTO DEL TITULAR DE
LA MARCA (ARTÍCULO 8, APARTADO 3, DEL RMC)
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 2
FINAL VERSION 1.0 DATE 01/08/2014
Índice
1 Observaciones preliminares..................................................................... 3 1.1 Origen del artículo 8, apartado 3 del RMC................................................3 1.2 Finalidad del artículo 8, apartado 3, del RMC...........................................4
2 Legitimación del oponente ....................................................................... 4
3 Ámbito de aplicación................................................................................. 5 3.1 Tipos de marcas contempladas ................................................................5 3.2 Origen de la marca anterior .......................................................................7
4 Condiciones de aplicación ....................................................................... 8 4.1 Relación de agente o representante .........................................................8
4.1.1 Naturaleza de la relación................................................................................ 8 4.1.2 Forma del acuerdo ....................................................................................... 10 4.1.3 Alcance territorial del acuerdo ...................................................................... 11 4.1.4 Fechas relevantes ........................................................................................ 12
4.2 Solicitud a nombre del agente.................................................................14 4.3 Presentación de la solicitud sin el consentimiento del titular .............. 15 4.4 Ausencia de justificación del solicitante ................................................18 4.5 Aplicabilidad al margen de la identidad de los signos – productos
y servicios.................................................................................................20
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1 Observaciones preliminares
Según el artículo 8, apartado 3 del RMC, mediante oposición del titular de una marca anterior, se denegará el registro de la marca:
cuando el agente o representante del titular de dicha marca lo solicite en su propio nombre y sin el consentimiento del titular, a no s er que este agente o este representante justifique su actuación.
1.1 Origen del artículo 8, apartado 3 del RMC
El artículo 8, apartado 3 del RMC tiene su origen en el artículo 6septies del Convenio de París, el cual fue introducido en el citado Convenio mediante la Conferencia de Revisión de Li sboa de 1958. La pr otección que confiere al titular de una m arca consiste en el derecho a oponerse al registro solicitado o a reclamar la anulación o la transferencia a su favor del registro efectuado por su agente o representante sin su consentimiento, así como a prohibir el uso del mismo, cuando el agente o representante no pueda justificar su actuación. El artículo 6septies reza como sigue:
1) Si el agente o el representante del que es titular de una marca en uno de los países de la Unión solicita, sin autorización de este titular, el registro de esta marca a s u propio nombre, en uno o v arios de es tos países, el titular tendrá el derecho de oponerse al registro solicitado o de reclamar la anulación o, si la ley del país lo permite, la transferencia a s u favor del citado registro, a m enos que este agente o r epresentante justifique sus actuaciones.
2) El titular de la marca tendrá, en las condiciones indicadas en el párrafo 1) que antecede, el derecho de oponerse a la utilización de su marca por su agente o representante, si no ha autorizado esta utilización.
3) Las legislaciones nacionales tienen la facultad de prever un plazo equitativo dentro del cual el titular de una m arca deberá hacer valer los derechos previstos en el presente artículo.
El artículo 8, apartado 3, del RMC, aplica esta disposición únicamente en la medida en que otorga al titular legítimo el derecho a oponerse a las solicitudes presentadas sin su consentimiento. Los demás elementos del artículo 6septies del Convenio de París son aplicados por los artículos 11, 18 y 53, apartado 1, letra b), del RMC. El artículo 53, apartado 1, letra b), del RMC, confiere al titular el derecho a anul ar las marcas registradas sin su consentimiento, mientras que los artículos 11 y 18, del RMC le permiten prohibir el uso de las mismas y/o reivindicar la cesión de las mismas a su favor.
Habida cuenta de que el artículo 41 del RMC establece que una oposición sólo puede basarse en los motivos previstos en el artículo 8, los derechos adicionales concedidos al titular por las disposiciones antes mencionadas no pueden i nvocarse en el procedimiento de opos ición. En consecuencia, cualquier pretensión del oponente de
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
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que se prohíba el uso de la marca del agente o de que se le ceda la solicitud misma, será declarada inadmisible.
1.2 Finalidad del artículo 8, apartado 3, del RMC
La presentación de una solicitud por un agente o representante sin el consentimiento del titular de la marca es contraria al principio general de lealtad que subyace a los acuerdos de cooperación comercial de este tipo. Esta apropiación indebida de la marca del titular es particularmente perjudicial para sus intereses comerciales, ya que el solicitante podrá utilizar los conocimientos y la experiencia adquiridos como consecuencia de s u relación comercial con el titular y, de es te modo, aprovecharse injustamente del esfuerzo y las inversiones del mismo (confirmado mediante sentencia de 6/9/2006, en el asunto T-6/05, «FIRST DEFENSE AEROSOL PEPPER PROJECTOR » (I), apartado 38 y referencias posteriores en, entre otras, las resoluciones de las Salas de R ecurso de 16/ 5/2011, en el asunto R 0085/2010-4, «Lingham’s», apartado 14, de 3/8/2010, en el asunto R 1231/2009-2, «Berik», apartado 24, y de 30/9/2009, en el asunto R 1547/2006-4, «Powerball», apartado 17).
Por consiguiente, el artículo 8, apartado 3, del RMC, tiene por finalidad salvaguardar los intereses legítimos de los titulares de marcas frente a la apropiación arbitraria de las mismas, confiriéndoles el derecho de pr ohibir el registro de l as solicitudes presentadas por agentes o representantes sin su autorización.
El artículo 8, apartado 3, del RMC, constituye una manifestación del principio de buena fe en l as transacciones mercantiles. El artículo 52, apartado 1, letra b), del RMC, el cual permite declarar la nulidad de una m arca comunitaria cuando el solicitante hubiera actuado de mala fe, es la expresión general de este principio.
Sin embargo, la protección otorgada por el artículo 8, apartado 3, del RMC, es más restringida que la que confiere el artículo 52, apartado 1, letra b), del RMC, porque la aplicación del artículo 8, apartado 3, del RMC, está sujeta al cumplimiento de una serie de condiciones adicionales previstas en esta disposición.
Por lo tanto, el hecho de que el solicitante haya presentado la solicitud de mala fe no bastará por sí solo a e fectos de lo dispuesto en el artículo 8, apartado 3. En consecuencia, la oposición será desestimada si, a pesar de basarse exclusivamente en la mala fe del solicitante, no cumple las condiciones acumulativas necesarias exigidas en el artículo 8, apartado 3, del RMC (que figuran más adelante, en el apartado 4). Tal presentación sólo puede s ancionarse en v irtud del artículo 52, apartado 1, letra b) solicitando la anulación de la marca una vez registrada.
2 Legitimación del oponente
A tenor del artículo 41, apartado 1, letra b), del RMC, el derecho a presentar oposición en virtud del artículo 8, apartado 3, del RMC, está reservado únicamente a los titulares de las marcas anteriores. Esto está en c ontradicción con el artículo 41, apartado 1, letra a), del RMC, que establece que las oposiciones basadas en el artículo 8, apartados 1 y 5 , del RMC, podrán presentarlas también los licenciatarios autorizados, y con el artículo 41, apartado 1, letra c), del RMC, que dispone que en las oposiciones basadas en el artículo 8, apartado 4, del RMC, el derecho a p resentar oposición se
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
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extiende también a las personas autorizadas a ejercer tales derechos por el Derecho nacional aplicable.
De lo que antecede se deduce que, puesto que el derecho a p resentar oposición contra una s olicitud de marca comunitaria basada en el artículo 8, apartado 3, del RMC, lo ostentan exclusivamente los titulares de l as marcas anteriores, las oposiciones presentadas en nom bre de t erceros, sean los licenciatarios o per sonas facultadas de cualquier otro modo por las legislaciones nacionales aplicables, no serán admitidas por falta de legitimación.
N° de asunto Observaciones
Resolución de 30/9/2009, en el asunto R 1547/2006-4 «POWERBALL» (confirmada mediante sentencia de 16/11/2011, en el asunto T-484/09, «POWERBALL»)
La Sala confirmó la resolución del DO por la que se desestimaba la oposición basada en el artículo 8, apartado 3, del RMC en la medida en que el oponente no era el titular del derecho anterior, y únicamente reivindicaba su condición de licenciatario de la empresa Nanosecond Technology Company Ltd.
Resolución de 14/6/2010, en el asunto R 1795/2008-4 «ZAPPER- CLICK» (en apelación, auto de 3/10/2012, en el asunto T-360/10, «ZAPPER-CLICK»)
El demandado no satisfizo el requisito relativo a la titularidad de la marca; en concreto, de la marca registrada ZAPPER-CLICK. En la apelación, el Tribunal no trató este asunto.
Asimismo, en caso de que el oponente no acredite ser el titular legítimo de la marca al tiempo de presentar la oposición, ésta será desestimada sin examen sobre el fondo por falta de pruebas. La prueba exigida en cada caso dependerá del tipo de derecho en que se base la oposición. El actual titular puede también invocar los derechos de su predecesor en el título, si el acuerdo de ag encia/representación se celebró entre el titular anterior y el solicitante, pero este hecho deberá fundamentarse debidamente mediante la aportación de pruebas.
3 Ámbito de aplicación
3.1 Tipos de marcas contempladas
El artículo 8, apartado 3, del RMC, se aplica a las «marcas anteriores» que hayan sido solicitadas como marcas comunitarias sin el consentimiento de su titular Sin embargo, el artículo 8, apartado 2, del RMC, no se aplica a l as oposiciones basadas en es te motivo, dado que se limita a enumerar los tipos de derechos anteriores en virtud de los cuales puede presentarse una oposición con arreglo a los apartados 1 y 5 del mismo artículo. Por lo tanto, es necesario determinar de forma más detallada los tipos de derechos que pueden servir de bas e a una op osición con arreglo al artículo 8, apartado 3, del RMC, tanto en lo que se refiere a su naturaleza como a su origen geográfico.
A falta de restricciones en el artículo 8, apartado 3, del RMC, y en vista de l a necesidad de proteger de forma efectiva los intereses legítimos del verdadero titular, el término «marcas» habría de interpretarse en sentido amplio y deberá entenderse en el sentido de que comprende asimismo las solicitudes pendientes de registro, ya que
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
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no hay nada en es ta disposición que limite su ámbito de aplicación exclusivamente a las marcas registradas.
Por estas mismas razones las marcas no registradas o las marcas notoriamente conocidas a efectos del artículo 6bis del Convenio de P arís también están comprendidas en el término «marcas» en el sentido del artículo 8, apartado 3, del RMC. Por consiguiente, tanto las marcas registradas como las no r egistradas están amparadas por esta disposición, siempre que la legislación del país de or igen reconozca derechos de este último tipo.
En cambio, la referencia expresa a las «marcas» significa que el artículo 8, apartado 3, del RMC, no se aplica a meros signos utilizados en el tráfico económico, distintos de las marcas no registradas. Del mismo modo, otros tipos de derechos de propiedad intelectual que podrían servir de f undamento a una ac ción de nul idad tampoco pueden invocarse en el contexto del artículo 8, apartado 3, del RMC.
N° de asunto Observaciones
Resolución de 8/6/2010, en el asunto B 1 461 948 «Gu Tong Tie Gao»
Puesto que el artículo 8, apartado 3 se refiere únicamente a l as marcas anteriores, las pruebas aportadas por el oponente respecto a los derechos relacionados con la legislación sobre derechos de autor en el territorio de China no se consideraron pertinentes. Este es otro tipo de derecho de propiedad intelectual que se excluye como resultado de la referencia expresa en e l artículo a l as «marcas».
Se desprende claramente del texto del artículo 8, apartado 3, del RMC, que la marca en la que se basa la oposición ha de ser anterior a la solicitud de marca comunitaria. En consecuencia, la fecha relevante a tener en cuenta es la fecha de presentación o la fecha de prioridad de la solicitud impugnada. Las normas para la determinación de la prioridad dependen del tipo de derecho que sirva de fundamento a la oposición. Si el derecho anterior se ha adquirido mediante el registro, habrá de tenerse en cuenta su fecha de pr ioridad a fin de examinar si precede a la solicitud, mientras que si se trata de un derecho basado en el uso, éste deberá haberse adquirido antes de la fecha de presentación de la solicitud de marca comunitaria. En el caso de marcas anteriores notoriamente conocidas, la marca deberá haber adquirido notoriedad antes de la presentación de la solicitud de marca comunitaria.
N° de asunto Observaciones
Resolución de 21/12/2009, en el asunto R 1621/2006-4, «D-Raintank»
La Sala señaló que las solicitudes de marca presentadas por el solicitante de la anulación en 2003 fueron en todos los casos posteriores a l a fecha de presentación de la MC impugnada, e incluso a su fecha de registro, y no pudieron utilizarse para establecer que el solicitante de l a anulación fuera titular de una «marca» en el sentido de una marca registrada, en cualquier lugar del mundo, respecto al signo en cuestión cuando la MC fue presentada. Afirmó además que «lógicamente, nadie puede basar una reclamación de d enegación por motivos relativos o una declaración de nulidad en derechos que son posteriores a la MC impugnada» (apartado 53).
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N° de asunto Observaciones
Resolución de 19/6/1999, en el asunto B 3 436, «NORAXON»
El plazo que debe tenerse en cuenta para determinar la aplicabilidad del artículo 8, apartado 3, del RMC, comienza en l a fecha en la que la solicitud de MC en cuestión entró en vigor, es decir, el 26/10/1995. Esta fue la fecha de prioridad en Alemania, reivindicada por el solicitante, otorgada por la Oficina y posteriormente publicada, y no l a fecha de p resentación de l a solicitud de MC en la Oficina.
3.2 Origen de la marca anterior
Habida cuenta de q ue el artículo 8, apartado 2, del RMC, no se aplica a las oposiciones basadas en el artículo 8, apartado 3, del RMC, no puede servir para definir el alcance territorial de l a protección conferida por este último artículo. En ausencia de cualquier otra mención del «territorio de referencia» en el artículo 8, apartado 3, del RMC, es irrelevante que el titular ostente los derechos de marca anteriores en la Unión Europea o no.
La importancia práctica de es ta disposición reside precisamente en la capacidad jurídica que otorga a los titulares de marcas situados fuera de la Unión Europea para defender estos derechos contra solicitudes presentadas de forma fraudulenta, ya que los titulares de derechos de marca radicados en la Unión pueden invocar el resto de los motivos contemplados en el artículo 8 del RMC para defender sus derechos anteriores de di chos actos. Ni que decir tiene que las marcas comunitarias o l as marcas nacionales que sirven de base para una oposición con arreglo a lo dispuesto en el artículo 8 del RMC también son marcas anteriores susceptibles de ser invocadas como fundamento de una oposición en virtud del artículo 8, apartado 3, del RMC.
N° de asunto Observaciones
Resolución de 19/12/2006, en el asunto B 715 146, «SQUIRT»
A efectos del artículo 8, apartado 3, es irrelevante el lugar del mundo en el que residan los derechos de titularidad. De hecho, si en el Convenio de París se requiere la titularidad en un país miembro de la Unión de París, en ausencia de toda referencia en el RMC al territorio en que exista tal titularidad, deberá concluirse que basta con el que oponente cumpla los requisitos del artículo 5 del RMC relativo a las «personas que podrán ser titulares de marcas comunitarias». En el asunto en cuestión, el oponente cumplía tal requisito, ya que se trataba de una empresa con domicilio social en los Estados Unidos.
Resolución de 10/1/2011, 3253 C, «MUSASHI» (marca figurativa) Procedimientos de cancelación
El hecho de que los registros anteriores fueran de p aíses no pertenecientes a la UE no incide en modo alguno en el motivo de nulidad en cuestión, dado que el artículo 8, apartado 2, del RMC, que impone esta condición territorial, no se aplica a los procedimientos basados en el artículo 8, apartado 3 del mismo, y no puede servir para definir el alcance territorial de la protección otorgada por dicho artículo. «En ausencia de toda mención a un “territorio de r eferencia” en el artículo 8, apartado 3, del RMC, la División de A nulación debe suponer que las marcas anteriores registradas en países fuera de l a UE pueden constituir el fundamento de una s olicitud de nulidad con arreglo al artículo 8, apartado 3, del RMC» (párrafo 33).
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N° de asunto Observaciones
Resolución de 26/1/2012, en el asunto R 1956/2010-1 «HEATSTRIP» (recurrida T-184/12)
La oposición se basó en una marca no registrada protegida en Australia, Canadá, los Estados Unidos y el Reino Unido. La Sala consideró que las pruebas presentadas por el oponente acreditaban que éste llevaba utilizando la marca en Australia durante un período significativo (párrafos 3 y 34, respectivamente).
Resolución de 19/5/2011, en el asunto R 0085/2010-4 «Lingham’s» (marca figurativa).
La oposición se basó en una marca registrada protegida en Malasia. Al presentar el certificado de registro de Malasia, se demostró que el oponente es el titular de la marca malaya.
4 Condiciones de aplicación
El artículo 8, apartado 3, del RMC, permite a los titulares de marca oponerse al registro de s us marcas como marcas comunitarias, siempre que se cumplan los siguientes requisitos sustantivos (véase la sentencia de 13/4/2011, en el asunto T-262/09, «First Defense» (II), apartado 61):
1. el solicitante es o fue un agente o representante del titular de la marca; 2. la solicitud figura a nombre del agente o del representante; 3. la solicitud se presentó sin el consentimiento del titular; 4. el agente o representante no justificó su actuación; 5. los signos son idénticos o con ligeras modificaciones, y los bienes y servicios son
idénticos o se encuentran estrechamente relacionados.
4.1 Relación de agente o representante
4.1.1 Naturaleza de la relación
A la luz de la finalidad de esta disposición, que es salvaguardar los intereses legítimos de los titulares de marcas frente a la apropiación arbitraria de las mismas por sus socios comerciales, los términos «agente» y «representante» deben interpretarse en sentido amplio con objeto de cubrir todo tipo de relaciones basadas en un acuerdo empresarial (regido por un contrato escrito o verbal) en el que una parte representa los intereses de la otra, con independencia del nomen juris que se dé a la relación contractual entre el mandante-titular y el solicitante de la marca comunitaria (confirmado por la sentencia de 13/4/2011, en el asunto T-262/09 «First Defense» (II), apartado 64).
Así pues, a los efectos del artículo 8, apartado 3, del RMC, basta con que exista un acuerdo de cooperación comercial entre las partes de un tipo que genere una relación de confianza al imponer al solicitante, de forma expresa o tácita, una obligación general de lealtad y probidad en la defensa de los intereses del titular de la marca. Se deduce que el artículo 8, apartado 3, del RMC, puede aplicarse también, por ejemplo, a licenciatarios del titular, o a di stribuidores autorizados de los productos en relación con los cuales se usa la marca. La carga de la prueba relativa a la existencia de una relación agente-mandante recae en el oponente (confirmado por la sentencia de 13/4/2011, en el asunto T-262/09 «First Defense» (II), apartados 64 y 67).
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 9
FINAL VERSION 1.0 DATE 01/08/2014
N° de asunto Observaciones
Resolución de 29/2/2012, en el asunto B 1 818 791, «HOVERCAM» (marca figurativa).
La División de Oposición determinó que las pruebas presentadas por el oponente ponían de relieve que la relación y su fin último constituían un ejemplo de cooperación comercial, mediante la cual se imponía una obligación general de confianza y lealtad al solicitante, y que se trataba del tipo de relación contemplado en el artículo 8, apartado 3, del RMC (p. 5).
Dada la variedad de f ormas que las relaciones comerciales pueden r evestir en l a práctica, se aplica un planteamiento caso por caso que se centra en la cuestión de saber si el vínculo contractual existente entre el titular-oponente y el solicitante se limita únicamente a una serie de transacciones ocasionales, o si, por el contrario, su duración y contenido son tales que podrían justificar la aplicación del artículo 8, apartado 3, del RMC (para más información sobre las fechas relevantes con respecto a la relación titular-oponente y el solicitante, véase el apartado 4.1.4). La c uestión esencial debería ser si fue la cooperación con el titular lo que permitió al solicitante conocer y apreciar el valor de la marca y le incitó posteriormente a intentar registrarla en su propio nombre.
No obstante, ha de existir algún tipo de acuerdo entre las partes. Si el solicitante actúa de forma totalmente independiente, sin mantener ningún tipo de relación con el titular, no puede c onsiderársele un ag ente a efectos de lo dispuesto en el artículo 8, apartado 3, del RMC (confirmado por la sentencia de 13/04/2011, en el asunto T-262/09, «FIRST DEFENSE» (II), apartado 64).
Nº de asunto Observaciones
Resolución de 16/06/2011, en el asunto nº 4103 C, «D’Angelico» (marca figurativa) Procedimiento de anulación.
La División de Anulación consideró que en vez de mantener una relación de agente o representante, las partes gozaban en el momento de solicitar la marca comunitaria de derechos paralelos e independientes a las marcas en los Estados Unidos y Japón. Por estos motivos el artículo 8, apartado 3, del RMC no era aplicable..
Nº de asunto Observaciones
Resolución de 17/03/2000, en el asunto B 26 759, «EAST SIDE MARIO’S»
El mero deseo de e stablecer una r elación comercial con el oponente no puede considerarse un acuerdo concertado entre las partes en cuanto al uso de la marca impugnada.
Así pues, un mero comprador o un cliente del titular no puede equipararse a un «agente o representante» con arreglo al artículo 8, apartado 3, del RMC, puesto que dichas personas no tienen una obligación especial de lealtad para con el titular de la marca.
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 10
FINAL VERSION 1.0 DATE 01/08/2014
Nº de asunto Observaciones
Sentencia de 13/04/2011, en el asunto T-262/09, «FIRST DEFENSE» (II)
La demandante no aportó ningún elemento de prueba de l a existencia de una relación de representación con el solicitante. Si bien es cierto que la demandante presentó facturas y órdenes de pedido que se le remitieron, sobre cuya base podría presumirse, en otras circunstancias, la existencia de un acuerdo comercial entre las partes, en el presente caso el TG concluyó que dicha prueba no demuestra que la coadyuvante actuara por cuenta de la demandante, sino que acredita meramente la existencia de una relación vendedor-cliente que pudo establecerse sin previo acuerdo entre ellas. Dicha relación no basta para que sea aplicable el artículo 8, apartado 3, del RMC (apartado 67).
Resolución de 26/06/2009, en el asunto B 955 528, «FUSION» ( marca figurativa)
La Oficina consideró que la prueba sobre el tipo de vínculo comercial entre el oponente y el solicitante no era concluyente, es decir, que no pudo establecer si el solicitante era efectivamente un agente o representante o un mero comprador de los productos del oponente. En consecuencia, la Oficina no pudo s ostener que se aplicara el artículo 8, apartado 3, del RMC.
Carece de relevancia a efectos del artículo 8, apartado 3, del RMC el hecho de que exista o no un acuerdo de excl usividad entre las partes, o una m era relación comercial de carácter no exclusivo.
El artículo 8, apartado 3, del RMC también se aplica a formas análogas de relaciones profesionales que generan una obl igación de l ealtad y confidencialidad entre el titular de l a marca y el profesional, como es el caso de l os abogados en ejercicio y los procuradores, consultores, agentes de marcas, etc. Sin embargo, el representante legal o gerente de la empresa del oponente no puede considerarse un agente o representante a efectos del artículo 8, apartado 3, del RMC, puesto que estas personas no son socios profesionales del oponente. La finalidad de esta disposición no consiste en proteger al titular de actos de violación que tienen su origen en el seno de su propia empresa. Es posible que tales actos puedan sancionarse a través de l as reglas generales sobre la mala fe en virtud del artículo 52, apartado 1, letra b), del RMC.
Nº de asunto Observaciones
Resolución de 20/03/2000, en el asunto B 126 633, «Harpoon» (marca figurativa)
En este caso, el solicitante era un r epresentante legal de l a empresa del oponente. La solicitud de oposición fue desestimada.
4.1.2 Forma del acuerdo
No es preciso que el acuerdo entre las partes revista la forma de un c ontrato escrito. Como es lógico, la existencia de un ac uerdo formal entre las partes tendrá un gran valor a la hora de determinar exactamente el tipo de relación que vincula a las partes. Como ya se ha señalado, el título de dicho acuerdo y la terminología elegida por las partes no deben considerarse concluyentes. Lo importante es el tipo de cooperación comercial establecida en sus aspectos sustanciales y no su descripción formal.
Aun en aquellos casos en que no existe un contrato escrito, cabe inferir la existencia de un ac uerdo comercial del tipo exigido por el artículo 8, apartado 3, del RMC, de indicios y pruebas indirectos, tales como correspondencia comercial entre las partes, facturas y hojas de pedido correspondientes a los productos vendidos al agente, o
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 11
FINAL VERSION 1.0 DATE 01/08/2014
notas de abono y otros instrumentos bancarios (teniendo siempre en cuenta que una mera relación de cliente es insuficiente en el sentido del artículo 8, apartado 3, del RMC). Pueden ser importantes incluso los acuerdos sobre solución de conflictos, por cuanto aportan suficiente información acerca de la relación existente entre las partes en el pasado.
N° de asunto Observaciones
Resolución de 7/7/2003, en el asunto R 336/2001-2 «GORDON and SMITH» (marca figurativa)
La División de Oposición acertó al concluir que existía una relación de agencia entre el solicitante y los oponentes, basándose en la correspondencia que indicaba que las dos partes mantenían una relación comercial prolongada y estrecha. La em presa del solicitante ejercía como distribuidora de los productos de los oponentes (apartado 19).
Por lo demás, circunstancias como objetivos de ventas impuestos al solicitante, o el pago de c ánones, o l a fabricación de l os productos amparados por la marca bajo licencia o la asistencia en la creación de una red de distribución local, constituyen indicios sólidos de una r elación comercial del tipo contemplado en el artículo 8, apartado 3, del RMC.
N° de asunto Observaciones
Resolución de 26/1/2012, R 1956/2010-1 «HEATSTRIP» (recurrida T-184/12)
La Sala consideró que podía establecerse la existencia de una relación contractual vinculante mediante las cartas comerciales intercambiadas por las partes, también por correo electrónico. Así, examinó la correspondencia por correo electrónico entre las partes, con el fin de determinar lo que cada una de ellas le pedía a la otra (apartado 50). La Sala concluyó que los mensajes de correo electrónico ponían de relieve que las dos partes cooperaban activamente en la promoción del producto, mediante su publicidad en folletos y su exposición en una feria, al objeto de generar las mejores condiciones para su comercialización con éxito: el oponente suministraba el material para atender tales fines, y el solicitante lo adaptó al mercado alemán (apartado 54). La Sala concluyó así que l a correspondencia por correo electrónico denotaba la existencia de un acuerdo de cooperación comercial entre las partes, de u n tipo que da l ugar a una relación de confianza (apartado 56).
Por otro lado, el mero deseo del solicitante de establecer una relación comercial con el oponente no puede r eputarse de ac uerdo entre las partes. Los agentes o representantes potenciales no es tán comprendidos en el ámbito de aplicación del artículo 8, apartado 3, del RMC (véase B 26 759 «East Side Mario’s», citado anteriormente).
4.1.3 Alcance territorial del acuerdo
Si bien es cierto que la letra del artículo 8, apartado 3, del RMC, no hace referencia alguna al alcance territorial del acuerdo entre el titular de l a marca y su agente o representante, en esta disposición debe leerse una limitación implícita de su alcance a las relaciones en la UE o una parte de la misma.
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 12
FINAL VERSION 1.0 DATE 01/08/2014
Lo anterior concuerda mejor con las consideraciones económicas que subyacen al artículo 8, apartado 3, que consisten en impedir a los agentes o representantes hacer un uso indebido de una relación comercial que cubre un determinado territorio, mediante la presentación de una solicitud de registro de la marca de su mandante sin su consentimiento precisamente en ese territorio, es decir, en el territorio en el cual el solicitante puede ap rovecharse mejor de l a infraestructura y los conocimientos que posee como resultado de su anterior relación con el titular. En consecuencia, como la solicitud prohibida por el artículo 8, apartado 3, del RMC, es una solicitud destinada a la adquisición de derechos de marca en la UE, el acuerdo debe referirse también al mismo territorio.
Así pues, a este respecto procede hacer una interpretación teleológica, según la cual el artículo 8, apartado 3, del RMC, sólo se aplica a los acuerdos que cubren la totalidad o parte del territorio de la UE. En la práctica, esto significa que los acuerdos de ámbito mundial o paneuropeos están comprendidos en esta disposición, ya que se trata de acuerdos que se extienden a uno o más Estados miembros, o que sólo cubren una parte de su territorio, con independencia de si incluyen también a territorios terceros. En cambio, los acuerdos que se aplican exclusivamente a territorios terceros no están comprendidos en esta disposición.
4.1.4 Fechas relevantes
La relación de agente-representante debe haberse establecido antes de la fecha de presentación de la solicitud de marca comunitaria. Por lo tanto, es irrelevante que con posterioridad a esa fecha el solicitante entrara en negociaciones con el oponente, o le hiciera propuestas unilaterales con objeto de convertirse en su representante o agente.
N° de asunto Observaciones
Resolución de 19/5/2011, en el asunto R 0085/2010-4 «Lingham’s»
El oponente otorgó al solicitante un p oder especial, por el que consentía en que el solicitante presentara solicitudes de marca. Con posterioridad a tal poder, el solicitante presentó una solicitud de MC. Tras la presentación, el oponente revocó el poder especial y presentó la oposición.
La Sala consideró que la fecha relevante es la de presentación de la solicitud. En tal fecha, la autorización del titular se encontraba vigente. La r evocación tuvo efectos ex nunc (y no af ecta a l a validez de las acciones realizadas con arreglo al poder especial) y no ex tunc (como si el poder especial nunca hubiera existido) (apartado 24).
Sentencia de 6/9/2006, en el asunto T-6/05«FIRST DEFENSE AEROSOL PEPPER PROJECTOR» (I)
La Sala de Recurso debería haber examinado si, en la fecha de la solicitud de registro de la marca, la parte interviniente se encontraba vinculada por la autorización o no (apartado 50).
No obstante, aunque el acuerdo entre las partes se haya celebrado formalmente después de l a fecha de presentación de la solicitud, cabe todavía deducir de l as pruebas presentadas que las partes mantenían ya cierta forma de cooperación comercial antes de la firma del contrato y que el solicitante ya actuaba como agente, representante, distribuidor o licenciatario del oponente.
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 13
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Por otra parte, el acuerdo entre las partes no tiene que estar todavía técnicamente en vigor al presentar la solicitud. La r eferencia a una s olicitud presentada por un «agente o representante» no debería interpretarse como un requisito formal que debe satisfacerse al tiempo de l a presentación de l a solicitud de m arca comunitaria. El artículo 8, apartado 3 se aplica igualmente a los acuerdos que vencieron antes de la fecha de presentación de la solicitud de marca comunitaria, siempre que el tiempo transcurrido permita presumir razonablemente que la obligación de lealtad y confidencialidad persistía al tiempo de la presentación de la solicitud de marca comunitaria (confirmado por la sentencia de 13/4/2011, en el asunto T-262/09 «First Defense» (II), apartado 65).
El artículo 8, apartado 3, del RMC y el artículo 6septies del Convenio de París no protegen al titular de una marca que actúa de manera descuidada y no se esfuerza en procurar la protección de la marca por sí mismo. Con arreglo a l as obligaciones de confianza poscontractuales, ninguna de l as partes podrá utilizar la extinción de un acuerdo como pretexto para librarse de sus obligaciones; por ejemplo, rescindiendo un acuerdo e, inmediatamente después, presentando una s olicitud de marca. La lógica que subyace al artículo 8, apartado 3, del RMC y al artículo 6septies del Convenio de París consiste en evitar situaciones en las que un representante en un país A de un mandante que sea titular de m arcas en un pa ís B, y al que se ha en cargado que comercialice los productos protegidos por una marca y sirva los intereses del mandante en el país A, utilice la presentación de una solicitud de marca en el país A como arma contra el mandante, por ejemplo, con el fin de obligar a éste a continuar con el representante e impedirle acceder al mercado en dicho país A. Tal lógica se aplica igualmente si existe un ac uerdo, pero el representante lo rescinde para aprovecharse y presentar una m arca por los mismos motivos. No obstante, esto no genera derechos absolutos para que el mandante obtenga la protección de s us marcas en otros países. El mero hecho de que el mandante sea titular de una m arca en el país B no le confiere el derecho absoluto a obtener marcas en todos los demás países; las marcas registradas en países diferentes son, en principio, independientes entre sí, y pueden tener titulares distintos, de conformidad con el artículo 6, apartado 3 del Convenio de París. El artículo 6septies del Convenio de París constituye una excepción a es te principio, y únicamente en l a medida en q ue las obligaciones contractuales o de facto de las partes en cuestión justifiquen tal excepción. Sólo en dicha medida está justificado que la MC resultante «pertenezca» al mandante con arreglo al artículo 18 del RMC (resolución de 19/11/2007, en el asunto R 0073/2006-4 «Porter», párrafo 26).
Lo anterior debe apreciarse caso por caso, y el factor decisivo debería ser si el solicitante tiene todavía la posibilidad de sacar un beneficio comercial de su pasada relación con el titular de la marca sirviéndose de l os conocimientos y contactos adquiridos gracias a su posición.
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 14
FINAL VERSION 1.0 DATE 01/08/2014
N° de asunto Observaciones
Resolución de 19/11/2007, en el asunto R 0073/2006-4 «Porter».
La solicitud impugnada no se presentó durante la vigencia de los acuerdos entre Gallant (titular de las acciones de Porter, el solicitante) y Yoshida (oponente), lo que per mitió a G allant presentar una solicitud de MC, pero casi un año después de l a extinción del último acuerdo (apartado 25). La Sala señaló que las obligaciones de confianza tras la extinción del acuerdo no tienen que durar siempre, sino durante un cierto período transitorio tras la terminación del mismo, en el que las partes pueden redefinir sus estrategias comerciales, y concluyó, entre otras cosas, que toda relación poscontractual entre Yoshida y Gallant había concluido en la fecha de la presentación de la solicitud de MC (apartado 27).
Resolución de 21/2/2002, en el asunto B 167 926 «AZONIC».
En este asunto, menos de tres meses después de la extinción de una relación contractual, como la de un acuerdo de licencia, es un período en el que se considera que la relación de confianza entre las partes sigue existiendo, e impone al solicitante una obligación de lealtad y confianza.
4.2 Solicitud a nombre del agente
Según el artículo 8, apartado 3, del RMC, la marca solicitada no de be registrarse cuando el agente o representante solicite su registro en su propio nombre. Normalmente, resultará fácil comprobar si se cumple este requisito comparando el nombre del solicitante con el de l a persona que figura en l a prueba como agente o representante del titular.
Sin embargo, pueden darse situaciones en las que el agente o representante trate de eludir esta disposición haciendo que la solicitud sea presentada por un tercero sobre el cual ejerce un control, o con quien ha llegado a algún tipo de acuerdo a tal fin. En tales casos está justificado adoptar un planteamiento más flexible. Así pues, si bien es evidente que debido a la naturaleza de l a relación existente entre la persona que presenta la solicitud y el agente, la situación es efectivamente la misma que si la solicitud la hubiera presentado el propio agente, es posible aplicar el artículo 8, apartado 3, del RMC, pese a la aparente discrepancia entre el nombre del solicitante y el nombre del agente del titular.
Tal supuesto podría darse si la solicitud fuera presentada no en nombre de la sociedad del agente, sino en nombre de una persona física que tenga los mismos intereses económicos que el agente, como por ejemplo su presidente, vicepresidente o representante legal. Dado que en este caso el agente o representante podría todavía beneficiarse de dicha solicitud, habría que considerar que la persona física está sujeta a las mismas limitaciones que la sociedad.
N° de asunto Observaciones
Resolución de 21/2/2002, en el asunto B 167 926 «AZONIC»
La División de Oposición consideró que, aun cuando la solicitud de MC se presentó en nombre de una persona física (el Sr. Costahaude), en lugar de directamente en el nombre de la persona jurídica (STYLE’N USA, INC.), la situación era en la práctica la misma que si se hubiera presentado en el nombre de la persona jurídica.
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 15
FINAL VERSION 1.0 DATE 01/08/2014
N° de asunto Observaciones
Resolución de 28/5/2003, en el asunto B 413 890 «CELLFOOD»
Si bien es evidente que debido a la naturaleza de l a relación existente entre la persona que presenta la solicitud y el agente, la situación es efectivamente la misma que si la solicitud la hubiera presentado el propio agente, es posible aplicar el artículo 8, apartado 3, del RMC, pese a la aparente discrepancia entre el nombre del solicitante y el nombre del agente del titular.
Además, en caso de que la persona que presentó la solicitud impugnada sea también quien firmó el contrato de agenci a en nombre de l a sociedad, este hecho deberá reputarse un argumento sólido en favor de la aplicación del artículo 8, apartado 3, del RMC, pues en tal supuesto el solicitante no puede negar un conocimiento directo de las prohibiciones pertinentes. Del mismo modo, el hecho de que un contrato de agencia incluya una cláusula por la cual se hace al gerente de la sociedad personalmente responsable de l a observancia de l as obligaciones contractuales asumidas por el agente, habrá de c onsiderarse un nuev o indicio de q ue la presentación de la solicitud está comprendida en la prohibición prevista en el artículo 8, apartado 3, del RMC.
N° de asunto Observaciones
Resolución de 21/2/2002, en el asunto B 167 926 «AZONIC»
Teniendo en cuenta el puesto del representante autorizado de la empresa licenciataria, la Oficina consideró que, a pesar del hecho de que la solicitud de MC se presentó en nombre de la persona física, la situación era en la práctica la misma que si la hubiera presentado la persona jurídica, es decir, la empresa licenciataria. La solicitud de MC en nom bre de l a persona física podría haber tenido un efecto directo en la persona jurídica debido a su relación profesional y, además, el Presidente o el Vicepresidente de una empresa deberían considerarse obligados por las mismas limitaciones que s u compañía, o al menos temporalmente obligados en el caso de la extinción de su relación profesional.
Esta posición se ve reforzada por el hecho de que, en el asunto de referencia, existe una cláusula en el acuerdo renovado que establece el derecho del licenciante a la rescisión inmediata en el caso de que «el control de STYLE’N (el licenciatario) se transfiera y, por tanto, cambie la gerencia de la misma», lo que pone de relieve que la gerencia de l a empresa licenciataria también se encontraba obligada por los términos del acuerdo.
Nos hallamos ante un caso similar cuando el agente o representante y el solicitante son personas jurídicas distintas, pero las pruebas revelan que están controladas, administradas o d irigidas por la misma persona física. Por las razones antes aducidas, resulta oportuno «levantar el velo corporativo» y aplicar el artículo 8, apartado 3 también en estos casos.
4.3 Presentación de la solicitud sin el consentimiento del titular
Si bien la ausencia del consentimiento del titular es una condición sine qua non para la aplicación del artículo 8, apartado 3, el oponente no está obligado a presentar la prueba de que el agente no est aba autorizado a presentar la solicitud de m arca comunitaria. Una mera declaración de que la solicitud se presentó sin su
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 16
FINAL VERSION 1.0 DATE 01/08/2014
consentimiento suele ser suficiente. Esto obedece a q ue no c abe esperar que el oponente acredite un hecho «negativo», como la ausencia de consentimiento. En estos casos se invierte la carga de l a prueba e incumbe al solicitante probar que estaba autorizado a presentar la solicitud o justificar su actuación de c ualquier otro modo.
En vista de l a necesidad de pr oporcionar al titular legítimo una pr otección efectiva frente a las actuaciones realizadas por sus agentes sin su autorización, la aplicación del artículo 8, apartado 3 sólo debería excluirse cuando el consentimiento del titular fuera suficientemente claro, específico e incondicional (véase, por ejemplo, la sentencia de 6/9/2006, en el asunto T-6/05, «First Defense» (I), apartado 40).
Así pues, aunque el titular haya consentido expresamente la presentación de l a solicitud de m arca comunitaria, su consentimiento no puede considerarse suficientemente claro si no ha especificado de forma explícita que la solicitud puede presentarse en nombre del agente.
N° de asunto Observaciones
Resolución de 7/7/2003, en el asunto R 336/2001-2 «GORDON and SMITH» (marca figurativa)
«Habida cuenta de la importancia de su efecto de extinción de los derechos exclusivos de los titulares de las marcas en el procedimiento principal (derecho que les habilita para controlar la comercialización inicial en el EEE), el consentimiento debe manifestarse de una manera que refleje con certeza la voluntad de renunciar a tales derechos» (apartado 18).
De la misma forma, aunque el titular haya consentido expresamente la presentación de la solicitud de marca comunitaria, su consentimiento no puede considerarse suficientemente específico a e fectos de lo dispuesto en el artículo 8, apartado 3, del RMC, si no se indican los signos específicos que el solicitante está autorizado a solicitar como marcas comunitarias.
Por regla general, será más fácil examinar si el titular autorizó la presentación de la solicitud cuando las condiciones en l as que un ag ente o r epresentante puede presentar una solicitud de marca comunitaria están adecuadamente reguladas en el contrato, o resultan de otras pruebas directas (cartas, representaciones escritas, etc.). En la mayoría de los casos, estas pruebas bastarán para poner de manifiesto si el titular ha dado s u consentimiento expreso, o si el solicitante ha s obrepasado los límites de sus poderes.
En otros casos o no existe contrato, o es inadecuado a este respecto. Si bien el texto del artículo 8, apartado 3 es, en principio, lo bastante amplio para amparar también los casos de consentimiento tácito o implícito; este consentimiento sólo debe inferirse cuando la prueba sea suficientemente clara respecto a las intenciones del titular. Si la prueba no menciona en absoluto la existencia de una autorización expresa o tácita, la ausencia de consentimiento debería presumirse de forma general.
Aun en el supuesto de q ue existan indicios indirectos y pruebas de los que se deduzca la existencia de un consentimiento implícito, cualquier duda o ambigüedad debería interpretarse en favor del oponente, ya que, por regla general, será bastante difícil examinar si dicho consentimiento es lo suficientemente claro e inequívoco.
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 17
FINAL VERSION 1.0 DATE 01/08/2014
Por ejemplo, el hecho de que el titular haya tolerado la presentación de solicitudes en nombre del agente sin su consentimiento en otras jurisdicciones no puede generar en el solicitante la confianza legítima de q ue el titular tampoco pondrá objeciones a l a presentación de una solicitud de marca comunitaria.
N° de asunto Observaciones
Resolución de 31/1/2001, en el asunto B 140 006 «GORDON and SMITH» (marca figurativa) (confirmada por la resolución de 7/7/2003, en el asunto R 336/2001-2)
El mero hecho de que los oponentes no se opusieran de inmediato a la actuación del solicitante de registrar la marca después de que recibieran la notificación de tal actuación no constituye un consentimiento de la misma.
El hecho de que el titular tolere una conducta al margen de los límites de un contrato (como la utilización de un signo) no puede llevar a la conclusión de que la presentación de la MC no infringió la obligación de confianza establecida si el consentimiento no es inequívoco, específico e incondicional.
N° de asunto Observaciones
Asuntos acumulados T-537/10 y T-538/10, «FAGUMIT»
La solicitante (la titular de la MC en l os procedimientos de anulación) centró su línea de argumentación en el consentimiento presuntamente otorgado por el titular de la marca. El Tribunal mantuvo (al igual que la Sala de Recurso) que el consentimiento a efectos del registro de la marca en nombre del representante o el agente debe s er inequívoco, específico e i ncondicional (apartados 22-23).
El documento en el que se basó la titular de la MC no demostraba un consentimiento en el sentido recogido en el artículo 8, apartado 3, del RMC (apartado 28). La titular de la MC no se mencionaba en el documento, y en éste no se aludía a la posibilidad de registro del signo como marca. El titular de la MC no puede basarse en el hecho de que el solicitante de la anulación no se opusiera al uso del signo por empresas ajenas a las referidas en el documento. La utilización de las marcas ocurrió en e l transcurso de la comercialización de los artículos producidos por el solicitante de la anulación. No obstante, tal utilización es la consecuencia lógica de la cooperación entre el solicitante de la anulación y los distribuidores de s us productos, y no demuestra ningún abandono del signo que facultara a alguien para presentar una solicitud de r egistro de dicho signo (o de su elemento dominante), como MC (apartado 27).
Aun cuando el consentimiento del titular se haya considerado inequívoco, específico e incondicional, constituirá una cuestión de hecho determinar si tal consentimiento sigue siendo válido tras un cambio de titular mediante una venta de activos.
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 18
FINAL VERSION 1.0 DATE 01/08/2014
N° de asunto Observaciones
Sentencia de 6/9/2006, en el asunto T-6/05, «FIRST DEFENSE» (I)
El Tribunal General devolvió un asunto de esta índole a la Sala de Recurso, con el fin de determinar si el consentimiento obtenido por el solicitante de l a MC había sobrevivido a l a adquisición de los activos del antiguo titular de la marca y si, en la fecha de l a solicitud de registro de la marca, el nuevo titular de la misma en los Estados Unidos (el oponente) seguía estando obligado por dicho consentimiento.
El TG indicó que, si el oponente ya no estaba obligado por el consentimiento, la Sala debería determinar entonces si el solicitante disponía de una justificación válida que pudiera compensar la ausencia de tal consentimiento.
4.4 Ausencia de justificación del solicitante
Tal como se ha mencionado anteriormente, habida cuenta de que el oponente no está en condiciones de probar la falta de consentimiento, la carga de la prueba se invierte y corresponde al solicitante demostrar que la presentación de la solicitud fue autorizada por el titular. Si bien el artículo 8, apartado 3, del RMC, trata la falta de consentimiento del titular y la ausencia de una justificación válida por parte del solicitante como dos condiciones distintas, estos requisitos se solapan en gran medida ya que si el solicitante acredita que la presentación de l a solicitud se basó en algún tipo de acuerdo, habrá aportado asimismo una justificación válida de su actuación.
Por añadidura, el solicitante puede invocar cualquier otra circunstancia que demuestre que tenía una j ustificación para presentar la solicitud de m arca comunitaria en s u propio nombre. No obstante, a falta de pruebas de un consentimiento directo sólo se admitirán razones excepcionales como justificación válida, dada la necesidad de evitar una violación de los intereses legítimos del titular a falta de indicios suficientes de que su intención era autorizar la presentación de l a solicitud por el agente en s u propio nombre.
Por ejemplo, cabría inferir que el titular ha autorizado tácitamente la presentación de la solicitud si no actúa en un plazo razonable después de haberle informado el solicitante de su intención de presentar la solicitud de marca comunitaria en su propio nombre. Con todo, ni siquiera en ese caso cabe presumir que la presentación de la solicitud ha sido autorizada por el titular si el agente no l e ha m anifestado de f orma suficientemente clara por adelantado a nombre de quién piensa presentar la solicitud.
Otro caso de justificación válida es aquél en que el titular hacer creer a su agente que ha abandonado la marca, o que no está interesado en obtener o en mantener ningún derecho en el territorio considerado, por ejemplo suspendiendo el uso de la marca durante un periodo de tiempo relativamente largo.
El hecho de que el titular no desee gastar dinero en el registro de su marca no da a l agente el derecho de ac tuar por propia iniciativa, ya que el titular puede c onservar todavía un interés en utilizar su marca en el territorio aunque no esté registrada. Dicha decisión empresarial no puede r eputarse en sí misma como un signo de que el titular ha renunciado a los derechos sobre su marca.
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 19
FINAL VERSION 1.0 DATE 01/08/2014
Las justificaciones relacionadas exclusivamente con los intereses económicos del solicitante, como la necesidad de proteger su inversión en la creación de una red de distribución local y de p romocionar la marca en el territorio de referencia no pueden considerarse válidas a efectos de lo dispuesto en el artículo 8, apartado 3, del RMC.
El solicitante tampoco puede alegar en su defensa que tiene derecho a una retribución económica por el trabajo y los gastos realizados en el desarrollo del fondo de comercio de la marca. Aun suponiendo que dicha retribución fuera merecida o estuviera expresamente prevista en el contrato de agencia, el solicitante no puede utilizar el registro de la marca en su propio nombre como forma de obtener dinero del oponente o en concepto de compensación económica, sino que debe intentar resolver sus diferencias con el titular bien mediante un acuerdo o mediante una reclamación por daños y perjuicios.
N° de asunto Observaciones
Resolución de 4/10/2011, en el asunto 4443 C, «CELLO»
Respecto al argumento justificativo de que la solicitud de MC se presentó con el fin de proteger el fondo de comercio de la marca en la UE, que se había desarrollado únicamente como resultado de actividades comerciales, la División de Anulación consideró que el hecho de que un distribuidor, exclusivo o de otro tipo, desarrolle el fondo de comercio de la marca del titular en su territorio asignado forma parte de las obligaciones habituales de un distribuidor, y no puede constituir, por sí mismo y en ausencia de otras circunstancias, una justificación válida para la apropiación de la marca del titular por el distribuidor.
Resolución de 10/1/2011, en el asunto 3253 C, «MUSASHI» (marca figurativa).
Por lo que se refiere a l a justificación relativa a las alegaciones económicas de la parte que presenta la MC y sus argumentos de que le asiste el derecho a cierta remuneración financiera por permitir que e l signo disfrute de pr otección a escala de l a UE, y que podría transferirse al solicitante de la anulación, se determinó que ésta no puede constituir una justificación válida en el sentido de lo dispuesto en el artículo 8, apartado 3. «Aun suponiendo que la retribución fuera merecida, el titular de la MC no puede utilizar el registro de una marca en su propio nombre como forma de obtener un pago» [del solicitante de la anulación] (apartado 47).
Resolución de 7/7/2003, en el asunto R 336/2001-2 «GORDON and SMITH» (marca figurativa)
Una acción que vulnera los intereses del titular de la marca, como la solicitud de r egistro de una marca en nombre del agente o representante sin el consentimiento del titular y con el único propósito de salvaguardar los intereses del propio agente o representante, no s e considera una justificación para las finalidades del artículo 8, apartado 3, del RMC. Lo an terior es también de aplicación para el segundo argumento del solicitante, que justifica sus acciones debido a que pagó los costes de registro. Los intereses del titular de la marca no pueden subordinarse a los gastos de un agente o representante. El hecho de que un oponente esté reticente a incurrir en gastos financieros para registrar una marca, no le da automáticamente al agente o representante el derecho de proceder con el registro de la marca en su propio nombre. Lo anterior constituye una violación de l a obligación de lealtad y lealtad del agente o representante hacia el titular de la marca (párrafo 24).
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 20
FINAL VERSION 1.0 DATE 01/08/2014
4.5 Aplicabilidad al margen de la identidad de los sign os – productos y servicios
El artículo 8, apartado 3, del RMC, prevé que se denegará el registro de una marca comunitaria cuando «el agente o representante del titular de dicha marca la solicite en su propio nombre». Esta referencia expresa a la marca del mandante da la impresión prima facie de que la marca comunitaria solicitada ha de ser la misma que la marca anterior.
Así pues, una i nterpretación literal del artículo 8, apartado 3, del RMC, llevaría a la conclusión de q ue su aplicación sólo es posible cuando el agente o representante tenga intención de registrar una marca idéntica a la del titular.
Procede señalar asimismo que el texto del artículo 8, apartado 3, del RMC, no hace referencia alguna a los productos y servicios en r elación con los cuales se ha presentado la solicitud y está protegida la marca anterior, y que por lo tanto no da ninguna orientación sobre cuál debería ser la exacta relación entre los productos y servicios respectivos para que esta disposición resulte aplicable.
Sin embargo, aplicar el artículo 8, apartado 3, del RMC, exclusivamente a signos idénticos para productos y servicios idénticos privaría a esta disposición de gran parte de su eficacia, dado q ue permitiría al solicitante escapar a s us consecuencias introduciendo pequeñas modificaciones bien en la marca anterior bien en la lista de productos y servicios. En un c aso semejante, los intereses del titular quedarían gravemente lesionados, en par ticular si la marca anterior está siendo utilizada y las variaciones introducidas por el solicitante no son suficientemente significativas para excluir la confusión. Es más, si se permite a la solicitud proceder hasta el registro a pesar de su similitud con la marca anterior, el solicitante estará en condiciones de impedir cualquier registro y/o uso posterior de la marca anterior por el titular inicial en el territorio de la UE, con base en el artículo 8, apartado 1 o el artículo 9, apartado 1, del RMC, o las disposiciones concordantes de la legislación nacional.
Así pues, en vista de la necesidad de proteger de forma efectiva al titular legítimo de la marca contra las prácticas desleales de s us representantes, debe ev itarse una interpretación restrictiva del artículo 8, apartado 3, del RMC. Por consiguiente, procede aplicar este artículo no sólo cuando las marcas respectivas son idénticas, sino también:
• cuando el signo solicitado por el agente o representante reproduce en lo esencial la marca anterior con pequeñas modificaciones, adiciones o supresiones, que no afectan sustancialmente a su carácter distintivo;
• cuando los productos y servicios en conflicto están estrechamente relacionados o son equivalentes en t érminos comerciales. En otras palabras, lo que cuenta finalmente es que el público pueda per cibir los productos y servicios del solicitante como productos «autorizados», cuya calidad todavía es garantizada de algún modo por el oponente, y que habría sido razonable para el oponente comercializar en vista de los productos y servicios protegidos por la marca anterior.
Figuran a continuación ejemplos de signos en conflicto en que la Oficina consideró aplicable el artículo 8, apartado 3, del RMC:
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 21
FINAL VERSION 1.0 DATE 01/08/2014
Marca anterior Solicitud de MC N° de asunto
FIRST DEFENSE
(2 derechos anteriores de Estados Unidos)
Resolución de 4/5/2009, en el asunto R 0493/2002-4, «First
Defense» (II)
Sentencia de 13/4/2011, en el asunto T-262/09, «FIRST
DEFENSE» (II)
Resolución de 3/5/2012, en el asunto R 1642/2011-2 «Maritime
Acopafi» (marca figurativa).
BERIK (marca denominativa) (2 derechos anteriores)
Resolución de 3/8/2010, en el asunto R 1367/2009-2 «BERIK
DESIGN» (marca figurativa)
BERIK (marca denominativa) (2 derechos anteriores)
Resolución de 3/8/2010, en el asunto R 1231/2009-2 «BERIK»
(marca figurativa).
NORAXON Resolución de 19/6/1999, en elasunto B 3 436 «NORAXON»
APEX Resoluciones de 26/9/2001,B 150 955 y B 170 789, «APEX»
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 22
FINAL VERSION 1.0 DATE 01/08/2014
Figuran a continuación ejemplos de productos y servicios en conflicto en que la Oficina consideró aplicable el artículo 8, apartado 3, del RMC:
N° de asunto Observaciones
Resolución de 4/5/2009, en el asunto R 0493/2002-4 – «FIRST DEFENSE» (II)
La Sala determinó que los equipos para pulverizado de sustancias irritantes impugnados de l a clase 13 se incluían en l as armas defensivas no explosivas en forma de gas irritante orgánico envasado en un pulverizador (o rociador presurizado) del titular
Sin embargo, consideró que la protección no se extendía a las armas blancas, munición y proyectiles impugnados. Se trata de productos respecto a los que una actividad comercial del titular no puede preverse razonablemente. Las armas blancas y la munición son muy diferentes de los pulverizadores de pimienta para que sean objeto del artículo 8, apartado 3, del RMC, dado que el oponente comercializa un producto muy específico (apartados 19 a 24).
En su sentencia de 13/4/2011, en el asunto T-262/09, el TG no examinó los argumentos de las partes respecto a la similitud de los productos.
Resolución de 3/5/2012, en el asunto R 1642/2011-2 «Maritime Acopafi» (marca figurativa).
La Sala determinó que el texto sugiere únicamente que si la marca solicitada es esencialmente idéntica al derecho anterior, tanto en lo que se refiere a los signos, como a los productos y servicios, puede prohibirse. Por otro lado, una lectura demasiado literal de tal disposición debilitaría fatalmente su utilidad, al permitir a agentes fraudulentos registrar las marcas de sus mandantes al efectuar sencillamente modificaciones menores o adiciones poco importantes en las mismas. No obstante, a pesar de estas consideraciones, la disposición debe aplicarse únicamente en aquellos casos en los que los productos o servicios sean esencialmente los mismos, o eq uivalentes en gran medida (apartado 18).
A la vista de lo anterior, la Sala respaldó las conclusiones del DO de que la utilización de la marca anterior para la instalación de alojamiento marítimo difería fundamentalmente de los servicios del solicitante en la clase 42 (servicios científicos y tecnológicos, de investigación y diseño relativos a ellos; servicios de análisis e investigación industrial; diseño y desarrollo de ordenadores y software).
Resolución de 3/8/2010, en el asunto R 1367/2009-2 «Berik» (marca figurativa)
La Sala convino con la División de Anulación en que los productos del solicitante de la anulación en la clase 25 no podían considerarse estrechamente relacionados ni equivalentes en términos comerciales con los productos del solicitante en la clase 18, cuero o imitaciones de cuero. Los segundos son materias primas para productores de artículos fabricados en cuero o imitaciones de cuero y, por tanto, se dirigen a un público diferente y tienen canales de distribución distintos de los productos cubiertos por las marcas del solicitante de la anulación (apartados 30 y 31).
Convino además con la División de Anulación en que los productos del solicitante de la anulación en la clase 25 no podían considerarse estrechamente relacionados ni equivalentes en términos comerciales a los productos del solicitante comprendidos en la clase 16 aun cuando, por ejemplo, algunos de los productos impugnados pueden utilizarse como artículos promocionales para una línea de prendas de vestir (apartados 28-30).
Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 23
FINAL VERSION 1.0 DATE 01/08/2014
N° de asunto Observaciones
Resolución de 27/2/2012, en el asunto B 1 302 530 «GEOWEB / NEOWEB».
«En vista de la necesidad de proteger de forma efectiva al titular legítimo de la marca contra las prácticas desleales de sus representantes, debe evitarse una i nterpretación restrictiva del artículo 8, apartado 3, del RMC. Por tanto, esta disposición debe aplicarse no sólo cuando las respectivas marcas sean idénticas, sino también cuando la marca solicitada por el agente o representante reproduce en lo esencial la marca anterior con pequeñas modificaciones, adiciones o supresiones, que no afectan sustancialmente a su carácter distintivo.
De conformidad con el razonamiento anterior, el artículo 8, apartado 3, del RMC, no sólo cubre los casos en los que las listas respectivas de productos y servicios son estrictamente idénticas, sino también se aplica cuando los productos y servicios en conflicto están estrechamente relacionados, o son equivalentes en términos comerciales. En otras palabras, lo que cuenta finalmente es que el público pueda percibir los productos y servicios del solicitante como productos “autorizados”, cuya calidad todavía es «garantizada» de algún modo por el oponente» (p. 20).
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 1
DRAFT VERSION 1.0 DATE 01/08/2014
DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 4
DERECHOS CONTEMPLADOS EN EL ARTÍCULO 8, APARTADO 4, DEL RMC
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 2
DRAFT VERSION 1.0 DATE 01/08/2014
Índice
1 Introducción............................................................................................... 3
2 Estructura del artículo 8, apartado 4, del RMC ....................................... 3
3 Requisitos del artículo 8, apartado 4, del RMC....................................... 5 3.1 Derecho directo que se confiere al oponente ..........................................5 3.2 Tipos de derechos contemplados en el artículo 8, apartado 4, del RMC6
3.2.1 Introducción.......................................................................................6 3.2.2 Marcas no registradas .......................................................................7 3.2.3 Otros identificadores comerciales......................................................7
3.2.3.1 Nombres comerciales..................................................................................8 3.2.3.2 Denominaciones sociales............................................................................9 3.2.3.3 Nombres de dominio ...................................................................................9 3.2.3.4 Títulos........................................................................................................10
3.2.4 Indicaciones geográficas .................................................................10 3.2.4.1 Derechos anteriores derivados de la legislación de la UE.........................11 3.2.4.2 Derechos anteriores derivados de la legislación de los Estados miembros
..................................................................................................................12 3.2.4.3 Derechos anteriores derivados de acuerdos internacionales....................13 3.2.4.4 Alcance de la protección de las IGP..........................................................15
3.3 Requisitos del uso....................................................................................17 3.3.1 Criterio nacional...............................................................................17 3.3.2 Criterio europeo: el uso en el tráfico económico de alcance no
únicamente local..............................................................................17 3.3.2.1 Uso en el tráfico económico ......................................................................18 3.3.2.2 Alcance del uso .........................................................................................21
3.4 Derecho anterior.......................................................................................27 3.5 Alcance de la protección .........................................................................28
4 Prueba y grado de la prueba .................................................................. 29
CUADRO.......................................................................................................... 32
DERECHOS NACIONALES QUE CONSTITUYEN «DERECHOS ANTERIORES» A EFECTOS DEL ARTÍCULO 8, APARTADO 4, DEL RMC .......................................................................................................... 32
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 3
DRAFT VERSION 1.0 DATE 01/08/2014
1 Introducción
La relación entre el sistema de la marca comunitaria y los sistemas nacionales se caracteriza por el principio de coexistencia, lo cual significa que tanto el sistema comunitario de marcas como las legislaciones nacionales existen y funcionan simultáneamente. El mismo titular puede proteger un mismo signo tanto como marca comunitaria como marca nacional en uno (o todos) los Estados miembros. El principio de coexistencia también implica que el sistema de la marca comunitaria reconoce activamente la importancia de los derechos nacionales y su alcance de protección. Cuando se plantean conflictos entre las marcas comunitarias y las marcas nacionales u otros derechos nacionales, no existe una jerarquía que determine que un s istema prevalece sobre el otro, sino que en su lugar, se aplica el principio de prioridad. Si se cumplen los correspondientes requisitos, las marcas nacionales y otros derechos nacionales anteriores pueden evitar el registro de una marca comunitaria posterior o declarar la nulidad de la misma.
Aunque la Directiva de marcas y su aplicación posterior han armonizado las legislaciones relativas a las marcas registradas, dicha armonización no s e ha realizado a escala de la Unión respecto de las marcas no registradas ni para la mayoría de otros derechos anteriores de carácter similar. Estos derechos no armonizados están regulados completamente por los Derechos nacionales.
Los tipos de derechos anteriores en que pueden basarse los procedimientos ante la Oficina se especifican en el RMC en:
• el artículo 8, apartado 4, del RMC, que limita el alcance de la protección a los procedimientos de oposición para las marcas no registradas y otros signos anteriores utilizados en el tráfico económico no únicamente local;
• el artículo 53, apartado 2, letras a) a d), del RMC, que amplía el ámbito de posibles derechos anteriores en que pueden estar basados los procedimientos de nulidad, más allá de los contemplados en el artículo 8, apartado 4, de RMC para que comprendan asimismo otros derechos anteriores, en pa rticular el derecho a un nombre, el derecho a la imagen, un derecho de autor y un derecho de propiedad industrial;
• el artículo 111 del RMC, que complementa la gama de derechos anteriores invocados en apoyo del procedimiento de oposición, al establecer que los derechos que solo son válidos en determinadas localidades y que, por tanto, no cumplen el criterio de «alcance no únicamente local» del artículo 8, apartado 4, del RMC pueden oponer se al uso de la marca comunitaria aunque dichos derechos locales no podrán impedir su registro.
Esta parte de las Directrices solo aborda los derechos anteriores contemplados en el artículo 8, apartado 4, del RMC.
2 Estructura del artículo 8, apartado 4, del RMC
El artículo 8, apartado 4, del RMC establece que:
Mediando oposición del titular de una marca no registrada o de otro signo utilizado en el tráfico económico de alcance no únicamente
Derechos contemplados en el artículo 8, apartado 4, del RMC
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local, se denegará el registro de la marca solicitada si, y en la medida en que, con arreglo al Derecho del Estado miembro que regule dicho signo:
a) se hubieren adquirido derechos a utilizar dicho signo con anterioridad a la fecha de presentación de la solicitud de la marca comunitaria, o, en su caso, con anterioridad a la fecha de la prioridad invocada en apoyo de la solicitud de la marca comunitaria;
b) dicho signo confiriere a su titular el derecho a prohibir la utilización de una marca posterior.
El artículo 8, apartado 4, del RMC implica que, además de las marcas anteriores que se contemplan en el apartado 2 de dicho artículo, las marcas no registradas y otros signos protegidos a nivel de un Estado miembro utilizados en el tráfico económico como «identificadores comerciales» de alcance no únicamente local podrán invocarse en una oposición siempre que dichos derechos confieran a sus titulares el derecho a prohibir la utilización de una marca posterior.
El artículo 8, apartado 4, del RMC no enum era ni expresa exhaustivamente los derechos específicos que pueden ser invocados con arreglo a esta disposición, sino que destaca un e spectro amplio de der echos en que puede basarse una oposición contra una solicitud de marca comunitaria. Por lo tanto, puede considerarse que el artículo 8, apartado 4, del RMC es una «cláusula residual» general para las oposiciones basadas en marcas no registradas o en otros signos utilizados en e l tráfico económico.
No obstante, el amplio ámbito de aplicación de los derechos anteriores que pueden tomarse como base en los procedimientos de oposición con arreglo al artículo 8, apartado 4, del RMC está sometido a una serie de requisitos restrictivos. Estos derechos deben conferir un derecho de ejercicio al titular, deben tener un alcance no únicamente local, deben quedar protegidos por el Derecho nacional que regula la utilización de una marca posterior y los derechos debieron haberse adquirido con anterioridad a l a presentación de l a solicitud de marca comunitaria con arreglo al derecho del Estado miembro que regule dicho signo.
El requisito de «alcance no únicamente local» pretende restringir el número de posibles derechos opuestos no registrados, por lo tanto, evitar el riesgo de colapso o de parálisis del sistema de marcas por sobrecarga con derechos opuestos que puedan ser relativamente insignificantes.
El requisito de «p rotección nacional» se considera necesario puesto que es fácil identificar los derechos nacionales no registrados y su protección no está armonizada a escala de la UE. Por consiguiente, solo el Derecho nacional que regula los signos anteriores podrá definir el alcance de su protección.
Mientras que los requisitos de «u so en el tráfico económico» y «utilización cuyo alcance no es únicamente local» deben interpretarse en el contexto del Derecho comunitario (criterio europeo), la legislación nacional es aplicable para determinar si un derecho particular está reconocido y protegido en la legislación nacional, si su titular tiene derecho a prohibir el uso de una marca posterior y qué condiciones deben cumplirse con arreglo al Derecho nacional para ejercer un derecho de forma satisfactoria.
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Como consecuencia de esta dualidad, la Oficina debe aplicar tanto las disposiciones pertinentes del RMC como el Derecho nacional que regula el derecho opuesto anterior. A la vista del examen doble que debe realizarse con arreglo al artículo 8, apartado 4, del RMC esta disposición, como vínculo entre el Derecho comunitario y nacional, muestra una naturaleza algo «híbrida».
3 Requisitos del artículo 8, apartado 4, del RMC
Los requisitos para invocar adecuadamente el artículo 8, apartado 4, del RMC son:
a) el oponente debe ser el beneficiario de la marca no registrada o de otro signo utilizado en el tráfico económico;
b) utilización cuyo alcance no es únicamente local;
c) adquisición con anterioridad a l a presentación de l a solicitud de m arca comunitaria con arreglo al derecho del Estado miembro que regule dicho signo;
d) derecho a prohibir la utilización de una marca posterior con arreglo al derecho del Estado miembro que regule dicho signo.
3.1 Derecho directo que se confiere al oponente
Los sistemas legales de los Estados miembros de la UE establecen diversas formas de evitar el uso de marcas posteriores basándose en signos anteriores utilizados en el tráfico económico. Sin embargo, para poder quedar incluido dentro de lo establecido en el artículo 8, apartado 4, del RMC, el derecho anterior debe estar conferido a un titular en particular o a una clase determinada de usuario que tiene un interés de cuasi titularidad sobre el mismo, en el sentido de que puede excluir o evitar que otras personas utilicen el signo de forma ilícita. Esto se debe a que el artículo 8, apartado 4, del RMC es un motivo «relativo» de oposición y el artículo 41, apartado 1, letra c), del RMC establece que solo podrán presentar oposición los titulares de las marcas o signos anteriores contemplados en el artículo 8, apartado 4, del RMC y las personas autorizadas en v irtud del correspondiente Derecho nacional para ejercer dichos derechos. Dicho de otro modo, únicamente las personas que tienen un interés directo reconocido por la ley en iniciar un p rocedimiento tendrán derecho a presentar una oposición, con arreglo al artículo 8, apartado 4, del RMC.
Por ejemplo, en algunos Estados miembros, puede prohibirse el uso de un s igno si deriva de prácticas comerciales desleales y engañosas. En dichos casos, si el derecho anterior carece de «calidad de propiedad», no entrará dentro del artículo 8, apartado 4, del RMC. No importa si estos signos están protegidos contra un uso desleal o engañoso con arreglo a l a legislación de marcas, la legislación relativa a l a competencia desleal o cualquier otro conjunto de disposiciones. Un ejemplo de esto es el Reglamento alemán del uso de la indicación geográfica «Solingen» para productos específicos (tijeras de cuchillería, cuchillos, etc.). Esta normativa no s ería una bas e adecuada para una op osición contemplada en el artículo 8, apartado 4, del RMC porque el signo en c uestión no tiene condición de propiedad y, como tal, posee un carácter más público.
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Derecho anterior Nº de asunto
«A.O. CUBA» R 0051/2007-4
Cuando el Derecho nacional no confiere a una entidad jurídica (ya sea pública o privada) un derecho subjetivo que permita prohibir el uso de una marca posterior, no se cumple el «requisito de propiedad». La Sala de Recurso consideró que la normativa española que hizo efectivo el acuerdo bilateral entre España y Cuba de protección de la denominación de origen «Cuba» no era suficiente para conceder dicho derecho subjetivo (apartados 23 a 27).
A la hora de valorar la cualidad de propiedad de un signo utilizado en el tráfico económico, la Oficina debe analizar precisamente si el oponente ha adquirido derechos sobre el signo «con arreglo a la legislación nacional» (sentencia de 18/01/2012, en el asunto T-304/09, «Basmati»).
3.2 Tipos de derechos contemplados en el artículo 8, apartado 4, del RMC
3.2.1 Introducción
Al evaluar qué tipo de derechos de propiedad intelectual puede ser o no invocado con arreglo al artículo 8, apartado 4, del RMC, resulta aplicable el criterio europeo. Esta distinción resulta del régimen del RMC y, en particular, de la distinción que se hace de los tipos de s ignos anteriores en l os que puede basarse la oposición con arreglo al artículo 8, apartado 4, del RMC y los tipos de otros derechos en que puede basarse la nulidad con arreglo al artículo 53, apartado 2, del RMC. Mientras que el artículo 8, apartado 4, del RMC hace referencia a los signos («marcas no registradas u [...] otro signo»), el artículo 53, apartado 2, del RMC hace referencia a un conjunto de derechos más amplio: (a) un derecho al nombre; (b) un derecho a la imagen; (c) un derecho de autor; y (d) un derecho de propiedad intelectual.
Por lo tanto, aunque los signos contemplados en el artículo 8, apartado 4, del RMC quedan comprendidos dentro de la categoría amplia de «de rechos de propiedad industrial», no todos los derechos de propiedad industrial son «signos» a efectos de dicho artículo. Dado que esta distinción se incluye en el RMC, la clasificación de un derecho con arreglo al correspondiente derecho nacional no r esulta decisiva, y es irrelevante si la legislación nacional que rige dicho signo o de rechos de propiedad industrial trata a ambos tipos de derechos como uno y en la misma legislación.
Los tipos de derechos contemplados en el artículo 8, apartado 4, del RMC son:
• «marcas no registradas»; y • «otros signos utilizados en el tráfico económico», que comprenden:
○ identificadores comerciales como:
— nombres comerciales; — denominaciones sociales; — rótulos de establecimiento; — títulos de publicaciones u obras análogas; — nombres de dominio;
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○ indicaciones geográficas.
La mayoría de i dentificadores comerciales que entran dentro de la categoría de derechos anteriores con arreglo al artículo 8, apartado 4, del RMC serán signos no registrados. Sin embargo, el hecho de que un signo esté también registrado de conformidad con los requisitos del correspondiente derecho nacional no impide que pueda ser invocado con arreglo al artículo 8, apartado 4, del RMC.
3.2.2 Marcas no registradas
Las marcas no registradas basadas en el uso existen en una serie de E stados miembros1 (véase el cuadro del final del documento a modo de visión general) y son signos que indican el origen comercial de un producto o servicio. Por lo tanto, hay signos que funcionan como una marca. Las normas y los requisitos por los que se rige la adquisición de der echos, con arreglo al correspondiente Derecho nacional, varían desde el mero uso hasta el uso que da lugar al renombre. El alcance de su protección no es uniforme, aunque por lo general es bastante parecido al alcance de protección de las marcas registradas en virtud de las disposiciones del RMC.
El artículo 8, apartado 4, del RMC refleja la existencia de di chos derechos en l os Estados miembros y concede a los titulares de marcas no registradas la posibilidad de evitar el registro de una solicitud de m arca comunitaria en l os casos en que logren evitar el uso de dicha solicitud con arreglo a la correspondiente legislación nacional, si se demuestra que se cumplen las condiciones establecidas en el derecho nacional para prohibir el uso de la marca comunitaria posterior, así como el resto de requisitos del artículo 8, apartado 4, del RMC.
Ejemplo: la resolución R 1529/2010-1 «Gladiator», en que se invocó una marca no registrada en la República Checa.
3.2.3 Otros identificadores comerciales
La categoría «otros signos utilizados en el tráfico económico» es una categoría amplia que no está contemplada en el artículo 8, apartado 4, del RMC. Para que dichos signos queden comprendidos dentro del ámbito del artículo 8, apartado 4, del RMC deberán tener la función de identificar comercialmente a una empresa (identificadores comerciales) o un origen geográfico (indicaciones geográficas). El artículo 8, apartado 4, del RMC no comprende otros tipos de derechos de propiedad intelectual que no son «signos comerciales», tales como patentes, derechos de autor o derechos sobre un dibujo o modelo que no tienen una función primordial de identificación aunque protegen las realizaciones técnicas, las creaciones artísticas o la «apariencia» de algo.
A continuación, se indican algunos ejemplos de as untos que tratan sobre si un derecho es un «signo», a efectos del artículo 8, apartado 4, del RMC.
1 Benelux, Chipre, Croacia, Eslovenia, España, Estonia, Francia, Lituania, Polonia, y Rumanía, no ofrecen protección a las marcas no registradas (aunque, en algunas jurisdicciones, estas marcas se consideran notoriamente conocidas con arreglo al artículo 6 bis del Convenio de París).
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Derecho anterior Nº de asunto
«JOSE PADILLA» (derechos de autor)
T-255/08
El Tribunal consideró que el derecho de autor no puede constituir un «signo utilizado en el tráfico económico», en el sentido del artículo 8, apartado 4, del RMC. En efecto, del sistema del artículo 53 del RMC se desprende que un derecho de autor no es un signo de esta índole. El artículo 53, apartado 1, letra c), del RMC establece que una marca comunitaria se declarará nula cuando exista un derecho anterior contemplado en el artículo 8, apartado 4, del RMC y se cumplan las condiciones enunciadas en dicho apartado. El artículo 53, apartado 2, letra c), del RMC dispone que una marca comunitaria también se declarará nula si su uso puede prohibirse en virtud de «otro» derecho anterior y en particular de un derecho de autor. De ello se sigue que el derecho de autor no forma parte de los derechos anteriores a que se refiere el artículo 8, apartado 4, del RMC.
Derecho anterior Nº de asunto
«Dr. No» (derechos de autor) T-435/05
Del artículo 8, apartado 4, en relación con el artículo 53, apartado 2, del RMC resulta que la protección prevista por el derecho de autor no puede invocarse en el marco de un procedimiento de oposición, sino únicamente en el marco de un pr ocedimiento de anulación de l a marca comunitaria de que s e trate (apartado 41).
Derechos anteriores Nº de asunto
y
(dibujos y modelos comunitarios)
B 1 530 875
Los dibujos y modelos son un tipo de propiedad intelectual que abordan los aspectos estéticos u ornamentales de la apariencia de un artículo. Los dibujos y modelos se considerarán el resultado de una obra creativa que necesita protección contra su reproducción o imitación no autorizada por parte de terceros para asegurar un rendimiento justo de la inversión. Están protegidos como propiedad intelectual aunque no son identificadores comerciales ni signos comerciales. Por lo tanto, los dibujos y modelos no están definidos como signos utilizados en el tráfico económico a efectos del artículo 8, apartado 4, del RMC.
3.2.3.1 Nombres comerciales
Los nombres comerciales son los nombres que utilizan las empresas para identificarse, a diferencia de las marcas, que designan los productos o servicios producidos o comercializados por una empresa en particular.
Un nombre comercial no necesariamente tiene que ser idéntico a la razón social o a la denominación social inscrita en un registro mercantil o registro similar como marcas que comprenden otros nombres no registrados como un s igno que identifica y distingue a un establecimiento concreto. Además, los nombres comerciales están protegidos, como derechos exclusivos, en todos los Estados miembros.
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A tenor de lo dispuesto en el artículo 8 del Convenio de París, los nombres comerciales están protegidos sin ninguna obligación de registro. En caso de que el Derecho nacional exija el registro de los nombres comerciales nacionales, la disposición correspondiente queda sin aplicación en virtud del artículo 8 del Convenio de París en lo relativo a los nombres comerciales cuyos titulares sean nacionales de otra parte contratante del Convenio de P arís. Lo anterior se aplica asimismo a los nacionales de un Estado parte en el Acuerdo por el que se crea la OMC.
En cuanto a la aplicación del artículo 8, apartado 4, del RMC a los nombres comerciales, si el nombre comercial se invoca sobre la base del Derecho de un Estado miembro en el cual el registro es un requisito para el ejercicio de los derechos sobre un nombre comercial, la Oficina aplicará este requisito cuando el Estado miembro y la nacionalidad del oponente coincidan, y no lo aplicará en los demás casos ya que ello sería contrario al artículo 8 del Convenio de París.
Ejemplos: la resolución R 1714/2010-4 en la que se invocó el nombre comercial español «JAMÓN DE HUELVA».
3.2.3.2 Denominaciones sociales
Una denominación social o una razón social es el nombre oficial de una empresa, en la mayoría de los casos inscrita en el registro mercantil nacional correspondiente.
El artículo 8, apartado 4, del RMC exige la prueba del uso real, incluso en el supuesto de que el Derecho nacional confiera al titular de dicho nombre comercial el derecho a prohibir el uso de una marca posterior sobre la única base del registro. En cambio, si de conformidad con el Derecho nacional, el registro es un r equisito previo de protección, deberá demostrarse también el registro, pues de lo contrario no habría un derecho nacional susceptible de ser invocado por el oponente.
Ejemplos: sentencia de 14/09/2011, en el asunto T-485/07, «O-live (figurativa)» en que se invocó el nombre comercial español «OLIVE LINE» y la resolución R 0021/2011-1 en que se invocó la denominación social «MARIONNAUD PERFUMERIES».
3.2.3.3 Nombres de dominio
Un nombre de do minio es una c ombinación de c aracteres tipográficos que corresponden a una o varias direcciones IP numéricas utilizadas para identificar una página web particular o conjunto de páginas web en Internet. Como tal, un nombre de dominio funciona como «dirección» para hacer referencia a una ubicación específica en Internet (http://oami.europa.eu) o una dirección de correo electrónico (@oami.europa.eu).
Los nombres de dominio se registran en organizaciones y entidades comerciales denominadas «registradores de nombres de dominio». Aunque un nombre de dominio es único y puede ser un activo comercial valioso, el registro de nombre de dominio per se no constituye un derecho de p ropiedad intelectual. Estos registros no crean una situación de de recho de exclusividad. En su lugar, en es te contexto «registro» se refiere a un acuerdo contractual entre el titular del nombre de dominio y el registrador del nombre de dominio.
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Sin embargo, el uso de un no mbre de do minio puede da r lugar a de rechos en que puede basarse la oposición con arreglo al artículo 8, apartado 4, del RMC. Esto puede ocurrir si el uso de un nombre de dominio implica que queda protegido por una marca no registrada o un identificador comercial, en virtud del Derecho nacional aplicable.
Ejemplos: la resolución R 0275/2011-1 en la que se invocó los derechos basados en el uso de un nombre de dominio alemán «lucky-pet.de» y la resolución B 1 719 379 en la cual se invocaron derechos basados en el uso de un nombre de dominio francés «Helloresto.fr».
3.2.3.4 Títulos
Los títulos de revistas y otras publicaciones, o los títulos de categorías de obr as similares tales como películas, series de televisión, etc., quedan comprendidos en el artículo 8, apartado 4, del RMC únicamente si en v irtud de l a legislación nacional aplicable están protegidos como identificadores comerciales.
El hecho de que el derecho de autor de un título de la obra pueda invocarse con respecto al Derecho nacional correspondiente contra una marca posterior es irrelevante a e fectos del artículo 8, apartado 4, del RMC. Tal como ha quedado establecido anteriormente, mientras que un derecho de un derecho de autor podrá utilizarse para invalidar una marca comunitaria, de conformidad con el artículo 53, apartado 2, del RMC, únicamente cuando el título posee una función «identificadora» y actúa como identificador comercial, quedará comprendido en el ámbito de aplicación del artículo 8, apartado 4, del RMC. Por lo tanto, para que dichos signos puedan ser invocados en v irtud del artículo 8, apartado 4, del RMC en el marco de un procedimiento de oposición, el Derecho nacional debe prever una protección independiente de la reconocida por el derecho de autor (sentencia de 30/06/2009, en el asunto T-435/05, «Dr. No», apartados 41 a 43.)
Tal como ocurre con todos los derechos contemplados en el artículo 8, apartado 4, el título debe haber sido utilizado en el tráfico económico. Lo anterior requerirá, por regla general, que la obra portadora del título haya sido comercializada. Si el título guarda relación con un servicio (como un programa de televisión) es preciso que el servicio se haya puesto a disposición del público. No obstante, habrá circunstancias en que un uso preparatorio en la publicidad será suficiente para generar derechos, y en que esa publicidad constituirá un «uso» a efectos del artículo 8, apartado 4, del RMC. En todos los casos, es necesario que el título haya sido utilizado como indicador del origen comercial de l os productos y servicios de q ue se trate. Cuando un t ítulo se utiliza únicamente para indicar el origen artístico de la obra, dicho uso se encuentra fuera de la esfera del artículo 8, apartado 4, del RMC (sentencia de 30/06/2009, en el asunto T-435/05, «Dr. No», apartados 25 a 31).
Ejemplo: la resolución R 0181/2011-1 en la que se invocó el título de revista «ART».
3.2.4 Indicaciones geográficas
Las indicaciones geográficas se utilizan para señalar que ciertos productos proceden de una región o localidad determinadas. Se puede consultar información general sobre las indicaciones geográficas en las Directrices, Parte B, Examen, Sección 4, Motivos de denegación absolutos y Marcas comunitarias colectivas, apartado 2.09 en relación
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con el artículo 7, apartado 1, letra j), del RMC, y apartado 2.10 en relación con el artículo 7, apartado 1, letra k), del RMC.
Dependiendo del contexto, como se indica más adelante, el término «indicación geográfica protegida» (IGP) puede abarcar expresiones como «denominaciones de origen» y otros términos equivalentes, y en este capítulo se utiliza para referirse a las IGP en general.
Las IGP están protegidas de diversas maneras en la UE (derecho nacional, derecho comunitario, acuerdos internacionales) y comprenden distintas áreas de productos (como los productos alimenticios o artesanales).
En esta sección se analizan los tipos de IGP que pueden c onstituir un motivo de oposición válido al amparo del artículo 8, apartado 4, del RMC.
3.2.4.1 Derechos anteriores derivados de la legislación de la UE
En el ámbito de la UE, se concede protección a las IGP para las siguientes categorías de productos:
1. determinados productos alimenticios y productos agrícolas no alimenticios (en virtud del Reglamento n° 1151/2012 (2), en lo sucesivo, «Reglamento sobre productos alimenticios»);
2. vinos y vinos espumosos (en virtud del Reglamento n° 1308/2013 (3), en lo sucesivo, el «Reglamento sobre vinos»); y
3. bebidas espirituosas (en virtud del Reglamento n° 110/2008 (4), en lo sucesivo, el «Reglamento sobre bebidas espirituosas»).
La naturaleza de las indicaciones contempladas es a grandes rasgos la misma, si bien la definición exacta de los términos difiere de una no rma a otra. Los derechos anteriores registrados o solicitados como IGP en virtud de los Reglamentos mencionados (que pueden incluso comprender IGP de terceros países) pueden ser un «signo utilizado en el tráfico económico» en el sentido del artículo 8, apartado 4, del RMC y constituir una c ausa de opos ición válida, por cuanto permiten a s u titular impedir el uso de una marca posterior. Su capacidad de impedir el uso está regulada en las disposiciones pertinentes de los Reglamentos citados anteriormente (artículo 13, artículo 103, y artículo 16, respectivamente, de los Reglamentos sobre productos alimenticios, vinos y bebidas espirituosas). En este contexto, es importante diferenciar estas últimas disposiciones, que impiden el uso, de las disposiciones que impiden el registro (5) de una marca y que no son un motivo de oposición al amparo del artículo 8, apartado 4, del RMC.
2 Sustituyó y derogó el Reglamento n° 510/2006, que a su vez había sustituido y derogado el Reglamento n°2081/92. 3 Sustituyó y derogó el Reglamento nº 1234/2007, que a su vez había incorporado, mediante la codificación efectuada por el Reglamento n° 491/2009, el Reglamento n° 479/2008, que fue derogado simultáneamente. 4 Sustituyó y derogó el Reglamento n° 1576/89. 5 Artículos 14 y 102, y 23, respectivamente, de l os Reglamentos sobre productos alimenticios, vinos y bebidas espirituosas.
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Para sustanciar su derecho, el oponente deberá presentar a la Oficina los hechos y pruebas relativos a l a existencia de s u derecho. No basta con presentar un simple extracto de la correspondiente base de datos online de la UE (DOOR, E-Bacchus o E- Spirit-Drinks) o, en el caso de las bebidas espirituosas, un extracto del anexo III del Reglamento sobre bebidas espirituosas, pues no contienen información suficiente para conocer todos los aspectos pertinentes del derecho anterior (por ejemplo, derecho del oponente o productos protegidos por las IGP).
El oponente deberá en cualquier caso presentar a la Oficina copias de la publicación y del registro de la IGP en el Diario Oficial y, si estos documentos no contuvieran información sobre el derecho del oponente, otros documentos que prueben su derecho a formular la oposición como titular o persona autorizada, en virtud del derecho nacional aplicable, a ejercer ese derecho (artículo 41, apartado 1, letra c), del RMC y regla 19, apartado 2, del REMC). Véase en este sentido la resolución de 17/10/2013, R 1825/2012-4, «Dresdner StriezelGluhwein/Desdner Stollen», apartado 37.
El régimen de la UE de protección de las IGP de productos alimenticios, vinos y bebidas espirituosas reviste carácter exhaustivo y reemplaza a l a protección nacional de dichos productos; tal y como se desprende de las conclusiones del Tribunal de Justicia en la sentencia de 08/09/2009, en el asunto C-478/07, «BUD», apartados 95 a 129. El Tribunal declaró que la finalidad del Reglamento n° 510/2006 (predecesor del actual Reglamento sobre productos alimenticios) era ofrecer un régimen uniforme y exclusivo de pr otección de l as IGP para productos agrícolas y alimenticios que reemplazara a las legislaciones nacionales en relación con esos productos (6). Aunque el Tribunal de Justicia no se ha p ronunciado específicamente sobre el carácter exhaustivo de los Reglamentos sobre vinos y bebidas espirituosas, han de aplicarse los mismos principios, ya que contienen disposiciones muy similares a las del Reglamento sobre productos alimenticios y persiguen los mismos fines para sus respectivos productos.
3.2.4.2 Derechos anteriores derivados de la legislación de los Estados miembros
Algunas IGP derivadas del Derecho nacional de los Estados miembros pueden constituir un motivo de oposición en virtud del artículo 8, apartado 4, del RMC. Sin embargo, por las razones expuestas, en el ámbito de los productos alimenticios, vinos y bebidas espirituosas, la protección en el ámbito de la UE es de carácter exhaustivo, lo que significa que la oposición al amparo del artículo 8, apartado 4, del RMC no puede basarse en derechos nacionales en estas áreas. Ello se debe a que el régimen de la UE de protección del que forman parte los citados Reglamentos anula y reemplaza a la protección nacional de l as IGP de pr oductos alimenticios, vinos y bebidas espirituosas.
Por consiguiente, las IGP de determinados productos alimenticios ( 7 ) y algunos productos agrícolas no al imenticios 8 (indicados en el anexo I del Tratado de Funcionamiento de l a Unión Europea (TFUE) y en el anexo I del Reglamento sobre
6 Para más información, véanse las Directrices, Parte B, Examen, Sección 4, Motivos de denegación absolutos y Marcas comunitarias colectivas, apartado 2.09 en relación con el artículo 7, apartado 1, letra j), del RMC y apartado 2.10 en relación con el artículo 7, apartado 1, letra k), del RMC. 7 Por ejemplo, carne, queso, productos de pastelería, aceites comestibles, verduras, frutas, bebidas a base de extractos de plantas, vinagre (incluido el vinagre de vino), tabacos no manufacturados, cerveza y dulces. 8 Por ejemplo, lana, cuero y aceites esenciales.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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productos alimenticios), vinos y productos vitícolas (9) (indicados en el anexo VII, parte 2 del Reglamento sobre vinos) y bebidas espirituosas (10) (indicados en el anexo II del Reglamento sobre bebidas espirituosas) que están protegidas por las legislaciones nacionales no constituyen un motivo válido de opos ición con arreglo al artículo 8, apartado 4, del RMC. Respecto de estos últimos productos, el oponente tiene que invocar la legislación comunitaria pertinente en la notificación de oposición.
No obstante, cuando no exista una protección de la UE uniforme para una categoría de productos (por ejemplo, los productos artesanales), las IGP protegidas en virtud de las legislaciones nacionales pueden servir de base para presentar una oposición con arreglo al artículo 8, apartado 4, del RMC (por ejemplo, ČESKÝ PORCELÁN/FINE BOHEMIAN CHINA respecto a la cristalería).
3.2.4.3 Derechos anteriores derivados de acuerdos internacionales
Para que prospere una oposición conforme al artículo 8, apartado 4, del RMC basada en un derecho derivado de cualquier acuerdo internacional, las disposiciones del acuerdo internacional habrán de ser directamente aplicables y permitir al titular de una IGP emprender acciones judiciales directas para prohibir el uso de una marca posterior.
Por lo que respecta a este último punto, los acuerdos internacionales no siempre tienen aplicabilidad inmediata. Depende de las características del propio acuerdo y de cómo hayan sido interpretadas en la jurisdicción correspondiente. Por ejemplo, la Oficina considera que las disposiciones del Arreglo de Lisboa (en particular, sus artículos 3 y 8) no son inmediatamente aplicables. Como se indica expresamente en el artículo 8 del Arreglo de Lisboa, corresponde a cada legislación nacional determinar qué acciones legales pueden ejercitarse, el alcance de esas acciones y si incluyen la posibilidad de q ue el titular de una denominación de origen impida el uso de una marca posterior. Por lo tanto, en tales casos deberá invocarse la legislación nacional aplicable, ya que se trata de un elemento necesario para que el oponente demuestre que la IGP en cuestión puede impedir el uso de la marca posterior y que el oponente está autorizado para ejercer ese derecho en virtud de la legislación aplicable.
Acuerdos internacionales celebrados por la UE
Las IGP derivadas de acuerdos entre la UE y terceros países pueden invocarse con arreglo al artículo 8, apartado 4, del RMC si las disposiciones de esos acuerdos atribuyen la IGP a un beneficiario en par ticular o a una c lase determinada de usuarios que tienen el derecho a interponer una acción directa (11).
9 Por ejemplo, vino, vino espumoso, vino de licor o mosto, pero no el vinagre de vino. 10 Por ejemplo, bebida espirituosa de cereales, aguardiente de vino, aguardiente de fruta, brandy, licores, ron, whisky, ginebra. 11 Las IGP de terceros países también pueden registrarse en la UE con arreglo a los Reglamentos sobre productos alimenticios, vinos y bebidas espirituosas.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Acuerdos internacionales celebrados por los Estados miembros, incluido el Arreglo de Lisboa (12)
Por las razones expuestas en el apartado 3.2.4.2 supra, una IGP protegida en virtud de un acuerdo internacional celebrado por Estados miembros (ya sea entre Estados miembros o con terceros países) no podrá invocarse como derecho anterior con arreglo al artículo 8, apartado 4, del RMC si contraviene el carácter exhaustivo del Derecho de l a UE en l os ámbitos pertinentes (actualmente productos alimenticios, vinos y bebidas espirituosas).
En la sentencia C-478/07 «BUD», el Tribunal analizó el carácter exhaustivo de l a legislación de la UE en lo que respecta a las IGP originarias de los Estados miembros. La Oficina interpreta que ese principio habrá de aplicarse también a fortiori a las IGP de terceros países en las categorías de productos correspondientes que disfruten de protección en el territorio de un Estado miembro en virtud de un acuerdo internacional celebrado entre ese Estado miembro y un Estado no perteneciente a la UE (13).
Lo mismo cabe decir del Arreglo de Lisboa. El Arreglo crea un régimen de registro internacional y protección de las «denominaciones de origen» (artículo 2, apartado 1). La definición de «denominación de origen» de los productos alimenticios y bebidas recogida en el Arreglo es en gran medida equivalente a l a definición de es ta expresión ( 14 ) prevista en los Reglamentos de la UE. Por consiguiente, las denominaciones de origen protegidas en un Estado miembro conforme al Arreglo de Lisboa no pueden servir de base para formular una oposición al amparo del artículo 8, apartado 4, del RMC.
Las únicas excepciones a este respecto son las siguientes:
• Los acuerdos internacionales que comprendan IGP no relacionadas con productos alimenticios, vinos ni bebidas espirituosas.
• Los acuerdos internacionales con terceros países celebrados por un Estado miembro antes de su adhesión a la UE. La razón es que deben respetarse las obligaciones derivadas de un ac uerdo internacional celebrado por un Estado miembro antes de su adhesión a l a UE. No obstante, los Estados miembros están obligados a adoptar todas las medidas adecuadas para eliminar cualquier incompatibilidad entre los acuerdos celebrados antes de su adhesión y el Tratado (véase el artículo 307 del Tratado constitutivo de la Comunidad Europea, actualmente artículo 351 del TFUE, como lo interpretó el Tribunal de Justicia en su sentencia de 18/11/2003, en el asunto C-216/01, «BUD», apartados 168 a 172).
• Los acuerdos internacionales con un tercer país celebrados por un Estado miembro después de su adhesión a la UE, pero antes de la entrada en vigor del
12 Algunos Estados miembros (Bulgaria, República Checa, Eslovaquia, Francia, Hungría, Italia y Portugal) son partes en el Arreglo de Lisboa relativo a la Protección de las Denominaciones de Origen y su Registro Internacional de 1958 (revisado en Estocolmo en 1967 y modificado el 28/09/1979). La Unión Europea no es parte signataria del Arreglo de Lisboa. 13 En el que la UE no sea parte contratante. 14 Este término se define y aclara en las Directrices, Parte B, Examen, Sección 4, Motivos de denegación absolutos y Marcas comunitarias colectivas, apartado 2.09 en relación con el artículo 7, apartado 1, letra j), del RMC y apartado 2.10 en relación con el artículo 7, apartado 1, letra k), del RMC.
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régimen uniforme de protección de la UE en la categoría de productos de que se trate.
Dado que los Estados miembros tienen la obligación de eliminar las incompatibilidades con la legislación de la UE, la Oficina aplicará las dos últimas excepciones (que se refieren exclusivamente a IGP de terceros países en los ámbitos de productos alimenticios, vinos o bebidas espirituosas) únicamente cuando e l oponente haga referencia expresa a la excepción y la sustente mediante una línea argumental coherente y con pr uebas pertinentes (en particular, en relación con la fecha de entrada en vigor del acuerdo internacional citado en el Estado miembro de la UE en el que se reivindique la protección y su validez continuada). Las alegaciones generales formuladas por el oponente (como citar simplemente el acuerdo internacional pertinente) no bastarán por sí solas para que la Oficina considere aplicable una de las dos últimas excepciones.
3.2.4.4 Alcance de la protección de las IGP
La capacidad de las IGP de impedir el uso se rige por las disposiciones pertinentes de los Reglamentos de la UE (artículos 13, 103, y 16, respectivamente, de los Reglamentos sobre productos alimenticios, vinos y bebidas espirituosas). A este respecto, es importante diferenciar estas últimas disposiciones que impiden el uso de las disposiciones que impiden el registro 15 de una marca y que no constituyen un m otivo de oposición con a rreglo al artículo 8, apartado 4, del RMC16. Por consiguiente, conforme al artículo 8, apartado 4, del RMC, una IGP podrá prevalecer si se cumplen las condiciones establecidas en las disposiciones que prohíben el uso, a saber:
• la solicitud de marca comunitaria impugnada consiste exclusivamente en la IGP completa o añade otras palabras o elementos figurativos (uso directo o indirecto) en el caso de productos comparables o, aun tratándose de productos no comparables, si el uso de la IGP se aprovecha del renombre del nombre del producto protegido (17);
• la solicitud de marca comunitaria impugnada contiene o consiste en una imitación o una evocación de la IGP (18);
• otra indicación o práctica que pudiera inducir a error (19).
Puede consultarse información detallada sobre el alcance de la protección de las IGP con arreglo a la legislación de la UE en las Directrices, Parte B, Examen, Sección 4, Motivos de denegación absolutos y Marcas comunitarias colectivas, apartado 2.09 en relación con el artículo 7, apartado 1, letra j), del RMC y apartado 2.10 en relación con
15 Artículos 14, 102 y 23, respectivamente, de los Reglamentos sobre productos alimenticios, vinos y bebidas espirituosas. 16 Véase, a este respecto, la sentencia de 12/06/2007, en los asuntos acumulados T-60/04 a 64/04, «Bud», apartado 78. 17 Artículo 13, apartado 1, letra a), artículo 103, apartado 2, letra a), y artículo 16, apartado 1, letra a), respectivamente, de los Reglamentos sobre productos alimenticios, vinos y bebidas espirituosas. 18 Artículo 13, apartado 1, letra b), artículo 103, apartado 2, letra b), y artículo 16, apartado 1, letra b), respectivamente, de los Reglamentos sobre productos alimenticios, vinos y bebidas espirituosas. 19 Artículo 13, apartado 1, letras c) y d), artículo 103, apartado 2, letras c) y d), y artículo 16, apartado 1, letras c) y d), respectivamente, de los Reglamentos sobre productos alimenticios, vinos y bebidas espirituosas.
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el artículo 7, apartado 1, letra k), del RMC (p.ej. las definiciones de uso directo, productos comparables o evocación).
Las disposiciones de los Reglamentos de la UE que impiden la utilización prevén situaciones en las que puede invocarse una IGP frente a productos o servicios que no necesariamente queden comprendidos en el ámbito de l os productos y servicios que justifican una objeción ex officio en virtud de motivos de denegación absolutos, con sujeción a las condiciones de las disposiciones pertinentes de l os Reglamentos comunitarios correspondientes. Por ejemplo, con arreglo al artículo 13, apartado 1, letra a), artículo 103, apartado 2, letra a), inciso (ii), y artículo 16, letra a), respectivamente, de los Reglamentos sobre productos alimenticios, vinos y bebidas espirituosas, una IGP con renombre podrá invocarse frente a productos y servicios que no justificarían ninguna objeción ex officio en virtud de los motivos de denegación absolutos.
El alcance de la protección de las IGP comprendidas en el ámbito de protección de otros Reglamentos distintos de los mencionados Reglamentos de la UE dependerá de las disposiciones pertinentes.
No obstante, tanto al amparo de la legislación de la UE como de la nacional, el alcance de la protección de l as IGP no puede ex ceder de l o necesario para garantizar la función de l a IGP, que es designar el origen geográfico de l os productos y l as cualidades particulares que les son propias. A diferencia de otros signos, las IGP no se utilizan para indicar el origen comercial de los productos ni conceden protección alguna a este respecto. Por consiguiente, cuando la especificación de una solicitud de marca comunitaria se limite únicamente a los productos que se ajusten a la especificación de la IGP protegida pertinente, la función de esa IGP estará garantizada en relación con esos productos, ya que la solicitud de marca comunitaria sólo abarcará productos con ese concreto origen geográfico y las cualidades especiales asociadas con él. En consecuencia, no puede prosperar la oposición a una solicitud de marca comunitaria que haya sido limitada debidamente. Véase a este respecto el artículo 12, apartado 1, del Reglamento sobre productos alimenticios o el artículo 103, apartado 1, del Reglamento sobre vinos.
Cuando se invoca una IGP en virtud del artículo 8, apartado 4, del RMC, al igual que cualquiera de los demás signos previstos en este artículo, el oponente deberá probar que ese signo se utiliza en el tráfico económico con un alcance no únicamente local. Esa utilización ha de realizarse conforme a la función esencial de este tipo de signos, que es garantizar a los consumidores el origen geográfico de los productos y las cualidades particulares que les son propias, pero también ha de demostrarse que el signo se utilizaba en el tráfico económico, es decir, como elemento distintivo que permite identificar una actividad económica ejercida por su titular (véase la sentencia de 29/03/2011, en el asunto C-96/09 P, «BUD», apartados 147 y 149, respectivamente). Así pues, la presentación de documentos en los que se mencione una IGP exclusivamente en un c ontexto no relacionado con el tráfico económico no se considera suficiente a efectos del artículo 8, apartado 4, del RMC.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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3.3 Requisitos del uso
Para poder invocar con éxito el artículo 8, apartado 4, del RMC en los procedimientos de oposición, es necesario que los derechos anteriores hayan sido utilizados. Existen dos criterios distintos de requisitos del uso que deben tenerse en cuenta:
• un criterio nacional • un criterio europeo.
Sin embargo, los dos criterios de requisitos de uso se solapan claramente, no deben contemplarse de forma aislada sino que deben evaluarse de f orma conjunta. Lo anterior es de aplicación, en particular, a la «intensidad del uso» con arreglo al criterio nacional y al «uso en el tráfico económico de alcance no únicamente local», con arreglo al criterio europeo.
3.3.1 Criterio nacional
El criterio nacional es pertinente ya que define el ámbito de protección de los derechos que no suelen ser fácilmente identificables, sobre todo porque su protección no está armonizada a escala de la UE (véase el apartado 3.4 infra sobre el alcance de la protección). Este criterio determina la existencia del derecho nacional y las condiciones de protección. Para las marcas no registradas y los identificadores comerciales que no exigen registro, el uso constituye la única premisa fáctica que justifica la existencia del derecho, entre otras la comprobación del principio de s u existencia. El criterio nacional también especifica la intensidad del uso con arreglo al Derecho nacional correspondiente que puede variar desde un primer uso en el tráfico económico a un uso que exija su reconocimiento o renombre.
Por ejemplo, en D inamarca se adquiere un d erecho a una marca no registrada mediante el simple inicio del uso en su territorio.
En Alemania, sin embargo, se adquiere una marca no registrada a raíz del uso que ha hecho que el público destinatario la reconozca como marca («Verkehrsgeltung»). Con arreglo a la jurisprudencia, los signos distintivos exigen del 20 al 25% de reconocimiento mientras que los signos no distintivos deben adquirir un reconocimiento del 50% del público destinatario.
3.3.2 Criterio europeo: el uso en el tráfico económico de alcance no únicamente local
De conformidad con el artículo 8, apartado 4, del RMC, la existencia de una marca no registrada anterior o de otro signo proporciona motivos adecuados en que basar la oposición si el signo cumple, entre otros, las siguientes condiciones: debe ser un uso en el tráfico económico y el uso debe ser de alcance no únicamente local.
Los dos requisitos citados anteriormente resultan del propio tenor del artículo 8, apartado 4, del RMC y, por lo tanto, debe interpretarse a l a luz del Derecho comunitario. En efecto, el objeto común de los dos requisitos establecidos por el artículo 8, apartado 4, del RMC es limitar los conflictos entre los signos impidiendo que un derecho anterior que no tenga la suficiente entidad, es decir, que no sea importante
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ni significativo en el tráfico económico, pueda oponerse al registro de una nueva marca comunitaria. Tal facultad de oposición debe reservarse a los signos que estén efectiva y realmente presentes en el mercado pertinente (sentencia de 29 /03/2011, en el asunto C-96/09 P, «BUD», apartado 157).
3.3.2.1 Uso en el tráfico económico
El primer requisito con arreglo al artículo 8, apartado 4, del RMC es que el signo debe utilizarse en el tráfico económico.
El concepto de «uso en el tráfico económico» de c onformidad con el artículo 8, apartado 4, del RMC no es el mismo que el «uso efectivo», con arreglo al artículo 42, apartados 2 y 3, del RMC (sentencia de 30/09/2010, en el asunto T-534/08, «GRANUflex», apartados 24 a 27). Los objetivos y los requisitos relacionados con la prueba del uso de marcas nacionales o c omunitarias registradas son distintos de aquellos relacionados con la prueba del uso en el tráfico económico de los signos contemplados en el artículo 8, apartado 4, del RMC (sentencia de 09/07/2010, en el asunto T-430/08, «Grain Millers», apartado 26, y la sentencia de 29/03/2011, en el asunto C-96/09 P, «BUD», apartado 143). Por lo tanto, el uso debe interpretarse con arreglo al tipo concreto de derecho de que se trate.
El Tribunal de J usticia ha dec larado que la «utilización del signo en el tráfico económico» en el sentido del artículo 8, apartado 4, del RMC se refiere a la utilización del signo «en el ejercicio de una actividad comercial con ánimo de lucro y no en la esfera privada» (véanse las sentencias de 12/11/2002, en el asunto C-206/01, «Arsenal Football Club», apartado 40; de 25 /01/2007, en el asunto C-48/05, «Adam Opel», apartado 18; y de 11/09/2007, en el asunto C-17/06, «Céline», apartado 17).
Sin embargo, el Tribunal de J usticia también ha c onsiderado que las entregas realizadas a t ítulo gratuito pueden t enerse en cuenta al verificar el requisito de utilización en el tráfico económico del derecho anterior invocado, puesto que éstas pudieron realizarse en el ejercicio de una actividad comercial con ánimo de lucro como es la captación de nuevos mercados (sentencia de 29/03/2011, en el asunto C-96/09 P, «BUD», apartado 152).
En lo que atañe al periodo de ut ilización del signo de que se trate, el oponente deberá demostrar que tuvo lugar antes de la presentación de la solicitud de la marca comunitaria o de la fecha de prioridad, si procede (véase la sentencia de 29/03/2011, en el asunto C-96/09 P, «BUD», apartados 166 a168).
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Signo anterior Nº de asunto
BUD C-96/09 P
El Tribunal analizó si el uso que se produce exclusivamente o en gran parte entre la presentación de la solicitud de registro y su publicación era suficiente para cumplir con el requisito de uso. Una de las partes argumentó que sólo la adquisición de derecho, pero no su uso, debía producirse antes de la presentación de solicitud de la marca comunitaria. El Tribunal aplicó el mismo criterio de tiempo en cuanto a la adquisición de derecho y concluyó que el uso debía producirse antes de la presentación de la solicitud de registro. El Tribunal de Justifica consideró que «habida cuenta, en par ticular, del plazo significativo que puede transcurrir entre la presentación de la solicitud de registro y la publicación de ésta, la aplicación de este mismo criterio puede ser una mejor garantía de que el uso invocado del signo controvertido es un uso real y no una práctica cuya única finalidad sea la de impedir el registro de una nueva marca» (apartados 166 a 168).
En el caso de los signos no registrados, el uso debe ser continuado e ininterrumpido hasta la presentación de la oposición, ya que, de lo contrario, no existe ninguna seguridad de que l os derechos del signo no registrado no hayan caducado. En este contexto, la regla 19, apartado 2, letra d), del REMC establece de forma expresa que en el caso de que la oposición se base en e l artículo 8, apartado 4, del RMC, el oponente deberá aportar prueba de su adquisición, existencia continuada (la negrita es nuestra) y ámbito de protección de dicho derecho.
A continuación, se incluye un ej emplo de un asunto inter partes relacionado con un procedimiento de anulación. El razonamiento y las conclusiones también resultan de aplicación a las oposiciones, dado que el artículo 8, apartado 4, del RMC es un motivo que puede ser invocado tanto en la oposición como en la anulación:
Signo anterior Nº de asunto
«BAMBOLINA» (marca no registrada en una serie de Estados
miembros)
Resolución de anulación nº 3728 C (confirmada por la resolución R 1822/2010-2 de la
Sala de Recurso, y sentencia T-581/11)
Las pruebas demostraron el uso en el tráfico económico de una marca no registrada durante tres años, referido a los dos últimos años anteriores a la fecha de presentación de la solicitud de nulidad. La División de Anulación consideró que el signo no registrado anterior en que se basa una acción de nulidad debe estar en uso en el momento en que se presenta la solicitud. Dado que para estos signos el uso constituye una premisa fáctica que justifica la existencia del derecho, es necesario que esta misma premisa fáctica aún exista, y se demuestre, en el momento de presentación de la solicitud de nulidad (apartados 25 a 28 de la resolución de anulación). La Sala confirmó las conclusiones de la División de Anulación y añadió que la regla 19, apartados 1 y 2, letra d), del REMC establece que en el caso de que la oposición se base en un derecho anterior en el sentido contemplado en el artículo 8, apartado 4, del RMC, deberá aportarse prueba, entre otros, de su «existencia continuada» en el periodo señalado por la Oficina para presentar o completar los hechos, alegaciones y pruebas en los que se basa la oposición. Si, dentro de dicho plazo, no se demuestra la existencia, validez y ámbito de protección de la marca o derecho anterior, la oposición no s e admitirá por considerarse infundada (regla 20, apartado 1, del REMC). En opinión de la Sala de Recurso, estas normas se aplican mutatis mutandis al procedimiento de anulación (apartado 15 de la resolución de la Sala de Recurso).
El requisito relativo a l a utilización del signo en el tráfico económico, tal como ha quedado establecido, deberá interpretarse a la luz del Derecho comunitario. Este requisito debe distinguirse de aquellos que establecen las legislaciones nacionales aplicables, las cuales pueden establecer requisitos específicos en cuanto a la intensidad del uso.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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El requisito europeo relativo al uso contemplado en el artículo 8, apartado 4, del RMC debe aplicarse independientemente de que el Derecho nacional permita o no prohibir una marca posterior en virtud del mero registro de un s igno, es decir, sin ningún requisito relacionado con el uso. A continuación, se indica un ejemplo en que el oponente invocó el registro, a escala nacional, de una marca comercial, pero no demostró que el signo estaba siendo utilizado en el tráfico económico:
Signo anterior Nº de asunto
«NACIONAL» (nombre de establecimiento portugués) R 693/2011-2
Con arreglo al artículo 8, apartado 4, del RMC el hecho de que un oponente pueda, de conformidad con el Derecho portugués, haber adquirido derechos exclusivos obviamente aplicables contra marcas posteriores basándose en el registro de un «nombre de establecimiento» no le exime de l a carga de demostrar que el signo de que se trate ha sido utilizado en el tráfico económico de alcance no únicamente local. El simple hecho de que el signo esté registrado con arreglo a los requisitos del correspondiente Derecho portugués no resulta suficiente por sí mismo para aplicar lo establecido en el artículo 8, apartado 4, del RMC (apartados 20 a 26).
En función de l a legislación nacional que resulte aplicable, el oponente debería demostrar no sólo que el signo invocado se utiliza en el tráfico económico (siendo esto, tal como se ha indicado, un requisito con arreglo al Derecho comunitario), sino también que ha sido registrado por las autoridades nacionales competentes, no siendo suficiente, por tanto, que se cumpla el requisito europeo de «utilización en el tráfico económico» si no se cumple, también, el requisito de registro. Sin embargo, en determinados Derechos nacionales, podrán invocarse los derechos sobre un nombre comercial, siempre que dicho nombre haya sido utilizado, con anterioridad a la inscripción de l a entidad en el registro de sociedades. A continuación se incluye un ejemplo en el que el oponente invocó derechos anteriores sobre una denominación social utilizada en el tráfico económico de Alemania que no estaba registrada en el momento de presentación de la solicitud de marca comunitaria impugnada:
Signo anterior Nº de asunto
«Grain Millers GmbH & Co. KG» (denominación social alemana) T-430/08
La parte oponente invocó, con arreglo al artículo 8, apartado 4, del RMC la denominación social «Grain Millers GmbH & Co. KG» utilizada en el tráfico económico de Alemania para «harina, en particular harina de trigo y harina de centeno». Por lo tanto, la parte oponente reivindicó la denominación de GmbH («Gesellschaft mit beschränkter Haftung», «sociedad de responsabilidad limitada» en español). El solicitante argumentó que, con arreglo al artículo 11, apartado 1, de la Ley alemana de s ociedades limitadas («GmbH Gesetz»), una «GmbH» no existe antes de que sea registrada, y que, por lo tanto, el oponente no tenía derecho a invocar, como base de su oposición, su nombre de empresa, porque la empresa fue registrada después de la presentación de la solicitud de marca comunitaria impugnada. El TG adoptó una opinión distinta y consideró que, de conformidad con la jurisprudencia de los tribunales alemanes, el derecho a un nombre de empresa existe de conformidad con el artículo 5, apartado 2, de la ley «Markengesetz» a partir del primer uso en el tráfico económico, sin que sea obligatorio su registro (apartado 36).
El signo se utiliza en el tráfico económico cuando dicho uso tenga lugar en el contexto de una actividad comercial con ánimo de lucro y no en la esfera privada.
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Por lo tanto, la Oficina denegará la oposición a falta de un uso efectivo del signo invocado. A continuación, se indican ejemplos de casos en l os que el oponente no cumple este requisito básico:
Signo anterior Nº de asunto
«Octopussy» (título de una película) R 526/2008-4
El oponente solo presentó información general que ex plicaba el contenido de e sta película, sus personajes, las cifras de negocio brutas, las ofertas de v ídeo en I nternet y los anuncios, sin indicar detalles sobre el mercado destinatario. La información relativa al volumen de negocios también es insuficiente ya que una referencia general a las actividades que lleva a cabo el oponente resulta demasiado amplia y no especifica ni el tipo de actividad ni los territorios de referencia. Por la misma razón, los datos de una revista relativos a los ingresos generados por la película carecen de relevancia respecto de la utilización del signo en Alemania. Los demás artículos de prensa facilitados por la demandante se refieren a temas que no permiten probar la utilización del signo en los Estados miembros indicados. Los contratos de licencia de comercialización no constituyen prueba alguna del uso del signo como título de una película. Por último, el simple hecho de que la película tuviera éxito a nivel mundial no sustituye la obligación del oponente de presentar pruebas concretas respecto de los Estados miembros para los que reivindica protección, con arreglo al artículo 8, apartado 4, del RMC (apartado 26).
Signo anterior Nº de asunto
«lucky-pet.de» (nombre de dominio alemán) R 275/2011-1
El oponente invocó el nombre de dominio «lucky-pet.de», de conformidad con el artículo 8, apartado 4, del RMC, que se utilizaba en el tráfico económico en Alemania para las «alfombrillas para animales, servicios de venta al por menor relacionados con accesorios para mascotas». No ha quedado demostrado que el dominio haya sido utilizado con un alcance no únicamente local para los productos y servicios reivindicados. Las facturas aportadas y el catálogo únicamente contienen la dirección de Internet «www.lucky-pet.de.». No obstante, no demuestran que dicho sitio web haya recibido visitas ni, en su caso, cuántas visitas ha recibido. Tampoco no ha quedado constatado ni demostrado en ningún documento cuántas personas visitaron el sitio web y realizaron pedidos mediante correo electrónico (apartado 31).
3.3.2.2 Alcance del uso
Los derechos contemplados en el artículo 8, apartado 4, del RMC solo pueden invocarse cuando sean de alcance no únicamente local. Este requisito es aplicable a todos los derechos que se rigen por el artículo 8, apartado 4, del RMC, es decir, tanto a las marcas no registradas como a otros identificadores comerciales. Los titulares de derechos cuyo uso tenga un alcance únicamente local conservarán sus derechos exclusivos con arreglo al Derecho nacional aplicable, en virtud del artículo 111, del RMC.
Para determinar si un signo no registrado es de alcance no únicamente local se aplica un criterio europeo uniforme.
El Tribunal General consideró que el alcance de un signo utilizado para identificar determinadas actividades comerciales debe definirse en relación con la función de desempeña. Esta consideración implica que debe tenerse en cuenta, en primer lugar, la dimensión geográfica del alcance del signo, es decir, el territorio en que se utiliza para identificar la actividad económica de su titular, según la interpretación del texto
Derechos contemplados en el artículo 8, apartado 4, del RMC
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del artículo 8, apartado 4, del RMC. En segundo lugar, debe tenerse en cuenta la dimensión económica del alcance del signo, que se valora en atención a la duración del periodo en que ha cumplido su función en el tráfico económico y la intensidad de su uso, en atención al círculo de destinatarios para los que el signo ha pasado a ser conocido como elemento distintivo – consumidores, competidores e i ncluso proveedores – o incluso a la difusión que se ha dado al signo a través, por ejemplo, de la publicidad o de Internet (sentencia de 24/03/2009, en los asuntos acumulados T-318/06 a T-321/06, «GENERAL OPTICA» y sentencia de 30/09/2010, en el asunto T-534/08, «GRANUflex», apartado 19).
El Tribunal de Justicia aclaró que el alcance de un signo no puede depender del mero alcance geográfico de su protección, ya que, de ser así, un s igno cuyo ámbito de protección no fuese meramente local podría, por este mero hecho, impedir el registro de una marca comunitaria, y ello aunque se utilizase en el tráfico económico únicamente de manera marginal. El signo debe utilizarse de manera suficientemente significativa en el tráfico económico y poseer un alcance geográfico no únicamente local, lo que implica, cuando el territorio de protección de di cho signo puede considerarse no local, que tal utilización tenga lugar en una parte considerable de dicho territorio (sentencia de 29 /03/2011, en el asunto C-96/09 P, «BUD», apartados 158 a 159).
Sin embargo, no es posible determinar a priori, de manera abstracta, qué parte de un territorio debe tomarse en consideración para demostrar que el alcance de un signo excede de una dimensión local. Por consiguiente, la apreciación del alcance del signo debe efectuarse in concreto, según las circunstancias propias de cada caso.
Por lo tanto, el criterio de «alcance no únicamente local» implica algo más que un mero examen geográfico. También será necesario evaluar el impacto económico del uso del signo. Se tendrán en cuenta los siguientes factores, y la prueba deberá versar sobre los mismos:
a) la intensidad del uso (las ventas realizadas con el signo),
b) la duración del uso,
c) la diseminación geográfica de los productos (la ubicación de los clientes),
d) la publicidad realizada con el signo y los medios de comunicación en que ha aparecido dicha publicidad incluida la distribución de dicha publicidad.
En los siguientes ejemplos, se consideró que tanto la dimensión geográfica como económica del uso del signo cumplían los criterios:
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Signo anterior Nº de asunto
«GLADIATOR» (marca no registrada en la República Checa) R 1529/2010-1
Las aproximadamente 230 facturas son suficientes para concluir que el signo «GLADIATOR» ha sido utilizado en el tráfico económico para «vehículos todoterreno». Dichas facturas se emitieron a favor de clientes del oponente en ciudades checas como «Praha», «Kraslice», «Dolnì Lánov», «Pelhrimov», «Opava», «Bozkov», «Plzen», así como en m uchas otras ciudades checas que comprenden distintas zonas de la República Checa. Asimismo, los catálogos y las revistas «4X4 Style», a partir de 2007 están redactados en checo y es muy probable que se distribuyan a distintos lugares de la República Checa. Documentos como las listas de distribuidores, catálogos y revistas apoyan la conclusión de que el signo ha sido utilizado en el tráfico económico (apartados 22 a 33).
Signo anterior Nº de asunto
«FORGE DE LAGUIOLE» (denominación social francesa)
R 181/2007-1 (recurrida en el asunto T-453/11)
La denominación social «FORGE DE LAGUIOLE», que fue adoptada por el solicitante de la nulidad en 1994, aparece en todos los documentos que se aportan, en particular, en los estatutos y en el extracto de certificado de inscripción de la empresa, en el membrete comercial, en las listas de precios de 1998, así como en la correspondencia y las facturas, con fecha de 1998, que se enviaron a destinatarios de toda Francia. La rápida expansión de las actividades del solicitante de la nulidad y de su red de ventas, así como de su volumen de ventas, queda demostrada con los documentos aportados. De la lista de clientes de 2001 queda claro que el solicitante ha obtenido una clientela que abarca todo el territorio francés. Esto queda confirmado asimismo por las facturas que se emitieron a clientes de toda Francia, así como de otros países europeos. Por último, queda demostrado el hecho de que la empresa ha sido mencionada en una serie de artículos, tanto en la prensa francesa como en la prensa europea e internacional (apartados 52 a 68).
Signo anterior Nº de asunto
«PORTO» (denominación de origen portuguesa)
Oposición B 998 510 (confirmada por la Sala de Recurso en la
resolución R 1101/2009-2)
Las pruebas presentadas, y la cantidad y el contenido de la legislación, reglamentos y certificados de registro indican que el vino de Oporto ha sido y sigue siendo una denominación de origen vinícola. De las pruebas en su totalidad se desprende que el alcance de la denominación de origen no es únicamente local sino que tiene impacto internacional, tal como refleja su historia y su uso como herramienta para atraer turistas. La promoción de la denominación de origen tuvo lugar, entre otros, a través de los establecimientos «SOLAR DO VINHO DO PORTO» en Lisboa y en Oporto, así como a través de la ruta «PORT WINE ROUTE» de la región del Duero. Teniendo esto en cuenta, la Oficina considera que el oponente ha demostrado que ha utilizado sus denominaciones de origen en el tráfico económico y que el uso tiene un alcance no únicamente local.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Signo anterior Nº de asunto
«BRADBURY» (marca no registrada en el Reino Unido) R 66/2008-2
Por lo que se refiere al fondo comercial (goodwill) de la marca, la Sala de Recurso consideró que las pruebas aportadas por el oponente fueron suficientes para demostrar que el signo no registrado «BRADBURY» poseía un fondo comercial. 1) Las pruebas en las facturas demostraban ventas de una gama de productos de diversas entidades del Reino Unido y de otros países. 2) Los importes de dichas facturas iban de algo más de 100 GBP a varios miles de libras esterlinas. Esta prueba evidenciaba las ventas a varias entidades de productos provistos de la marca no registrada anterior. 3) Las declaraciones y la encuesta de mercado también demostraron que el signo había disfrutado de un grado de conocimiento por parte del público destinatario para los productos del titular del derecho. 4) El hecho de que un signo aparezca en una serie de catálogos y anuncios y de que existan en las principales localidades y ciudades del Reino Unido centros de atención posventa demuestra que la marca ha llamado la atención de un amplio público, en términos de diseminación geográfica (apartados 31 a 33).
Signo anterior Nº de asunto
«GOLDEN ELEPHANT fig.» (marca no registrada en el Reino Unido) T-303/08
La parte que se basa en la marca no registrada anterior había vendido continuamente arroz con el signo desde 1988, es decir, durante un periodo de ocho años antes de la fecha en que la solicitante presentó una solicitud de la marca comunitaria controvertida. No puede considerarse totalmente insignificante la cantidad de arroz vendida, comprendida entre 42 y 84 toneladas al año de 1988 a 1996. El mero hecho de que la cuota de mercado de la parte fuera muy moderada en relación con el total de las importaciones de arroz en el Reino Unido no basta para considerar que las ventas de arroz se situaban por debajo del umbral de minimis. Sobre el particular debe señalarse que los tribunales del Reino Unido son muy reticentes para declarar que una empresa puede tener clientes, pero no fondo comercial (goodwill). «Suponiendo incluso que deba considerarse que este fondo comercial (goodwill) es escaso debido a la cantidad limitada de las ventas, en ningún caso puede reputarse inexistente» (apartados 112 a 116).
En cuanto a la dimensión geográfica del uso del signo, por lo general, el territorio de una ciudad por sí sola, aunque sea extenso, es de alcance únicamente local, como también lo son una región o una p rovincia. Dependerá de las circunstancias del caso (véase los ejemplos a continuación). La principal sentencia en este sentido es la que dictó el Tribunal General en el asunto «General Optica», en que el uso del signo se limitaba a una localidad determinada y fue, por lo tanto, insuficiente para cumplir los requisitos establecidos:
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Signo anterior Nº de asunto
«Generalóptica» (nombre de establecimiento portugués) Asuntos acumulados T-318/06 a T-321/06
De las pruebas presentadas por la oponente no se desprende que el alcance del signo invocado en el presente caso no sea únicamente local en el sentido del artículo 8, apartado 4, del RMC. Como señala la Sala de Recurso en el apartado 33 de las resoluciones impugnadas, se deduce de los documentos presentados por la demandante que, en el momento en que se solicitó el registro de las dos primeras marcas comunitarias, el signo en cuestión sólo se había utilizado desde hacía unos diez años para designar un establecimiento abierto al público en la localidad portuguesa de Vila Nova de Famalicão, que cuenta con 120 000 habitantes. Pese a sus explicaciones durante la vista, la solicitante no ha aportado ningún elemento que permita demostrar que es conocida por los consumidores ni que desarrolla relaciones comerciales fuera de la mencionada localidad. Asimismo, la demandante no ha demostrado que haya desplegado actividad publicitaria alguna para promocionar su establecimiento más allá de dicha ciudad. Por tanto, debe estimarse que el nombre de establecimiento Generalóptica tiene un alcance estrictamente local en el sentido del artículo 8, apartado 4, del RMC (apartado 44).
Signo anterior Nº de asunto
«FORTRESS» «FORTRESS INVESTMENTS»
«FORTRESS INVESTMENT GROUP» (marcas no registradas en el Reino Unido)
R 354/2009-2
R 355/2009-2
El hecho de que el solicitante de la nulidad participara en la adquisición, arrendamiento financiero y gestión de carteras nacionales de propiedad de las principales instituciones y empresas del Reino Unido demuestra que el uso tenía un alcance no únicamente local. El hecho de que el uso quede limitado a Londres es pertinente, en el sentido de que esta ciudad es sede de casi todas las instituciones y organismos gubernamentales y del distrito financiero «City of London», uno de los centros financieros líderes en el mundo. La dimensión económica del alcance del signo fue importante porque a mediados de la década de 2000 el solicitante de la nulidad contaba ya con capital administrado de más de mil millones de dólares norteamericanos. Asimismo, el círculo de destinatarios para los que el signo pasó a ser conocido es significativo, ya que incluía a los principales actores del ámbito financiero y de las instituciones públicas británicas. También fue significativa la difusión que se ha dado al signo a través, por ejemplo, de la cobertura de la prensa nacional y especializada. Por consiguiente, el uso en el tráfico económico tenía un alcance no únicamente local (apartados 49 a 51).
El concepto de que el uso en el tráfico económico debe quedar demostrado en el territorio del/de los Estado(s) miembro(s) en el(los) que se reclama la protección no es incompatible con el uso del signo relacionado con las transacciones comerciales transfronterizas:
Signo anterior Nº de asunto
«GRAIN MILLERS» (nombre de empresa alemán) T-430/08
El uso de un nombre de empresa en el marco de la importación de productos desde otro Estado (en este caso, documentos de la transacción celebrada por el oponente relativos a la importación de trigo desde Rumanía a Alemania) constituye un uso efectivo en el contexto de una actividad comercial con ánimo de lucro, ya que la importación y exportación constituye una actividad diaria normal de una empresa, que implica necesariamente al menos a dos Estados (apartado 41).
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A continuación, se incluyen ejemplos en los que el oponente no consiguió demostrar que la dimensión económica del uso de los signos afectados era suficiente para cumplir los requisitos legales exigidos:
Signo anterior Nº de asunto
«BRIGHTON» (marca no registrada en varios Estados miembros) R 408/2009-4
El gráfico de ventas aportado por el oponente demuestra que las actividades de venta en los Estados miembros afectados no han sido coherentes a lo largo del tiempo, ya que en ciertos años no aparece ninguna venta y en otros, los ingresos por ventas eran realmente muy reducidos. Por lo tanto, las cifras de venta demuestran que el oponente no fue capaz de mantener una intensidad de uso de los signos durante tres años consecutivos. En dichos casos, es poco probable que el público pudiera memorizar la marca como indicación de origen. El oponente no presentó ninguna prueba relacionada con la publicidad y la promoción de las marcas realizada en los Estados miembros de que se trate, ni ningún otro material que demuestre que los signos de que se trate se habían establecido por sí mismos en el mercado en una medida tal que justifique la adquisición de derechos exclusivos de marcas no registradas (apartados 12 a 21).
Signo anterior Nº de asunto
(marca no registrada griega) R 242/2010-1
A pesar de que l os documentos confirman el alcance geográfico de l a marca en Grecia, las pruebas relativas a la duración del presunto uso resultan claramente insuficientes. El documento de fecha posterior es de 1997, es decir, de siete años antes de que se presentara la solicitud impugnada. Además, los documentos más recientes en que aparece la marca «ESKIMO» son facturas con fechas entre 1991 a 1994, que solo reflejan ventas menores a 100 unidades a lo largo de estos cuatro años, las cuales no pueden considerarse suficientes para demostrar el uso de la marca como identificador comercial por parte del oponente (apartados 27 a 28).
Signo anterior Nº de asunto
«Up Way Systems – Representaçoes Unipessoal LDA»
(denominación social portuguesa) R 274/2012-5
Tres facturas, destinadas a empresas de la región de Oporto, en Portugal, por un importe total de ventas de 16 314 EUR no son suficientes para demostrar que el signo fue utilizado en el tráfico económico, considerando el nivel de precios de los materiales de construcción y de los servicios de construcción en general.
El uso de un s igno invocado, contemplado en el artículo 8, apartado 4, del RMC debe efectuarse conforme con la función esencial de dicho signo. Esto significa que si el oponente invoca una marca no registrada, no será suficiente la prueba del uso del signo como denominación social para acreditar el derecho anterior.
A continuación, se incluye un ejemplo en que la prueba demuestra el uso de un signo cuya función no se corresponde con la del signo invocado:
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Signo anterior Nº de asunto
«JAMÓN DE HUELVA» (denominación social española) R 1714/2010-4
La prueba aportada para acreditar el uso de « JAMÓN DE HUELVA » está relacionada casi exclusivamente con la denominación de origen «Jamón de Huelva». Las designaciones de origen son conceptos jurídicos muy distintos de los nombres comerciales, ya que, en lugar de identificar un origen comercial específico, son indicaciones geográficas relacionadas con un producto agrícola o al imentario cuya calidad o c aracterísticas se deben exclusiva o es encialmente al medio geográfico en q ue son elaborados, tratados o pr eparados. La op osición basada en el uso en E spaña del nombre comercial «JAMÓN DE HUELVA » debe den egarse a l a vista del hecho de q ue la prueba aportada no hace referencia a e ste concepto jurídico y no identifica una actividad comercial específica, sino actividades relacionadas con una denominación de origen y su Consejo Regulador (apartados 34 a 37).
El requisito de que el signo debe utilizarse en el tráfico económico para su propia función económica no excluye que el mismo signo pueda ser utilizado para varios fines.
Es una práctica habitual en el mercado utilizar las denominaciones sociales o nombres comerciales como marcas, ya sean solos o junto a otros identificadores de productos. Este es el caso del uso de la «marca de la casa», es decir, una indicación que, por lo general, coincide con la denominación social o el nombre comercial del fabricante y que no sólo identifica al producto o servicio como tal, sino que también proporciona un vínculo directo entre una o más líneas de pr oductos o servicios y una em presa específica.
Por lo tanto, en función de las circunstancias específicas del caso, en el supuesto de que el oponente invoque una marca no registrada, el uso del mismo signo como denominación social o nombre comercial también podrá tener la función de indicar el origen de los productos o servicios de que se trate (por lo tanto, una función de marca) siempre que el signo se utilice de tal modo que pueda establecerse un vínculo entre el signo que constituye la denominación social o el nombre comercial y los productos comercializados o los servicios prestados (véase, por analogía, la sentencia de 11/09/2007, en el asunto C-17/06, «CELINE», apartados 22 a 23).
3.4 Derecho anterior
El derecho invocado con arreglo al artículo 8, apartado 4, del RMC debe ser anterior al de la solicitud de marca comunitaria. Para establecer cuál de los derechos en conflicto es anterior, deben compararse las fechas en las que se adquirieron.
• Para las solicitudes de marcas, ésta será la fecha de presentación o cualquier fecha de prioridad válidamente invocada (en lo sucesivo, la «fecha de la marca comunitaria»). Las reivindicaciones de antigüedad no son pertinentes, aunque guarden relación con el Estado miembro en cuyo territorio supuestamente existe el otro derecho anterior.
• En cuanto a l os derechos contemplados en el artículo 8, apartado 4, del RMC, resulta decisiva la fecha de adquisición de los derechos exclusivos con arreglo al Derecho nacional.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Cuando, en virtud del Derecho nacional, el mero uso se considere suficiente, es preciso que la marca haya empezado a utilizarse con anterioridad a la fecha de la marca comunitaria. Cuando se exija el reconocimiento de la marca en el comercio o el renombre, es preciso que cada una de estas cualidades se haya adquirido antes de la fecha de la marca comunitaria. No obstante, cuando estos requisitos se cumplan después de la fecha de la marca comunitaria, la oposición deberá desestimarse.
3.5 Alcance de la protección
Los derechos anteriores contemplados en el artículo 8, apartado 4, del RMC están protegidos únicamente si confieren a sus titulares, en virtud del Derecho aplicable, el derecho a prohibir el uso de una marca posterior.
De lo anterior resulta que, con arreglo al Derecho nacional aplicable, los derechos de que se trata son, en a bstracto, derechos exclusivos exigibles a t ravés de m edidas cautelares dirigidas contra marcas posteriores, y que en el caso considerado se dan las condiciones para la obtención de dichas medidas cautelares, si la marca objeto de la solicitud de marca comunitaria impugnada fuera utilizada en el territorio correspondiente (alcance de la protección). Ambas cuestiones deben ser respondidas con arreglo al Derecho aplicable. La O ficina aplicará los Derechos de los Estados miembros, la legislación comunitaria o los acuerdos internacionales.
No deben s obrestimarse las dificultades que plantea la aplicación del Derecho nacional. La lista del Cuadro del final de este documento proporciona las indicaciones adecuadas (véase asimismo la Sección 4 infra). Para muchos, sino para la mayoría, de los derechos contemplados en el artículo 8, apartado 4, del RMC, los requisitos previos del reglamento nacional son bastante similares a aquellos aplicados en los conflictos que pueden aparecer entre marcas en que los examinadores de la Oficina están familiarizados, en concreto, con el riesgo de confusión, o de un perjuicio al renombre o al carácter distintivo.
Por ejemplo, las marcas no registradas están, por lo general, protegidas contra marcas posteriores, en caso de riesgo de c onfusión y, por lo tanto, con arreglo a c riterios idénticos a los que se aplican en litigios entre marcas registradas como, por ejemplo, la identidad o similitud entre los signos, la identidad o similitud entre los productos o servicios, etc. En estos casos, los criterios desarrollados por los tribunales y por la Oficina para aplicar el artículo 8, apartado 1, del RMC también pueden utilizarse en la aplicación del artículo 8, apartado 4, del RMC, a menos que la parte pueda aportar la correspondiente jurisprudencia de los tribunales nacionales que demuestre un enfoque distinto.
En el supuesto de que el Derecho nacional aplicable prevea un alcance de protección para las marcas no registradas que difiere de los contemplados en el artículo 8, apartado 1, del RMC, el alcance de la protección del derecho anterior invocado se rige por el Derecho nacional. Por ejemplo, cuando la normativa nacional aplicable concede protección, bajo ciertas condiciones, a las marcas no registradas también en lo que se refiere a p roductos y servicios, la misma protección se concederá en virtud del artículo 8, apartado 4, del RMC.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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4 Prueba y grado de la prueba
En virtud del artículo 76, apartado 1, del RMC, en todos los asuntos inter partes, corresponde a la parte que se basa en una reivindicación o a legación particular exponer a l a Oficina las alegaciones, los hechos y los argumentos necesarios en apoyo de sus pretensiones.
A la hora de aplicar el artículo 8, apartado 4, del RMC una dificultad específica es el grado adecuado de prueba exigido por el Derecho nacional o europeo de que se trate.
El artículo 8, apartado 4, del RMC se remite al Derecho nacional (legislación de un Estado miembro) aunque establece sus propios requisitos («europeos») de protección (uso en el tráfico económico de alcance no únicamente local). La legislación nacional del país en c uyo territorio se reivindica la protección del «signo» determina la existencia del derecho o título, y las condiciones de la protección. Deberá aplicarse el pertinente grado de la prueba (nacional o europea) que corresponda.
Los «hechos» que deben determinarse y probarse son:
HECHOS CRITERIO
− Las disposiciones nacionales que ofrecen protección del signo.
− Los requisitos para obtener dicha protección. − La existencia de un derecho o título al signo. − Si el derecho ha sido adquirido de forma válida (por
ejemplo, mediante el uso, el renombre). − El requisito de protección jurídica (por ejemplo, en caso
de uso engañoso, uso de un signo idéntico o similar, riesgo de confusión).
− El alcance de la protección (derecho a prohibir el uso, etc.).
Se aplica el criterio «nacional»
− El uso en el tráfico económico. − El alcance no es únicamente local.
Se aplica el criterio «europeo» (véase el apartado 3.2 supra).
En todos estos casos, corresponde al oponente la carga de la prueba. Resulta aplicable el principio general del artículo 76, apartado 1, del RMC. El oponente podrá emplear todos los medios de prueba contemplados en el artículo 78, del RMC.
El Derecho de los Estados miembros aplicable en virtud del artículo 8, apartado 4, del RMC será considerado por la Oficina como una cuestión de hecho, que ha de ser acreditada por la parte que invoca al derecho.
De la sentencia «BUD» se desprende que el oponente es responsable de aportar la legislación nacional pertinente y demostrar que podría evitar el uso de l a marca posterior, en virtud de dicha legislación:
«A este respecto, procede recordar que el artículo 8, apartado 4, letra b) [del RMC] establece el requisito de que, conforme a la legislación del Estado miembro aplicable al signo invocado con arreglo a dicha disposición, el signo confiera a su titular el derecho a prohibir la utilización de una marca posterior.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Además, con arreglo al artículo 74, apartado 1, del Reglamento 40/94 [actualmente artículo 76, apartado 1, del RMC], la carga de la prueba de que concurre dicho requisito incumbe al oponente ante la OAMI.
En este contexto, y en lo que respecta a los derechos anteriores invocados en el caso de au tos, […] debe tenerse en cuenta, en particular, la normativa nacional invocada en apoyo de la oposición y las resoluciones judiciales recaídas en el Estado miembro de que se trate y que, sobre esta base, el oponente debe demostrar que el signo en conflicto está comprendido en el ámbito de aplicación del Derecho del Estado miembro invocado y que permite prohibir la utilización de una marca posterior».
(Véase la sentencia de 29/03/2011, en el asunto C-96/09 P, «BUD», apartados 188 a 190).
De acuerdo con la sentencia de 05/07/2011, en el asunto C-263/09P, «Elio Fiorucci», es responsabilidad de la parte oponente «presentar a la OAMI no sólo los datos que demuestren que cumple los requisitos exigidos, conforme a la legislación nacional que solicita que se aplique, para que pueda prohibir el uso de una marca comunitaria en virtud de un derecho anterior, sino también los datos que determinen el contenido de dicha legislación» (apartado 50). Véase asimismo en este sentido la sentencia de 07/05/2013, en el asunto T-579/10, «Makro», apartado 60.
Signo anterior Nº de asunto
«CROWN» R 1182/2011-4
El recurso fue desestimado por lo que al artículo 8, apartado 4, del RMC debido a l a falta de fundamentación. El oponente simplemente escribió la indicación «marca no registrada» y marcó todas las casillas de los países del formulario de oposición, aunque no indicó nada más respecto de la correspondiente legislación de cada uno de los Estados miembros de que se trate.
Haciendo referencia a la sentencia «Elio Fiorucci», la Sala de Recurso recordó que mientras que no se le exige al oponente que «demuestre» la existencia del correspondiente Derecho nacional, sí que se le exige que indique de manera precisa las disposiciones de la legislación nacional que invoca como base de la protección del derecho anterior. Solo entonces la Oficina podrá examinar qué tipo de derecho resulta afectado y en qué condiciones está protegido (por ejemplo, si la protección se concede contra el riesgo de confusión) y únicamente después de esto, como un p aso posterior, podrá evaluarse si las pruebas satisfacen dichas condiciones legales.
En el caso concreto, no se aportó durante el procedimiento, incluida en la fase de r ecurso, ninguna declaración respecto de las bases y las condiciones legales del derecho reivindicado de cada uno (o al menos de uno) de los Estados miembros. Lo único que se presentó en este sentido fue una copia de párrafos del artículo 8, apartado 4, de l a publicación de l a Oficina «Derecho nacional y marca comunitaria», argumentando que no debería demostrar el contenido de dichos párrafos (ni del Derecho nacional que se menciona en los mismos). No obstante, esto resulta irrelevante porque no es necesario que el oponente fundamente lo que podría haberse protegido en teoría, sino si y cómo está protegido el derecho reivindicado (apartados 48 a 50).
La consideración de la prueba de la situación legislativa nacional como una cuestión de hecho por parte de la Oficina coincide con el criterio que aplican los tribunales de los Estados miembros respecto del Derecho extranjero en virtud de sus principios de derecho internacional privado. Además, la Oficina no está en condiciones de determinar de oficio, con suficiente exactitud, cuál es la legislación relativa a los derechos contemplados en el artículo 8, apartado 4, del RMC en t odos los Estados
Derechos contemplados en el artículo 8, apartado 4, del RMC
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miembros ni de control las pertinentes modificaciones a la legislación ni la evolución de la jurisprudencia.
Al final de esta Sección de las Directrices, se incluye un cuadro con una visión general con las características fundamentales del Derecho nacional aplicable en los Estados miembros (véase el Cuadro del final del documento), que se incluye en las presentes Directrices solo a efectos informativos.
Por lo tanto, por cuanto se refiere a la prueba de la situación legislativa, el oponente deberá:
• aportar una r eferencia clara de l a legislación o j urisprudencia aplicable (el cuadro del final del documento puede ser una ayuda en este sentido). El cuadro no constituye, sin embargo, una fuente jurídica y puede no incluir los últimos avances legislativos, por lo tanto, la otra parte siempre puede impugnar su contenido;
• presentar una línea argumental contundente de por qué el oponente puede evitar el uso de la marca impugnada, en virtud del Derecho nacional específico, (apoyado, si procede, por la jurisprudencia y/o la doctrina jurídica). No se considerará suficiente una simple referencia al Derecho nacional, ya que no corresponde a la Oficina realizar la alegación en nombre del oponente.
Cuando la parte oponente se apoya en la jurisprudencia nacional para fundamentar su asunto, debe facilitar a la Oficina la correspondiente jurisprudencia con suficiente detalle (una copia de la resolución impugnada) y no s ólo haciendo referencia a una publicación de la doctrina.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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CUADRO
DERECHOS NACIONALES QUE CONSTITUYEN «DERECHOS ANTERIORES» A EFECTOS DEL ARTÍCULO 8,
APARTADO 4, DEL RMC
A EFECTOS INFORMATIVOS20
Índice
1 Benelux..................................................................................................... 34
2 Bulgaria .................................................................................................... 35
3 República Checa...................................................................................... 36
4 Dinamarca ................................................................................................ 37
5 Alemania................................................................................................... 39
6 Estonia...................................................................................................... 40
7 Irlanda....................................................................................................... 41
8 Grecia ....................................................................................................... 43
9 España...................................................................................................... 45
10 Francia...................................................................................................... 46
11 Croacia ..................................................................................................... 48
12 Italia .......................................................................................................... 49
13 Chipre ....................................................................................................... 50
14 Letonia...................................................................................................... 50
15 Lituania..................................................................................................... 51
16 Hungría ..................................................................................................... 52
20 El contenido de la tabla se basa en gran medida en la información recibida de las oficinas de marcas y asociaciones de usuarios en 2013/2014. Sin embargo, no es una fuente legal y está disponible únicamente con fines informativos. Puede que no contenga las últimas novedades legislativas o una lista exhaustiva de todos los derechos nacionales anteriores que se pueden invocar en virtud del artículo 8 (4) del RMC
Derechos contemplados en el artículo 8, apartado 4, del RMC
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17 Malta ......................................................................................................... 52
18 Austria ...................................................................................................... 53
19 Polonia...................................................................................................... 55
20 Portugal .................................................................................................... 56
21 Rumanía ................................................................................................... 58
22 Eslovenia.................................................................................................. 59
23 Eslovaquia................................................................................................ 59
24 Finlandia................................................................................................... 60
25 Suecia....................................................................................................... 62
26 Reino Unido ............................................................................................. 63
Derechos contemplados en el artículo 8, apartado 4, del RMC
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1 Benelux
1.1 Marcas no registradas
La Convención del Benelux sobre Propiedad Intelectual (CBPI) no reconoce las marcas no registradas.
1.2 Otros signos utilizados en el tráfico económico
En el territorio del Benelux, cada Estado debe considerarse por separado.
1.2.1 Bélgica
Nombre comercial («nom commercial»)/Denominación social («dénomination sociale»)
Artículo 2.19, de la CBPI Artículo 95, de la «Loi du 6 avril 2010 relative aux pratiques du marché et à la protection du consommateur» Artículo 1382, del «Code Civil» (Código civil)
Requisitos para la protección
El nombre comercial se adquiere desde su primer uso en el tráfico económico. La protección se limita a la zona geográfica en la que se utiliza el nombre comercial o la denominación social. La denominación social se adquiere, en principio, desde la fecha de constitución de la sociedad. La protección se extiende a todo el territorio nacional.
Derechos conferidos
Derecho a prohibir el uso de marcas (registradas) posteriores.
1.2.2 Luxemburgo
Nombre comercial («nom commercial»)/denominación social («dénomination sociale»)
Artículo 2.19, de la CBPI Artículo 14, de l a «Loi du 30 juillet 2002 r églementant certaines pratiques commerciales, sanctionnant la concurrence déloyale et transposant la directive 97/55/CE du Parlement Européen et du Conseil modifiant la directive 84/450/CEE sur la publicité trompeuse afin d’y inclure la publicité comparative»
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Derechos conferidos
Derecho a prohibir el uso de marcas (registradas) posteriores.
1.2.3 Países Bajos
Nombre comercial
Artículo 2.19, de la CBPI Ley de 5 de julio de 1921 relativa a los nombres comerciales («Handelsnaamwet») Artículo 6:162, del Código Civil neerlandés («Burgerlijk Wetboek»)
Requisitos para la protección
El derecho se adquiere mediante el primer uso del nombre comercial en el tráfico económico. La protección se limita a la zona geográfica en la que se utiliza el nombre comercial. Los nombres comerciales pueden registrarse de forma voluntaria en el Registro Mercantil de la Cámara de Comercio, aunque dicho registro no otorga derecho alguno al titular. No se exige ningún requisito particular relativo al carácter distintivo y no descriptivo del nombre comercial.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas (registradas) posteriores. (b) Debe declararse la existencia de un riesgo de confusión.
2 Bulgaria
2.1 Marcas no registradas
En Bulgaria, las marcas no registradas están protegidas de dos maneras:
Marcas no registradas
Artículo 12, apartado 6, de la Ley búlgara de marcas e indicaciones geográficas (2010)
Requisitos para la protección
La marca debe haber sido objeto de uso en el tráfico económico en el territorio de Bulgaria con anterioridad a la fecha de presentación de la marca impugnada.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el registro de una marca posterior. (b) La marca posterior debe ser idéntica o similar y debe comprender productos o
servicios idénticos o similares.
Marcas notoriamente conocidas
Artículo 12, apartado 2, punto 7, de la Ley búlgara de marcas e indicaciones geográficas (2010)
Requisitos para la protección
La marca debe ser notoriamente conocida en el territorio de Bulgaria en el sentido del artículo 6 bis del Convenio de París, con anterioridad a la fecha de presentación de la marca impugnada.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el registro de una marca posterior. (b) La marca posterior debe ser idéntica o similar y debe comprender productos o
servicios idénticos o similares.
2.2 Otros signos utilizados en el tráfico económico
La ley búlgara de marcas no incluye otros signos utilizados en el tráfico económico como derechos anteriores en los que podría basarse una oposición.
3 República Checa
3.1 Marcas no registradas
Las marcas no registradas están protegidas en la República Checa:
Artículo 7, apartado 1, letra g), de la Ley checa de marcas (CZ-LM).
Requisitos para la protección
Los signos no registrados que han adquirido carácter distintivo a través del uso en el tráfico económico de alcance no únicamente local, con anterioridad a la presentación de una solicitud impugnada.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. (b) Los signos deben ser idénticos o similares (que se interpreta como riesgo de
confusión) y debe c omprender productos o s ervicios idénticos o s imilares. El alcance de protección es idéntico al de una marca registrada checa.
3.2 Otros signos utilizados en el tráfico económico
Artículo 7, apartado 1, letra g), de la CZ-LM
Nombres comerciales y otros signos relacionados (por ejemplo, nombres de organizaciones no comerciales)
Requisitos para la protección
Estos nombres o signos deben haber adquirido carácter distintivo a través del uso en el tráfico económico de alcance no únicamente local, con anterioridad a la presentación de una solicitud impugnada.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. (b) Los signos deben ser idénticos o similares (que se interpreta como riesgo de
confusión) y deben comprender productos o servicios idénticos o s imilares. El alcance de protección es idéntico al de una marca registrada checa.
4 Dinamarca
4.1 Marcas no registradas
En Dinamarca, las marcas no registradas están protegidas:
Artículo 3, apartado 1, inciso ii), de la Ley danesa de marcas (DK-LM) Artículo 4, apartados 1 y 2 y artículo 15, apartado 4, inciso ii), de la DK-LM
Requisitos para la protección
Los derechos de una marca no registrada se adquieren desde el comienzo de su uso en Dinamarca.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas (registradas) posteriores. (b) La marca no registrada debe seguir utilizándose para los productos o servicios
para los que fue usada originalmente. El ámbito de protección es el mismo que el de las marcas registradas danesas, es decir, contra los actos correspondientes a aquellos contemplados en el artículo 9, apartado 1, letras a), b) y c), del RMC.
4.2 Otros signos utilizados en el tráfico económico
Denominaciones sociales
El término «denominación social» ha de i nterpretarse en sentido amplio y no s olo abarca las sociedades privadas, como empresas privadas, sociedades de responsabilidad limitada, otras sociedades mercantiles y nombres comerciales secundarios, sino también las fundaciones, sindicatos, asociaciones, museos e instituciones públicas.
Artículo 18 de la Ley danesa de prácticas de comercialización Artículo 2, inciso ii), de la Ley danesa de sociedades Artículo 6, inciso ii), de la Ley consolidada relativa a de terminadas empresas comerciales
Requisitos para la protección
La protección de l a denominación social no requiere su registro. Sin embargo, el interesado debe tener un derecho legal sobre la denominación social.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas (registradas) posteriores. (b) Los signos deben ser idénticos o similares.
Signos usados en el tráfico económico como nombres de empresas y rótulos de establecimientos
El término «signos usados en el tráfico económico» debe interpretarse en s entido amplio y abarca, con arreglo a l a legislación danesa, cualquier signo o símbolo comercial que pueda servir de vínculo entre una empresa y sus clientes o usuarios que incluye, entre otras cosas, los nombres de empresas y los rótulos de establecimientos.
Artículo 18 de la Ley danesa de prácticas de comercialización
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 39
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5 Alemania
5.1 Marcas no registradas
Artículo 4, punto 2, de la Ley alemana de marcas (DE-LM), artículos 12 y 14, de la DE- LM
Requisitos para la protección
La protección se adquiere a raíz del uso que ha hecho que el público destinatario la reconozca como marca («Verkehrsgeltung») (artículo 4, apartado 2, de la DE-LM). Con arreglo a l a jurisprudencia, basta que exista del 20 % al 25 % de reconocimiento, llegando al 50 % o más si el signo no es distintivo.
Derechos conferidos (a) y requisitos (b)
(a) El derecho a prohibir el uso de una marca posterior se establece en toda Alemania, es decir, no si el reconocimiento solo se da en una localidad o región determinadas (artículos 12 y 14, de la DE-LM).
(b) El mismo que las marcas registradas alemanas, es decir, la protección corresponde al artículo 9, apartado 1, letras a), b), y c), del RMC (artículo 14, apartado 2, puntos 1, 2 y 3, de la DE-LM).
5.2 Otros signos utilizados en el tráfico económico
Artículo 5, apartados 1, 2 y 3, de la DE-LM
Designaciones de empresas («geschäftliche Bezeichnungen») es una categoría amplia que incluye:
Los signos de empresas («Unternehmenskennzeichen») que son signos utilizados en el tráfico económico como nombre, denominación social o designación especial de una actividad comercial o empresa. Los rótulos de establecimiento u otros signos destinados a distinguir la empresa de otras empresas y que son considerados como signos de l a actividad comercial por el público destinatario equivalente a la designación especial de una actividad comercial.
El nombre o denominación social es la designación oficial o registrada oficialmente del comerciante. El signo comercial es un s igno que utiliza el comerciante para identificar su empresa o actividad como tal y que sirve de nombre de l a empresa o actividad.
Los títulos de las obras son nombres o designaciones especiales de publicaciones, obras cinematográficas, obras musicales, obras de teatro u ot ras obras similares impresos. Esta puede ser una obra individual, una serie de obras o una publicación periódica. Esto también incluye títulos de r adio o s eries de t elevisión, juegos de
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 40
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ordenador y videojuegos, probablemente también programas informáticos. No se requiere que el trabajo designado por el título esté protegido por el derecho de autor.
Requisitos para la protección
Signos de empresa: si el signo es intrínsecamente distintivo, la protección se adquiere a través de s u uso como signo de e mpresa en el tráfico económico. De acuerdo con la jurisprudencia, el grado de carácter distintivo intrínseco es débil. El «uso como signo de empresa en el tráfico económico» comprende cada actividad comercial externa en Alemania destinada a una actividad comercial a largo plazo. Si el signo no tiene un carácter distintivo intrínseco, la protección se adquiere a través de su reconocimiento por parte del público destinatario como signo de la empresa («Verkehrsgeltung»).
Rótulos de establecimiento u otros signos destinados a distinguir a una empresa de otras empresas: la protección se adquiere a través del reconocimiento por parte del público destinario como signo de la empresa.
Títulos de l as obras: si el título de la obra tiene un carácter distintivo intrínseco se adquirirá a través del uso en el tráfico económico, eso es, por lo general a partir de la publicación de la obra. El grado requerido de carácter distintivo intrínseco es bajo. Si el título de la obra no t iene un carácter distintivo intrínseco, se adquirirá el derecho a través del reconocimiento del mercado «Verkehrsgeltung».
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de una marca posterior. (b) Riesgo de confusión (artículo 15, apartado 2, de la DE-LM); en el caso de l a
designación de una e mpresa con renombre, si el uso fuera perjudicial para el carácter distintivo o el renombre del signo de empresa o si se aprovechara indebidamente de los mismos (artículo 15, apartado 3, de la DE-LM).
6 Estonia
6.1 Marcas no registradas
La legislación estonia no protege las marcas no registradas, salvo que las marcas puedan considerarse notoriamente conocidas, en el sentido del artículo 6 bis del Convenio de París.
6.2 Otros signos utilizados en el tráfico económico
Nombres de empresas
Artículo 10, apartados 1 y 4, de la Ley estonia de marcas (EST-LM).
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 41
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Requisitos para la protección
Inscripción en el Registro Mercantil anterior a la fecha de presentación de la solicitud, la fecha del registro internacional o la fecha de prioridad. La protección del nombre de empresa se adquiere a partir de la fecha de inscripción en el Registro Mercantil.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas (registradas) posteriores. (b) Los signos deben ser idénticos o similares y el ámbito de actividad en relación
con el cual se haya realizado una inscripción en el Registro Mercantil debe incluir los productos o servicios para los que se utiliza o se pretende utilizar la marca (designaciones).
Nombres de especialidades farmacéuticas
Artículo 10, apartados 1 y 5, de la EST-LM
Requisitos para la protección
Los nombres deben estar registrados en Estonia con anterioridad a la fecha de presentación de la solicitud, la fecha del registro internacional o la fecha de prioridad.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas (registradas) posteriores. (b) El signo impugnado debe ser idéntico o tener una s imilitud que induzca a
confusión con el nombre de es pecialidad farmacéutica registrado en Estonia y los productos para los que la marca se utiliza o se pretende utilizar deben pertenecer al ámbito médico.
7 Irlanda
7.1 Marcas no registradas
Irlanda protege las marcas no registradas utilizadas en el tráfico económico.
Artículo 10, apartado 4, letra a), de la IE-LM
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 42
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Requisitos para la protección
Debe utilizarse en el tráfico económico si está protegida por una disposición legal, incluida la legislación en materia de usurpación («passing-off»).
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de una marca posterior si está protegida por una disposición legal, en particular la legislación en materia de us urpación («passing-off»).
(b) El signo posterior debe constituir una representación falsa o errónea que puede inducir a engaño o confusión, con el consiguiente riesgo de irrogar un daño al «goodwill» (fondo comercial) o a la empresa del titular del signo anterior. El demandante debe demostrar que su «goodwill» y empresa han sufrido o es posible que sufran un daño c omo consecuencia de l as actividades del demandado.
La acción por usurpación se basa en el «goodwill» adquirido por el uso del signo anterior. En ocasiones el «goodwill» se denomina también renombre. En Irlanda, el «goodwill» puede adquirirse sin necesidad de realizar operaciones comerciales dentro del territorio de ese país. El ilícito se produce si un signo posterior utiliza una representación falsa o errónea que puede inducir a engaño o confusión, con el consiguiente riesgo de irrogar un daño al «goodwill» o a la empresa del titular del signo anterior. Esta ley se explica en Intellectual Property in Ireland de Robert Clark y Shane Smyth, Butterworths, 1997, capítulo 24. Pueden consultarse opiniones autorizadas en sentencias del Tribunal como, por ejemplo, en el asunto «C. & A. Modes/C. & A. (Waterford)» [1978] Fleet Street Reports 126; en el asunto «Adidas K.G/O'Neill & Co Limited» [1983] Fleet Street Reports 76; y en el asunto «Guiness Ireland Group/Kilkenny Brewing Co Limited» [2000] Fleet Street Reports 112.
7.2 Otros signos utilizados en el tráfico económico
Signo de empresa utilizado en el tráfico económico
Artículo 10, apartado 4, letra a), y apartado 5, de la IE-LM
Derecho a prohibir el uso de marcas posteriores si están protegidas por una disposición legal, en particular la legislación en materia de usurpación («passing-off»). En cuanto a la ley de usurpación («passing-off»), véase lo señalado anteriormente en la letra a).
Requisitos para la protección
Los mismos que se indican en el apartado 7.1 anterior.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 43
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Derechos conferidos (a) y requisitos (b)
Los mismos que se indican en el apartado 7.1 supra.
8 Grecia
8.1 Marcas no registradas
Existen dos series de disposiciones que tratan de l a protección de las marcas no registradas y signos afines: a) la legislación en materia de marcas otorga al titular el derecho a prohibir el registro de una marca posterior, mientras que b) la legislación en materia de competencia desleal y otras disposiciones concretas se ocupan de la cuestión del uso. Puesto que generalmente se acepta la aplicación complementaria de la legislación en materia de marcas a cualquier asunto no contemplado en otras leyes, aquí se abordan ambas legislaciones.
Artículo 124, apartado 3, letra a), de la GR-LM (Ley nº 4072/2012); artículo 13, apartado 1, de la Ley 146/1914 relativa a la competencia desleal
Requisitos para la protección
La protección se adquiere a través del uso en el tráfico económico. Si no son intrínsecamente distintivas, las marcas no registradas deben haberse «establecido en el mercado».
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el registro de una marca posterior. (b) Uso anterior, riesgo de confusión respecto al origen.
8.2 Otros signos utilizados en el tráfico económico
Nombres de empresas
Artículo 58, del Código civil Artículos 4 a 8, de la Ley 1089/1980, modificada por la Ley 1746/1988
Requisitos para la protección
La protección se adquiere exclusivamente a través del uso en el tráfico económico. El registro no es indispensable para la protección, tan solo sirve a fines administrativos.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 44
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Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. (b) Uso anterior, riesgo de confusión respecto al origen.
Nombres comerciales y rótulos de establecimientos comerciales
Artículo 124, apartado 3, letra a), de la GR-LM (Ley nº 4072/2012) Artículo 13, apartados 1 y 2, de la Ley 146/1914 relativa a la competencia desleal
Requisitos para la protección
La protección se adquiere exclusivamente a través del uso en el tráfico económico. Si no son intrínsecamente distintivos, los nombres comerciales y rótulos de establecimientos comerciales deben haberse «establecido en el mercado».
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. (b) Uso anterior, riesgo de confusión respecto al origen.
Otros signos distintivos
Artículo 124, apartado 3, letra a), de la GR-LM
La forma peculiar de los productos o de su embalaje, así como su peculiar presentación o decoración (Iδιαίτερος διασχηματισμός, διακόσμηση).
Requisitos para la protección
Debe considerarse en e l sector comercial correspondiente que los signos identifican los productos de un comerciante determinado. La protección se adquiere a través del uso en el tráfico económico. Deben servir para cumplir una función de marca (es decir, poseer un carácter distintivo derivado de un determinado grado de originalidad).
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. (b) Uso anterior, riesgo de confusión respecto al origen.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 45
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Nota general: Todos los signos exclusivos antes mencionados están protegidos por lo dispuesto en el artículo 1 de la Ley 146/1914 relativa a la «competencia desleal», en particular por lo que se refiere a los actos de violación no i ncluidos en las disposiciones antes citadas (por ejemplo, protección de signos renombrados para productos distintos: dilución de s u carácter distintivo o de s u renombre o aprovechamiento desleal de estos, es decir, cuando no es aplicable el riesgo de confusión).
9 España
9.1 Marcas no registradas
La legislación española no protege las marcas no registradas, salvo que las marcas puedan considerarse notoriamente conocidas en España, en el sentido del artículo 6 bis del Convenio de París.
9.2 Otros signos utilizados en el tráfico económico
Nombres comerciales Artículo 7, apartado 1, letras a) y b), y artículo 7, apartado 2, letras a) y b), de la ES-LM
Requisitos para la protección
El nombre debe estar registrado o debe haberse solicitado en la Oficina Española de Patentes y Marcas.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a oponerse y a prohibir el uso de marcas posteriores. (b) Signos idénticos o similares, productos o servicios idénticos o similares y riesgo
de confusión.
Nombres comerciales, designaciones o denominaciones sociales de personas jurídicas Artículo 9, apartado 1, letra d), de la ES-LM
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 46
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Requisitos para la protección
No es necesario que los nombres estén registrados ni solicitados en la Oficina Española de P atentes y Marcas, siempre que identifiquen a una persona (empresa) con fines comerciales y se aporten pruebas de su uso o pruebas que confirmen que el signo es notoriamente conocido en el territorio nacional.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas posteriores. (b) Signos idénticos o similares, productos o servicios idénticos o similares y riesgo
de confusión.
10 Francia
10.1 Marcas no registradas
La legislación francesa no reconoce las marcas no registradas, con excepción de las marcas notoriamente conocidas en el sentido del artículo 6 bis del Convenio de París (artículo L.711-4, letra a), del Código francés de Propiedad Intelectual (FR-CPI))
10.2 Otros signos utilizados en el tráfico económico
El artículo L.711-4, del FR-CPI establece una lista no exhaustiva de signos que, si se consideran anteriores, podrían prohibir el uso de una marca posterior.
Denominación social o estilo de una empresa («dénomination sociale»)
Artículo L.711-4, letra b), del FR-CPI
Requisitos para la protección
La protección de la denominación social se adquiere desde la formalización de l a escritura de constitución de l a sociedad. Debe ser reconocida en todo el territorio nacional francés.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de una marca posterior. (b) Debe existir un riesgo de confusión entre el público.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Nombre comercial (nom commercial)
Artículo L.711-4, letra c), del FR-CPI
Requisitos para la protección
La protección se adquiere desde el primer uso en el tráfico económico.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de una marca posterior. (b) Debe existir un riesgo de confusión entre el público.
Rótulo de establecimiento («enseigne»)
Artículo L.711-4, letra c), del FR-CPI
Requisitos para la protección
La protección se adquiere desde el primer uso en el tráfico económico. Debe ser conocido en todo el territorio nacional francés («enseigne notoire»).
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de una marca posterior. (b) Debe existir un riesgo de confusión entre el público.
Nombres de dominio («noms de domaine»)
Requisitos para la protección
El nombre de dominio está protegido cuando está reservado y se utiliza.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de una marca posterior para productos idénticos o similares o en caso de un aprovechamiento indebido o dilución del renombre.
(b) Debe existir un riesgo de confusión o un daño al primer usuario.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 48
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11 Croacia
11.1 Marcas no registradas
En Croacia, las marcas no registradas están protegidas. Artículo 6, apartados 2 y 4, de la Ley croata de marcas y de la Ley de enmienda de la Ley de marcas
Requisitos para la protección
La marca no registrada debe tener renombre en la República de Croacia con anterioridad a la fecha de presentación o prioridad de la marca impugnada, con arreglo a la expresión «notoriamente conocidas» utilizada en el artículo 6 bis del Convenio de París.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a oponerse al registro de una marca posterior. (b) La marca posterior debe ser idéntica o s imilar y debe haber se solicitado para
productos o servicios idénticos o similares.
11.2 Otros signos utilizados en el tráfico económico
Nombre anterior
Artículo 6, apartado 6, de la Ley croata de marcas y de la Ley de enmienda de la Ley de marcas
Requisitos para la protección
Debe estar registrada.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a oponerse al registro de una marca posterior. (b) El nombre o la parte esencial del mismo debe ser idéntico o similar al signo para
el que se solicita el registro, y los productos o servicios deben s er idénticos o similares, salvo si el solicitante poseía un nom bre idéntico o s imilar en el momento de presentación de la solicitud de registro de una marca.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 49
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12 Italia
12.1 Marcas no registradas
La marca no registrada («marchio di fatto») se define como el signo conocido como marca o signo que es distintivo de los productos fabricados o servicios prestados en el mercado. El uso anterior debe ser notoriamente conocido.
Artículo 12, apartado 1, letra a), del IT-CPI
Requisitos para la protección
La marca no registrada debe utilizarse en la medida que sea «notoriamente conocida en todo el territorio nacional o en una parte considerable de este».
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas posteriores. (b) Signos idénticos o similares, productos o servicios idénticos o similares y riesgo
de confusión, incluido el riesgo de asociación
12.2 Otros signos utilizados en el tráfico económico
Artículo 12, apartado 1, letra b), del IT-CPI
Nombres de sociedades, denominaciones sociales, nombres comerciales o rótulos de es tablecimiento, nombres de dominios adoptados por terceros («ditta», «denominazione sociale», «ragione sociale», «insegna», «nome a dominio»)
Requisitos para la protección
Uso en la medida en que sean «notoriamente conocidos en todo el territorio nacional o en una parte considerable de este».
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de una marca posterior, si es conocida por el público destinatario en todo el territorio nacional o una parte considerable de este.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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(b) Signos idénticos o similares, productos o servicios idénticos o similares y riesgo de confusión, incluido el riesgo de asociación.
13 Chipre
13.1 Marcas no registradas
La legislación de Chipre no reconoce las marcas no registradas.
14 Letonia
14.1 Marcas no registradas
En Letonia, las marcas no registradas están protegidas. Artículo 9, apartado 3, punto 4, de la LV-LM
Requisitos para la protección
La marca no r egistrada debe haber sido utilizada de buena fe y de forma lícita con anterioridad a la fecha de presentación de la solicitud de registro de la marca (o de la fecha de prioridad, respectivamente) en actividades comerciales en Letonia, en relación con productos o servicios idénticos o similares.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. (b) Signos idénticos o similares y productos o servicios idénticos o similares; el uso
de la marca posterior debe ser capaz de confundir a los consumidores sobre el origen de los productos y servicios.
14.2 Otros signos utilizados en el tráfico económico
Nombres comerciales de Letonia o de u n país extranjero (designaciones comerciales, nombres de medios de comunicación u otros signos similares) que sean notoriamente conocidos en Letonia.
Artículo 9, apartado 3, punto 3, de la LV-LM
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 51
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Requisitos para la protección
El nombre comercial debe adq uirirse a través de un us o leal y lícito en el tráfico económico en Letonia antes de la fecha de presentación/prioridad de una marca posterior utilizada en u n sector comercial idéntico o similar. El nombre comercial «notoriamente conocido» debe s erlo en Letonia con anterioridad a la fecha de presentación/prioridad de la marca posterior.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. (b) Los signos deben ser los mismos o tener una similitud que induzca a confusión y
designar productos y servicios idénticos o similares.
15 Lituania
15.1 Marcas no registradas
Artículo 7, apartados 1 y 3, punto 9, de la LT-LM
Requisitos para la protección
Las marcas no registradas están protegidas solo si una resolución judicial determina que son marcas notoriamente conocidas.
15.2 Otros signos utilizados en el tráfico económico
Nombres comerciales/nombres de empresa y otros identificadores de empresa
Derechos conferidos (a) y requisitos (b)
(a) Derecho a anular marcas (registradas) posteriores. (b) El registro de la marca se declarará nulo si la marca es idéntica al nombre de
empresa de una persona jurídica o s i existe el riesgo de que se confunda con dicho nombre.
Artículo 7, apartado 1, punto 4, de la LT-LM
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 52
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16 Hungría
16.1 Marcas no registradas
La legislación húngara sobre marcas no protege las marcas no registradas, a menos que se hayan utilizado de forma efectiva en el país y el uso del signo sin el consentimiento del usuario anterior sea contrario a la ley.
Artículo 5, apartado 2, letra a), de la HU-LM
El artículo 6, de l a Ley LVII de 1996 sobre la prohibición de p rácticas comerciales desleales y restrictivas prohíbe fabricar, distribuir o hacer publicidad de productos y servicios sin el consentimiento de los competidores, si dichos productos y servicios tienen una presentación, embalaje o etiquetado (incluida la denominación de or igen) característicos; o usar un nombre, marca o designación por el que habitualmente se reconoce a un competidor o sus productos y servicios.
Las disposiciones anteriores sirven sólo como ejemplo.
17 Malta
17.1 Marcas no registradas
Capítulo 26 de la Ley maltesa de marcas; artículo 6, apartado 4, de la MT-LM
Requisitos para la protección
La protección se adquiere mediante un uso continuado anterior.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. (b) Los signos deben prestarse a confusión y designar productos y servicios
idénticos o similares.
17.2 Otros signos utilizados en el tráfico económico
Artículo 11, apartado 3, de la MT-LM
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 53
DRAFT VERSION 1.0 DATE 01/08/2014
Requisitos para la protección
La protección se adquiere mediante un uso continuado.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores (artículo 6, apartado 2, de la MT-LM). (b) Riesgo de confusión.
A la luz del artículo 6, apartado 4, y del artículo 11, apartado 3, de la MT-LM, otros signos utilizados en el tráfico económico se consideran derechos anteriores.
18 Austria
18.1 Marcas no registradas
En Austria, las marcas no registradas están protegidas:
Artículo 31, de la Ley austríaca de protección de marcas (1970)
Requisitos para la protección
La marca no registrada debe haber adquirido un cierto grado de no toriedad en el tráfico económico («Verkehrsgeltung») antes de la solicitud de marca por el titular de una marca (registrada) posterior, salvo si dicho titular ha utilizado su marca en el tráfico económico sin registrarla durante al menos el mismo tiempo que el titular de la marca no registrada.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a solicitar la anulación de una marca (registrada) posterior. (b) El titular de una marca no registrada no debe haber tolerado el uso de la marca
registrada posterior durante cinco años consecutivos («Verwirkung»). Esto es aplicable solo a aq uellos productos o servicios para los que utilizó la marca registrada y únicamente si la solicitud de la marca registrada no fue presentada de mala fe. Debe declararse la existencia de un riesgo de confusión.
18.2 Otros signos utilizados en el tráfico económico
Artículo 32, de la Ley austríaca de protección de marcas (1970) Artículo 9, de la Ley federal contra la competencia desleal (1984)
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 54
DRAFT VERSION 1.0 DATE 01/08/2014
Signos de em presas («Unternehmenskennzeichen»), es dec ir, nombres, empresas (nombres comerciales) («Firma») o designaciones específicas de una empresa («besondere Bezeichnung eines Unternehmens»), o d esignaciones similares
Requisitos para la protección
El empresario debe ser el titular del signo o signos de empresa.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a solicitar la anulación de una marca (registrada) posterior. (b) El empresario no debe haber tolerado el uso de la marca registrada posterior
durante cinco años consecutivos («Verwirkung»). Esto es aplicable solo a aquellos productos o servicios para los que utilizó la marca registrada y únicamente si la solicitud de la marca registrada no fue presentada de mala fe. El uso de la marca podría provocar un riesgo de confusión en el tráfico económico respecto de uno de los signos de empresa citados del demandante.
Los signos de empresa («Geschäftsabzeichen») y otros signos destinados a distinguir a esa empresa de otras, incluida la presentación o el embalaje de los productos o la presentación de la papelería comercial
Requisitos para la protección
Estos signos deben ser percibidos como designaciones de la empresa por parte de los participantes del mercado implicados o haber adquirido dicho reconocimiento como consecuencia del uso («Verkehrsgeltung»).
Derechos conferidos (a) y requisitos (b)
(a) [Solo] el derecho a demandar al infractor para que cese [en la práctica infractora], así como a solicitar una i ndemnización por daños y perjuicios si la violación fue por dolo o culpa. [Además de lo anterior, en el caso de las marcas registradas, el titular también tiene derecho a demandar y solicitar que cese [en el uso de l a marca] y el derecho a s olicitar una indemnización por daños y perjuicios en un procedimiento civil.]
(b) El empresario no debe haber tolerado el uso de la marca registrada posterior durante cinco años consecutivos («Verwirkung»). Esto es aplicable solo a aquellos productos o servicios para los que utilizó la marca registrada y únicamente si la solicitud de la marca registrada no fue presentada de mala fe. La marca debe utilizarse de tal modo que pueda inducir a confusión en el tráfico económico respecto a uno de los signos de empresa del empresario.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 55
DRAFT VERSION 1.0 DATE 01/08/2014
19 Polonia
19.1 Marcas no registradas
Artículo 132, apartado 1, inciso ii), de la PL-Ley PI
Requisitos para la protección
Las marcas no registradas solo están protegidas si son notoriamente conocidas y se utilizan en el tráfico económico.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas posteriores. (b) La marca no registrada debe ser notoriamente conocida y utilizada en el tráfico
económico; riesgo de confusión.
Existe una pr otección adicional para las marcas no registradas notoriamente conocidas con renombre (marca que goza de renombre). El titular de dicha marca podrá solicitar que se declare nulo el registro de una marca posterior idéntica o similar, con independencia de los productos o servicios para los que fue registrada, cuyo uso sin causa justificada se aprovecharía indebidamente o sería perjudicial para el carácter distintivo o el renombre de la marca anterior. Se prohíbe al titular de la marca interponer una demanda si este ha sido consciente del uso de una marca posterior y lo ha tolerado durante cinco años consecutivos.
19.2 Otros signos utilizados en el tráfico económico
Artículo 131, apartados 1 y 5, de la PL-Ley PI Artículo 156, apartado 1, inciso i), de la PL-Ley PI, artículo 158, apartado 1, de la PL- Ley PI
Nombre o dirección en la que una persona desempeña su actividad comercial
Requisitos para la protección
Denominación bajo la cual una persona desempeña su actividad comercial.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 56
DRAFT VERSION 1.0 DATE 01/08/2014
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir la presentación de una marca. (b) Debe haber existido un us o anterior de l a denominación de l a actividad
empresarial para productos idénticos o similares que pueden confundir al público respecto del origen del producto.
20 Portugal
20.1 Marcas no registradas
En Portugal, se protegen las siguientes marcas no registradas:
Las marcas no registradas que están siendo usadas
Artículo 227, del PT–CPI
Requisitos para la protección
La marca no registrada debe haber sido utilizada en Portugal en los seis meses anteriores a la presentación de la solicitud de registro.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a oponerse al registro de la misma marca por parte de otras entidades. (b) Los signos y los productos o servicios deben ser los mismos.
Marcas notoriamente conocidas
Artículo 241, del PT–CPI
Requisitos para la protección
La marca de la que se trate debe ser notoriamente conocida en Portugal.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. (b) Los signos deben ser idénticos o similares y los productos o servicios deben ser
idénticos o similares; debe existir un riesgo de confusión o de as ociación con el
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 57
DRAFT VERSION 1.0 DATE 01/08/2014
titular del derecho anterior; la parte interesada debe haber solicitado el registro de la marca notoriamente conocida.
Marcas de prestigio
Artículo 241, del PT–CPI
Requisitos para la protección
La marca de la que se trate debe gozar de prestigio en Portugal.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. (b) Los signos deben ser idénticos o similares o, incluso si los productos y servicios
son diferentes, el uso de la marca que se solicita se aprovecha indebidamente del carácter distintivo o del renombre de l a marca de pr estigio anterior o e s perjudicial para los mismos; la parte interesada debe haber solicitado el registro de la marca de prestigio.
20.2 Otros signos utilizados en el tráfico económico
Nombres comerciales, nombres de empresa
Artículo 239, apartado 2, letra a), del PT-CPI
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas posteriores. (b) El nombre del que se trate debe ser susceptible de inducir a error o prestarse a
confundir al consumidor.
Logotipos (nombre y emblema/rótulo de un establecimiento) (Signos denominativos y figurativos que identifican a una entidad que ofrece servicio o comercia con productos)
Artículo 304-N, del PT–CPI
Requisitos para la protección
El signo de que se trate debe estar registrado.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 58
DRAFT VERSION 1.0 DATE 01/08/2014
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de signos posteriores. (b) El titular no debe haber dado su consentimiento y el signo posterior debe ser
idéntico o similar al signo del titular.
21 Rumanía
21.1 Marcas no registradas
Como norma general, la legislación sobre marcas de Rumanía no protege las marcas no registradas (Ley nº 84/1998 relativa a las marcas y a las indicaciones geográficas). Como excepción a esta norma, en caso de oposición, la marca no registrada podrá considerarse un derecho anterior si es notoriamente conocida en R umanía, en el sentido del artículo 6 bis del Convenio de París.
Artículo 3, letra d), y artículo 6, apartado 2, letra f), de la RO-Ley PI
Requisitos para la protección
La marca no registrada debe ser notoriamente conocida en Rumanía en el sentido del artículo 6 bis del Convenio de París.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas posteriores. (b) Debe ser notoriamente conocida en Rumanía y debe existir riesgo de confusión.
21.2 Otros signos utilizados en el tráfico económico
Otros signos utilizados en el tráfico económico que son considerados derechos anteriores son los nombres comerciales.
Solo el titular de la marca podrá oponer una marca o solicitar al órgano judicial competente que anule dicha marca.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 59
DRAFT VERSION 1.0 DATE 01/08/2014
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. Solo el titular de la marca podrá oponerse a una marca o solicitar al órgano judicial competente que anule dicha marca.
(b) Uso anterior en el mercado.
22 Eslovenia
22.1 Marcas no registradas
La Ley de propiedad intelectual de Eslovenia no reconoce directamente las marcas no registradas.
No obstante, con arreglo al artículo 44, apartado 1, letra d), de la SL-Ley PI, no podrá registrarse un signo como marca si es idéntico o s imilar a una marca o s igno no registrado, en la República de E slovenia esta última se considera una marca notoriamente conocida con arreglo al artículo 6 bis del Convenio de París.
22.2 Otros signos utilizados en el tráfico económico
Artículo 44, apartado 1, letra f), de la SL-Ley PI
Nombres comerciales registrados (nombres de empresas registrados), donde el término «denominación social» ha de interpretarse en sentido amplio y no solo abarca las sociedades privadas, como empresas privadas, sociedades de responsabilidad limitada, otras sociedades mercantiles y nombres comerciales secundarios, sino también las fundaciones, sindicatos, asociaciones, museos e instituciones públicas.
23 Eslovaquia
23.1 Marcas no registradas
Artículo 7, letra f), de la SK-LM
Las marcas no registradas se definen como signos no registrados adquiridos y utilizados en el tráfico económico con anterioridad a la presentación de una solicitud posterior. Deben ser distintivas y tener un alcance no únicamente local.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 60
DRAFT VERSION 1.0 DATE 01/08/2014
Requisitos para la protección
Las marcas no registradas deben habe r sido utilizadas anteriormente en el tráfico económico de alcance no únicamente local y deben haber adquirido carácter distintivo a través del uso en el tráfico económico en el territorio de la República Eslovaca de alcance no únicamente local antes de la presentación de la solicitud impugnada..
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas posteriores. (b) Los signos deben ser idénticos o similares y deben cubrir productos y/o servicios
idénticos o similares.
23.2 Otros signos utilizados en el tráfico económico
Artículo 7, letra f), de la SK-LM
Nombres comerciales y otros signos relacionados.
Estos signos deben haber adquirido carácter distintivo a t ravés del uso en el tráfico económico en el territorio de la República Eslovaca de alcance no únicamente local antes de la presentación de la solicitud impugnada.
Requisitos para la protección
Inscripción en el Registro de Sociedades o en un registro similar.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas posteriores. (b) Los signos deben ser idénticos o similares y deben cubrir productos y/o servicios
idénticos o similares.
24 Finlandia
24.1 Marcas no registradas
En Finlandia, las marcas no registradas están protegidas.
Artículo 1; artículo 2, apartado 3; artículo 6; artículo 14, apartados 1 y 6, de la Ley finlandesa de marcas (FI-LM)
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 61
DRAFT VERSION 1.0 DATE 01/08/2014
Requisitos para la protección
Uso que comporte el establecimiento de l a marca no r egistrada en el mercado. Se considera establecida si es conocida generalmente en los correspondientes círculos empresariales o de consumidores de Finlandia como símbolo específico de l os productos o servicios de su titular.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas (registradas) posteriores. (b) El ámbito de p rotección es idéntico al de una marca registrada finlandesa, es
decir, contra los actos correspondientes a los contemplados en el artículo 9, apartado 1, letras a), b) y c), del RMC.
24.2 Otros signos utilizados en el tráfico económico
Artículo 1; artículo 2, apartado 2; artículo 3, apartado 2; artículo 6; artículo 14, apartados 1 y 6, de la FI-LM
Nombres comerciales («toiminimi, firma»: cualquier nombre que utilice la persona física o j urídica en ac tividades comerciales), incluyen los nombres comerciales secundarios («aputoiminimi, bifirma»: una persona física o jurídica puede desempeñar parte de s us actividades con un nom bre comercial secundario) y los símbolos secundarios («toissijainen tunnus, sekundärt kännetecken»: signos, incluso figurativos, que se usan en el tráfico económico).
Requisitos para la protección
Uso que comporte el establecimiento de la marca no registrada en el mercado.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores. (b) Los signos deben hacer referencia a productos o servicios idénticos o similares y
debe exigir un riesgo de confusión.
Nombre de comerciante
Artículo 1, apartado 6; artículo 14, apartados 1 y 6, de la FI-LM
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir marcas posteriores.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 62
DRAFT VERSION 1.0 DATE 01/08/2014
(b) Los signos deben hacer referencia a productos o servicios idénticos o similares y debe existir un riesgo de confusión.
25 Suecia
Nueva Ley de marcas de Suecia (2010:1877)
25.1 Marcas no registradas
Capítulo 1, artículo 7 y capítulo 2, artículo 8, de la SE-LM
Requisitos para la protección
La marca no registrada debe haber sido utilizada de tal modo que esté establecida en el mercado.
Derechos conferidos (a) y requisitos (b)
(a) El mismo que las marcas registradas: derecho a prohibir el uso de marcas posteriores.
(b) Se considera que una marca se ha es tablecido en el mercado cuando es conocida, por una pa rte considerable del público al que está destinado, como símbolo de los productos que lo llevan.
25.2 Otros signos utilizados en el tráfico económico
Nombres comerciales/nombres de empresa
Capítulo 1, artículo 7, apartado 1; capítulo 1, artículo 8; capítulo 2, artículo 9, de la SE- LM
Requisitos para la protección
El nombre debe haber sido registrado como nombre de empresa o utilizado de un modo que haya quedado establecido en el mercado. Puede estar limitado a la parte del país en la que está establecido en el mercado.
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas posteriores. (b) Debe existir un riesgo de confusión y los signos deben designar productos y
servicios idénticos o similares.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 63
DRAFT VERSION 1.0 DATE 01/08/2014
26 Reino Unido
Nota general para los signos no registrados: la usurpación («passing-off») no constituye en m odo alguno un «der echo de propiedad» que «protege una marca no registrada ni otro signo utilizado en el tráfico económico, sino que, en su lugar, hace referencia a una «invasión ilegal» de un derecho de propiedad, aunque la propiedad protegida en este caso es el «goodwill» y el renombre de una empresa, a la que la representación falsa puede irrogar un daño. El que una oposición que está basada en el artículo 5, apartado 4, letra a), prospere depende, entonces, de una serie de factores acumulativos: (demostración y ámbito de aplicación del «goodwill»; representación falsa, perjuicio al «goodwill»). Sobre dicha base, resulta irrelevante toda distinción entre «protección» ofrecida a las «marcas no registradas» y a «otros signos utilizados en el tráfico económico» en el derecho británico del «Common law» de «passing-off» (usurpación). El derecho de «usurpación» podría plantearse (y más frecuentemente de l o que lo hace) meramente a nivel local (en relación con todo el Reino Unido). (Véanse infra «Las particularidades de la acción por usurpación).
26.1 Marcas no registradas
Marcas no registradas utilizadas en el tráfico económico
Artículo 5, apartado 4, letra a), de la UK-LM
Requisitos para la protección
Debe utilizarse en el tráfico económico si está protegida por una disposición legal, incluida la legislación en materia de usurpación («passing-off»).
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas posteriores. (b) El «goodwill» debe quedar demostrado en el Reino Unido en la correspondiente
fecha, su ámbito de aplicación debe comprender los productos o servicios de la solicitud; la representación falsa en relación con los «signos» de que se trate; puede inferirse un daño al «goodwill» del oponente debido al uso del signo que ha sido solicitado.
26.2 Otros signos utilizados en el tráfico económico
Artículo 5, apartado 4, letra a), de la UK-LM
Signo utilizado en el tráfico económico.
Signo utilizado en el tráfico económico, protegido por cualquier disposición legal, incluida la legislación en materia de usurpación («passing-off»).
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 64
DRAFT VERSION 1.0 DATE 01/08/2014
Requisitos para la protección
El mismo que en el apartado 26.1.
Derechos conferidos (a) y requisitos (b)
El mismo que en el apartado 26.1.
Observaciones: La Ley relativa a la protección del símbolo olímpico de 1995 comprende disposiciones sobre el uso exclusivo con fines comerciales del símbolo olímpico y determinadas palabras asociadas con los Juegos Olímpicos por parte de una persona designada por el Secretario de Estado; dicha facultada no da pie a la aplicación del artículo 8, apartado 4, del RMC.
Las particularidades de la acción por usurpación («passing-off»)
La usurpación («passing-off») es un ilícito económico de las jurisdicciones de «Common law», cuyos elementos esenciales son (i) una representación falsa (ii) que irroga daños (iii) al «goodwill» (renombre) del comerciante o comerciantes. Es un tipo de observancia de la propiedad intelectual contra el uso no autorizado de un der echo de propiedad intelectual.
El propósito de esta sección no es analizar los requisitos sustantivos de las acciones de usurpación, tal como han sido desarrollados por la jurisprudencia de los tribunales de «Common law» sino establecer qué derechos pueden ser protegidos por las acciones de «passing-off» contempladas en el ámbito del artículo 8, apartado 4, del RMC y mostrar cómo los jueces europeos han aplicado los requisitos clave del artículo 8, apartado 4, del RMC, en relación con la usurpación.
Tradicionalmente, y en su forma más común, las acciones por usurpación ofrecen a las marcas no registradas una protección similar a aquella de las marcas registradas, evitando que se utilice un nombre, palabra, dispositivo o presentación que lleve a que los productos o servicios de un comerciante se representen de forma falsa como los de otro. Con ello, las acciones por usurpación («passing-off») protegen el «goodwill» que los comerciantes adquieren al utilizar los signos en lugar de proteger los signos per se.
El ilícito por usurpación abarca una amplia serie de s ituaciones que van desde la forma habitual mencionada anteriormente a la forma ampliada, lo cual puede evitar el uso de términos genéricos cuando dicho uso ofrezca una representación falsa de que los productos o servicios posean una c aracterística o cualidad que no tienen (por ejemplo, utilizar el término «Vodkat» para un tipo de bebida que no es vodka).
En las acciones por usurpación («passing-off»), el oponente (demandante) debe demostrar tres elementos, la denominada «trinidad»:
a) el «goodwill» del que disfrutan los productos o servicios que suministra;
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 65
DRAFT VERSION 1.0 DATE 01/08/2014
b) la representación falsa (intencionada o no) por parte del demandante al público que puede inducir o induce al público a creer que los productos o servicios que se ofrecen son los del oponente (demandante);
c) el daño (real o potencial) mediante la creencia errónea generada por la representación falsa del demandado.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 1
FINAL VERSION 1.0 DATE 01/08/2014
DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 5
MARCAS RENOMBRADAS ARTÍCULO 8, APARTADO 5, DEL RMC
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 2
FINAL VERSION 1.0 DATE 01/08/2014
Índice
1 Introducción............................................................................................... 4 1.1 Finalidad del artículo 8, apartado 5, del RMC...........................................4 1.2 Marco jurídico.............................................................................................4
2 Ámbito de aplicación................................................................................. 5 2.1 Aplicabilidad a las marcas registradas.....................................................6
2.1.1 El requisito de registro.................................................................................... 6 2.1.2 Relación entre las marcas renombradas (artículo 8, apartado 5, del RMC)
y las marcas notoriamente conocidas (artículo 8, apartado 2, letra c del RMC) .............................................................................................................. 7
2.2 Aplicabilidad a productos y servicios idénticos o similares...................9
3 Condiciones de aplicación ..................................................................... 10 3.1 Marca anterior que goza de renombre....................................................11
3.1.1 Naturaleza del renombre .............................................................................. 11 3.1.2 Alcance del renombre................................................................................... 12
3.1.2.1 Grado de reconocimiento ..........................................................................12 3.1.2.2 Público destinatario ...................................................................................13 3.1.2.3 Productos y servicios amparados..............................................................15 3.1.2.4 Territorio de referencia ..............................................................................16 3.1.2.5 Fecha pertinente .......................................................................................17
3.1.3 Apreciación del renombre – factores pertinentes......................................... 20 3.1.3.1 Conocimiento de la marca.........................................................................21 3.1.3.2 Cuota de mercado.....................................................................................22 3.1.3.3 Intensidad del uso .....................................................................................24 3.1.3.4 Extensión geográfica del uso ....................................................................26 3.1.3.5 Duración del uso .......................................................................................27 3.1.3.6 Actividades promocionales........................................................................28 3.1.3.7 Otros factores............................................................................................30
3.1.4 Prueba del renombre.................................................................................... 31 3.1.4.1 Criterios aplicables a la prueba .................................................................31 3.1.4.2 Carga de la prueba....................................................................................32 3.1.4.3 Valoración de la prueba.............................................................................33 3.1.4.4 Medios de prueba......................................................................................34
3.2 Similitud de los signos.............................................................................42 3.2.1 La noción de «similitud» en virtud del artículo 8, apartado 5, del RMC,
comparada con la del artículo 8, apartado 1, letra b), del RMC................... 43
3.3 Vínculo entre los signos ..........................................................................45 3.3.1 Ejemplos en los que se constató un vínculo entre los signos...................... 47 3.3.2 Ejemplos en los que no se constató un vínculo entre los signos................. 48
3.4 Aprovechamiento indebido del renombre ..............................................50 3.4.1 Objeto de la protección................................................................................. 50 3.4.2 Apreciación del aprovechamiento indebido del renombre ........................... 51 3.4.3 Formas de aprovechamiento indebido ......................................................... 53
3.4.3.1 Aprovechamiento indebido del carácter distintivo o del renombre ............54 3.4.3.2 Perjuicio para el carácter distintivo............................................................61 3.4.3.3 Perjuicio para el renombre ........................................................................66
3.4.4 Prueba del aprovechamiento indebido del renombre .................................. 72 3.4.4.1 Criterios aplicables a la prueba y carga de la prueba................................72
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3.4.4.2 Medios de prueba......................................................................................75
3.5 Uso sin justa causa..................................................................................76 3.5.1 Ejemplos de justa causa ............................................................................ 77
3.5.1.1 Justa causa confirmada.............................................................................77 3.5.1.2 Justa causa desestimada..........................................................................78
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1 Introducción
1.1 Finalidad del artículo 8, apartado 5, del RMC
Mientras que la doble identidad de los signos y de los productos o servicios, en virtud del artículo 8, apartado 1, letra a), del RMC, y la existencia del riesgo de confusión, en virtud del artículo 8, apartado 1,a letra b), del RMC constituye el condicionante necesario para otorgar la protección a una marca anterior, en el apartado 5 del citado artículo no se exige ni la identidad o similitud de los productos o servicios ni el riesgo de confusión. El artículo 8, apartado 5, del RMC no sólo otorga protección a l as marcas anteriores en cuanto a productos o servicios idénticos o similares, sino también a los productos o s ervicios no s imilares sin exigir riesgo de confusión, a condición de que los signos sean idénticos o similares y de que la marca anterior goce de renombre, el cual se vería perjudicado por la utilización sin justa causa de la marca solicitada.
Las razones que subyacen a la ampliación de la protección conferida en virtud del artículo 8, apartado 5, del RMC estriban en que la función y el valor de una marca no se limitan únicamente a que sirva como indicación de su origen. Una marca también puede transmitir otros mensajes que no sean la indicación de origen de los productos y servicios, como la promesa o la garantía de una determinada calidad, o una imagen concreta relacionada, por ejemplo, con el lujo, un estilo de vida, la exclusividad, etc. («función publicitaria») (véase sentencia de 18 /06/2009, en el asunto C-487/07, «L’Oréal y otros»). Los titulares de l as marcas frecuentemente invierten ingentes sumas y esfuerzos considerables en generar una imagen asociada a su marca. La imagen asociada le confiere a una marca un valor económico –con frecuencia importante-, e independiente del valor de los productos y servicios para los que se hubiera registrado.
El artículo 8, apartado 5, del RMC aspira a proteger esta función publicitaria así como las inversiones efectuadas en la creación de una determinada imagen asociada a la marca, otorgando protección a las marcas renombradas, independientemente de que los productos o servicios sean similares o de que exista un riesgo de confusión, a condición de que pueda demostrar que el uso sin justa causa de la marca solicitada objeto de oposición supone aprovechamiento indebido del renombre de la marca anterior. Por consiguiente, el objetivo principal del artículo 8, apartado 5, del RMC no es proteger al público general frente a la confusión respecto al origen, sino más bien proteger al titular frente al aprovechamiento indebido del renombre de una marca para la que se han efectuado importantes inversiones.
1.2 Marco jurídico
A tenor del artículo 8, apartado 5, del RMC, mediando oposición del titular de una marca anterior, en el sentido del apartado 2, se denegará el registro de la marca solicitada:
cuando sea idéntica o similar a la marca anterior y su registro se solicite para productos o servicios que no sean similares a aquellos para los que se haya registrado la marca anterior, si, tratándose de una m arca comunitaria anterior, esta fuera notoriamente conocida en la Comunidad, y, tratándose de una marca nacional anterior, esta fuera notoriamente conocida en el Estado miembro de que se trate y si el uso sin justa causa
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de la marca solicitada se aprovechara indebidamente del carácter distintivo o de la notoriedad de la marca anterior o fuera perjudicial para los mismos.
El texto es similar al empleado en las disposiciones paralelas de la Directiva sobre marcas (Directiva 2008/95/CE del Parlamento Europeo y del Consejo, de 22 de octubre de 2008 , relativa a l a aproximación de las legislaciones de l os Estados miembros en materia de marcas (versión codificada), en lo sucesivo «DM»), es decir, en el artículo 4, apartado 3 de la DM, relativo a la protección de las marcas comunitarias que gocen de renombre, y en el artículo 4, apartado 4, letra a), de esta misma Directiva, que establece una disposición equivalente para las marcas nacionales. Si bien la aplicación del artículo 4, apartado 4, letra a), de la DM tenía carácter facultativo, en la práctica todos los Estados miembros han adoptado disposiciones destinadas a conceder una ampliación de la protección a las marcas nacionales que gozan de renombre.
Sin embargo, aún en el caso hipotético de que un país se hubiera adherido recientemente y decidiese no incluir una norma equivalente en su legislación nacional sobre marcas, la referencia expresa a las marcas nacionales renombradas señalada en el artículo 8, apartado 5, del RMC significa que estas gozan de protección directa en el ámbito comunitario, es decir, independientemente de que la legislación nacional les otorgue o no una protección ampliada.
El texto empleado en el artículo 8, apartado 5, del RMC es también muy similar al utilizado en el artículo 9, apartado 1, letra c), del RMC y en el artículo 5, apartado 2, de la DM, esto es, las disposiciones que definen los derechos exclusivos del titular de una marca, con una ligera diferencia en el modo de referirse al posible perjuicio. Contrariamente al artículo 8, apartado 5, del RMC, redactado en condicional, y aplicable cuando el uso de la marca solicitada «se aprovechara indebidamente del carácter distintivo o del renombre de la marca anterior o fuera perjudicial para los mismos», el artículo 9, apartado 1, letra c), del RMC y el artículo 5, apartado 2, de la Directiva se aplican cuando «se pretenda obtener una ventaja indebida o se pueda causar perjuicio a los mismos». Esta diferencia se explica por el hecho de que en el primer caso – el artículo 8, apartado 5, del RMC – entra en juego la admisibilidad para el registro, sobre la que es preciso pronunciarse antes de que haya podido utilizarse la marca posterior, mientras que en el segundo caso se trata del derecho a prohibir el uso. Las consecuencias de esta diferencia a efectos de los medios de prueba requeridos en c ada caso para demostrar que existe perjuicio se examinan a continuación, en el apartado 3.4.
2 Ámbito de aplicación
El texto del artículo 8, apartado 5, del RMC ha dado lugar a controversias sobre si debe aplicarse exclusivamente a: a) las marcas registradas anteriormente y b) los productos o s ervicios no s imilares. Dado que estas cuestiones afectan al ámbito de aplicación, conviene determinar desde el principio si el mencionado artículo 8, apartado 5, del RMC es aplicable igualmente a: a) las marcas no registradas notoriamente conocidas y b) los productos o servicios similares o idénticos.
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2.1 Aplicabilidad a las marcas registradas
2.1.1 El requisito de registro
El artículo 8, apartado 5, del RMC especifica los tipos de derechos anteriores en los que puede basarse la oposición refiriéndose al apartado 2 de dicho artículo, en el que se incluyen, además de las solicitudes o registros comunitarios, internacionales, nacionales o efectuados en el Benelux, las marcas anteriores notoriamente conocidas en el sentido del artículo 6 bis del Convenio de París , es decir, las marcas que pueden haber sido registradas o no.
Ha llegado a sostenerse que, como consecuencia de dicha referencia, el artículo 8, apartado 5, del RMC debe aplicarse igualmente a las marcas no registradas, en la medida al menos en que hayan llegado a ad quirir notoriedad en el territorio de referencia, en particular, teniendo en cuenta que la protección de las marcas notoriamente conocidas frente a p roductos y servicios no s imilares.se encuentra protegida por el artículo 4, apartado 1, letra b), de la Recomendación Conjunta relativa a las Disposiciones Sobre La Protección de las Marcas Notoriamente Conocidas, de la OMPI, así como por el artículo 16, apartado 3, del Acuerdo sobre los Aspectos de los Derechos de Propiedad Intelectual relacionados con el Comercio (ADPIC).
Sin embargo, no sería posible invocar, en apoyo de esta interpretación, el tenor literal del artículo 8, apartado 5, del RMC, que indirectamente, pero con claridad, limita su ámbito de apl icación a las marcas registradas anteriores, al denegar el registro «cuando [la marca solicitada] sea idéntica o similar a la marca anterior y se solicite su registro para productos o servicios que no sean similares a aquellos para los que se haya registrado la marca anterior». De lo que se deduce que la existencia de un registro anterior constituye una condición necesaria para la aplicación del artículo 8, apartado 5, del RMC y que, por consiguiente, la referencia al apartado 2 de ese mismo artículo deberá limitarse a l os registros anteriores y a las solicitudes anteriores objeto de registro (sentencia de 11/07/2007, en el asunto T-150/04, «TOSCA BLU», apartado 55).
Este enfoque restrictivo no es incompatible con el artículo 16, apartado 3 del ADPIC, que hace referencia al registro anterior en términos muy similares:
«El artículo 6 bis del Convenio de P arís (1967) se aplicará mutatis mutandis a bienes o servicios que no sean similares a aquellos para los cuales una marca de fábrica o de comercio ha sido registrada, a condición de que el uso de esa marca […] indique una conexión entre dichos bienes o servicios y el titular de l a marca registrada y a c ondición de q ue sea probable que ese uso lesione los intereses del titular de la marca registrada.» (resaltado añadido)
Tampoco puede excluirse dicho planteamiento por el hecho de que la Recomendación de la OMPI no imponga ninguna condición para la ampliación de la protección a las marcas anteriores notoriamente conocidas, desde el momento que tales recomendaciones no son vinculantes a efectos de la interpretación del RMC.
Por consiguiente, el artículo 8, apartado 5, del RMC se aplica únicamente a las marcas anteriores registradas en la Comunidad, en el Benelux y en un Estado miembro, así como a las solicitudes anteriores pendientes de registro.
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2.1.2 Relación entre las marcas renombradas (artículo 8, apartado 5, del RMC) y las marcas notoriamente conocidas (artículo 8, apartado 2, letra c del RMC)
El requisito del registro permite delimitar el artículo 8, apartado 5, y el artículo 8, apartado 2, letra c), del RMC. Ahora bien, ni el artículo 8, apartado 2, letra c), del RMC ni el artículo 6 bis del Convenio de París estipulan expresamente que la marca notoriamente conocida tenga que ser una marca no r egistrada. Concluir que estas últimas disposiciones se refieren exclusivamente a l as marcas no r egistradas se deduce indirectamente de su propio espíritu y ratio legis.
En lo concerniente al Convenio de París, la finalidad de lo dispuesto en su artículo 6 bis, introducido por primera vez en 1925, consistía en evitar el registro y la utilización de marcas que pudieran generar confusión con otra marca notoriamente conocida en el país de registro, aunque esta última marca notoriamente conocida no estuviese protegida, o no todavía, en dicho país mediante su registro.
Por lo que se refiere al RMC, el objetivo que perseguía era evitar un vacío jurídico, ya que el artículo 8, apartado 5, ampara únicamente las MC registradas. Sin el artículo 8, apartado 2, letra c), del RMC, las marcas no r egistradas notoriamente conocidas no gozarían de protección (salvo la contemplada en el artículo 8, apartado 4, del RMC). Para evitar esta laguna jurídica, el RMC ha p revisto la protección de l as marcas notoriamente conocidas en el sentido del artículo 6 bis del Convenio de París, puesto que este artículo fue redactado principalmente con el fin de otorgar protección a las marcas no registradas caracterizadas por ser notoriamente conocidas.
Como consecuencia de lo anterior, por una parte las marcas notoriamente conocidas que no estén registradas en el territorio de referencia no pueden recibir protección frente a productos diferentes en virtud del artículo 8, apartado 5, del RMC. Solamente pueden protegerse contra productos idénticos o similares si existe el riesgo de confusión indicado en el artículo 8, apartado 1, letra b), del RMC, al que el apartado 2, letra c), del mismo artículo hace referencia para determinar el alcance de la protección. Sin embargo, este principio no impide que las marcas notoriamente conocidas, aunque no se hubieran registrado, puedan gozar también de la protección conferida por el artículo 8, apartado 4, del RMC. Así pues, si la legislación nacional pertinente les otorga protección frente a productos y servicios no s imilares, esta protección ampliada podrá invocarse también con arreglo al artículo 8, apartado 4, del RMC.
Por otra parte, si se trata de marcas notoriamente conocidas registradas, ya sea en tanto marcas comunitarias como marcas nacionales en al guno de los Estados miembros, podrán invocar la protección correspondiente al artículo 8, apartado 5, del RMC, pero únicamente si cumplen además el requisito de renombre.
Aunque los términos «notoriamente conocidas» (expresión tradicional empleada por el artículo 6 bis del Convenio de P arís) y «renombre» designan conceptos jurídicos diferentes, existe una coincidencia sustancial entre ambos, como indica la comparación entre el modo en que se definen las marcas notoriamente conocidas conforme a la Recomendación de la OMPI con la descripción del renombre que hace el Tribunal en su sentencia de 14/09/1999, en el asunto C-375/97, «General Motors» (concluyendo que la diferencia terminológica es meramente un «[…] matiz, que no encierra una contradicción real», apartado 22).
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En la práctica, el criterio utilizado para determinar si una marca es notoriamente conocida o s i goza de renombre suele ser idéntico. Por consiguiente, no es extraño que una marca caracterizada como notoriamente conocida haya alcanzado también el nivel definido por el Tribunal en el asunto «General Motors» para las marcas que gozan de renombre, puesto que en ambos casos la valoración se basa principalmente en consideraciones cuantitativas relativas al grado de conocimiento de la marca entre el público y los niveles requeridos en ambos casos se describen en términos muy similares (conocidas o notoriamente conocidas por el sector destinario del público1, en el caso de las marcas notoriamente conocidas, y «conocidas por una proporción importante del público destinatario», en el caso de l as marcas que gozan de renombre).
Así lo ha confirmado también la jurisprudencia. En su sentencia de 22/11/2007, en el asunto C-328/06, «Fincas Tarragona», el Tribunal calificó los conceptos de «renombre» y «notoriedad» como afines («notions voisines»), subrayando de es te modo el importante solapamiento y la estrecha relación entre ambos (apartado 17). Véase también la sentencia de 11/07/2007, en el asunto T-150/04, «TOSCA BLU» (apartados 56 y 57).
El solapamiento entre las marcas que gozan de r enombre y las marcas registradas notoriamente conocidas tiene repercusiones a la hora de pl antear el motivo de l a oposición, en el sentido de que para hacer aplicable el artículo 8, apartado 5, del RMC no debe i nfluir el hecho de q ue el oponente defina su registro anterior como marca notoriamente conocida o como marca que goza de renombre. Por esta razón será preciso analizar cuidadosamente la terminología empleada, especialmente cuando no se especifiquen claramente los motivos de la oposición, adoptando, llegado el caso, un planteamiento flexible.
En el contexto del artículo 8, apartado 2, letra c), del RMC, los requisitos para aplicar el artículo 6 bis del Convenio de París y el artículo 8, apartado 1, letras a) y b), del RMC son idénticos, aunque la terminología empleada varíe. De acuerdo con ambas disposiciones, los productos o servicios deben ser idénticos o similares, como también deben serlo los signos (el artículo 6 bis utiliza los términos «reproducción», que equivale a idéntico, e «imitación», que equivale a similar). Ambos artículos requieren asimismo que exista riesgo de c onfusión («susceptibles de crear confusión» es la expresión utilizada en el artículo 6 bis). Aunque es cierto que con arreglo al artículo 8, apartado 2, letra c), del RMC la notoriedad de la marca conlleva un derecho anterior y, por lo tanto, puede s ervir de base para la oposición, los motivos de oposición que pueden alegarse sobre esta base son (exclusivamente) los indicados en el apartado 1, letras a) y b), de dicho artículo.
Por ejemplo, si el oponente basa su oposición: i) en un registro anterior invocando el artículo 8, apartado 1, letra b), y el artículo 8, apartado 5, del RMC y ii) en una marca idéntica anterior notoriamente conocida en el mismo territorio, invocando el artículo 8, apartado 2, letra c), del RMC, el derecho anterior deberá ser examinado:
1. en virtud del artículo 8, apartado 1, letra b), del RMC, como un registro anterior con un elevado carácter distintivo (debido a su notoriedad);
2. en virtud del artículo 8, apartado 5, del RMC, como un registro anterior que goza de renombre;
1 Artículo 2, apartado 2, letras b) y c), de la Recomendación de la OMPI.
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3. en virtud del artículo 8, apartado 2, letra c), del RMC, interpretado conjuntamente con el apartado 1, letra b), del mismo artículo, como una marca anterior notoriamente conocida no registrada (lo que únicamente servirá si no se puede demostrar el registro, ya que de otro modo el resultado será el mismo que en el caso (i) antes indicado).
Aunque la solicitud de oposición del oponente no se base expresamente en el artículo 8, apartado 5, del RMC, el contenido del escrito y su exposición de m otivos deberán analizarse cuidadosamente a fin de determinar si pretende invocar también el artículo 8, apartado 5, del RMC.
2.2 Aplicabilidad a productos y servicios idénticos o similares
La interpretación literal del artículo 8, apartado 5, del RMC permite concluir prima facie que se aplica exclusivamente a los productos o servicios diferentes, ya que su texto indica que la marca solicitada no se registrará «cuando sea idéntica o similar a la marca anterior y su registro se solicite para productos o ser vicios que no sean similares a aquellos para los que se haya registrado la marca anterior» (resaltado añadido.
Sin embargo, esta interpretación ha s ido objeto de f uertes críticas por dejar una laguna en la protección de las marcas notoriamente conocidas, puesto que, si se otorga la protección con arreglo al artículo 8, apartado 5 cuando los productos o servicios no son similares, parecería incoherente negar su aplicación a los productos o servicios idénticos o similares a los que, a pesar de reunir los restantes requisitos, no se pueda apl icar el artículo 8, apartado 1, letra b), porque no ex iste riesgo de confusión. En tal caso, los titulares de marcas obtendrían una protección mayor en el supuesto menos peligroso, es decir, cuando a priori los productos o servicios no fueran similares. Por este motivo se ha s eñalado que el artículo 8, apartado 5, del RMC debería aplicarse también, directamente o po r analogía, cuando los productos o servicios sean idénticos o similares.
Esta cuestión, que también se refiere a la correcta interpretación de las disposiciones equivalentes de la DM (artículo 4, apartado 4, letra a), y artículo 5, apartado 2, de la Directiva) se planteó ante el Tribunal de J usticia para una dec isión prejudicial (sentencia de 09/01/2003, en el asunto C-292/00, «Davidoff»).
En el asunto «Davidoff», el Abogado General propuso atenerse a l a interpretación literal y limitar la protección otorgada por el artículo 4, apartado 4, letra a), y por el artículo 5, apartado 2, de la DM únicamente a l os casos en los que los productos o servicios de la marca posterior no fueran similares a los de la marca anterior. Consideró que la intención del legislador era limitar la protección especial otorgada a las marcas notoriamente conocidas a l os productos no s imilares y que no ex istía ninguna laguna jurídica real que permitiese interpretar el texto de forma contraria a lo expresado literalmente.
No obstante, el Tribunal no aceptó las recomendaciones del Abogado General y llegó a la conclusión opuesta, a saber, que el artículo 4, apartado 4, letra a), y el artículo 5, apartado 2, de la DM deben interpretarse en el sentido de que «dejan a los Estados miembros la facultad de establecer una protección específica de una marca registrada que goza de renombre cuando la marca […] posterior está destinad[a] a ser utilizad[a] o se utiliza para productos o ser vicios idénticos o si milares a los cubiertos por ésta» (resaltado añadido, apartado 30).
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Al adoptar esta conclusión, el Tribunal observó que el artículo 5, apartado 2, de la DM no debe interpretarse exclusivamente en función de su texto, sino también a la luz de la estructura global y de los objetivos del sistema en que se encuadra. Por lo tanto, no es posible interpretarlo de t al modo que se otorgue a l as marcas notoriamente conocidas una protección menor cuando un signo se usa para productos o servicios idénticos o similares. El Tribunal justificó este planteamiento como el único coherente con su interpretación del artículo 4, apartado 1, letra b), y del artículo 5, apartado 1, letra b), de la DM, refiriéndose a sus conclusiones en la sentencia de 11/11/1997, en el asunto C-251/95, «Sabel», y en la sentencia de 22 /06/2000, en el asunto C-425/98, «Marca Mode», en las que rechazaba una i nterpretación ampliada del concepto de confusión.
El pronunciamiento del Tribunal en el asunto «Davidoff», otorgando también la protección ampliada prevista en e l artículo 4, apartado 4, letra a), y en el artículo 5, apartado 2, de l a DM a los productos o s ervicios idénticos o s imilares, ha s ido corroborado en varias sentencias posteriores (sentencia de 23/03/2010, en el asunto C-238/08, «Google France», apartado 48; sentencia de 18/ 06/2009, en el asunto C-487/07, «L’Oreal y otros», apartado 35; sentencia de 23/ 10/2003, en el asunto C-408/01, «Adidas Salomon et Adidas Benelux», apartado 18).
En la práctica, esta solución a la falta de protección, consistente en la inclusión en el artículo 8, apartado 5, del RMC de los productos idénticos o s imilares, se aplicará únicamente en las raras ocasiones en que, a pesar de tratarse de signos similares, de productos idénticos o similares y de una marca anterior notoriamente conocida, no exista riesgo de confusión en el sentido del artículo 8, apartado 1, letra b), del RMC. Como señaló el Abogado General en sus conclusiones, una situación semejante será absolutamente excepcional.
3 Condiciones de aplicación
La aplicación del artículo 8, apartado 5, del RMC requiere que se cumplan las condiciones siguientes (sentencia de 16/09/2010, en los asuntos acumulados T-345/08 y T-357/08, «BOTOCYL», confirmada por el Tribunal de Justicia en su sentencia de 10/05/2012, en el asunto C-100/11 P):
1. la marca registrada anterior debe gozar de renombre en el territorio de referencia;
2. debe existir identidad o similitud entre la solicitud de MC objeto de oposición y la marca anterior;
3. el uso del signo solicitado debe permitir el aprovechamiento indebido o ser perjudicial del carácter distintivo o de la notoriedad de la marca anterior;
4. dicho uso debe hacerse sin justa causa.
Estas condiciones tienen carácter acumulativo, por lo que el incumplimiento de cualquiera de ellas será suficiente para que no pueda aplicarse la disposición señalada (sentencia de 25/05/2005, en el asunto T-67/04, «SPA-FINDERS», apartado 30; sentencia de 22 /03/2007, en el asunto T-215/03, «VIPS», apartado 34; sentencia de 16/12/2010, en los asuntos acumulados T-345/08 y T-357/08, «BOTOCYL», apartado 41).
Marcas renombradas, artículo 8, apartado 5, del RMC
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El orden que deberá seguirse en el examen de estos requisitos podrá variar en función de las circunstancias de cada caso. Por ejemplo, el examen puede comenzar con la evaluación de la similitud entre los signos, especialmente en los casos en que ofrezca poca o ninguna duda, ya sea porque las marcas son idénticas o porque su similitud o diferencia resulta patente.
3.1 Marca anterior que goza de renombre
3.1.1 Naturaleza del renombre
La naturaleza y alcance del renombre no se encuentran definidos ni en el RMC ni en la DM. Además, los términos utilizados en las diferentes versiones lingüísticas de estos textos no son plenamente equivalentes, lo que ha provocado una confusión considerable en r elación con el auténtico significado de l a palabra renombre, como admitía el Abogado General Jacobs en sus conclusiones de 26/11//1998, en el asunto C-375/97, «General Motors», apartados 34-36.
Ante la falta de una definición legal, el Tribunal definió la naturaleza de la notoriedad haciendo referencia a la finalidad de las disposiciones correspondientes. Al interpretar el artículo 5, apartado 2, de la DM, el Tribunal consideró que el texto de la Directiva «implica un cierto grado de conocimiento de la marca anterior entre el público», y aclaró que «sólo en el supuesto de que la marca sea conocida en grado suficiente, el público, confrontado con la marca posterior, podrá, en su caso, […] establecer una relación entre ambas marcas y, como consecuencia de ello, podrá resultar perjudicada la marca anterior» (sentencia de 14/09/1999, en el asunto C-375/97, «General Motors», apartado 23).
Teniendo en cuenta estas consideraciones, el Tribunal sentenció que el renombre es un requisito de conocimiento mínimo, lo que supone que debe valorarse utilizando principalmente criterios cuantitativos. Para satisfacer el requisito de renombre, la marca anterior debe ser conocida por una parte importante del público interesado por los productos y servicios amparados por dicha marca (sentencia de 14/09/1999, en el asunto C-375/97, «General Motors», apartados 22 y 23; y sentencia de 25/05/2005, en el asunto T-67/04, «Spa-Finders», apartado 34).
Por otra parte, para poder valorar el renombre utilizando criterios cuantitativos, los argumentos o pruebas relativos al prestigio del que la marca puede disfrutar entre el público, pero no a su grado de conocimiento, no son directamente relevantes a la hora de determinar si la marca anterior ha adquirido suficiente renombre a efectos del artículo 8, apartado 5, del RMC. Sin embargo, puesto que el valor económico de l a notoriedad constituye también el objeto protegido por esta disposición, sus posibles aspectos cualitativos tienen relevancia cuando se analiza el posible perjuicio o aprovechamiento indebido (véase también el apartado 3.4 infra). El artículo 8, apartado 5, del RMC protege las marcas «famosas» no en cuanto tales, sino por el éxito y renombre («fondo de comercio») que han adquirido en el mercado. Un signo no goza de ningún renombre intrínseco, debida simplemente, por ejemplo, al hecho de referirse a una persona o ac ontecimiento conocidos, sino únicamente como consecuencia de los productos o servicios que designa y del uso que se ha hecho de dicho signo.
Marcas renombradas, artículo 8, apartado 5, del RMC
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Asunto Comentarios
R 0011/2008-4, «CASAS DE FERNANDO ALONSO (fig.)»
Las pruebas facilitadas por el oponente facilitan información relativa al grado de conocimiento entre el público de la persona de Fernando Alonso en tanto que campeón mundial de fórmula 1, así como del hecho de que una variedad de grandes empresas pagan por asociar sus marcas al famoso piloto. Sin embargo, las pruebas aportadas no demuestran ni el uso ni el renombre de las marcas anteriores en relación con los productos o servicios para los que se han registrado (apartados 44 y 48).
R 0201/2010-2, «BALMAIN ASSET MANAGEMENT»
Los únicos elementos de prueba relativos al renombre de la marca anterior presentados dentro de plazo, a saber, una página que muestra sitios web con la palabra «BALMAIN», un artículo de Wikipedia acerca del diseñador francés Pierre Balmain y cinco extractos del sitio web www.style.com que contienen la colección de moda «BALMAIN», son claramente insuficientes para establecer el renombre de la marca anterior en la UE. Por consiguiente, se rechazó la oposición por carente de fundamento (apartados 36 y 37).
3.1.2 Alcance del renombre
3.1.2.1 Grado de reconocimiento
Una vez definido el renombre como requisito de conocimiento mínimo, se plantea necesariamente la cuestión de qué grado de conocimiento debe existir entre el público para alcanzar dicho mínimo. A este respecto, el Tribunal sostuvo que «el grado de conocimiento requerido debe c onsiderarse alcanzado cuando una parte significativa del público interesado por los productos y servicios amparados por la marca conoce esta marca», añadiendo que «ni la letra ni el espíritu del artículo 5, apartado 2 de la Directiva, permiten exigir el conocimiento de la marca por un determinado porcentaje del público» (sentencia de 14/09/1999, en el asunto C-375/97, «General Motors», apartados 25 y 26; y sentencia de 16/11/2011, en el asunto T-500/10, «Dorma», apartado 45).
Al renunciar a definir con mayor precisión el término «proporción significativa» y al afirmar que l a marca no tiene que ser conocida por un det erminado porcentaje del público, el Tribunal básicamente desaconseja la utilización de criterios fijos de aplicación general, puesto que un grado de conocimiento predefinido, tomado aisladamente, puede no ser el más apropiado para una evaluación realista del renombre la notoriedad.
De ahí que, para determinar si la marca anterior es conocida por una pr oporción significativa del público, se deba tener en cuenta no solo el grado de conocimiento de la marca, sino también cualquier otro factor que sea relevante para el caso específico. Para más información sobre los factores relevantes y sus interrelaciones, véase el apartado 3.1.3 infra.
Sin embargo, cuando los productos o servicios interesen a grupos de consumidores muy pequeños, este tamaño reducido del mercado total implica que una proporción significativa del mismo también será reducida en cifras absolutas. Por este motivo, el tamaño reducido del mercado correspondiente no deberá considerarse por sí mismo como un factor capaz de impedir que una marca llegue a adquirir renombre en el sentido del artículo 8, apartado 5, del RMC, desde el momento en que el renombre es más bien una cuestión de proporciones que de cifras absolutas.
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El requisito de que la marca anterior sea conocida por una proporción significativa del público permite también establecer la diferencia entre los conceptos de renombre como condición necesaria para la aplicación del artículo 8, apartado 5, del RMC y de elevado carácter distintivo por el uso, como factor que permite evaluar el riesgo de confusión señalado en el artículo 8, apartado 1, letra b), del RMC.
Aunque ambos conceptos tienen que ver con el conocimiento de l a marca entre el público pertinente, en el caso del renombre existe un umbral mínimo por debajo del cual no s e puede otorgar la protección, mientras que para el elevado carácter distintivo no existe tal mínimo. De lo anterior se deduce que, en este último caso, deberá tenerse en cuenta cualquier indicio de un conocimiento superior de la marca, evaluándolo con arreglo a su importancia, independientemente de que alcance el mínimo contemplado en el artículo 8, apartado 5, del RMC. Por consiguiente, la constatación de un « elevado carácter distintivo» que permitiera aplicar el artículo 8, apartado 1, letra b), del RMC no sería necesariamente concluyente a los efectos del artículo 8, apartado 5, de este Reglamento.
Asunto Comentarios
R 1054/2007-4, «mandarino (fig.)»
Los documentos aportados por el oponente demostraban que se habían llevado a cabo actividades promocionales de tal forma que el carácter distintivo se volvía más elevado por el uso. Sin embargo, este uso no era suficiente para alcanzar el umbral mínimo necesario para el renombre. En ninguno de los documentos se hacía referencia al conocimiento de la marca anterior por los consumidores finales de referencia, ni se incluían datos sobre la cuota de mercado de los productos solicitados por el oponente (apartado 61).
3.1.2.2 Público destinatario
Al definir el tipo de público que debe tenerse en cuenta en el momento de evaluar el renombre, el Tribunal afirmó que «el público entre el cual la marca anterior debe haber adquirido renombre es el interesado por esa marca, es decir, dependiendo del producto o s ervicio comercializado, podrá tratarse del público en general o de un público más especializado, por ejemplo, un sector profesional determinado» (asunto C- 375/97, «General Motors», apartado 24; y asunto T-67/04, «SPA-FINDERS», apartados 34 y 41).
Por consiguiente, si los productos o servicios amparados por la marca son productos de consumo masivo, el público destinatario será el público en general, mientras que, si los productos designados tienen una aplicación muy específica o se destinan exclusivamente a los usuarios profesionales o industriales, el público destinatario se limitará a los compradores específicos de los productos en cuestión.
Asunto Comentarios
R 1265/2010-2, «MATTONI (fig.)» Teniendo en cuenta la naturaleza de los productos para los que el oponente alega el renombre, a s aber, agua mineral, el público destinatario es el público en general (apartado 44).
R 2100/2010-1, «SEXIALIS»
Los productos entre los que el signo disfruta de renombre son preparaciones medicinales para el tratamiento de la disfunción sexual. El público destinatario es el público en general y los profesionales con un elevado nivel de dedicación (apartado 64).
Marcas renombradas, artículo 8, apartado 5, del RMC
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Asunto Comentarios
Asuntos acumulados T-345/08 y T-357/08, «BOTOCYL», confirmado por C-100/11 P
Los productos entre los que la marca anterior disfruta de notoriedad son productos farmacéuticos para el tratamiento de las arrugas. Los datos aportados sobre la promoción de la marca anterior BOTOX, mediante la publicación de artículos escritos en inglés en r evistas científicas y en l a prensa generalista bastaron para establecer el renombre de la marca tanto entre el público general como entre los profesionales sanitarios (apartados 65-67 de la sentencia en el asunto C-100/11 P). Por consiguiente, son estas las dos categorías de consumidores que deben tenerse en cuenta.
Además de los compradores reales de los productos correspondientes, el concepto de público destinatario abarca también a l os potenciales compradores de dichos productos, así como a los miembros del público que solamente entran en contacto indirectamente con la marca, en la medida en que tales grupos de consumidores puedan ser también destinatarios de l os productos en c uestión (por ejemplo, los aficionados al deporte respecto a los artículos deportivos, o los viajeros que viajan frecuentemente en avión respecto a las compañías aéreas).
Asunto Comentarios
T-47/06, «NASDAQ»
Los servicios pertinentes consisten en información sobre cotizaciones de las bolsas de valores, incluidos en las clases 35 y 36 y dirigidos normalmente a los profesionales. El oponente presentó pruebas de que la marca «NASDAQ» aparece casi a diario en muchos periódicos y canales de televisión que pueden ser leídos o v istos en toda Europa. Por consiguiente, la Sala concluyó correctamente que el renombre de la marca «NASDAQ» para los consumidores europeos debía determinarse no solo entre el público profesional, sino también entre un grupo importante del público en general (apartados 47 y 51).
T-60/10,«ROYAL SHAKESPEARE»
Las pruebas relativas al renombre abonan y confirman el hecho de que el público destinatario para las producciones teatrales es el público en general, y no un círculo limitado y exclusivo. Las actividades de la parte interviniente se anunciaron, presentaron y comentaron en m últiples publicaciones destinadas al público en general. La parte interviniente realizó giras por diversas regiones del Reino Unido y actuó ante un numeroso público de este país. Una actividad a gr an escala y, por consiguiente, un servicio ofrecido al público en general, que se refleja tanto en el alto nivel de asistencia como en la cuantiosa recaudación. Por otra parte, los documentos presentados por la parte interviniente dejan claro que esta recibió importantes sumas anuales en concepto de patrocinio de empresas pertenecientes a di versos sectores orientados también hacia el público en general, como bancos, empresas de bebidas alcohólicas y fabricantes de automóviles (apartados 35 y 36).
Es bastante frecuente que un de terminado producto interese a varios grupos de compradores con diferentes perfiles, como es el caso de los productos multiuso y el de los productos que pasan por diversos intermediarios antes de l legar a su destino definitivo (distribuidores, minoristas, usuarios finales). En tales casos se plantea la cuestión de s i el renombre debe valorarse dentro de c ada grupo por separado o s i debe abarcar todos los tipos diferentes de compradores. El ejemplo mencionado por el Tribunal en el asunto C-375/97, «General Motors» (sector profesional determinado), implica que el renombre dentro de un único grupo puede ser suficiente.
Marcas renombradas, artículo 8, apartado 5, del RMC
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De igual modo, si la marca anterior ha s ido registrada para productos o ser vicios completamente heterogéneos, cada tipo de productos interesará a diferentes segmentos del público, por lo que el renombre global de la marca deberá evaluarse separadamente para cada categoría de los productos que la integran.
Lo anterior se refiere únicamente al tipo de públ ico que debe t enerse en cuenta al examinar si la marca anterior ha alcanzado el mínimo de renombre requerido por el Tribunal en el asunto «General Motors». No obstante, al determinar la existencia de perjuicio o apr ovechamiento indebido, surge una cuestión importante, a saber, si la marca anterior también debe ser conocida por el público interesado por los productos y servicios de la marca posterior, porque de otro modo resulta difícil creer que el público pueda ser capaz de asociarlas. Esta cuestión se comenta en el apartado 3.4 infra.
3.1.2.3 Productos y servicios amparados
En primer lugar, los productos y servicios deberán ser aquellos para los que se registró la marca anterior y cuyo renombre se reivindica.
Asunto Comentarios
R 1473/2010-1, «SUEDTIROL»
Se desestimó la oposición porque las marcas anteriores no se habían registrado para los servicios que g ozaban de renombre según el oponente. El artículo 8, apartado 5, del RMC solo puede invocarse si la marca de la que se afirma que es notoriamente conocida/renombrada es una marca registrada y si los productos o servicios para los que se reivindica esta notoriedad/este renombre aparecen en el certificado (apartado 49).
Los productos o servicios a los que se refieren las pruebas tienen que ser idénticos (no solo similares) a los productos y servicios para los que se registró la marca anterior.
Asunto Comentarios
R 1033/2009-4, «PEPE»
Los productos cuyo renombre en Alemania se ha examinado en la resolución y auto mencionados se refieren a artículos para el cuidado de la piel y del cuerpo y a cremas para niños. Estos artículos no s on idénticos a l os productos de l a marca anterior incluidos en la clase 3 productos de cosmética; productos para el cuidado de las uñas, en particular lacas y disolventes. Por consiguiente, el oponente no ha podido probar el renombre de la marca alemana anterior en los territorios de referencia (apartado 31).
Cuando la marca anterior esté registrada para una ex tensa gama de productos y servicios destinados a diferentes tipos de público, será preciso examinar el renombre separadamente para cada categoría de pr oductos. En tales casos es posible que la marca anterior no posea renombre para todos los productos, puesto que puede que no se haya utilizado en absoluto en al gunos, mientras que en ot ros puede no haber alcanzado el grado de conocimiento necesario para la aplicación del artículo 8, apartado 5, del RMC.
Por lo tanto, si las pruebas demuestran que la marca anterior goza de un renombre parcial, es decir, que su nivel de renombre alcanza únicamente a al gunos de l os productos o servicios para los que se ha registrado, dicha marca estará protegida con
Marcas renombradas, artículo 8, apartado 5, del RMC
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arreglo al artículo 8, apartado 5, del RMC únicamente en función de dicho alcance. En consecuencia, solamente tales productos se tendrán en c uenta para los fines del examen.
Asunto Comentarios
R 1588/2009-4, «PINEAPPLE»
La Sala concluyó que el elevado carácter distintivo y el renombre de las marcas anteriores no afectaba a los productos y servicios del oponente que se consideraban idénticos o similares a l os productos y servicios impugnados, para los que no se pudo demostrar la existencia de un elevado carácter distintivo o d e renombre, salvo en el caso de los programas informáticos incluidos en la clase 9 (apartado 43).
R 1466/2008-2 y R 1565/2008-2, «COMMERZBANK ARENA»
Las pruebas aportadas demostraron suficientemente que la marca «ARENA» era conocida por una proporción significativa del público destinatario. Sin embargo, dichas pruebas no i ncluían ninguna información pertinente que permitiera determinar el nivel de conocimiento de la marca «ARENA» en otros sectores distintos de trajes y accesorios de baño (apartados 58 y 60).
3.1.2.4 Territorio de referencia
De conformidad con el artículo 8, apartado 5, del RMC, el territorio de referencia para determinar el renombre de la marca anterior es el territorio en el que está protegida, puesto que la marca anterior debe gozar de renombre en el territorio en el que se ha r egistrado. Por consiguiente, en el caso de las marcas nacionales, el territorio de referencia será el Estado miembro de que se trate, y en el caso de las marcas comunitarias, el territorio correspondiente será la Unión Europea.
En el asunto «General Motors», el Tribunal declaró que no puede exigirse que el renombre exista en todo el territorio del Estado miembro de que se trate. Basta con que exista en una pa rte sustancial de és te. En el caso concreto del territorio del Benelux, el Tribunal consideró que puede tratarse de una par te de uno d e los países que lo integran (sentencia de 14/09/1999, en el asunto C-375/97, «General Motors», apartados 28 y 29).
El TJUE ha aclarado que en el caso de una marca comunitaria anterior, puede bastar con el renombre en todo el territorio de uno de los Estados miembros.
Asunto Comentarios
C-301/07, «PAGO»
El asunto se refería a una marca comunitaria de renombre en toda Austria. El Tribunal señaló que una marca comunitaria debe ser conocida en una parte sustancial de la Comunidad por una proporción significativa del público interesado en l os productos o servicios amparados por dicha marca. A la vista de las circunstancias particulares de este asunto, se consideró que el territorio del Estado miembro en cuestión (Austria) constituía una parte sustancial del territorio de la Comunidad (apartados 29 y 30).
En general, sin embargo, cuando se analiza si la parte del territorio correspondiente es o no s ustancial, será preciso tener en c uenta tanto las dimensiones de l a región geográfica afectada como la proporción de la población total que reside en la misma, puesto que ambos criterios influyen en la importancia global del territorio específico.
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Asunto Comentarios
R 1283/2006-4, «RANCHO PANCHO (fig.)»
Aunque las pruebas aportadas demostraban el uso de la marca en 17 restaurantes de Francia en 2002, se consideró que esta cifra era demasiado baja para un país de 65 millones de habitantes, por lo que el renombre no se consideró demostrado (apartado 22).
Muchas veces, los oponentes indican en el escrito de oposición que la marca anterior goza de renombre en una zona más extensa que el territorio protegido (por ejemplo, alegando un renombre paneuropeo en el caso de una m arca nacional). En tal caso deberán examinarse las alegaciones del oponente en relación con el territorio de referencia.
Por el mismo motivo, las pruebas aportadas deberán referirse específicamente al territorio de referencia. Así pues, si las pruebas se refieren, por ejemplo, al Japón o a regiones no definidas, no serán válidas para demostrar la existencia de renombre en la Comunidad o en un Estado miembro. Por lo tanto, las cifras de ventas en toda la Comunidad o a escala mundial no son las adecuadas para demostrar el renombre en un Estado miembro específico si los datos correspondientes no se desglosan a nivel de territorio. En otras palabras, también es preciso demostrar específicamente que existe un renombre «más amplio» en el territorio de referencia, ya que de otro modo no podrá ser tenido en cuenta.
Asunto Comentarios
R 1718/2008-1, «LINGLONG»
La mayor parte de la documentación presentada se refería a países no p ertenecientes a l a Unión Europea, principalmente a China, país de origen del oponente, así como a otros países de Asia. Por consiguiente, el oponente no pudo reivindicar de manera convincente que er a titular de una m arca notoriamente conocida en la UE (apartado 53).
R 1795/2008-4, «ZAPPER-CLICK» (appel recurso desestimado T-360/10)
La parte recurrida sostenía en su escrito solicitando la anulación que existía renombre en el territorio del Reino Unido. Sin embargo, el registro internacional solamente designaba a España, Francia y Portugal, de f orma que no i ncluía el territorio del Reino Unido. Además, la parte recurrida no presentó prueba alguna relativa al renombre en los Estados miembros designados en el registro internacional (apartado 45).
No obstante, cuando se reivindica que el renombre se extiende más allá del territorio protegido y se aportan pruebas que así lo demuestran, esto deberá tenerse en cuenta porque puede confirmar la conclusión de que existe renombre en el territorio protegido.
3.1.2.5 Fecha pertinente
El oponente deberá demostrar que la marca anterior había adquirido renombre mediante la fecha de pr esentación de la solicitud de MC objeto de opos ición, teniendo en c uenta cualquier reivindicación de prioridad aplicable, y lógicamente siempre que dicha reivindicación hubiera sido aceptada por la Oficina.
Por otra parte, el renombre de la marca anterior deberá subsistir hasta la fecha en que se adopte la resolución sobre la oposición. Sin embargo, en principio bastará con que el oponente demuestre que su marca ya gozaba de renombre en la fecha de presentación o de prioridad de la solicitud de MC, mientras que compete al solicitante reivindicar y demostrar cualquier pérdida de renombre posterior. En la práctica esto
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solo ocurrirá en casos excepcionales, ya que presupondría un cambio radical de las condiciones del mercado en un período de tiempo relativamente breve.
Cuando la oposición se apoye en una solicitud anterior, no existe ningún impedimento formal para la aplicación del artículo 8, apartado 5, del RMC, que engloba a l as solicitudes anteriores al hacer referencia al artículo 8, apartado 2, del RMC. Aunque en l a mayoría de los casos la solicitud anterior no habrá adquirido suficiente renombre en un plazo tan breve, no cabe excluir a priori la posibilidad de adquirir un grado de renombre suficiente en un período de tiempo excepcionalmente corto. Por otra parte, la solicitud puede referirse a una m arca que ya estaba en uso mucho antes de presentar la solicitud y que ha tenido tiempo suficiente para adquirir renombre. En cualquier caso, puesto que l os efectos del registro tienen carácter retroactivo, la aplicabilidad del artículo 8, apartado 5, del RMC a las solicitudes anteriores no puede c onsiderarse como una excepción a la regla según la cual dicha disposición se aplicaría exclusivamente a l os registros anteriores, como se ha señalado en el anterior apartado 2.1 supra.
Por lo general, cuanto más cercanos a la fecha pertinente sean los elementos de prueba, más fácil resultará inferir que la marca anterior había adquirido renombre en dicha fecha. El valor probatorio de un det erminado documento probablemente variará dependiendo de la proximidad del período contemplado en el mismo a la fecha de la presentación de la solicitud. Sin embargo, las pruebas relativas al renombre en una fecha posterior a l a fecha pertinente, podrían permitir extraer conclusiones sobre la reputación de una marca anterior en la fecha pertinente (véanse, por analogía, el auto de 27/01/2004, en el asunto C-259/02, «La Mer Technology», apartado 31; la sentencia de 17/04/2008, en el asunto C-108/07, «Ferro», apartado 53, y la sentencia de 15/12/2005, en el asunto T-262/04, «Shape of a lighter», apartado 82).
Por este motivo, la documentación presentada con el objetivo de dem ostrar el renombre deberá llevar la fecha correspondiente, o al menos indicar claramente cuándo sucedieron los hechos atestiguados en la misma. Consecuentemente, los documentos sin fecha, o con una f echa añadida posteriormente (por ejemplo con fechas manuscritas sobre documentos impresos), no s on apropiados para aportar datos fiables sobre el período de interés.
Asunto Comentarios
R 0055/2009-2, «BRAVIA»
Las pruebas demostraban que la marca «BRAVIA» se utilizaba para televisores LCD en P olonia, la República Checa, Eslovaquia, Hungría, Alemania, Turquía, Portugal, Austria, Francia, Italia y los Países Bajos. Sin embargo, ninguno de los documentos iba provisto de fecha. El oponente omitió presentar cualquier información relativa a la antigüedad, por lo que las pruebas, tomadas en su conjunto, eran insuficientes para acreditar el renombre en la Unión Europea (apartados 27 y 28).
R 1033/2009-4, «PEPE»
A juicio de la Sala, una sentencia del año 1972 no podía demostrar el elevado carácter distintivo en el momento de solicitar la MC, es decir, el 20/10/2006. Por otra parte, «de la resolución del TPI [T- 164/03] se deduce que el renombre de la marca anterior se había examinado el 13 de junio de 1996, o sea, más de diez años antes de la fecha que debía tenerse en cuenta para determinar el renombre» (apartado 31).
Si el período transcurrido entre la prueba de uso más reciente y la presentación de la solicitud de MC es muy prolongado, deberá examinarse cuidadosamente el valor de
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las pruebas aportadas respecto al tipo de productos o servicios de que se trate. Esto se debe a que las modificaciones de los hábitos y percepciones del consumidor pueden requerir un tiempo para consolidarse, dependiendo normalmente del mercado pertinente.
Por ejemplo, el mercado de l a moda está relacionado estrechamente con las temporadas del año y con las diversas colecciones presentadas cada trimestre. Esto deberá tenerse en cuenta al examinar la posible pérdida de renombre en este sector concreto. De forma similar, el mercado de proveedores de Internet y empresas de comercio electrónico es muy competitivo y registra elevadas tasas de crecimiento, y también de desaparición, lo que significa que el renombre en este sector puede disiparse con mayor rapidez que en otros sectores del mercado.
Asunto Comentarios
R 0883/2009-4, «MUSTANG»
La parte recurrente no p udo demostrar que la marca anterior ya era notoriamente conocida en la fecha de solicitud de la MC objeto de oposición. Las certificaciones relativas al renombre de la «designación Mustang» no se refieren ni a l a marca figurativa «Calzados Mustang» reivindicada ni al período para el que debe determinarse dicho renombre (apartado 28).
Un problema similar surge en el caso de pruebas referidas a una fecha posterior a la presentación de la solicitud de MC. Aunque, por regla general, tales pruebas no serán suficientes por sí mismas para demostrar que la marca había adquirido renombre cuando se presentó la solicitud, tampoco deberán rechazarse sin más como irrelevantes. Puesto que el renombre se construye normalmente a lo largo de varios años, no siendo algo que simplemente aparezca o desaparezca, y que determinados tipos de pruebas (por ejemplo, las encuestas de opinión o testimonios) no tienen por qué estar disponibles necesariamente antes de la fecha relevante, ya que generalmente se preparan después de q ue surja la discrepancia, será preciso examinar dichas pruebas basándose en s u contenido y conjuntamente con los restantes elementos probatorios. Por ejemplo, un sondeo de opinión que, aunque se haya efectuado después del período de interés, demuestre un grado suficientemente elevado de notoriedad, puede bastar para demostrar que la marca había adquirido renombre en la fecha pertinente, siempre que se acredite igualmente que las condiciones del mercado no habían experimentado cambios (por ejemplo, que antes de r ealizar el sondeo los niveles de ventas y de g asto publicitario no hab ían variado).
Asunto Comentarios
Asuntos acumulados T-345/08 y T-357/08, «BOTOCYL», confirmado por C-100/11 P
Aunque el renombre de una marca anterior debe determinarse a la fecha de solicitud de la marca objeto de oposición, los documentos que lleven una f echa posterior no c arecerán de valor probatorio cuando permitan extraer conclusiones respecto a l a situación existente en la fecha de solicitud (apartado 52).
No se puede excluir automáticamente la posibilidad de que un documento elaborado poco tiempo antes o después de dicha fecha pueda contener información útil, teniendo en cuenta que, por regla general, el renombre de una marca se adquiere progresivamente. El valor probatorio de dicho documento probablemente variará en función de l a proximidad a l a fecha de pr esentación del período contemplado en el mismo (véanse, por analogía, el auto de 27/01/2004, en el asunto C-259/02, «La Mer
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Technology», apartado 31; la sentencia de 17 /4/2008, en el asunto C-108/07 P, «Ferro», apartado 53; la sentencia de 15/12/2005 en el asunto T-262/04, «Shape of a lighter», apartado 82).
Asunto Comentarios
Asuntos acumulados T-345/08 y T-357/08, «BOTOCYL», confirmado por C-100/11 P
Los artículos de prensa aportados demostraron que existía una importante cobertura mediática de los productos comercializados bajo la marca BOTOX en la fecha de solicitud de las marcas objeto de oposición (apartado 53).
3.1.3 Apreciación del renombre – factores pertinentes
Además de señalar que «ni la letra ni el espíritu del artículo 5, apartado 2 [de la DM], permiten exigir el conocimiento de la marca por un determinado porcentaje del público», el Tribunal sostuvo que al examinar el renombre de la marca anterior hay que tomar en c onsideración todos los elementos pertinentes, «en particular la cuota de mercado poseída por la marca, la intensidad, la extensión geográfica y la duración de su uso, así como la magnitud de las inversiones efectuadas por la empresa para promocionarla» (sentencia de 14/09/ 1999 en el asunto C-375/97, «General Motors», apartados 25 y 27).
Analizando conjuntamente estos dos fallos, se llega a la conclusión de que el grado de conocimiento requerido a los efectos del artículo 8, apartado 5, del RMC no puede definirse de forma abstracta, sino que tiene que ser examinado caso por caso, tomando en consideración no solo el grado de conocimiento de la marca, sino también cualquier otro hecho pertinente para el caso espec ífico, es decir, cualquier factor que pueda proporcionar información sobre el éxito de la marca en el mercado.
La lista de factores que deben tomarse en cuenta para averiguar el renombre de una marca anterior -como la cuota de mercado, la intensidad, la extensión geográfica y la duración de su uso, y las inversiones efectuadas por la empresa para promocionarla- solamente sirve a título de ejemplo.
Asunto Comentarios
T-47/06, «NASDAQ»
El oponente aportó pruebas detalladas de la intensidad, la extensión geográfica y la duración de uso de su marca NASDAQ y la inversión efectuada para promocionarla, demostrando que era conocida por una proporción importante del público interesado por ella. El Tribunal sentenció que el hecho de que no aportaba cifras de la cuota de mercado no generaban dudas en su conclusión (apartado 51). El Tribunal concluyó que la lista de factores que deben tenerse en cuenta para averiguar el renombre de una marca anterior solamente sirve a título de ejemplo, dado que es preciso tomar en cuenta todos los datos del caso y; en segundo lugar, las restantes pruebas detalladas y verificables aportadas por la parte interviniente ya son suficientes, por sí mismas, para demostrar concluyentemente el renombre de la marca (apartado 52).
Por otra parte, los factores pertinentes deberán examinarse no solo con vistas a determinar el grado de conocimiento de l a marca entre el público destinatario, sino también para averiguar si se cumplen los demás requisitos relativos al renombre, por
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ejemplo, si el renombre alegado abarca una par te significativa del territorio de referencia, o si el renombre se había adquirido ya en la fecha de presentación o de prioridad de la solicitud de MC objeto de oposición.
El mismo tipo de escrutinio se aplicará con el fin de descubrir si la marca ha adquirido un elevado carácter distintivo por el uso, a los efectos del artículo 8, apartado 1, letra b), del RMC, o si es notoriamente conocida en el sentido del artículo 6 bis del Convenio de París, ya que el objeto de la prueba es básicamente el mismo en todos estos casos, a s aber, el grado de conocimiento de l a marca por parte del público destinatario, sin perjuicio del mínimo requerido en cada caso.
3.1.3.1 Conocimiento de la marca
La afirmación del Tribunal en el sentido de que no es necesario que la marca sea conocida «por un determinado porcentaje del público» no puede ser interpretada como tal en el sentido de que las cifras relativas al conocimiento de la marca sean irrelevantes o que convengan atribuirles un menor valor probatorio a e fectos del examen del renombre. Implica únicamente que los porcentajes de conocimiento definidos en abstracto corren el riesgo de no ser apropiados en todos los casos y que, por consiguiente, no sea posible fijar a priori un umbral de reconocimiento mínimo aplicable en términos generales, a partir del cual debería presuponerse que la marca goza de renombre (véanse a este respecto, y por analogía, la sentencia de 04/05/1999, en los asuntos acumulados C-108/97 y C-109/97, «Windsurfing Chiemsee», apartado 52; la sentencia de 22 /06/1999, en el asunto C-342/97, «Lloyd Schuhfabrik Meyer», apartado 24, y la sentencia de 16/11/2011, en el asunto T-500/10, «DORMA», apartado 52).
Por consiguiente, aunque no haya sido expresamente citado por el Tribunal como uno de los factores que deberán tenerse en c uenta en el momento de examinar el renombre, el grado de conocimiento de la marca entre el público destinatario es directamente relevante y puede ser especialmente útil para evaluar si la marca es suficientemente renombrada en el sentido del artículo 8, apartado 5, del RMC, a condición, como es lógico, de que el método de cálculo sea fiable.
Como norma general, cuanto mayor sea el porcentaje de conocimiento de la marca, más fácil será aceptar que goza de renombre. Sin embargo, a falta de un umbral claramente definido, solo si las pruebas demuestran la existencia de un grado elevado de conocimiento de la marca será posible aceptar que los porcentajes correspondientes tienen fuerza persuasiva. Los porcentajes considerados aisladamente no son concluyentes. Antes bien, como se ha explicado anteriormente, el renombre deberá examinarse sobre la base de una evaluación global de todos los factores pertinentes del caso concreto. A mayor grado de c onocimiento, menor el número de elementos de prueba adicionales que será necesario para demostrar el renombre, y viceversa.
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Asunto Comentarios
R 0765/2009-1, «BOB THE BUILDER (fig.)»
Las pruebas aportadas demostraban que la marca anterior gozaba de un importante renombre en Suecia en relación con gelatinas, confituras, compotas, bebidas a base de fruta, concentrados para la fabricación de bebidas y zumos. Según la encuesta realizada por TNS Gallup, el reconocimiento espontáneo (respuestas telefónicas a la pregunta «¿Qué marcas de – aquí se mencionaba el grupo de productos correspondiente – conoce, o de cuáles ha oído hablar?») de la marca «BOB» oscilaba entre el 25 y el 71 % dependiendo de que el grupo de productos mencionado fuera: salsas de manzana, confituras, mermeladas, refrescos, bebidas a base de fruta y zumos de f ruta. El conocimiento con apoyo (respuestas a un cuestionario en e l que aparecen los productos que muestran la marca) variaba entre el 49 y el 90 %, en función de los productos. Por otro lado, el promedio de cuota de mercado entre 2001 y 2006 oscilaba entre el 30 y el 35 % para las categorías de productos citados anteriormente (apartado 34).
Cuando, a la vista de las pruebas, se demuestra que el grado de conocimiento de la marca es m oderado, conviene no pr esuponer automáticamente que la misma no goza de renombre. En otras palabras, en la mayoría de las ocasiones, los meros porcentajes no serán concluyentes en cuanto tales. En estos casos, solamente si las pruebas relativas al conocimiento van acompañadas de suficientes indicaciones acerca de los resultados globales de la marca en el mercado será posible determinar, con un grado razonable de certeza, si es conocida por una proporción significativa del público destinatario.
3.1.3.2 Cuota de mercado
La cuota de mercado de los productos propuestos o vendidos bajo la marca y la posición que esta última ocupa en el mercado constituyen indicadores útiles para evaluar el renombre, puesto que ambos se refieren al porcentaje del público destinatario que compra en realidad los productos, y miden el éxito de la marca en relación con la competencia.
La cuota de mercado se define como el porcentaje de las ventas totales atribuibles a una marca en un s ector concreto del mercado. Para definir el sector del mercado relevante, es preciso tener en c uenta los productos y servicios para los que se ha usado la marca. Cuando la gama de estos productos y servicios sea más reducida que la correspondiente al registro de la marca, se plantea una situación de renombre parcial, similar a la que existe cuando, habiéndose registrado la marca para una variedad de productos, solamente ha adquirido renombre respecto a una parte de los mismos. Esto significa que, cuando se presenta un caso así, únicamente se tomarán en cuenta a efectos del examen los productos y servicios para los que la marca ha sido utilizada realmente y respecto a los cuales ha adquirido renombre.
Por consiguiente, una cuota de mercado muy sustancial, o una posición de liderazgo en el mercado, constituirán por lo general un claro indicio de renombre, especialmente si van asociadas a un grado suficientemente elevado de conocimiento de la marca. Por el contrario, una cuota de mercado reducida será, en la mayoría de los casos, un indicio de falta de renombre, salvo que concurran otros factores que, por sí mismos, sean suficientes para respaldar la reivindicación correspondiente.
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Asunto Comentarios
Asuntos acumulados T-345/08 y T-357/08, «BOTOCYL» confirmado por C-100/11 P
«[L]a elevada cuota de mercado del BOTOX en el Reino Unido, del 74,3 % en 2003, al igual que el grado de conocimiento de la marca, de un 75 % entre el público especializado habituado a los tratamientos farmacéuticos contra las arrugas, bastan para apoyar la existencia de un grado considerable de reconocimiento en el mercado» (resaltado añadido) (apartado 76).
T-8/03, «Emilio Pucci»
El TPI consideró que el oponente no había demostrado el elevado carácter distintivo o renombre de sus marcas anteriores, puesto que los elementos de prueba aportados (anuncios, siete cartas de diversos directivos publicitarios y una cinta de vídeo) no contenían datos adecuadamente justificados o v erificables que p ermitiesen evaluar la cuota de mercado correspondiente a las marcas EMIDIO TUCCI en España, ni la intensidad, extensión geográfica o antigüedad del uso de las mismas, ni los importes invertidos por la empresa en su promoción (apartado 73).
Otro motivo por el que una cuota de mercado moderada no siempre es una prueba concluyente de f alta de renombre consiste en que el porcentaje del público que conoce en realidad la marca puede superar ampliamente el número de personas que compran realmente los productos en cuestión. Tal podría ser, por ejemplo, el caso de los productos utilizados normalmente por más de un us uario, como las revistas familiares y los periódicos, (sentencia de 06/07/2012, en el asunto T-60/10, «ROYAL SHAKESPEARE», apartados 35 y 36, y sentencia de 10/05/2007, en el asunto T-47/06, «NASDAQ», apartados 47 y 51), o c omo ocurre con los artículos de l ujo conocidos por una amplia mayoría, pero que pocos pueden comprar (por ejemplo, un elevado porcentaje de los consumidores europeos conocen la marca de automóviles «Ferrari», pero pocos son los que poseen uno). Por este motivo, la cuota de mercado corroborada por las pruebas debería examinarse teniendo en cuenta las peculiaridades del mercado específico.
Asunto Comentarios
R 1659/2011-2, «KENZO»
A los ojos del público europeo, «KENZO» hace referencia a un destacado proveedor de renombrados artículos de moda y de lujo, como perfumes, cosméticos y prendas de vestir. Sin embargo, se consideró que el público destinatario era el público en general (apartado 29).
En algunos casos no será fácil definir la cuota de mercado de la marca anterior, por ejemplo cuando el tamaño exacto del mercado de referencia no pueda ser medido con precisión, debido a las peculiaridades de los productos o servicios de interés.
Asunto Comentarios
R 0446/2010-1, «TURBOMANIA»
La limitada presencia del producto en el mercado no le ha impedido, en absoluto, llegar a ser notoriamente conocido por el público destinatario. Las pruebas demostraban claramente que la marca aparecía de forma continuada en las revistas especializadas del sector entre diciembre de 2003 y marzo de 200 7 (fecha de registro de la solicitud de la marca comunitaria). Esto significa que el público destinatario de las revistas mantuvo un contacto constante y prolongado con la marca del oponente durante un período de t res años antes de la fecha relevante. Esta presencia tan masiva en medios dirigidos específicamente al público destinatario era un indicio más que suficiente de que dicho público conocía la marca (apartado 31).
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En estos casos pueden ser pertinentes otros indicadores similares, como los índices de audiencia televisiva, por ejemplo cuando se trata de c arreras de automóviles u otros acontecimientos deportivos o culturales.
Asunto Comentarios
T-47/06, «NASDAQ»
El oponente presentó pruebas que demuestran que la marca «NASDAQ» aparecía casi a diario, en particular a través de los índices Nasdaq, en numerosos periódicos y canales de televisión que pueden ser leídos o v istos en t oda Europa. El oponente también presentó pruebas de que había realizado importantes inversiones en publicidad. El Tribunal consideró demostrado el renombre, a pesar de que el oponente no había presentado ninguna cifra relativa a l a cuota de m ercado (apartados 47-52).
3.1.3.3 Intensidad del uso
La intensidad del uso de una marca se puede demostrar mediante el volumen de ventas (es decir, el número de unidades vendidas) y la facturación (es decir, el valor total de dichas ventas) contabilizados por el oponente en relación con los productos que llevan la marca. Las cifras que interesan serán normalmente las ventas correspondientes a un año, pero en ocasiones la unidad de tiempo puede ser otra.
Asunto Comentarios
R 2100/2010-1, «SEXIALIS»
Los documentos presentados (artículos de pr ensa, cifras de ventas, encuestas) demostraban que la marca anterior «CIALIS» se había utilizado con mucha regularidad antes de l a fecha de solicitud de l a MC, que l os productos amparados en la marca «CIALIS» se comercializaban en varios Estados miembros donde habían alcanzado una sólida posición entre las marcas principales, y que existía un alto grado de reconocimiento en comparación con la marca «VIAGRA», líder del mercado. La cuota de mercado en constante incremento así como las cifras de ventas, sustanciales y crecientes, demostraban también «la amplia difusión de “CIALIS”» (apartado 55).
Al examinar la importancia de una f acturación o un volumen de ventas determinados, conviene tener en c uenta el tamaño del mercado de referencia en términos de población, puesto que este factor influye en el número de compradores potenciales del producto en cuestión. Por ejemplo, la importancia relativa de un idéntico volumen de ventas será mucho mayor en Luxemburgo, por ejemplo, que en Alemania.
Por otro lado, el que un volumen de ventas o una c ifra de facturación determinados sean o no suficientemente importantes dependerá del tipo de producto considerado. Por ejemplo, será mucho más fácil alcanzar un gr an volumen de v entas para productos cotidianos de gran consumo que cuando se trata de pr oductos de l ujo o duraderos que se adquieren en contadas ocasiones, sin que esto signifique que en el primer caso sea mayor el número de consumidores que han estado en contacto con la marca, ya que es probable que una misma persona haya comprado el mismo producto más de una vez. De ahí se sigue que el tipo, valor y durabilidad de los productos y servicios en c uestión deberá tomarse en c onsideración a l a hora de det erminar la importancia de un volumen de ventas o una cifra de facturación determinados.
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El volumen de ventas y la facturación son tanto más útiles cuanto que indicadores indirectos, cuya evaluación deberá llevarse a cabo conjuntamente con el resto de las pruebas, en tanto que prueba directa de la existencia de renombre. En particular, esas indicaciones pueden ser particularmente útiles para complementar la información aportada por los porcentajes relativos a la cuota de mercado y al grado de conocimiento de la marca, proporcionado una visión más realista del mercado. Por ejemplo, pueden poner de manifiesto que detrás de una cuota de mercado no demasiado notable se oculta una cifra de ventas muy importante, lo que puede ser útil para examinar la existencia de renombre en el caso de aquellos mercados competitivos en l os que en general suele ser más difícil que una m arca individual represente una fracción sustancial del total de las ventas.
Por el contrario, cuando no s e indica separadamente la cuota de m ercado de l os productos para los que se usa la marca, no será posible determinar si un volumen de ventas determinado conlleva o no a una presencia sustancial en el mercado, salvo que el oponente presente también pruebas que demuestren el tamaño total del mercado relevante en términos financieros, de manera que sea posible inferir los porcentajes correspondientes.
Asunto Comentarios
R 1054/2007-4, «mandarino» (fig.)
No quedó suficientemente demostrado el renombre, en particular, porque en ninguno de los documentos se hacía referencia al conocimiento de la marca anterior por los consumidores finales de referencia. Tampoco se aportó ninguna justificación relativa a l a cuota de mercado de los productos del oponente. La información sobre la cuota de mercado es especialmente importante en e l sector en el que el oponente ejerce su actividad principal (bolsos de mano, artículos de viaje, accesorios y vestidos), «un sector muy atomizado y competitivo», en el que existen múltiples competidores y diseñadores para este tipo de pr oductos (apartados 59-61).
Esto no significa que deba infravalorarse la importancia de la cifra de facturación o del volumen de ventas, puesto que ambas son indicadores significativos del número de consumidores que previsiblemente han es tado en c ontacto con la marca. Por consiguiente, no cabe excluir que una proporción sustancial de la facturación o del volumen de v entas pueda, en de terminadas circunstancias, ser decisiva para confirmar la existencia de renombre, tanto por sí sola como acompañada de algunos otros elementos probatorios.
Asunto Comentarios
R 0445/2010-1, «FLATZ»
Aunque, por razones de fuerza mayor, la marca anterior no pudo alcanzar el renombre por métodos tradicionales, es decir, mediante la venta del producto, sí alcanzó dicho renombre como resultado de sus actividades promocionales, en particular, una publicidad intensiva de la marca, de forma continuada y constante en la prensa especializada y en las ferias sectoriales, con lo que consiguió llegar prácticamente hasta la totalidad de los tres sectores pertinentes del público. La limitada presencia del producto en el mercado no ha impedido, en forma alguna, que el público destinatario no supiera perfectamente que, en la fecha relevante, FLATZ era la marca con la que el oponente designaba a s us máquinas de bingo electrónicas (apartados 41, 42, 50, 51).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 26
FINAL VERSION 1.0 DATE 01/08/2014
Asunto Comentarios
R 1466/2008-2 y R 1565/2008-2, «COMMERZBANK ARENA»
La falta de cifras relativas a la cuota de mercado correspondiente a la marca «ARENA» en los países de referencia no es, de por sí, motivo suficiente para poner en en tredicho el renombre investigado. En primer lugar, la lista de factores que deben tenerse en cuenta para averiguar el renombre de una marca anterior solamente sirve a título de ejemplo, dado que es preciso tomar en cuenta todos los datos del caso y, en segundo lugar, las restantes pruebas detalladas y verificables presentadas por el oponente ya son suficientes por sí mismas para demostrar concluyentemente un grado sustancial de conocimiento de la marca «ARENA» entre el público destinatario (apartado 59).
No obstante, dado que esto significaría una excepción a la norma conforme a la cual el renombre debe evaluarse sobre la base de una apr eciación global de t odos los factores pertinentes del caso en cuestión, por lo general conviene evitar extraer conclusiones sobre la existencia de renombre basadas de forma casi exclusiva en estas cifras, o al menos deberían limitarse a los casos excepcionales en los que se justifique realmente una presunción de este tipo.
3.1.3.4 Extensión geográfica del uso
Las indicaciones relativas a la extensión geográfica del uso sirven principalmente para determinar si el renombre invocado está lo suficientemente extendido como para cubrir una parte sustancial del territorio de referencia, en el sentido del apartado 3.1 supra. A este respecto, debe tenerse en cuenta la densidad poblacional de las zonas correspondientes, desde el momento que el criterio esencial es la proporción de consumidores que conocen la marca, más que el tamaño de la zona geográfica como tal. De manera similar, lo que importa es el conocimiento de la marca por parte del público, y no l a disponibilidad de l os productos o s ervicios. Por consiguiente, una marca puede gozar de un amplio renombre a nivel territorial, obtenido gracias a la publicidad, promoción, inserción de informaciones en los medios de comunicación, etc.
Por norma general, cuanto más extendido se halla el uso, más fácil es llegar a la conclusión de q ue la marca ha al canzado el umbral requerido, mientras que toda indicación que atestigüe un us o que excede una parte sustancial del territorio de referencia constituye una señal positiva en favor de favor del renombre. A la inversa, un uso muy limitado en el territorio constituye un argumento de peso en contra del renombre, como ocurre por ejemplo cuando la mayor parte de l os productos se exportan directamente desde su lugar de producción hacia un tercer país en contenedores precintados.
Asunto Comentarios
R 0966/2010-1, «ERT (fig.)»
Si la marca anterior hubiera sido notoriamente conocida en los 27 Estados miembros de la UE a través de emisiones de televisión y revistas, el oponente no se hubiera encontrado con dificultadas para aportar datos sobre «el alcance de la marca» en el período inmediatamente anterior a 2008, en el momento de presentar la solicitud de marca comunitaria. Las cifras relativas a las ventas de revistas no i ncluían el período pertinente. Los documentos presentados no contenían ninguna indicación relativa al grado de conocimiento de la marca por parte del público (apartados 16 y 18).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 27
FINAL VERSION 1.0 DATE 01/08/2014
Sin embargo, la demostración del uso real en el territorio de referencia no se deberá considerar como una condición necesaria para la adquisición de renombre, ya que lo principal es el conocimiento de la marca, y no el modo como se hubiera adquirido.
Este conocimiento puede derivar, por ejemplo, de intensas campañas de publicidad anteriores al lanzamiento de un nuev o producto o, en el caso de q ue el comercio transfronterizo sea importante, de diferencias significativas de l os precios en l os mercados respectivos, un fenómeno denominado en ocasiones «desbordamiento territorial» del renombre, que se transfiere de una zona a otra. No obstante, cuando se invocan circunstancias de este tipo, será preciso demostrarlo aportando las pruebas correspondientes. Por ejemplo, el principio de libre circulación de mercancías vigente en la Unión Europea no autoriza a suponer de por sí que los productos que circulan en el mercado del Estado miembro X hayan penetrado en el mercado del Estado miembro Y en cantidades significativas.
3.1.3.5 Duración del uso
Las indicaciones relativas a l a duración del uso son particularmente útiles para determinar la longevidad de la marca. Cuanto mayor la duración del uso de la marca en el mercado, mayor será el número de consumidores susceptibles de haber entrado en contacto con ella, y mayor la probabilidad de que en efecto así haya sido en más de una ocasión. Por ejemplo, una presencia en el mercado de 45, 50, o más de 100 años se considera un sólido argumento en favor del renombre.
Asunto Comentarios
R 1466/2008-2 y R 1565/2008-2, «COMMERZBANK ARENA»
Las pruebas aportadas demostraban una duración de uso de l a marca «ARENA» particularmente notable (más de 3 0 años), así como una gran extensión de su cobertura geográfica (más de 75 países de todo el mundo, entre ellos los Estados miembros afectados) (apartado 55).
T-369/10, «BEATLE» Los Beatles se consideran un grupo con un renombre excepcional, que se extiende por un período superior a los 40 años (apartado 36).
La duración del uso de la marca no debe deducirse simplemente de la duración de su registro. El registro y el uso no c oinciden necesariamente, ya que en l a práctica la marca puede haber sido utilizada antes o después de solicitar su registro. Por consiguiente, cuando el oponente invoque un uso efectivo por un período superior al de la fecha de registro, le corresponderá demostrar que dicho uso comenzó realmente antes de haber solicitado la marca.
Sin embargo, un registro de larga duración puede en oc asiones servir como indicio indirecto de una pr esencia prolongada en el mercado, pues sería inhabitual que un titular mantuviera durante décadas una marca registrada sin un interés económico subyacente.
En última instancia, el elemento decisivo es si la marca anterior ha adquirido o no renombre en el momento de presentar la solicitud objeto de opos ición. El que dicho renombre haya existido o no en una época anterior es irrelevante desde el punto de vista jurídico. En consecuencia, los datos que demuestren el uso continuado hasta la fecha de presentación de la solicitud serán un indicio positivo a favor del renombre.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 28
FINAL VERSION 1.0 DATE 01/08/2014
Por el contrario, si el uso de la marca se hubiera interrumpido durante un período considerable, o si el plazo transcurrido entre la prueba más reciente del uso y la presentación de l a solicitud de M C es muy largo, será más difícil concluir que el renombre de la marca ha sobrevivido a la interrupción de su uso, o que ha subsistido hasta la fecha de presentación de la solicitud (véase el apartado 3.1.2.5 supra).
3.1.3.6 Actividades promocionales
Las características y el alcance de l as actividades promocionales desarrolladas por el oponente constituyen valiosas indicaciones para el examen del renombre de la marca, en la medida en que tales actividades han sido emprendidas para crear una imagen de marca y para reforzar el conocimiento de la marca entre el público. Por lo tanto, una c ampaña de pr omoción larga, intensa y amplia puede ser un sólido indicio de que la marca ha ad quirido renombre entre los compradores reales o potenciales de l os productos en c uestión, y de q ue ha llegado a s er notoriamente conocida en la práctica más allá del círculo de las personas que compran realmente dichos productos.
Asunto Comentarios
C-100/11 P, «BOTOCYL»
Los datos aportados sobre la promoción de «B OTOX» en l a prensa científica y generalista en l engua inglesa han sido suficientes para establecer la notoriedad de la marca, tanto entre el gran público como entre los profesionales sanitarios (apartados 65 y 66).
R 0445/2010-1, «FLATZ»
Aunque, por razones de fuerza mayor, la marca anterior no pudo alcanzar la notoriedad a través de los métodos tradicionales, es decir, mediante la venta del producto, sí alcanzó dicha notoriedad como resultado de sus actividades promocionales, haciendo una amplia publicidad de la marca de forma continuada y constante en la prensa especializada y en l as ferias sectoriales, con lo que consiguió llegar prácticamente hasta la totalidad de los tres sectores de público pertinentes. La limitada presencia del producto en el mercado no ha impedido, en forma alguna, que el público destinatario supiera perfectamente que, en la fecha relevante, FLATZ era la marca con la que el oponente designaba a s us máquinas de bingo electrónicas (apartados 41, 42, 50 y 51).
R 1659/2011-2, «KENZO» y R 1364/2012-2, «KENZO»
Se ha hecho publicidad de los productos del oponente y se han escrito artículos sobre ellos en muchas de las principales revistas de moda y de estilo de vida, así como en algunos de los medios generalistas más destacados de Europa. De acuerdo con la jurisprudencia, el renombre de «KENZO» para estos productos ha quedado confirmada. Los productos para los que la marca anterior goza de renombre son cosméticos, perfumes y moda. Debido a su gran renombre, la marca anterior «KENZO» presenta un «atractivo incontestable» que puede transmitirse a casi cualquier artículo de lujo (apartado 33). En el asunto posterior se confirmó este renombre (apartado 33).
Aunque no es posible descartar que una marca adquiera renombre antes de su uso real, las actividades promocionales normalmente no serán suficientes por sí solas para confirmar que la marca anterior haya adquirido efectivamente renombre (véase el apartado 3.1.3.4 supra). Por ejemplo, será difícil demostrar el conocimiento para una proporción significativa del público basándose exclusivamente en la promoción o la publicidad emprendidas como preparación para el lanzamiento de un nuevo producto, dada la dificultad que supone evaluar los efectos reales de la publicidad sin hacer
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 29
FINAL VERSION 1.0 DATE 01/08/2014
referencia a las ventas. En situaciones como estas, el único medio de prueba de que dispone el oponente son las encuestas de opinión o pr ocedimientos similares, cuyo valor probatorio variará en función de la fiabilidad del método utilizado, el tamaño de la muestra estadística, etc. (respecto al valor probatorio de los encuestas de opinión, véase el apartado 3.1.4 infra).
Los efectos de l as actividades promocionales del oponente se podrán demostrar, o bien directamente, haciendo referencia a la cuantía del gasto en promoción, o bien indirectamente, deduciéndolos de las características de la estrategia promocional adoptada por el oponente y del tipo de m edios utilizados para dar publicidad a la marca.
Por ejemplo, la publicidad realizada en un canal de televisión de ámbito nacional o en una publicación periódica de prestigio deberá recibir un peso mayor que las campañas de alcance regional o local, especialmente si la primera va acompañada de unas cifras elevadas de audi encia o de c irculación. De manera similar, el patrocinio de ac tos deportivos o culturales prestigiosos puede constituir un indicio complementario de la intensidad de l a promoción, ya que este tipo de pr ogramas implica a m enudo inversiones considerables.
Asunto Comentarios
R 1673/2008-2, «FIESTA»
Las diversas campañas publicitarias de Ferrero en la televisión italiana (incluyendo la RAI) evidencian que l a marca anterior fue difundida ampliamente entre los telespectadores en 2005 y 2006. Muchos de estos anuncios televisivos fueron difundidos en horarios de máxima audiencia (por ejemplo durante la retransmisión del Gran Premio de Fórmula 1) (apartado 41).
Por otro lado, el contenido de la estrategia promocional elegida por el oponente puede resultar útil para conocer el tipo de imagen que el oponente está intentando crear para su marca. Esta información puede revestir especial importancia cuando se trata de examinar la posibilidad de que se perjudique o se aproveche indebidamente una determinada imagen supuestamente transmitida por la marca, porque la existencia y las características de dicha imagen deben quedar suficientemente claras a partir de las pruebas aportadas por el oponente (véase el apartado 3.4 infra).
Asunto Comentarios
T-332/10, «VIAGUARA» (VIAGRA)
El Tribunal General ha dictaminado que, en lo concerniente a l a naturaleza de los productos examinados, la Sala de Recurso había estimado correctamente que las propiedades afrodisíacas y estimulantes atribuidas por motivos comerciales a las bebidas no alcohólicas incluidas en la clase 32 coincidían con las indicaciones terapéuticas de los productos amparados por la marca anterior, al menos en cuanto a l as imágenes que proyectaban de placer, vitalidad, potencia y juventud (apartado 66).
R 0306/2010-4, «CARRERA» (recurrido con T-0173/11)
La marca del oponente no solo es conocida per se, sino que como consecuencia del elevado precio de los automóviles deportivos y del cuantioso gasto publicitario del oponente, unido a sus éxitos en la competición, el público la asocia con una imagen de lujo, alta tecnología y elevadas prestaciones (apartado 31).
Marcas renombradas, artículo 8, apartado 5, del RMC
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FINAL VERSION 1.0 DATE 01/08/2014
3.1.3.7 Otros factores
El Tribunal ha precisado que la lista de factores presentada anteriormente no tiene sino carácter indicativo, y ha s ubrayado la necesidad de t omar en c onsideración, al examinar el renombre de la marca anterior, todos los elementos pertinentes para el asunto concreto (sentencia de 14/09/1999, en el asunto C-375/97, «General Motors», apartado 27). Los restantes elementos podrán deducirse de la jurisprudencia del Tribunal relativa al acusado carácter distintivo adquirido a t ravés del uso, o de l a Recomendación de l a OMPI relativa a l a protección de l as marcas notoriamente conocidas. Así pues, dependiendo de su relevancia para cada asunto, a los factores antes indicados podemos añadir los siguientes: los antecedentes de ej ercicio satisfactorio de los derechos, el número de registros, certificaciones y distinciones, y el valor asociado a la marca.
Antecedentes de ejercicio satisfactorio de los derechos
Los antecedentes relativos a las medidas de ejecución aplicadas con éxito frente a productos y servicios diferentes son importantes, por su capacidad para demostrar que, al menos en relación con otros operadores, se ha admitido la protección frente a dichos productos o servicios.
Estos antecedentes pueden consistir en la resolución extrajudicial satisfactoria de las controversias, como la aceptación de la petición de cese de las prácticas denunciadas, los acuerdos de delimitación en los conflictos sobre marcas y similares.
Por otra parte, los datos indicadores de q ue el oponente ha visto reconocido y protegido contra las infracciones el renombre de su marca mediante resoluciones de los órganos judiciales o administrativos constituyen una señal importante de que la marca goza de renombre en el territorio de referencia, especialmente si dichas resoluciones son de fecha reciente. Esta conclusión se verá reforzada cuando las resoluciones de es ta índole sean numerosas (acerca del valor probatorio de l as decisiones, véase el apartado 3.1.4.4 infra). Este aspecto se menciona en el artículo 2, apartado 1, letra b), punto 5 de la Recomendación de la OMPI.
Número de registros
También es importante el número y duración de los registros y solicitudes de l a marca, en Europa y en el mundo, aunque por sí mismos son un indicio débil del grado de conocimiento del signo por parte del público destinatario. El hecho de que el oponente sea titular de muchos registros de marca y para productos de muchas clases puede constituir un t estimonio indirecto sobre la difusión de l a marca a ni vel internacional, pero por sí mismo no puede demostrar concluyentemente el renombre. Este factor se menciona en el artículo 2, apartado 1, letra b), punto 4 de la Recomendación de la OMPI, donde queda clara la necesidad de que se haya producido un uso efectivo: la duración y el alcance geográfico de cualquier registro de la marca, y/o de cualquier solicitud de registro de la misma, son relevantes «en la medida en que reflejen la utilización o el reconocimiento de la marca».
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 31
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Certificaciones y distinciones
Las certificaciones, distinciones y demás medios de reconocimiento público suelen proporcionar información sobre la historia de la marca, o revelar determinadas facetas de la calidad de los productos del oponente, pero por regla general no son suficientes por sí solos para establecer el renombre, sirviendo más bien como indicaciones indirectas. Por ejemplo, el hecho de que el oponente haya ostentado el título de proveedor oficial de la Casa Real durante muchos años puede quizás demostrar que la marca invocada tiene un carácter tradicional, pero no proporciona información de primera mano relativa al conocimiento de la marca. No obstante, si la certificación se refiere a circunstancias relacionadas con los resultados de la marca, su relevancia será muy superior. Este factor ha sido mencionado por el Tribunal en los asuntos «Lloyd Schuhfabrik Meyer» y «Windsurfing Chiemsee», en relación con la determinación del elevado carácter distintivo adquirido a través del uso.
Asunto Comentarios
R 1637/2011-5, «APART»
Las nuevas pruebas aportadas por la parte recurrente y aceptadas por la Sala de Recurso demuestran que la marca anterior había ocupado de manera consistente un puesto elevado en la escala de marcas y obtenido las máximas calificaciones en las valoraciones llevadas a cabo por empresas especializadas en Polonia entre 2005 y 2009 (apartado 30). Se consideró, por tanto, que la parte recurrente había demostrado satisfactoriamente el renombre en Polonia para el sector de artículos de joyería, pero no así para los restantes productos y servicios amparados por sus signos anteriores.
Valor asociado a la marca
El hecho de que una marca reciba peticiones de terceros para reproducir sus productos, ya sea como marca o como mera decoración, es un indicio sólido de que la marca posee un gran atractivo y un valor económico importante. Por consiguiente, el nivel de ex plotación de l a marca mediante acuerdos de licencia, promoción comercial y patrocinio, al igual que la importancia de los programas correspondientes, constituyen indicaciones útiles para el análisis del renombre. Este factor se menciona en el artículo 2, apartado 1, letra b), punto 6 de la Recomendación de la OMPI.
3.1.4 Prueba del renombre
3.1.4.1 Criterios aplicables a la prueba
El oponente deberá presentar pruebas que permitan a la Oficina llegar a un a conclusión positiva sobre si la marca anterior ha adquirido renombre en el territorio de referencia. La terminología utilizada en el artículo 8, apartado 5, del RMC y en la regla 19, apartado 2, letra c), del REMC es perfectamente clara a este respecto: la marca anterior merece amplia protección únicamente si es «de renombre».
De aquí se deduce que las pruebas deberán ser claras y convincentes, en el sentido de que el oponente deberá describir con precisión todos los hechos necesarios para poder concluir con seguridad que la marca es conocida por una proporción
Marcas renombradas, artículo 8, apartado 5, del RMC
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FINAL VERSION 1.0 DATE 01/08/2014
significativa del público. El renombre de la marca anterior deberá probarse a satisfacción de la Oficina, sin que pueda darse simplemente por supuesta.
3.1.4.2 Carga de la prueba
Conforme a los términos de la segunda parte del artículo 76, apartado 1, del RMC, en los procedimientos inter partes, el examen de la Oficina «se limitará a los hechos, pruebas y alegaciones presentados por las partes». Consecuentemente, al examinar si la marca anterior goza de renombre, la Oficina no puede tomar en consideración los hechos de los que tiene conocimiento como resultado de sus propias indagaciones sobre el mercado, ni tampoco llevar a cabo una investigación de oficio, sino que deberá basar sus conclusiones exclusivamente en la información y elementos de prueba presentados por el oponente.
Serán posible excepciones a esta regla en los casos en que determinados hechos estén tan claramente establecidos que puedan considerarse universalmente conocidos y que, por lo tanto, se podrá suponer que también la Oficina as conozca (por ejemplo, el dato de que un país determinado posea un cierto número de consumidores, o de que los productos de alimentación estén destinados al público en general). Sin embargo, el que una marca haya franqueado o no el umbral de renombre definido por el Tribunal en el asunto «General Motors» no es, de por sí, una mera cuestión de hecho, ya que implica el análisis jurídico de una serie de indicios materiales y no se puede presuponer simplemente que el renombre de la marca anterior constituya, como tal, un hecho universalmente conocido.
Asunto Comentarios
T-185/02, «PICARO» (confirmado por C-361/04 P)
La Sala de R ecurso, además de los hechos presentados expresamente por las partes, puede tomar en consideración otros hechos bien conocidos, es decir, que probablemente conoce todo el mundo o que pueden ser conocidos a partir de fuentes accesibles al público en general. «En efecto, debe tenerse en cuenta, en pr imer lugar, que la norma jurídica enunciada en el artículo 74, apartado 1, in fine, del Reglamento nº 40/94 constituye una excepción respecto al principio del examen de oficio de los hechos, que la misma disposición establece in limine. Por tanto, esta excepción debe ser objeto de una interpretación estricta que defina su alcance de manera que no exceda de lo necesario para alcanzar su finalidad.» (apartados 29-32).
R 1472/2007-2, «El Polo»
Es de conocimiento público que la marca anterior es efectivamente una marca muy conocida, no solo en Francia, sino también en la mayoría de los países europeos, debido en gran parte a la exposición del público a estos productos en aeropuertos y tiendas libres de impuestos, así como a la larga trayectoria de publicidad en revistas de amplia circulación. El peso de las pruebas requeridas para corroborar afirmaciones que son universalmente conocidas como verdaderas no necesita ser demasiado grande (apartado 32).
La regla 19, apartado 2, letra c), del REMC prevé que corresponde al oponente presentar y demostrar los hechos relevantes, requiriéndole expresamente que facilite «pruebas de que la marca goza de renombre». De acuerdo con la regla 19, apartado 1 y apartado 2, letra c), del REMC, y conforme a la práctica de la División de Oposición, estas pruebas podrán presentarse, o bien junto con el escrito de oposición, o bien posteriormente, en un plazo de cuatro meses a partir de la fecha de notificación de la oposición al solicitante. El oponente podrá referirse igualmente a los hechos y
Marcas renombradas, artículo 8, apartado 5, del RMC
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pruebas presentados en el curso de otro procedimiento de oposición, a condición de que se indiquen clara e inequívocamente los documentos relevantes y que la lengua empleada en los procedimientos sea la misma en ambos casos.
Si las pruebas de renombre no están redactadas en la lengua adecuada, deberán traducirse a l a lengua de procedimiento dentro del plazo indicado de c uatro meses, como se establece en la regla 16, apartado 1, y en la regla 17, apartado 3, del REMC. No obstante, habida cuenta del volumen de documentos que suelen ser necesarios para demostrar el renombre, bastará con traducir únicamente las partes relevantes de las publicaciones o l os documentos de gran longitud. De la misma forma, no será necesario traducir integralmente los documentos o partes de documentos que contengan principalmente cifras o estadísticas cuyo significado sea evidente, como ocurre a menudo en el caso de facturas, formularios de pedido, diagramas, folletos, catálogos, etc.
Asunto Comentarios
R 1472/2007-2, «El Polo»
Aunque es obligatorio aportar las pruebas que confirmen la existencia de un derecho anterior en la lengua del procedimiento de oposición, no se especifica el formato determinado en el que deban presentarse las traducciones requeridas. Muchos oponentes se contentan con presentar simplemente sus propias traducciones, a menudo manuscritas, de las especificaciones del registro. Incumbe primariamente a l a Oficina, y en m enor medida al solicitante, comprobar la exactitud de t ales traducciones. Si la traducción es incorrecta, el documento carecerá de fiabilidad (apartado 17).
3.1.4.3 Valoración de la prueba
También se aplicarán en este caso las normas básicas relativas al examen de las pruebas, a saber, que se evaluarán todas ellas en su conjunto, es decir, que cada indicio probatorio se contrastará con los restantes y que la información confirmada por más de una f uente será generalmente más fiable que los datos procedentes de fuentes aisladas. Además, cuanto más independiente, fiable y bien informada sea la fuente de la información, mayor será el valor probatorio de los datos aportados.
Por consiguiente, la información que proceda directamente del oponente es poco probable que baste por sí misma, especialmente si consiste exclusivamente en opiniones y estimaciones y no en dat os, o si no tiene carácter oficial y carece de confirmación objetiva, como ocurre por ejemplo cuando el oponente aporta memorandos internos o tablas con datos y cifras de origen desconocido.
Asunto Comentarios
R 0295/2009-4, «PG PROINGEC CONSULTORÍA (fig.)»
El contenido de l a documentación aportada no de muestra claramente que la marca anterior goce de not oriedad. Dicha documentación proviene, en su mayor parte, de la propia parte recurrida y contiene información tomada de s us catálogos comerciales, de su propia publicidad y de do cumentos descargados de su sitio web. No hay suficiente documentación o información de terceros que refleje clara y objetivamente la posición exacta de la parte recurrida en el mercado. La notoriedad no ha sido demostrado (apartado 26).
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Asunto Comentarios
T-500/10, «doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS» (fig.)
Por lo que respecta a l os documentos del expediente que proceden de la propia empresa, el Tribunal General ha sostenido que para determinar el valor probatorio de este tipo de documentos deberá tenerse en cuenta, en primer lugar, la verosimilitud de la información que contiene. El Tribunal ha añadido que a continuación sería necesario tener en c uenta, en p articular, el origen de los documentos, las circunstancias en que hubiesen sido elaborados, el destinatario y si los documentos parecen ser, prima facie, sólidos y dignos de crédito (apartado 49).
Son embargo, si dicha documentación se hubiese difundido públicamente, o se hubiese recopilado para fines oficiales, y si contuviese informaciones y datos que hubieran sido verificados objetivamente o en ellas se reprodujesen afirmaciones realizadas en público, su valor probatorio, por lo general, sería superior.
En lo tocante a su contenido, cuanto más indicios aporte en relación con los diversos factores que permiten deducir la existencia de renombre, más relevante y concluyente será. En particular, las alegaciones que, en su conjunto, contengan pocos o ningún dato o i nformación de tipo cuantitativo, no serán pruebas adecuadas en relación con los factores esenciales como el conocimiento de la marca, la cuota de mercado y la intensidad del uso y, consecuentemente, no serán suficientes para fundamentar la conclusión de que existe renombre.
3.1.4.4 Medios de prueba
Los Reglamentos no contienen ninguna indicación directa del tipo de pruebas más adecuadas para demostrar el renombre, a di ferencia, por ejemplo, de la prueba del uso a q ue hace referencia la regla 22, apartado 4, del REMC. El oponente podrá utilizar todos los medios de prueba mencionados en el artículo 78, apartado 1, del RMC, siempre que sirvan para demostrar que la marca goza efectivamente del renombre requerido.
Los medios de prueba más frecuentemente utilizados por los oponentes en los procedimientos de oposición planteados ante la Oficina (el orden de la lista no refleja su importancia relativa ni su valor probatorio) son los siguientes:
1. declaraciones juradas o solemnes, 2. resoluciones de los tribunales o de las autoridades administrativas, 3. resoluciones de la Oficina, 4. sondeos de opinión y estudios de mercado, 5. auditorías e inspecciones, 6. certificaciones y premios, 7. artículos publicados en la prensa o en publicaciones especializadas, 8. informes anuales sobre los resultados económicos y perfiles de la empresa, 9. facturas y otros documentos comerciales, 10. materiales publicitarios y de promoción.
Este tipo de pr uebas pueden apor tarse también en virtud del artículo 8, apartado 1, letra b), del RMC, para demostrar que la marca anterior ha adquirido un carácter distintivo más elevado, o en virtud del artículo 8, apartado 2, letra c), del RMC, para las marcas renombradas.
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Declaraciones juradas o solemnes
En virtud del artículo 78, apartado 1, letra f), del RMC, las declaraciones escritas prestadas bajo juramento, las declaraciones solemnes o q ue, con arreglo a l a legislación del Estado en que se llevan a c abo, tengan un efecto equivalente, constituyen medios de prueba válidos. Por consiguiente, tales pruebas son admisibles si cumplen los requisitos formales establecidos por la legislación nacional aplicable, sin tener en c uenta el término utilizado por el oponente en s u descripción o traducción («affidávit», «declaración oficial», «declaración jurada», etc.). Así pues, si el Derecho nacional no subordina la admisibilidad de las pruebas a la función desempeñada por la persona que aporta las mismas, las declaraciones de este tipo son admisibles independientemente de que hayan sido hechas por el propio oponente, por un administrador de la empresa o por alguno de sus empleados.
El peso y valor probatorio de las declaraciones oficiales vendrá determinado por las normas generales aplicadas por la Oficina para la apreciación de estas pruebas. En particular, deberá tenerse en cuenta la función ejercida por la persona que aporta las pruebas y la relevancia del contenido de su declaración respecto al asunto examinado.
Como norma general, las declaraciones tendrán mayor valor probatorio cuando la información que contienen sea clara, se refiera a hechos específicos y esté respaldada con comprobantes o anexos objetivos cuya veracidad también haya sido verificada. A la inversa, si la declaración contiene únicamente afirmaciones vagas y no respaldadas, o valoraciones y opiniones subjetivas, o si no indica la fuente de información, su valor probatorio será mucho menor.
Asunto Comentarios
R 0729/2009-1, «SKYBLOG»
La declaración presentada por una e mpresa de c onsultoría especializada en el sector de la estrategia de los medios digitales del Reino Unido atestigua que el oponente «es el principal proveedor de t elevisión digital en el Reino Unido» y que «Sky» goza de un renombre enorme e impresionante (apartado 37).
Resoluciones de los tribunales o de las autoridades administrativas
Los oponentes invocan frecuentemente las resoluciones de las autoridades o de los tribunales nacionales que admiten el renombre de la marca anterior. Aunque las resoluciones nacionales constituyen pruebas admisibles y pueden tener valor probatorio, especialmente si provienen de un Estado miembro cuyo territorio sea también el de referencia en relación con la oposición en curso, no son vinculantes para la Oficina, en el sentido de que no es obligatorio atenerse a sus conclusiones.
Asunto Comentario
T-192/09, «SEVE TROPHY»
En lo que se refiere a las sentencias de los órganos jurisdiccionales españoles, el régimen comunitario de marcas es un sistema autónomo, constituido por un conjunto de normas y objetivos que tienen carácter específico y que se aplican independientemente de todo sistema nacional (apartado 79).
En la medida en que estas resoluciones puedan contener indicaciones sobre la existencia de renombre y para registrar que los derechos de l a marca han s ido defendidos con éxito, convendrá examinar y determinar su relevancia. Los criterios
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que se aplicarán en este sentido serán el tipo de procedimientos de que se trata, el objeto de l a controversia y su renombre efectivo o no en el sentido del artículo 8, apartado 5, del RMC, la instancia judicial implicada y el número de resoluciones similares.
Asunto Comentarios
C-100/11 P, «BOTOCYL»
Las resoluciones de la oficina nacional del Reino Unido relativas al renombre de «BOTOX» son hechos que el Tribunal General puede tomar en consideración si los considera relevantes, y ello a pesar de que los titulares de la MC no han intervenido como parte actora en tales resoluciones (apartado 78).
Pueden existir diferencias entre los requisitos materiales y formales aplicables a l os procedimientos nacionales y los aplicados en los procedimientos de oposición planteados ante la Oficina. En primer lugar, dichas diferencias pueden girar en torno a la forma de definir e interpretar el requisito del renombre. En segundo lugar, el peso que la Oficina atribuye a l as pruebas no c oincide necesariamente con el que les atribuyen los procedimientos nacionales. Por otra parte, las instancias nacionales pueden estar facultadas para examinar de oficio hechos de l os que tengan conocimiento directo, mientras que la Oficina, a tenor de lo dispuesto en el artículo 76 del RMC, no puede hacerlo.
Por estas razones, el valor probatorio de l as resoluciones nacionales aumentará considerablemente si se esclarecen perfectamente las características de la legislación y los hechos en q ue se fundamentan. Ello obedece a q ue, en aus encia de tales elementos, el solicitante encontrará más dificultades para ejercer su derecho de defensa, y para la Oficina será más complejo evaluar la relevancia de la resolución con un grado de certeza razonable. De manera similar, si la resolución aún no es definitiva, o si ha quedado desfasada por haber transcurrido demasiado tiempo entre los dos asuntos examinados, su valor probatorio disminuirá en consecuencia.
Por lo tanto, deberá determinarse el valor probatorio de las resoluciones nacionales en función de su contenido, y dicho valor podrá variar en función de cada caso.
Resoluciones de la Oficina
El oponente puede r eferirse también a resoluciones anteriores de l a Oficina, pero a condición de que tal referencia sea clara e inequívoca, y que la lengua utilizada en el procedimiento sea la misma. De no ut ilizarse la misma lengua, el oponente podrá presentar también una traducción de la resolución dentro del plazo de cuatro meses disponible para aportar nuevos hechos, pruebas y alegaciones, a f in de q ue el solicitante pueda ejercer su derecho de defensa.
Por lo que se refiere a la relevancia y valor probatorio de las resoluciones anteriores de la Oficina, se aplicarán idénticas reglas que en el caso de l as resoluciones nacionales. Pero aunque la referencia sea admisible y la resolución sea relevante, la Oficina no está obligada a adoptar la misma conclusión, ya que debe examinar cada asunto en cuanto al fondo.
De ahí que el valor probatorio de l as resoluciones anteriores de l a Oficina sea solamente relativo, y que deban examinarse conjuntamente con el resto de las pruebas, especialmente cuando la referencia del oponente no abarca todos los elementos de prueba presentados en el asunto principal, es decir, cuando el solicitante
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no haya tenido ocasión de comentarlos, o cuando el período de t iempo transcurrido entre ambos asuntos sea demasiado dilatado.
Asunto Comentarios
R 0141/2011-1, «GUSSACI GUSSACI GUSSACI GUSSACI»(fig.)
La constatación de renombre ha sido confirmada por la resolución anterior de las Salas de Recurso, con arreglo a la cual «GUCCI» se consideraba una de las primeras marcas mundiales en el sector de los artículos de lujo, y se demostraba el renombre de la marca «GUCCI» y de la letra «G», en sus diversas configuraciones, como abreviatura de «GUCCI». En particular, se demostró el renombre para los productos siguientes: relojes y joyas (resolución de 14/04/2011, R 143/2010-1, «GUDDY / GUCCI»), prendas de vestir, bolsos de mano, artículos de cuero, maletas, calzado, regalos, joyas, perfumes y gafas (resolución de 11/02/2010, R 1281/2008-1, «G» (fig.) / «G» (fig.) y otros), prendas de vestir, bolsos de mano, artículos de c uero, maletas y calzado (resolución de 17/03/2011, R 543/2010-1, «G» (fig.) / «G» (fig.) y otros) (apartado 18).
Encuestas de opinión y estudios de mercado
Las encuestas de opinión y los estudios de mercado constituyen los medios de prueba más adecuados para proporcionar información sobre el grado de conocimiento de la marca, su cuota de mercado o la posición que ocupa en el mercado en relación con los productos de la competencia.
El valor probatorio de l as encuestas de opi nión y los estudios de mercado viene determinado por la categoría e independencia de la entidad que los realiza, por la relevancia y exactitud de la información que proporciona y por la fiabilidad del método aplicado.
Más concretamente, para evaluar la credibilidad de una encuesta de opinión o estudio de mercado, la Oficina precisará las informaciones siguientes:
1. Si han s ido realizados por un organismo o una empresa de investigación independiente y con renombre, al objeto de determinar la fiabilidad de la fuente de datos.
2. El número y perfil (sexo, edad, profesión y antecedentes) de las personas encuestadas, a fin de analizar si los resultados de la encuesta son representativos de los diferentes tipos de consumidores potenciales de los productos en c uestión. En principio, bastarán tamaños de muestra de 1 000 - 2 000 entrevistados, siempre que estos últimos sean representativos del tipo de consumidores que interese.
3. La metodología aplicada en la encuesta y las circunstancias en que se haya realizado el estudio, así como la lista completa de las preguntas del cuestionario. También es importante conocer cómo y en qué orden se formularon las preguntas, al fin de determinar si las personas interrogadas fueron sometidas a preguntas tendenciosas.
4. Si los porcentajes indicados en la encuesta corresponden al número total de personas encuestadas o solamente al número de las que respondieron.
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A falta de l as indicaciones anteriores, los resultados de un es tudio de mercado o encuesta de opinión no podrán considerarse de alto valor probatorio, y en principio no bastarán por sí solos para concluir la existencia de renombre.
Asunto Comentarios
R 0925/2010-2, «1 CLEAN! 2 FRESH! 3 STRONG!» (fig.)
La parte que solicita la anulación no ha aportado pruebas suficientes sobre el renombre de su marca. Según los extractos de la encuesta efectuada en Italia en 2001, aunque el porcentaje de «reconocimiento provocado» era del 86 %, el porcentaje de «reconocimiento espontáneo» ascendía únicamente al 56 %. Por otra parte, no se incluye información en relación con las preguntas planteadas a l as personas encuestadas, por lo que resultaba imposible determinar si dichas preguntas eran o no realmente abiertas y no asistidas. Además, la encuesta tampoco precisaba los productos por los que se conoce la marca (apartado 27).
Además, aunque se faciliten las informaciones mencionadas, pero subsistan dudas sobre la fiabilidad de las fuentes o el método utilizado, o la muestra estadística sea demasiado reducida, o se hayan planteado preguntas tendenciosas, la credibilidad de las pruebas disminuirá en consecuencia.
Asunto Comentarios
R 1191/2010-4, «MÁS KOLOMBIANA …Y QUÉ MÁS!! (fig.)»
La encuesta presentada por el oponente no ofrece información que permita concluir fehacientemente el renombre del signo anterior ante el público español para gaseosas, dado que las personas sondeadas fueron cuidadosamente seleccionadas en función de su origen, es decir, por ser colombianos residentes en E spaña. Se trata de una proporción muy pequeña de la población en España. Las cifras de ventas, inversión publicitaria y presencia en publicaciones dirigidas al público inmigrante que figuran en la declaración notarial son igualmente insuficientes para probar el renombre del signo anterior, Por otra parte, las declaraciones no han sido corroboradas por datos concluyentes sobre el volumen de facturación de los productos (apartado 23).
R 1345/2010-1, «Fukato Fukato (fig.)»
En apoyo a su recurso en virtud del artículo 8, apartado 5, del RMC, el oponente se apoya exclusivamente en una encuesta de opinión realizada en 2007 por una empresa independiente. En principio, los tamaños de muestra de entre 1 000 – 2 000 entrevistados se consideran suficientes, siempre que sean representativos de la categoría de consumidor en cuestión. El sondeo en el caso del oponente se basó en una muestra de 500 personas entrevistadas, insuficiente en relación con los servicios para los que se reivindica el renombre. De acuerdo con dicha encuesta, el logotipo de la marca anterior se ha asociado especialmente a servicios en el sector financiero y de seguros. La oposición corresponde a una marca comunitaria anterior referida exclusivamente a la clase 42, y esta última no incluye tales servicios financieros y de seguros. Por consiguiente, la encuesta de opinión presentada no constituye una prueba pertinente en relación con el renombre de la marca comunitaria del oponente (apartado 58).
Por el contrario, las encuestas de opinión y estudios de mercado que satisfacen los requisitos indicados (independencia y fiabilidad de l as fuentes, muestra razonablemente amplia y diversificada, metodología adecuada) representan un argumento de peso a favor del renombre, especialmente si revelan un elevado grado de conocimiento de la marca.
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Auditorías e inspecciones
Las auditorías e i nspecciones en la empresa del oponente pueden apor tar informaciones útiles sobre la intensidad de us o de l a marca, ya que por lo general incluyen datos relativos a l os resultados económicos, volúmenes de v entas, facturación, beneficios, etc. Sin embargo, las pruebas de este tipo solo se considerarán pertinentes cuando se refieran específicamente a pr oductos vendidos bajo la marca en cuestión, y no a las actividades del oponente en general.
Las auditorías e inspecciones pueden efectuarse por iniciativa del propio oponente, o bien obligatoriamente en virtud de la legislación mercantil y/o de la reglamentación en materia financiera. En el primer supuesto, se aplicarán reglas similares a las aplicadas en el caso de las encuestas de opinión y estudios de mercado, es decir, se examinará la categoría de la entidad que efectúa la auditoría y la fiabilidad de la metodología aplicada como clave para determinar su credibilidad, aunque por lo general el valor probatorio de l as auditorías e i nspecciones oficiales será muy superior, teniendo en cuenta que suelen realizarse por un or ganismo público, o por una em presa de auditoría reconocida, y que se basan en normas y principios generalmente aceptados.
Certificaciones y premios
Este tipo de pruebas incluye las certificaciones y distinciones atribuidas por las autoridades públicas o instituciones oficiales, como las cámaras de comercio e industria, las asociaciones y agrupaciones profesionales, las organizaciones de consumidores, etc.
Las certificaciones expedidas por los organismos públicos suelen gozar de elevada credibilidad, ya que proceden de fuentes independientes y especializadas, que atestiguan los hechos constatados en el desempeño de s us funciones oficiales. Por ejemplo, las cifras de circulación media de las publicaciones periódicas, emitidas por las asociaciones competentes de distribuidores de prensa, constituyen pruebas concluyentes respecto al éxito de una marca dentro de este sector.
Asunto Comentarios
R 0907/2009-2, «O2PLS»
Las numerosas recompensas que ha conquistado esta marca se han considerado un elemento importante de las pruebas demostrativas del renombre, junto con las grandes inversiones en publicidad y el número de artículos aparecidos en diferentes publicaciones (apartados 9, inciso iii) y apartado 27).
Esta observación es válida igualmente para los certificados de calidad y títulos otorgados por los organismos mencionados, puesto que para recibirlos el oponente debe, por regla general, cumplir unas condiciones objetivas. Por el contrario, deberá darse poco peso a los premios y galardones concedidos por entidades desconocidas, o basados en criterios no especificados o subjetivos.
La pertinencia de las certificaciones o di stinciones para cada caso específico dependerá, sobre todo, de la naturaleza de las mismas. Por ejemplo, el hecho de que el oponente posea un certificado de calidad ISO 9001, o un privilegio real, no significa automáticamente que el signo sea notoriamente conocido por parte del público; únicamente significa que los productos del oponente satisfacen determinados criterios técnicos o de calidad, o que el oponente es proveedor de una Casa Real. No obstante,
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si estas pruebas van unidas a otras indicaciones de calidad y de éxito en el mercado, se podrá llegar a la conclusión de que la marca anterior goza de renombre.
Artículos publicados en la prensa o en medios especializados
El valor probatorio de los artículos en la prensa o en otros medios acerca de la marca del oponente dependerá principalmente de si tales textos son publicidad encubierta o si, por el contrario, son el resultado de una investigación independiente y objetiva.
Asunto Comentarios
Asuntos acumulados T-345/08 y T-357/08, «BOTOCYL», confirmados por C-100/11 P
La mera aparición de artículos en una publicación científica o en la prensa generalista constituye un f actor relevante para establecer el renombre entre el público en general de los productos comercializados bajo la marca BOTOX, independientemente del tenor positivo o negativo de tales artículos (apartado 54).
R 0555/2009-2, «BACI MILANO» (fig.)
El renombre de la marca anterior en Italia quedó demostrada a partir de la copiosa documentación aportada por el oponente, que incluía, entre otros, un artículo de Economy en el que se señalaba que en 2005 la marca «BACI & ABBRACCI» fue una de las 15 marcas de moda más falsificadas del mundo; un artículo publicado en Il Tempo el 05/08/2005 que mencionaba a la marca «BACI & ABBRACCI» junto con otras como Dolce & Gabbana, Armani, Lacoste y Puma, como objetivo preferido de los falsificadores; un artículo publicado en Fashion el 15/06/2006 en que se definía a la marca como «un auténtico fenómeno del mercado»; las campañas de publicidad de 2004 a 2007 con testimonios de celebridades del mundo del espectáculo y del deporte; un estudio de mercado realizado en septiembre de 2007 por la renombrada agencia independiente Doxa, en el que se presentaba la marca como la más reconocida en el sector de la moda para el 0,6 % del público italiano (apartado 35).
De ahí que estos artículos tengan un gran valor cuando aparecen en publicaciones prestigiosas de alto nivel y están escritos por profesionales independientes, como es el caso, por ejemplo, cuando el éxito de una marca determinada es objeto de un estudio de caso en revistas especializadas o en publicaciones científicas. La presencia de una marca en un di ccionario (que aunque no es un artículo de prensa sí es una publicación) constituye un elemento de prueba de gran valor.
Asunto Comentarios
Asuntos acumulados T-345/08 y T-357/08, «BOTOCYL», confirmados por C-100/11 P
La inclusión de una palabra en el diccionario señala un notable nivel de reconocimiento por parte del público. Las referencias en las ediciones de 2002 y 2003 de una serie de diccionarios publicados en el Reino Unido constituyen uno de los elementos de prueba capaces de demostrar el renombre de la marca BOTOX en dicho país, o entre el público de habla inglesa de la Unión Europea (apartados 55 y 56).
Informes anuales sobre los resultados económicos y descriptivos de empresas
Este tipo de pruebas incluye las publicaciones internas de todo tipo que contienen informaciones diversas sobre la historia, actividades y perspectivas de la empresa del oponente, o bien cifras más detalladas acerca de su facturación, ventas, publicidad, etc.
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En la medida en que estas pruebas emanan del oponente y tienen como finalidad principal promover su imagen, el valor probatorio de las mismas dependerá esencialmente de su contenido, y la información correspondiente deberá utilizarse con precaución, especialmente cuando consista, principalmente, en estimaciones y valoraciones subjetivas.
No obstante, cuando tales publicaciones se difundan entre los clientes y otras partes interesadas y contengan información y datos verificables objetivamente, que puedan haber sido recopilados o revisados por auditores independientes (como suele ser el caso de l os informes anuales), su valor probatorio se verá incrementado considerablemente.
Facturas y otros documentos comerciales
En esta categoría se pueden encuadrar todos los tipos de documentos comerciales, como facturas, formularios de pedido, contratos de distribución o de patrocinio, muestras de c orrespondencia con clientes, proveedores, asociados, etc. Los documentos de esta clase pueden proporcionar un gran abanico de datos sobre la intensidad del uso, el alcance geográfico y la duración de uso de la marca.
Aunque la relevancia y credibilidad de los documentos comerciales esté fuera de duda, por lo general será difícil demostrar el renombre exclusivamente sobre la base de estos documentos, teniendo en cuenta los múltiples factores que intervienen y el volumen de la documentación requerida. Por otra parte, las pruebas basadas en contratos de di stribución o de pat rocinio o en c orrespondencia comercial son más apropiadas como señales indicadoras del alcance geográfico o de los aspectos promocionales de l as actividades del oponente que como indicación del éxito de l a marca en el mercado, por lo que solamente pueden servir como indicios indirectos de renombre.
Asunto Comentarios
R 1272/2010-1, «GRUPO BIMBO» (fig.) (T-357/11)
Las pruebas presentadas evidencian un elevado nivel de renombre de la marca en el mercado español. La facturación total en España del sector del pan de m olde ascendió en 200 4 a 346,7 millones EUR, de los que el oponente facturó 204,9 millones. Los justificantes presentados incluyen anuncios en televisión, periódicos y revistas. Por lo tanto, ha quedado confirmado el renombre de «BIMBO» en España como marca de pan producido industrialmente (apartado 64). En la apelación, el Tribunal no trató este asunto.
Materiales publicitarios y promocionales
Esta clase de pruebas puede adoptar una diversidad de formas, como recortes de prensa, anuncios publicitarios, artículos promocionales, ofertas, folletos, catálogos, hojas informativas, etc. En general, estas pruebas no pueden s er concluyentes por sí solas respecto al renombre , debido a que no proporcionan mucha información sobre el conocimiento real de la marca.
No obstante, sí permiten inferir algunas conclusiones acerca del grado de exposición del público a los mensajes publicitarios relativos a la marca, teniendo en cuenta el tipo de medio utilizado (nacional, regional o l ocal) y los índices de audi encia o c ifras de
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 42
FINAL VERSION 1.0 DATE 01/08/2014
circulación registrados por los anuncios o p ublicaciones en c uestión, en c aso, naturalmente, de que se disponga de esta información.
Asunto Comentarios
R 0043/2010-4, «FFR» (fig.) (T-143/11)
Los documentos presentados demuestran que el dibujo en el que aparece un gallo negro ha adquirido renombre y que se asocia con el vino Chianti Classico de esta región. El oponente ha aportado una serie de copias de anuncios en periódicos y revistas que ponen de manifiesto su actividad promocional, así como artículos independientes en l os que ap arece un gal lo negro en conexión con la denominación Chianti Classico. Sin embargo, dado que el renombre corresponde únicamente al dibujo del gallo negro y que este último constituye tan solo una de las partes que integran las marcas anteriores, se plantean serias dudas sobre si es posible atribuir renombre a las marcas en su conjunto. Además, por idénticos motivos, surgen dudas en torno a l as marcas a l as que debería atribuirse el renombre, dado que el oponente dispone de varias (apartados 26 y 27). El Tribunal no examinó las pruebas relativas al renombre.
Por otra parte, este tipo de pruebas puede aportar indicaciones útiles respecto al tipo de productos amparados por la marca, la utilización que se hace de la misma en la práctica y el tipo de imagen que el oponente está intentando crear para ella. Por ejemplo, si las pruebas revelan que el registro anterior para el que se reivindica el renombre se refiere a un dibujo, pero en realidad dicho dibujo se utiliza en combinación con un elemento verbal, no sería coherente aceptar que es el dibujo por sí solo el que goza de renombre.
Asunto Comentarios
R 1308/2010-4, «WM GRAND PRIX»
En todos los ejemplos de uso real en podios, materiales de prensa, carteles, tarjetas para las carreras, membretes, carátulas de programas, entradas, pases, etc. presentados por el oponente, las palabras GRAND PRIX siempre se utilizan acompañadas de otros elementos. No se han aportado pruebas que acrediten el uso de la marca GRAND PRIX de forma independiente (apartados 53 y 54).
T-10/09, «F1-LIVE» (C-196/11 P)
Las pruebas relativas al renombre hacen referencia a la marca figurativa anterior «F1 Formula 1» y no a las marcas verbales anteriores. Sin su logotipo particular, el texto «Formula 1» y su forma abreviada «F1» se perciben como elementos descriptivos para una categoría de automóviles de competición o de las carreras en las que participan. No se demostró el renombre para unas marcas denominativas que no son idénticas o similares (apartados 53, 54 y 67). En la apelación, el Tribunal no abordó este asunto.
3.2 Similitud de los signos
Para culminar con éxito una oposición basada en el artículo 8, apartado 5, del RMC es preciso que exista «un cierto grado de similitud» entre los signos (sentencia de 24/03/2011, en el asunto C-552/09 P, «TiMi KINDERJOGHURT», apartado 53). Si se comprueba que los signos son completamente diferentes, no deberá efectuarse el examen orientado a determinar si se cumplen los restantes requisitos del artículo 8, apartado 5, del RMC, desde el momento que la oposición no puede prosperar.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 43
FINAL VERSION 1.0 DATE 01/08/2014
Un tema de cierta incertidumbre es la relación entre «similar» en el sentido del artículo 8, apartado 5, del RMC y el significado del mismo término en el artículo 8, apartado 1, letra b), del Reglamento. De acuerdo con la redacción exacta de ambas disposiciones, el que l os signos sean si milares (o idénticos) constituye una condición necesaria para la aplicación tanto del artículo 8, apartado 1, letra b), como del artículo 8, apartado 5, del RMC. La elección del mismo término en ambas cláusulas es un argumento a favor de la necesidad de interpretarlo en el mismo sentido, y la jurisprudencia así lo ha confirmado.
Por consiguiente, la apreciación de la similitud deberá efectuarse con arreglo a los mismos criterios que se aplican en el contexto del artículo 8, apartado 1, letra b), del RMC, es decir, teniendo en c uenta los elementos de similitud visual, fonética o conceptual (sentencia de 23/10/2003, en el asunto C-408/01, «Adidas», apartado 28, relativa a la interpretación del artículo 5, apartado 2, de la Directiva y sentencia de 24/03/2011, en el asunto C-552/09P, «TiMi KINDERJOGHURT», apartado 52). Véanse las Directrices, Parte C, Oposición, Sección 2, Identidad y riesgo de confusión, Capítulo 3, Comparación de los signos.
Se aplicarán los principios generales sobre la evaluación de los signos establecidos para el examen de es te criterio en el artículo 8, apartado 1, letra b), del RMC, como por ejemplo el relativo al hecho de que los consumidores perciben el signo como un todo y raramente tienen la posibilidad de comparar directamente las diferentes marcas, por lo que basan su confianza en la imagen imperfecta de las mismas que conservan en su memoria (sentencia de 25 /01/2012, en el asunto T-332/10, «Viaguara» apartados 33 y 34). (Véanse las Directrices, Parte C, Oposición, Sección 2, Identidad y riesgo de confusión, Capítulo 8, Apreciación global, apartado 4, Imagen imperfecta).
3.2.1 La noción de «similitud» en virtud del artículo 8, apartado 5, del RMC, comparada con la del artículo 8, apartado 1, letra b), del RMC
A pesar de apl icar el mismo criterio de s imilitud de l os signos en el artículo 8, apartado 1, letra b), y en el artículo 8, apartado 5, del RMC, sus objetivos subyacentes son distintos: en el caso del apartado 1, letra b), su objetivo consiste en impedir el registro de una marca posterior que, de ser utilizada, podría confundir al público destinatario respecto al origen comercial de l os productos o servicios afectados, mientras que el apartado 5 tiene como finalidad impedir el registro de una m arca posterior cuyo uso podría aprovecharse indebidamente del carácter distintivo o de l renombre de la marca anterior.
La relación entre el concepto de «s imilitud» correspondiente a cada uno de es tos apartados fue analizada por el TJUE en el asunto TiMi KINDERJOGHURT: «la existencia de una similitud entre la marca anterior y la marca controvertida constituye un requisito de apl icación común al artículo 8, apartado 1, letra b) [del RMC] y al artículo 8, apartado 5 [del RMC]» (apartado 51).
En el contexto del artículo 8, apartado 1, letra b), y del artículo 8, apartado 5, del RMC, la constatación de similitud entre las marcas en cuestión requiere, en particular, la existencia de r asgos gráficos, fonéticos o c onceptuales similares (sentencia de 23/10/2003, en el asunto C-408/01, «Adidas-Salomon y Adidas Benelux», apartado 28).
Sin embargo, estas disposiciones difieren en cuanto al grado de s imilitud requerido. Mientras que la protección contemplada en el artículo 8, apartado 1, letra b), del RMC
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 44
FINAL VERSION 1.0 DATE 01/08/2014
está condicionada a la constatación de un grado de similitud entre las marcas en litigio capaz de crear riesgo de confusión, la presencia de este riesgo no es necesaria para la protección otorgada por el artículo 8, apartado 5, del RMC. Por lo tanto, los tipos de perjuicios a que hace referencia el artículo 8, apartado 5, del RMC pueden derivarse de un grado de s imilitud entre las marcas en cuestión que, aunque menor, sea suficiente para que el público destinatario pueda percibir la conexión, es decir, concluir que existe un vínculo entre ellas (sentencia de 23/10/2003, en el asunto C-408/01, «Adidas-Salomon y Adidas Benelux», apartados 27, 29 y 31, y sentencia de 27/11/2008, en el asunto C-252/07, «Intel Corporation», apartados 57, 58 y 66).
No obstante, ni del tenor literal de estas cláusulas ni de la jurisprudencia se deduce claramente que la similitud entre las marcas deba examinarse de un modo distinto según si la apreciación se lleva a cabo en virtud del artículo 8, apartado 1, letra b), del RMC o del artículo 8, apartado 5, del RMC.
En síntesis, tanto la aplicación del artículo 8, apartado 1, letra b), como del artículo 8, apartado 5 exige la constatación de que los signos son similares. Por consiguiente, si en el examen realizado con arreglo al artículo 8, apartado 1, letra b), del RMC se halló que los signos eran diferentes, la oposición basada en el artículo 8, apartado 5, del RMC fracasará necesariamente.
Contrariamente, si se halló que los signos eran similares, el examinador analizará por separado si el grado de similitud es suficiente para la aplicación de l a disposición correspondiente, es decir, del artículo 8, apartado 1, letra b), o del artículo 8, apartado 5, del RMC (en función también de los demás factores pertinentes).
Consecuentemente, un grado de similitud entre las marcas que, tras el examen global de los factores pertinentes, haya permitido constatar el riesgo de c onfusión en el sentido del artículo 8, apartado 1, letra b), del RMC, no implica necesariamente que exista el vínculo entre los signos requerido por el artículo 8, apartado 5, como en el caso de q ue los mercados relevantes sean completamente distintos, situación que requerirá un análisis exhaustivo. Esto se debe a que la similitud entre los signos es tan solo uno de los factores a considerar para determinar si existe o no di cho vínculo (véanse los criterios relevantes enumerados en el apartado 3.3 infra relativo al «vínculo»).
Dependiendo de las circunstancias, se pueden presentar los siguientes supuestos:
• El artículo 8, apartado 1, letra b), del RMC no puede apl icarse porque los signos sin diferentes, en cuyo caso tampoco se podrá aplicar el artículo 8, apartado 5, por los mismos motivos.
• Se excluye el riesgo de confusión conforme al artículo 8, apartado 1, letra b), (por ejemplo debido a que los productos o servicios son diferentes o remotamente similares), pero los signos presentan similitud, en cuyo caso deberá practicarse el examen correspondiente al artículo 8, apartado 5 (véase el asunto T-143/11, «CHIANTI CLASSICO», apartados 66-71).
• La similitud entre los signos, unida a los demás factores pertinentes, justifica la exclusión de que exista riesgo de confusión en el sentido del artículo 8, apartado 1, letra b), pero dicha similitud puede ser suficiente para establecer un vínculo entre los signos conforme al artículo 8, apartado 5, a l a luz de l os restantes factores pertinentes.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 45
FINAL VERSION 1.0 DATE 01/08/2014
3.3 Vínculo entre los signos
El TJUE ha expresado claramente que para determinar si el uso de la marca objeto de oposición amenaza con causar perjuicio al carácter distintivo o el renombre de la marca anterior, o aprovecharse indebidamente de la misma, es necesario determinar, una vez comprobada la similitud entre los signos, si, teniendo en cuenta todos los factores pertinentes, el público destinatario puede establecer un vínculo (o asociación) entre los signos. La jurisprudencia posterior ha establecido claramente que un análisis de esta naturaleza debe preceder a la apreciación final de un eventual aprovechamiento indebido.
El concepto de vínculo entre los signos fue abordado por el TJUE en su sentencia de 27/11/2008, en el asunto C-252/07, «Intel Corporation», apartado 30 (y en l a jurisprudencia citada en la misma), la cual, aunque se refiere a l a interpretación del artículo 4, apartado 4, letra a), de la DM, también es aplicable al artículo 8, apartado 5, del RMC, que constituye la disposición equivalente del RMC. En el marco del asunto «Intel», el TJUE declaró lo siguiente (apartado 30):
«Las infracciones a que se refiere el artículo 4, apartado 4, letra a), de la Directiva, cuando se producen, son consecuencia de un determinado grado de similitud entre las marcas anterior y posterior, en virtud del cual el público relevante establece una relación entre ambas marcas, es decir, establece un v ínculo entre ambas, aunque no las confunda» (véanse, en relación con el artículo 5, apartado 2, de l a Directiva, «General Motors, apartado 23; «Adidas-Salomon y Adidas Benelux», apartado 29, y «Adidas y Adidas Benelux», apartado 41).
En lugar de «vínculo» se utiliza a veces el término «asociación» en otros apartados de las Directrices, al igual que en la jurisprudencia. A veces se utilizan indiferentemente ambos términos.
El tribunal ha establecido claramente que el mero hecho de que las marcas en cuestión sean similares no es suficiente para concluir que exista un vínculo entre ellas. Por el contrario, la presencia o ausencia de un v ínculo eventual entre las marcas en conflicto deberá apreciarse en su conjunto, teniendo en cuenta todos los factores pertinentes para el caso en cuestión.
De acuerdo con la sentencia correspondiente al asunto «Intel» (apartado 42), pueden ser factores pertinentes para determinar si existe dicho vínculo los siguientes:
• el grado de similitud entre las marcas en conflicto. Cuanto más similares sean las marcas, mayor será la probabilidad de q ue la marca posterior evoque en l a memoria del público relevante la marca anterior notoriamente conocida (sentencia de 06/07/2012, en el asunto T-60/10, «ROYAL SHAKESPEARE», apartado 26 y, por analogía, decisión prejudicial de 27 /11/2008, en el asunto C-252/07, «Intel», apartado 44);
• la naturaleza de los productos o s ervicios por los que la marca anterior es renombrada y para los que la marca posterior solicita el registro, incluido el grado de similitud o de diferencia entre dichos productos o servicios, así como el sector pertinente del público. Si los productos y servicios son muy diferentes, es probable que el consumidor no establezca una asociación entre las dos marcas;
• la intensidad del renombre de la marca anterior;
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 46
FINAL VERSION 1.0 DATE 01/08/2014
• el grado de carácter distintivo, intrínseco o adquirido por el uso, de la marca anterior. Entre más carácter distintivo intrínseco tenga la marca anterior, mayor será la probabilidad de que le venga a la menta al consumidor cuando encuentre una marca posterior similar (o idéntica);
• la existencia de un riesgo de confusión entre el público.
Esta lista no es exhaustiva. Es posible que el vínculo entre las marcas en c onflicto pueda confirmarse o excluirse sobre la base de únicamente algunos de estos criterios.
La pregunta sobre si el público establecerá un vínculo entre las marcas en conflicto es una cuestión de hecho al que deberá darse respuesta a la luz de los datos y circunstancias de cada asunto particular.
La apreciación del riesgo de establecimiento de un posible «vínculo» deberá tener en cuenta todos los factores pertinentes, que a continuación convendrá contrastar. Por consiguiente, un grado de similitud, aún débil o remoto entre los signos (que podría ser insuficiente para concluir la existencia de un riesgo de c onfusión en e l sentido del artículo 8, apartado 1, letra b), del RMC), justificará con todo examinar todos los factores pertinentes para determinar si existe el riesgo de que el público destinatario pueda establecer un vínculo entre los signos. A este respecto, el TJUE afirmó en su sentencia de 24/03/2011, en el asunto C-552/09 P, «TiMi Kinderjoghurt», apartados 65 y 66:
«Si bien es cierto que esta apreciación global implica una cierta interdependencia entre los factores tomados en consideración, de manera que un escaso grado de similitud entre las marcas puede ser compensado por un acusado carácter distintivo de la marca anterior […] no es menos cierto que, cuando no existe similitud alguna entre la marca anterior y la marca controvertida, la notoriedad o el renombre de l a marca anterior o bien la identidad o similitud de los productos o servicios de que se trata no bastan para apreciar [...] un vínculo entre [las marcas] en el en el ánimo del público pertinente.»
«Únicamente en caso de que las marcas en conflicto presenten una cierta similitud, aunque sea escasa, debe el órgano jurisdiccional proceder a una apreciación global con el fin de determinar si, pese al escaso grado de similitud entre ellas, existe, por la presencia de otros factores pertinentes, como la notoriedad o r enombre de l a marca anterior, un r iesgo de confusión o un vínculo entre dichas marcas en el ánimo del público pertinente.»
La jurisprudencia formulado claramente que la existencia de un vínculo no es suficiente, por sí sola, para inferir que se ha producido alguno de l os perjuicios contemplados en el artículo 8, apartado 5, del RMC (sentencia de 26 /09/2012, en el asunto T-301/09, «Citigate», apartado 96, y la jurisprudencia que cita). Sin embargo, como se explicará con mayor detalle a continuación, en el apartado 3.4 infra «Aprovechamiento indebido del renombre», antes de det erminar la probabilidad de que se produzca perjuicio o beneficio indebido es necesario que exista un vínculo (o asociación) entre los signos.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 47
FINAL VERSION 1.0 DATE 01/08/2014
3.3.1 Ejemplos en los que se constató un vínculo entre los signos
En los ejemplos siguientes se constató que el grado de similitud entre los signos (junto con otros factores) era suficiente para llegar a la conclusión de que los consumidores establecerían un vínculo entre ellos.
Signo anterior renombrado Solicitud de MC Asunto
BOTOX BOTOLYST y BOTOCYL
Asuntos acumulados T-345/08 y T-357/08,
confirmados por el TJUE en C-100/11P)
En la fecha de s olicitud de l as marcas impugnadas, que se refieren a u na serie de p roductos de la clase 3, la marca BOTOX gozaba de renombre en el Reino Unido por las preparaciones farmacéuticas para el tratamiento de las arrugas. El Tribunal General confirmó la conclusión de la Sala conformaba a la cual existía una cierto solapamiento entre los productos, a saber, un grado de similitud reducido entre las preparaciones farmacéuticas para el tratamiento de las arrugas comercializadas por el oponente y las cremas cosméticas y de otro tipo impugnadas, mientras que en el caso de los restantes productos objeto de oposición, es decir, perfumes, leches bronceadoras, champús, sales de baño, etc. no existía similitud. Sin embargo, los productos en conflicto tienen que ver con sectores afines del mercado. El Tribunal General confirmó la conclusión de la Sala conforme a la cual el público destinatario – los profesionales y el público en general– no dejarían de advertir que las dos marcas solicitadas, BOTOLIST y BOTOCYL, comienzan por «BOTO-», las mismas letras que forman casi la totalidad de la marca BOTOX, notoriamente conocida del público. El Tribunal general señaló que «BOTO-» no es un prefijo corriente, ni en el sector farmacéutico ni en el de los cosméticos, y que carece de significado descriptivo. Incluso descomponiendo el signo BOTOX en «bo» de «botulinum« y «tox» de «toxina», en referencia al ingrediente activo que utiliza, sería preciso considerar que dicha palabra ha adquirido un carácter distintivo, intrínseco o a través del uso, al menos en el Reino Unido. A la luz de todos los factores pertinentes, sería natural que el público estableciese un vínculo entre las marcas BOTOLIST y BOTOCYL y la marca renombrada BOTOX (apartados 65-79).
Signo anterior renombrado Solicitud de MC Asunto
RED BULL R 0070/2009-1
La Sala falló que se establecería un vínculo entre RED DOG y RED BULL debido a que: i) las marcas presentan algunos rasgos destacados comunes, ii) los productos en c onflicto de l as clases 32-33 son idénticos, iii) la marca RED BULL goza de renombre, iv) la marca RED BULL ha adquirido un elevado carácter distintivo a través del uso, y v) podría existir riesgo de confusión (apartado 19). Resulta razonable suponer que el consumidor medio de bebidas que conoce la marca renombrada RED BULL, cuando ve la marca RED DOG para el mismo tipo de bebidas recordará inmediatamente la marca anterior. Con arreglo a la sentencia en el asunto «Intel», esto «equivale a la existencia de un vínculo» entre las marcas (apartado 24).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 48
FINAL VERSION 1.0 DATE 01/08/2014
Signo anterior renombrado Solicitud de MC Asunto
VIAGRA VIAGUARA T-332/10
Las marcas son muy similares en su conjunto (apartado 42). Visualmente, todas las letras de la marca anterior están presentes en la marca impugnada, y las cuatro primeras y las dos últimas aparecen en el mismo orden. Existe similitud visual, especialmente teniendo en cuenta que el público suele prestar más atención a la parte inicial de las palabras (apartados 35 y 36). La identidad de la primera y de la última silaba, unida al hecho de que las sílabas intermedias comparten el sonido [g], introduce un grado elevado de similitud fonética (apartados 38 y 39). Ninguno de los signos tiene significado, por lo que el público no los diferenciará conceptualmente (apartado 40).
La marca anterior ampara productos farmacéuticos para el tratamiento de la disfunción eréctil de la clase 5, mientras que la marca impugnada ampara bebidas alcohólicas y no alcohólicas de las clases 32 y 33. No se ha cuestionado el renombre del signo anterior respecto a los productos mencionados. El Tribunal General consideró que a pesar de que, dadas sus diferencias, no es posible establecer una conexión directa entre los productos amparados por las marcas en litigio, sigue siendo posible encontrar una asociación con la marca anterior, teniendo en cuenta el alto grado de similitud entre los signos y la gran notoriedad adquirida por la marca anterior. Por consiguiente, el Tribunal General concluye que es probable que se establezca un vínculo entre las marcas (apartado 52).
Signo anterior notorio Solicitud de MC Asunto
RSC-ROYAL SHAKESPEARE COMPANY ROYAL SHAKESPEARE T-60/10
Puesto que la marca impugnada se compone exclusivamente del elemento central y distintivo de l a marca anterior, a saber, de la expresión «royal shakespeare», los signos en conflicto son similares tanto fonética como conceptualmente. Por lo tanto, el consumidor medio establecerá un vínculo entre estos signos (apartado 29). La marca anterior se refiere a servicios de la clase 41, entre ellos producciones teatrales, mientras que la marca impugnada se refiere a bebidas alcohólicas y no alcohólicas de las clases 32 y 33 y a los servicios de comidas y bebidas, restaurantes, bares, tabernas, hoteles; alojamiento temporal de la clase 42. El Tribunal General confirmó la conclusión de la Sala acerca de la «excepcional» notoriedad de la marca anterior en el Reino Unido para las producciones teatrales. El público destinatario para la marca impugnada coincide con el de la marca anterior, ya que se trata en ambos casos del público en general (apartado 58). Aunque los productos de las clases 32 y 33 de la marca impugnada no parecen estar vinculados, directa e inmediatamente, con las producciones teatrales del oponente, existe una cierta proximidad y vínculo entre los mismos. El Tribunal General hace referencia a la sentencia de 04/11/2008 en el asunto T-161/07, «Ugly (COYOTE UGLY)», apartados 31-37, en la que se halló una cierta similitud entre los servicios de esparcimiento y la cerveza, a causa de su complementariedad. El Tribunal añadió que en los teatros es una práctica generalizada ofrecer servicios de bar y de r estauración, ya sea durante la representación o en l os intermedios de la misma. Por otro lado y con independencia de lo anterior, teniendo en cuenta la sólida notoriedad de la marca anterior, el público relevante, en este caso el gran público del Reino Unido, podría establecer un vínculo con la recurrente al ver en un supermercado o en un bar una cerveza con la marca impugnada (apartado 60).
3.3.2 Ejemplos en los que no se constató un vínculo entre los signos
En los ejemplos siguientes, el examen global de todos los factores pertinentes demostró la poca probabilidad de que se estableciera un vínculo entre los signos.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 49
FINAL VERSION 1.0 DATE 01/08/2014
Signo anterior notorio Solicitud de MC Asunto
R 0724/2009-4
Los signos solo presentan un cierto grado de similitud visual y fonética. La Sala confirma que la notoriedad de las marcas anteriores ha sido demostrada únicamente para los servicios de distribución de energía. Tales servicios son completamente distintos de los productos para los que se solicita la protección, incluidos en las clases 18, 20, 24 y 27. El sector relevante del público es el mismo, dado que los servicios para los que se demostrado la notoriedad, es decir, servicios de distribución de energía, se destinan al público en general y los productos a que se refiere la oposición se destinan igualmente al consumidor medio, razonablemente atento y perspicaz. Sin embargo, aún en el caso de que los públicos interesados en los productos o s ervicios para los que se registraron respectivamente las marcas en conflicto sean los mismos o coincidan en cierta medida, dichos productos o s ervicios pueden ser tan diferentes que no r esulte probable que la marca posterior traiga a la memoria del público pertinente la marca anterior. Las enormes diferencias que separan el uso de los productos en conflicto y el de los servicios cuya notoriedad ha quedado demostrada hacen muy improbable que el público establezca un vínculo entre los signos en litigio, condición esencial para la aplicación del artículo 8, apartado 5, del RMC, y para el aprovechamiento indebido del carácter distintivo o de la notoriedad de la marca anterior. Y aún es menos probable que el público destinatario que pretende comprar un bolso o un mueble vincule estos productos con una marca notoriamente conocida, pero respecto a servicios en el sector energético (apartados 69-79).
Signo anterior renombrado Solicitud de MC Asunto
G-STAR y
T-309/08
Visualmente los signos producen una impresión global distinta, debido al elemento figurativo de la cabeza de dragón chino situado al comienzo de la marca solicitada. Fonéticamente existe bastante similitud entre las marcas analizadas. Conceptualmente los signos son diferentes, dado que el elemento «star» de las marcas anteriores es una palabra que forma parte del vocabulario inglés básico, cuyo significado es ampliamente comprendido en toda la Comunidad. Por consiguiente, las marcas anteriores se percibirán como haciendo referencia a una «estrella» o personaje famoso. Es posible que una parte del público destinatario atribuya al elemento «stor» de la marca impugnada el mismo significado de la palabra danesa o sueca «stor«, que equivale a «grande, voluminoso», o bien lo considere una referencia a la palabra inglesa «store», que s ignifica «tienda, almacén». Sin embargo, es más probable que l a mayoría del público relevante no atribuya ningún significado particular a dicho elemento. Por consiguiente, el público destinatario percibirá las marcas en conflicto como conceptualmente diferentes, desde el momento que las marcas anteriores poseen un significado claro en t oda la Comunidad, mientras que la marca solicitada tiene un significado distinto para una parte del público destinatario, o no tiene significado alguno. Según la jurisprudencia establecida, cuando el significado de al menos uno de los dos signos en liza sea claro y específico, de forma que pued a ser captado inmediatamente por el público destinatario, las diferencias conceptuales entre ambos signos pueden contrarrestar las similitudes visuales y fonéticas que existan. La Sala de Recurso había concluido correctamente que las diferencias visuales y conceptuales entre las marcas impedían suponer que existiese un posible vínculo entre ellas (apartados 25-36).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 50
FINAL VERSION 1.0 DATE 01/08/2014
Signo anterior renombrado Solicitud de MC Asunto
ONLY R 1556/2009-2(confirmado por T-586/10)
Los productos de l a clase 3 son idénticos y van dirigidos al mismo público. La similitud visual y conceptual entre los signos en cuestión es escasa, existiendo un grado moderado de similitud fonética. Aunque las marcas anteriores fueran renombradas, las diferencias entre los signos, debidas en particular a la identificación conceptual creada por la combinación del elemento «only» y el elemento distintivo dominante «givenchy», serían suficientemente importantes para que el público no estableciera una relación entre ellas. Por consiguiente, la Sala de Recurso actuó correctamente al concluir que no se daba una de las condiciones para la aplicación del artículo 8, apartado 5, del RMC, a saber, que los signos sean lo bastante similares como para que el público establezca una relación entre los mismos (apartados 65 y 66).
Signo anterior renombrado Solicitud de MC Asunto
KARUNA R 696/2009-4(confirmado por T-357/10)
Los productos correspondientes, chocolate de la clase 30, son idénticos. En cuanto a los signos, difieren visualmente no solo en los elementos figurativos del signo solicitado, sino también en sus elementos verbales. Aunque los elementos verbales de las marcas en conflicto tienen en común tres letras de seis, surge una diferencia debida a que las marcas anteriores comienzan con las letras «ka», mientras que la marca solicitada comienza con las letras «co», y los consumidores suelen dar más importancia a la primera parte de las palabras. En conjunto, la similitud fonética entre los signos es escasa. En el aspecto conceptual, la palabra española «corona» carece de s ignificado alguno en estonio, letón o lituano. Por ese motivo, en los tres Estados bálticos no es posible realizar una comparación conceptual entre los signos enfrentados. El mero hecho de que la palabra lituana «karûna» signifique «corona» no es suficiente para concluir que el público destinatario asocie los términos «karuna» o «karûna» con «corona», que sigue siendo una palabra extranjera. En conclusión, el Tribunal General reiteró que si no se cumplía la condición de similitud entre los signos exigida por el artículo 8, apartado 1, letra c), del RMC, era necesario sostener, basándose en el mismo análisis, que tampoco se cumplía dicha condición en lo referente al artículo 8, apartado 5, del Reglamento (apartados 30-34 y 49).
3.4 Aprovechamiento indebido del renombre
3.4.1 Objeto de la protección
El artículo 8, apartado 5, del RMC no protege el renombre de la marca anterior en cuanto tal, en el sentido de que no aspira a impedir el registro de todas las marcas idénticas o similares a una marca que goza de renombre. Además, debe existir el riesgo de que el uso sin justa causa de la marca cuya solicitud es objeto de oposición se aproveche indebidamente o sea perjudicial para el carácter distintivo o el renombre de la marca anterior. El Tribunal ha confirmado este principio al afirmar que «[c]uando el Juez nacional considere que el requisito relativo al renombre se cumple, […], deberá procederse al examen del segundo requisito […], es decir, la existencia de un perjuicio a la marca anterior sin justa causa» (resaltado añadido) (véase la sentencia de 14/09/1999, en el asunto C-375/97, «General Motors», apartado 30).
El Tribunal no ha precisado en mayor detalle en qué consistiría exactamente el perjuicio o apr ovechamiento indebido, si bien en el asunto «Sabel» declaró que el artículo 8, apartado 5, del RMC no exige «que se demuestre un riesgo de confusión»,
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 51
FINAL VERSION 1.0 DATE 01/08/2014
lo que resulta obvio, puesto que la protección ampliada otorgada a las marcas renombradas no depende de su función indicadora del origen (véase la sentencia de 11/11/1997, en el asunto C-251/95, «Sabel», apartado 20).
Sin embargo, en una serie de resoluciones anteriores, el Tribunal había considerado que una marca, además de indicar el origen, podía desempeñar otras funciones que justificaban la protección. Más en concreto, había confirmado que la marca puede ofrecer una garantía de q ue todos los productos procedentes de l a misma empresa poseen idéntica calidad (función de ga rantía), y que puede funcionar como instrumento publicitario a través del cual se refleja el fondo comercial (goodwill) y el prestigio adquirido en el mercado (función publicitaria) (sentencia de 17/10/1990, en el asunto C-10/89, «CNL-SUCAL contra HAG»; sentencia de 11 /07/1993, en los asuntos acumulados C-427/93, C-429/93 y C-436/93, «Bristol-Myers Squibb y otros contra Paranova»; sentencia de 11 /11/1997, en el asunto C-349/95, «Loendersloot contra Ballantine & Son y otros»; sentencia de 04/11/1997, en el asunto C-337/95, «Parfums Christian Dior contra Evora»; y sentencia de 23 /02/1999, en el asunto C-63/97, «BMW»).
En virtud de todo esto, las marcas no solo sirven para indicar el origen de un producto, sino también para comunicar al consumidor un determinado mensaje o imagen, que se incorpora al signo principalmente a través del uso y que, una vez adquirido, forma parte de s u carácter distintivo y de su renombre. En la mayor parte de los asuntos relacionados con el renombre, estas características de la marca son particularmente obvias, puesto que el éxito comercial de una marca reposa por lo general en la calidad del producto, o en una promoción eficaz, o en ambas a la vez y, por este motivo, son particularmente preciosas para el titular de l a marca. Es precisamente este valor añadido de una marca renombrada lo que intenta defender el artículo 8, apartado 5, del RMC contra el uso perjudicial sin justa causa y contra el aprovechamiento indebido.
Por consiguiente, el concepto de aprovechamiento indebido del renombre se refiere a todos los casos en los que el uso de la marca solicitada objeto de oposición implique el riesgo de incidir desfavorablemente en la marca anterior, en el sentido de q ue disminuiría su atractivo (perjuicio para el renombre), o la marca objeto de oposición resultaría probablemente en una apropiación indebida de su poder de atracción o en una explotación de su imagen y prestigio (ventaja desleal basada en el carácter distintivo o en el renombre).
Teniendo en cuenta, además, que un gran renombre es más fácil de dañar y que su gran valor hace que resulte más tentador aprovecharse indebidamente de la misma, el Tribunal ha insistido en que «cuanto más señalado sea el carácter único de la marca anterior, más fácil será que el uso de una marca posterior pueda causar un perjuicio a su carácter distintivo» (sentencia de 27/11/2008, en el asunto C-252/07, «Intel», apartados 67 y 74, sentencia de 25/05/2005, en el asunto T-67/04, «Spa-finders», apartado 41). Aunque el Tribunal no lo indique expresamente, otro tanto cabe afirmar de la ventaja desleal que el solicitante puede obtener a expensas de la marca anterior.
3.4.2 Apreciación del aprovechamiento indebido del renombre
En el asunto «General Motors», el Tribunal no ha evaluado en profundidad el perjuicio y el aprovechamiento indebido, ya que esta evaluación no formaba parte de la cuestión que se había sometido a su consideración. Se limitó a afirmar «sólo en e l supuesto de que la marca sea conocida suficientemente, el público, confrontado con la
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 52
FINAL VERSION 1.0 DATE 01/08/2014
marca posterior, podrá, en su caso, […] establecer una asociación entre ambas y, como consecuencia de ello, podrá resultar perjudicada la marca anterior» (sentencia de 14/09/1999, en el asunto C-375/97, «General Motors», apartado 23).
Aunque esta declaración es demasiado limitada para servir de base a un anál isis exhaustivo del supuesto relativo al aprovechamiento indebido del renombre, brinda al menos una indicación importante, a saber, que el perjuicio o el aprovechamiento indebido deben ser consecuencia de una asociación entre las marcas en cuestión en la conciencia del público, provocada por las similitudes entre las mismas, su carácter distintivo, renombre y otros factores (véase el apartado 3.3 supra).
La necesidad de una asociación susceptible de causar un perjuicio tiene doble consecuencia para la apreciación del perjuicio o del aprovechamiento indebido.
• La primera, que si el presunto perjuicio o ventaja desleal no es consecuencia de una asociación entre las marcas, sino que obedece a otras causas distintas, no será recurrible en virtud del artículo 8, apartado 5, del RMC.
• La segunda que si, teniendo en cuenta las circunstancias globales del caso, no parece probable una asociación entre las marcas, faltará el necesario vínculo entre el uso de la marca posterior y el perjuicio. Por lo tanto, las similitudes entre los signos, y el renombre de la marca anterior, deben s er de tal índole y magnitud que, teniendo en c uenta la totalidad de los factores, el consumidor establecerá una asociación entre los signos, en el sentido de que la percepción de uno de ellos evocará al otro.
Por otra parte, como observó el Tribunal, una asociación entre las marcas exige que la parte del público que ya está familiarizada con la marca anterior se vea expuesta también a la marca posterior. Esta condición es más fácil de dem ostrar cuando la marca anterior es conocida por el público en general, o cuando los consumidores de los productos o servicios correspondientes coinciden en gran parte. Sin embargo, en los casos en que los productos o servicios difieran considerablemente entre sí y no resulte evidente la relación entre los públicos respectivos, el oponente deberá justificar la asociación entre las marcas, haciendo referencia a al gún otro vínculo entre sus propias actividades y las del solicitante, como ocurre cuando la marca anterior se utiliza fuera de su sector de mercado natural a través, por ejemplo, de acuerdos de licencia o de comercialización (véase el apartado 3.3 supra).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 53
FINAL VERSION 1.0 DATE 01/08/2014
Signo anterior renombrado Solicitud de MC Asunto
R 1074/2011-5
Renombre para servicios de las clases 38, 42 y 45, entre otros, un sitio web de las redes sociales
Clases 14, 18 y 25
La Sala definió el público destinatario como el consumidor medio europeo de los productos objeto de la solicitud, es decir, de productos corrientes destinados al público en general.
Consideró probable que los productos del solicitante pudieran ser percibidos como vinculados con el oponente a través de un acuerdo de comercialización. Artículos como camisetas, llaveros, relojes de pulsera, bolsos, joyería, gorros, etc. se utilizan con mucha frecuencia como materiales promocionales que exhiben marcas relacionadas con productos y servicios completamente distintos. Al encontrarse con el signo TWITTER aplicado al reloj, bufanda o c amiseta, el consumidor pertinente establecerá inevitablemente una relación con el signo del oponente y con los servicios que ofrece, a causa del renombre de la marca del oponente. Esto proporcionaría al solicitante una ventaja competitiva, puesto que sus productos se beneficiarían del atractivo suplementario que obtendrían de la asociación con la marca más antigua del oponente. La compra de un reloj TWITTER como regalo para alguien del que se sabe que es usuario de TWITTER sería, por ejemplo, una acción motivada por la simpatía por la marca anterior (apartado 40).
Cuanto más inmediata y fuerte sea la evocación de l a marca anterior por la marca posterior, mayor será el riesgo de q ue con el uso actual o f uturo se obtenga un aprovechamiento indebido del carácter distintivo o del renombre de la marca anterior o bien se cause perjuicio a los mismos (sentencia de 27/11/2008, en el asunto C-252/07, «Intel», apartados 67-69; sentencia de 18/06/2009, en el asunto C-487/07, «L’Oréal», apartados 41 y 43).
Por consiguiente, el examen del perjuicio o aprovechamiento indebido deberá basarse en una apreciación global de todos los factores pertinentes del caso, (incluyendo, en particular, la similitud entre los signos, el renombre de la marca anterior, los grupos de consumidores y sectores de mercado respectivos), a fin de determinar si las marcas pueden asociarse de manera que se aproveche de la marca anterior.
3.4.3 Formas de aprovechamiento indebido
El artículo 8, apartado 5, del RMC menciona las formas siguientes de aprovechamiento indebido: «se aprovechará indebidamente del carácter distintivo o de la notoriedad de la marca anterior o fuera perjudicial para los mismos». Por consiguiente, el precepto anterior se aplicará cuando se produzca cualquiera de las siguientes tres situaciones alternativas que muestren aprovechamiento, a saber, cuando el uso de la marca objeto de oposición:
• se aproveche indebidamente el carácter distintivo o de l renombre de la marca anterior;
• provoque indebidamente perjuicios para el carácter distintivo, o • provoque indebidamente perjuicios para el renombre.
Respecto a la primera modalidad de aprovechamiento indebido, aunque el tenor literal del artículo 8, apartado 5, del RMC sugiere la existencia de dos formas de ventaja desleal, la jurisprudencia establecida ha tratado ambas como un único perjuicio en el
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 54
FINAL VERSION 1.0 DATE 01/08/2014
marco de dicha disposición (véase, por ejemplo, la sentencia de 06/07/2012, en el asunto T-60/10, «RSC-Royal Shakespeare Company», apartado 47). Ambos aspectos del mismo efecto perjudicial se abordarán en el apartado 3.4.3.1 infra para recibir un tratamiento más completo.
Como se ha indicado en las Directrices, Parte C, Oposición, Sección 2, Identidad y riesgo de confusión, este último se refiere exclusivamente a la posible confusión acerca del origen comercial de los productos o servicios. En contraste, el artículo 8, apartado 5, del RMC protege a las marcas anteriores renombradas en los casos de asociación o c onfusión que no esté relacionada necesariamente con el origen comercial de los productos o servicios. Dicha disposición ampara el mayor esfuerzo e inversión financiera que supone la creación y promoción de l as marcas hasta conseguir que sean renombradas, protegiéndolas frente a ot ras marcas similares posteriores que se aprovechen indebidamente o perjudiquen el carácter distintivo o el renombre de la marca anterior. Existe un variado vocabulario de términos utilizados en relación con este aspecto de la legislación en materia de marcas. A continuación se indican los más frecuentes.
Términos del artículo 8, apartado 5, del RMC Términos equivalentes de uso frecuente
Aprovechamiento indebido … “Free-riding”, parasitismo
Perjuicio para el carácter distintivo Dilución por difuminación, dilución, debilitación
Perjuicio para el renombre Dilución por menoscabo, menoscabar, degradación
3.4.3.1 Aprovechamiento indebido del carácter distintivo o del renombre
Naturaleza del perjuicio
El concepto de aprovechamiento indebido del carácter distintivo o del renombre abarca los casos en los que el solicitante se beneficia del atractivo de la marca anterior adhiriendo a sus productos o servicios un signo similar (o idéntico) a uno que goza de un gran renombre en el mercado, apropiándose así indebidamente de la capacidad de atracción y de la inversión publicitaria de es te último, o ex plotando su reputación, imagen y prestigio. Este supuesto puede conducir a s ituaciones inaceptables de parasitismo comercial, en las que el solicitante «se aprovecha gratuitamente» gracias a las inversiones del oponente en promover su marca y en crear un fondo de comercio para ella, desde el momento en que pueden servir para estimular las ventas de l os productos del solicitante en una p roporción excesiva elevada respecto a su propia inversión en promoción.
En su sentencia de 12/07/2011, en el asunto C-324/09, «L’Oreal y otros», el Tribunal señaló que existe ventaja desleal cuando se produce una transferencia de la imagen de la marca o de las características que proyecta hacia los productos designados con un signo idéntico o similar. Al intentar situarse en la estela de la marca renombrada, el solicitante se beneficia de su poder de at racción, de su renombre y de su prestigio. También explota, sin abonar compensación económica alguna, el esfuerzo comercial desarrollado por el titular de la marca para crear y mantener la imagen de la misma (apartados 41 y 49).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 55
FINAL VERSION 1.0 DATE 01/08/2014
Signo anterior renombrado Solicitud de MC Asunto
SPA
LES THERMES DE SPA SPA-FINDERS T-67/04
Debe entenderse que la ventaja desleal obtenida del carácter distintivo o d el renombre de la marca anterior comprende los supuestos en que existe una explotación evidente y un beneficio indebido de una marca célebre o un intento de sacar provecho de su renombre (véanse, en este sentido, las conclusiones del Abogado General Jacobs en el asunto Adidas, punto 39 (apartado 51).
Signo anterior renombrado Solicitud de MC Asunto
RSC-ROYAL SHAKESPEARE COMPANY
ROYAL SHAKESPEARE T-60/10
El aprovechamiento indebido del carácter distintivo o del renombre de la marca anterior consiste en el hecho de que la imagen de una marca renombrada, o las características que transmite, se comuniquen a los productos amparados por la marca solicitada y, como consecuencia de ello, la comercialización de tales productos se vea favorecida por la asociación con la marca anterior renombrada (apartado 48).
Consumidores pertinentes
El concepto de «aprovechamiento indebido» se centra en los beneficios obtenidos por la marca posterior, más que en los perjuicios irrogados a la marca anterior. Lo que se prohíbe es la explotación de la marca anterior por el titular de la marca posterior. De este modo, la existencia de un per juicio consistente en l a obtención de una ventaja desleal basada en el carácter distintivo o renombre de la marca anterior deberá examinarse en relación con l os consumidores normales de l os productos y servicios para los que se solicita la marca posterior (sentencia de 27/11/2008, en el asunto C-252/07, «Intel», apartados 35 y 36; sentencia de 12/03/2009, en el asunto C-320/07P, «Nasdaq», apartados 46-48; sentencia de 07/12/2010, en el asunto T-59/08, «NIMEI LA PERLA MODERN CLASSIC», apartado 35).
La apreciación del aprovechamiento indebido
Para determinar si el uso de un s igno supone un apr ovechamiento indebido del carácter distintivo o del renombre de la marca, es necesario efectuar una apreciación global que tenga en c uenta todos los factores pertinentes del caso en cuestión (sentencia de 10/05/2007, en el asunto T-47/06, «Nasdaq», apartado 53, confirmada en l a instancia de recurso por la sentencia de 12 /03/2009, en el asunto C-320/07P, «Nasdaq»; véanse asimismo la sentencia de 23 /10/2003, en el asunto C-408/01, «Adidas», apartados 29, 30 y 38; la sentencia de 27/11/2008, en el asunto C-252/07, «Intel»,, apartados 57, 58 y 66; y la sentencia de 24/03/2011, en el asunto C-552/09P, «Kinder», apartado 53).
La apropiación indebida del carácter distintivo y el renombre de la marca anterior presupone una asociación entre las marcas respectivas que facilite la transferencia de atractivo y de prestigio al signo cuyo registro se solicita. Una asociación de este tipo será más probable cuando concurren las siguientes circunstancias:
1. La marca anterior posee un gran renombre o un carácter distintivo (intrínseco) muy elevado, porque en ese caso el solicitante se sentirá más
Marcas renombradas, artículo 8, apartado 5, del RMC
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tentado a t ratar de be neficiarse de s u valor y será más sencillo crear una asociación con el signo cuyo registro se solicita. Las marcas de este tipo pueden reconocerse casi en cualquier contexto, precisamente gracias al destacado carácter distintivo o su “buen”·o “especial” renombre, es decir, que proyectan una imagen de excelencia, fiabilidad o calidad, o algún otro mensaje positivo capaz de influir favorablemente sobre la elección del consumidor en r elación con los productos de otros fabricantes (sentencia de 12/07/2011, en el asunto C-324/09, «L’Oreal y otros», apartado 44). Cuanto más acusado sea el carácter distintivo de la marca anterior, mayor será la probabilidad de que, al percibir una marca posterior idéntica o similar, el público destinatario la asocie con dicha marca anterior (sentencia de 06/07/2012, en el asunto T-60/10, «ROYAL SHAKESPEARE», apartado 27).
2. El grado de similitud entre los signos en conflicto es elevado. Cuanto más similares sean las marcas, mayor será la probabilidad de que la marca posterior evoque en la conciencia del público destinatario la marca anterior renombrada (sentencia de 06/07/2012, en el asunto T-60/10, «ROYAL SHAKESPEARE», apartado 26 y, por analogía, sentencia de 27/11/2008, en el asunto C-252/07, «Intel», apartado 44).
3. Existe un nexo especial entre los productos o servicios que permite atribuir determinadas propiedades de los bienes o servicios del oponente a los del solicitante. Tal será, en particular, el caso de los mercados afines, en los que parecería más natural una «extensión de marca», como ocurre por ejemplo con los productos farmacéuticos y con los cosméticos: si llevan la misma marca, las propiedades curativas de los primeros se presumen también para los segundos. A la inversa, no se ha podido constatar la existencia de un vínculo de este tipo entre los servicios de tarjetas de crédito y los cosméticos, porque se consideró que la imagen de estos servicios no puede transferirse a los productos, aunque sus usuarios respectivos coinciden en gran medida.
4. Cuando, habida cuenta del atractivo y el prestigio especial de la marca anterior, puede ser explotada incluso fuera de su sect or de m ercado natural, por ejemplo mediante acuerdos de licencia o de comercialización. En este caso, si el solicitante usa un signo idéntico o similar a la marca anterior para productos que ya está comercializando en un determinado sector, es evidente que el valor de facto de la marca anterior le beneficiará también en es te sector (véase la resolución de 16/03/2012, en el asunto R 1074/2011-5, «Twitter»).
Las intenciones del solicitante no son un factor relevante. El aprovechamiento indebido del carácter distintivo o de l renombre de una marca puede obedecer a una decisión deliberada, por ejemplo cuando existe una clara explotación y se trata de parasitismo de una marca famosa, o se intenta extraer provecho de su reputación. Ahora bien, el aprovechamiento indebido no requiere necesariamente una intención deliberada de explotar la reputación ligada a la marca de un tercero. El concepto de aprovechamiento indebido «se refiere al riesgo de q ue la imagen de una m arca renombrada, o l as características que transmite, se comuniquen a l os productos amparados por la marca solicitada y, como consecuencia de ello, la comercialización de tales productos se vea favorecida por la asociación con la marca anterior renombrada» (sentencia de 19/06/2008, en el asunto, T-93/06, «Mineral Spa», apartado 40; sentencia de 22/03/2007, en el asunto T-215/03, «VIPS», apartado 40; sentencia de 30/01/2008, en el asunto T-128/06, «Camelo», apartado 46).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 57
FINAL VERSION 1.0 DATE 01/08/2014
Por consiguiente, la mala fe no c onstituye por sí misma una c ondición para la aplicación del artículo 8, apartado 5, del RMC, que únicamente requiere que el aprovechamiento sea «indebido», es decir, que no exista justificación para la ventaja obtenida por el solicitante. No obstante, las pruebas de que el solicitante está actuando claramente de mala fe serán también un fuerte argumento a favor de q ue exista aprovechamiento indebido. La c onstatación de m ala fe se puede deducir de diversos hechos, como el intento obvio del solicitante de imitar en todo lo posible un signo anterior de acusado carácter distintivo, o l a falta de motivo aparente que justifique la elección para sus productos de una marca que incluye dicho signo.
Por último, el concepto de aprovechamiento indebido contemplado en el artículo 8, apartado 5, del RMC no guarda relación con el perjuicio causado al renombre de la marca. Debido a ello, el provecho que un tercero haya podido obtener del carácter distintivo o del renombre de la marca podrá ser indebido, aunque el uso de un signo idéntico o similar no sea perjudicial para dicho carácter distintivo o renombre o, más generalmente, para su titular. Por consiguiente, no es necesario que el oponente demuestre que el beneficio del solicitante representa un per juicio para sus intereses económicos o par a la imagen de s u marca (a diferencia de l o que ocurre con el menoscabo de la marca, véase más abajo), puesto que en la mayoría de los casos la distinción o pr estigio del signo «tomados en préstamo» afectarán, sobre todo, a l os competidores del solicitante, es decir, a los comerciantes que actúen en mercados idénticos, similares o afines, los cuales se encontrarán en desventaja competitiva. Sin embargo, no debe excluirse por completo la posibilidad de que resulten perjudicados simultáneamente los intereses del oponente, especialmente en l os casos en que el uso del signo solicitado pudiera afectar a sus programas de comercialización u obstaculizar sus planes de penetración en un nuevo sector del mercado.
Ejemplos de aprovechamiento indebido
Riesgo de aprovechamiento indebido confirmado
Signo anterior renombrado Solicitud de MC Asunto
INTEL INTELMARK C-252/07
(Conclusiones de la Abogada General)
En sus conclusiones relativas a l a decisión prejudicial en el asunto «Intel», la Abogada General Sharpston se refirió al aprovechamiento indebido en los siguientes términos: «El concepto de obtención de una ventaja desleal del carácter distintivo o del renombre de la marca objeto de oposición debe entenderse como incluyendo “los casos en que se produce una clara explotación y parasitismo de una marca famosa, o bien un intento de hacer negocio basándose en su renombre”. Así por ejemplo, Rolls Royce tendría derecho a impedir que un fabricante de whisky explotase el renombre de la marca Rolls Royce para promocionar su propia marca. No es evidente que exista una diferencia real entre el aprovechamiento indebido del carácter distintivo de una marca y el aprovechamiento indebido de su renombre, pero como nada de lo discutido en el presente asunto gira en torno a tal diferencia, me referiré a ambos conceptos como parasitismo» (apartado 33).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 58
FINAL VERSION 1.0 DATE 01/08/2014
Signo anterior renombrado Solicitud de MC Asunto
CITIBANK y otros T-181/05
«[N]o se discute la notoriedad en la Comunidad Europea de la marca CITIBANK en el sector de los servicios bancarios. En este sentido, dicha notoriedad va asociada a l as características del sector bancario, a saber, la solvencia, la honestidad y el apoyo financiero a clientes privados y comerciales en sus actividades profesionales y de inversión».
«[E]xiste una relación evidente, así como un solapamiento de los grupos de clientes de las demandantes y de la interviniente, entre los servicios de agencias de aduanas y los servicios financieros ofrecidos por bancos como las demandantes, toda vez que l os clientes que e jercen actividades en el comercio internacional y de importación y exportación de mercancías utilizan también los servicios financieros y bancarios que tales transacciones requieren. De ello resulta que existe la probabilidad de que dichos clientes conozcan al banco de las demandantes, dada su considerable notoriedad a nivel internacional».
«En estas circunstancias, el Tribunal de Primera Instancia considera que es muy probable que el uso de la marca solicitada CITI por las agencias de aduanas y, por tanto, para las actividades de mandatario financiero en l a gestión de cantidades de dinero y de bi enes inmuebles de clientes, conduzca a un parasitismo, es decir, se aproveche indebidamente de la notoriedad consolidada de la marca CITIBANK y de las fuertes inversiones realizadas por las demandantes para alcanzar dicha notoriedad. Dicho uso de la marca solicitada CITI podría llevar también a la percepción de que la interviniente está asociada o forma parte de l as demandantes y, por tanto, podría facilitar la comercialización de los servicios designados por la marca solicitada. Al ser titulares las demandantes de varias marcas que incluyen el elemento «citi», ese riesgo resulta además agravado» (apartados 81-83).
Signo anterior renombrado Solicitud de MC Asunto
SPA MINERAL SPA T-93/06
La marca MINERAL SPA (correspondiente a jabones, perfumes, aceites esenciales, preparaciones para el cuidado y la belleza corporal, preparaciones para el cabello y dentífricos de la clase 3), podría obtener una ventaja desleal basada en la imagen de la marca anterior SPA y en el mensaje que esta transmite, de forma que los productos amparados por la solicitud objeto de oposición podrían ser percibidos por el público destinatario como capaces de aportar salud, belleza y lozanía. La cuestión no es si un dentífrico o perfume contienen agua mineral, sino si el público puede pensar que los productos correspondientes se producen a base de agua mineral o la contienen (apartados 43 y 44).
Signo anterior renombrado Asunto
L’Oréal y otros C-324/09 (decisión prejudicial)
Conforme a las alegaciones de L’Oréal y otros, los demandados fabricaban e importaban perfumes «de fragancia similar» a los de L’Oréal, pero vendidos a un precio considerablemente menor y distribuidos en envases que «hacían un guiño» a los estilos utilizados por las marcas de L’Oréal. Las listas de rasgos comparativos aportadas por los demandados presentan los perfumes que comercializan como una imitación o r éplica de l os productos amparados por una marca renombrada. En virtud de l a Directiva nº 84/450, la publicidad comparativa que presenta los productos del anunciante como imitación de un producto protegido por una marca registrada es incompatible con la competencia leal, y por lo tanto ilegal. Consecuentemente, cualquier ventaja obtenida por el anunciante mediante dicha publicidad sería resultado de una competencia desleal y debería considerarse como un aprovechamiento indebido del renombre de la marca en cuestión (apartado 79).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 59
FINAL VERSION 1.0 DATE 01/08/2014
Signo anterior renombrado Solicitud de MC Asunto
NASDAQ T-47/06
Debe tenerse en cuenta el hecho de que los servicios financieros y de cotización en bolsa prestados por la parte recurrente bajo su marca NASDAQ, y por consiguiente la propia marca NASDAQ, ofrecen indudablemente una imagen de m odernidad que puede trasladarse a l os artículos deportivos y, en particular, a los materiales composite de alta tecnología que comercializaría el solicitante con la marca cuyo registro solicita, extremo que el solicitante parece reconocer implícitamente al declarar que la palabra «nasdaq» es descriptiva de sus principales actividades.
Por consiguiente, a la luz de estos datos, y tomando en consideración la similitud de las marcas en conflicto, la relevancia del renombre y el carácter elevadamente distintivo de la marca NASDAQ, procede sostener que la parte recurrente ha logrado demostrar prima facie la existencia de un riesgo futuro, no hipotético, de qu e el solicitante obtenga una ventaja desleal, basada en el renombre de la marca NASDAQ, mediante el uso de la marca solicitada. Por tal motivo, respecto a e ste punto no pr ocede corregir la resolución impugnada» (apartados 60 y 61).
Signo anterior renombrado Solicitud de MC Asunto
RSC-ROYAL SHAKESPEARE COMPANY
ROYAL SHAKESPEARE T-60/10
Existe una cierta afinidad y vínculo entre servicios de esparcimiento y cerveza, e incluso una c ierta similitud basada en su complementariedad. El público del Reino Unido podría establecer un vínculo con la Royal Shakespeare Company (RSC) al ver una cerveza con la marca impugnada ROYAL SHAKESPEARE en un supermercado o en un bar. La marca impugnada se beneficiaría del poder de atracción, renombre y prestigio de la marca anterior para sus propios productos y servicios, que llamarían la atención de los consumidores gracias a su asociación con RSC, logrando de este modo una ventaja comercial respecto a los productos de sus competidores. El beneficio económico consistiría en explotar los esfuerzos realizados por RSC para crear la reputación y la imagen de su marca anterior, sin tener que pagar a cambio compensación alguna, lo que equivale a una ventaja desleal (apartado 61).
Marcas renombradas, artículo 8, apartado 5, del RMC
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Signo anterior renombrado Solicitud de MC Asunto
T-369/10 C-294/12 P
(recurso desestimado)
El Tribunal General confirmó que la Sala de Recurso falló correctamente que las marcas anteriores gozaban de renombre en la comercialización de pr oductos como juguetes y juegos, si bien dicho renombre era menor que l a alcanzada para grabaciones de audio y de vídeo y películas, y que los productos en cuestión presentaban similitudes a pesar de que no eran del mismo tipo, no servían para el mismo uso o finalidad, no eran complementarios ni competitivos ni utilizaban los mismos canales de comercialización (apartados 38, 50 y 52).
La imagen sumamente positiva transmitida por las marcas anteriores podía beneficiar a los productos amparados por la marca impugnada [entre otros, sillas de rueda, especialmente hechas para personas enfermas y discapacitadas, clase 12], desde el momento que el público destinatario, a pes ar de l a dificultad específica señalada, se sentiría particularmente atraído por la imagen de libertad, juventud y movilidad asociada con las marcas anteriores, sobre todo porque una parte del público al que se destinaban los productos de la marca impugnada pertenecían a una ge neración que, en la década de 1960, conoció los productos designados con las marcas anteriores, por lo que algunas de estas personas podrían ahora sentir interés por los productos designados con la marca impugnada (apartado 72).
Signo anterior renombrado Solicitud de MC Asunto
EMILIO PUCCI T-373/09 (asunto C-582/12 P pendiente
de recurso) (asuntos R 770/2008-2 y R
826/2008-2)
Aunque los cosméticos del solicitante son distintos de las prendas de vestir del oponente, todos ellos encajan perfectamente en la categoría de productos que suelen comercializarse como artículos de lujo con marcas famosas o con los nombres de diseñadores o fabricantes de prestigio. Teniendo en cuenta que la marca anterior es notoriamente conocida y que los sectores comerciales en los que se promocionan los productos son relativamente afines, la Sala de Recurso llegó a la conclusión de que los consumidores de ropa de lujo establecerían una asociación entre la marca del solicitante, que designa jabones, perfumes, aceites esenciales, cosméticos y lociones para el cabello incluidos en la clase 3, y la famosa marca «EMILIO PUCCI», una asociación que se traduciría en un beneficio comercial según las apreciaciones de la Sala (SdR, apartado 129).
La Sala de Recurso concluyó que existía un elevado riesgo de que el solicitante pudiera aprovechar el renombre de la marca del oponente en su propio beneficio. El uso de la marca solicitada en relación con los productos o servicios antes indicados atraería con casi total seguridad la atención del consumidor pertinente hacia la marca del oponente, muy similar y notoriamente conocida. El solicitante compartiría el aura de lujo que rodeaba la marca «EMILIO PUCCI». Muchos consumidores podrían pensar que existía una relación directa entre los productos del solicitante y la famosa casa de moda italiana, en forma quizás de un acuerdo de licencia. El solicitante se aprovecharía indebidamente del hecho de que el público conocía bien la marca «EMILIO PUCCI» con el fin de introducir su propia marca sumamente similar, sin incurrir en l os grandes riesgos y costes que c onlleva la introducción en e l mercado de una m arca completamente desconocida (SdR, apartado 130).
El Tribunal General respaldó las conclusiones de la Sala de Recurso.
Marcas renombradas, artículo 8, apartado 5, del RMC
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Riesgo de aprovechamiento indebido desestimado
Signo anterior renombrado Solicitud de MC Asunto
O2
R 2304/2010-2
La Sala de Recurso estimó que: (1) las marcas presentan escasas similitudes y son diferentes en su conjunto; (2) el uso de la designación común «O2« es descriptivo en la marca solicitada, y (3) teniendo en cuenta que los ámbitos de utilización son completamente distintos, así como el uso descriptivo del elemento común, no puede existir ninguna posibilidad de que el solicitante se aproveche del carácter distintivo de la marca anterior, aunque pueda producirse un s olapamiento en e l público destinatario (apartado 55).
Signo anterior renombrado Solicitud de MC Asunto
VIPS VIPS T-215/03
La marca anterior VIPS posee renombre en el sector de la restauración, especialmente como cadena de comida rápida. Sin embargo, no ha quedado probado que goce además de un prestigio particular. El término VIPS es laudatorio en sí mismo y se utiliza ampliamente con esta acepción, por lo que no puede ser «diluido». No se ha explicado en qué forma las ventas de programas informáticos con la marca VIPS podrían beneficiarse por el hecho de verse relacionados con una cadena de comida rápida, en caso de que se confirmase dicho vínculo.
Signo anterior renombrado Solicitud de MC Asunto
SPA SPA-FINDERS T-67/04
SPA goza de renombre en el Benelux como agua mineral. La marca objeto de oposición, SPA FINDERS, corresponde a publicaciones, catálogos, boletines de noticias, servicios de agencia de viajes. El Tribunal General declaró que no existía un vínculo entre los signos con efectos perjudiciales. El signo SPA se utiliza también para designar la ciudad de SPA y el circuito automovilístico que lleva este mismo nombre. No existen indicios de aprovechamiento indebido ni de explotación de la fama de la marca anterior. La palabra SPA dentro de l a marca solicitada designa únicamente el tipo de publicaciones a l as que se refiere.
3.4.3.2 Perjuicio para el carácter distintivo
Naturaleza del perjuicio
El perjuicio para el carácter distintivo de l a marca anterior (denominado igualmente «dilución», «menoscabo» o «difuminación») consiste en la debilitación de la capacidad de dicha marca para identificar como procedentes de un t itular los productos o servicios para los que se registró y respecto de los cuales se ha utilizado, puesto que el uso de l a marca posterior da l ugar a una di spersión de l a identidad de l a marca anterior que disminuye su carácter distintivo o único (sentencia de 27/11/2008, en el asunto C-252/07, «Intel», apartado 29).
El artículo 8, apartado 5, del RMC estipula que el titular de una marca anterior renombrada podrá oponerse a las solicitudes de MC cuyo uso sin justa causa «se aprovechara indebidamente del carácter distintivo o de l a notoriedad de la marca anterior o fuera perjudicial para los mismos» (cursiva añadida). Queda claro, por consiguiente, que el objeto de la protección es el carácter distintivo de la marca anterior. Como se ha i ndicado en l as Directrices, Parte C, Oposición, Sección 2, Identidad y riesgo de confusión, Capítulo 4, Carácter distintivo, dicho «carácter
Marcas renombradas, artículo 8, apartado 5, del RMC
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distintivo» se refiere a la mayor o menor capacidad de una marca para identificar los productos o servicios para los que se registró como procedentes de una determinada empresa. Por consiguiente, el artículo 8, apartado 5, del RMC protege a las marcas renombradas contra una reducción de su calidad distintiva provocada por una marca similar posterior, cuando esta última designa productos o servicios no similares. Esta situación se denomina normalmente «dilución por difuminación», lo que significa que la «dilución» de la exclusividad de una marca tiene lugar cuando la misma se «difumina» con la aparición de otras marcas similares, hasta el punto de que la marca que goza de renombre ya no es capaz de evocar en la conciencia del público una asociación inmediata con los productos que la llevan.
Aunque el artículo 8, apartado 5, del RMC se refiere únicamente a los conflictos entre productos o s ervicios diferentes, el Tribunal, en su sentencia de 09/01/2003, en el asunto C-292/00, «Davidoff», y en su sentencia de 23/10/2003, en el asunto C-408/01, «Adidas», sostuvo que dicha cláusula abarca también los productos o servicios idénticos o similares.
Por consiguiente, la protección ofrecida por el artículo 8, apartado 5, del RMC parte de la base de que el uso sin restricciones por terceros de una marca renombrada, aunque se trate de productos diferentes, puede deteriorar la calidad distintiva o la singularidad de dicha marca notoria. Por ejemplo, si se utilizase la marca Rolls Royce para designar restaurantes, pantalones, dulces, plumas de plástico, cepillos de jardín, etc., su carácter distintivo se acabaría dispersando y su presencia especial en la memoria del público se reduciría, incluso en relación con los automóviles por los que goza de renombre. Por consiguiente, la capacidad de l a marca Rolls Royce para identificar como procedentes de s u titular los productos o s ervicios para los que se registró y respecto de los cuales se ha utilizado se debilitaría, por cuanto los consumidores de los productos para los que la marca renombrada goza de protección y de reputación mostrarían una menor propensión a asociarla inmediatamente con el titular que ha forjado su renombre. Esto se debe a que, para estos consumidores, la marca traerá ahora a s u memoria pocas o m uchas asociaciones «distintas», mientras que previamente solo evocaba una. A su vez, esta situación probablemente afectará a la capacidad de l a marca Rolls Royce para estimular el deseo del público por los productos para los que está registrada y goza de renombre.
Consumidor pertinente
El perjuicio para el carácter distintivo o el renombre de la marca anterior deberá apreciarse atendiendo al consumidor medio de los productos o servicios para los que se registró dicha marca, normalmente informado y razonablemente atento y perspicaz (sentencia de 27/11/2008, en el asunto C-252/07, «Intel», apartado 35).
La apreciación del perjuicio para el carácter distintivo
El perjuicio para el carácter distintivo de la marca anterior que goza de renombra se produce cuando el uso de la marca posterior similar reduce la calidad distintiva de la marca anterior. Sin embargo, no s e puede c onsiderar que esto suceda sin más siempre que la marca anterior goce de renombre y sea idéntica o similar a la marca solicitada, porque este planteamiento equivaldría a c oncluir de forma automática e indiscriminada que todas las marcas que sean similares a la marca renombrada presentan riesgo de dilución, anulando el requisito de demostrar la existencia de perjuicio.
Marcas renombradas, artículo 8, apartado 5, del RMC
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El Tribunal sostuvo en el asunto «Intel», que el artículo 4, apartado 4, letra a), de la DM (equivalente al artículo 8, apartado 5, del RMC), debe interpretarse en el sentido de que la demostración de que el uso de la marca posterior sería perjudicial para el carácter distintivo de la marca anterior requiere aportar datos relativos a un «cambio en el comportamiento económico» del consumidor medio de los productos o servicios para los que se ha registrado la marca anterior, o a una probabilidad significativa de que dicho cambio se vaya a producir en el futuro.
El Tribunal ha desarrollado el concepto de «cambio en el comportamiento económico» de los consumidores medios en su sentencia de 14/11/2013, en el asunto C-383/1 P, «Wolf head image». Indicó que es un requisito objetivo que no puede deducirse únicamente de elementos subjetivos, como la mera percepción de los consumidores. El nivel de prueba es superior. Por tanto, para acreditar la existencia de un perjuicio o de un riesgo de perjuicio al carácter distintivo de la marca anterior, el mero hecho de que estos adviertan la presencia de un nuevo signo similar a un signo anterior no basta por sí solo (apartados 35 a 40)
Si bien el oponente no necesita aportar prueba de un per juicio efectivo sí deberá convencer a l a Oficina aportando datos que apunten a un riesgo serio – y no meramente hipotético – de que se produzca un perjuicio en el futuro. Para lograrlo, el oponente podrá presentar pruebas que avalen el probable perjuicio, apoyándose en las deducciones lógicas de un análisis de probabilidades (y no meras suposiciones) y teniendo en cuenta las prácticas habituales en el sector comercial de que se trate, así como las restantes circunstancias del caso (véase la sentencia de 16/04/2008, en el asunto T-181/05, «Citi», apartado 78, citada en la sentencia de 22 /05/2012, en el asunto T-570/10, «Wolf head image», apartado 52 y confirmado en r ecurso por la sentencia de 14/11/2013, en el asunto C-383/12P, apartados 42 y 43).
Primer uso
El perjuicio para el carácter distintivo se caracteriza por un «e fecto en cascada», lo que significa que aunque es posible que el primer uso de una m arca similar en un mercado diferente no contribuya por sí mismo a diluir la identidad o «singularidad» de la marca renombrada, con el tiempo se producirá este resultado, porque dicho primer uso puede des encadenar nuevos casos de uso por los diversos operadores, llegándose de este modo a la dilución perjudicial para su carácter distintivo.
El Tribunal ha sostenido que el primer uso de una marca posterior idéntica o similar puede ser suficiente para causar un perjuicio efectivo y actual al carácter distintivo de la marca anterior o para generar un serio riesgo de que tal perjuicio se cause en el futuro (sentencia de 27/11/2008, en el asunto C-252/07, «Intel», apartado 75). En los procedimientos de opos ición planteados ante la Oficina, es posible que no s e haya producido aún el uso del signo impugnado. A este respecto, el análisis llevado a cabo por la Oficina presupone que el uso futuro del signo objeto de oposición, aunque se trate del primer uso, puede provocar nuevos casos de u so por otros operadores, produciéndose de este modo una dilución por difuminación. Como hemos visto antes, el tenor literal del artículo 8, apartado 5, del RMC tiene en cuenta esta circunstancia al imponer como condición que el uso sin justa causa de l a marca solicitada «se aprovechara indebidamente del carácter distintivo o de la notoriedad de la marca anterior o fuera perjudicial para los mismos».
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En cualquier caso, como se ha indicado antes, incumbe al oponente la obligación de demostrar que el uso efectivo o futuro provoca, o podría provocar, un perjuicio para el carácter distintivo de la marca anterior renombrada.
Carácter distintivo intrínseco de la marca anterior
El Tribunal ha declarado que «cuanto más señalado sea el carácter «único» de la marca anterior, más fácil será que el uso de u na marca posterior idéntica o s imilar pueda causar un perjuicio a su carácter distintivo» (sentencia de 27/11/2008, en el asunto C-252/07, «Intel», apartado 74, y sentencia de 28/10/2008, en el asunto T-131/09, «Botumax»). En efecto, la marca anterior deberá poseer un c arácter distintivo en e l sentido de que los consumidores la deberán asociar con un úni co origen, porque solamente en este caso cabe la posibilidad de que surja un riesgo de perjuicio para el carácter distintivo. Si el mismo signo, o una v ariante del mismo, ya está en uso para una variedad de productos diferentes, no puede tener un vínculo inmediato con cualquiera de los productos que designa, y por lo tanto quedará poco o ningún margen para nuevas diluciones.
De este modo, «el riesgo de dilución parece menor, en principio, cuando la marca anterior consista en un término que, a causa de su significado intrínseco, sea de uso común y frecuente con independencia de que dicha marca anterior utilice el término en cuestión. En tal caso, es menos probable que la reproducción del término en cuestión por parte de l a marca solicitada pueda l levar a una dilución de l a marca anterior» (sentencia de 22/03/2007, en el asunto T-215/03, «VIPS», apartado 38).
Por consiguiente, si la marca sugiere una característica compartida por una amplia variedad de productos, es más probable que el consumidor la asocie con la característica específica del producto al que se refiere, y no con otra marca distinta.
En su sentencia de 25/05/2005, en el asunto T-67/04, «SPA-FINDERS», el Tribunal General confirmó la conclusión de q ue el uso de l a marca «SPA-FINDERS» para publicaciones y servicios de agencia de viajes no borraría ni empañaría el renombre de la marca SPA para agua mineral: El término «spa» en SPA-FINDERS puede utilizarse fuera del contexto de una m arca, puesto que «se emplea frecuentemente para designar, por ejemplo, la ciudad belga de Spa y el circuito automovilístico belga de Spa-Francorchamps o, en general, centros de hidroterapia como baños turcos o saunas» (apartado 44). Consecuentemente, el riesgo que el carácter distintivo de l a marca SPA sufra un perjuicio es pequeño.
Así pues, si el solicitante demuestra que el signo anterior, o el elemento que causa la similitud, es habitual y está siendo utilizado por diferentes empresas pertenecientes a distintos sectores del mercado, podrá refutar con éxito las alegaciones de r iesgo de dilución, porque será difícil aceptar que el atractivo de la marca anterior resulte diluido si no es particularmente único . Esto sucederá, en particular, cuando los respectivos productos sean tan distintos entre sí que la posibilidad de asociarlos resulta aún menos probable, como era el caso en l a resolución de 05/06/2000, en el asunto R 802/1999-1, «DUPLO», en el que la marca anterior gozaba de renombre para el chocolate, mientras que la marca impugnada se refería a pr oductos como tintas de impresión, grapadoras, taladros para papel y fotocopiadoras. La Sala de Recurso llegó a la conclusión de que «los productos mencionados en la solicitud están tan alejados de los productos del oponente que una dilución parece improbable: un consumidor típico de tabletas de chocolate familiarizado con los productos del oponente no es probable que piense en estos productos cuando vea la palabra “duplo” utilizada en
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relación con productos tales como tintas de impresión, grapadoras, taladros para papel y fotocopiadoras».
Casos de dilución por difuminación
Riesgo de dilución confirmado
Signo anterior renombrado Solicitud de MC Asunto
BOTOX BOTUMAX
T-131/09Renombrado como producto farmacéutico para el tratamiento de las arrugas
Cosméticos, fármacos y otros productos relacionados con la salud, publicaciones
«Sin embargo, en el caso presente, el elemento verbal “botox” no posee ningún significado intrínseco, sino que es un término artificial que el público encuentra únicamente en relación con los productos amparados por la marca anterior notoriamente conocida. Por lo tanto, el uso de este elemento verbal o de otro similar por otra marca registrada para productos que pueden interesar al gran público resultará indudablemente en la dilución del carácter distintivo de la marca anterior notoriamente conocida» (apartado 99).
Esta es la situación en lo relativo, en primer lugar, a las preparaciones cosméticas y farmacéuticas de las clases 3 y 5 y, en segundo lugar, a los productos de la clase 16 amparados por las marcas anteriores, que incluyen revistas o periódicos cuya difusión puede ser amplia. El riesgo de que el uso de una marca idéntica o similar perjudique el carácter distintivo de una marca anterior notoriamente conocida es mayor cuando la primera marca se use para productos destinados a un público extenso (apartado 100).
El hecho de que «Botox» sea un t érmino inventado (una contracción de las palabras «botulinum» y «toxina») es importante, porque la erosión del carácter distintivo de la marca anterior (denominada en ocasiones dilución o difuminación de la marca) será más probable en aquellas situaciones en que los elementos de las marcas caracterizadas por signos similares tengan un elevado carácter distintivo intrínseco.
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Riesgo de dilución desestimado
Signo anterior renombrado Solicitud de MC Asunto
VIPS VIPS
T-215/03Renombrado para cadenas de restaurante de comida rápida de la clase 42
Programas de ordenador para servicios hoteleros de la clase 42
«Por lo que respecta, en primer lugar, al perjuicio que el uso sin justa causa de la marca solicitada puede suponer para el carácter distintivo de la marca anterior, tal perjuicio puede producirse desde el momento en que la marca anterior ya no logra provocar la asociación inmediata con los productos para los que está registrada y es usada (sentencia SPA-FINDERS, citada en el apartado 34 supra, apartado 43). Así, dicho riesgo se refiere a la «dilución» o al «menoscabo gradual» de la marca anterior a través de la dispersión de su identidad y presencia en la conciencia del público (conclusiones del Abogado General Jacobs en el asunto en el que recayó la sentencia Adidas-Salomon y Adidas Benelux, citadas en el apartado 36 supra, punto 37)» (apartado 37).
«Por lo que respecta, en primer lugar, al riesgo de que el uso de la marca solicitada sea perjudicial para el carácter distintivo de l a marca anterior, en otras palabras, al riesgo de “dilución” y de “menoscabo gradual” de esta marca, tal como se explica en l os apartados 37 y 38 supra, procede señalar que e l término “VIPS” es la forma que adopta en plural, en lengua inglesa, la sigla VIP (en inglés “Very Important Person”, es decir, “Persona Muy Importante”), que es de uso amplio y frecuente tanto en el plano internacional como en el plano nacional para designar a personalidades célebres. En estas circunstancias, el riesgo de que el uso de la marca solicitada sea perjudicial para el carácter distintivo de la marca anterior resulta limitado» (apartado 62).
«Tal riesgo resulta tanto menos probable en el presente caso cuanto que la marca solicitada se refiere a servicios de “programación de ordenadores destinados a servicios hoteleros, restauración (alimentación), cafés restaurantes”, dirigidos a un público especial y, necesariamente, más restringido, a s aber, los propietarios de dichos establecimientos. Esto significa que, si se admite su registro, la marca solicitada únicamente será conocida, mediante su uso, por un público relativamente restringido, lo que ciertamente disminuye el riesgo de dilución o de menoscabo gradual de la marca anterior a través de la dispersión de su identidad y presencia en la conciencia del público» (apartado 63).
Signo anterior renombrado Solicitud de MC Asunto
SPA SPA-FINDERS
T-67/04Renombrado para aguas minerales de la clase 32
Publicaciones impresas, en particular catálogos, revistas, boletines de noticias de la clase 16, agencias de viajes de la clase 39
«En el caso de au tos, el Tribunal de P rimera Instancia observa que l a demandante no aporta ningún elemento que permita concluir que el carácter distintivo de la marca SPA corre el riesgo de s ufrir un perjuicio por el uso de la marca SPA-FINDERS. En efecto, la demandante insiste en el hecho de que, supuestamente, el público establecerá de forma inmediata un v ínculo entre las marcas SPA y SPA- FINDERS. De este vínculo deduce que el carácter distintivo queda perjudicado. Pues bien, como ha reconocido la demandante en la vista, la existencia de tal vínculo no basta para demostrar que el carácter distintivo pueda sufrir un perjuicio. Además, el Tribunal de Primera Instancia señala que el riesgo de que el carácter distintivo de la marca SPA sufra un perjuicio es pequeño, ya que el término “spa” se emplea frecuentemente para designar, por ejemplo, la ciudad belga de Spa y el circuito automovilístico belga de Spa-Francorchamps o, en general, centros de hidroterapia como baños turcos o saunas» (apartado 44).
3.4.3.3 Perjuicio para el renombre
Naturaleza del perjuicio
La última clase de perjuicio mencionada en el artículo 8, apartado 5, del RMC se refiere al daño infligido a la marca anterior mediante el menoscabo de su renombre.
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Puede considerarse como un nivel más elevado de di lución, en el sentido de que el vínculo que el público establece con la marca posterior no s olo debilita a l a marca anterior, sino que la degrada realmente. El perjuicio para el renombre, denominado también a veces «dilución por deterioro de la imagen» o simplemente «deterioro de la imagen» se refiere a las situaciones en que el uso sin justa causa de la marca impugnada conlleva el riesgo de devaluar la imagen o el prestigio que la marca renombrada ha adquirido ante el público.
El renombre de la marca anterior puede v erse empañado o mancillado cuando se reproduce en un contexto obsceno, degradante o inapropiado, o bien en un contexto que, sin ser intrínsecamente ofensivo, resulta incompatible con la imagen particular que la marca anterior ha adquirido a los ojos del público como resultado de los esfuerzos promocionales de s u titular. El riesgo de es e perjuicio puede r esultar, en particular, del hecho de que los productos o servicios ofrecidos por el tercero posean una característica o una cualidad que puedan ejercer una influencia negativa sobre la imagen de marca (sentencia de 18 /06/2009, en el asunto C-487/07, «L’Oréal», apartado 40). Esto ocurriría, por ejemplo, en el caso de q ue un t ercero utilizara una marca de ginebra renombrada para designar a un det ergente líquido, lo que tendría unas repercusiones negativas para la marca renombrada que la harían menos atractiva.
En síntesis, existe menoscabo de la imagen cuando se establece una asociación con la marca anterior notoria, ya sea a nivel de signos o a ni vel de productos, que va en detrimento del renombre de dicha marca.
Consumidores pertinentes
Al igual que en el caso de dilución por difuminación, el perjuicio para el renombre de la marca anterior deberá apreciarse atendiendo al consumidor medio de los productos o servicios para los que se registró dicha marca, normalmente informado y razonablemente atento y perspicaz (sentencia de 27/11/2008, en el asunto C-252/07, «Intel», apartado 35, y sentencia del 07/12/2010, en el asunto T-59/08, «NIMEI LA PERLA MODERN CLASSIC», apartado 35).
La apreciación del menoscabo
Para determinar la existencia de det erioro del renombre de una marca anterior, la mera presencia de una asociación entre las marcas en la conciencia del consumidor no es suficiente ni determinante. Aunque es cierto que debe existir dicha asociación, será preciso, además, que los productos o servicios amparados por la marca posterior, cuando se asocian con la marca renombrada, provoquen los efectos negativos o perjudiciales que se describen en los párrafos siguientes.
El menoscabo de la marca suele producirse con mayor frecuencia cuando la marca renombrada se vincula con productos que, al generar asociaciones mentales no deseadas o de c arácter dudoso, entran en conflicto con las asociaciones o imágenes que el titular pretende evocar con el uso legítimo de la marca renombrada (resolución de 12/03/2012, R 297/2011-5, «KAPPA», apartado 36).
Por consiguiente, para demostrar el menoscabo de l a marca, el oponente deberá probar que el uso de l a marca solicitada provocaría asociaciones mentales
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inapropiadas o negativas con la marca anterior, o bien asociaciones que entrarían en conflicto con la imagen adquirida en el mercado (resolución de 23/11/2010, en el asunto R 0240/2004-2, «WATERFORD», apartado 89). El deterioro señalado ocurre cuando los productos o servicios amparados por el signo impugnado son percibidos por el público de tal modo que disminuye el poder de atracción de la marca anterior, porque los productos o servicios sobre los que se basa la oposición poseen una característica o propiedad capaz de ejercer una influencia negativa sobre la imagen de una marca anterior renombrada.
Por ejemplo, si una marca asociada en la conciencia del público con una imagen de salud, dinamismo y juventud se utiliza para designar productos de tabaco, la connotación negativa que transmiten estos últimos contrastará llamativamente con la imagen de l a primera (véanse los ejemplos adicionales que siguen). Para que se produzca menoscabo es necesario, por lo tanto, que existan determinadas características o propiedades de los bienes o servicios que llevan la marca impugnada que puedan perjudicar, en potencia, el renombre de la marca anterior (sentencia de 22/03/2007, en el asunto T-215/03, «VIPS», apartado 67).
Signo anterior renombrado Solicitud de MC Asunto
WATERFORD
R 0240/2004-2
Renombrado para productos de cristal, incluyendo cristaleria de la clase 21
Bebidas alcohólicas, a saber, vinos fabricados en la región de Stelenbosch de Sudáfrica de la clase 33
«El menoscabo o l a degradación de la imagen de una marca a t ravés de su asociación con algo inapropiado puede ocurrir cuando la marca se usa, o bien en u n contexto desagradable, obsceno o degradante, o bien en una contexto que, sin ser intrínsecamente degradante, resulta incompatible con la imagen de l a marca. Este puede ser el caso cuando la marca renombrada pueda vincularse con productos de baja calidad o que traigan a la mente asociaciones no deseadas o dudosas que entren en conflicto con las asociaciones o imágenes generados por el uso legítimo de la marca renombrada por su titular, o cuando la marca renombrada se relacione con productos incompatibles con la calidad o con el prestigio asociados a dicha marca, aunque no se trate de un uso inapropiado de la marca como tal o, eventualmente, cuando se corrige o modifica el elemento verbal o figurativo de la marca renombrada de una forma negativa» (apartado 88).
A menudo los oponentes argumentan que los productos o servicios del solicitante son de inferior calidad, o que el oponente no es capaz de controlar su calidad. La División de Oposición no acepta este argumento per se como medio de prueba para demostrar el deterioro de la imagen. Los procedimientos incoados ante la Oficina no incluyen la evaluación de l a calidad de l os productos y servicios porque, además de ser sumamente subjetiva, no s ería posible realizarla en el caso de que los productos o servicios no sean idénticos o en las situaciones en que la marca objeto de oposición no se haya utilizado aún.
Por consiguiente, al examinar si el uso de la marca impugnada conlleva el riesgo de perjudicar el renombre de la marca anterior, la División de Oposición solamente puede considerar los productos y servicios con arreglo a lo indicado en las especificaciones de cada marca. De este modo, a los efectos del examen por la División de Oposición, los efectos perjudiciales del uso del signo impugnado en relación con los productos y
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servicios para los que se solicita el registro deberán derivarse de la naturaleza y características normales de los productos cuestionados en general, y no de su calidad en los casos particulares. Este planteamiento no deja sin protección al oponente, ya que, en cualquier caso, si la marca posterior se usa para productos o servicios de baja calidad de f orma que evoca una m arca anterior renombrada, esto supondría normalmente un aprovechamiento indebido del carácter distintivo o del renombre de la marca anterior y un perjuicio para dicho carácter distintivo.
Casos de dilución por menoscabo
Menoscabo confirmado
Signo anterior renombrado Solicitud de MC Asunto
KAPPA
KAPPA
R 0297/2011-5
Renombrado para prendas de vestir y calzado deportivos
Clase 34 – Tabaco elaborado o sin elaborar, artículos de fumador, productos a base de tabaco, cigarrillos, puros, puritos, tabaco, boquillas para puros y cigarrillos, pitilleras y estuches para puros, ceniceros, cortapuros, pipas de tabaco, bolsas para tabaco, encendedores, instrumentos de bolsillo para liar cigarrillos, papel de fumar, humidificadores para productos de tabaco, cerillas
La solicitud objeto de oposición se presentó para productos de tabaco y afines de la clase 34. Fumar tabaco se considera universalmente un hábito que perjudica gravemente la salud. Por tal motivo, el uso del signo «KAPPA» para designar productos de tabaco y afines probablemente suscitará asociaciones mentales negativas con las marcas anteriores de la parte recurrente, o bien asociaciones que entrarán en conflicto y deteriorarán su imagen de un estilo de vida saludable (apartado 38).
Signo anterior renombrado Solicitud de MC Asunto
R 0417/2008-1
Renombrado para aguas minerales
Preparaciones y sustancias para desengrasar y pulir, popurrís, incienso, palillos de incienso, perfumes para ambientadores y artículos para perfumar las habitaciones
Las sensaciones agradables que transmite por lo general el agua mineral no encajan demasiado bien con los detergentes y desengrasantes. El uso de las marcas que contienen la palabra SPA para designar productos con estas connotaciones tan distintas conlleva el riesgo de perjudicar o menoscabar el carácter distintivo de la marca anterior (apartado 101).
«La mayoría de los consumidores no establecerán una asociación satisfactoria entre el agua mineral y el incienso y los popurrís. Por lo tanto, el uso para designar perfumes e incienso de una marca en la que figura una pal abra (SPA), que los consumidores belgas asocian estrechamente con el agua mineral embotellada, probablemente perjudicará el atractivo y el poder evocador de que disfruta actualmente la marca de acuerdo con las pruebas aportadas» (apartado 103).
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Signo anterior renombrado Solicitud de MC Asunto
R 2124/2010-1
Renombrado para productos de las clases 18 y 25
Aparatos e instrumentos científicos, náuticos, de agrimensura, de pesaje, medición, señalización, comprobación (monitorización), salvamento y enseñanza, aparatos e instrumentos para conducir, conmutar, transformar, acumular, regular o controlar la electricidad, discos para grabaciones, máquinas expendedoras automáticas y mecanismos para máquinas accionadas por monedas, cajas registradoras, máquinas de calcular, equipos para el tratamiento de la información y ordenadores, extintores de incendios.
El oponente ha podido demostrar que la imagen prestigiosa de sus marcas está vinculada con los métodos de fabricación tradicionales de sus selectos artículos de cuero, hechos a mano por maestros artesanos que trabajan únicamente con materias primas de la máxima calidad. Es esta imagen de lujo, glamour y exclusividad, combinados con la calidad excepcional del producto, la que el oponente ha tratado siempre de transmitir al público, y las pruebas aportadas así lo justifican. En la práctica, esta imagen sería totalmente incompatible con los productos de carácter eminentemente industrial y tecnológico, como instrumentos de medida eléctricos, microscopios científicos, baterías, cajas registradores para supermercados, extintores de incendios u otros instrumentos, para los que el solicitante presente utilizar su marca (apartado 28).
Lo que sería perjudicial para una imagen de marca que el oponente ha fomentado diligentemente durante décadas, es el uso de una marca que recuerda a la propias pero se aplica a productos caracterizados, en las mentes del público, por su importante contenido tecnológico (mientras que un artículo de cuero fino rara vez se asocia con la tecnología), o bien por su origen industrial (mientras que los artículos de cuero fino se asocian normalmente con la producción artesana) (apartado 29).
El uso de una marca prácticamente idéntica a otra que el público ha llegado a percibir como sinónimo de artículos de c uero selectos y de el aboración esmerada, para designar dispositivos técnicos o instrumentos eléctricos de todo tipo, socavará el atractivo de los primeros, es decir, su reputación, entre el público que conoce y aprecia las marcas anteriores (apartado 30).
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Signo anterior renombrado Solicitud de MC Asunto
EMILIO PUCCI
T-373/09 (asunto C-582/12 P, pendiente
de recurso) (asuntos R 0770/2008-2 y
R 0826/2008-2)Renombrado para prendas de vestir y calzado de mujer
Clase 3: Preparaciones blanqueadoras y otras sustancias para lavar la ropa, preparaciones para limpiar, pulir, desengrasar y
desincrustar, preparaciones abrasivas, jabones, productos de perfumería, aceites esenciales, cosméticos, lociones capilares y
dentífricos. Clase 21: Materiales de limpieza y
lana de acero
En las resoluciones correspondientes a los asuntos R 0770/2008-2 y R 0826/2008-2 se afirma que puede producirse riesgo de deterioro del renombre cuando los productos y servicios amparados por la marca solicitada posean una característica o propiedad capaz de ejercer una influencia negativa sobre la imagen de una marca anterior renombrada, debido al hecho de que es idéntica o similar a la marca solicitada. El Tribunal General confirmó las conclusiones de la Sala añadiendo que, como consecuencia de la gran similitud entre los signos en conflicto, del fuerte carácter distintivo de la marca italiana y de su renombre en el mercado de Italia, era preciso concluir que ex istía un v ínculo entre los signos enfrentados que podría menoscabar el concepto de exclusividad, lujo y alta calidad de la marca italiana, con el consiguiente perjuicio para su renombre (apartado 68).
Menoscabo desestimado
Signo anterior renombrado Solicitud de MC Asunto
T-192/09
Renombrado para organización de competiciones deportivas Clase 9
El Tribunal señaló que el oponente no habí a demostrado la existencia de ningún perjuicio para el renombre de las marcas anteriores, al no haber explicado de qué modo disminuiría el atractivo de las mismas por el uso de la marca impugnada para describir los productos en cuestión. Específicamente, no justificó que los productos en cuestión poseyeran alguna característica o propiedad que pudiese afectar negativamente a la imagen de las marcas anteriores (apartado 68).
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Signo anterior renombrado Solicitud de Asunto
SPA SPA-FINDERS
T-67/04Renombrado para aguas minerales de la clase 32
Publicaciones impresas, en particular catálogos, revistas, boletines de noticias de la clase 16, agencias de viajes de la clase 39
«Tal perjuicio se produce cuando los productos respecto de los cuales se usa la marca solicitada producen tal impresión en el público que el poder de atracción de la marca anterior resulta mermado» (apartado 46).
«[E]n el caso de autos, las marcas SPA y SPA-FINDERS designan productos muy distintos, en concreto aguas minerales, por un lado, y publicaciones y servicios de agencia de viajes, por otro. El Tribunal de Primera Instancia considera, por consiguiente, que resulta poco probable que los productos y servicios designados por la marca SPA-FINDERS, aunque sean de menor calidad, reduzcan el poder de atracción de la marca SPA» (apartado 49).
Signo anterior renombrado Solicitud de MC Asunto
VIPS VIPS
T-215/03Renombrado para cadenas de restaurante de comida rápida de la clase 42
Programas de ordenador para servicios hoteleros de la clase 42
«Este riesgo de perjuicio [para el renombre de la marca anterior] puede producirse, en particular, cuando dichos productos o s ervicios poseen una característica o cualidad que puede ejercer una i nfluencia negativa sobre la imagen de una marca anterior notoriamente conocida, debido a su identidad o similitud con la marca solicitada» (apartado 39).
«A este respecto, procede señalar que, si bien determinadas marcas de cadenas de comida rápida gozan de una indudable notoriedad, no proyectan, en principio y salvo prueba en contrario, la imagen de un prestigio especial o de una elevada calidad, pues el sector de la comida rápida se asocia preferentemente a otras cualidades, como la rapidez y la disponibilidad y, en cierta medida, la juventud, dado que muchos jóvenes frecuentan este tipo de establecimientos» (apartado 57).
« […] es preciso examinar el riesgo de per juicio que el uso de l a marca solicitada supondría para la notoriedad de la marca anterior. Como se ha expuesto en el apartado 39 supra, se trata del riesgo de que la asociación de la marca anterior notoria con productos o servicios designados por la marca solicitada idéntica o similar lleve a una degradación o menoscabo de la marca anterior, debido a que los productos o servicios designados por la marca solicitada tengan características o cualidades particulares que puedan ejercer una influencia negativa sobre la imagen de la marca anterior» (apartado 66).
«A este respecto, es preciso señalar que los servicios designados por la marca solicitada no presentan ninguna característica o cualidad que permita considerar probable que se cause un perjuicio de este tipo a la marca anterior. La demandante no ha invocado, y aún menos probado, ninguna característica o cualidad de esta naturaleza. La mera existencia de una conexión entre los servicios designados por las marcas en conflicto no es suficiente ni determinante. Es cierto que la existencia de tal conexión refuerza la probabilidad de que el público, ante la marca solicitada, piense también en l a marca anterior. No obstante, esta circunstancia, por sí misma, no es suficiente para disminuir el poder de atracción de la marca anterior. Tal resultado sólo puede producirse si se demuestra que los servicios designados por la marca solicitada presentan características o cualidades potencialmente perjudiciales para la notoriedad de la marca anterior. Ahora bien, en el presente caso, tal prueba no se presentó» (apartado 67).
3.4.4 Prueba del aprovechamiento indebido del renombre
3.4.4.1 Criterios aplicables a la prueba y carga de la prueba
En los procedimientos de oposición, el perjuicio o aprovechamiento indebido podrán ser tan solo potenciales, como confirma el uso del condicional en el texto del artículo 8, apartado 5, del RMC, en virtud del cual se exigirá el uso sin justa causa de la marca solicitada que «se aprovechara indebidamente del carácter distintivo o de la
Marcas renombradas, artículo 8, apartado 5, del RMC
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notoriedad de la marca anterior o fuera perjudicial para los mismos» (en su versión inglesa «would take unfair advantage of, or be detrimental to the distinctiveness or repute of the earlier mark»).
En los procedimientos de oposición, el perjuicio o aprovechamiento indebido solo se habrán producido excepcionalmente en la práctica, puesto que en la mayoría de los casos el solicitante no habrá llegado aún a utilizar su marca cuando se plantea la oposición. Ahora bien, no c abe descartar totalmente esta posibilidad, y si existen indicios de us o o per juicio real, deberán analizarse y sopesarse en función de s u importancia.
Sin embargo, que el perjuicio o aprovechamiento indebido puedan s er únicamente potenciales no s ignifica que la mera posibilidad sea suficiente a l os efectos del artículo 8, apartado 5, del RMC. El riesgo de perjuicio o de aprovechamiento indebido debe ser serio, en el sentido de que sea previsible (es decir, no solo hipotético) en el curso normal de los acontecimientos. Por consiguiente, no basta con limitarse a señalar que no puede e xcluirse en general el riesgo de perjuicio o aprovechamiento indebido, o q ue se trata de una pos ibilidad remota. El titular de l a marca anterior deberá aportar pruebas que per mitan concluir prima facie que el riesgo de un aprovechamiento indebido o per juicio en el futuro no es m eramente hipotético (sentencia de 06/06/2012, en el asunto T-60/10, «ROYAL SHAKESPEARE», apartado 53). Como se explicará a continuación, no basta con que el oponente se refiera en t érminos generales al aprovechamiento indebido o a l perjuicio para el carácter distintivo o el renombre de las marcas anteriores, sin presentar pruebas convincentes sobre la existencia de un perjuicio real, o argumentos persuasivos sobre la presencia de un serio riesgo de per juicio potencial que no t enga únicamente carácter hipotético.
Como norma general, las alegaciones de orden general (como la simple cita literal del RMC) relativas al perjuicio o aprovechamiento indebido no bastarán por si solas para demostrar la existencia de estos riesgos potenciales. El oponente deberá aportar indicios razonables y/o argumentos convincentes que, a la vista de ambas marcas, de los productos servicios en c uestión y de todas las circunstancias relevantes, demuestren específicamente que se puede pr oducir este aprovechamiento indebido. No es suficiente la mera exposición del renombre y buena imagen de las marcas anteriores, sin respaldarla con otros datos o r azonamientos (resolución de 15/02/2012, en el asunto R 2559/2010-1, «GALLO», apartados 38 y 39, y jurisprudencia del Tribunal citada en l a misma), tal como se detalla en l os párrafos siguientes.
El nivel preciso de las pruebas necesarias para acreditar que el riesgo de perjuicio o aprovechamiento indebido es serio y no m eramente hipotético deberá determinarse en cada caso, con arreglo a los criterios definidos a continuación.
Como se mencionó en el anterior apartado 3.1.4.2 al analizar la carga de la prueba, el artículo 76, apartado 1, del RMC exige que el oponente exponga y demuestre todos los hechos en los que se basa su oposición. Por otra parte, la regla 19, apartado 2, letra c), del REMC estipula que el oponente presentar pruebas o alegaciones que demuestren que el uso sin causa justificada de la marca solicitada aprovecharía de manera desleal el carácter distintivo o el renombre de la marca anterior, o podría ser perjudicial para esta.
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Por consiguiente, dentro del plazo correspondiente a l a fase contradictoria del procedimiento de oposición, el oponente soportará la carga de la prueba para demostrar que el uso, presente o futuro, de l a marca solicitada ha c ausado, o es probable que cause, un perjuicio para el carácter distintivo o el renombre de la marca anterior, o bi en que se ha apr ovechado, o es probable que se aproveche, de l os mismos de manera indebida.
En el desempeño de los cometidos atinentes a la carga de la prueba, el oponente no podrá limitarse a alegar que el perjuicio o el aprovechamiento indebido serían una consecuencia necesaria que se derivaría automáticamente del uso de la marca solicitada, a causa del gran renombre de la marca anterior. Aunque la marca anterior goce de gr an renombre, el perjuicio o apr ovechamiento indebido se deberán demostrar y/o argumentar adecuadamente, teniendo en cuenta ambas marcas y los productos y servicios relevantes, ya que de ot ro modo las marcas notoriamente conocidas recibirían una protección incondicional frente a l os signos idénticos o similares, para prácticamente cualquier tipo de pr oducto. Esto sería claramente incompatible con la letra y el espíritu del artículo 8, apartado 5, del RMC, porque en tal caso el renombre sería el único requisito exigido por la norma, en vez de uno entre los varios estipulados en la misma.
Así pues, cuando el oponente alegue un perjuicio o aprovechamiento indebido real, deberá aportar indicios y datos sobre la clase de perjuicio sufrido, o sobre la modalidad de apr ovechamiento indebido realizado por el solicitante. El oponente deberá demostrar igualmente que todo lo anterior ocurriría como resultado del uso del signo solicitado. Para ello, el oponente podrá apoyarse en un a variedad de indicios, dependiendo de l a clase de pe rjuicio o apr ovechamiento indebido denunciados, como una notable disminución de las ventas del producto que lleva la marca, o una pér dida de c lientela, o un des censo del nivel de r econocimiento de la marca anterior por parte del público.
Sin embargo, en el supuesto de un perjuicio o de apr ovechamiento indebido potencial, la argumentación tendrá necesariamente un carácter más abstracto, desde el momento que dicho perjuicio o aprovechamiento tiene que ser analizado ex ante.
Para hacerlo, el titular de la marca anterior no está obligado a demostrar que su marca ha sufrido un menoscabo efectivo y actual. Cuando sea previsible que el uso que se pudiera hacer de la MC solicitada provocaría dicho menoscabo, el titular de la marca anterior no necesita esperar a que ocurra realmente para solicitar la denegación del registro de la MC en cuestión. El titular de la marca anterior deberá probar, sin embargo, que existe un serio riesgo de que la infracción se produzca en el futuro (sentencia de 27/11/2008, en el asunto C-252/07, «Intel», apartado 38; sentencia de 07/12/2010, en el asunto T-59/08, «NIMEI LA PERLA MODERN CLASSIC», apartado 33; sentencia de 29/03/2012, en el asunto T-369/10 «BEATLE», apartado 61; sentencia de 06/07/2012, en el asunto T-60/10 «ROYAL SHAKESPEARE», apartado 53; y sentencia de 25 /01/2012, en el asunto T-332/10, «VIAGUARA», apartado 25).
Dicho de ot ro modo, el titular de l a marca anterior deberá aportar pruebas que permitan concluir prima facie que existe un riesgo de perjuicio en el futuro que no es meramente hipotético (SPA-FINDERS, apartado 40). A esta conclusión se puede llegar, en particular, apoyándose en l as deducciones lógicas de u n análisis de probabilidades y teniendo en c uenta las prácticas habituales en el sector comercial relevante, así como las restantes circunstancias del caso (sentencia de 10/05/2007, en el asunto, T-47/06, «nasdaq», apartado 54, confirmada en el recurso (C-320/07 P);
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sentencia de 16/04/2008, en el asunto T-181/05, «CITI», apartado 78; y sentencia de 14/11/2013, en el asunto C-383/1 P, «Wolf head image», apartados 42 y 43).
No obstante, considerando que en es tos casos el objeto de l a prueba es la probabilidad de un suceso futuro y que, por definición, los argumentos del oponente no pueden equivaler por sí solos a una pr ueba, generalmente será necesario basar determinadas conclusiones en presunciones jurídicas, esto es, en suposiciones o deducciones derivadas de la aplicación de criterios probabilísticos a los hechos de un caso concreto. Una presunción de es te tipo ha sido la señalada por el Tribunal al declarar que «cuanto mayores sean el carácter distintivo y el renombre de la marca anterior, más fácilmente podrá admitirse la existencia de un per juicio» (sentencia de 14/09/1999, en el asunto C-375/97, «General Motors», apartado 30). También ha dejado claro la jurisprudencia que cuanto más inmediata e intensa sea la evocación de la marca anterior por el signo posterior, mayor será la probabilidad de que el uso presente o futuro de este último se aproveche indebidamente del carácter distintivo o del renombre de la marca (sentencia de 06/07/2012, en el asunto T-60/10, «ROYAL SHAKESPEARE», apartado 54; sentencia de 1 8/06/2009, en el asunto C-487/07, «L'Oréal et al», apartado 44; y sentencia de 27 /11/2008, en el asunto C-252/07, «Intel», apartados 67-69).
Por otra parte, las presunciones aplicables a este respecto pertenecen a la categoría de presunciones refutables que el solicitante puede rebatir y rechazar aportando los elementos de prueba adecuados, y no a la categoría de presunciones concluyentes.
Además, si el tipo de perjuicio o de aprovechamiento indebido denunciado en el asunto específico es de tal naturaleza que presupone la existencia de determinadas condiciones fácticas (como por ejemplo el carácter exclusivo de la marca anterior, los aspectos cualitativos de la notoriedad, la existencia de una imagen particular, etc.), el oponente deberá demostrar que se dan tales condiciones, aportando para ello las pruebas apropiadas.
Finalmente, como ha señalado el Tribunal en su sentencia de 07/12/2010, en el asunto T-59/08, «NIMEI LA PERLA MODERN CLASSIC» (apartados 57 y 58), aunque no se requiera un riesgo de confusión entre ambas marcas para demostrar que la marca posterior se aprovecha indebidamente del renombre de la marca anterior, el que dicho riesgo se confirme con datos se considerará una demostración de que se ha producido un aprovechamiento indebido, o al menos de que existe un s erio riesgo de q ue se producirá en el futuro.
3.4.4.2 Medios de prueba
Cuando el oponente alegue la existencia de un perjuicio o aprovechamiento indebido real, podrá utilizar todos los medios de pr ueba enumerados en el artículo 78 del RMC. Por ejemplo, puede demostrar que se ha producido una di sminución real del conocimiento de la marca haciendo referencia a encuestas de opi nión o a ot ras pruebas documentales, o bi en demostrar una caída de l as ventas presentando estadísticas comerciales o extractos de su contabilidad oficial. Las normas aplicables al examen y al valor probatorio de estas pruebas son las mismas ya indicadas en los apartados 3.1.4.3 y 3.1.4.4 supra, en r elación con las pruebas requeridas para demostrar el renombre.
Incluso cuando el perjuicio o aprovechamiento indebido alegados tengan únicamente un carácter potencial, el oponente deberá argumentar qué condiciones fácticas
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deberían darse en cada caso particular para que se produjera un serio riesgo (y por lo tanto no hipotético) de perjuicio o aprovechamiento indebido, aportando para ello medios de prueba como los indicados.
Por otra parte, tal como se explicó en el apartado anterior, el Tribunal ha confirmado que también es posible justificar las conclusiones relativas al riesgo de aprovechamiento indebido en el futuro apoyándose, en particular, en las deducciones lógicas de un anál isis de probabilidades y teniendo en cuenta las prácticas habituales en el sector comercial relevante, así como las restantes circunstancias del caso (sentencia de 16 /12/2010, en los asuntos acumulados T-345/08 y T-357/08, «BOTOLIST», apartado 82; y sentencia de 06/07/2012, en el asunto T-60/10, «ROYAL SHAKESPEARE», apartado 53; y sentencia de 14/11/2013, en el asunto C-383/12 P, «Wolf head image», apartados 42 y 43).
3.5 Uso sin justa causa
La última de las condiciones para la aplicación del artículo 8, apartado 5, del RMC consiste en que el uso del signo solicitado se realice sin justa causa.
Sin embargo, si se determina que no existe ninguno de estos tres tipos de riesgo de aprovechamiento de renombre, no s e podrá prohibir el registro y uso de l a marca solicitada, ya que en t ales circunstancias es irrelevante la presencia o aus encia de justa causa para el uso de la marca solicitada (sentencia de 22/03/2007, en el asunto T-215/03, «VIPS», apartado 60; y sentencia de 07/07/2010, en el asunto T-124/09, «Carlo Roncato», apartado 51).
La existencia de una causa que justifique el uso de la marca solicitada es un medio de defensa que puede u tilizar el solicitante. Por consiguiente, le corresponde al solicitante demostrar que existe una justa causa para el uso de la marca solicitada. Es un ejemplo de aplicación de la norma general según la cual «quien afirma algo tiene la obligación de demostrarlo», una versión de la antigua regla ei qui affirmat incumbit probatio (resolución de 01/03/2004, en el asunto R 145/2003-2, «T CARD OLYMPICS (fig.) / OLYMPIC», apartado 23). La jurisprudencia ha establecido claramente que cuando el titular de l a marca anterior haya demostrado que existe un perjuicio real y actual para su marca o que, alternativamente, puede existir en el futuro un serio riesgo de que se produzca dicho perjuicio, incumbe al titular de la marca posterior probar que existe justa causa para el uso de esta última (sentencia de 06/07/2012, en el asunto T-60/10, «ROYAL SHAKESPEARE», apartado 67 y, por analogía, sentencia de 27/11/2008, en el asunto C-252/07, «Intel», apartado 39).
Salvo que las pruebas aducidas incluyan alguna justificación clara del uso de la marca impugnada por el solicitante, en general se deberá presumir que no existe justa causa (véase al respecto la sentencia de 29 /03/2012, en el asunto T-369/10, «Beatle» apartado 76, así como la jurisprudencia citada en el mismo, y el correspondiente recurso C-294/12 P). Sin embargo, el solicitante podrá rebatir una presunción semejante demostrando que posee una justificación legítima que le faculta para usar la marca.
Por ejemplo, una s ituación similar podría presentarse cuando el solicitante haya estado usando el signo para designar productos no s imilares en el territorio de referencia antes de que el oponente solicitase su marca o de que esta última
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adquiriese renombre, especialmente cuando esta coexistencia no haya afectado en forma alguna al carácter distintivo o a la reputación de la marca anterior.
La jurisprudencia ha establecido que es posible concluir que existe justa causa cuando el solicitante demuestra que no se le puede exigir razonablemente que se abstenga de utilizar la marca (debido, por ejemplo, a que hace un us o genérico del signo para designar el tipo de productos o servicios, por tratarse de el ementos verbales o d e elementos figurativos genéricos), o cuando le corresponda algún derecho específico a utilizar la marca para dichos productos o s ervicios (acreditando, por ejemplo, que existe algún acuerdo de coexistencia en vigor que le autoriza a usar el signo).
En requisito de justa causa no s e satisface simplemente por el hecho de que: a) el signo sea particularmente apto al objeto de identificar los productos para los que se usa, o b) el solicitante haya usado el signo para productos idénticos o similares, dentro y/o fuera del territorio correspondiente de la Unión Europea, o c) el solicitante invoque un derecho derivado de l a presentación de una solicitud sobre la que la marca del oponente tenga prioridad (véanse, entre otras, la resolución de 23 /11/2010, en el asunto R 0240/2004-2, «WATERFORD (fig.)», y la resolución de 15 de junio de 2009 en el asunto R 1142/2005-2, «MARIE CLAIRE (fig.)»). El mero uso del signo no es suficiente, y lo que deberá demostrarse es la existencia de una r azón válida que justifique dicho uso.
3.5.1 Ejemplos de justa causa
3.5.1.1 Justa causa confirmada
Asunto Comentarios
Resolución de 02/06/2010, en el asunto R 1000/2009-1, «BERIK», (fig.), apartado 72.
La Sala confirmó que el solicitante podía acogerse al supuesto de justa causa, en el sentido del artículo 8, apartado 5, del RMC, para insertar el término «FLEX» en la marca solicitada, y para sostener que dicho uso no estaba sujeto a monopolio alguno, desde el momento en que nadie tenía un derecho exclusivo al mismo y se trataba de una abr eviatura adecuada para indicar, en m uchas lenguas de la Comunidad, que los somieres y colchones son flexibles.
Resolución de 26/02/2008, en el asunto R 320/2007-2, «paquet de biscuits (3D)/OREO(3D)»)
La Sala concluyó que el solicitante podía alegar justa causa para representar la serie de galletas tipo sándwich en la marca tridimensional solicitada, es decir, para indicar a los consumidores el tipo de galletas anunciadas, de acuerdo con la legislación española aplicable.
Resolución de 30/07/2007, en el asunto R 1244/2006-1, «M FRATELLI MARTINI (fig.)»
La Sala confirmó que el solicitante tenía dos buenas razones para utilizar el nombre MARTINI en l a marca solicitada: i) «MARTINI» era el apellido del fundador de la empresa solicitante, y ii) existía un acuerdo de coexistencia desde el año 1990.
Resolución de 20/04/2007, en el asunto R 710/2006-2, «CAL SPAS »
La Sala confirmó que el solicitante tenía justa causa para utilizar el término «SPA», por corresponder con uno de los usos genéricos de la palabra «spa», tal como señaló el Tribunal de Justicia en la sentencia del asunto T-93/06, «Mineral Spa ».
Resolución de 23/01/2009, en los asuntos R 237/2008 y R 263/2008-1, «CARLO RONCATO»
Los negocios comerciales de la familia Roncato ponían de manifiesto que ambas partes tenían derecho a u sar el nombre «RONCATO» como marca en el sector de maletas y baúles, lo que constituía «justa causa» para utilizar el nombre «RONCATO» en la marca impugnada.
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Asunto Comentarios
Resolución de 25/08/2011 en el procedimiento de oposición B 1 708 398, «Posten AB v Ceská pošta s.p.»
Se confirmó que e l solicitante podía utilizar con justa causa el elemento figurativo consistente en un cuerno postal, puesto que este instrumento se utiliza ampliamente como un símbolo histórico y tradicional de los servicios de correos (se presentaron registros de marcas y documentos de Internet que demostraban que 29 países europeos utilizaban el cuerno postal como símbolo de sus servicios de correos).
3.5.1.2 Justa causa desestimada
Asunto Comentarios
Sentencia de 06/07/2012, en el asunto T-60/10, «ROYAL SHAKESPEARE», apartados 65-69
El Tribunal General sostuvo que, para poder concluir la existencia de justa causa, lo que se requiere no es el uso per se de la marca objeto de oposición, sino el motivo que justifica el uso de la misma. En este asunto, el solicitante alega simplemente que «ha demostrado de qué modo y para qué productos se ha usado la marca impugnada en el pasado», pero, incluso admitiendo que este aspecto pueda ser relevante, no ha aportado otras indicaciones o aclaraciones adicionales. Por consiguiente, el Tribunal consideró que e l solicitante no h abía demostrado la existencia de justa causa para dicho uso.
Sentencia de 25/03/2009, en el asunto T-21/07, «L'Oréal SA», apartado 43
El Tribunal General declaró que no existía justa causa, porque no se había probado que la palabra «spa» se hubiera vuelto tan necesaria para la comercialización de l os productos cosméticos que no se podía exigir razonablemente al solicitante que se abstuviese de utilizar la marca solicitada. Se desestimó el argumento de que «spa» tenía un carácter genérico y descriptivo para los productos cosméticos, porque dicho carácter no se extiende a estos productos, sino solamente a uno de sus usos o finalidades.
Sentencia de 16/04/2008, en el asunto T-181/05, «CITI», apartado 85
El Tribunal General consideró que el uso de la marca CITI en uno solo de los Estados miembros de la UE (España) no podría constituir justa causa porque, en primer lugar, el alcance geográfico de la protección de la marca nacional no coincidía con el territorio abarcado por la marca solicitada y, en segundo lugar, la validez jurídica de este registro nacional era objeto de litigio ante los tribunales nacionales. Por el mismo motivo se consideró que la titularidad del dominio «citi.es» carecía de relevancia.
Sentencia de 10/05/2007 en el asunto T-47/06, «NASDAQ», apartado 63, confirmado por C-327/07 P
El Tribunal llegó a l a conclusión de que el único argumento planteado ante la Sala de Recurso en relación con el supuesto de justa causa (a saber, que s e había elegido la palabra «nasdaq» por ser el acrónimo de «Nuovi Articoli Sportivi Di Alta Qualità») no resultaba convincente, señalando que normalmente las preposiciones no suelen incluirse en los acrónimos.
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FINAL VERSION 1.0 DATE 01/08/2014
Asunto Comentarios
Resolución de 23/11/2010, en el asunto R 240/2004-2, «WATERFORD (fig.)»
Contrariamente a los argumentos del solicitante sobre la existencia de justa causa porque el término «WATERFORD» era, supuestamente, muy frecuente en nombres y marcas comerciales, la Sala estimó que el solicitante no había aportado prueba alguna de la coexistencia en el mercado de las marcas WATERFORD, ni había presentado datos que permitiesen inferir que el público destinatario en general (el del Reino Unido) consideraba que Waterford fuese un topónimo común.
En la medida en que tales argumentos desempeñan una función al determinar si la singularidad de un signo es capaz de establecer un vínculo necesario entre los signos enfrentados en la conciencia del público destinatario, la Sala sostuvo, por el contrario, que una vez probada dicha singularidad, los argumentos indicados no pueden servir como prueba de justa causa.
Además, la Sala recordó que el requisito de justa causa no se cumple simplemente por el hecho de que: a) el signo sea particularmente apto para identificar los productos para los que se usa, o b) el solicitante haya usado el signo para productos idénticos o similares, dentro y/o fuera del territorio de referencia de la Unión Europea, o c) el solicitante invoque un derecho derivado de la presentación de u na solicitud sobre la que la marca del oponente tenga prioridad.
Resolución de 06/10/2006, en el asunto R 428/2005-2, «TISSOT»
La Sala concluyó que la afirmación del solicitante (no apoyada con prueba alguna) de que el signo TISSOT se refería al nombre de una empresa comercializadora asociada con la empresa del solicitante desde principios de la década de 1970, aunque se demostrase ser cierta, no equivaldría por sí sola a una «justa causa» en el sentido del artículo 8, apartado 5, del RMC. Las personas que heredan un apellido que coincide por casualidad con una marca famosa no deben presuponer que están autorizadas a usarlo con fines comerciales, de tal forma que se aprovechen indebidamente del renombre alcanzado gracias a los esfuerzos del titular de la marca.
Resolución de 18/08/2005, en el asunto R 1062/2000-4, «GRAMMY»
El solicitante alegaba que «GRAMMY» era una abreviatura internacional, de sonido fácil y agradable, de su propio apellido (Grammatikopoulos). La S ala rechazó este argumento como insuficiente para demostrar la existencia de una justa causa que pudiera impedir la aplicación del artículo 8, apartado 5, del RMC.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 80
FINAL VERSION 1.0 DATE 01/08/2014
Asunto Comentarios
Resolución de 15/06/2009, en el asunto R 1142/2005-2, «MARIE CLAIRE (fig.)»
La justa causa mencionada en el artículo 8, apartado 5, del RMC significa que, a pesar del perjuicio causado al carácter distintivo o al renombre de la marca anterior, o del aprovechamiento indebido de los mismos, puede estar justificado el registro y uso por el solicitante de la marca para los productos solicitados, siempre que no se le pueda exigir razonablemente que se abstenga de utilizar la marca impugnada, o cuando el solicitante tenga un derecho específico a utilizarla, para los productos en c uestión, que prevalezca respecto a l a marca anterior a la que se refiere el procedimiento de oposición. En particular, el requisito de justa causa no se cumple simplemente por el hecho de que: a) el signo sea particularmente apto para identificar los productos para los que se usa, o b) el solicitante haya usado el signo para productos idénticos o similares, dentro y/o fuera del territorio de referencia de la Comunidad, o c) el solicitante invoque un derecho derivado de la presentación de una solicitud sobre la que la marca del oponente tiene prioridad (resolución de 25/04/2001, en el asunto R 283/1999-3, , «HOLLYWOOD / HOLLYWOOD»).
En lo relativo a la tolerancia del titular de la marca anterior, la Sala sostuvo que dicha tolerancia se refería solamente a las revistas, y no a los productos afines a su sector del mercado (es decir, a los textiles). Señaló que l a jurisprudencia nacional demostraba que aunque la protección de que gozaba cada parte se aplicaba dentro de su propio ámbito de actividad comercial, no debía rechazarse la ampliación de la protección cuando se tratara de productos que se aproximaban al ámbito de actividad de la otra parte y pudieran infringir sus derechos.
Teniendo en cuenta estos factores, la Sala consideró que l a coexistencia no constituía una justa causa a los efectos de autorizar el registro de una MC.
Sentencia de 26/09/2012, en el asunto T-301/09, «Citigate», apartados 116, 125 y 126
En lo tocante a la alegación del solicitante sobre la existencia de justa causa para el uso de la marca solicitada (CITIGATE), debido a que habían utilizado una variedad de marcas que consistían en la palabra CITIGATE o que la incluían, en relación con los productos y servicios para los que se solicitaba el registro, el Tribunal declaró lo siguiente: «Procede señalar que los documentos aportados por el solicitante solamente demuestran que existen varias empresas cuyo nombre comercial contiene la palabra CITIGATE, y una s erie de n ombres de dominio que también contienen esta palabra. Estos datos no son suficientes para concluir que existe justa causa, porque no demuestran el uso efectivo de la marca CITIGATE».
Por cuanto se refiere al argumento del solicitante de que le asiste una justa causa para usar la marca solicitada, debido a que los intervinientes habían consentido el uso de CITIGATE en relación con los productos y servicios protegidos por la solicitud de registro, el Tribunal declaró que no se podía excluir la posibilidad de que, en determinados casos, la coexistencia en el mercado de marcas anteriores pudiera reducir […] la probabilidad de una asociación entre ambas marcas en el sentido del artículo 8, apartado 5.
Sin embargo, dicha coexistencia no se demostró en el presente asunto.
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 1
FINAL VERSION 1.0 01/08/2014
DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE D
ANULACIÓN
SECCIÓN 2
NORMAS SUSTANTIVAS
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 2
FINAL VERSION 1.0 01/08/2014
Índice
1 Aspectos generales................................................................................... 3
2 Caducidad .................................................................................................. 3 2.1 Introducción................................................................................................3 2.2 Falta de uso ................................................................................................3 2.3 Marcas comunitarias que se conv ierten en l a designación usual
(designación habitual) – artículo 51, apartado 1, letra b), del RMC ........3 2.3.1 Carga de la prueba......................................................................................... 3 2.3.3 Público destinatario ........................................................................................ 4 2.3.4 Designación usual .......................................................................................... 4 2.3.5 Defensa del titular........................................................................................... 5
2.4 Marcas comunitarias que induzcan a e rror – artículo 51, apartado 1, letra c), del RMC .........................................................................................5 2.4.1. Carga de la prueba......................................................................................... 5 2.4.4 Ejemplos ......................................................................................................... 6
3 Causas de nulidad absoluta ..................................................................... 6 3.1 Marcas comunitarias registradas contrarias al artículo 7 – artículo 52,
apartado 1, letra a), del RMC .....................................................................6 3.1.1 Carga de la prueba......................................................................................... 6 3.1.2 Fecha pertinente............................................................................................. 7 3.1.3 Normas aplicables .......................................................................................... 7
3.2. Defensa contra la alegación de falta de carácter distintivo ....................7
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 3
FINAL VERSION 1.0 01/08/2014
1 Aspectos generales
Revisión en el WP 1
2 Caducidad
Revisión en el WP 1
2.1 Introducción
Revisión en el WP 1
2.2 Falta de uso
Revisión en el WP 1
2.3 Marcas comunitarias que se convierten en la design ación usual (designación habitual) – artículo 51, apartado 1, letra b), del RMC
Se declarará que una MC ha caducado si, como resultado de una acción u omisión por parte del titular, se ha convertido en la designación usual en el comercio de un producto o de un servicio para el que fue registrada.
2.3.1 Carga de la prueba
La carga de l a prueba recae sobre el solicitante de c aducidad, el cual deberá demostrar que el término se ha convertido en la designación usual en el comercio como resultado de la:
- acción u - omisión
por parte del titular.
La División de Anulación examinará los hechos en virtud del artículo 76, apartado 1, del RMC en el ámbito de la exposición de hechos efectuada por el solicitante de la caducidad (sentencia de 13/09/2013, en el asunto T 320/10, «Castel», apartado 28); con lo que podrá tomar en c onsideración hechos evidentes y bien conocidos. Sin embargo, no irá más allá de los argumentos jurídicos presentados por el solicitante de la caducidad. Si la solicitud de anul ación se basa únicamente en el artículo 51, apartado 1, letra b), del RMC no podría ser declarada la caducidad de la marca por una causa como, por ejemplo, ser contraria al orden público y la moral.
2.3.2 Fecha pertinente
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 4
FINAL VERSION 1.0 01/08/2014
El solicitante de la caducidad debe probar que la marca se ha convertido en la designación usual en el comercio del producto o servicio en cuestión después de la fecha de r egistro de l a MC, aunque los hechos y circunstancias acaecidos entre la solicitud y el registro pueden ser tomados en consideración. El hecho de que el signo fuera, en el momento de la solicitud, la designación usual en el comercio de los productos y servicios solicitados, sería sólo relevante en el contexto de una solicitud de nulidad.
2.3.3 Público destinatario
La Oficina interpreta el artículo 51, apartado 1, letra b), del RMC en el sentido de que la marca debe haberse convertido en la designación usual del producto o servicio no solo entre algunas personas, sino entre la gran mayoría del público destinatario, incluidos los que participan en el comercio del producto o el servicio en c uestión (sentencia de 29/04/2004, en el asunto C-371/02, «Bostongurka», apartados 23 y 26). No obstante, la percepción de los consumidores o de los usuarios finales desempeña, por lo general, un pap el decisivo (“Bostongurka”, apartado 24). Además, según el Tribunal de Justicia, el titular de una marca se arriesga a su caducidad en la parte que concierne a un determinado producto para el que dicha marca esté registrada cuando, la marca se haya convertido, por la actividad o i nactividad de es e titular, en l a designación usual de t al producto exclusivamente desde el punto de vista de l os usuarios finales del producto (sentencia de 06/03/2014, en el asunto C-409/12, ‘Kornspitz’, apartado 30), en concreto cuando los vendedores del producto final no informan de manera habitual a s us clientes de q ue el signo está registrado como marca, ni prestan de manera habitual a sus clientes el servicio añadido de indicarles la procedencia de los distintos productos que ofrecen (“Kornspitz”, apartados 23-25).
2.3.4 Designación usual
Un signo se considera «la designación usual en el comercio» si se demuestra la práctica en el comercio de usar el término en cuestión para designar los productos o los servicios para los cuales esté registrado (ver Parte B. Sección 4. Apartado 2.4: Signos o i ndicaciones usuales). No es necesario probar que el término describe directamente una c ualidad o c aracterística de l os productos o los servicios, sino simplemente que realmente se utiliza en el comercio para referirse a ellos. El carácter distintivo de una marca es siempre más propenso a deg enerar cuando un signo es sugerente o puede llevar a algún tipo de inducción, sobre todo si tiene connotaciones positivas que llevan a terceros a adoptarlo por razón de su idoneidad para designar no solo un producto o s ervicio en particular del productor, sino un det erminado tipo de producto o servicio (resolución de 30/01/2007, 1020 C, «STIMULATION», apartados 22, 32 y ss).
El hecho de q ue una marca se use como sinónimo de un pr oducto o un s ervicio específico es un indicio de que ha perdido su capacidad para diferenciar los productos o los servicios en cuestión de los de otras empresas. Un indicio de que una marca ha pasado a ser genérica es que se utilice de manera habitual oralmente para referirse a un tipo particular o característica de los productos o servicios. Sin embargo, esto no es en sí mismo decisivo: se debe establecer si la marca todavía es capaz de diferenciar los productos o los servicios en cuestión de los de otras empresas.
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 5
FINAL VERSION 1.0 01/08/2014
La ausencia de una designación alternativa o la existencia de un único término largo y complicado también puede ser un indicio de que un s igno se ha c onvertido en l a designación usual en el comercio de un producto o un servicio específico. 2.3.5 Defensa del titular
Cuando el titular de l a MC ha hec ho todo aquello que razonablemente hubiera sido previsible dado el caso en particular (por ejemplo, ha organizado una campaña de televisión o i nsertado anuncios en per iódicos y revistas pertinentes), no se puede declarar la caducidad de la MC. El titular deberá entonces comprobar si su marca aparece en los diccionarios como un término genérico y, si es así, solicitar que en las próximas ediciones la marca vaya acompañada de una i ndicación de que se trata de una marca registrada (artículo 10, del RMC).
2.4 Marcas comunitarias que induzcan a error – artículo 51, apartado 1, letra c), del RMC
Si como resultado de la utilización de la marca por el titular o con su consentimiento, la marca puede inducir a error al público, en particular en lo que respecta a la naturaleza, calidad o procedencia geográfica de los productos o los servicios para los cuales esté registrada, se podrá declarar la caducidad de la MC. En este contexto, la calidad se refiere a una característica o a un atributo, más que a un grado o nivel de excelencia.
2.4.1. Carga de la prueba
La División de Anulación examinará los hechos en virtud del artículo 76, apartado 1, del RMC en el ámbito de la exposición de hechos efectuada por el solicitante de la caducidad (sentencia de 13/09/2013, en el asunto T 320/10, «Castel», apartado 28); con lo que podrá tomar en c onsideración hechos evidentes y bien conocidos. Sin embargo, no irá más allá de los argumentos jurídicos presentados por el solicitante de la caducidad.
La carga de la prueba de que la marca puede inducir a error recae en el solicitante de la declaración de caducidad, quien debe probar que es el uso realizado por el titular el que suscita el error. Si el uso se lleva a c abo por un t ercero, el solicitante de l a declaración de caducidad debe probar que el titular ha consentido dicho uso, salvo que el tercero sea un licenciatario del titular.
2.4.2 Fecha pertinente
El solicitante de la caducidad debe probar que la marca se ha convertido, tras la fecha de registro de la MC, en un signo que induce a error, en particular sobre la naturaleza, calidad u origen geográfico de los productos o servicios en cuestión. Si el signo ya era engañoso o era susceptible de inducir a engaño, esto es pertinente en el contexto de una solicitud de nulidad.
2.4.3 Criterios aplicables
Las Directrices sobre Examen contienen más detalles sobre los criterios aplicables a la hora de examinar si una solicitud de MC incurre en el Artículo 7, apartado 1, letra g) RMC (Directrices. Parte B, Examen, Sección 4, Motivos absolutos de denegación.
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 6
FINAL VERSION 1.0 01/08/2014
Apartado 2.7, Carácter engañoso). Los criterios son similares a los que se aplican a los procedimientos de declaración de caducidad en virtud del Artículo 51, apartado 1, letra c)
2.4.4 Ejemplos
Una marca constituida por una indicación geográfica o que la contenga, por regla general, será percibida por el público destinatario como una r eferencia al lugar de origen de los productos. La única excepción a esta regla se da cuando la relación entre el nombre geográfico y los productos es evidentemente tan extravagante (por ejemplo, porque el lugar no se conoce y es improbable que se conozca entre el público como el lugar de origen de los productos en cuestión) que los consumidores no realizarán tal conexión.
Por ejemplo, en este sentido, la marca MÖVENPICK OF SWITZERLAND fue anulada debido a que los productos en cuestión se elaboraban (según los hechos) únicamente en Alemania y no en Suiza (resolución de 12/02/2009, R 0697/2008 1 - «MÖVENPICK OF SWITZERLAND»)
Igualmente, si una marca que contiene los elementos denominativos «cabras» y «queso» y un el emento figurativo que representa claramente a una cabra se ha registrado para «queso de cabra» y se ha demostrado que el queso no está hecho de leche de cabra, se declarará la caducidad de la MC.
Si una marca que contiene los elementos denominativos «pura lana virgen» se registra para «prendas de vestir» y se ha demostrado su uso para prendas de vestir fabricadas con fibras artificiales, se declarará la caducidad de la MC.
Si una marca que contiene los elementos denominativos «piel auténtica» o el correspondiente pictograma está registrada para «calzado» y se ha demostrado el uso para calzado que no es de piel, se declarará la caducidad de la MC.
3 Causas de nulidad absoluta
3.1 Marcas comunitarias registradas contrarias al artículo 7 – artículo 52, apartado 1, letra a), del RMC
Si en el momento de su solicitud, la marca comunitaria pudiera no ser apta por cualquiera de las causas enumeradas en el artículo 7, podrá ser anulada.
3.1.1 Carga de la prueba
El propósito del procedimiento de anul ación es, entre otras cosas, permitir que la Oficina revise la validez del registro de una marca y que adopte, en su caso, la postura de oficio que debería haber adoptado en el proceso de registro, de conformidad con el artículo 37, apartado 1, del RMC (sentencia de 30/05/2013, en el asunto T-396/11, «Ultrafilter international», apartado 20). En consecuencia, la División de Anulación examinará los hechos de conformidad con el artículo 76, apartado 1, del RMC en el
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 7
FINAL VERSION 1.0 01/08/2014
ámbito de l a presentación de hechos efectuada por el solicitante de l a anulación (sentencia de 13/09/2013, en el asunto T-320/10, «Castel», apartado 28); con lo que podrá tomar en consideración hechos evidentes y bien conocidos. Sin embargo, no irá más allá de los argumentos jurídicos presentados por el solicitante de la anulación.
3.1.2 Fecha pertinente
El Tribunal General ha dec larado que el registro o dec laración de nul idad de una marca debe evaluarse en base a la situación en la fecha de solicitud, no de registro (sentencia de 03/06/2009, en el asunto T-189/07, «Flugbörse»; confirmado por el Auto del Tribunal de Justicia de 23/04/2010, C-332/09 P, «Flugbörse»).
En términos generales, todas las novedades o acontecimientos posteriores a la fecha de la solicitud o de la prioridad no se tomarán en consideración. Por ejemplo, el hecho de que un signo, tras la fecha de la solicitud, se convierta en la designación habitual usada en el comercio de los productos o los servicios respecto de los cuales se solicita el registro es en pr incipio irrelevante a los efectos del examen de u na acción de nulidad (solo sería relevante en el contexto de una ac ción de dec laración de caducidad). Sin embargo, estos hechos pueden ser tomados en cuenta cuando y en la medida en que permitan extraer conclusiones sobre la situación en l a fecha de la solicitud.
3.1.3 Normas aplicables
Las Directrices relativas al examen contienen detalles de los criterios que se aplicarán al evaluar si una solicitud de MC cumple con el artículo 7. Los criterios son idénticos a los aplicados en el procedimiento de nulidad.
3.2. Defensa contra la alegación de falta de carácter distintivo
Una marca que infringe lo dispuesto en el artículo 7, apartado 1, letra b), c) o d), del RMC no se anulará si ha adquirido carácter distintivo por el uso. Corresponde al titular de la MC presentar y fundamentar tal alegación.
La situación se apreciará de conformidad con la parte pertinente de las Directrices relativas al examen.
El titular deberá demostrar que:
- la marca ha adquirido carácter distintivo en la fecha de solicitud o antes de ella, o - el carácter distintivo se adquirió posteriormente al registro.
La primera alternativa es un corolario lógico del artículo 7, apartado 3, del RMC. Si una marca ha sido objeto de oposición en virtud del artículo 7, apartado 1, letra b), c) o d), del RMC, el solicitante puede demostrar el carácter distintivo adquirido por el uso, de conformidad con el artículo 7, apartado 3, del RMC.
La segunda alternativa es un corolario del artículo 52, apartado 2, del RMC.
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 8
FINAL VERSION 1.0 01/08/2014
Cambios en un registro
Directrices relativas al Examen ante la Oficina, Parte E, Operaciones de registro Página 1
FINAL VERSION 1.0 DATE 01/08/2014
DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE E
OPERACIONES DE REGISTRO
SECCIÓN 1
CAMBIOS EN UN REGISTRO
Cambios en un registro
Directrices relativas al Examen ante la Oficina, Parte E, Operaciones de registro Página 2
FINAL VERSION 1.0 DATE 01/08/2014
Índice
1 Renuncia .................................................................................................... 4 1.1 Principios generales ..................................................................................4 1.2 Efecto jurídico ............................................................................................4 1.3 Requisitos formales ...................................................................................5
1.3.1 Forma ............................................................................................................. 5 1.3.2 Lengua............................................................................................................ 5 1.3.3 Tasas .............................................................................................................. 5 1.3.4 Datos necesarios ............................................................................................ 5 1.3.5 Renuncia parcial ............................................................................................. 6 1.3.6 Firma............................................................................................................... 6 1.3.7 Representación, poder ................................................................................... 6 1.3.8 Requisitos en caso de que se haya inscrito una licencia u otro derecho
sobre la marca comunitaria ............................................................................ 6
1.4 Examen .......................................................................................................7 1.4.1 Competencia................................................................................................... 7 1.4.2 Registro o denegación.................................................................................... 8
2 Modificación de la representación de la marca ...................................... 9 2.1 Principios generales ..................................................................................9 2.2 Requisitos formales ...................................................................................9
2.2.1 Forma y lengua............................................................................................... 9 2.2.2 Tasas .............................................................................................................. 9 2.2.3 Indicaciones obligatorias .............................................................................. 10
2.3 Condiciones sustantivas para la modificación de la representación de la marca ...............................................................................................10 2.3.1 Ejemplos de modificaciones de la representación admisibles ..................... 11 2.3.2 Ejemplos de modificaciones inadmisibles .................................................... 12
2.4 Publicación ...............................................................................................13
3 Cambios de nombre o dirección ............................................................ 13
4 Cambios en el Reglamento de la marca colectiva................................ 15 4.1 Registro del reglamento modificado.......................................................15
5 División..................................................................................................... 16 5.1 Disposiciones generales..........................................................................16 5.2 Requisitos formales .................................................................................16
5.2.1 Forma y lengua............................................................................................. 16 5.2.2 Tasas ............................................................................................................ 16 5.2.3 Indicaciones obligatorias .............................................................................. 16
5.3 Registro.....................................................................................................18 5.4 Nuevo expediente, publicación ...............................................................19
Cambios en un registro
Directrices relativas al Examen ante la Oficina, Parte E, Operaciones de registro Página 3
FINAL VERSION 1.0 DATE 01/08/2014
6 Reivindicaciones de antigüedad posteriores al registro ..................... 19 6.1 Principios generales ................................................................................19 6.2 Efecto jurídico ..........................................................................................19 6.3 Requisitos formales .................................................................................20
6.3.1 Forma ........................................................................................................... 20 6.3.2 Lengua.......................................................................................................... 20 6.3.3 Tasas ............................................................................................................ 20 6.3.4 Indicaciones obligatorias .............................................................................. 21
6.4 Examen .....................................................................................................21 6.4.1 Examen sustantivo ....................................................................................... 21 6.4.2 Triple identidad ............................................................................................. 22 6.4.3 Información armonizada sobre la antigüedad .............................................. 24
6.5 Registro y publicación .............................................................................24 6.6 Cancelación de las reivindicaciones de antigüedad..............................24
7 Sustitución de un r egistro de marca comunitaria por un r egistro internacional ............................................................................................ 25
Cambios en un registro
Directrices relativas al Examen ante la Oficina, Parte E, Operaciones de registro Página 4
FINAL VERSION 1.0 DATE 01/08/2014
1 Renuncia
Artículo 50, del RMC Regla 36, del REMC
1.1 Principios generales
El titular de la marca comunitaria podrá retirarla, total o parcialmente, en cualquier momento después de su registro. La renuncia se declarará por escrito ante la Oficina. (Para información sobre la retirada de las solicitudes de marca comunitaria, es decir, antes del registro, véanse las Directrices, Parte B, Examen, Sección 1, Procedimientos, apartado 5.1.)
1.2 Efecto jurídico
Artículo 50, apartado 2, del RMC Regla 36, del REMC
Las renuncias solo tendrán efectos jurídicos a par tir de la fecha de inscripción en el Registro de Marcas Comunitarias (en lo sucesivo, «el Registro»). El procedimiento de registro de la renuncia podrá suspenderse durante un procedimiento en curso (véase el apartado 1.4.1).
Los derechos del titular de l a marca comunitaria registrada, al igual que los de s us licenciatarios y cualquier otro titular de derechos sobre la marca, se extinguirán con efecto ex nunc, a partir de la fecha en que se inscribe la renuncia en el Registro. Por lo tanto, carece de efecto retroactivo.
La renuncia tiene efectos procesales y sustantivos.
En cuanto a los efectos procesales, cuando la renuncia se inscribe en el Registro, la marca comunitaria deja de existir y concluyen todos los procedimientos ante la Oficina en los que esté implicada.
Entre los efectos sustantivos de la renuncia frente a terceros se incluye que el titular de la marca comunitaria renuncia a cualquier derecho derivado de su marca en el futuro.
El declarante está vinculado por la declaración de renuncia durante el procedimiento de registro, siempre que concurran las siguientes circunstancias:
a) que la Oficina no reciba una revocación de l a declaración el mismo día de l a recepción de la renuncia. Eso significa que si la Oficina recibe una declaración de renuncia y una c arta que revoca dicha declaración el mismo día (independientemente de la hora y el minuto de su recepción), se anulan mutuamente. Una vez que la declaración surte efecto, no puede revocarse;
b) que la declaración cumpla todos los requisitos formales, en particular aquellos que se especifican en el apartado 1.3.8.
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1.3 Requisitos formales
1.3.1 Forma
Reglas 79, 79bis, 80 y 82, del REMC Decisión nº EX-11-3 del Presidente de la Oficina
El titular declarará la renuncia por escrito ante la Oficina. Se aplican las normas generales para las comunicaciones con la Oficina (véanse las Directrices, Parte A, Disposiciones generales, Sección 1, Medios de comunicación, plazos).
La declaración de renuncia será nula cuando contenga condiciones o limitaciones de tiempo. Por ejemplo, no podrá realizarse con la condición de que la Oficina tome una resolución concreta o, en un procedimiento inter partes, de que la otra parte realice una declaración en el procedimiento. Por ejemplo, durante el procedimiento de anulación no podrá renunciarse (parcialmente) a la marca a condición de que el solicitante de la anulación retire su acción de anulación. Sin embargo, esto no excluye la posibilidad de acuerdo entre las partes, o de que ambas partes soliciten en la misma carta acciones sucesivas (por ejemplo, renuncia de la marca o retirada de la acción de anulación) a la Oficina.
1.3.2 Lengua
Regla 95(b), del REMC Artículo 119, apartado 2, del RMC
La declaración de renuncia se presentará en una de las cinco lenguas de la Oficina.
1.3.3 Tasas
La declaración no está sujeta al pago de una tasa.
1.3.4 Datos necesarios
Regla 36, apartado 1, del REMC
La declaración de renuncia contendrá los datos a que se refiere la regla 36, apartado 1, del REMC. Dichos datos son:
• el número de registro de la marca comunitaria;
• el nombre y dirección del titular o simplemente el número de identificación de la OAMI del titular;
• en el caso de que se declare la renuncia únicamente respecto de algunos de los productos y servicios para los que esté registrada la marca, bien los productos y servicios para los que se declara la renuncia, bien la indicación de los productos
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y servicios para los cuales ha de pe rmanecer registrada la marca (véase lo dispuesto en el apartado 1.3.5 Renuncia parcial).
1.3.5 Renuncia parcial
Podrá renunciarse en parte a una marca comunitaria, es decir, respecto de algunos productos y servicios para los que está registrada. La renuncia parcial únicamente surte efectos en la fecha en que se inscribe en el Registro.
Para que sea admisible una renuncia parcial, deberán cumplirse dos condiciones respecto de los productos y servicios:
a) el nuevo texto no debe constituir una ampliación de la lista de productos y servicios;
b) la renuncia parcial debe constituir una d escripción válida de l os productos y servicios.
Para más información sobre las limitaciones admisibles, véanse las Directrices, Parte B, Examen, Sección 3, Clasificación.
1.3.6 Firma
Excepto en los casos en que la regla 79, del REMC establezca lo contrario, la declaración de renuncia debe ir firmada por el titular de la marca comunitaria o su representante (véase el apartado 1.3.7 infra). Si la declaración se presenta por vía electrónica, la mención del nombre del remitente equivale a su firma.
Si una declaración que se remite a la Oficina no está firmada, la Oficina invitará a la parte implicada a que corrija la irregularidad en el plazo de dos meses. En caso de no subsanarse dicha irregularidad en el plazo, se desestimará la renuncia.
1.3.7 Representación, poder
Por lo que respecta a la representación del titular de la marca comunitaria que declara la renuncia, se aplican las reglas habituales (véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional).
Las normas de p rocedimiento aplicables en determinados Estados miembros según las cuales un poder no confiere el derecho a renunciar a una m arca a menos que se especifique expresamente, no se aplican con arreglo al RMC.
1.3.8 Requisitos en caso de que se haya inscrito una licencia u otro derecho sobre la marca comunitaria
La renuncia no pod rá registrarse si hay terceros que han registrado derechos de l a marca comunitaria (como los licenciatarios, acreedores prendarios, etc.) si no se cumplen primero determinados requisitos adicionales.
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Cuando en el Registro figure inscrita una l icencia u ot ro derecho sobre la marca comunitaria, es preciso que se cumplan los siguientes requisitos adicionales:
a) Si en el Registro figura inscrita una licencia o un derecho real, el titular de la marca comunitaria presentará pruebas suficientes de que ha informado al licenciatario, acreedor prendario, etc. de su intención de renunciar.
Si el titular demuestra a la Oficina que el licenciatario, acreedor prendario, etc. ha dado su consentimiento respecto de l a renuncia, ésta se inscribirá inmediatamente después de la recepción de dicha comunicación.
Si el titular de l a marca comunitaria presenta pruebas de que ha informado al licenciatario/acreedor prendario de su intención de renunciar, la Oficina informará al titular de que la renuncia se inscribirá tres meses después de la fecha en la que la Oficina haya recibido dichas pruebas (regla 36, apartado 2, del REMC).
La Oficina considerará prueba suficiente una copia de l a carta dirigida por el titular al licenciatario/acreedor prendario, siempre que haya una probabilidad razonable de que la carta haya sido enviada efectivamente y recibida por el licenciatario/acreedor prendario. Lo mismo se aplica a una declaración por escrito firmada por el licenciatario en la que indique que ha sido informado. No es necesario presentar una declaración jurada del titular. El término «acredita» que figura en el artículo 50, apartado 3, del RMC no eq uivale a probar fehacientemente, sino a una probabilidad razonable, como se desprende de las demás versiones lingüísticas del Reglamento (regla 50, apartado 3: versión francesa «justifie»; versión italiana «dimostre»; versión alemana «glaubhaft macht»). Los documentos pueden presentarse en cualquiera de las 23 lenguas oficiales de la Unión Europea. No obstante, la Oficina puede exigir una traducción a la lengua elegida para la declaración de renuncia o, a elección del declarante, a cualquiera de las cinco lenguas de la Oficina.
Si esta prueba no se facilita o es insuficiente, la Oficina requerirá que se presente en un plazo de dos meses.
b) Si en el Registro figura inscrita una ejecución forzosa, la declaración de renuncia irá acompañada de una declaración de consentimiento a la renuncia firmada por la autoridad competente para el procedimiento de ejecución forzosa (véanse las Directrices, Parte E, Operaciones de registro, Sección 3, La marca comunitaria como objeto de propiedad, Capítulo 4, Ejecución forzosa).
c) Si en el Registro figura inscrito un procedimiento de insolvencia o similar, es el liquidador quien debe solicitar la declaración de renuncia (véanse las Directrices, Parte E, Operaciones de registro, Sección 3, La marca comunitaria como objeto de propiedad, Capítulo 5, Insolvencia).
1.4 Examen
1.4.1 Competencia
La Oficina es competente en el examen de la declaración de renuncia.
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Si se declara una renuncia (o una renuncia parcial que afecte todos los productos y/o servicios contra los cuales se dirige la solicitud de anulación) durante un procedimiento de caducidad o de nulidad en curso contra la validez de la marca que es objeto de renuncia, se informará al correspondiente departamento (por ejemplo, la División de Anulación) y la Oficina suspenderá el registro de la renuncia. La División de Anulación invitará al solicitante de la anulación a q ue indique si desea continuar con el procedimiento y, en tal caso, el procedimiento de anulación proseguirá hasta que se dicte una resolución definitiva sobre el fondo. Después de que la resolución sobre la anulación sea definitiva, la renuncia se registrará únicamente respecto de los productos y/o servicios para los que la marca comunitaria impugnada no ha sido revocada o declarada nula, en su caso (véanse la sentencia de 24/03/2011, en el asunto C-552/09 P, «TiMi Kinderjoghurt», apartado 39; la resolución de 22/10/2010, R 0463/2009-4 – «MAGENTA», apartados 25 a 27; y la resolución de 07/08/2013, R 2264/2012-2 – «SHAKEY’S»). (Véanse las Directrices, Parte D, Anulación, Sección 1, Procedimientos de anulación, apartado 7.3).
Si la marca comunitaria está sujeta a un asunto que se encuentra pendiente ante las Salas de Recurso, será la cámara competente quien resolverá sobre la renuncia.
Si la marca comunitaria está sujeta a un asunto que está pendiente ante el Tribunal General (TG) o ante el Tribunal de Justicia (TJUE), la renuncia deberá presentarse ante la Oficina (y no ante el TG o el TJUE). La Oficina informará entonces al TG o al TJUE sobre si considera que la renuncia es admisible y válida. Sin embargo, el procedimiento de renuncia se suspenderá hasta que el TG o el TJUE hayan dictado una resolución final sobre la cuestión (véase, por analogía, la sentencia de 16/05/2013, en el asunto T-104/12, «VORTEX»).
1.4.2 Registro o denegación
Regla 87, del REMC
En caso de que se detecte una irregularidad, la Oficina concederá al declarante un plazo de dos meses para subsanarla.
Si la irregularidad que se indica al declarante no se subsana en el plazo señalado, la Oficina denegará la inscripción de la renuncia en el Registro.
Si la Oficina inscribe la renuncia en el Registro, informará de ello al titular de la marca comunitaria, así como a todos los titulares de derechos registrados para dicha marca.
Al notificar el registro de una renuncia parcial, se facilitará una copia de la nueva lista de productos y servicios en la carta de confirmación en la lengua del procedimiento.
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2 Modificación de la representación de la marca
2.1 Principios generales
Artículo 48, del RMC Regla 25, del REMC
Esta sección de las Directrices y las disposiciones citadas anteriormente se refieren exclusivamente a las modificaciones de la solicitud de marca comunitaria que inste el titular por iniciativa propia.
Hay que distinguir entre una modificación de una solicitud de marca comunitaria y una modificación de la representación de una marca comunitaria registrada. La modificación de una solicitud de marca comunitaria se rige por el artículo 43, del RMC y las reglas 13 y 26, del REMC. La m odificación de la representación de una marca comunitaria registrada se rige por el artículo 48, del RMC y las reglas 25 y 26, del REMC (para más información sobre las modificaciones a una solicitud de m arca comunitaria, véanse las Directrices, Parte B, Examen, Sección 2, Examen de las formalidades).
Esta sección no se aplica a las correcciones de errores evidentes en las publicaciones de la Oficina o en el Registro de M arcas Comunitarias; dichas correcciones se efectuarán de oficio conforme a las reglas 14 y 27, del REMC (para más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 6, Revocación de resoluciones, anulación de inscripciones en el Registro y corrección de errores).
El Reglamento ofrece la posibilidad de solicitar una modificación de la representación de la marca (modificación de l a representación de l a marca), indicando que dicha modificación se refiere al nombre y la dirección del titular y que no afecta sustancialmente a la identidad de la marca tal y como se registró originalmente.
El Reglamento no prevé la posibilidad de modificar otros elementos del registro de la marca comunitaria.
2.2 Requisitos formales
2.2.1 Forma y lengua
Artículo 48, apartado 2, del RMC
La solicitud de modificación de l a representación de l a marca debe realizarse por escrito en una de las cinco lenguas de la Oficina.
2.2.2 Tasas
Artículo 2, apartado 25, del RTMC
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La solicitud está sujeta a una tasa de 200 EUR y la petición no se considerará presentada hasta que no se haya abonado l a tasa (véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos).
2.2.3 Indicaciones obligatorias
Regla 25, apartado 1, del REMC
La solicitud de modificación de la representación de la marca debe incluir:
• el número de registro de la marca comunitaria;
• el nombre y dirección del titular de la marca comunitaria de conformidad con la regla 1, apartado 1, letra b), del REMC; si la OAMI ya ha adjudicado previamente un número de identificación al titular, bastará con indicar dicho número junto con el nombre del titular;
• la indicación del elemento de l a representación de l a marca que se desea modificar y dicho elemento en su versión modificada;
• una representación de la marca modificada que cumpla los requisitos de forma previstos en la regla 3, del REMC.
Es posible presentar una única solicitud de m odificación de l a representación de l a marca para varios registros de marca comunitaria siempre que tanto el titular de l a marca comunitaria como el elemento de la representación que va a modificarse sean los mismos en cada caso. No obstante, deberá abonarse la tasa por cada registro cuya representación va a modificarse.
2.3 Condiciones sustantivas para la modificación de la representación de la marca
El artículo 48, apartado 2, del RMC permite la modificación de la representación de la marca únicamente en circunstancias muy limitadas, a saber:
• cuando la marca comunitaria incluya el nombre y dirección del titular de la marca comunitaria y
• cuando estos sean los elementos cuya modificación se pretende y
• cuando la modificación no afecte sustancialmente a la identidad de la marca tal y como se registró originalmente.
Se aplican criterios estrictos: si el nombre o dirección del titular forma parte de los elementos distintivos de la marca, por ejemplo, forman parte de una marca denominativa, se rechazará la modificación de la representación de la marca, puesto que afectaría sustancialmente a la identidad de la marca. Únicamente podría admitirse una excepción con respecto a las abreviaturas habituales referidas a la forma jurídica de la sociedad. Una modificación de la representación de la marca solo es posible si el
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nombre o dirección del titular de la marca comunitaria aparece en una marca figurativa, por ejemplo, la etiqueta de una botella, como elemento subordinado en letra pequeña. Normalmente dichos elementos no se tendrían en cuenta al determinar el ámbito de protección o el cumplimiento del requisito del uso. La ratio del artículo 48, del RMC es precisamente excluir toda modificación de la representación de la marca comunitaria registrada que pudiera afectar a su ámbito de protección o a la evaluación del requisito del uso, de manera que los derechos de terceros no resulten afectados.
No podrá modificarse ningún otro elemento de la marca, aunque sea un elemento subordinado en letra pequeña de naturaleza descriptiva en la etiqueta de una botella, como la indicación del porcentaje de alcohol en una botella de vino. Además, el artículo 48, apartado 2, del RMC no permite la modificación de la lista de productos y servicios (véase la resolución de 09/07//2008, R 0585/2008-2 – «SAGA», apartado 16). Tras el registro, el único modo de realizar un cambio en la lista de productos y servicios es renunciando parcialmente a la marca, con arreglo a lo dispuesto en el artículo 50, del RMC (véase el apartado 1.3.5 supra).
2.3.1 Ejemplos de modificaciones de la representación admisibles
MARCA TAL COMO FUE REGISTRADA PROPUESTA DE MODIFICACIÓN
MC 7 389 687
MC 3 224 565
MC 4 988 556
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2.3.2 Ejemplos de modificaciones inadmisibles
MARCA TAL COMO FUE REGISTRADA PROPUESTA DE MODIFICACIÓN
MC 11 058 823
ROTAM – INNOVATION IN POST PATENT TECHNOLOGY’
ROTAM – INNOVATION IN POST PATENT TECHNOLOGY
MC 9 755 307
MINADI MINADI Occhiali MINADI
MC 10 009 595
CHATEAU DE LA TOUR SAINT-ANNE CHATEAU DE LA TOUR SAINTE-ANNE
MC 9 436 072
SLITONE ULTRA SLITONEULTRA
MC 2 701 845
MC 3 115 532
MC 7 087 943
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MARCA TAL COMO FUE REGISTRADA PROPUESTA DE MODIFICACIÓN
MC 8 588 329
En todos los casos, la propuesta de modificación de la representación de la marca fue denegada, ya que afectaba sustancialmente a la identidad de la marca comunitaria tal como fue registrada (artículo 48, apartado 2, del RMC). El artículo 48, apartado 2, del RMC únicamente permite la modificación del nombre y dirección del titular incluidos en la marca registrada siempre que dicha modificación no afecte sustancialmente a la identidad de la marca.
2.4 Publicación
Si se admite la modificación del registro, se inscribirá en el registro y se publicará en la Parte C.3.4 del Boletín. La publ icación incluirá una r epresentación de la marca comunitaria en su forma modificada.
Los terceros cuyos derechos puedan resultar afectados por la modificación podrán impugnar el registro de esta en un plazo de tres meses a partir de la publicación. Las disposiciones del procedimiento de o posición se aplicarán mutatis mutandis a este procedimiento.
3 Cambios de nombre o dirección
Reglas 26 y 84, del REMC
Es posible la modificación del nombre, dirección o nac ionalidad del titular de un a marca comunitaria registrada o de su representante. La petición de inscribir el cambio se presentará en una de las cinco lenguas de la Oficina. La modificación se inscribirá en el Registro y se publicará.
De conformidad con la regla 26 del REMC, el nombre, incluida la indicación de l a forma jurídica, y la dirección del titular o representante pueden modificarse a voluntad, siempre que:
• por lo que hace referencia al cambio de nombre del titular, el cambio no sea consecuencia de una cesión,
• por lo que hace referencia al cambio de nombre del representante, éste no se deba a la sustitución de un representante por otro.
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De conformidad con la regla 84, apartado 3, del REMC, la indicación de la nacionalidad o del Estado de c onstitución de una persona jurídica también puede modificarse libremente, siempre que no sea consecuencia de una cesión.
Un cambio de nombre del titular a efectos de la regla 26, apartado 1, del REMC es un cambio que no afecta a la identidad del titular, mientras que una cesión es un cambio de identidad del titular. Para conocer los detalles y el procedimiento aplicable en caso de duda respecto a si el cambio está comprendido en el ámbito de aplicación del artículo 17 del RMC, véanse las Directrices, Parte E, Operaciones de registro, Sección 3, La marca comunitaria como objeto de propiedad, Capítulo 1, Cesión.
Del mismo modo, un cambio del nombre de un representante a efectos de la regla 26, apartado 6, del REMC constituye tan sólo un cambio que no afecta a la identidad del representante designado, por ejemplo cuando cambia su apellido por haber contraído matrimonio. Dicha disposición también se aplica cuando cambia la denominación de una asociación de representantes. Dicho cambio de nombre tiene que distinguirse de la sustitución de un representante por otro, que está sujeta a las reglas que rigen la designación de representantes; para más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional.
El cambio de nombre o dirección previsto en la regla 26 del REMC, o de nacionalidad, puede ser consecuencia de un cambio de circunstancias o de un error cometido en el momento de la presentación de la solicitud.
Para inscribir un cambio de nombre y dirección, el titular o su representante debe presentar una s olicitud ante la Oficina, que deberá incluir el número de la marca comunitaria, al igual que el nombre y dirección del titular (de acuerdo con la regla 1, apartado 1, letra b), del REMC) o del representante (de acuerdo con la regla 1, apartado 1, letra e), del REMC), ambos tal y como constan en el expediente y han quedado modificados.
Por lo general, no es necesario aportar una prueba que acredite el cambio. No obstante, en caso de duda, el examinador podrá solicitar pruebas como el certificado de un r egistro de comercio. La solicitud de i nscripción del cambio de nombre o dirección no está sujeta al pago de una tasa.
Las personas jurídicas únicamente pueden tener una di rección oficial. En caso de duda, el examinador podrá solicitar pruebas de la forma jurídica o de la dirección en particular. El nombre y la dirección oficiales también se utilizan como dirección para notificaciones por defecto. Lo ideal es que el titular únicamente tenga una única dirección para notificaciones. Se registrarán los cambios en la denominación oficial o dirección oficial del titular para todas las marcas comunitarias y dibujos y modelos comunitarios registrados en nombre de dicho titular. No podrá inscribirse un cambio en la designación o dirección oficial únicamente para carteras específicas de derechos, al contrario de lo que ocurre con la dirección para notificaciones. En principio, estas reglas se aplican a los representantes por analogía.
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4 Cambios en el Reglamento de la marca colectiva
Artículo 71, del RMC
De conformidad con el artículo 71, del RMC, los titulares de la marca comunitaria colectiva deberán someter a la Oficina cualquier reglamento de uso modificado.
La solicitud de inscribir en el Registro una modificación del reglamento de uso de la marca colectiva debe realizarse por escrito en una de las cinco lenguas de la Oficina.
4.1 Registro del reglamento modificado
Artículo 69 y artículo 71, apartado 3 y 4, del RMC Regla 84, apartado 3, letra 3), del REMC
La modificación no se inscribirá en el Registro si el reglamento modificado no cumple los requisitos del artículo 67, apartado 2, del RMC o implica uno de los motivos de denegación mencionados en el artículo 68, del RMC.
Si se admite el registro de l a modificación del reglamento, ésta será registrada y publicada.
El solicitante de la inscripción especificará la parte del reglamento modificado que se inscribirá en el Registro, que podrá ser:
• el nombre y domicilio social del solicitante, • el objeto de la asociación y el objeto para el que se haya creado la persona
jurídica de Derecho público; • los organismos autorizados para representar a la asociación o a la persona
jurídica mencionada; • las condiciones de afiliación; • las personas autorizadas para utilizar la marca; • si procede, las condiciones de uso de la marca, incluidas las sanciones; • si la marca designa la procedencia geográfica de los productos o los servicios, la
autorización a c ualquier persona cuyos productos o servicios procedan de l a zona geográfica de que se trate para hacerse miembro de la asociación titular de la marca.
Los terceros cuyos derechos puedan resultar afectados por la modificación podrán impugnar el registro de ésta en un plazo de tres meses a partir de la publicación del reglamento modificado. Las disposiciones de las observaciones de terceros se aplicarán mutatis mutandis a este procedimiento.
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5 División
5.1 Disposiciones generales
Artículo 49, del RMC Regla 25 bis, del REMC
Un registro puede dividirse no sólo a raíz de una cesión parcial (véanse las Directrices, Parte E, Operaciones de registro, Sección 3, La marca comunitaria como objeto de propiedad, Capítulo 1, Cesión), sino también por voluntad propia del titular de la marca comunitaria. La división de una marca resulta especialmente útil para aislar una marca controvertida respecto de determinados productos y servicios y mantener el registro para el resto. Para más información sobre las divisiones de s olicitudes de marca comunitaria, véanse las Directrices, Parte B, Examen, Sección 1, Procedimientos.
Mientras que la renuncia parcial es gratuita aunque implica el cambio de titularidad, la solicitud de división de una m arca está sujeta al pago de una tasa de 250 EUR y la marca seguirá perteneciendo al mismo titular. Si no s e paga la tasa, la solicitud se considerará no presentada. Puede presentarse en una de las cinco lenguas de l a Oficina.
La división no está disponible en relación con una solicitud internacional en virtud del Protocolo de Madrid que designa a la UE: su registro se conserva exclusivamente en la OMPI. La OAMI carece de autoridad para dividir un registro internacional.
5.2 Requisitos formales
5.2.1 Forma y lengua
La solicitud de dividir la marca se presentará por escrito en una de las cinco lenguas de la Oficina.
5.2.2 Tasas
Artículo 2, apartado 22, del RTMC
La solicitud está sujeta a una tasa de 250 EUR y la petición no se considerará presentada hasta que se haya abonado l a tasa (véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos).
5.2.3 Indicaciones obligatorias
Regla 25 bis, del REMC
La petición debe contener:
• el número de registro de la marca comunitaria que se desea dividir;
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• el nombre y dirección del titular; si la OAMI ya ha adjudicado previamente un número de identificación al titular, bastará con indicar dicho número junto con el nombre del titular;
• la lista de productos y servicios que conformarán el registro divisional, o cuando se persiga la división en más de un registro divisional, la lista de productos y servicios correspondientes a cada uno de los registros divisionales;
• la lista de productos y servicios que se mantengan en l a marca comunitaria inicial.
Los productos y servicios deben distribuirse entre la marca comunitaria original y la nueva marca comunitaria de forma que no se solapen los productos y servicios. Las dos listas juntas no pueden resultar más amplias que la lista original.
Por tanto, las indicaciones han de ser claras, precisas e inequívocas. Por ejemplo, si se trata de una marca comunitaria referida a productos y servicios de varias clases y la «división» entre el nuevo y el antiguo registro se hace por clases completas, bastará con indicar las clases correspondientes al nuevo o al antiguo registro.
Si la solicitud de di visión comprende productos y servicios ya mencionados expresamente en la lista original, la Oficina retendrá automáticamente los productos y servicios no mencionados en la solicitud de división de marca comunitaria original. Por ejemplo: si la lista original comprende los productos A, B y C, y la solicitud de división se refiere a los productos C, la Oficina mantendrá los productos A y B en el registro original y creará otro nuevo para los productos C.
Para la valoración de s i se produce una l imitación o una a mpliación de l a lista se utilizan las reglas generalmente aplicables a este tipo de situaciones (véanse las Directrices, Parte B, Examen, Sección 3, Clasificación).
En todos los casos, se recomienda encarecidamente presentar una lista clara y precisa de los productos y servicios que se dividirán, así como una lista clara y precisa de los productos y servicios que permanecen en el registro original. Además, debe aclararse la lista original. Por ejemplo, si la lista original se refería a bebidas alcohólicas y la división se refiere a whisky y ginebra, la lista original deberá modificarse para limitarla a las bebidas alcohólicas, excepto whisky y ginebra.
La Oficina notificará al titular cualquier irregularidad en este sentido y se le concederán dos meses para subsanarla. Si no se subsanara la irregularidad, se denegará la declaración de división (regla 25 bis, apartado 2, del REMC).
También existen ciertos períodos durante los cuales no se admite una declaración de división por economía procesal o para salvaguardar los derechos de terceros. Estos periodos se establecen en el artículo 49, apartado 2, del RMC y en la regla 25 bis, apartado 3, del REMC, y son los siguientes:
• Mientras esté en curso un procedimiento de anulación ante la Oficina (solicitud de declaración de c aducidad o de nul idad) únicamente pueden di vidirse en l a marca original aquellos productos y servicios que no son objeto de la solicitud de anulación. La Oficina interpreta el artículo 49, apartado 2, letra a), del RMC en el sentido de que no s ólo queda excluida la división de l a marca original, con el efecto de que tendrían que dividirse los procedimientos de anulación, sino
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también en el caso de que se pretenda segregar los productos de la marca original que son objeto de la división. No obstante, en este caso, se dará al titular de la marca comunitaria la oportunidad de m odificar la declaración de d ivisión dividiendo los otros productos y servicios, es decir, aquellos que no son objeto del procedimiento de anulación.
• Siempre que estén pendientes procedimientos ante las Salas de Recurso, el Tribunal General o el Tribunal de Justicia Europeo, únicamente podrán dividirse de la marca original aquellos productos y servicios que no resulten afectados por el procedimiento, debido al efecto suspensivo del procedimiento.
• De igual modo, mientras esté pendiente una demanda de reconvención por caducidad o por nulidad ante un Tribunal de Marcas Comunitarias, se aplicarán las mismas condiciones. Esto abarca el periodo que comienza el día en que se presenta la demanda de reconvención ante el Tribunal de Marcas Comunitarias y finaliza el día en que la Oficina inscribe la mención de la sentencia del Tribunal de Marcas Comunitarias en el Registro de Marcas Comunitarias, de conformidad con el artículo 100, apartado 6, del RMC.
5.3 Registro
Si la Oficina acepta la declaración de división, se crea un nuevo registro con la fecha de la aceptación y no con efecto retroactivo a partir de la fecha de la declaración.
El nuevo registro mantendrá la fecha de presentación, al igual que cualquier fecha de prioridad o de antigüedad. El efecto de la antigüedad será parcial.
Todas las peticiones y solicitudes presentadas, y todas las tasas pagadas, antes de la fecha en la que la Oficina reciba la declaración de división se considerarán también realizadas o abonadas respecto del registro divisional. No obstante, las tasas debidamente abonadas por el registro original no serán reembolsadas (artículo 49, apartado 6, del RMC). Los efectos prácticos de esta disposición pueden ilustrarse con los siguientes ejemplos:
• Si se ha presentado una solicitud de inscripción de una licencia y la Oficina ha recibido el correspondiente pago de la tasa antes de que recibiera la declaración de división, la licencia se registrará en relación con el registro original y se inscribirá en el expediente del nuevo registro, y no han de abonarse más tasas.
• Si una solicitud de marca comunitaria en la que se reivindican seis clases va a dividirse en dos registros de tres clases cada una, no hay que abonar tasa por clase a partir de la fecha en que la división se inscribe en el Registro , sino, en su lugar, dos tasas de renovación de base, una por cada registro.
Si la división no es admitida, el registro original permanece inalterado. No importa si:
• la declaración de división se ha considerado no presentada por impago de la tasa;
• la declaración ha sido rechazada porque no se cumplían los requisitos de forma previstos (véase el aparatado 5.2 supra).
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En ninguno de los dos casos, se reembolsará la tasa.
Si la resolución final de la Oficina es que no se admite la declaración de división por alguna de l as razones mencionadas, el solicitante podrá volver a s olicitar la declaración de división, que estará sujeta al pago de una nueva tasa.
5.4 Nuevo expediente, publicación
Regla 84, apartado 2 y regla 84, apartado 3, letra w), del REMC
Es preciso crear un nuevo expediente para el registro divisional. Éste debe contener todos los documentos que obraban en el expediente del registro original, junto con toda la correspondencia relacionada con la declaración de división y toda la correspondencia futura asociada al nuevo registro.
La división se publicará en el Boletín de Marcas Comunitarias. La regla 84, apartado 3, letra w), del REMC establece que la división del registro se publicará, junto con los elementos a los que se hace referencia en el artículo 84, apartado 2, del REMC, en relación con el registro divisional, así como la lista de los productos y servicios del registro inicial modificado.
6 Reivindicaciones de antigüedad posteriores al registro
Artículo 35, del RMC Regla 28, del REMC Comunicación nº 2/00 de 25 de febrero de 2000 Decisión nº EX-03-5 de 20 de enero de 2003 Decisión nº EX-05-5 de 1 de junio de 2005
6.1 Principios generales
El titular de una marca anterior registrada en un Estado miembro, incluidas las marcas registradas en v irtud de un acuerdo internacional con efecto en un Estado miembro, que posee una marca comunitaria idéntica para productos y servicios idénticos a aquéllos para los que está registrada la marca anterior o que estén incluidos en estos productos o servicios, podrá prevalerse, para solicitar la marca comunitaria, de l a antigüedad de la marca anterior en lo que respecta al Estado miembro en el cual o para el cual esté registrada.
La antigüedad podrá reivindicarse en cualquier momento tras el registro de la marca comunitaria.
6.2 Efecto jurídico
El único efecto de l a antigüedad será que, en caso de que el titular de la marca comunitaria renuncie a la marca anterior o l a deje extinguirse, se considerará que
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continúa disfrutando de los mismos derechos que tendría si la marca anterior hubiera continuado registrada.
Esto significa que la marca comunitaria representa la prolongación de los registros nacionales anteriores. Si el titular reivindica la antigüedad para una o más marcas nacionales registradas anteriores, el titular podrá optar por no renovar los registros nacionales anteriores pero todavía estar en la misma posición que si la marca anterior hubiera seguido estando registrada en aquellos Estados miembros donde se registraron las marcas anteriores. La Oficina recomienda al titular que espere hasta que reciba la confirmación de q ue se ha a ceptado la reivindicación de ant igüedad antes de dejar que la marca nacional se extinga (véase asimismo lo dispuesto en el apartado 6.4.2 Triple identidad).
La antigüedad no sólo podrá reivindicarse para registros nacionales anteriores sino también para un registro internacional que designa a un país de la UE. No será posible, en cambio, presentar una reivindicación de ant igüedad para un registro de marca comunitaria anterior o registros locales, incluso si el territorio forma parte de la Unión Europea (p. ej., Gibraltar).
6.3 Requisitos formales
6.3.1 Forma
Reglas 79, 79 bis, 80 y 82, del REMC Decisión nº EX-11-3 del Presidente de la Oficina
La reivindicación de antigüedad se declarará por escrito ante la Oficina. Se aplican las normas generales para las comunicaciones con la Oficina (véanse las Directrices, Parte A, Disposiciones generales, Sección 1, Medios de comunicación, plazos).
La Oficina pondrá a disposición del público, de forma gratuita, un formulario para solicitar la inscripción de las reivindicaciones de ant igüedad posteriores al registro. Este formulario es la Solicitud de inscripción que puede descargarse del sitio web de la Oficina (http://oami.europa.eu).
6.3.2 Lengua
Regla 95, letra b), del REMC
La reivindicación de an tigüedad se presentará en una de las cinco lenguas de la Oficina.
6.3.3 Tasas
La solicitud de reivindicación de antigüedad no está sujeta al pago de una tasa.
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6.3.4 Indicaciones obligatorias
Regla 28, del REMC Decisión nº EX-05-5 de 1 de junio de 2005
La solicitud deberá indicar:
• el número de registro de la marca comunitaria;
• el nombre y dirección del titular de la marca comunitaria, con arreglo a l o dispuesto en la regla 1, apartado 1, letra b), del REMC; si la OAMI ya ha adjudicado previamente un número de identificación al titular, bastará con indicar dicho número junto con el nombre del titular;
• el Estado miembro o los Estados miembros de la UE o pa ra lo que está registrada la marca anterior para la que se reivindica la antigüedad;
• el número de registro y la fecha de presentación del correspondiente registro anterior.
De conformidad con la Decisión nº EX-05-5 de 1 de junio de 2005, el titular no es tá obligado a presentar una copia del registro si la información que se pide está disponible en la Oficina en el sitio web de la correspondiente oficina nacional. Si no se presenta la copia del registro, la Oficina buscará primero la información necesaria en el correspondiente sitio web y solo si la información no está disponible en el mismo, pedirá una c opia al titular. De conformidad con lo dispuesto en el artículo 3 de l a Decisión nº EX-03-5, las pruebas que justifican la reivindicación de antigüedad deben incluir una copia (bastan fotocopias simples) del registro y/o certificado de renovación o extracto del Registro, o un extracto del correspondiente diario oficial nacional, o un extracto o impresión de la base de datos. Constituyen ejemplos de extractos no admitidos DEMAS, MARQUESA, COMPUSERVE, THOMSON, OLIVIA, PATLINK o COMPUMARK, SAEGIS.
6.4 Examen
6.4.1 Examen sustantivo
La antigüedad sólo podrá reivindicarse para un registro anterior, no para una solicitud anterior. La fecha de la marca anterior debe ser anterior a las correspondientes fechas de la marca comunitaria (fecha de presentación o, en su caso, la fecha de prioridad).
El examinador deberá comprobar tanto que la marca anterior se haya registrado como que no se haya extinguido en el momento en que se realizó la reivindicación (sobre la duración de la protección de las marcas nacionales, véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales, apartado 4.2.3.4).
Si el registro anterior se ha extinguido en el momento en que se realizó la reclamación, no podrá reivindicarse la antigüedad, incluso si la correspondiente legislación nacional establece un periodo de gracia de seis meses para su renovación. Mientras que algunas legislaciones nacionales permiten un periodo «de gracia», si no se ha pagado la renovación, se considerará que la marca se ha extinguido desde el día en que debe
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efectuarse dicha renovación. Por lo tanto, la reivindicación de antigüedad únicamente se admite si el solicitante demuestra que renovó el registro anterior.
En el contexto de la ampliación de la UE, se han tenido en cuenta los siguientes detalles. Si una marca nacional de un nuevo Estado miembro o un registro internacional con efectos en di cho país fue registrada antes de que se efectúe la reivindicación de antigüedad, la antigüedad podrá reivindicarse incluso si la fecha de prioridad, presentación o registro de la marca comunitaria a la que hace referencia la antigüedad es anterior a la fecha de pr ioridad, presentación o registro de la marca nacional/registro internacional con efectos en el nuevo Estado miembro. Esto es porque la marca comunitaria de que se trate sólo surtirá efectos en el nuevo Estado miembro desde la fecha de adhesión. La marca nacional/registro internacional con efectos en el nuevo Estado miembro para la que se reivindica la antigüedad es, por lo tanto, «anterior» a la marca comunitaria conforme al artículo 35 del RMC, siempre que la marca nacional/registro internacional con efectos en el nuevo Estado miembro tenga una fecha de prioridad, presentación o registro anterior a la fecha de la adhesión (véanse las Directrices, Parte A, Disposiciones generales, Sección 9, Ampliación, Anexo 1).
Ejemplos de reivindicaciones de antigüedad admitidas para nuevos Estados miembros
MC Fecha depresentación País de
reivindicación de la antigüedad
Fecha de adhesión
Fecha de presentación del derecho anterior
2 094 860 TESTOCAPS 20/02/2001 Chipre
01/05/2004 28/02/2001
2 417 723 PEGINTRON 19/10/2001 Hungría
01/05/2004 08/11/2001
352 039 REDIPEN 02/04/1996 Bulgaria 01/01/2007 30/04/1996
7 073 307 HydroTac 17/07/2008 Croacia 01/07/2013 13/10/2009
Explicación: En todos los casos, aunque la fecha de presentación de la solicitud de marca comunitaria sea anterior a l a fecha de registro de la marca para la que se reivindica la antigüedad, todos los países afectados se adhirieron a la Unión Europea después de la fecha de presentación de la solicitud de marca comunitaria. Será a partir de la fecha de adhesión que la solicitud de marca comunitaria tiene protección en esos Estados y, por lo tanto, podrá reivindicarse la antigüedad para cualquier marca nacional presentada antes de la fecha de adhesión.
Si la reivindicación de antigüedad es correcta, la Oficina la admitirá y, una vez que se haya registrado la solicitud de m arca comunitaria, informará al/a los servicio(s) central(es) de la propiedad industrial del/de los Estado(s) miembro(s) de que se trate (regla 8, apartado 3, del REMC).
6.4.2 Triple identidad
Una reivindicación de antigüedad válida exige una triple identidad:
• la marca registrada debe ser idéntica a la marca comunitaria;
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• los productos y servicios de l a marca comunitaria deben s er idénticos a l os contemplados por la marca que está registrada o deben hallarse incluidos en ella;
• el titular debe ser el mismo.
(Véase la sentencia de 19/01/2012, en el asunto T-103/11, «Justing»).
El examen de las reivindicaciones de antigüedad se limita a los requisitos formales y a la identidad de l as marcas (véase la Comunicación del Presidente nº 2/00 de 25 de febrero de 2000).
Corresponde al titular asegurarse de que se cumplen los requisitos de triple identidad. Por lo general, la Oficina solo examinará si las marcas son idénticas. La identidad del titular y de los productos y servicios no se examinará.
En cuanto a la identidad de las marcas, las marcas denominativas serán analizadas, en general, sin atender al carácter tipográfico con el que estén registradas. Al analizar si las marcas denominativas son idénticas, el examinador no objetará al reconocimiento de la antigüedad si, por ejemplo, una marca se presenta en mayúsculas y la otra en minúsculas. El añadir o el suprimir una letra de una marca denominativa es motivo suficiente para no considerar idénticas las marcas. Por lo que respecta a las marcas figurativas, la Oficina deberá objetar si existe alguna diferencia evidente en l a apariencia de l as marcas (sentencia de 19 /01/2012, en el asunto T-103/11, «Justing», apartado 17 y sentencia de 20/02/2013, en el asunto T-378/11, «MEDINET»).
En este sentido el Tribunal General ha declarado que
«En efecto, aun cuando los objetivos del artículo 8, apartado 1, letra a), y del artículo 34 de dicho Reglamento [RMC] no s on los mismos, ambos establecen como requisito para su aplicación la identidad de las marcas de que se trate.»
Pues bien, es preciso afirmar, para empezar, que el hecho de que una marca esté registrada en un color o, por el contrario, no designe un color en particular, no puede considerarse un elemento desdeñable a los ojos de un consumidor. En efecto, la impresión que deja una m arca es diferente según sea ésta en color o no designe ningún color en particular.»
(Véase la sentencia de 20/02/2013, en el asunto T-378/11, «MEDINET», apartados 40 y 52).
Si la reivindicación de antigüedad no cumple los requisitos formales o si las marcas no son idénticas, la Oficina lo notificará al titular y le concederá dos meses para subsanar la irregularidad o presentar observaciones.
Si no se subsana la irregularidad, la Oficina informará al titular de que se ha denegado el derecho a reivindicar antigüedad.
Para ver ejemplos de reivindicaciones de antigüedad admitidas y no admitidas, véanse las Directrices, Parte B, Examen, Sección 2, Examen de l as formalidades, apartado 16.6.
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6.4.3 Información armonizada sobre la antigüedad
Para poder gestionar adecuadamente las antigüedades, todas las entradas de antigüedad en el sistema deben tener el mismo formato, que será el que se emplea en las bases de datos de las oficinas nacionales.
Para mejorar la armonización entre la OAMI y las oficinas de PI participantes, se ha elaborado una lista con el formato necesario para las antigüedades. Dicha lista proporciona una descripción del/de los formato/formatos utilizado/s en c ada oficina nacional, en la medida en que se haya establecido dicho formato.
Por lo tanto, al examinar las reivindicaciones de ant igüedad, los examinadores deberán verificar si el formato de la antigüedad en el sistema de l a Oficina se corresponde con el formato utilizado a escala nacional.
6.5 Registro y publicación
Regla 84, apartado 3, letra f), del REMC
Si la reivindicación de antigüedad es correcta, la Oficina la registrará e informará al/a los servicio(s) central(es) de la propiedad industrial del/de los Estado(s) miembro(s) de que se trate (regla 8, apartado 3, del REMC).
La reivindicación de antigüedad se publicará en el Boletín de Marcas Comunitarias.
La publicación incluirá los siguientes datos:
• el número de registro de la marca comunitaria; • los datos de la reivindicación de antigüedad: país, número de registro, fecha de
registro, fecha de presentación, fecha de prioridad • la fecha y el número de la inscripción de la reivindicación de antigüedad • la fecha en que la inscripción se publica en el Boletín de Marcas Comunitarias.
La regla 84, apartado 3, letra f), del REMC establece que la reivindicación de antigüedad se registrará junto con los datos a que se refiere la regla 84, apartado 2.
6.6 Cancelación de las reivindicaciones de antigüedad
El titular de la marca comunitaria podrá solicitar en cualquier momento y por iniciativa propia la cancelación de la reivindicación de antigüedad del Registro.
Las reivindicaciones de antigüedad también podrán cancelarse mediante la resolución de un tribunal nacional (véase el artículo 14 de la Directiva 2008/95/CE).
La cancelación de la reivindicación de antigüedad se publicará en el Boletín de Marcas Comunitarias. La regla 84, apartado 3, letra r), del REMC establece que la reivindicación de ant igüedad se registrará junto con los datos a que se refiere la regla 84, apartado 2.
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7 Sustitución de un registro de marca comunitaria por un registro internacional
Artículo 157, del RMC Regla 84, apartado 2, del REMC Artículo 4 bis del Protocolo de Madrid Regla 21 del Reglamento Común del Arreglo de Madrid y su Protocolo
De conformidad con lo dispuesto en el artículo 4 bis del Arreglo de Madrid y del Protocolo, el titular de un registro internacional que designa a la Unión Europea (RI) podrá pedir a l a Oficina que tome nota en su registro de que el correspondiente RI sustituye al registro de marca comunitaria. Se considerará que los derechos del titular comienzan en la UE a partir de la fecha del registro de marca comunitaria anterior. Por lo tanto, la Oficina inscribirá en el registro que se ha sustituido una marca comunitaria por una designación de la UE a través de un RI y que dicha inscripción se publicará en el Boletín de Marcas Comunitarias.
Para más información sobre la sustitución, véanse las Directrices, Parte M, Marcas internacionales.
Cesión
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE E
OPERACIONES DE REGISTRO
SECCIÓN 3
LA MARCA COMUNITARIA COMO OBJETO DE PROPIEDAD
CAPÍTULO 1
CESIÓN
Cesión
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Índice
1 Introducción............................................................................................... 4 1.1 Cesiones .....................................................................................................5 1.2 Solicitud de inscripción de la cesión........................................................5
2 Cesión frente a cambio de nombre.......................................................... 6 2.1 Solicitud errónea de inscripción de un cambio de nombre.....................7 2.2 Solicitud errónea de inscripción de una cesión.......................................8
3 Requisitos formales y sustantivos de una solicitud de registro de una cesión ......................................................................................................... 8 3.1 Lenguas ......................................................................................................8 3.2 Solicitud presentada para más de una marca ..........................................9 3.3 Partes en el procedimiento........................................................................9 3.4 Requisitos formales .................................................................................10
3.4.1 Indicación del número de registro............................................................ 10 3.4.2 Datos del nuevo titular ............................................................................... 10 3.4.3 Nombre y dirección del representante ..................................................... 11 3.4.4 Firmas .......................................................................................................... 12
3.5 Prueba de la cesión..................................................................................12 3.6 Requisitos de fondo.................................................................................13 3.7 Procedimiento para la subsanación de las irregularidades .................. 15
4 Cesión parcial .......................................................................................... 15 4.1 Reglas para la distribución de las listas de productos y servicios ...... 16 4.2 Objeciones................................................................................................17 4.3 Creación de un nuevo registro o solicitud de MC..................................17
5 Cesión en el curso de otros procedimientos y cuestiones relativas a las tasas ................................................................................................... 18 5.1 Cuestiones específicas relativas a las cesiones parciales ................... 18 5.2 Cesión y procedimiento inter partes.......................................................20
6 Inscripción, notificación y publicación.................................................. 20 6.1 Inscripción ................................................................................................20 6.2 Notificación...............................................................................................20 6.3 Publicación ...............................................................................................21
7 Cesiones de dibujos y modelos comunitarios registrados ................. 22 7.1 Derechos de uso anterior para los DMC.................................................22
Cesión
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7.2 Tasas.........................................................................................................22
8 Cesiones de marcas internacionales..................................................... 23
Cesión
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1 Introducción
Artículo 1, apartado 2, artículo 17, apartado 1 y artículo 24 del RMC Artículo 28 del RDC Artículo 23 del REDC
Las cesiones son cambios de titularidad de los derechos de propiedad de una marca comunitaria (MC) o de una solicitud de MC de una en tidad a otra. Las MC y las solicitudes de marca comunitaria pueden ser transmitidas a un nuevo titular por parte del titular actual, principalmente mediante cesión o por sucesión legal. La cesión puede limitarse a algunos de l os productos o servicios para los cuales se haya registrado la marca o solicitado su registro (cesión parcial). A diferencia de l o que ocurre con una l icencia o una t ransformación, la cesión de una M C no a fecta al carácter unitario de la misma. Por lo tanto, una MC no puede ser cedida «parcialmente» a algunos territorios o Estados miembros.
Las disposiciones del RDC o del REDC que tratan sobre la cesión de dibujos y modelos son casi idénticas a l as disposiciones equivalentes del RMC o del REMC, respectivamente. Por lo tanto, lo indicado a continuación se aplica mutatis mutandis a los dibujos y modelos comunitarios, con las excepciones y particularidades que s e establecen el apartado 7.
Artículo 16, artículo 17, apartados 5, 6 y 8, artículo 24 y artículo 87 del RMC Regla 31, apartado 8 y regla 84, apartado 3, letra g), del REMC
Previa petición, las cesiones de MC registradas se inscriben en el Registro y las cesiones de solicitudes de MC se anotan en los expedientes.
Las reglas relativas a la inscripción y los efectos jurídicos de la cesión son aplicables tanto a las MC como a las solicitudes de MC. La principal diferencia consiste en que, cuando se trate de una solicitud, su cesión se inscribe en el expediente de solicitud, en lugar de en el Registro. No obstante, en la práctica, los cambios de titularidad de una solicitud de MC o de una M C se inscriben en la misma base de datos. Aunque estas Directrices no ha cen, por lo general, distinción entre la cesión de marcas y la de solicitudes de M C, se incluyen referencias especiales en l os casos en que el tratamiento de las solicitudes difiere del previsto para las MC.
De conformidad con el artículo 17 del RMC, el registro de una c esión no es una condición para su validez. No obstante, si una cesión no ha sido registrada por la Oficina, la legitimación para actuar sigue siendo del titular registrado, lo cual significa, entre otros, que el nuevo titular no recibirá comunicaciones de la Oficina, en particular durante los procedimientos contradictorios o la notificación del plazo de renovación de la marca. Asimismo, de acuerdo con el artículo 16 del RMC, en todos los aspectos de la MC como objeto de propiedad que no queden definidos en las disposiciones del RMC, el domicilio del titular define la legislación nacional subsidiaria aplicable. Por todo lo anterior, resulta importante registrar una cesión en la Oficina para garantizar que quedan claros los derechos a la MC y a las solicitudes.
Cesión
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1.1 Cesiones
Artículo 17, apartados 1 y 2, del RMC
La cesión de una MC implica cuestiones: la referente a su validez entre las partes y la referente a sus efectos sobre los procedimientos seguidos ante la Oficina, especialmente cuando atañe a su inscripción en el Registro (véase el apartado 1.2).
Con respecto a la validez de la cesión entre las partes, el RMC permite la cesión de una MC con independencia de l a transmisión de la empresa a l a que pertenezca (véase asimismo la sentencia de 30/3/2006, en el asunto C-259/04, «ELIZABETH EMANUEL», apartados 45 y 48).
Artículo 17, apartado 3, del RMC
Salvo que la cesión se haga en cumplimiento de una sentencia, sólo será válida si se efectúa por escrito firmado por ambas partes. Este requisito formal para la validez de la cesión de u na MC es aplicable con independencia de que, con arreglo a la legislación nacional reguladora de las cesiones de marcas (nacionales), la cesión sea válida sin necesidad de requisitos formales específicos, como la necesidad de que la cesión se efectúe por escrito y esté firmada por ambas partes.
En caso de muerte del titular de una MC o solicitud de MC, sus herederos adquirirán la titularidad a través de la sucesión universal. Se aplican también a este caso las reglas previstas para la cesión.
De modo similar, en caso de fusión de dos empresas que da lugar a la formación de una nueva empresa o la adquisición de una e mpresa por la otra, se produce una sucesión universal. Cuando se cede en su conjunto la empresa a la que pertenece la marca, existe una p resunción de que la cesión incluye a l a MC salvo si, de conformidad con la legislación que regula la cesión, se celebra un acuerdo en contrario o las circunstancias indican claramente lo contrario.
Artículo 16 del RMC
Salvo disposición en c ontrario en el RMC, la cesión está sujeta a la legislación nacional del Estado miembro, y determinada con arreglo a lo previsto en el artículo 16 del RMC. La l egislación nacional declarada aplicable en es ta disposición es la legislación nacional en general, incluidas, por tanto, las normas de derecho privado internacional que remitan a la legislación de otro Estado.
1.2 Solicitud de inscripción de la cesión
Artículo 17, apartados 5-8, del RMC Regla 31 del REMC
La cesión afecta a l os procedimientos seguidos ante la Oficina si se presenta una solicitud de i nscripción de la misma y ésta se inscribe en el Registro o, en caso de solicitud de MC, en el correspondiente expediente de solicitud.
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Artículo 17, apartado 7, del RMC
En cualquier caso, en el periodo comprendido entre la fecha de recepción de la solicitud de i nscripción de la cesión y la fecha de inscripción de l a cesión, el nuevo titular puede presentar observaciones ante la Oficina a fin de respetar los plazos. Si, por ejemplo, se pide la inscripción de la cesión de una solicitud de MC con respecto a la cual la Oficina ha planteado objeciones respecto a los motivos de denegación absolutos, el nuevo titular podrá contestar dichas objeciones (véase el apartado 5).
En esta parte de las Directrices se abordan los procedimientos relativos a l a inscripción de la cesión. Al examinar la solicitud de inscripción de la cesión, la Oficina sólo analizará si se han presentado pruebas suficientes de la misma. No analizará la validez de la cesión.
2 Cesión frente a cambio de nombre
Regla 26, apartados 1-3, del REMC
Es necesario distinguir entre la cesión y el cambio de nombre del titular.
La solicitud de cambio del nombre del titular de un registro o solicitud de MC se tramita en procedimiento separado. Para más información, véanse las Directrices, Parte B, Examen, Sección 2, Formalidades, apartado 7.3, Cambio de nombre/dirección.
Regla 26, apartado 1, del REMC
En particular, no se produce cesión si una persona física cambia su nombre por razón de matrimonio o en virtud de un procedimiento oficial previsto al efecto, si se utiliza un seudónimo en l ugar del nombre propio, etc. En todos estos casos, la identidad del titular no se ve afectada.
En caso de cambio del nombre de una persona jurídica, el criterio para distinguir entre la cesión y el simple cambio de nom bre es el relativo al mantenimiento o no de l a identidad de la persona jurídica (en cuyo caso deberá registrarse como cambio de nombre) (véase la resolución de 6/9/2010, en el asunto R 1232/2010-4 – «Cartier», apartados 12-14). Dicho de otro modo, si no existe la extinción de la persona jurídica (es decir, en el caso de una fusión por adquisición, en que una empresa queda absorbida completamente por otra y deja de existir) y no se inicia una nueva persona jurídica (es decir, después de la fusión de dos empresas, que conduce a la creación de una nueva persona jurídica), sólo existe un c ambio en l a organización formal de l a sociedad que ya existía, y no en la propia identidad. Por lo tanto, el cambio se registrará como un cambio de nombre, en su caso.
Por ejemplo, si una MC está a nombre de una empresa A y, como resultado de una fusión esta empresa queda absorbida por la empresa B, existe una cesión de activos de la empresa A a la empresa B.
Del mismo modo, durante la división de la empresa A en dos entidades separadas, una la empresa A original y la otra una nueva empresa B, si la MC que está a nombre
Cesión
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de la empresa A pasa a formar parte de la propiedad de l a empresa B, existirá una cesión de activos.
Por lo general, no ex istirá cesión si el número de i nscripción de la empresa en el registro nacional de empresas sigue siendo el mismo.
Asimismo, existe, en principio, la presunción a priori de que existe una cesión de activos cuando se produce un cambio de país.
En caso de que la Oficina tenga dudas sobre la legislación nacional aplicable que regula a la persona jurídica de que se trate, podrá solicitarle la información que estime conveniente a la persona que solicita la inscripción del cambio de nombre.
Por lo tanto, salvo disposición en c ontrario de la legislación nacional afectada, el cambio de tipo de empresa, siempre que no venga acompañado por una cesión de activos realizada mediante una fusión o una adquisición, será tratado como un cambio de nombre y no como una cesión.
Por otro lado, si el cambio de tipo de empresa es resultado de una fusión, una división o una transferencia de activos, en función de si la empresa absorbe o se separa de la otra o de qué empresa es la que cede activos a la otra, estaremos ante un caso de cesión.
2.1 Solicitud errónea de inscripción de un cambio de nombre
Artículo 133, apartado 1, del RMC Regla 26, apartados 1, 5-7, del REMC
Formulada una solicitud de inscripción de un c ambio de nombre, aunque las pruebas demuestren que implica realmente una cesión de una MC o de una solicitud de MC, la Oficina informará de ello al solicitante de la inscripción y le invitará a que presente una solicitud de inscripción de la cesión, la cual tiene carácter gratuito. Dicha cesión está sujeta, no obstante, al pago de una tasa cuando está relacionada con la cesión de un dibujo o modelo (véase el apartado 7). La notificación establecerá un plazo de, por lo general, dos meses a partir de la fecha de su notificación. Si el solicitante de la inscripción acepta o no presenta pruebas en contrario y presenta la correspondiente solicitud de transferencia, la cesión será inscrita. Si el solicitante de la inscripción no modifica su petición, es decir, si insiste en i nscribir el cambio como un cambio de nombre, o s i no r esponde, se denegará la solicitud de r egistro de un cambio de nombre.
En dicho caso, podrá presentarse en c ualquier momento una nueva solicitud de registro de la cesión.
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2.2 Solicitud errónea de inscripción de una cesión
Regla 31, apartados 1 y 6, del REMC
Formulada una solicitud de inscripción de una cesión, aunque implica realmente un cambio de nombre de una MC o de una solicitud de MC, la Oficina informará de ello al solicitante de la inscripción y le invitará a que dé su consentimiento para registrar las indicaciones relativas al titular de l os expedientes que conserva la Oficina o en el Registro como cambio de nombre. La no tificación establecerá un pl azo de, por lo general, dos meses a partir de la fecha de la notificación. Si el solicitante de la inscripción está de acuerdo, se inscribirá el cambio de nombre. Si el solicitante de la inscripción no es tá de acuerdo, es decir, si insiste en inscribir el cambio como una cesión, o si no responde, se denegará la solicitud de registro de una cesión.
3 Requisitos formales y sustantivos de una solicitud de registro de una cesión
La Oficina recomienda encarecidamente utilizar el formulario de Solicitud de inscripción para solicitar el registro de una c esión. El formulario es gratuito y puede descargarse en el sitio web de la Oficina (http://www.oami.europa.eu).
Desde la entrada en vigor del Reglamento nº 1042/05, por el que se modifica el RTMC, no es necesario abonar ninguna tasa para registrar una cesión.
3.1 Lenguas
La solicitud de inscripción de una cesión debe presentarse:
Regla 95, letras a) y b) y regla 96, apartado 1, del REMC
• si se refiere a una solicitud de MC, en la primera o segunda lenguas señaladas en la misma;
• si se refiere a una MC registrada, en una de las lenguas de la Oficina.
Si la solicitud se refiere a más de una solicitud de MC, el solicitante de la inscripción debe elegir una lengua de solicitud que sea común a todas las MC. En caso de que no se disponga de una lengua en común, deberá presentar solicitudes separadas.
Si la solicitud se refiere al menos a un registro de MC, el solicitante de la inscripción deberá seleccionar una de las cinco lenguas de la Oficina.
Regla 76, apartado 3, del REMC
Si la Oficina lo exige expresamente, los poderes podrán presentarse en cualquier lengua oficial de la Unión Europea.
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Regla 96, apartado 2, del REMC
Los documentos justificativos deben presentarse en cualquiera de las lenguas oficiales de la Unión Europea. Esta regla se aplicará a cualquier documento remitido como prueba acreditativa de la cesión, tal como el Documento de Cesión o el Certificado de Cesión, la escritura de cesión, un extracto del registro mercantil o la declaración de aceptación de la inscripción del sucesor en el título como nuevo titular.
Regla 98 del REMC
Si los documentos justificativos no se presentan ni en una lengua oficial de la Unión Europea ni en l a lengua del procedimiento, la Oficina podrá exigir una traducción a esta última o, a elección del solicitante de l a inscripción, a c ualquier lengua de l a Oficina. La Oficina señalará un plazo de dos meses a partir de la fecha de notificación de dicha comunicación. Si no se entrega la traducción en este plazo, el documento no se tendrá en cuenta y se considerará no presentado.
3.2 Solicitud presentada para más de una marca
Regla 31, apartado 7, del REMC
Puede presentarse una sola solicitud de inscripción de una cesión en relación con varias MC o solicitudes de MC siempre que el titular original y el nuevo coincidan en todos los casos. Esto tiene la ventaja de que sólo deben aportarse una vez las diversas referencias y que sólo debe adoptarse una decisión.
Habrá que presentar solicitudes separadas cuando el titular original y el nuevo no sean estrictamente idénticos para cada marca. Este es el caso, por ejemplo, cuando exista un cesionario de la primera marca y varios cesionarios de otra marca, aunque el cesionario de la primera marca sea uno de estos últimos. No resulta relevante si los representantes coinciden.
Si se presenta una única solicitud en dichos casos, la Oficina emitirá una notificación de irregularidad. El solicitante de la inscripción podrá subsanar la objeción limitando la solicitud a l os registros o s olicitudes de M C correspondientes a un mismo y único titular original y al mismo titular nuevo, o declarando su consentimiento para que se tramite su solicitud en dos o m ás procedimientos diferentes. En caso contrario, se denegará la solicitud en su conjunto.
3.3 Partes en el procedimiento
Artículo 17, apartado 5, del RMC Regla 31, apartado 5, del REMC
La solicitud de inscripción de una cesión puede ser formulada por el titular original (el titular de l a MC tal como aparece en el Registro o el solicitante de MC tal como aparece en el archivo de solicitud de MC) o por el titular nuevo (el «cesionario», es decir, la persona que aparecerá como el titular cuando se registre la cesión).
Cesión
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La Oficina normalmente se comunicará con el solicitante de la inscripción. En caso de duda, la Oficina podrá exigir aclaraciones de todas las partes.
3.4 Requisitos formales
Regla 1, apartado 1, letra b), regla 31, apartados 1 y 2, regla 79, del REMC
La solicitud de registro de la cesión debe constar de:
• el número de registro o de la solicitud del registro o solicitud de MC; • los datos sobre el nuevo titular; • si el nuevo titular designa un representante, el nombre y la dirección profesional
de éste; • la firma de la persona o personas solicitantes de la inscripción; • la prueba de la cesión tal como se especifica en el apartado 3.5 a continuación.
Véanse en el apartado 4 los requisitos adicionales para el caso de cesión parcial.
3.4.1 Indicación del número de registro
Regla 31, apartado 1, letra a), del REMC
Ha de indicarse el número de registro de la marca.
3.4.2 Datos del nuevo titular
Regla 1, apartado 1, letra b) y regla 31, apartado 1, letra b), del REMC
Los datos del nuevo titular que deben indicarse son su nombre, dirección y nacionalidad, si se trata de una persona física. Si se trata de una persona jurídica, el solicitante de la inscripción debe indicar la denominación oficial y debe incluir la forma jurídica de la persona, que se podrá abreviar de la manera usual (por ejemplo, S.L., S.A, Ltd., PLC, etc.). Tanto las personas físicas como las personas jurídicas deben indicar el Estado en que están domiciliadas o t ienen su sede o es tablecimiento. La Oficina recomienda encarecidamente que se indique el Estado de constitución de las empresas estadounidenses, en su caso, para diferenciar claramente entre los distintos titulares en su base de datos. Estos datos corresponden a l as indicaciones relativas al solicitante exigidas para una n ueva solicitud de M C. No obstante, si la Oficina ya ha asignado un número de identificación al nuevo titular, bastará con indicar dicho número junto con el nombre del nuevo titular.
El impreso facilitado por la Oficina requiere también la indicación del nombre del titular original. Esta indicación facilitará el tratamiento del expediente por parte de la Oficina y de las partes.
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3.4.3 Nombre y dirección del representante
Regla 77 del REMC Artículo 93, apartado 1, del RMC Regla 76, apartados 1, 2 y 4, del REMC
Las solicitudes de registro de una c esión pueden ser presentadas y firmadas por representantes en nombre del titular del MC o del nuevo titular.
Si el nuevo titular designa un representante que firme la solicitud, tanto la Oficina como, en el contexto de un p rocedimiento contradictorio, la otra parte del procedimiento podrá exigir que se presente un poder. En ese caso, si el representante no presenta un poder, el procedimiento continuará como si no se hubiera designado representante.
Si el representante designado por el titular original es designado también como tal por el nuevo titular, dicho representante podrá firmar la solicitud en nombre de ambos, y deberá aportar asimismo un poder firmado por el nuevo titular. Se le podrá invitar a que aporte asimismo un poder firmado por el nuevo titular.
Artículo 92, apartado 3, y artículo 93, apartado 1, del RMC
Lo anteriormente expuesto es de aplicación no sólo a los representantes con arreglo al artículo 93 del RMC (abogados y representantes autorizados inscritos en la lista que a tal efecto lleva la Oficina), sino también a los empleados que actúen en nombre de su empresa y, en las condiciones previstas en el apartado 3 del artículo 92 del RMC, en nombre de o tra persona jurídica (empresa) que esté económicamente vinculada a aquélla.
Regla 77, regla 83, apartado 1, letra h), del REMC
Se entenderá que el poder general extendido en el impreso facilitado por la Oficina incluye las facultades necesarias para formular y firmar solicitudes de inscripción de cesiones.
El poder especial será examinado para determinar si no excluye la facultad de solicitar la inscripción de cesiones.
Artículo 92, apartado 2, del RMC
Si el solicitante de la inscripción es el nuevo titular y dicho nuevo titular no tiene su domicilio, su sede o un establecimiento industrial o comercial efectivo en la Comunidad, deberá estar representado a efectos del procedimiento de inscripción de la cesión por una persona que pueda representar profesionalmente a terceros ante la Oficina (un abogado o representante autorizado inscrito en la lista que a tal efecto lleva la Oficina). Véanse las Directrices, Parte A, Disposiciones Generales, Sección 5, Representación profesional.
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3.4.4 Firmas
Regla 31, apartado 1, letra d), regla 31, apartado 5, regla 79, del REMC
Los requisitos relativos a la persona facultada para formular la solicitud y a la firma han de contemplarse en relación con el requisito de aportación de la prueba acreditativa de la cesión. El principio es que las firmas del titular original o t itulares originales y del nuevo titular o nuevos titulares han de aparecer junta o separadamente en la solicitud o en un documento justificativo.
Regla 31, apartado 5, letra a), del REMC
Si el titular original y el nuevo titular firman ambos la solicitud, basta con ello y no se requieren pruebas adicionales.
Regla 31, apartado 5, letra b), del REMC
Si el nuevo titular es el solicitante de la inscripción y ésta va acompañada de una declaración firmada por el titular original en la que otorga su acuerdo al registro de aquél como nuevo titular, también bastará con ello y no se requerirán pruebas adicionales.
Si el representante designado por el titular original es designado también como tal por el nuevo titular, dicho representante podrá firmar la solicitud en nombre de ambos, y no se requieren pruebas adicionales. Sin embargo, cuando el representante que firma en nombre tanto del titular original como del nuevo no es el representante registrado (es decir, en una solicitud que designa simultáneamente al representante y cede la MC), la Oficina contactará al solicitante de la inscripción para solicitarle pruebas de la transferencia (poder firmado por el titular original, prueba de la cesión, confirmación de la cesión por parte del titular original o de su representante registrado).
3.5 Prueba de la cesión
Artículo 17, apartados 2 y 3, del RMC Regla 31, apartado 1, letra d) y apartado 5, letras a)-c), regla 83, apartado 1, letra d), del REMC
Sólo puede inscribirse la cesión si se acredita debidamente mediante documentos que establezcan la cesión, como la copia de la escritura de cesión. Sin embargo, tal como se ha mencionado anteriormente, no se requerirá copia de la escritura de cesión:
• si el nuevo titular o su representante presenta la solicitud de registro de la cesión por iniciativa propia o s i ésta va acompañada de una dec laración por escrito firmada por el titular original (o su representante) en la que éste otorga su acuerdo a la inscripción de la cesión; o
• si la solicitud de inscripción de la cesión está firmada tanto por el titular original (o su representante) y por el nuevo titular (o su representante); o
Cesión
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• si la solicitud de inscripción de la cesión va acompañada tanto por un formulario de cesión rellenado (inscripción) o un documento firmado tanto por el titular original (o su representante) y por el nuevo titular (o su representante).
Las partes del procedimiento también pueden utilizar los formularios preparados con arreglo al Tratado sobre el Derecho de Marcas, disponible en la página web de la OMPI (https://www.wipo.int/treaties/es/ip/tlt/forms.html). Estos formularios son el Documento de Transferencia – documento en el que las partes declaran que se ha realizado la cesión – y el Certificado de Transferencia, que es un documento en el que las partes declaran que se ha realizado la cesión. Ambos documentos, debidamente cumplimentados, constituyen prueba suficiente de la cesión.
No obstante, no se excluyen otros medios de prueba, por lo que pueden presentarse el propio contrato (la escritura) o cualquier otro documento acreditativo de la cesión.
Si la cesión de la marca es consecuencia de la transmisión de la totalidad de la empresa del titular original, a menos que se aporte prueba según lo anteriormente indicado, deberá presentarse el documento en el que figure la transmisión o cesión de la empresa en su conjunto.
Si la cesión se debe a una fusión u otro tipo de sucesión universal, el titular original no estará disponible para la firma de la solicitud. En estos casos, la solicitud deberá acompañarse de los documentos necesarios para acreditar la fusión o la sucesión universal, tales como extractos del registro mercantil, etc. La Oficina podrá no solicitar pruebas adicionales si los hechos le son ya conocidos, por ejemplo en virtud de procedimientos paralelos.
No se requiere que los documentos justificativos estén legalizados, ni tampoco hay que remitir los originales. Los documentos originales formarán parte del expediente y, por lo tanto, no serán devueltos a la persona que los presentó, bastando con copias simples.
Si la Oficina tuviera motivos para dudar de la precisión o veracidad de un documento, podrá solicitar pruebas adicionales.
La Oficina examinará estos documentos sólo a efectos de si prueban efectivamente lo indicado en la solicitud, es decir, la identidad de las marcas afectadas y de las partes, y la existencia de una cesión. La Oficina no se pronuncia ni considera cuestiones contractuales o legales que deriven de l a legislación nacional (véase la sentencia de 9/9/2011, en el asunto T-83/09 «CRAIC», apartado 27). En caso de que se planteen dudas, serán los tribunales nacionales quienes tratarán sobre la legalidad de la propia cesión.
3.6 Requisitos de fondo
Artículo 17, apartado 4, del RMC
La Oficina no inscribirá la cesión si de los documentos de ésta se deduce de forma manifiesta que, debido a la cesión, la marca comunitaria podría inducir al público a error, en particular sobre la naturaleza, la calidad o la procedencia geográfica de los productos o de los servicios para los cuales esté registrada, a no ser que el nuevo
Cesión
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titular acepte limitar dicha inscripción a pr oductos o a s ervicios para los cuales no resulte engañosa.
Artículo 7, apartado 1, letra g), del RMC
La marca puede inducir al público a error debido a su cesión si, en caso de haber sido originalmente presentada por el nuevo titular, hubiera sido denegada por inducir a error debido a la situación concreta del titular y de la propia marca.
Por tanto, el criterio que se aplica es el de si la marca puede inducir o no a error por razón de su titularidad.
Artículo 7, apartado 1, letra g), artículo 17, apartado 4, artículo 43 y artículo 48, del RMC
La exigencia de que la probabilidad de inducir a error se deba a la cesión impide a la Oficina tomar en consideración, al examinar una solicitud de inscripción de la cesión, cualquier otra cuestión que pueda inducir a error pero que no esté relacionada con el vínculo entre el titular y la marca. Una vez registrada una marca, la Oficina no puede plantear objeciones generales por el hecho de que pueda inducir a error. En cambio, mientras la marca no esté registrada la Oficina puede plantear objeciones por estos motivos. Si la Oficina descubre tales motivos de objeción durante el examen de una solicitud de inscripción de una cesión, deberá inscribirla si cumple todos los requisitos para ello y remitir a continuación el caso al examinador para que éste proceda a un examen adicional de los motivos de denegación absolutos, en su caso.
No obstante, para subsanar una objeción planteada por la Oficina basada en que, debido al cambio de t itularidad la marca puede inducir a er ror, el solicitante de l a inscripción no podrá alegar que la probabilidad de inducir a error existía en la fecha de presentación de la solicitud de MC.
El requisito de que la probabilidad de inducir al público a error se deduzca de forma manifiesta de los documentos impide a la Oficina basar sus objeciones en argumentos especulativos y acontecimientos hipotéticos futuros. El simple hecho de que los productos y servicios sean ofrecidos o comercializados en el futuro por una persona diferente no constituye en sí mismo un riesgo de inducir a error. No pueden hacerse especulaciones sobre el uso futuro de l a marca por parte del nuevo titular. En particular, no puede tomarse en consideración un posible cambio en la calidad de los productos vendidos bajo la marca. Sólo hay motivo para plantear objeciones a l a inscripción de la cesión si la marca puede inducir a error por sí misma en relación con su nuevo titular.
Las objeciones basadas en la probabilidad de que la marca induzca a er ror pueden subsanarse, en su caso, mediante la modificación de la solicitud de MC, con arreglo al artículo 43 del RMC, o de la MC registrada, con arreglo al artículo 48 del RMC. Para más información sobre la práctica de la Oficina con relación al artículo, 7, apartado 1, letra e) del RMC, véase Parte B, Sección 4, Motivos de denegación absolutos.
Cesión
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3.7 Procedimiento para la subsanación de las irregularidades
Artículo 17, apartado 7, del RMC Regla 31, apartado 6 y regla 67, apartado 1, del REMC
Si se detecta alguna de las irregularidades anteriormente señaladas, la Oficina invitará al solicitante a subsanarla en el plazo de dos meses desde la fecha de notificación. La notificación se dirigirá a la persona que haya solicitado la inscripción de la cesión o a su representante, si lo ha des ignado. La Oficina no i nformará automáticamente a l a otra parte en la cesión, a menos que en su caso resulte procedente.
Si la persona que formula la solicitud no subsana la irregularidad, no aporta las pruebas adicionales necesarias o no consigue convencer a la Oficina de que las objeciones no están justificadas, ésta denegará la solicitud.
4 Cesión parcial
Artículo 17, apartado 1, del RMC Regla 32 del REMC
La cesión parcial es una cesión referida sólo a una parte de los productos o servicios comprendidos en la MC o la solicitud de MC. Implica la distribución de la lista original de productos y servicios entre los que se mantienen en el registro o solicitud de MC restante y los correspondientes a una nueva lista. Si hay una cesión parcial, la Oficina emplea una terminología especial para identificar a l as marcas. Al inicio del procedimiento hay una marca «original», que es para la que se solicita una cesión parcial. Después del registro de la cesión, existirán dos marcas: una es una marca que ahora tiene menos productos y servicios y que se denomina la marca «restante» y otra es la marca «nueva» que tiene algunos de los productos y servicios de la marca original. La marca «restante» mantiene el número de marca comunitaria de la marca «original» mientras que la «nueva» marca tiene un nuev o número de m arca comunitaria.
La cesión no puede afectar al carácter unitario de la marca comunitaria, por lo tanto, una MC no puede ser cedida «parcialmente» a algunos territorios.
Si hay dudas acerca del carácter parcial o no de la cesión, la Oficina informará al solicitante de la inscripción y le invitará a hacer las aclaraciones pertinentes.
Puede haber también cesión parcial cuando la solicitud se refiere a más de una marca comunitaria o solicitudes de MC. Se aplicarán las reglas indicadas a continuación a todas las marcas o solicitudes de MC incluidas en la solicitud de cesión.
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4.1 Reglas para la distribución de las listas de productos y servicios
Artículo 43 del RMC Regla 2 y regla 32, apartado 1, del REMC
En la solicitud de i nscripción de una c esión parcial deben i ndicarse los productos y servicios a l os que se refiere (la lista de productos y servicios correspondientes al «nuevo» registro). Los productos y servicios se distribuirán entre la MC original o solicitud de MC y la nueva, de modo que no se superpongan. Las dos especificaciones reunidas no pueden resultar más amplias que la especificación original.
Por tanto, las indicaciones han de ser claras e inequívocas. Por ejemplo, si se trata de una MC referida a productos y servicios de varias clases y la «división» entre el nuevo y el antiguo registro se hace por clases completas, bastará con indicar las clases correspondientes al registro nuevo o al restante.
Si la solicitud de cesión parcial comprende productos y servicios ya mencionados expresamente en la lista original, la Oficina retendrá automáticamente los productos y servicios no mencionados en la solicitud de cesión de la MC o de la solicitud de MC originales. Por ejemplo: si la lista original comprende los productos A, B y C, y la solicitud se refiere a los productos C, la Oficina mantendrá los productos A y B en el registro restante y creará otro nuevo para los productos C.
De conformidad con la Comunicación nº 2/12 del Presidente de la Oficina de 20/6/2012, se considerará que las marcas comunitarias presentadas antes del 21/6/2012 que reivindiquen un título de clase concreta comprenden todos los productos y servicios incluidos en la lista alfabética de dicha clase en la edición de la Clasificación de Niza en vigor en el momento en que se llevó a cabo la presentación (véase la Comunicación nº 02/12, apartados V y VI).
Si la solicitud de cesión parcial se refiere a productos o servicios no expresamente mencionados en la lista original pero que encajan en el significado literal de un a indicación genérica en ella comprendida, será aceptada siempre que la lista no resulte ampliada. Para la valoración de s i se produce una limitación o una ampliación de la lista se utilizan las reglas generalmente aplicables a este tipo de situaciones (véanse las Directrices, Parte B, Examen, Sección 3, Clasificación).
No obstante, se considerará que las marcas presentadas el 21/6/2012 o más tarde que soliciten sólo las indicaciones generales de un título de clase en particular comprenden el significado literal de dicho título de clase y sólo podrán ser objeto de una cesión parcial (véase la Comunicación nº 02/12, apartados VII y VIII).
Se considerará que las marcas presentadas después del 21/6/2012 que reivindican las indicaciones generales de un título de c lase particular más la lista alfabética comprenden el significado literal de dicho título de clase más la lista alfabética de productos y servicios afectados por dicha clase en la edición de la Clasificación de Niza en vigor en el momento en el momento en que se llevó a cabo la presentación y sólo podrá ser objeto de cesión parcial (véase la Comunicación nº 02/12, apartados VII y VIII).
Cesión
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En todos los casos, se recomienda encarecidamente presentar una lista clara y precisa de los productos y servicios que se cederán, así como una lista clara y precisa de los productos y servicios que permanecen en el registro original. Además, debe aclararse la lista original. Por ejemplo, si la lista original se refería a «bebidas alcohólicas» y la cesión se refiere al «whisky» y la «ginebra», la lista original deberá modificarse para limitarla a las «bebidas alcohólicas, excepto el whisky y la ginebra».
4.2 Objeciones
Regla 31, apartado 6 y regla 32, apartado 3, del REMC
Si la solicitud no se ajusta a las reglas anteriormente explicadas, la Oficina invitará al solicitante de la inscripción a subsanar las irregularidades. Si no se subsanan, la Oficina denegará la solicitud.
Si, como consecuencia del intercambio de comunicaciones, la lista definitiva de productos y servicios del registro restante fuese diferente de la lista presentada en la solicitud de MC, la Oficina se pondrá en contacto no sólo con el nuevo titular, si éste es la parte solicitante de la inscripción de la cesión parcial, sino también con el titular original, que sigue siendo la persona facultada para disponer de l a lista del registro original. La Oficina hará los cambios en la lista original previo consentimiento del titular original. Si no s e consigue el acuerdo dentro del plazo señalado por la Oficina, la solicitud de inscripción de la cesión se denegará.
4.3 Creación de un nuevo registro o solicitud de MC
Artículo 88 del RMC Regla 32, apartado 4, reglas 88 y regla 89, del REMC
La cesión parcial da lugar a la creación de una nueva solicitud o registro de MC, para la cual la Oficina abrirá un expediente separado que estará constituido por una copia completa del expediente electrónico de l a solicitud o r egistro original de MC, la solicitud de i nscripción de la cesión y la correspondencia relativa a l a misma. Se asignará un nuevo número de expediente a esta nueva solicitud o registro. Este tendrá la misma fecha de presentación y, en su caso, de prioridad, que la solicitud o registro original de la MC. Si la cesión parcial se refiere a una solicitud de MC, la nueva solicitud estará sujeta a las restricciones en materia de consulta pública de archivos establecidas en el artículo 88 del RMC.
Con respecto a la solicitud o registro de MC original, la Oficina incluirá en su expediente una c opia de l a solicitud de i nscripción de l a cesión, que no i ncluirá normalmente copias de la correspondencia posterior relativa a la misma.
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5 Cesión en el curso de otros procedimientos y cuestiones relativas a las tasas
Artículo 17, apartados 6 y 7, del RMC
Sin perjuicio del derecho a actuar desde el momento en que la Oficina reciba la solicitud de i nscripción de la cesión cuando se hayan establecidos plazos, el nuevo titular se convertirá automáticamente en parte de cualquier procedimiento relativo a la marca en cuestión desde el momento de la inscripción de la cesión.
La presentación de la solicitud de inscripción de la cesión no tiene efectos sobre los plazos ya en curso o establecidos por la Oficina, incluidos los relativos al pago de tasas. No se establecerán nuevos plazos para el pago. El nuevo titular adquiere la obligación de pagar todas las tasas devengadas a partir de la fecha de inscripción de la cesión.
Por lo tanto, durante el período entre la presentación de la solicitud de inscripción de la cesión y la confirmación de la Oficina de su inscripción efectiva en el Registro o en el expediente, resulta importante que el titular original y el nuevo titular colaboren activamente en la comunicación de los plazos y la correspondencia recibida durante el procedimiento inter partes.
5.1 Cuestiones específicas relativas a las cesiones parciales
Regla 32, apartado 5, del REMC
En caso de c esión parcial, la nueva MC o s olicitud de MC estará en la misma fase procedimental que la MC o solicitud de MC original (restante). Todo plazo pendiente con respecto a la MC o a l a solicitud de MC original se considerará pendiente tanto para ésta como para la nueva. Tras la inscripción de la cesión, la Oficina tramitará cada MC o solicitud de MC con carácter independiente y las resolverá por separado.
Si la MC o la solicitud de MC está sujeta al pago de tasas y éstas han sido abonadas por el titular original, el nuevo titular no estará obligado a pagar recargo alguno. La fecha aplicable será la de inscripción de la cesión en el registro o en los expedientes. Por tanto, si la tasa correspondiente a la MC o la solicitud de MC pendiente se paga tras la presentación de la solicitud de inscripción de la cesión pero antes de que se realice ésta, no habrá que pagar recargo.
Artículo 26, apartado 2, del RMC Regla 4, regla 9, apartados 3 y 5, del REMC Artículo 2, apartados 2 y 4, del RTMC
Si la cesión parcial comprende una solicitud de MC y no se han pagado aún total o parcialmente las tasas por clase, la Oficina procederá a i nscribir la cesión en el expediente de la solicitud de MC restante y a crear una nueva solicitud de MC según lo anteriormente descrito.
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Si la solicitud de MC se refería originalmente a más de tres clases y requería, por tanto, el pago de tasas por clase, el examinador tramitará el caso, tras la inscripción de la cesión en los expedientes y la creación de una nueva solicitud de MC, del modo siguiente.
Si se hubieran pagado tasas por clase antes de la inscripción de la cesión pero no se debieran tales tasas porque la solicitud de MC restante se refiera a tres o menos de tres clases, no s e reembolsarán las cantidades pagadas, porque se abonaron correctamente en su momento.
En los demás casos, el examinador tramitará por separado la solicitud de MC restante y la nueva, sin exigir el pago de una nueva tasa de base por la nueva solicitud. Las tasas por clase correspondientes a la solicitud restante y a la nueva se determinarán con arreglo a la situación existente tras la inscripción de la cesión. Por ejemplo, si la solicitud original se refería a siete clases y la restante sólo a tres, mientras que la nueva se refiere a cuatro, no habrá que pagar tasas por clase por la solicitud restante, pero sí una t asa por clase por la nueva solicitud. Si la cesión afecta únicamente a algunos de los productos y servicios de una c lase particular y no a ot ros, dicha clase deberá abonarse tanto por la solicitud restante como por la nueva solicitud. Si la Oficina ha señalado ya un plazo para el pago de la tasa por clase y éste aún no ha expirado, el plazo se cancelará para permitir esta determinación en función de l a situación tras la inscripción de la cesión.
Artículo 47, apartados 1, 3 y 4, del RMC Regla 30, apartados 2 y 4, del REMC
Si la solicitud de inscripción de una cesión parcial se refiere a un registro de MC cuya renovación debe solicitarse, es decir, si se presenta dentro de los seis meses anteriores a la expiración del registro original y hasta seis meses después de la misma, la Oficina procederá a inscribir la cesión y tramitará dicha renovación y sus correspondientes tasas del modo siguiente.
Si no se ha presentado la solicitud de renovación y no se han pagado las tasas antes de la inscripción de la cesión, se aplican las reglas generales, incluidas las relativas al pago de tasas, tanto al registro restante como al nuevo (solicitudes separadas, pago separado de tasas, en su caso).
Si se ha presentado la solicitud de renovación antes de la inscripción de la cesión, tal solicitud será también válida para la nueva MC. No obstante, aunque el titular original sigue siendo parte en el procedimiento de renovación del registro de MC restante, el nuevo titular se convierte automáticamente en parte del procedimiento de renovación del nuevo registro.
En estos casos, si se ha presentado una s olicitud de r enovación pero no s e han pagado las correspondientes tasas antes de la inscripción de la cesión, las tasas que deben pagarse se determinarán con arreglo a l a situación existente tras dicha inscripción. Esto significa que tanto el titular del registro de MC restante como el del nuevo registro han de pagar la tasa de base de renovación y todas las tasas por clase.
Si además de p resentar una s olicitud de renovación antes de l a inscripción de l a cesión se han pagado también antes de esa fecha todas las tasas de renovación correspondientes, no habrá que pagar tasas adicionales de renovación tras la citada
Cesión
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inscripción. Por otra parte, no habrá reembolso alguno por razón de cualesquiera tasas por clase ya abonadas.
5.2 Cesión y procedimiento inter partes
Si se presenta una solicitud de inscripción de la cesión durante un procedimiento inter partes, pueden pl antearse diferentes situaciones. Para los registros o solicitudes de MC anteriores en que esté basada la oposición/anulación, el nuevo titular sólo podrá ser parte del procedimiento (o presentar observaciones) una vez que la Oficina haya recibido la solicitud de inscripción de la cesión. El principio básico consiste en que el nuevo titular se subroga en la posición del titular original en el procedimiento. La práctica de la Oficina en relación con las cesiones en oposición se describe en las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales, apartado 6.5, Cambio de partes.
6 Inscripción, notificación y publicación
6.1 Inscripción
Artículo 17, apartado 5, del RMC Regla 31, apartado 8 y regla 84, apartado 3, letra g), del REMC
Si la solicitud de inscripción de una cesión cumple todos los requisitos, si afecta a una MC registrada, la cesión se inscribirá en el Registro o, en caso de solicitud de MC, la Oficina inscribirá la cesión en el correspondiente expediente.
La inscripción contendrá los siguientes datos:
• la fecha de inscripción de la cesión; • el nombre y la dirección del nuevo titular; • el nombre y la dirección del representante del nuevo titular, si lo hay.
En caso de cesión parcial, la inscripción contendrá asimismo:
• la mención del número de la inscripción original y de la nueva inscripción; • la lista de productos y servicios restantes en la inscripción original; y • la lista de productos y servicios de la nueva inscripción.
6.2 Notificación
La Oficina informará al solicitante de la inscripción sobre el registro de la cesión.
Si se refiere también al menos a una solicitud de MC, la notificación deberá contener la correspondiente mención a la inscripción de la cesión en los expedientes de la Oficina.
Con respecto a la notificación a l a otra parte, hay que distinguir entre los casos de cesión completa y los de cesión parcial.
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Artículo 17, apartado 5, del RMC Regla 84, apartado 5, del REMC
En caso de c esión completa, la notificación se remitirá a l a parte que presentó la solicitud de inscripción de la cesión, es decir, al solicitante de dicha inscripción.
No se informará a la otra parte:
• si el representante del titular original es designado también como representante del nuevo titular (en dicho caso el representante recibirá una comunicación en nombre de ambas partes); o
• si el titular original ha dejado de existir (muerte, fusión).
En los demás casos, se informará a la otra parte sobre el resultado del procedimiento, es decir, sobre la inscripción de la cesión. La otra parte no recibirá información durante el procedimiento, salvo si surgen graves dudas sobre la legalidad de la solicitud de inscripción de la cesión o sobre la propia cesión.
Regla 32, apartados 3 y 4, del REMC
En caso de cesión parcial, tanto el titular de la MC restante y el titular de la nueva MC deben recibir una notificación, pues afecta necesariamente a dos solicitudes o registros de MC. Por tanto, se emitirá una notificación separada para el nuevo solicitante por cada solicitud de MC parcialmente cedida. En caso de cesión parcial de un registro de MC, la Oficina emitirá una notificación al nuevo titular por cada inscripción, que contendrá, en su caso, indicaciones relativas al pago de las tasas de renovación. Se emitirá una notificación separada al titular del registro de MC restante.
Por otra parte, si en c aso de c esión parcial la lista de pr oductos y servicios que quedarán en la solicitud o registro de MC original ha de ser aclarada o modificada, esta aclaración o modificación requerirá la aceptación del titular de la solicitud o registro de MC restante (véase el apartado 4.2 anterior).
6.3 Publicación
Artículo 17, apartado 5, del RMC Regla 84, apartado 3, letra g), regla 85, apartado 2, del REMC
Con respecto a los registros de MC, la Oficina publicará en la parte C del Boletín de Marcas Comunitarias las inscripciones del Registro de cesiones.
Artículo 39 del RMC Regla 12 y regla 31, apartado 8, del REMC
Si la solicitud de i nscripción de una cesión se refiere a una solicitud de M C ya publicada con arreglo a lo dispuesto en el artículo 39 del RMC y en la Regla 12 del REMC, la publicación del registro de la marca y la inscripción mencionarán al nuevo
Cesión
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titular desde el principio. La publ icación de la inscripción hará referencia a l a publicación previa.
Artículo 39 del RMC Regla 12 del REMC
Si la cesión se refiere a una solicitud de MC no publicada, la publicación con arreglo al artículo 39 del RMC y la regla 12 del REMC contendrá el nombre del nuevo titular sin indicación alguna de haber se producido una cesión de l a solicitud. Esto mismo se aplicará en caso de que la cesión de una solicitud de MC no publicada tenga carácter parcial.
7 Cesiones de dibujos y modelos comunitarios registrados
Artículo 1, apartado 3, artículo 27, artículo 28, artículo 33, artículo 34 y artículo 107, apartado 2, letra f), del RDC Artículo 23, artículo 61, apartado 2, artículo 68, apartado 1, letra c) y artículo 69, apartado 2, letra i), del REDC Anexos nº 16 y 17 del RTDC
Las disposiciones legales incluidas en el RDC, REDC y RTDC para las cesiones concuerdan con las disposiciones correspondientes del RMC, REMC y RTMC.
Por lo tanto, tanto los principios como el procedimiento de inscripción de las cesiones de marcas son aplicables mutatis mutandis a los dibujos y modelos comunitarios.
Sólo existen algunas excepciones y especificidades, que se señalan a continuación.
7.1 Derechos de uso anterior para los DMC
Artículo 22, apartado 4, del RDC
El derecho basado en el uso anterior de un DMC sólo podrá transmitirse, si el tercero que es titular del derecho antes de l a fecha de presentación o de prioridad de l a solicitud de DMC es una empresa, junto con la parte de esa empresa en el marco de la cual se haya efectuado el uso o se hayan realizado los preparativos.
7.2 Tasas
Anexos nº 16 y 17 del RTDC
Debe abonarse una tasa de 200 EUR por dibujo o modelo cuya cesión vaya a inscribirse, y no por varias solicitudes. Lo mismo puede decirse de la tasa máxima de 1000 EUR si se presentan varias solicitudes.
Ejemplo 1: De una solicitud múltiple para 10 dibujos o modelos, se ceden 6 dibujos o modelos al mismo cesionario. La tasa es de 1000 EUR siempre que
Cesión
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se presente una única solicitud de inscripción para estas 6 cesiones o si se presentan en el mismo día varias solicitudes de inscripción de cesiones.
Ejemplo 2: De una solicitud múltiple para 10 dibujos o modelos, se ceden 5 dibujos o modelos al mismo cesionario. La cesión también se refiere a otro dibujo o modelo que no está incluido en la solicitud múltiple. La tasa es de 1000 EUR siempre que:
• sólo se presente una ú nica solicitud de i nscripción de di chas 6 cesiones o se presentan varias solicitudes el mismo día; y
• el titular del dibujo o m odelo comunitario y el cesionario son los mismos en los 6 casos.
8 Cesiones de marcas internacionales
Gracias al Sistema de Madrid se puede r ealizar el «cambio de titularidad» de u n registro internacional. Todas las solicitudes de inscripción de un cambio de titularidad deberán presentarse mediante el formulario MM5 directamente en la Oficina Internacional por el titular de la inscripción o en la Oficina nacional por el titular de la inscripción o en la Oficina nacional por el nuevo titular (cesionario). El nuevo titular no podrá presentar la solicitud de i nscripción de l a cesión directamente en la Oficina Internacional. No podrá utilizar un formulario de Solicitud de inscripción de la OAMI.
La información detallada sobre los cambios de t itularidad puede enc ontrarse en l os apartados B.II.60.01-67.02 de la Guía para el Registro Internacional de Marcas según el Arreglo de Madrid y el Protocolo de Madrid (www.wipo.int/madrid/es/guide/).
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE E
OPERACIONES DE REGISTRO
SECCIÓN 3
LA MARCA COMUNITARIA COMO OBJETO DE PROPIEDAD
CAPÍTULO 2
LICENCIAS
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Índice
1 Introducción............................................................................................... 4 1.1 Contratos de licencia .................................................................................4 1.2 Ventajas del registro de una licencia ........................................................5
2 Registro de una licencia para una marca comunitaria o una solicitud de marca comunitaria................................................................ 6 2.1 Formulario y solicitudes de más de una licencia.....................................6 2.2 Lenguas ......................................................................................................6 2.3 Tasas...........................................................................................................7 2.4 Solicitantes y contenido obligatorio de la solicitud.................................7
2.4.1 Solicitantes ..................................................................................................... 7 2.4.2 Indicaciones obligatorias respecto a l a marca comunitaria objeto de la
licencia y el licenciatario ................................................................................. 8 2.4.3 Requisitos aplicables al solicitante – Firma, prueba de la licencia y
representación ................................................................................................ 8 2.4.4 Representación ............................................................................................ 11
2.5 Información opcional en la solicitud.......................................................11 2.6 Examen de la solicitud de registro..........................................................12
2.6.1 Tasas ............................................................................................................ 12 2.6.2 Examen de los requisitos formales obligatorios ........................................... 12 2.6.3 Examen de los elementos opcionales.......................................................... 14
2.7 Procedimiento de registro y publicaciones............................................15
3 Cancelación o modificación de una licencia relativa a u na marca comunitaria o una solicitud de marca comunitaria .............................. 16 3.1 Competencia, lenguas, presentación de la solicitud .............................16 3.2 Solicitante .................................................................................................17
3.2.1 Cancelación de una licencia......................................................................... 17 3.2.2 Modificación de una licencia......................................................................... 17
3.3 Contenido de la solicitud .........................................................................18 3.4 Tasas.........................................................................................................19
3.4.1 Cancelación de una licencia......................................................................... 19 3.4.2 Modificación de una licencia......................................................................... 19
3.5 Examen de la solicitud.............................................................................19 3.5.1 Tasas ............................................................................................................ 19 3.5.2 Examen de la Oficina ................................................................................... 19
3.6 Registro y publicación .............................................................................20
4 Cesión de una licencia para una marca comunitaria o solicitud de marca comunitaria................................................................................... 20
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4.1 Definición de cesión de una licencia ......................................................20 4.2 Normas aplicables....................................................................................20
5 Registro de licencias relativas a dibujos y modelos comunitarios registrados............................................................................................... 21 5.1 Dibujos y modelos comunitarios registrados ........................................21 5.2 Solicitudes múltiples de dibujos y modelos comunitarios
registrados................................................................................................22
6 Registro de licencias para marcas internacionales.............................. 23
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1 Introducción
Artículos 22, 23 y 24, del RMC Artículos 27, 32 y 33, del RCD
Las marcas comunitarias (MC) registradas y las solicitudes de marca comunitaria podrán ser objeto de contratos de licencia (licencias).
Tanto los dibujos y modelos comunitarios registrados (DMC) como las solicitudes de registro de un dibujo o modelo comunitario podrán ser objeto de licencias.
En los apartados 1 y 4 que figuran a continuación se examinan las licencias de marca relativas a l as marcas comunitarias y a l as solicitudes de marcas comunitarias. Las disposiciones contenidas en los reglamentos RDC y REDC que regulan las licencias de dibujos y modelos son prácticamente idénticas a las disposiciones equivalentes respectivas del RMC y del REMC. En consecuencia, la exposición que figura a continuación se aplicará mutatis mutandis a los dibujos y modelos comunitarios. En el apartado 5 se indican las excepciones y especificidades inherentes a los dibujos y modelos comunitarios. Las excepciones y especificidades inherentes a las marcas internacionales se detallan en el apartado 6.
1.1 Contratos de licencia
Una licencia de marca es un contrato en virtud del cual el titular o solicitante (en lo sucesivo, el «titular») de una marca (cesionario) autoriza a un tercero (el licenciatario) el uso de l a marca en el tráfico económico, al tiempo que conserva su titularidad, conforme a las modalidades y condiciones estipuladas en el contrato.
Una licencia remite a aquella situación en la que los derechos del licenciatario respecto a la MC derivan de una relación contractual con el titular. La mera tolerancia o consentimiento unilateral del titular de la marca al uso de la misma por parte de un tercero no constituye una licencia.
Artículo 16, del RMC
El RMC no es competente para establecer disposiciones exhaustivas y unificadas aplicables a las licencias de marcas comunitarias o solicitudes de marcas comunitarias. El artículo 16 del RMC más bien hace referencia a la legislación de un E stado miembro por lo que a la adquisición, la validez y los efectos de la MC como objeto de propiedad se refiere. A este fin, una licencia de marca comunitaria se asimila, en su totalidad y para el conjunto del territorio de la Unión Europea, a una licencia relativa a una marca registrada en el Estado miembro en el que el titular o el solicitante de la MC tenga su sede o su domicilio. Si el titular no tuviese su sede o domicilio en un Estado miembro, se asimilará a una licencia para una marca registrada en el Estado miembro en el que dicho titular cuenta con un establecimiento. Si el titular no tuviera un establecimiento en un E stado miembro, se asimilará a una licencia para una marca registrada en España.
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Esta regla solo es aplicable, no obstante, en la medida en que los artículos 17 a 24, del RMC no prevean disposiciones al contrario.
El artículo 16, del RMC se limita a l os efectos de una l icencia como objeto de propiedad y no s e extiende al Derecho contractual. Este artículo no estipula la legislación aplicable ni la validez de un contrato de licencia, lo que significa que el RMC no af ecta a la libertad de las partes contratantes de someter la licencia a una legislación nacional concreta.
1.2 Ventajas del registro de una licencia
Artículo 22, apartado 5; artículo 23, apartados 1 y 2; artículo 50, apartado 3, del RMC
La demanda de inscripción en el registro de un contrato de licencia no es obligatoria. Además, cuando una parte en un procedimiento ante la Oficina debe aportar la prueba del uso de una m arca comunitaria, si un licenciatario hubiera ejercido dicho uso, no será necesario haber inscrito la licencia en el registro para que dicho uso sea considerado como hecho con el consentimiento del titular, conforme al artículo 15, apartado 2, del RMC. Ahora bien, dicho registro presenta ciertas ventajas.
a) Habida cuenta de lo dispuesto en el artículo 23, apartado 1, del RMC, cuando terceras partes hubieran podido adquirir derechos sobre la marca o haber inscrito en el registro derechos sobre la marca que fuesen incompatibles con la licencia registrada, el licenciatario podrá prevalerse de los derechos conferidos por dicha licencia únicamente:
• si la licencia se hubiera inscrito en el registro de marcas comunitarias, o
• a falta de inscripción de la licencia en el registro, si tales derechos hubiesen sido adquiridos por una tercera parte con posterioridad a la fecha de cualquier acto jurídico mencionado en los artículos 17, 19 y 22, del RMC (en particular la cesión, un derecho real o una licencia anterior) teniendo conocimiento de la existencia de licencia.
b) En el caso de que una licencia sobre una marca comunitaria esté inscrita en el registro, la renuncia total o parcial a dicha marca por parte de su titular no se considerará inscrita en dicho Registro salvo que el titular justifique haber informado al licenciatario sobre su intención de renunciar.
Por consiguiente, el titular de una l icencia registrada tiene derecho a ser informado con antelación por el titular de la marca sobre su intención de renunciar a la misma.
c) En caso de que una licencia para una marca comunitaria esté inscrita en el registro, la Oficina notificará al licenciatario, con al menos seis meses de antelación a la fecha de expiración de dicha inscripción en el registro, que el registro está próximo a su expiración. La Oficina notificará igualmente al licenciatario sobre toda pérdida de derechos, así como sobre la expiración de la inscripción en el registro, llegado el caso.
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d) La inscripción en el registro de las licencias y su modificación y/o anulación son importantes para mantener la veracidad del registro, especialmente en el caso de los procedimientos inter partes.
2 Registro de una licencia para una marca comunitaria o una solicitud de marca comunitaria
Artículo 22, apartado 5, del RMC Reglas 33, 34, y regla 84, apartado 3, letra j), del REMC
Una licencia podrá ser objeto de registro tanto para las solicitudes de marca comunitaria como para las marcas comunitarias.
La solicitud de registro de una licencia deberá cumplir las siguientes condiciones.
2.1 Formulario y solicitudes de más de una licencia
Regla 83, apartado 1, letra e), y regla 95, letras a) y b), del REMC
Se recomienda vivamente presentar la solicitud de registro de una licencia relativa a una marca comunitaria por medio del formulario de solicitud de registro de la Oficina. Este formulario podrá obtenerse gratuitamente en las lenguas oficiales de la Unión Europea y puede descargarse desde el sitio web de la OAMI.
Podrá emplearse cualquier versión lingüística del formulario, siempre que se cumplimente en alguna de las lenguas a las que se hace alusión en el siguiente apartado 2.2. Esto afecta, en particular, a la lista de productos y servicios y/o al territorio.
Regla 31, apartado 7, y regla 33, apartado 1, del REMC
Se podrá presentar una única solicitud de registro de una licencia para dos o más marcas comunitarias o solicitudes de marcas comunitarias, siempre que en cada caso se trate del mismo titular inscrito y del mismo beneficiario y que los contratos tengan las mismas cláusulas, limitaciones y modalidades en todos los casos (véase el apartado 2.5 a continuación).
2.2 Lenguas
Regla 95, letra a), del REMC
Toda solicitud de registro de una licencia relativa a una solicitud de marca comunitaria podrá presentarse en la primera o la segunda lengua indicada en la solicitud de marca comunitaria.
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Regla 95, letra b), del REMC
Toda solicitud de registro de una licencia relativa a una marca comunitaria registrada deberá presentarse en una de las cinco lenguas de la Oficina, a saber: español, alemán, francés, inglés o italiano.
2.3 Tasas
Artículo 162, apartado 2, letras c) y d), del RMC Regla 33, apartados 1 y 4, del REMC Artículo 2, apartado 23, del RTMC
No se considerará presentada la solicitud de registro de una licencia mientras no se haya abonado la tasa exigida. El importe de dicha tasa asciende a 200 EUR por cada marca comunitaria para cuya licencia se solicite el registro.
No obstante, en caso de que se soliciten varias inscripciones de licencias en una única e idéntica solicitud, y siempre que el titular inscrito y el licenciatario sean idénticos y las cláusulas contractuales sean las mismas en todos los casos, la tasa no superará los 1 000 EUR.
Este importe máximo se aplicará igualmente cuando se presenten varias solicitudes de registro de licencia simultáneamente, siempre que hubiesen podido ser objeto de una única solicitud y el titular registrado y el licenciatario sean idénticos en todos los casos. Además, las cláusulas contractuales deben ser idénticas. Por ejemplo, no pueden presentarse en una misma solicitud una licencia exclusiva y una licencia no exclusiva, ni siquiera cuando se refieran a las mismas partes.
Una vez abonada l a tasa correspondiente, no se reembolsará en caso de que la solicitud de registro de la licencia sea desestimada o retirada.
2.4 Solicitantes y contenido obligatorio de la solicitud
2.4.1 Solicitantes
Artículo 22, apartado 5, del RMC
Estarán autorizados para presentar la solicitud de registro de una l icencia ante la Oficina:
a) el titular de la MC, o
b) el titular de la MC, conjuntamente con el licenciatario, o
c) el licenciatario.
Las condiciones formales que deberá cumplir la solicitud dependerán del estatuto del solicitante. Se recomienda hacer uso de la primera o de la segunda opción, ya que permiten agilizar y simplificar la tramitación de la solicitud de registro de la licencia.
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2.4.2 Indicaciones obligatorias respecto a la marca comunitaria objeto de la licencia y el licenciatario
Regla 31 y regla 33, apartado 1, del REMC
La solicitud de registro de una licencia deberá contener la siguiente información.
Regla 31, apartado 1, letra a); regla 33, apartado 1, del REMC
a) El número de registro de la MC en cuestión. Si la solicitud se refiere a varias MC, deberán indicarse todos los números de registro.
Regla 1, apartado 1, letra b); regla 31, apartado 1, letra b); y regla 33, apartado 1, del REMC
b) El nombre, la dirección y la nacionalidad del licenciatario, así como el Estado en el que tenga su domicilio, sede o establecimiento.
Regla 1, apartado 1, letra e); regla 31, apartado 2 y regla 33, apartado 1, del REMC
c) Si el licenciatario designa a un representante, deberán indicarse el nombre y el número de i dentificación atribuidos por la Oficina. Si al representante no se le hubiera atribuido aún un número de identificación, deberá indicarse la dirección profesional.
2.4.3 Requisitos aplicables al solicitante – Firma, prueba de la licencia y representación
Regla 79 y regla 82, apartado 3, del REMC
Los requisitos relativos a la firma, la prueba de la licencia y la representación varían en función del solicitante. Cuando en las comunicaciones electrónicas se exija el requisito de una firma, la indicación del nombre del remitente se considerará equivalente a la firma.
2.4.3.1 Solicitud formulada únicamente por el titular de la MC
Regla 1, apartado 1, letra b); regla 33, apartado 1, del REMC
Cuando únicamente formule la solicitud el titular de la MC, deberá figurar su firma.
No será necesario aportar ninguna prueba de la licencia.
La Oficina no informará al licenciatario sobre la solicitud de registro de la licencia. Sin embargo, sí le informará sobre la inscripción de la licencia en el Registro.
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Cuando el licenciatario presente una declaración en la Oficina oponiéndose al registro de la licencia, la Oficina transmitirá la declaración al titular de la MC, únicamente a título informativo. La Oficina no adoptará ninguna medida adicional en relación con dicha declaración si bien inscribirá la licencia. Una vez registrada la licencia, todo licenciatario que no esté de acuerdo con el registro de la licencia podrá utilizar el procedimiento por el que se solicita la cancelación o modificación de la licencia (véase el apartado 3 infra).
La Oficina no tendrá en cuenta el hecho de que las partes hayan convenido o no registrar una licencia en la Oficina, aunque hayan acordado un contrato de l icencia. Todo litigio sobre la procedencia o no de su registro y sobre el contenido del mismo deberá ser resuelto por las partes interesadas de conformidad con la legislación nacional correspondiente (artículo 16, del RMC).
2.4.3.2 Solicitud presentada conjuntamente por el titular de la MC y el licenciatario
Cuando la solicitud la formulen conjuntamente el titular de la MC y su licenciatario, deberán firmarla tanto el titular de la MC como el licenciatario.
En este caso, la firma de ambas partes constituirá una prueba de la licencia.
Si se detecta una irregularidad de forma en relación con la firma del licenciatario o el representante, se aceptará la solicitud en la medida en que también hubiera sido aceptable si hubiera sido presentada únicamente por el titular de la marca comunitaria.
Lo mismo será válido en c aso de irregularidad en relación con la firma o el representante del titular de la MC, en la medida en que la solicitud sería aceptable de ser presentada únicamente por el licenciatario.
2.4.3.3 Solicitud formulada únicamente por el licenciatario
La solicitud también puede presentarla únicamente el licenciatario. En este caso, deberá llevar su firma.
Además, se deberá aportar una prueba de la licencia.
2.4.3.4 Prueba de la licencia
La solicitud de registro se admitirá como prueba suficiente de la licencia si va acompañada de cualquiera de los siguientes documentos probatorios.
• Una declaración firmada por el titular de la MC o su representante de que el titular consiente el registro de la licencia.
De acuerdo con la regla 31, apartado 5, letra a), del REMC, se considerará igualmente prueba suficiente si la solicitud de registro de la licencia está firmada por ambas partes. Este caso ya se ha tratado en el apartado 2.4.3.2 anterior.
• El acuerdo de licencia, o un extracto, en el que se indiquen las partes y la marca para la que se concede la licencia, acompañado de las firmas.
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Bastará presentar el acuerdo relativo a la licencia. En muchos casos, las partes del contrato de licencia optarán por no revelar todos los detalles, que podrían incluir información confidencial sobre los derechos derivados de l a licencia u otras condiciones de la licencia. En estos casos, bastará con que se presente únicamente una parte o un ex tracto del acuerdo relativo a l a licencia, siempre que en él figure la identidad de las personas que son parte del acuerdo de licencia, el hecho de que la MC en cuestión es objeto de una licencia y las firmas de ambas partes. Todos los demás elementos podrán omitirse u ocultarse.
• Una declaración de licencia no certificada que utilice el modelo de formulario internacional de l a OMPI de p etición de i nscripción de una l icencia (que se adjunta en el anexo de la recomendación conjunta relativa a l as licencias de marca, adoptada por la Asamblea de la Unión de París para la Protección de la Propiedad Industrial y la Asamblea General de la OMPI, el 25 de septiembre - 3 de octubre de 2000). El formulario deberá ser firmado tanto por el titular de la MC, o de su representante, como por el licenciatario o su representante y puede encontrarse en:
https://www.wipo.int/export/sites/www/about-ip/es/development_iplaw/pdf/pub835a.pdf.
Bastará con que se presente una declaración de licencia no certificada mediante el formulario tipo de la OMPI.
Los documentos originales formarán parte del expediente y, por lo tanto, no s erán devueltos a l a persona que los hubiera presentado. Bastará con simples fotocopias. No será necesario autenticar o legalizar el original o la fotocopia.
Regla 95, letras a) y b); regla 96, apartado 2, del REMC
Los documentos que constituyan la prueba de la licencia deberán presentarse:
a) en la lengua de la Oficina que se haya convertido en lengua de procedimiento del registro de la licencia; véase el apartado 2.1 anterior;
b) en cualquiera de las lenguas oficiales de la Comunidad distinta de la lengua de procedimiento; en e se caso, la Oficina podrá requerir una traducción del documento a una lengua de la Oficina, que deberá presentarse en el plazo fijado por esta última.
Cuando los documentos acreditativos no se presenten ni en una lengua oficial de la Unión Europea, ni en la lengua de los procedimientos, la Oficina podrá requerir una traducción a la lengua del procedimiento o, a elección de l a parte que solicite el registro de la licencia, a cualquiera de las lenguas de la Oficina. La Oficina fijará un plazo límite de dos meses desde la fecha de notificación de dicha comunicación. Si no se aporta la traducción dentro de ese plazo, el documento no será tenido en cuenta y se considerará que no ha sido presentado.
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2.4.4 Representación
Artículo 92, apartado 2, y artículo 93, apartado 1, del RMC
Se aplican las normas generales sobre representación (véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional).
Cuando el solicitante de la inscripción no tenga domicilio o establecimiento industrial o comercial efectivo en el territorio de la Unión Europea y haya formulado la solicitud por sí solo, el incumplimiento del requisito de representación abocará a que la solicitud no sea tramitada. Se notificará al solicitante de inscripción mediante una nota informativa y se reembolsará cualquier tasa abonada. El solicitante de la inscripción es libre de presentar una nueva solicitud.
2.5 Información opcional en la solicitud
Regla 34, del REMC
En función de la naturaleza de l a licencia, la solicitud de registro podrá incluir la solicitud de registro de la licencia junto con otras indicaciones, en concreto las mencionadas bajo los apartados a) a e) que figuran a continuación. Estas indicaciones podrán formularse a título individual o en combinación, para una l icencia (p. ej., una licencia exclusiva limitada en el tiempo) o para varias licencias (p. ej., una licencia exclusiva para «A» en lo que se refiere al Estado miembro «X» y otra para «B» con respecto al Estado miembro «Y»). La Oficina inscribirá estas indicaciones en el registro si en la propia solicitud de registro de la licencia se insta de manera expresa la inscripción de las mismas. A falta de esa indicación expresa, la Oficina no inscribirá en el registro ninguna de las indicaciones incluida en el contrato de licencia que se presentan, por ejemplo, como medio de prueba de la licencia.
No obstante, si se solicita la inscripción en e l Registro de una o más de es tas indicaciones, deberá incluirse la siguiente información:
Regla 34, apartado 1, letra c) y regla 34, apartado 2, del REMC
a) Cuando se solicite el registro de una l icencia sólo para una parte de los productos o servicios, deberán indicarse los productos o servicios para los que se haya concedido la licencia.
Regla 34, apartado 1, letra d), regla 34, apartado 2, del REMC
b) Cuando se solicite el registro de una l icencia como licencia limitada territorialmente, la solicitud deberá indicar para qué parte de la Unión Europea se ha concedido la licencia. La parte de la Unión Europea podrá consistir en uno o varios Estados miembros o varias regiones administrativas de un Estado miembro.
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Artículo 22, apartado 1, del RMC Regla 34, apartado 1, letra a), del REMC
c) Cuando se pretenda obtener el registro de una licencia exclusiva, deberá realizarse una declaración en este sentido.
Regla 34, apartado 1, letra e), del REMC
d) Cuando se solicite el registro de una licencia concedida por un período de tiempo limitado, deberá indicarse la fecha de expiración de la licencia. También podrá indicarse la fecha de inicio de la licencia.
Regla 34, apartado 1, letra b), del REMC
e) Cuando la licencia sea concedida por un licenciatario cuya licencia ya esté inscrita en el Registro de Marcas Comunitarias, la solicitud de registro podrá indicar que es para una sublicencia. Las sublicencias no pueden inscribirse si no se ha inscrito antes la licencia principal.
2.6 Examen de la solicitud de registro
2.6.1 Tasas
Regla 33, apartado 2, del REMC
En caso de que no se haya recibido la tasa exigida, la Oficina comunicará al solicitante del registro que la solicitud no se considera presentada por no haberse abonado dicha tasa. No obstante, podrá presentarse una nueva solicitud en cualquier momento, siempre que se abone la tasa correspondiente desde un principio.
2.6.2 Examen de los requisitos formales obligatorios
Regla 33, apartado 3, del REMC
La Oficina verificará si la solicitud de registro de licencia cumple con los requisitos formales a que se refiere el apartado 2.4 anterior (indicación del/de los número(s) de la(s) MC y de l a información exigida en relación con el licenciatario, y del representante del licenciatario, si procede).
No se examinará la validez del contrato de licencia.
Artículo 93, apartado 1, del RMC Reglas 33, 76 y 77, del REMC
La Oficina verificará si la solicitud de registro de la licencia está debidamente firmada. Cuando la solicitud esté firmada por el representante del licenciatario, la Oficina o, en el contexto de procedimientos inter partes, la otra parte en los procedimientos podrá
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exigir un poder. En este caso, si no se presenta un poder, el procedimiento continuará como si no se hubiera designado ningún representante. En el momento en que la solicitud de registro de la licencia esté firmada por el representante del titular que ya ha sido designado representante para la MC en cuestión, se habrán cumplido los requisitos relativos a la firma y los poderes.
Artículo 92, apartado 2, y artículo 93, apartado 1, del RMC
Se examinará si el solicitante del registro (es decir, el titular de la MC o el licenciatario) está obligado a tener un representante ante la Oficina (véase el apartado 2.4.4 anterior).
Regla 33, apartado 3, del REMC
La Oficina notificará por escrito al solicitante del registro cualquier irregularidad detectada en la solicitud. Si no se subsanan las irregularidades en el plazo fijado en dicha comunicación, que normalmente será de dos meses a partir de la notificación, la Oficina denegará la solicitud de registro de la licencia.
Cuando la solicitud hubiera sido presentada conjuntamente por el titular de la MC y por el licenciatario, la Oficina se comunicará con el titular de la marca comunitaria y enviará una copia al segundo.
Si el licenciatario también hubiera presentado y firmado la solicitud, no podrá impugnar la existencia o el alcance de la licencia.
Cuando la solicitud de registro de la licencia la haya presentado el titular de la MC por sí solo, la Oficina no i nformará al licenciatario sobre la solicitud de inscripción. El examen de la prueba de la licencia se realizará de oficio. La Oficina no tendrá en cuenta las declaraciones o alegaciones del licenciatario en relación con la existencia o el alcance de la licencia o su registro; el licenciatario no podrá oponerse al registro de una licencia.
Regla 33, apartado 3, del REMC
Si la solicitud la presenta por el licenciatario sobre la base de una copia del contrato de licencia, y en caso de que la Oficina albergue dudas razonables sobre la veracidad de los documentos, se dirigirá por escrito al licenciatario invitándole a despejar dichas dudas. Incumbirá al licenciatario en ese momento demostrar que la licencia existe, es decir, tendrá que convencer a la Oficina de la veracidad de los documentos y de su contenido. En este caso, la Oficina podrá, conforme a su facultad de examen de oficio (artículo 76, apartado 1, del RMC), invitar al titular de la MC a presentar observaciones. Si el titular afirma que los documentos están falsificados, ello bastará para que la Oficina deniegue el registro de una licencia, a menos que el licenciatario presente una orden judicial de un Estado miembro de la UE a su favor. Si no es posible despejar las dudas, se denegará el registro de la licencia. En este caso, el procedimiento siempre será ex parte, aunque se escuche al titular de la MC; no será parte en los procedimientos.
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2.6.3 Examen de los elementos opcionales
Regla 34, del REMC
Cuando se solicite el registro de la licencia como una de las siguientes opciones:
• una licencia exclusiva, • una licencia temporal, • una licencia limitada territorialmente, • una licencia limitada a determinados productos o servicios, o • una sublicencia,
la Oficina examinará si se han indicado los pormenores a los que se hace referencia en el apartado 2.4 supra.
Regla 34, apartados 1 y 2, del REMC
Por lo que se refiere a la indicación «licencia exclusiva», la Oficina sólo aceptará este término y no ac eptará ningún otro enunciado. Si no s e ha i ndicado expresamente «licencia exclusiva», la Oficina considerará que la licencia no es exclusiva.
Cuando la solicitud de registro indique que es para una licencia limitada a determinados productos o s ervicios amparados por la marca comunitaria, la Oficina verificará si dichos productos o servicios están debidamente agrupados y si realmente están amparados por la marca comunitaria.
Regla 34, apartado 1, letra b), del REMC
Por lo que se refiere a una sublicencia, la Oficina verificará si ha sido concedida por un licenciatario cuya licencia ya esté inscrita en el Registro. La Oficina denegará el registro de una sublicencia si la licencia principal no se hubiera inscrito en el Registro. No obstante, la Oficina no comprobará la validez de la solicitud de registro de una sublicencia como licencia exclusiva cuando la licencia principal no sea una licencia exclusiva ni examinará si el contrato de licencia principal excluye la concesión de sublicencias.
Corresponde al titular prestar atención para no c elebrar ni registrar contratos incompatibles así como cancelar o modificar las inscripciones que ya no son válidas. Por ejemplo, si una licencia exclusiva ha sido registrada sin limitación a determinados productos ni a un territorio, y se solicita el registro de otra licencia exclusiva, la Oficina registrará esta segunda licencia, incluso si ambas licencias parecen incompatibles a primera vista. Se presume que el segundo contrato de licencia es incompatible con el primer contrato de licencia desde el inicio (y la inscripción simplemente no es precisa en relación con el territorio ni los productos) o tras un cambio de la situación contractual, que no haya sido comunicado al Registro de Marcas Comunitarias.
No obstante, se anima a las partes a que actualicen toda la información del registro de manera ágil y periódica mediante la cancelación o l a modificación de las licencias existentes (véase el apartado 3 a continuación).
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Artículo 22, apartado 1, del RMC Reglas 33, apartado 3, y regla 34, del REMC
En ausencia de las indicaciones a las que se hace referencia en el apartado 2.5, la Oficina invitará al solicitante de la inscripción del registro de la licencia a que aporte información adicional. Si el solicitante no responde a dicha comunicación, la Oficina no tendrá en cuenta las indicaciones anteriormente mencionadas y procederá al registro de la licencia sin hacer referencia a las mismas. Se notificará este extremo al solicitante mediante una resolución contra la que podrá interponerse recurso.
2.7 Procedimiento de registro y publicaciones
Regla 33, apartado 4, del REMC
Por lo que se refiere a las solicitudes de marca comunitaria, la licencia se mencionará en los expedientes conservados por la Oficina para la solicitud de marca comunitaria correspondiente.
Regla 84, apartado 3, letra j), y regla 85, apartado 2, del REMC
Una vez registrada la marca, la licencia será publicada en el Boletín de Marcas Comunitarias y se mencionará en el Registro de Marcas Comunitarias.
Regla 84, apartado 5, del REMC
La Oficina notificará a ambas partes la inscripción de la licencia en l os expedientes que conserve la Oficina. Cuando ambas partes hayan designado a un representante común, se notificará a dicho representante.
Artículo 22, apartado 5, del RMC Regla 84, apartado 3, letra j), y regla 85, apartado 2, del REMC
Por lo que se refiere a las MC, la Oficina inscribirá la licencia en el Registro de Marcas Comunitarias y la publicará en el Boletín de Marcas Comunitarias.
En su caso, la inscripción en el Registro mencionará el hecho de que la licencia es:
• una licencia exclusiva, • una licencia temporal, • una licencia limitada territorialmente, • una sublicencia, o • una licencia limitada a determinados productos o s ervicios amparados por la
marca comunitaria.
Sólo se mencionarán estos hechos sin más. No se publicarán los siguientes datos:
• el período de validez de una licencia temporal, • el territorio abarcado por un contrato territorialmente limitado,
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• los productos o servicios cubiertos por una licencia parcial.
Se podrá obtener acceso a esta información mediante la consulta pública (véanse las Directrices, Parte E, Operaciones de registro, Sección 5, Consulta pública).
Las licencias se publican en la parte C.4. del Boletín.
Regla 84, apartado 5, del REMC
La Oficina informará al solicitante de la inscripción sobre el registro de la licencia. En caso de que el licenciatario haya solicitado el registro de la licencia, la Oficina informará también sobre el registro al titular de la marca.
3 Cancelación o modificación de una licencia relativa a una marca comunitaria o una solicitud de marca comunitaria
Regla 35, apartado 1, del REMC
La inscripción de una licencia se cancelará o modificará a instancia de una de las partes interesadas, es decir, el solicitante o el titular de la MC, o el licenciatario registrado.
La Oficina denegará la cancelación, cesión y/o modificación de un a licencia o sublicencia si la licencia principal no ha sido inscrita en el Registro.
3.1 Competencia, lenguas, presentación de la solicitud
Artículo 133, del RMC Regla 35, apartados 3, 6, 7, del REMC
Serán de aplicación los apartados 2.1 y 2.2 anteriores.
Se recomienda encarecidamente presentar la solicitud de cancelación de una licencia de MC en el formulario de S olicitud de R egistro de l a Oficina. Este formulario se encuentra disponible gratuitamente en las lenguas oficiales de la Unión Europea. Puede descargarse del sitio web de la OAMI. Las partes en el procedimiento podrán utilizar el Formulario Internacional Tipo nº 1 de l a Organización Mundial de l a Propiedad Industrial (Petición de M odificación/Cancelación de l a inscripción de una Licencia), que puede descargarse en https://www.wipo.int/export/sites/www/about- ip/es/development_iplaw/pdf/pub835a.pdf, o un formulario cuyo contenido y formato sean similares a éste.
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3.2 Solicitante
Regla 35, apartado 1, del REMC
Podrá presentar la solicitud de cancelación o modificación del registro de una licencia:
a) el solicitante o titular de la marca comunitaria junto con el licenciatario,
b) el solicitante o titular de la marca comunitaria, o
c) el licenciatario registrado.
3.2.1 Cancelación de una licencia
Regla 35, apartado 4, del REMC
En el caso de una solicitud conjunta presentada por el solicitante o titular de la MC y el licenciatario, o de una solicitud presentada por el licenciatario, no se requiere ninguna otra prueba para la cancelación de l a licencia, ya que implica una d eclaración del licenciatario por la que consiente la cancelación del registro de la licencia. Cuando la solicitud de cancelación la presente el solicitante o titular de la MC, por sí solo, la solicitud deberá ir acompañada de pruebas que determinen que la licencia registrada ya no ex iste o de una declaración al efecto del licenciatario en el sentido de que consiente la cancelación.
Cuando el licenciatario registrado formule la solicitud de cancelación por sí solo, no se informará de ello al solicitante o titular de la MC. Se remitirá al licenciatario copia de las observaciones presentadas por el titular, pero ello no impedirá la cancelación del registro de la licencia. El apartado 2.4.3.1 se aplicará mutatis mutandis.
Si el titular de la MC denuncia un fraude por parte del licenciatario, deberá presentar una orden judicial firme al efecto. De hecho, no corresponde a la Oficina llevar a cabo una investigación en este sentido.
Cuando se haya solicitado simultáneamente el registro de varias licencias, se podrá cancelar una de tales licencias a título individual. En este caso, se creará un nuevo número de inscripción en relación con la licencia cancelada.
La inscripción en el Registro de licencias limitadas en el tiempo, esto es, de licencias temporales, no expira automáticamente sino que, en cambio, debe cancelarse a partir del Registro.
3.2.2 Modificación de una licencia
Regla 35, apartado 6, del REMC
En caso de una solicitud conjunta del solicitante o del titular de la MC y del licenciatario, no será necesario aportar ninguna prueba adicional de la modificación de la licencia.
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Si quien formula la solicitud es el solicitante o el titular de la marca comunitaria, sólo será necesario presentar una prueba de la modificación de la licencia en caso de que la modificación, cuya inscripción se solicita, fuera de naturaleza tal que pudiese mermar los derechos del licenciatario registrado en virtud de la licencia. Este sería el caso, por ejemplo, si se cambiara el nombre del licenciatario, si una licencia exclusiva pasara a ser no ex clusiva o s i dicha licencia se limitase en lo referido a s u ámbito territorial, en l o que respecta al período de tiempo para el que se concede, o a l os productos o servicios a los que se aplica.
Si quien formula la solicitud es el licenciatario registrado, bastará presentar una prueba de la modificación de la licencia cuando la modificación cuya inscripción se solicita, fuera de tal índole que ampliase los derechos del licenciatario registrado en virtud de la licencia. Tal sería el caso, por ejemplo, si se cambiara el nombre del licenciatario, si una licencia no exclusiva pasara a ser exclusiva, o si se cancelara total o parcialmente cualquier restricción inscrita relativa a l a licencia por lo que respecta a su ámbito territorial, al periodo de tiempo para la que se concede o a los productos y servicios a los que se aplica.
Si fuera necesario aportar pruebas de la modificación de la licencia, bastará presentar cualquiera de los documentos citados en el apartado 2.4.3.4, siempre que se cumplan los siguientes requisitos:
• El acuerdo escrito deberá ser firmado por la otra parte en el contrato de licencia y deberá referirse al registro de la modificación de la licencia.
• En la petición de modificación/cancelación de la inscripción de una licencia deberá constar la licencia en su forma modificada.
• En la copia o extracto del contrato de licencia deberá constar la licencia en su forma modificada.
3.3 Contenido de la solicitud
Reglas 26 y 35, del REMC
Será aplicable el apartado 2.4, salvo que no sea necesario indicar los datos relativos al licenciatario, excepto en caso de una modificación del nombre del licenciatario registrado.
Será aplicable el apartado 2.5 si se solicitase una modificación del alcance de la licencia, por ejemplo, si una l icencia pasara a ser una l icencia temporal o s i se modificara el ámbito geográfico de una licencia.
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3.4 Tasas
3.4.1 Cancelación de una licencia
Artículo 162, apartado 2, del RMC Regla 35, apartado 3, del REMC Artículo 2, apartado 24, del RTMC
No se considerará presentada la solicitud de cancelación del registro de una licencia hasta que no se haya abonado la tasa exigida, cuyo importe ascenderá a 200 EUR por cada MC cuya cancelación se solicite. Cuando se soliciten varias cancelaciones simultáneamente o en la misma solicitud, y cuando el solicitante o el titular de la MC y el licenciatario sean los mismos en cada caso, el importe de la tasa no superará los 1 000 EUR.
Una vez abonada la tasa correspondiente, ésta no se reembolsará en caso de que la solicitud fuese denegada o retirada.
3.4.2 Modificación de una licencia
Regla 35, apartado 6, del REMC
La modificación del registro de una licencia no está sujeta a una tasa.
3.5 Examen de la solicitud
3.5.1 Tasas
Regla 35, apartado 3, del REMC
En caso de que no se haya recibido la tasa exigida relativa a la solicitud de cancelación de una licencia, la Oficina notificará al solicitante del registro que tal solicitud se considera no presentada.
3.5.2 Examen de la Oficina
Regla 35, apartados 2 y 4, del REMC
Por lo que respecta a los elementos que deben figurar obligatoriamente en la solicitud, se aplicará el apartado 2.6.2 mutatis mutandis, incluido lo relativo a l a prueba de la licencia, siempre que se exija dicha prueba.
La Oficina notificará cualquier irregularidad al solicitante del registro, señalando un plazo límite de dos meses para subsanarlo. Si no se subsanasen las irregularidades, la Oficina denegará la solicitud de cancelación o modificación.
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Reglas 35, apartado 6, y regla 84, apartado 5, del REMC
Será aplicable el apartado 2.6.3 en la medida en que la modificación de la licencia afecte a su naturaleza o a s u limitación a parte de l os productos y servicios comprendidos en la MC o en la solicitud de marca comunitaria.
El registro de la cancelación o modificación de la licencia se comunicará a la persona que haya formulado la solicitud; si la solicitud la hubiere presentado el licenciatario, el solicitante o el titular de la MC recibirán una copia de dicha comunicación.
3.6 Registro y publicación
Regla 84, apartado 3, letra s), y regla 85, apartado 2, del REMC
En el caso de una MC registrada, la creación, cancelación o modificación se inscribirá en el Registro de Marcas Comunitarias y se publicará en el Boletín de M arcas Comunitarias, bajo el apartado C.4.
En el caso de una solicitud de MC, la cancelación o modificación de la licencia se hará constar en los expedientes correspondientes de la solicitud de MC. Cuando se publique el registro de la MC no se publicará ningún dato relativo a las licencias que hayan sido canceladas, y en caso de modificación de la licencia, se publicarán los datos en el apartado C.4 tal como hayan sido modificados.
4 Cesión de una licencia para una marca comunitaria o solicitud de marca comunitaria
4.1 Definición de cesión de una licencia
Artículo 22, apartado 5, del RMC
Podrá cederse una licencia relativa a una solicitud de marca comunitaria o a una marca comunitaria registrada. La cesión de una l icencia difiere de una sublicencia en la medida en que el licenciatario anterior pierde todos los derechos conferidos por la licencia, y en que será sustituido por un nuevo licenciatario, mientras que en el caso de una sublicencia, la licencia principal sigue en vigor. Del mismo modo, la cesión de una licencia difiere del cambio de nombre del titular cuando éste no implica un cambio de titularidad (véanse las Directrices, Parte E, Sección 3, La marca comunitaria como objeto de propiedad, Capítulo 1, Cesión).
4.2 Normas aplicables
Regla 33, apartado 1, del REMC
El procedimiento de registro de la cesión de una licencia está sujeto a las mismas normas que el registro de una licencia, establecidas en los apartados 2 y 3 supra.
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Regla 33, apartados 1 y 4, del REMC Artículo 2, apartado 23, letra b), del RTMC
La cesión de una licencia está sujeta al pago de una tasa. El apartado 2.3 anterior se aplicará mutatis mutandis.
En la medida en que, conforme a la normativa, es obligatoria una declaración o una firma del solicitante o del titular de la MC, su lugar será ocupado por una declaración o por la firma del licenciatario registrado (el licenciatario anterior).
5 Registro de licencias relativas a dibujos y modelos comunitarios registrados
Artículos 27, 32 y 33, y artículo 51, apartado 4, del RCD Artículos 24, 25, 26 y 27, apartado 2, del REDC Anexos nº 18 y 19 del RTDC
Las normas contenidas en el RCD, el REDC y el RTDC relativas a las licencias se corresponden con las disposiciones respectivas del RMC, el REMC y el RTMC.
Por lo tanto, tanto los principios jurídicos como el procedimiento de registro, cancelación o modificación de las licencias de marca comunitaria se aplicarán mutatis mutandis a los dibujos y modelos comunitarios, con la excepción de las siguientes excepciones y especificidades.
5.1 Dibujos y modelos comunitarios registrados
La legislación comunitaria sobre los dibujos y modelos comunitarios no establece ningún requisito de uso, por lo que no se plantea la cuestión de si el uso por parte de un licenciatario equivale al uso con el consentimiento del titular de los derechos.
El RCD y el REDC estipulan la obligación de indicar los productos a los que se pretende incorporar o aplicar el dibujo o modelo.
No es posible una licencia parcial solo para algunos productos a los que se pretende incorporar o aplicar el dibujo o modelo. Tampoco es posible efectuar el registro de una licencia para un dibujo o modelo comunitario registrado sólo para una parte de los productos que comprende.
La Oficina no tomará en consideración ninguna de estas limitaciones del alcance de la licencia y procederá a su registro como si tales restricciones no se hubieran presentado.
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5.2 Solicitudes múltiples de dibujos y modelos comunitarios registrados
Artículo 37, del RCD Artículo 24, apartado 1, del REDC
Una solicitud de dibujo o modelo comunitario registrado podrá presentarse en forma de solicitud múltiple por la que se solicitan varios dibujos o modelos.
Por lo que respecta a los efectos jurídicos de l as licencias y al procedimiento de registro de las mismas, los dibujos o modelos individuales contenidos en una solicitud múltiple deberán tramitarse como si fuesen solicitudes individuales, y lo mismo seguirá siendo aplicable una vez registrados los dibujos o modelos contenidos en la solicitud múltiple.
En otras palabras, cada dibujo o modelo que figure en una solicitud múltiple podrá ser objeto de licencia independientemente de los demás dibujos y modelos.
Las indicaciones opcionales relativas al tipo de licencia y al procedimiento de examen al que se hace referencia en los apartados 2.5 y 2.6.1 (con excepción de una licencia limitada a al gunos productos, que no es posible) se aplicarán a cada uno de los dibujos y modelos individuales que figuren en una s olicitud múltiple separada e independientemente.
Anexos nº 18 y 19 del RTDC
La tasa de 200 EUR exigida para el registro, la cesión o la cancelación de una licencia se aplica por dibujo o modelo, y no por solicitud múltiple. Lo mismo cabe decir de la tasa máxima de 1000 EUR si se presentan solicitudes múltiples.
Ejemplo 1: De una solicitud múltiple que contenga 10 dibujos o modelos, 6 dibujos o modelos son objeto de licencia en favor del mismo licenciatario. La tasa ascenderá a 1 000 EUR en caso de que se presente una única solicitud para el registro de estas 6 licencias, o en caso de que se presenten varias solicitudes en el mismo día. La solicitud podrá indicar que la licencia es exclusiva para tres de los seis dibujos o modelos, sin que ello repercuta en las tasas que deban abonarse.
Ejemplo 2: De una solicitud múltiple que contenga 10 dibujos o modelos, 5 dibujos o modelos son objeto de licencia en favor del mismo licenciatario. Asimismo se ha concedido una l icencia para otro dibujo o modelo que no figura en dicha solicitud múltiple. La tasa exigida será de 1 000 EUR siempre que:
• se presente una única solicitud de registro para estas 6 licencias, o se presenten varias solicitudes en el mismo día, y
• el titular del dibujo o modelo comunitario y el licenciatario sean los mismos en los 6 casos.
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6 Registro de licencias para marcas internacionales
El Sistema de Madrid permite la inscripción de licencias en el marco de un registro internacional. Toda petición de inscripción de una licencia deberá ser presentada a la Oficina Internacional, mediante el formulario MM13, bien directamente o bien por conducto de la Oficina del titular registrado o través de la Oficina de la parte contratante respecto de la que se concede la licencia o a t ravés de l a Oficina del licenciatario. El licenciatario no podrá presentar directamente la solicitud en la Oficina Internacional. No podrá utilizarse un formulario de Solicitud de inscripción de la Oficina.
La información detallada sobre la inscripción de licencias puede enc ontrarse en l os apartados B.II.93.01 a 99.04 de la Guía para el Registro Internacional de Marcas según el Arreglo de Madrid y el Protocolo de Madrid (www.wipo.int/madrid/es/guide/). Para más información sobre marcas internacionales, véanse las Directrices, Parte M.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE E
OPERACIONES DE REGISTRO
SECCIÓN 3
LAS MARCA COMUNITARIA COMO OBJETO DE PROPIEDAD
CAPÍTULO 3
DERECHOS REALES
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Índice
1 Introducción............................................................................................... 4
2 Requisitos relativos a la presentación de una solicitud de registro de un derecho real..................................................................................... 6 2.1 Formulario de so licitud y solicitudes para dos o m ás derechos
reales...........................................................................................................6 2.2 Lenguas ......................................................................................................6 2.3 Tasas...........................................................................................................7 2.4 Solicitantes y contenido preceptivo de la solicitud .................................7
2.4.1 Solicitantes ..................................................................................................... 7 2.4.2 Indicaciones preceptivas respecto a la MC y el acreedor prendario.............. 7 2.4.3 Requisitos aplicables a la persona que presenta la solicitud – Firma,
prueba del derecho real y representación...................................................... 8 2.4.3.1 Solicitud presentada únicamente por el titular de la MC .............................8 2.4.3.2 Solicitud presentada conjuntamente por el titular de la MC y el acreedor
prendario .....................................................................................................9 2.4.3.3 Solicitud presentada únicamente por el acreedor prendario .......................9 2.4.3.4 Prueba del derecho real ..............................................................................9
2.4.4 Representación ............................................................................................ 10
2.5 Examen de la solicitud de registro..........................................................10 2.5.1 Tasas ............................................................................................................ 10 2.5.2 Examen de los requisitos formales obligatorios ........................................... 11
2.6 Procedimiento de registro y publicaciones............................................12
3 Procedimiento para la cancelación o la modificación de la inscripción de un derecho real............................................................... 13 3.1 Competencia, lenguas, presentación de la solicitud .............................13 3.2 Persona que presenta la solicitud...........................................................13
3.2.1 Cancelación del registro de un derecho real................................................ 14 3.2.2 Modificación del registro de un derecho real................................................ 14
3.3 Contenido de la solicitud .........................................................................15 3.4 Tasas.........................................................................................................15
3.4.1 Cancelación del registro de un derecho real................................................ 15 3.4.2 Modificación del registro de un derecho real................................................ 15
3.5 Examen de la solicitud.............................................................................16 3.5.1 Tasas ............................................................................................................ 16 3.5.2 Examen de la Oficina ................................................................................... 16
3.6 Registro y publicación .............................................................................16
4 Procedimiento de cesión de un derecho real ....................................... 17 4.1 Disposición relativa a la cesión de un derecho real ..............................17 4.2 Normas aplicables....................................................................................17
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5 Derechos reales relativos a d ibujos y modelos comunitarios registrados............................................................................................... 17 5.1 Solicitudes múltiples de dibujos y modelos comunitarios
registrados................................................................................................18
6 Derechos reales relativos a marcas internacionales ........................... 18
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1 Introducción
Artículo 19 del RMC Regla 33 y regla 35 del REMC Artículo 24 del RDC
Las marcas comunitarias (MC) registradas y las solicitudes de MC pueden ser objeto de derechos reales.
Los dibujos y modelos comunitarios (DMC) registrados y las solicitudes de di bujo y modelo comunitario también pueden ser objeto de derechos reales.
En los apartados 1 a 4 del presente capítulo se tratan los derechos reales que atañen a las MC y las solicitudes de MC. Las disposiciones enunciadas en el RDC y el REDC relativas a los derechos que conciernen a los dibujos y modelos son casi idénticas a las disposiciones equivalentes del RMC y el REMC, respectivamente. Por tanto, lo que se expone a c ontinuación se aplicará mutatis mutandis a los dibujos y modelos comunitarios. Los procedimientos específicos de los dibujos y modelos comunitarios se detallan más adelante en el apartado 5. Los procedimientos específicos de l as marcas internacionales se detallan más adelante en el apartado 6.
Un «derecho real» es un derecho de propiedad limitado que corresponde a un derecho absoluto. Los derechos reales se refieren a una acción legal dirigida a la propiedad, no a una persona concreta, que brinda al titular del derecho la oportunidad de recuperar, poseer o disfrutar de un objeto específico. Estos derechos pueden aplicarse a marcas, dibujos o m odelos. Pueden consistir, por ejemplo, en der echos de u so, usufructo o prenda. Los derechos reales, «in rem», difieren de los personales, «in personam», que se refieren a una persona concreta.
Los derechos reales más comunes en el caso de marcas, dibujos o modelos son las prendas o las garantías. Éstas garantizan la devolución de una deuda del titular de la marca o del dibujo o modelo (esto es, el deudor) de manera que, si éste no puede saldar la deuda, el acreedor (es decir, el titular de la prenda o garantía) pueda obtener el pago de aq uélla a t ravés, por ejemplo, de l a venta de la marca o del dibujo o modelo. Los siguientes son ejemplos de es te concepto: DE: Pfand, Hypothek; EN: Guarantees, Warranties, Bails y Sureties; ES: Prenda, Hipoteca; FR: Nantissement, Gage, Hypothèque, Garantie, Caution; IT: Pegno, Ipoteca.
Existen dos tipos de derechos reales que el solicitante puede pedi r que se hagan constar en el expediente o se inscriban en el Registro:
• derechos reales que sirven como garantía (prenda, carga, etc.); • derechos reales que no sirven como garantía (usufructo).
Artículo 16 del RMC
El RMC no establece disposiciones unificadas ni completas aplicables a los derechos reales referidos a las MC o las solicitudes de MC. En lugar de ello, el artículo 16 del RMC se refiere a l egislación de un E stado miembro en lo que respecta a l a adquisición, la validez y los efectos de la MC como objeto de propiedad. A tal fin, un derecho real relativo a una M C se asimilará, en s u totalidad y para el conjunto del
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territorio de la Comunidad, a un derecho real sobre una marca registrada en el Estado miembro en el que el titular o el solicitante de la MC tenga su sede o su domicilio o, si éste no fuera el caso, a un derecho real sobre una marca registrada en el Estado miembro en el que dicho titular cuente con un establecimiento o, si tampoco fuera éste el caso, a un derecho real sobre una marca registrada en España (Estado miembro en el que se ubica la sede de la Oficina).
No obstante, lo anterior es aplicable salvo disposición en contrario de l os artículos 17 a 24 del RMC.
El artículo 16 del RMC se limita a l os efectos de un der echo real como objeto de propiedad y no s e extiende al Derecho contractual. Dicho artículo no establece la legislación aplicable ni la validez de un c ontrato de derecho real, de manera que la libertad de l as partes contratantes de s ometer el derecho real a una legislación nacional concreta no se ve afectada por el RMC.
Artículo 19, apartado 2, y artículo 23, apartado 1, del RMC
No es obligatorio registrar los derechos reales, ni el registro constituye una condición para considerar que el uso de una marca por parte de un acreedor prendario con arreglo a las cláusulas del contrato de derecho real se ha hecho con el consentimiento del titular, según se dispone en el artículo 15, apartado 2, del RMC. Sin embargo, dicho registro conlleva ventajas concretas.
a) A la luz de lo dispuesto en el artículo 23, apartado 1, del RMC, frente a terceros que pudieran haber adquirido derechos sobre la marca o que hayan inscrito en el registro derechos sobre la marca que son incompatibles con el derecho real registrado, el acreedor prendario podrá ejercer los derechos conferidos por dicho derecho real únicamente:
• si el derecho real se inscribió en el Registro de Marcas Comunitarias, o
• a falta de registro del derecho real, si tales derechos hubiesen sido adquiridos por un tercero después de l a fecha de su adquisición, teniéndose conocimiento de su existencia.
b) En el caso de que un derecho real sobre una marca comunitaria se inscriba en el Registro, la renuncia a dicha marca por parte de su titular sólo se registrará en dicho Registro si el titular determina que ha informado al acreedor prendario de su intención de renunciar.
Por tanto, el acreedor prendario de un derecho real registrado tiene derecho a ser informado con antelación por el titular de la marca de su intención de renunciar a ella.
c) En el caso de que se inscriba en el Registro un derecho real sobre una marca comunitaria, la Oficina informará al acreedor prendario, al menos seis meses antes de l a expiración de t al inscripción, de que ésta se aproxima a s u expiración. La Oficina notificará asimismo al acreedor prendario cualquier pérdida de derechos, así como la expiración de la inscripción en el registro, en su caso.
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d) La inscripción en el Registro de un derecho real es importante para mantener la veracidad de aquél, sobre todo en el caso de los procedimientos inter partes.
2 Requisitos relativos a la presentación de una solicitud de registro de un derecho real
Artículo 19, apartado 2, del RMC Regla 33 y regla 84, apartado 3, letra h), del REMC
Tanto las solicitudes de MC como las MC pueden ser objeto del registro de un derecho real.
La solicitud de registro de un derecho real deberá cumplir los siguientes requisitos.
2.1 Formulario de solicitud y solicitudes para dos o más derechos reales
Regla 95, letras a) y b), del REMC
Se recomienda encarecidamente presentar la solicitud de registro de un derecho real sobre una MC en el formulario de Solicitud de Registro. Este formulario se encuentra disponible gratuitamente en las lenguas oficiales de l a Unión Europea. Puede descargarse del sitio web de la OAMI.
Podrá emplearse cualquier versión lingüística del formulario, siempre que se cumplimente en una de las lenguas a las que se alude en el apartado 2.2 que sigue.
Regla 31, apartado 7, y regla 33, apartado 1, del REMC
Se podrá presentar una única solicitud de registro de un derecho real relativa a dos o más MC o solicitudes de MC, siempre que en cada caso se trate del mismo titular inscrito y del mismo acreedor prendario.
2.2 Lenguas
Regla 95, letra a), del REMC
La solicitud de r egistro de un der echo real sobre una solicitud de MC podrá presentarse en la primera o la segunda lengua de la solicitud de MC.
Regla 95, letra b), del REMC
La solicitud de registro de un derecho real sobre una MC deberá presentarse en una de las cinco lenguas de la Oficina, a saber: español, alemán, francés, inglés o italiano.
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2.3 Tasas
Artículo 162, apartado 2, letras c) y d), del RMC Regla 33, apartados 1 y 4, del REMC Artículo 2, apartado 23, del RTMC
No se considerará presentada la solicitud de registro de un derecho real hasta que no se haya abonado la tasa exigida. El importe de di cha tasa equivale a 200 EUR por cada marca comunitaria a que se refiera.
No obstante, en el caso de que se soliciten diversas inscripciones de derechos reales en una úni ca solicitud, y siempre que en todos los casos se trate del mismo titular inscrito y del mismo acreedor prendario, la tasa no superará los 1 000 EUR.
También se aplicará este límite cuando se presenten diversas solicitudes de registro de derechos reales al mismo tiempo, siempre que puedan haberse presentado en una única solicitud y que se trate del mismo titular inscrito y del mismo acreedor prendario en todos los casos.
Una vez abonada la tasa exigida, ésta no se reembolsará en caso de que la solicitud de registro del derecho real fuere denegada o retirada (expediente clasificado).
2.4 Solicitantes y contenido preceptivo de la solicitud
2.4.1 Solicitantes
Artículo 19, apartado 2, del RMC
Podrá solicitar el registro de un derecho real:
a) el titular de la MC, o
b) el titular de la MC, junto al acreedor prendario,o
c) el acreedor prendario.
Los requisitos formales que deberá cumplir la solicitud dependerán de q uién la presente. Se recomienda hacer uso de la primera o de la segunda opción, ya que éstas permiten una tramitación más rápida y sencilla de la solicitud de registro del derecho real.
2.4.2 Indicaciones preceptivas respecto a la MC y el acreedor prendario
Regla 31 y regla 33, apartado 1, del REMC
La solicitud de registro de un derecho real deberá contener la siguiente información.
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Regla 31, apartado 1, letra a), y regla 33, apartado 1, del REMC
a) El número de registro de la MC en cuestión. Si se tratase de una s olicitud para varias MC, se deberá indicar todos los números.
Regla 1, apartado 1, letra b), regla 31, apartado 1, letra b), y regla 33, apartado 1, del REMC
b) El nombre, la dirección y la nacionalidad del acreedor prendario, así como el Estado en el cual tenga su domicilio, su sede o un establecimiento.
Regla 1, apartado 1, letra e); regla 31, apartado 2; y regla 33, apartado 1, del REMC
c) Si el acreedor prendario designa un representante, deberá indicarse el nombre y la dirección profesional del mismo, y la indicación de l a dirección podrá sustituirse por la mención del número de identificación atribuido por la Oficina.
2.4.3 Requisitos aplicables a la persona que presenta la solicitud – Firma, prueba del derecho real y representación
Regla 79 y regla 82, apartado 3, del REMC
Los requisitos relativos a la firma, prueba del derecho real y representación varían en función de la persona que formule la solicitud. Cuando se haga referencia al requisito de una firma, con arreglo a la regla 79 y la regla 82, apartado 3 del REMC, en las comunicaciones electrónicas, la indicación del nombre del remitente se considerará equivalente a la firma.
2.4.3.1 Solicitud presentada únicamente por el titular de la MC
Regla 1, apartado 1, letra b), y regla 33, apartado 1, del REMC
Cuando la solicitud se presente únicamente en nombre del titular de la MC, deberá llevar la firma de éste.
No será necesario aportar una prueba del derecho real.
La Oficina no informará al acreedor prendario de que se ha solicitado el registro del derecho real. Sin embargo, sí le informará cuando el derecho real se inscriba en el Registro.
En caso de que el acreedor prendario presente una declaración en la Oficina en la que se oponga al registro del derecho real, la Oficina transmitirá la declaración al titular de la MC tan sólo a título informativo. La Oficina no adoptará ninguna medida adicional en relación con dicha declaración. Una vez registrado, todo acreedor prendario que se
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oponga al registro del derecho real podrá solicitar la cancelación o modificación de tal registro (véase el apartado 3 más adelante). La Oficina no tendrá en cuenta si las partes han acordado registrar un derecho real en la Oficina. Todo litigio sobre la procedencia o no de su registro y sobre su contenido deberá ser resuelto por las partes interesadas de c onformidad con la legislación nacional pertinente (artículo 16 del RMC).
2.4.3.2 Solicitud presentada conjuntamente por el titular de la MC y el acreedor prendario
En caso de que el titular de la MC y el acreedor prendario presenten conjuntamente la solicitud, ésta tendrá que estar firmada por las dos partes.
En tal caso, la firma de las dos partes constituirá una prueba del derecho real.
En caso de que se identifique una irregularidad formal relativa a la firma o al representante del acreedor prendario, la solicitud se aceptará siempre que ésta también hubiera sido aceptable de haberla presentado únicamente el titular de la MC.
Lo propio se aplica al caso en que se identifique una irregularidad relativa a la firma o al representante del titular de la MC y en el que la solicitud hubiera sido aceptable de haberla presentado únicamente el acreedor prendario.
2.4.3.3 Solicitud presentada únicamente por el acreedor prendario
La solicitud también puede presentarla únicamente el acreedor prendario. En este caso, deberá llevar su firma.
Además, se deberá aportar la prueba del derecho real.
2.4.3.4 Prueba del derecho real
Existirá prueba suficiente del derecho real si la solicitud de registro de aquél se acompaña de cualquiera de los siguientes documentos probatorios.
• Una declaración firmada por el titular de la MC en la que consiente el registro del derecho real.
De conformidad con la regla 31, apartado 5, letra a), del REMC, también se considerará prueba suficiente si la solicitud de registro del derecho real está firmada por las dos partes. Este caso ya se ha tratado en el apartado 2.4.3.2 anterior.
• El contrato de der echo real, o un ex tracto de aquél, que identifique la MC en cuestión y a las partes y contenga sus firmas.
Bastará con que se presente el acuerdo relativo al derecho real. En muchos casos, las partes del contrato de de recho real no des earán revelar todos los detalles del contrato, que podría contener información confidencial sobre las condiciones aplicables a la prenda. En estos casos, bastará con que se presente únicamente una parte o un extracto del acuerdo relativo al derecho real, siempre
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que aquél identifique a las partes de dicho derecho y la MC sujeta al derecho real y contenga las firmas de l as dos partes. El resto de el ementos podrán omitirse u ocultarse.
• Una declaración sin certificar de un derecho real firmada por el titular de la MC y por el acreedor prendario.
Los documentos originales pasan a formar parte del expediente y, por tanto, no pueden devolverse a la persona que los haya aportado. Bastará con presentar fotocopias simples. No será necesario autenticar o l egalizar el original o l a fotocopia de los documentos, salvo en el caso de que la Oficina albergue dudas razonables respecto a su veracidad.
Regla 95, letras a) y b), y regla 96, apartado 2, del REMC
Los documentos que constituyan la prueba del derecho real deberán presentarse:
a) en la lengua de la Oficina que se haya convertido en lengua de procedimiento de registro del derecho real; véase el apartado 2.2 anterior;
b) en cualquiera de las lenguas oficiales de la Unión Europea distinta de la lengua de procedimiento; en ese caso, la Oficina podrá exigir una traducción del documento a una lengua de la Oficina, que deberá presentarse en el plazo fijado por esta última.
Cuando los documentos acreditativos no se presenten ni en una lengua oficial de la Unión Europea ni en l a lengua de l os procedimientos, la Oficina podrá exigir una traducción a la lengua de los procedimientos o, a elección de la parte que solicite el registro del derecho real, a c ualquiera de l as lenguas de l a Oficina. La O ficina establecerá un pl azo límite de dos meses desde la fecha de not ificación de t al comunicación. Si la traducción no se aporta en dicho plazo, el documento no se tendrá en cuenta y se considerará que no ha sido presentado.
2.4.4 Representación
Artículo 92, apartado 2, y artículo 93, apartado 1, del RMC
Se aplican las normas generales sobre representación (véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación Profesional).
2.5 Examen de la solicitud de registro
2.5.1 Tasas
Regla 33, apartado 2, del REMC
En caso de que no se haya recibido la tasa exigida, la Oficina comunicará al solicitante del registro que la solicitud no se considera presentada, al no haberse abonado dicha tasa. No obstante, podrá presentarse una nueva solicitud en todo momento, siempre que se abone la tasa correcta desde un principio.
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2.5.2 Examen de los requisitos formales obligatorios
Regla 33, apartado 3, del REMC
La Oficina verificará si la solicitud de registro del derecho real cumple con los requisitos formales a que se refiere el apartado 2.4 anterior (indicación del/de los número(s) de l a(s) MC y de l a información exigida en r elación con el acreedor prendario y de su representante, si procede).
No se examinará la validez del acuerdo relativo al derecho real.
Artículo 93, apartado 1, del RMC Regla 33, regla 76 y regla 77 del REMC
La Oficina verificará si la solicitud de registro del derecho real está debidamente firmada. Cuando la solicitud esté firmada por el representante del acreedor prendario, la Oficina o, en el contexto de pr ocedimientos inter partes, la otra parte de los procedimientos podrá exigir un poder . En este caso, si no s e presenta un poder , el procedimiento continuará como si no se hubiera designado ningún representante. Cuando la solicitud de registro del derecho real esté firmada por el representante del titular que ya ha sido designado representante para la MC en cuestión, se habrán cumplido los requisitos relativos a la firma y los poderes.
Artículo 92, apartado 2, y artículo 93, apartado 1, del RMC
El examen determinará si el solicitante del registro (es decir, el titular de la MC o el acreedor prendario) tiene la obligación de hacerse representar ante la Oficina (véase el apartado 2.4.4 anterior).
Regla 33, apartado 3, del REMC
La Oficina informará por escrito al solicitante del registro de cualquier irregularidad encontrada en la solicitud. Si no se subsanasen las irregularidades en el plazo fijado en dicha comunicación, que normalmente será de dos meses a partir de la notificación, la Oficina denegará la solicitud de registro del derecho real.
En caso de que la solicitud la hayan presentado conjuntamente el titular de la MC y el acreedor prendario, la Oficina se comunicará con el primero y enviará una c opia al segundo.
En caso de que el acreedor prendario también haya presentado y firmado la solicitud, no podrá impugnar la existencia o el alcance del acuerdo relativo al derecho real.
Cuando la solicitud de registro del derecho real haya sido presentada únicamente por el titular de la MC, la Oficina no informará al acreedor prendario. El examen de la prueba del derecho real se realizará de of icio. La O ficina no t endrá en cuenta las
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declaraciones o alegaciones del acreedor prendario sobre la existencia o el alcance del derecho real o de s u registro; aquél no podrá oponerse al registro de un derecho real. Regla 33, apartado 3, del REMC
Si la solicitud la presenta el acreedor prendario sobre la base de una copia del acuerdo relativa al derecho real, y en el caso de que la Oficina albergue dudas razonables sobre la veracidad de los documentos, aquélla se dirigirá por escrito al acreedor prendario para pedirle que despeje tales dudas. Corresponderá entonces al acreedor prendario demostrar la existencia del derecho real, es decir, aquél tendrá que convencer a la Oficina de la veracidad de los documentos. En este caso, la Oficina podrá, con arreglo a s u facultad de ex amen de of icio (artículo 76, apartado 1, del RMC), pedir al titular de la MC que presente observaciones. Si el titular afirma que los documentos son falsos, ello bastará para que la Oficina deniegue el registro de u n derecho real, a m enos que el acreedor prendario presente una o rden judicial de un Estado miembro de la UE a su favor. En cualquier caso, si no es posible despejar las dudas, se denegará el registro del derecho real. En este caso, el procedimiento siempre será ex parte pues, aunque se escuche al titular de la MC, aquél no será parte de los procedimientos.
2.6 Procedimiento de registro y publicaciones
Regla 33, apartado 4, del REMC
El derecho real relativo a solicitudes de MC se mencionará en l os expedientes conservados por la Oficina correspondientes a las solicitudes de marca comunitaria en cuestión.
Regla 84, apartado 3, letra h), y regla 85, apartado 2, del REMC
Cuando la marca se registre, el derecho real se publicará en el Boletín de Marcas Comunitarias y se inscribirá en el Registro de Marcas Comunitarias.
Regla 84, apartado 5, del REMC
La Oficina notificará al solicitante del registro la inscripción del derecho real en los expedientes que conserve la Oficina. Si procede, también se le notificará al solicitante de la MC.
Artículo 22, apartado 5, del RMC Regla 84, apartado 3, letra h), y regla 85, apartado 2, del REMC
En el caso de las MC, la Oficina inscribirá el derecho real en el Registro de Marcas Comunitarias y lo publicará en el Boletín de Marcas Comunitarias.
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Se podrá acceder a es ta información mediante la consulta pública de expedientes (véanse las Directrices, Parte E, Operaciones de r egistro, Sección 5, Consulta pública).
Los derechos reales se publican en la parte C.5. del Boletín. Regla 84, apartado 5, del REMC
La Oficina informará al solicitante del registro de tal inscripción del derecho real. En caso de q ue el acreedor prendario haya solicitado el registro del derecho real, la Oficina también informará del registro al titular de la marca.
3 Procedimiento para la cancelación o la modificación de la inscripción de un derecho real
Regla 35, apartado 1, del REMC
La inscripción de un der echo real se cancelará o modificará a petición de una de las partes interesadas, a saber, el solicitante o el titular de la MC, o el acreedor prendario registrado.
3.1 Competencia, lenguas, presentación de la solicitud
Artículo 133 del RMC Regla 35, apartados 3, 6 y 7, del REMC
Son de aplicación los apartados 2.1 y 2.2 anteriores.
No existe un f ormulario de l a Oficina para la cancelación o l a modificación de un derecho real.
3.2 Persona que presenta la solicitud
Regla 35, apartado 1, del REMC
Podrá presentar la solicitud de cancelación o modificación del registro de un derecho real:
a) el solicitante o titular de la MC y el acreedor prendario, conjuntamente;
b) el solicitante o titular de la MC;
c) el acreedor prendario.
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3.2.1 Cancelación del registro de un derecho real
Regla 35, apartado 4, del REMC
Si el solicitante o t itular de l a MC y el acreedor prendario presentan una solicitud conjunta o si la presenta únicamente el último, no será necesario aportar una prueba de la cancelación del registro del derecho real, ya que la propia solicitud conlleva la declaración de que el acreedor prendario consiente la cancelación del registro del derecho real. En caso de que la solicitud de cancelación la presente el solicitante o titular de la MC, aquélla deberá ir acompañada de pruebas que determinen que el derecho real registrado ya no existe o por una declaración del acreedor prendario en la que éste autoriza la cancelación.
Cuando el acreedor prendario registrado presente la solicitud de cancelación por sí solo, no se informará de ello al solicitante o titular de la MC. Se remitirá al acreedor prendario una c opia de las observaciones presentadas por el titular, pero ello no impedirá la cancelación del registro del derecho real. El apartado 2.4.3.1 anterior se aplicará mutatis mutandis.
Si el titular de la MC denuncia un fraude por parte del acreedor prendario, deberá presentar una orden judicial al efecto. No corresponde a la Oficina llevar a cabo una investigación acerca de dicha denuncia.
Cuando se haya solicitado simultáneamente el registro de varios derechos reales, será posible cancelar uno de tales registros de manera individual. En tal caso, se creará un nuevo número de registro para el derecho real cancelado.
3.2.2 Modificación del registro de un derecho real
Regla 35, apartado 6, del REMC
Si el solicitante o el titular de la MC y el acreedor prendario presentan una solicitud conjunta, no será necesario aportar más pruebas de l a modificación del registro del derecho real.
Si la solicitud la presenta el solicitante o el titular de la MC, únicamente será necesario aportar pruebas de la modificación del registro de derecho real en caso de que la modificación sea de naturaleza tal que reduzca los derechos del acreedor prendario en relación con el derecho real. Así sucedería, por ejemplo, en el caso de un cambio del nombre del acreedor prendario.
Si la solicitud la presenta el acreedor prendario registrado, únicamente será necesario aportar pruebas de la modificación del registro del derecho real en caso de que la modificación sea de naturaleza tal que amplíe los derechos del acreedor prendario registrado en relación con el derecho real.
Si es necesario aportar pruebas de la modificación del registro del derecho real, bastará con presentar cualquiera de l os documentos citados en el apartado 2.4.3.4, siempre que se cumplan los siguientes requisitos:
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• El acuerdo escrito deberá estar firmado por la otra parte del acuerdo relativo al derecho real y se relacionará con el registro de la modificación del derecho real solicitada;
• La solicitud de modificación o cancelación del registro de un derecho real deberá exponer el derecho en cuestión en su forma modificada;
• La copia o el extracto del acuerdo relativo al derecho real deberá exponer el derecho en cuestión en su forma modificada.
3.3 Contenido de la solicitud
Regla 26 y regla 35 del REMC
Se aplicará el apartado 2.4 anterior, salvo que no s ea necesario indicar los datos relativos al acreedor prendario y excepto en c aso de m odificación del nombre de aquél.
3.4 Tasas
3.4.1 Cancelación del registro de un derecho real
Artículo 162, apartado 2, del RMC Regla 35, apartado 3, del REMC Artículo 2, apartado 24, del RTMC
Se considerará que la solicitud de cancelación del registro de un derecho real no se ha presentado en tanto no se haya abonado la tasa de cancelación correspondiente, que asciende a 200 EUR. Cuando se soliciten varias cancelaciones al mismo tiempo o en la misma solicitud, y cuando el solicitante o el titular de la MC y el acreedor prendario sean los mismos en cada caso, el importe de la tasa no superará los 1 000 EUR.
Una vez abonada la tasa correspondiente, ésta no se reembolsará en caso de que la solicitud fuese denegada o retirada.
3.4.2 Modificación del registro de un derecho real
Regla 35, apartado 6, del REMC
La modificación del registro de un derecho real no está sujeta a tasa.
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3.5 Examen de la solicitud
3.5.1 Tasas
Regla 35, apartado 3, del REMC
En caso de que no se haya recibido la tasa exigida relativa a la solicitud de cancelación del registro de un der echo real, la Oficina notificará al solicitante del registro que tal solicitud se considera no presentada.
3.5.2 Examen de la Oficina
Regla 35, apartados 2 y 4, del REMC
Por lo que respecta a los elementos preceptivos de la solicitud, se aplicará el apartado 2.5.2 mutatis mutandis, incluido lo relativo al derecho real, siempre que se exija dicha prueba.
La Oficina notificará cualquier irregularidad al solicitante del registro, señalando un plazo límite de dos meses para su subsanación. Si no se subsanasen las irregularidades, la Oficina denegará la solicitud de r egistro de l a cancelación o l a modificación.
Regla 35, apartado 6, y regla 84, apartado 5, del REMC
El registro de l a cancelación o m odificación del derecho real se comunicará a la persona que haya presentado la solicitud; si la solicitud la hubiere presentado el acreedor prendario, el solicitante o el titular de la MC recibirán una copia de dicha comunicación.
3.6 Registro y publicación
Regla 84, apartado 3, letra s), y regla 85, apartado 2, del REMC En el caso de una MC registrada, la creación, cancelación o modificación de un registro relativo a un derecho real se inscribirá en el Registro de Marcas Comunitarias y se publicará en el Boletín de Marcas Comunitarias, en el apartado C.5.
En el caso de una solicitud de MC, la cancelación o modificación de un derecho real se hará constar en l os expedientes de l a solicitud de MC de q ue se trate. Cuando se publique el registro de l a MC, no s e publicará ningún dato relativo a l os derechos reales que hayan sido cancelados, y en caso de modificación de tales derechos, se publicarán los datos en el apartado C.5. tal como hayan sido modificados.
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4 Procedimiento de cesión de un derecho real
4.1 Disposición relativa a la cesión de un derecho real
Regla 33, apartado 1, del REMC
Un derecho real puede cederse.
4.2 Normas aplicables
Regla 33, apartado 1, del REMC
El procedimiento de registro de la cesión de un derecho real se atiene a las mismas normas que el registro de un derecho real establecidas en el apartado 2 anterior.
Regla 33, apartados 1 y 4, del REMC Artículo 2, apartado 23, letra b), del RTMC
La cesión de un derecho real está sujeta al pago de una tasa. El apartado 2.3 anterior se aplicará mutatis mutandis.
En la medida en que la normativa exija una declaración o la firma del solicitante o del titular de l a MC, aquélla habrá de s ustituirse por una dec laración o po r la firma del acreedor prendario registrado (el acreedor prendario anterior).
5 Derechos reales relativos a dibujos y modelos comunitarios registrados
Artículo 27, artículo 29, artículo 33 y artículo 51, apartado 4, del RDC Artículo 24, artículo 26 y artículo 27, apartado 2, del REDC Anexos 18 y 19 del RTDC
Las normas contenidas en el RDC, el REDC y el RTDC relativas a los derechos reales concuerdan con las disposiciones del RMC, el REMC y el RTMC respectivamente.
Por tanto, los principios jurídicos y el procedimiento relativos al registro, la cancelación o modificación de derechos reales sobre marcas se aplicarán mutatis mutandis a los dibujos y modelos comunitarios, con la excepción de los siguientes procedimientos específicos.
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5.1 Solicitudes múltiples de dibujos y modelos comunitarios registrados
Artículo 37 del RDC Artículo 24, apartado 1, del REDC
Una solicitud de dibujo o modelo comunitario registrado podrá presentarse en forma de solicitud múltiple por la que se solicitan varios dibujos o modelos.
Por lo que respecta a los efectos jurídicos de los derechos reales y al procedimiento de registro de aquéllos, los dibujos o modelos individuales contenidos en una solicitud múltiple deberán tramitarse como si fuesen solicitudes separadas, y se seguirán aplicando las mismas disposiciones una vez registrados los dibujos o m odelos contenidos en la solicitud múltiple.
Dicho de otro modo, cada dibujo o modelo que figure en una solicitud múltiple podrá ser objeto de prenda independientemente de los demás dibujos y modelos.
Anexos 18 y 19 del RTDC
La tasa de 200 EUR que se exige para el registro o la cancelación de un derecho real se aplica por dibujo o modelo y no por solicitud múltiple. Lo mismo ocurre con el límite de 1 000 EUR si se presentan solicitudes múltiples.
Ejemplo 1
De una solicitud múltiple que contenga 10 dibujos o modelos, 6 dibujos o modelos son objeto de prenda en favor del mismo acreedor prendario. La tasa ascenderá a 1 000 EUR en caso de que se presente una única solicitud para el registro de estos 6 derechos reales, o en caso de que se presenten varias solicitudes en el mismo día.
Ejemplo 2
De una solicitud múltiple que contenga 10 dibujos o modelos, 5 dibujos o modelos son objeto de p renda en favor del mismo acreedor prendario. Asimismo, se solicita el registro de un der echo real respecto a o tro dibujo o m odelo que no figura en di cha solicitud múltiple. La tasa exigida será de 1 000 EUR siempre que:
• se presente una úni ca solicitud de r egistro para estos 6 derechos reales o s e presenten diversas solicitudes en el mismo día, y
• el titular del dibujo o m odelo comunitario y el acreedor prendario sean los mismos en los 6 casos.
6 Derechos reales relativos a marcas internacionales
El Sistema de Madrid permite la inscripción de derechos reales en un registro internacional (véase la regla 20 del Reglamento Común del Arreglo de Madrid relativo al Registro Internacional de Marcas y del Protocolo concerniente a ese Arreglo). Para
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comodidad de los usuarios, se encuentra disponible el formulario MM19 para solicitar que se anote en el Registro Internacional una restricción del derecho de disposición del titular. La utilización de tal formulario se recomienda encarecidamente para evitar irregularidades. El titular debe pr esentar las solicitudes directamente en la Oficina Internacional, en su oficina nacional de PI, en la oficina de una pa rte contratante a la que se otorgue el derecho real o en la oficina del acreedor prendario. El acreedor prendario no podrá presentar directamente la solicitud en la Oficina Internacional. No deberá utilizarse el formulario de solicitud de inscripción propio de la OAMI.
Para más información sobre el registro de derechos reales, véase la Parte B, capítulo II, apartados 92.01 a 92 04 de la Guía para el Registro Internacional de Marcas según el Arreglo de M adrid y el Protocolo de M adrid (www.wipo.int/madrid/es/guide). Para más información sobre marcas internacionales, véanse las Directrices, Parte M, Marcas Internacionales.
Ejecución forzosa
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE E
OPERACIONES DE REGISTRO
SECCIÓN 3
LA MARCA COMUNITARIA COMO OBJETO DE PROPIEDAD
CAPÍTULO 4
EJECUCIÓN FORZOSA
Ejecución forzosa
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Índice
1 Introducción............................................................................................... 4
2 Requisitos relativos a la presentación de una solicitud de registro de una ejecución forzosa.......................................................................... 5 2.1 Formulario de solicitud y solicitudes para dos o más ejecuciones
forzosas ......................................................................................................6 2.2 Lenguas ......................................................................................................6 2.3 Tasas...........................................................................................................6 2.4 Solicitantes y contenido preceptivo de la solicitud .................................7
2.4.1 Solicitantes ..................................................................................................... 7 2.4.2 Indicaciones preceptivas respecto a la MC y el beneficiario.......................... 7 2.4.3 Requisitos aplicables a la persona que presenta la solicitud – Firma,
prueba de la ejecución forzosa y representación........................................... 8 2.4.3.1 Solicitud presentada por el titular de la MC.................................................8 2.4.3.2 Solicitud presentada por el beneficiario.......................................................9 2.4.3.3 Solicitud presentada por un tribunal u otra autoridad ..................................9 2.4.3.4 Prueba de la ejecución forzosa ...................................................................9
2.4.4 Representación ............................................................................................ 10
2.5 Examen de la solicitud de registro..........................................................10 2.5.1 Tasas ............................................................................................................ 10 2.5.2 Examen de los requisitos formales obligatorios ........................................... 10
2.6 Procedimiento de registro y publicaciones............................................12
3 Procedimiento para la cancelación o la modificación de la inscripción de una ejecución forzosa.................................................... 13 3.1 Competencia, lenguas, presentación de la solicitud .............................13 3.2 Persona que presenta la solicitud...........................................................13
3.2.1 Cancelación del registro de una ejecución forzosa...................................... 13 3.2.2 Modificación del registro de una ejecución forzosa...................................... 14
3.3 Contenido de la solicitud .........................................................................14 3.4 Tasas.........................................................................................................14
3.4.1 Cancelación del registro de una ejecución forzosa...................................... 14 3.4.2 Modificación del registro de una ejecución forzosa...................................... 14
3.5 Examen de la solicitud.............................................................................15 3.5.1 Tasas ............................................................................................................ 15 3.5.2 Examen de la Oficina ................................................................................... 15
3.6 Registro y publicación .............................................................................15
4 Ejecución forzosa de dibujos y modelos comunitarios registrados... 16 4.1 Solicitudes múltiples de dibujos y modelos comunitarios
registrados................................................................................................16
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5 Ejecución forzosa de marcas internacionales ...................................... 17
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1 Introducción
Artículo 20 del RMC Regla 33 y regla 35 del REMC Artículo 29 del RDC
Las marcas comunitarias (MC) registradas y las solicitudes de marca comunitaria pueden ser objeto de medidas de ejecución forzosa.
Los dibujos y modelos comunitarios (DMC) y las solicitudes de d ibujo y modelo comunitario pueden ser objeto de medidas de ejecución forzosa.
En los apartados 1 a 3 del presente capítulo se trata la ejecución forzosa que atañe a las MC y las solicitudes de MC. Las disposiciones enunciadas en el RDC y el REDC relativas a l a ejecución forzosa que concierne a l os dibujos y modelos son casi idénticas a las disposiciones equivalentes del RMC y el REMC, respectivamente. Por tanto, lo que se expone a continuación se aplicará mutatis mutandis a los dibujos y modelos comunitarios. Los procedimientos específicos de los dibujos y modelos comunitarios se detallan más adelante en el apartado 4. Los procedimientos específicos de las marcas internacionales se detallan más adelante en el apartado 5.
Una ejecución forzosa es el acto en virtud del cual, un agente judicial se incauta de las propiedades de un deudor , tras una s entencia de pos esión obtenida por un demandante en un juzgado. De este modo, el acreedor podrá recuperar la deuda que reclama respecto a la totalidad de los bienes del deudor, incluidos sus derechos sobre marcas.
Artículo 16 del RMC
El RMC no establece disposiciones unificadas ni completas aplicables a la ejecución forzosa respecto a las MC o las solicitudes de MC. Por el contrario, en el artículo 16 del RMC se remite a l a legislación de un E stado miembro, por lo que respecta al procedimiento de ej ecución forzosa. A tal fin, una ejecución forzosa de una MC se asimilará, en s u totalidad y para el conjunto del territorio de l a Comunidad, a una ejecución forzosa de una marca registrada en el Estado miembro en el que el titular o el solicitante de la MC tenga su sede o su domicilio o, si éste no fuera el caso, a una ejecución forzosa de una m arca registrada en el Estado miembro en el que dicho titular cuente con un establecimiento o, si tampoco fuera éste el caso, a una ejecución forzosa de una marca registrada en España (Estado miembro en el que se ubica la sede de la Oficina).
No obstante, lo anterior es aplicable salvo disposición en contrario de l os artículos 17 a 24 del RMC.
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Artículo 20, apartado 2; artículo 50, apartado 3; y artículo 23, apartado 3 del RMC Regla 36, apartado 2 del REMC
El registro de una ejecución forzosa no e s obligatorio. No obstante, dicho registro presenta ciertas ventajas:
a) A la luz de lo dispuesto en el artículo 23, apartado 3 del RMC, frente a terceros que pudieran haber adquirido derechos sobre la marca o que hayan inscrito en el registro derechos sobre la marca que son incompatibles con la ejecución forzosa registrada, el beneficiario podrá ejercer los derechos conferidos por dicha ejecución forzosa, si la legislación nacional así lo permite, únicamente:
• si la ejecución forzosa se inscribió en el Registro de Marcas Comunitarias, o
• a falta de registro de la ejecución forzosa, si tales derechos hubiesen sido adquiridos por un tercero después de la fecha de la sentencia relativa a tal ejecución, teniendo conocimiento de la misma.
b) En el caso de que una ejecución forzosa contra una marca comunitaria se inscribiera en el Registro, la renuncia a dicha marca por parte de su titular sólo se registrará en di cho Registro si el titular establece que ha i nformado al beneficiario de su intención de renunciar..
Por tanto, el beneficiario de una ejecución forzosa registrada tiene derecho a ser informado con antelación por el titular de la marca de su intención de renunciar a la misma.
c) En el caso de que se inscribiera una e jecución forzosa contra una marca comunitaria en el Registro, la Oficina notificará al beneficiario, al menos seis meses antes de l a expiración de t al inscripción, que ésta se aproxima a s u expiración. La O ficina notificará asimismo al beneficiario cualquier pérdida de derechos, así como la expiración de la inscripción en el registro, en su caso.
d) La inscripción en el Registro de una e jecución forzosa es importante para mantener la veracidad del mismo, sobre todo en el caso de los procedimientos inter partes.
2 Requisitos relativos a la presentación de una solicitud de registro de una ejecución forzosa
Artículo 20, apartado 3, del RMC Regla 33, regla 84, apartado 3, letra i) del REMC
Tanto las solicitudes de MC, como las MC, pueden s er objeto del registro de una ejecución forzosa.
La solicitud de registro de una ejecución forzosa deberá cumplir los siguientes requisitos.
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2.1 Formulario de solicitud y solicitudes para dos o más ejecuciones forzosas
Regla 95, letras a) y b) del REMC
Se recomienda encarecidamente presentar la solicitud de r egistro de u na ejecución forzosa de una MC en el formulario de Solicitud de Registro. Este formulario se encuentra disponible gratuitamente en las lenguas oficiales de la Unión Europea. Puede descargarse del sitio web de la OAMI.
Podrá emplearse cualquier versión lingüística del formulario, siempre que se cumplimente en una de las lenguas a las que se alude en el apartado 2.2 que sigue.
Regla 31, apartado 7; y regla 33, apartado 1 del REMC
Se podrá presentar una única solicitud de registro de una ejecución forzosa relativa a dos o más MC o solicitudes de MC, siempre que en c ada caso se trate del mismo titular inscrito y del mismo beneficiario.
2.2 Lenguas
Regla 95, letra a) del REMC
La solicitud de r egistro de una ejecución forzosa contra una solicitud de MC podrá presentarse en la primera o la segunda lengua de la solicitud de MC.
Regla 95, letra b) del REMC
La solicitud de registro de una ejecución forzosa contra una MC deberá presentarse en una de l as cinco lenguas de l a Oficina, a s aber: español, alemán, francés, inglés o italiano.
2.3 Tasas
Artículo 162, apartado 2, letras c) y d) del RMC Regla 33, apartados 1 y 4 del REMC Artículo 2, apartado 23 del RTMC
No se considerará presentada la solicitud de registro de una ejecución forzosa hasta que no se haya abonado la tasa exigida. El importe de dicha tasa es de 200 EUR por cada marca comunitaria a que se refiera.
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No obstante, en el caso de que se soliciten diversas inscripciones de ejecución forzosa en una única solicitud, y siempre que en todos los casos se trate del mismo titular inscrito y del mismo beneficiario, la tasa no superará los 1 000 EUR.
También se aplicará este límite cuando se presenten diversas solicitudes de registro de ejecución forzosa al mismo tiempo, siempre que pudiesen haber sido presentadas en una única solicitud y que se trate del mismo titular inscrito y del mismo beneficiario en todos los casos.
Una vez abonada la tasa correspondiente, ésta no se reembolsará en caso de que la solicitud de r egistro de la ejecución forzosa fuere denegada o retirada (expediente clasificado).
Cuando el solicitante del registro (véase el apartado 2.4.1 más adelante) sea un tribunal u otra autoridad, no deberá abonarse ninguna tasa, y se aplicará la cooperación administrativa.
2.4 Solicitantes y contenido preceptivo de la solicitud
2.4.1 Solicitantes
Artículo 20, apartado 3, del RMC
Podrá solicitar el registro de una ejecución forzosa:
a) el titular de la MC;
b) el beneficiario de la ejecución forzosa;
c) un tribunal u otra autoridad.
Los requisitos formales que deberá cumplir la solicitud dependerán de q uién la presente.
2.4.2 Indicaciones preceptivas respecto a la MC y el beneficiario
Regla 31, regla 33, apartado 1, del REMC
La solicitud de registro de una ej ecución forzosa deberá incluir la siguiente información.
Regla 31, apartado 1, letra a); regla 33, apartado 1, del REMC
a) El número de registro de la MC en cuestión. Si se tratase de una s olicitud para varias MC, se deberá indicar todos los números.
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Regla 1, apartado 1, letra b); regla 31, apartado 1, letra b); y regla 33, apartado 1 del REMC
b) El nombre, la dirección y la nacionalidad del beneficiario, así como el Estado en el cual tenga su domicilio, su sede o un establecimiento.
Regla 1, apartado 1, letra e); regla 31, apartado 2; y regla 33, apartado 1, del REMC
c) Si el beneficiario designa un r epresentante, deberá indicarse el nombre y la dirección profesional del mismo, y la indicación de la dirección puede sustituirse por la mención del número de identificación atribuido por la Oficina.
2.4.3 Requisitos aplicables a la persona que presenta la solicitud – Firma, prueba de la ejecución forzosa y representación
Regla 79, regla 82, apartado 3, del REMC
Los requisitos relativos a la firma, prueba de la ejecución forzosa y representación varían en función de la persona que presente la solicitud. Cuando se haga referencia al requisito de una firma, con arreglo a la regla 79 y la regla 82, apartado 3 del REMC, en las comunicaciones electrónicas, la indicación del nombre del remitente se considerará equivalente a la firma.
2.4.3.1 Solicitud presentada por el titular de la MC
Regla 1, apartado 1, letra b); regla 33, apartado 1, del REMC
Cuando la solicitud se presente en nombre del titular de la MC, deberá llevar la firma de éste.
La Oficina no i nformará al beneficiario de que se ha s olicitado el registro de l a ejecución forzosa. Sin embargo, sí le informará cuando la ejecución forzosa se inscriba en el Registro.
Cuando el beneficiario presente una declaración en la Oficina oponiéndose al registro de la ejecución forzosa, la Oficina transmitirá la declaración al titular de la MC tan sólo a título informativo. La Oficina no adoptará ninguna medida adicional en relación con dicha declaración. Una vez registrada, todo beneficiario que se oponga al registro de la ejecución forzosa podrá solicitar la cancelación o modificación de tal registro (véase el apartado 3 más adelante).
Todo litigio sobre la procedencia o no de su registro y sobre el contenido del mismo deberá ser resuelto por las partes interesadas de c onformidad con la legislación nacional pertinente (artículo 16 del RMC).
Ejecución forzosa
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2.4.3.2 Solicitud presentada por el beneficiario
La solicitud también puede presentarla el beneficiario. En este caso, deberá llevar su firma.
Además, se deberá aportar la prueba de la ejecución forzosa.
2.4.3.3 Solicitud presentada por un tribunal u otra autoridad
La solicitud la podrá formular también el tribunal o la autoridad que emita la sentencia. En este caso, deberá llevar la firma del tribunal o la autoridad en cuestión.
Además, se deberá aportar la prueba de la ejecución forzosa.
2.4.3.4 Prueba de la ejecución forzosa
Será prueba suficiente de la ejecución forzosa que la solicitud de registro de la misma vaya acompañada de la sentencia del tribunal.
En muchos casos, las partes de los procedimientos de ejecución forzosa no desearán revelar todos los pormenores de l a sentencia, que puede c ontener información confidencial. En tales casos, bastará con que se presente únicamente una parte o un extracto de la sentencia relativa a la ejecución forzosa, en la medida en que se identifique a las partes del procedimiento de la ejecución, la MC objeto de ésta, y que la sentencia es firme. El resto de elementos podrán omitirse u ocultarse.
Los documentos originales pasan a formar parte del expediente y, por tanto, no pueden devolverse a la persona que los haya aportado. Bastará con presentar fotocopias simples. No será necesario autenticar o legalizar el original o la fotocopia de los documentos, salvo en el caso de que la Oficina albergue dudas razonables respecto a su veracidad.
Regla 95, letras a) y b); regla 96, apartado 2 del REMC
Los documentos que constituyan la prueba de la ejecución forzosa deberán presentarse:
a) en la lengua de la Oficina que se haya convertido en lengua de procedimiento de registro de la ejecución forzosa; véase el apartado 2.2 anterior;
b) en cualquiera de las lenguas oficiales de la Comunidad distinta de la lengua de procedimiento; en ese caso, la Oficina podrá exigir una traducción del documento a una lengua de la Oficina, que deberá presentarse en el plazo fijado por esta última.
Cuando los documentos acreditativos no se presenten ni en una lengua oficial de la Unión Europea, ni en l a lengua de l os procedimientos, la Oficina podrá exigir una
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traducción a la lengua de los procedimientos o, a elección de la parte que solicite el registro de la ejecución forzosa, a cualquiera de las lenguas de la Oficina. La Oficina establecerá un pl azo límite de dos meses desde la fecha de not ificación de t al comunicación. Si la traducción no se aporta en dicho plazo, el documento no se tendrá en cuenta y se considerará que no ha sido presentado.
2.4.4 Representación
Artículo 92, apartado 2 y artículo 93, apartado 1 del RMC
Se aplican las normas generales sobre representación (véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación Profesional).
2.5 Examen de la solicitud de registro
2.5.1 Tasas
Regla 33, apartado 2 del REMC
En caso de que no se haya recibido la tasa exigida, la Oficina notificará al solicitante del registro (salvo que el solicitante del registro sea un tribunal u o tra autoridad, en cuyo caso no se exige ninguna tasa; véase el apartado 2.3 anterior) que la solicitud se considera no pr esentada porque la tasa correspondiente no s e ha a bonado. No obstante, podrá presentarse una nuev a solicitud en t odo momento, siempre que se abone la tasa correcta desde un principio.
2.5.2 Examen de los requisitos formales obligatorios
Regla 33, apartado 3 del REMC
La Oficina verificará si la solicitud de registro de ejecución forzosa cumple con los requisitos formales a que se refiere el apartado 2.4 anterior (indicación del/de los número(s) de la(s) MC y de la información exigida en relación con el beneficiario, y del representante del beneficiario, si procede).
No se examinará la validez de la sentencia sobre la ejecución forzosa.
Artículo 93, apartado 1, del RMC Regla 33, regla 76 y regla 77 del REMC
La Oficina verificará si la solicitud de registro de la ejecución forzosa está debidamente firmada. Cuando la solicitud esté firmada por el representante del beneficiario, una autorización podrá ser exigida por la Oficina o, en el contexto de procedimientos inter partes, por la otra parte de los procedimientos. En este caso, si no se presenta autorización, el procedimiento continuará como si no s e hubiera designado ningún
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representante. Cuando la solicitud de registro de la ejecución forzosa esté firmada por el representante del titular que ya ha sido designado representante para la MC en cuestión, se habrán cumplido los requisitos relativos a la firma y los poderes.
Artículo 92, apartado 2 y artículo 93, apartado 1, del RMC
El examen determinará si el solicitante del registro (es decir, el titular de la MC o el beneficiario) tiene la obligación de hac erse representar ante la Oficina (véase el apartado 2.4.4 anterior).
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Regla 33, apartado 3 del REMC
La Oficina informará por escrito al solicitante del registro de cualquier irregularidad encontrada en la solicitud. Si no se subsanasen las irregularidades en el plazo fijado en dicha comunicación, que normalmente será de dos meses a partir de la notificación, la Oficina denegará la solicitud de registro de la ejecución forzosa.
Cuando la solicitud de registro de la ejecución forzosa haya sido presentada únicamente por el titular de la MC, la Oficina no informará al beneficiario. El examen de la prueba de l a ejecución forzosa se realizará de o ficio. La O ficina no tendrá en cuenta las declaraciones o alegaciones del beneficiario sobre la existencia o el alcance de la ejecución forzosa o del registro de la misma; el beneficiario no podrá oponerse al registro de una ejecución forzosa.
2.6 Procedimiento de registro y publicaciones
Regla 33, apartado 4 y regla 84, apartado 5, del REMC
La ejecución forzosa relativa a solicitudes de MC se mencionará en los expedientes conservados por la Oficina correspondientes a las solicitudes de marca comunitaria en cuestión.
La Oficina notificará al solicitante del registro la anotación de la ejecución forzosa en los expedientes que conserve la Oficina. Si procede, también se le notificará al solicitante de la MC.
Regla 84, apartado 3, letra i) y regla 85, apartado 2, del REMC
Cuando la marca se registre, la ejecución forzosa se publicará en el Boletín de Marcas Comunitarias y se inscribirá en el Registro de Marcas Comunitarias. La Oficina informará al solicitante del registro de t al inscripción de l a ejecución forzosa. Si procede, también se informará al titular de la MC.
Se podrá acceder a es ta información mediante la consulta pública de expedientes (véanse las Directrices, Parte E, Operaciones de r egistro, Sección 5, Consulta pública).
Las ejecuciones forzosas se publican en la parte C.7. del Boletín.
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3 Procedimiento para la cancelación o la modificación de la inscripción de una ejecución forzosa
Regla 35, apartado 1 del REMC
La inscripción de una ejecución forzosa se cancelará o modificará a petición de una de las partes interesadas, es decir, el solicitante o el propietario de la MC, o el beneficiario registrado.
3.1 Competencia, lenguas, presentación de la solicitud
Artículo 133 del RMC Regla 35, apartados 3, 6 y 7 del REMC
Son de aplicación los apartados 2.1 y 2.2 anteriores.
No existe un formulario de la Oficina para registrar la cancelación o la modificación de una ejecución forzosa.
3.2 Persona que presenta la solicitud
Regla 35, apartado 1 del REMC
Podrá presentar la solicitud de c ancelación o modificación del registro de una ejecución forzosa:
a) el solicitante o titular de la MC y el beneficiario, conjuntamente,
b) el solicitante o titular de la MC, o
c) el beneficiario registrado.
3.2.1 Cancelación del registro de una ejecución forzosa
Regla 35, apartado 4 del REMC
La solicitud de cancelación del registro de una ejecución forzosa deberá ir acompañada de p ruebas acreditativas de l a extinción de l a ejecución forzosa registrada. Entre tales documentos figurará la sentencia firme del tribunal.
Cuando el beneficiario registrado formule la solicitud de cancelación por sí solo, no se informará de ello al solicitante o titular de la MC. Se remitirá al beneficiario copia de las observaciones presentadas por el titular, pero ello no i mpedirá la cancelación del registro de la ejecución forzosa. El apartado 2.4.3.1 anterior se aplicará mutatis mutandis.
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Cuando se haya solicitado simultáneamente el registro de varias ejecuciones forzosas, será posible cancelar uno de t ales registros de manera individual. En tal caso, se creará un nuevo número de registro para la ejecución forzosa cancelada.
3.2.2 Modificación del registro de una ejecución forzosa
Regla 35, apartado 6, del REMC
El registro de una ejecución forzosa podrá modificarse previa presentación de la sentencia del tribunal correspondiente que indique tal modificación.
3.3 Contenido de la solicitud
Regla 35 del REMC
Se aplicará el apartado 2.4 anterior, salvo que no s ea necesario indicar los datos relativos al beneficiario, excepto en caso de modificación del nombre del beneficiario registrado.
3.4 Tasas
3.4.1 Cancelación del registro de una ejecución forzosa
Artículo 162, apartado 2, del RMC Regla 35, apartado 3 del REMC Artículo 2, apartado 24 del RTMC
No se considerará presentada la solicitud de cancelación del registro de una ejecución forzosa hasta que se haya abonado la tasa exigida de 200 EUR por cancelación (salvo que el solicitante del registro sea un tribunal u otra autoridad, en cuyo caso no se exige ninguna tasa; véase el apartado 2.3 anterior). Cuando se soliciten varias cancelaciones al mismo tiempo o en l a misma solicitud, y cuando el solicitante o el titular de la MC y el beneficiario sean los mismos en cada caso, el importe de la tasa no superará los 1 000 EUR.
Una vez abonada la tasa correspondiente, ésta no se reembolsará en caso de que la solicitud fuese denegada o retirada.
3.4.2 Modificación del registro de una ejecución forzosa
Regla 35, apartado 6 del REMC
La modificación del registro de una ejecución forzosa no está sujeta a tasa.
Ejecución forzosa
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3.5 Examen de la solicitud
3.5.1 Tasas
Regla 35, apartado 3 del REMC
En caso de que no se haya recibido la tasa exigida relativa a la solicitud de cancelación del registro de una ejecución forzosa, la Oficina notificará al solicitante del registro que tal solicitud se considera no presentada.
3.5.2 Examen de la Oficina
Regla 35, apartados 2 y 4 del REMC
Por lo que respecta a los elementos preceptivos de la solicitud, se aplicará el apartado 2.5.2 mutatis mutandis, incluido lo relativo a l a prueba de l a ejecución forzosa, siempre que se exija dicha prueba.
La Oficina notificará cualquier irregularidad al solicitante del registro, señalando un plazo límite de dos meses para su subsanación. Si no se subsanasen las irregularidades, la Oficina denegará la solicitud de r egistro de l a cancelación o l a modificación.
Regla 35, apartado 6 y regla 84, apartado 5, del REMC
El registro de la cancelación o modificación de la ejecución forzosa se comunicará a la persona que haya presentado la solicitud; si la solicitud la hubiere presentado el beneficiario, el solicitante o el titular de la MC recibirán una copia de dicha comunicación.
3.6 Registro y publicación
Regla 84, apartado 3, letra s); regla 85, apartado 2, del REMC
En el caso de una MC registrada, la creación, cancelación o modificación de un registro de una ejecución forzosa se inscribirá en el Registro de Marcas Comunitarias y se publicará en el Boletín de Marcas Comunitarias, en el apartado C.7.
En el caso de una s olicitud de MC, la cancelación o m odificación de la ejecución forzosa se hará constar en los expedientes de la solicitud de MC de que se trate. Cuando se publique el registro de la MC, no se publicará ningún dato relativo a las ejecuciones forzosas que hayan sido canceladas, y en caso de modificación de tales ejecuciones, se publicarán los datos en el apartado C.7.2. tal como hayan sido modificados.
Ejecución forzosa
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4 Ejecución forzosa de dibujos y modelos comunitarios registrados
Artículo 27, artículo 30, artículo 33 y artículo 51, apartado 4, del RDC Artículo 24, artículo 26 y artículo 27, apartado 2, del REDC Anexos 18 y 19 del RTDC
Las normas contenidas en el RDC, el REDC y el RTDC relativas a las ejecuciones forzosas concuerdan con las disposiciones del RMC, el REMC y el RTMC respectivamente.
Por tanto, los principios jurídicos y el procedimiento relativos al registro, la cancelación o modificación de ejecuciones forzosas de marcas se aplicarán mutatis mutandis a los dibujos y modelos comunitarios, con la excepción de los siguientes procedimientos específicos.
4.1 Solicitudes múltiples de dibujos y modelos comunitarios registrados
Artículo 37 del RDC Artículo 24, apartado 1 del REDC
Una solicitud de dibujo o modelo comunitario registrado podrá presentarse en forma de solicitud múltiple por la que se solicitan varios dibujos o modelos.
Por lo que respecta a los efectos jurídicos de una ejecución jurídica y al procedimiento de registro de la misma, los dibujos o modelos individuales contenidos en una solicitud múltiple deberán tramitarse como si fuesen solicitudes separadas, y se seguirán aplicando las mismas disposiciones una vez registrados los dibujos o m odelos contenidos en la solicitud múltiple.
Dicho de otro modo, cada dibujo o modelo que figure en una solicitud múltiple podrá ser objeto de una ejecución forzosa independientemente de los demás dibujos y modelos.
Anexos 18 y 19 del RTDC
La tasa de 200 EUR que se exige para el registro o la cancelación de una ejecución forzosa se aplica por dibujo o modelo, y no por solicitud múltiple. Lo mismo ocurre con el límite de 1 000 EUR si se presentan solicitudes múltiples.
Ejemplo 1
De una solicitud múltiple que contenga 10 dibujos o modelos, 6 dibujos o modelos son objeto de ej ecución forzosa en f avor del mismo beneficiario. La tasa ascenderá a 1 000 EUR en caso de que se presente una única solicitud para el registro de estas
Ejecución forzosa
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6 ejecuciones forzosas, o en caso de que se presenten varias solicitudes en el mismo día.
Ejemplo 2
De una solicitud múltiple que contenga 10 dibujos o modelos, 5 dibujos o modelos son objeto de ejecución forzosa en favor del mismo beneficiario. Asimismo se solicita el registro de una ej ecución forzosa respecto a ot ro dibujo o m odelo que no f igura en dicha solicitud múltiple. La tasa exigida será de 1 000 EUR siempre que:
• se presente una única solicitud de registro para estas 6 ejecuciones forzosas, o se presenten diversas solicitudes en el mismo día, y
• el titular del dibujo o modelo comunitario y el beneficiario sean los mismos en los 6 casos.
5 Ejecución forzosa de marcas internacionales
El Sistema de Madrid permite la inscripción de una ejecución forzosa contra un registro internacional (véase la Regla 20 del Reglamento Común del Arreglo de Madrid relativo al Registro Internacional de Marcas y del Protocolo concerniente a ese Arreglo). Para comodidad de los usuarios, se encuentra disponible el formulario MM19 para solicitar que se anote en el Registro Internacional una restricción del derecho de disposición del titular. La utilización de tal formulario se recomienda encarecidamente para evitar irregularidades. Las solicitudes deben presentarse directamente ante la Oficina Internacional por el titular, o en l a oficina nacional de P I del titular registrado, en la oficina de una par te contratante a l a que se otorgue la ejecución forzosa, o en l a oficina del beneficiario. La solicitud no podr á presentarse directamente en la Oficina Internacional por el beneficiario. No deberá utilizarse el formulario de s olicitud de inscripción propio de la OAMI.
Para más información sobre el registro de ejecuciones forzosas, véase la Parte B, capítulo II, apartados 92.01 a 92.04 de la Guía para el Registro Internacional de Marcas según el Arreglo de M adrid y el Protocolo de M adrid (www.wipo.int/madrid/es/guide). Para más información sobre marcas internacionales, véanse las Directrices, Parte M, Marcas Internacionales.
Procedimientos de insolvencia o similares
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE E
OPERACIONES DE REGISTRO
SECCIÓN 3
LA MARCA COMUNITARIA COMO OBJETO DE PROPIEDAD
CAPÍTULO 5
PROCEDIMIENTOS DE INSOLVENCIA O SIMILARES
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Índice
1 Introducción............................................................................................... 3
2 Requisitos relativos a la presentación de una solicitud de registro de procedimientos de insolvencia o similares ....................................... 5 2.1 Formulario de solicitud..............................................................................5 2.2 Lenguas ......................................................................................................5 2.3 Tasas...........................................................................................................6 2.4 Solicitantes y contenido preceptivo de la solicitud .................................6
2.4.1 Solicitantes ..................................................................................................... 6 2.4.2 Indicaciones preceptivas respecto a la MC y el administrador judicial .......... 6 2.4.3 Requisitos aplicables a la persona que presenta la solicitud – Firma,
prueba de nombramiento y representación.................................................... 7 2.4.4 Representación .............................................................................................. 8
2.5 Examen de la solicitud de registro............................................................8 2.6 Procedimiento de registro y publicaciones..............................................9
3 Procedimiento para la cancelación o la modificación de la inscripción de procedimientos de insolvencia ..................................... 10 3.1 Competencia, lenguas, presentación de la solicitud .............................10 3.2 Persona que presenta la solicitud...........................................................10
3.2.1 Cancelación del registro de una insolvencia ................................................ 10 3.2.2 Modificación del registro de una insolvencia................................................ 11
3.3 Contenido de la solicitud .........................................................................11 3.4 Tasas.........................................................................................................11
3.4.1 Cancelación del registro de procedimientos de insolvencia ........................ 11 3.4.2 Modificación del registro de procedimientos de insolvencia ........................ 11
3.5 Examen de la solicitud.............................................................................11 3.6 Registro y publicación .............................................................................12
4 Procedimientos de insolvencia para marcas internacionales............. 12
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1 Introducción
Artículo 16 y artículo 21 del RMC Regla 33 y regla 35 del REMC Artículo 31 del RDC Reglamento (CE) nº 1346/2000 del Consejo, de 2 9 de mayo de 2000, sobre procedimientos de insolvencia.
Las marcas comunitarias (MC) registradas y las solicitudes de marca comunitaria pueden verse afectadas por procedimientos de insolvencia o similares.
Los dibujos y modelos comunitarios (DMC) y las solicitudes de d ibujo y modelo comunitario pueden verse afectados por procedimientos de insolvencia o similares.
Los apartados 1 a 3 del presente capítulo se refieren al registro de procedimientos de insolvencia o similares contra MC y solicitudes de MC. Las disposiciones enunciadas en el RDC y el REDC relativas a l os procedimientos de i nsolvencia y similares que conciernen a los dibujos y modelos son idénticas a las disposiciones equivalentes del RMC y el REMC, respectivamente. Por tanto, lo que se expone a c ontinuación se aplicará mutatis mutandis a los dibujos y modelos comunitarios. Los procedimientos específicos de las marcas internacionales se detallan más adelante en el apartado 4.
A efectos de l as presentes Directrices, por «procedimientos de insolvencia» se entiende los procedimientos colectivos que conllevan el desapoderamiento parcial o total de un deudor y el nombramiento de un administrador judicial. En el Reino Unido, por ejemplo, tales procedimientos comprenden la liquidación por un tribunal o bajo la supervisión de éste, el concurso voluntario de acreedores (con confirmación por parte del tribunal), la administración, los convenios voluntarios conforme a l a legislación sobre insolvencia y la quiebra o el embargo, mientras que por «administrador judicial» se entiende cualquier persona física o jurídica cuya función consiste en administrar o liquidar los activos de los que se haya desposeído al deudor, o supervisar la administración de los asuntos de éste. En el Reino Unido, por ejemplo, entre tales personas físicas o j urídicas se cuentan liquidadores, supervisores de convenios voluntarios, administradores, administradores judiciales y concursales; por «tribunal» se entiende el órgano judicial o cualquier otra institución competente de un Estado miembro facultado para emprender procedimientos de i nsolvencia o adopt ar decisiones en el curso de los mismos; y se entiende que «sentencia», en relación a la apertura de procedimientos de insolvencia, o al nombramiento de un administrador judicial, comprende la resolución de c ualquier tribunal facultado para iniciar tales procedimientos o designar a un administrador judicial (para más información sobre la terminología en otros territorios, véase el Reglamento (CE) nº 1346/2000 del Consejo, de 29 de mayo de 2000, sobre procedimientos de insolvencia).
En las presentes Directrices se explica el procedimiento ante la Oficina para el registro de la apertura, la modificación o el cierre de procedimientos de insolvencia o similares. De conformidad con el artículo 16 del RMC, el resto de disposiciones son objeto de la legislación nacional. Por otra parte, el Reglamento (CE) nº 1346/2000 del Consejo, de 29 de mayo de 2000 sobre procedimientos de insolvencia regula las disposiciones relativas a la jurisdicción, el reconocimiento y la legislación aplicable en el ámbito de los procedimientos de insolvencia.
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Artículo 21, apartado 1, del RMC
En el Reglamento se establece específicamente que el único procedimiento de insolvencia en el que podrá ser incluida una marca comunitaria será el que haya sido abierto en el Estado miembro en cuyo territorio esté situado el centro de los intereses principales del deudor, y la única excepción que se contempla es aquélla situación en la que el deudor sea una compañía de seguros o una entidad de crédito, en cuyo caso, el único procedimiento de i nsolvencia en el que podrá ser incluida una marca comunitaria será el abierto en el Estado miembro en el que hayan sido autorizadas dichas compañías o en tidades. El «centro de los intereses principales» deberá corresponder al lugar en el que el deudor lleve a cabo la administración de sus intereses de manera regular y, por tanto, sea verificable por terceros.
Artículo 21, apartado 3 y artículo 23, apartado 4, del RMC
El registro de la apertura, modificación y cierre de procedimientos de insolvencia no es obligatorio, pero reporta ventajas concretas.
a) a la luz de lo dispuesto en el artículo 23, apartado 4 del RMC, frente a terceros que pudieran haber adquirido derechos sobre la marca, o que hayan inscrito en el registro tales derechos que son incompatibles con la insolvencia registrada, los efectos se regirán por la legislación del Estado miembro en el que se incoen inicialmente tales procedimientos, con arreglo a lo dispuesto en la legislación nacional o en los convenios aplicables en este ámbito;
b) en el caso de q ue se inscribiera un pr ocedimiento de i nsolvencia contra una marca comunitaria en el registro, el titular de la MC perderá su derecho a actuar y, por tanto, no pod rá efectuar ninguna acción ante la Oficina (como las de retirada, renuncia, cesión, presentación de oposiciones, actuación en procedimientos inter partes, etc.);
c) en el caso de q ue se inscribiera un pr ocedimiento de i nsolvencia contra una marca comunitaria en el registro, la Oficina notificará al administrador judicial, al menos seis meses antes de la expiración de tal inscripción, que ésta se aproxima a su expiración. La Oficina notificará asimismo al administrador judicial cualquier pérdida de derechos, así como la expiración de la inscripción en el registro, en su caso;
d) la inscripción en el registro de procedimientos de insolvencia es importante para mantener la veracidad del mismo, sobre todo en el caso de los procedimientos inter partes. A este respecto, véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales, apartado 6.5.5.2.
La Oficina recomienda encarecidamente que los administradores judiciales retiren, entreguen o cedan las MC y las solicitudes de MC objeto de procedimientos de insolvencia previamente a la liquidación definitiva.
Procedimientos de insolvencia o similares
Directrices relativas al Examen ante la Oficina, Parte E, Operaciones de registro Página 5
FINAL VERSION 1.0 DATE 01/08/2014
2 Requisitos relativos a la presentación de una solicitud de registro de procedimientos de insolvencia o similares
Artículo 21, apartado 3, y artículo 24, del RMC Regla 33, regla 84, apartado 3, letra i), del REMC
Tanto las solicitudes de MC, como las MC, pueden ser objeto del registro de procedimientos de insolvencia.
La solicitud de registro de procedimientos de insolvencia deberá cumplir los siguientes requisitos.
2.1 Formulario de solicitud
Regla 95, letras a) y b), del REMC
La solicitud deberá consistir en una pet ición formal del registro de procedimientos de insolvencia o similares.
Se recomienda encarecidamente presentar la solicitud de registro de procedimientos de insolvencia contra una MC en e l formulario de Solicitud de R egistro utilizando la opción «otros» en la sección del formulario denominada «Tipo de registro». Este formulario se encuentra disponible gratuitamente en las lenguas oficiales de la Unión Europea. Puede descargarse del sitio web de la OAMI.
Podrá emplearse cualquier versión lingüística del formulario, siempre que se cumplimente en una de las lenguas a las que se alude en el apartado 2.2 que sigue.
2.2 Lenguas
Regla 95, letra a), del REMC
La solicitud de registro de procedimientos de insolvencia contra una solicitud de MC podrá presentarse en la primera o la segunda lengua de la solicitud de MC.
Regla 95, letra b), del REMC
La solicitud de r egistro de pr ocedimientos de i nsolvencia contra una MC deberá presentarse en una de l as cinco lenguas de l a Oficina, a s aber: español, alemán, francés, inglés, italiano.
Procedimientos de insolvencia o similares
Directrices relativas al Examen ante la Oficina, Parte E, Operaciones de registro Página 6
FINAL VERSION 1.0 DATE 01/08/2014
2.3 Tasas
Artículo 162, apartado 2, letras c) y d), del RMC Regla 33, apartados 1 y 4, del REMC Artículo 2, apartado 23, del RTMC
No se aplican tasas por el registro de procedimientos de insolvencia o similares.
2.4 Solicitantes y contenido preceptivo de la solicitud
2.4.1 Solicitantes
Artículo 20, apartado 3, del RMC
Podrá solicitar el registro de procedimientos de insolvencia o similares:
a) el administrador judicial,
b) el tribunal,
c) el solicitante/propietario/titular.
2.4.2 Indicaciones preceptivas respecto a la MC y el administrador judicial
Regla 31, regla 33, apartado 1, del REMC
La solicitud de registro de procedimientos de insolvencia o similares deberá contener la información siguiente.
Artículo 21, apartado 2, del RMC Regla 31, apartado 1, letra a) y regla 33, apartado 1, del REMC
a) El número de registro de la MC en cuestión.
En el caso de que el solicitante del registro indique únicamente algunas de las MC del propietario, la Oficina registrará los procedimientos de insolvencia contra todas las MC y las solicitudes de MC vinculadas al número de identificación del propietario en la Oficina.
Si el propietario es cotitular de una MC o una solicitud de MC, el procedimiento de insolvencia se aplicará a la parte correspondiente del cotitular.
Procedimientos de insolvencia o similares
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FINAL VERSION 1.0 DATE 01/08/2014
Regla 1, apartado 1, letra b); regla 31, apartado 1, letra b) y regla 33, apartado 1, del REMC
b) El nombre, la dirección y la nacionalidad del administrador judicial, así como el Estado en el cual tenga su domicilio, su sede o un establecimiento.
Regla 1, apartado 1, letra e); regla 31, apartado 2; y regla 33, apartado 1 del REMC
c) Si el administrador judicial designa un representante, deberá indicarse el nombre y la dirección profesional del mismo, y la indicación de l a dirección puede sustituirse por la mención del número de identificación atribuido por la Oficina.
2.4.3 Requisitos aplicables a la persona que presenta la solicitud – Firma, prueba de nombramiento y representación
Regla 79, regla 82, apartado 3, del REMC
Cuando se haga referencia al requisito de una firma, con arreglo a la regla 79 y la regla 82, apartado 3 del REMC, en las comunicaciones electrónicas, la indicación del nombre del remitente se considerará equivalente a la firma.
Se considerará prueba suficiente del nombramiento de un administrador judicial y de los procedimientos de i nsolvencia si la solicitud de r egistro del procedimiento de insolvencia se acompaña de la sentencia del tribunal pertinente.
Basta con que se aporte la resolución relativa a la insolvencia. En muchos casos, las partes de los procedimientos de insolvencia no desearán revelar todos los pormenores de tal resolución, que puede contener información confidencial. En estos casos, bastará con que se presente únicamente una parte o un ex tracto de la resolución, en la medida en que se identifique a las partes del procedimiento. El resto de elementos podrán omitirse u ocultarse.
Los documentos originales pasan a formar parte del expediente y, por tanto, no pueden devolverse a la persona que los haya aportado. Bastará con presentar fotocopias simples. No será necesario autenticar o legalizar el original o la fotocopia de los documentos, salvo en el caso de que la Oficina albergue dudas razonables respecto a su veracidad.
Regla 95, letras a) y b) y regla 96, apartado 2, del REMC
Los documentos que constituyan la prueba de los procedimientos de insolvencia deberán presentarse:
a) en la lengua de la Oficina que se haya convertido en lengua de procedimiento de registro de la insolvencia; véase el apartado 2.2 anterior;
b) en cualquiera de las lenguas oficiales de la Comunidad distinta de la lengua de procedimiento; en ese caso, la Oficina podrá exigir una traducción del
Procedimientos de insolvencia o similares
Directrices relativas al Examen ante la Oficina, Parte E, Operaciones de registro Página 8
FINAL VERSION 1.0 DATE 01/08/2014
documento a una lengua de la Oficina, que deberá presentarse en el plazo fijado por esta última.
Cuando los documentos acreditativos no se presenten ni en una lengua oficial de la Unión Europea, ni en la lengua del procedimiento, la Oficina podrá exigir una traducción a l a lengua del procedimiento o, a elección de l a parte que solicite el registro de la insolvencia, a c ualquiera de l as lenguas de l a Oficina. La O ficina establecerá un pl azo límite de dos meses desde la fecha de not ificación de t al comunicación. Si la traducción no se aporta en dicho plazo, el documento no se tendrá en cuenta y se considerará que no ha sido presentado.
2.4.4 Representación
Artículo 92, apartado 2, y artículo 93, apartado 1, del RMC
Se aplican las normas generales sobre representación (véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación Profesional).
2.5 Examen de la solicitud de registro
Artículo 21, apartado 1, del REMC
La Oficina comprobará que no existen otros registros pendientes, y que no se han registrado ya otros procedimientos de insolvencia respecto al titular en cuestión. Sólo podrá registrarse una s olicitud relativa al Estado miembro en el que se emprendió inicialmente el procedimiento de insolvencia o similar de que se trate.
Regla 33, apartado 3, del REMC
La Oficina verificará si la solicitud de registro del procedimiento de insolvencia cumple con los requisitos formales a que se refiere el apartado 2.4 anterior (indicación del/de los número(s) de la(s) MC y de la información exigida en relación con el administrador judicial, y del representante del administrador judicial, si procede).
No se examinará la validez de la resolución sobre la insolvencia.
Artículo 93, apartado 1, del RMC Regla 33, regla 76 y regla 77 del REMC
La Oficina verificará si la solicitud de r egistro del procedimiento de i nsolvencia está debidamente firmada. Cuando la solicitud esté firmada por el representante del administrador judicial, una autorización podrá ser exigida por la Oficina o, en el contexto de pr ocedimientos inter partes, por la otra parte de l os procedimientos. En este caso, si no se presenta autorización, el procedimiento continuará como si no se hubiera designado ningún representante.
Procedimientos de insolvencia o similares
Directrices relativas al Examen ante la Oficina, Parte E, Operaciones de registro Página 9
FINAL VERSION 1.0 DATE 01/08/2014
Artículo 92, apartado 2, y artículo 93, apartado 1 del RMC
El examen determinará si el solicitante del registro (es decir, el administrador judicial, el tribunal o el solicitante/propietario/titular) tiene la obligación de hacerse representar ante la Oficina (véase el apartado 2.4.4 anterior).
Regla 33, apartado 3, del REMC
La Oficina informará por escrito al solicitante del registro de cualquier irregularidad encontrada en la solicitud. Si no se subsanasen las irregularidades en el plazo fijado en dicha comunicación, que normalmente será de dos meses a partir de la notificación, la Oficina denegará la solicitud de registro del procedimiento de insolvencia.
2.6 Procedimiento de registro y publicaciones
Regla 33, apartado 4 y regla 84, apartado 5, del REMC
Los procedimientos de insolvencia relativos a solicitudes de MC se mencionarán en los expedientes conservados por la Oficina correspondientes a las solicitudes de m arca comunitaria en cuestión.
La Oficina notificará al solicitante del registro la anotación de l os procedimientos de insolvencia en l os expedientes que conserve la Oficina. Si procede, también se le notificará al solicitante de la MC.
Regla 84, apartado 3, letra i) y regla 85, apartado 2, del REMC
Cuando la marca se registre, los procedimientos de i nsolvencia se publicarán en el Boletín de Marcas Comunitarias y se inscribirán en el Registro de Marcas Comunitarias. La Oficina informará al solicitante del registro de t al inscripción del procedimiento de insolvencia.
Los datos de contacto del administrador judicial se anotarán como «dirección de correspondencia» del propietario en la base de datos de titulares y representantes de la OAMI, y todos los pormenores de l os procedimientos de i nsolvencia podrán ser consultados por terceros mediante una solicitud de consulta pública de expedientes (véanse las Directrices, Parte E, Operaciones de r egistro, Sección 5, Consulta pública).
Los procedimientos de insolvencia se publican en la parte C.6. del Boletín. La publicación contendrá el(los) número(s) de registro de la MC, el nombre de la autoridad que solicita la inscripción en el registro, la fecha y el número de la inscripción, y la fecha de publicación de la misma en el Boletín de MC.
Procedimientos de insolvencia o similares
Directrices relativas al Examen ante la Oficina, Parte E, Operaciones de registro Página 10
FINAL VERSION 1.0 DATE 01/08/2014
3 Procedimiento para la cancelación o la modificación de la inscripción de procedimientos de insolvencia
Regla 35, apartado 1, del REMC
La inscripción de procedimientos de insolvencia se cancelará o modificará a petición de una de las partes interesadas, es decir, el solicitante o el propietario de la MC, o el administrador judicial registrado.
3.1 Competencia, lenguas, presentación de la solicitud
Artículo 133 del RMC Regla 35, apartados 3, 6 y 7 del REMC
Son de aplicación los apartados 2.1 y 2.2 anteriores.
No existe un formulario de la Oficina para registrar la cancelación o la modificación de procedimientos de insolvencia.
3.2 Persona que presenta la solicitud
Regla 35, apartado 1, del REMC
Podrá presentar la solicitud de c ancelación o m odificación del registro de procedimientos de insolvencia:
a) el administrador judicial registrado; b) el tribunal; c) el solicitante/propietario/titular.
3.2.1 Cancelación del registro de una insolvencia
Regla 35, apartado 4, del REMC
La solicitud de r egistro de la cancelación de pr ocedimientos de i nsolvencia deberá acompañarse de los documentos acreditativos de la extinción de la insolvencia registrada. Entre tales documentos figurará la resolución definitiva del tribunal.
Cuando el administrador judicial registrado formule la solicitud de cancelación por sí solo, no s e informará de el lo al solicitante o t itular de l a MC. Se remitirá al administrador judicial copia de las observaciones presentadas por el titular, pero ello no impedirá la cancelación del registro de los procedimientos de insolvencia.
Procedimientos de insolvencia o similares
Directrices relativas al Examen ante la Oficina, Parte E, Operaciones de registro Página 11
FINAL VERSION 1.0 DATE 01/08/2014
3.2.2 Modificación del registro de una insolvencia
Regla 35, apartado 6, del REMC
El registro de procedimientos de insolvencia podrá modificarse previa presentación de la resolución del tribunal correspondiente que indique tal modificación.
3.3 Contenido de la solicitud
Regla 35 del REMC
Se aplicará el apartado 2.4 anterior, salvo que no s ea necesario indicar los datos relativos al administrador judicial, excepto en c aso de m odificación del nombre del administrador judicial registrado.
3.4 Tasas
3.4.1 Cancelación del registro de procedimientos de insolvencia
Artículo 162, apartado 2, del RMC Regla 35, apartado 3, del REMC Artículo 2, apartado 24, del RTMC
La solicitud de c ancelación del registro de pr ocedimientos de i nsolvencia no es tá sujeta a tasa.
3.4.2 Modificación del registro de procedimientos de insolvencia
Regla 35, apartado 6, del REMC
La modificación del registro de procedimientos de insolvencia no está sujeta a tasa.
3.5 Examen de la solicitud
Regla 35, apartados 2 y 4 del REMC
El apartado 2.5 se aplica mutatis mutandis a los elementos preceptivos de la solicitud, incluido lo relativo a la prueba de los procedimientos de insolvencia.
La Oficina notificará cualquier irregularidad al solicitante del registro, señalando un plazo límite de dos meses para su subsanación. Si no se subsanasen las irregularidades, la Oficina denegará la solicitud de r egistro de l a cancelación o l a modificación.
Procedimientos de insolvencia o similares
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FINAL VERSION 1.0 DATE 01/08/2014
Regla 35, apartado 6 y regla 84, apartado 5, del REMC
El registro de la cancelación o modificación de los procedimientos de insolvencia se comunicará a l a persona que haya formulado la solicitud; si la solicitud la hubiere presentado el administrador judicial, el solicitante o el titular de l a MC recibirán una copia de dicha comunicación.
3.6 Registro y publicación
Regla 84, apartado 3, letra s) y regla 85, apartado 2, del REMC
En el caso de una MC registrada, la creación, cancelación o modificación de un registro de i nsolvencia se inscribirá en el Registro de Marcas Comunitarias y se publicará en el Boletín de Marcas Comunitarias, en el apartado C.6.
En el caso de una s olicitud de MC, la cancelación o m odificación de l os procedimientos de i nsolvencia se hará constar en los expedientes de l a solicitud de MC de que se trate. Cuando se publique el registro de la MC, no se publicará ningún dato relativo a los procedimientos de insolvencia que hayan sido cancelados, y en caso de m odificación de t ales procedimientos, se publicarán los datos en el apartado C.6.2 tal como hayan sido modificados.
4 Procedimientos de insolvencia para marcas internacionales
El Sistema de Madrid permite la inscripción de procedimientos de insolvencia contra un registro internacional (véase la Regla 20 del Reglamento Común del Arreglo de Madrid relativo al Registro Internacional de Marcas y del Protocolo concerniente a ese Arreglo). Para comodidad de los usuarios, se encuentra disponible el formulario MM19 para solicitar que se anote en el Registro Internacional una restricción del derecho de disposición del titular. La utilización de tal formulario se recomienda encarecidamente para evitar irregularidades. Las solicitudes deben presentarse directamente ante la Oficina Internacional por el titular, o en la oficina nacional de PI del titular registrado, en la oficina de una parte contratante respecto a la que se otorgue la insolvencia, o en la oficina del administrador judicial. La solicitud no podrá presentarse directamente en la Oficina Internacional por el administrador judicial. No deberá utilizarse el formulario de solicitud de inscripción propio de la OAMI.
Para más información sobre el registro de procedimientos de insolvencia, véase la Parte B, Capítulo II, apartados 92.01 a 92.04 de la Guía para el Registro Internacional de Marcas según el Arreglo de M adrid y el Protocolo de Madrid (www.wipo.int/madrid/es/guide). Para más información sobre marcas internacionales, véanse las Directrices, Parte M, Marcas Internacionales.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE M
MARCAS INTERNACIONALES
Marcas internacionales
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FINAL VERSION 1.0 DATE 01/08/2014
Índice
1 Introducción............................................................................................... 4
2 La OAMI como Oficina de origen ............................................................. 4 2.1 Examen y transmisión de las solicitudes internacionales ......................4
2.1.1 Identificación de las solicitudes internacionales............................................. 5 2.1.2 Tasas .............................................................................................................. 5
2.1.2.1 Tasa de tramitación.....................................................................................5 2.1.2.2 Tasas internacionales .................................................................................6
2.1.3 Formularios..................................................................................................... 6 2.1.3.1 Derecho a presentar la solicitud ..................................................................7 2.1.3.2 Marca de base.............................................................................................8 2.1.3.3 Reivindicacion de prioridad .........................................................................9 2.1.3.4 Partes contratantes designadas ................................................................10 2.1.3.5 Firma .........................................................................................................10 2.1.3.6 Formulario para la designación de los EE.UU...........................................10
2.1.4 Examen de la solicitud internacional por parte de la OAMI ......................... 10 2.1.5 Irregularidades detectadas por la OMPI....................................................... 11
2.2 Designaciones posteriores......................................................................11 2.3 Notificación de hechos que afectan al registro de base........................ 13 2.4 Transmisión de modificaciones que afectan a la marca internacional 14
2.4.1 Casos en los que las solicitudes de modificación se han de transmitir sin examen......................................................................................................... 14
2.4.2 Casos en los que las solicitudes de modificación se han de transmitir tras un examen.................................................................................................... 15
3 La OAMI como Oficina designada.......................................................... 16 3.1 Sinopsis ....................................................................................................16 3.2 Representación profesional ....................................................................17 3.3 Primera republicación, búsquedas y requisitos formales..................... 17
3.3.1 Primera republicación................................................................................... 17 3.3.2 Búsquedas.................................................................................................... 18 3.3.3 Examen de las formalidades ........................................................................ 18
3.3.3.1 Lenguas.....................................................................................................19 3.3.3.2 Marcas colectivas......................................................................................20 3.3.3.3 Reivindicaciones de antigüedad................................................................21
3.4 Motivos de denegación absolutos ..........................................................22 3.5 Observaciones de terceros......................................................................24 3.6 Oposición..................................................................................................24
3.6.1 Plazos ........................................................................................................... 24 3.6.2 Recepción e información del titular internacional......................................... 25 3.6.3 Tasas ............................................................................................................ 25 3.6.4 Examen de admisibilidad.............................................................................. 25 3.6.5 Lengua del procedimiento ............................................................................ 26 3.6.6 Representación del titular del registro internacional .................................... 26
3.6.6.1 Recibos de la oposición.............................................................................26 3.6.6.2 Notificación del inicio del procedimiento de oposición...............................27
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3.6.7 Denegación provisional (basada en motivos relativos) ................................ 27 3.6.8 Suspensión de l a oposición en c aso de q ue estuviere pendiente una
denegación provisional por motivos absolutos............................................. 28
3.7 Anulación del registro internacional o renuncia a la designación de la UE ..........................................................................................................28
3.8 Limitaciones de la lista de productos y servicios..................................28 3.9 Confirmación o retirada de la denegación provisional y emisión de
la declaración de concesión de protección............................................29 3.10 Segunda republicación ............................................................................30 3.11 Cesión de la designación de la UE..........................................................30 3.12 Nulidad, caducidad y demandas de reconvención ................................31 3.13 Gestión de las tasas.................................................................................31
4 Transformación (conversion), transformación, sustitución................ 32 4.1 Observaciones preliminares....................................................................32 4.2 Transformación (conversion) ..................................................................33 4.3 Transformación ........................................................................................33
4.3.1 Observaciones preliminares ......................................................................... 33 4.3.2 Principio y efectos ........................................................................................ 34 4.3.3 Procedimiento............................................................................................... 34 4.3.4 Examen......................................................................................................... 35
4.3.4.1 Solicitud de transformación del registro internacional que designa a la UE cuando no se han publicado las indicaciones .....................................35
4.3.4.2 Solicitud de transformación del registro internacional que designa a la UE cuando se han publicado las indicaciones ..........................................36
4.3.5 Transformación y antigüedad....................................................................... 36 4.3.6 Tasas ............................................................................................................ 36
4.4 Sustitución................................................................................................37 4.4.1 Observaciones preliminares ......................................................................... 37 4.4.2 Principio y efectos ........................................................................................ 37 4.4.3 Procedimiento............................................................................................... 37 4.4.4 Tasas ............................................................................................................ 38 4.4.5 Publicación ................................................................................................... 38 4.4.6 Sustitución y antigüedad .............................................................................. 38 4.4.7 Sustitución y transformación ........................................................................ 39 4.4.8 Sustitución y transformación (conversion) ................................................... 39
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Esta parte de las Directrices se centra en las características específicas del examen de las marcas internacionales. Para más información sobre los aspectos procesales ordinarios, deberán consultarse las partes de las Directrices correspondientes (examen, oposición, anulación, etc.).
1 Introducción
El objetivo de esta parte de las Directrices es explicar el modo en que, en la práctica, el vínculo entre la marca comunitaria y el Protocolo concerniente al Arreglo de Madrid relativo al Registro Internacional de M arcas (el «Protocolo de Madrid») afecta a los procedimientos y a las normas de examen y de oposición de la OAMI. El apartado 2 se refiere a l as tareas de l a OAMI como Oficina de origen, es decir, de l as solicitudes internacionales «salientes». El apartado 3 se refiere a l as tareas como Oficina designada, es decir, de los registros internacionales «entrantes» que designan a la UE. El apartado 4 se refiere a l a sustitución, a la transformación de un r egistro internacional que designa a la UE en marca comunitaria y a la transformación (conversion).
Con las Directrices no se pretende, ni se puede, ampliar o reducir el contenido jurídico del nuevo Título XIII del RMC y de las reglas 102 a 126, del REMC. La O AMI está asimismo vinculada por las disposiciones del Protocolo de Madrid y del Reglamento Común (RC). También se harán referencias a la «Guía para el Registro Internacional de Marcas» publicada por la OMPI, ya que las Directrices tratan de no repetir lo consignado en estos textos.
2 La OAMI como Oficina de origen
Entre las funciones de la OAMI como Oficina de origen figuran principalmente:
• el examen y transmisión de las solicitudes internacionales; • el examen y transmisión de las designaciones posteriores; • la tramitación de las notificaciones de irregularidad emitidas por la OMPI; • la notificación a la OMPI de determinados hechos que afectan al registro de base
durante el plazo de dependencia de cinco años; • la transmisión de det erminadas solicitudes de modificación en el Registro
Internacional.
2.1 Examen y transmisión de las solicitudes internacionales
Artículo 146, del RMC Regla 102, apartado 3, del REMC
Las solicitudes internacionales presentadas ante la OAMI están sujetas a:
• el pago de la tasa de tramitación; • la existencia de (un) registro(s) o solicitud(es) de marca comunitaria de base (la
«marca de base»); • la identidad de la solicitud internacional y la marca de base;
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• cumplimentar correctamente el formulario MM2 o EM2; • el derecho a presentar la solicitud internacional a través de la OAMI.
2.1.1 Identificación de las solicitudes internacionales
Las solicitudes internacionales se identificarán en la base de datos de la OAMI con el número de (solicitud de) marca comunitaria ( MC) de base, seguido del sufijo _01 (por ejemplo, 012345678_01) si se refiere a una primera solicitud internacional. Las solicitudes posteriores basadas en la misma solicitud o m arca comunitaria de bas e se identificarán con _02, _03, etc. Las solicitudes internacionales basadas en más de una (solicitud de) MC se identificarán con el número de la (solicitud de) MC anterior.
Tras la recepción de una solicitud internacional, el examinador acusará recibo al solicitante, indicando el número de expediente.
2.1.2 Tasas
2.1.2.1 Tasa de tramitación
Artículo 147, apartado 5, y artículo 150, del RMC Artículo 2, apartado 31, del RTMC Regla 103, apartado 1, y regla 104, del REMC
Las solicitudes internacionales solo se considerarán presentadas una vez pagada la tasa de tramitación de 300 EUR.
El pago deberá realizarse a la OAMI por cualquiera de los medios de pago aceptados (para más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos, apartado 2, Medios de pago).
Cuando el solicitante opte por basar la solicitud internacional en una marca comunitaria ya registrada, la solicitud de registro internacional se considerará recibida en la fecha de r egistro de l a marca comunitaria, por lo que l a tasa de tramitación deberá abonarse en dicha fecha.
Los medios de pago utilizados podrán comunicarse a la OAMI marcando las casillas adecuadas del formulario EM2 o f acilitando dicha información en l a carta que acompaña al formulario MM2.
Si durante el examen de la solicitud internacional el examinador determina que no se ha abonado l a tasa de tramitación, informará al solicitante de el lo y le pedirá que abone la tasa en el plazo de dos meses. Si el pago se efectúa en el plazo de dos meses establecido por la OAMI, la fecha de recepción que la OAMI comunicará a la OMPI será la fecha en que la OAMI recibe el pago. Si no se abonara el pago dentro del plazo de dos meses establecido por la OAMI, la Oficina informará al solicitante de que considera que la solicitud internacional no ha sido presentada y cerrará el expediente.
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2.1.2.2 Tasas internacionales
Todas las tasas internacionales deberán pagarse directamente a la OMPI. La OAMI no recaudará ninguna de las tasas que deben pagarse directamente a la OMPI. Toda tasa pagada por error se devolverá al remitente.
Si el solicitante emplea los formularios EM2, deberá presentarse la hoja de cálculo de tasas (anexa al formulario MM2 de la OMPI) en la lengua en que la solicitud internacional deba t ransmitirse a la OMPI. Como alternativa, el solicitante podrá adjuntar una copia del pago a la OMPI. Sin embargo, la OAMI no examinará si la hoja de cálculo de tasas se ha adjuntado, o si se ha cumplimentado correctamente, o si se ha calculado correctamente el importe de l as tasas internacionales. Las dudas relativas a l a cuantía y a l os medios de pago relacionados con las tasas internacionales deberán dirigirse a la OMPI. El sitio web de la OMPI dispone de una calculadora de tasas.
2.1.3 Formularios
Artículo 147, apartado 1, del RMC Regla 83, apartado 2, letra b), y regla 103, apartado 2, letra b), del REMC
Es obligatorio el uso de uno de los formularios oficiales, es decir, bien el formulario MM2 de la OMPI, disponible en inglés, francés o español, bien el formulario EM2 de la OAMI (formulario MM2 adaptado por la OAMI), que está disponible en todas las lenguas oficiales de la UE. Los solicitantes no podrán utilizar otros formularios ni modificar el contenido y formato de los mismos. Sin embargo, tanto el formulario MM2 de la OMPI como el formulario EM2 de la OAMI se pueden obtener en formato «.doc», lo que permite insertar todo el texto que sea necesario en cada uno de los puntos.
Si la solicitud se presenta en una lengua distinta de las del Protocolo de Madrid (inglés, francés y español), el solicitante deberá indicar en cuál de las tres lenguas deberá remitirse la solicitud a la OMPI. Todos los puntos del formulario deberán rellenarse en la misma lengua y no se podrá optar por una lengua distinta de la lengua del formulario.
La OAMI recomienda que se utilice el formulario EM2 de la OAMI. El formulario EM2 en inglés, francés y español de la OAMI presenta prácticamente el mismo formato y numeración que el formulario MM2 de l a OMPI, aunque ha sido adaptado específicamente al entorno de la marca comunitaria:
• los solicitantes pueden indicar los datos del pago ante la OAMI (punto 0.4) en el punto 0 introductorio así como el número de páginas de la solicitud (punto 0.5);
• algunas opciones se han reducido a lo que es de aplicación a la OAMI (por ejemplo, la OAMI es siempre la Oficina de origen (punto 1), y la nacionalidad del solicitante deberá ser la de un Estado miembro de la UE (punto 3));
• se ha añadido el punto 4b para incluir al representante ante la OAMI; • no se exige la reproducción de la marca en el punto 7, ya que la OAMI utilizará la
que está disponible en la (solicitud de) marca comunitaria de base; • se ha añadido una casilla en el punto 10 que permite solicitar protección para los
mismos productos y servicios incluidos en la marca de base ; • como no es posible la auto designación, la UE no figura en la lista de Partes
Contratantes designadas en el punto 11;
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• se ha suprimido el punto 13, puesto que la OAMI certifica la solicitud internacional de forma electrónica.
Cuando el solicitante opta por el formulario EM2 de la OAMI en una versión lingüística distinta del inglés, francés o español, deberán rellenarse los siguientes apartados adicionales del formulario:
• casillas del punto 0.1 para indicar la lengua del Protocolo de Madrid en la que se transmitirá a la OMPI la solicitud internacional;
• casillas del punto 0.2 para optar por la lengua en la que la OAMI se comunicará con el solicitante sobre cuestiones relativas a la solicitud internacional, es decir, la lengua en la que se presente la solicitud internacional o la lengua en la que se haya de transmitir a la OMPI (véase el artículo 147, apartado 1, segunda frase, del RMC);
• casillas del punto 0.3 mediante las que se indica si se incluye una traducción de la lista de productos y servicios o se autoriza a la OAMI a realizar la traducción;
• un punto final A con casillas para especificar los anexos (traducciones adjuntas).
Las casillas correspondientes de los puntos 0.1, 0.2 y 0.3 deben de ser marcadas. Si no se marca nada en el punto 0.2, la OAMI se comunicará con el solicitante en la lengua del formulario EM2.
Todos los puntos aplicables del formulario deberán rellenarse siguiendo las indicaciones que se ofrecen en el propio formulario y en l a «Guía para el Registro Internacional de Marcas» publicada por la OMPI.
2.1.3.1 Derecho a presentar la solicitud
Artículo 2, apartado 1, letra i), del Protocolo de Madrid
En el punto 3 del formulario oficial hay que incluir las indicaciones relativas al derecho a presentar la solicitud. Un solicitante tienen derecho a presentar la solicitud ante la OAMI como Oficina de origen si tiene nacionalidad de un Estado miembro de la UE, o dispone de domicilio o establecimiento comercial o i ndustrial real y efectivo en el mismo. El solicitante puede elegir en qué criterio o c riterios basa el derecho a presentar la solicitud. Por ejemplo, un nacional de Dinamarca con domicilio en Alemania puede optar por basar su derecho a presentar la solicitud en la nacionalidad o en el domicilio. Un nacional francés domiciliado en Suiza tiene derecho a presentar la solicitud únicamente basándose en la nacionalidad (no obstante, en este caso debe designar un representante ante la OAMI). Una empresa suiza sin domicilio ni establecimiento comercial o industrial real y efectivo en un Estado miembro de la UE no tiene derecho a presentar una solicitud internacional a través de la OAMI.
Si hay varios solicitantes, cada uno de ellos debe cumplir, como mínimo, uno de los criterios más arriba expuestos.
La expresión «establecimiento comercial o industrial real y efectivo en un Estado miembro de la UE» debe interpretarse del mismo modo que en otros casos, como en el contexto de la representación profesional (véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional, apartado 3.1.1).
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2.1.3.2 Marca de base
Regla 103, apartado 2, letras c), d) y e), del REMC Regla 9, apartado 4, letras a), incisos v), vii), vii bis) a xii), regla 11, apartado 2, del RC
El Sistema de Madrid, se basa en la exigencia de una solicitud de registro de marca nacional o regional de base. En virtud del Protocolo de Madrid, la solicitud internacional debe basarse en una marca ya registrada («registro de base») o en una solicitud de marca («solicitud de base») en cualquier etapa del procedimiento de examen de la marca.
El solicitante puede basar su solicitud internacional en varias marcas de base siempre que sea solicitante/titular de t odas las solicitudes de m arca comunitaria y marcas comunitarias de base incluso en los casos en que, a pesar de incluir marcas idénticas, los productos y servicios comprendidos son diferentes.
Todas las solicitudes de marca comunitaria o marcas comunitarias deberán contar con una fecha de presentación y deberán encontrarse en vigor.
El solicitante internacional debe ser idéntico al titular o solicitante de la marca comunitaria. La solicitud internacional no la puede presentar un licenciatario o un a sociedad filial del titular de la marca de base. Una irregularidad en este sentido podrá subsanarse mediante la cesión de la marca de base al solicitante internacional o mediante la inscripción de un cambio de nombre, según el caso (véanse las Directrices, Parte E, Operaciones de registro, Sección 3, La marca comunitaria como objeto de propiedad, Capítulo 1, Cesión). En los casos en que existen varios titulares o solicitantes de la(s) solicitud(es)/marca(s) comunitaria(s) de base, la solicitud internacional se deberá presentar por las mismas personas.
La reproducción de la marca deberá ser idéntica. Debe prestarse una atención especial a lo siguiente:
• debe marcarse el punto 7 c) del formulario oficial si la marca se presenta en caracteres estándar (marca denominativa).
• en el punto 8 a) del formulario oficial se prevé la posibilidad de r ealizar una reivindicación de color. Cuando la solicitud/marca comunitaria de base contenga una indicación de c olores, la misma indicación deberá incluirse en l a solicitud internacional (véanse las Directrices, Parte B, Examen, Sección 2, Formalidades, apartado 11). Cuando la solicitud/marca comunitaria de base esté en color pero no contenga una indicación de colores, el solicitante podrá indicar los colores en la solicitud internacional.
• Si la marca de base es:
○ una marca que consiste en un color o en una combinación de colores como tal,
○ una marca tridimensional, ○ una marca sonora, y/o ○ una marca colectiva,
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la misma indicación debe incluirse en la solicitud internacional, y hay que marcar el punto 7 d) o 9 d). Si la marca de base es una marca sonora, solo se transmitirá a la OMPI la representación gráfica, es decir, la nota musical, ya que la OMPI no acepta archivos electrónicos sonoros.
• Si la marca de bas e comprende una descripción, se podrá incluir la misma descripción en l a solicitud internacional (punto 9 e)). Sin embargo, no podrá añadirse una descripción de la marca en la solicitud internacional si la marca(s) de base no incluye(n) ninguna.
• Se podrá incluir una renuncia a r eivindicar la protección de determinados elementos aunque la marca de base no lo hiciera (punto 9 g)).
• La OMPI requiere una t ranscripción en c aracteres latinos si la marca contiene otro tipo de caracteres. En caso de no facilitar dicha transcripción, la OMPI emitirá una notificación de irregularidad que el solicitante deberá subsanar directamente. Esto es aplicable a todos tipos de marcas, no sólo a las marcas denominativas.
La lista de productos y servicios debe ser idéntica o menor que la lista incluida en la(s) marca(s) de base en la fecha de presentación de la solicitud internacional.
• El solicitante deberá especificar la lista de productos y servicios, agrupados por clases (punto 10).
• La lista también podrá limitarse para algunas partes designadas.
Si el solicitante no aporta una traducción en la lengua de la OMPI elegida (inglés, francés o español), sino que autoriza a la OAMI a aportar la traducción o a utilizar la traducción disponible para la(s) marca(s) de base, no será consultado sobre la traducción.
2.1.3.3 Reivindicacion de prioridad
Si se reivindica la prioridad en el punto 6 del formulario oficial, deberán de indicarse: la oficina en que se efectuó la solicitud anterior, el número de solicitud (si se conoce) y la fecha de solicitud. No deben presentarse los documentos de prioridad. Cuando la presentación anterior que se reivindica como derecho de prioridad en una solicitud internacional no se refiere a todos los productos y servicios, deberán indicarse aquellos a los que sí afecta. Cuando se reivindica la prioridad para varios registros anteriores con diferentes fechas, deberán indicarse los productos y servicios a los que se refiere cada uno de ellos. El examinador no cuestionará, en principio, la validez de la reivindicación, ya que en la mayoría de los casos, la (solicitud de) marca comunitaria de base es la primera presentación para la que se reivindica prioridad o s e ha reivindicado y examinado la prioridad de otra marca anterior, en relación con la (solicitud de) marca comunitaria de base. Sin embargo, si existen pruebas en el momento de la presentación de que la prioridad se reivindica para un derecho que no es una primera presentación, el examinador objetará y solicitará que se elimine la reivindicación de prioridad.
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2.1.3.4 Partes contratantes designadas
Las solicitudes internacionales presentadas ante la OAMI se regirán exclusivamente por el Protocolo de Madrid. En ellas solo se podrá designar a aquellas partes contratantes que fueren parte en el Protocolo, con independencia de que estuvieren igualmente vinculadas por el Arreglo de Madrid.
2.1.3.5 Firma
Regla 9, apartado 2, letra b), del RC
La firma del solicitante del punto 12 del formulario oficial es opcional porque los datos se transmitirán únicamente de forma electrónica a la OMPI y no el documento original o un facsímil del formulario.
2.1.3.6 Formulario para la designación de los EE.UU.
Cuando se designe a los Estados Unidos de América, el solicitante deberá adjuntar el formulario MM18 de l a OMPI debidamente cumplimentado y firmado (véase el punto 11, nota la pie de página **). Este formulario, que contiene la declaración de intención de us o de l a marca, únicamente está disponible en i nglés y deberá cumplimentarse siempre en dicha lengua con independencia de la lengua de la solicitud internacional.
2.1.4 Examen de la solicitud internacional por parte de la OAMI
Artículo 147, del RMC Regla 103, apartado 2, y regla 104, del REMC Artículo 3, apartado 1, del Protocolo de Madrid
Si el examen de la solicitud internacional revela la existencia de irregularidades, la OAMI invitará al solicitante a que las subsane en el plazo de un mes. En principio, este plazo breve debería permitir a la OAMI transmitir la solicitud internacional a la OMPI en el plazo de dos meses desde la fecha de recepción y, por lo tanto, mantener dicha fecha como la fecha del registro internacional.
Los examinadores pueden intentar solucionar las irregularidades menores o r ecabar aclaraciones por teléfono, con el fin de agilizar el procedimiento.
Si no se subsanan las irregularidades, la OAMI informará al solicitante que la transmisión de la solicitud internacional a la OMPI ha sido denegada. La tasa de tramitación no será reembolsada.
Esto no excluye la presentación de otra solicitud internacional en una fecha ulterior.
Tan pronto como la OAMI determine que la solicitud internacional está en regla, la transmitirá a la OMPI de forma electrónica, con la excepción de los documentos como las hojas de cálculo de tasas o el formulario MM18, que se transmitirán como archivos adjuntos digitalizados. La t ransmisión electrónica comprende la certificación de l a
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Oficina de origen a que se hace referencia en el artículo 3, apartado 1, del Protocolo de Madrid.
2.1.5 Irregularidades detectadas por la OMPI
Regla 11, apartado 4, y reglas 12 y 13, del RC
Si la OMPI detecta irregularidades en la solicitud, emitirá una notificación de irregularidad, que se enviará tanto al solicitante como a l a OAMI como Oficina de origen. En función de su naturaleza, las irregularidades deberán subsanarse por la OAMI o por el solicitante. El solicitante deberá subsanar las irregularidades relativas al pago de las tasas internacionales. La OAMI deberá subsanar cualquiera de las irregularidades que se mencionan en la regla 11, apartado 4, del RC.
Cuando existan irregularidades en la clasificación de los productos y servicios, en la indicación de los productos y servicios, o en ambas, el solicitante no podrá presentar sus argumentos directamente a l a OMPI, sino que lo hará a través de l a OAMI. En dicho caso, la OAMI enviará tal cual la comunicación del solicitante a la OMPI, puesto que la Oficina no hará uso de la facultad que establece la regla 12, apartado 2 del RC de presentar una opinión discrepante ni de l a de la regla 13, apartado 2, del RC de presentar una propuesta para que se subsane la irregularidad.
2.2 Designaciones posteriores
Artículo 149, del RMC Regla 1, inciso xxvi bis), regla 24, apartado 2, del RC Artículo 2, apartado 1, inciso ii), del Protocolo de Madrid Regla 83, apartado 2, letra b), regla 105, apartado 1, letras a), c) y d), regla 105, apartados 2 y 4, del REMC
En el marco del Sistema de Madrid, el titular de un registro internacional tiene la posibilidad de ex tender geográficamente la protección de su registro. Existe un procedimiento específico denominado «designación posterior al registro» que permite extender los efectos de un registro internacional a miembros de la Unión de Madrid respecto de los cuales no se ha inscrito hasta la fecha ninguna designación o cuyas designaciones anteriores ya no surten efectos.
A diferencia de las solicitudes internacionales, no es necesario presentar las designaciones posteriores a través de la oficina de origen, sino que se pueden remitir directamente a la OMPI. Se recomienda la presentación directa ante la OMPI para acelerar el proceso.
En caso de cesión del registro internacional a una persona no autorizada a presentar una designación posterior a través de la OAMI, la solicitud no podrá presentarse a través de la Oficina sino que deberá presentarse ante la OMPI o la correspondiente oficina de origen (para más información sobre el derecho a presentar una solicitud, véase el apartado 2.1.3.1 supra).
Solo se podrán realizar designaciones posteriores una vez cursada una solicitud internacional inicial que haya conducido a un registro internacional.
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Las designaciones posteriores no están sujetas al pago de una tasa de tramitación a la OAMI.
Las designaciones posteriores se deberán realizar en el formulario oficial: el formulario MM4 de l a OMPI en i nglés, francés o español o el formulario EM4 en l as demás lenguas oficiales de la UE. No existe un formulario específico de la OAMI en inglés, francés y español, pues para ésta no se necesitan indicaciones especiales en dichas lenguas, por lo que el formulario MM4 de la OMPI resulta suficiente.
La hoja de cálculo de tasas (anexa al formulario MM4 de la OMPI) debe presentarse en la lengua en que se envíe la designación posterior a la OMPI. Como alternativa, el solicitante podrá adjuntar una copia del pago a la OMPI. Sin embargo, la OAMI no examinará si la hoja de cálculo de tasas se ha adjuntado, o si se ha cumplimentado correctamente. o si se ha calculado correctamente el importe de las tasas internacionales. Las dudas relativas a la cuantía y a los medios de pago relacionados de las tasas internacionales deberán dirigirse a la OMPI. El sitio web de la OMPI dispone de una calculadora de tasas.
En los formularios MM4 y EM4, las indicaciones que hay que consignar se reducen a indicaciones concernientes al solicitante y a s u derecho a pr esentar la solicitud, a indicaciones relativas al representante, la lista de productos y servicios y la designación de otras Partes Contratantes del Protocolo de Madrid. Estas indicaciones se deben realizar de la misma forma que en el formulario MM2. La úni ca diferencia respecto al derecho a presentar la solicitud es que la designación posterior se puede presentar ante la OAMI si el registro internacional se ha c edido a una persona con nacionalidad de un Estado miembro de la UE o con domicilio o establecimiento en la UE (la OAMI como «oficina de la parte contratante del titular»).
Una designación posterior podrá también utilizarse para extender los efectos de un registro internacional para ampliar la cobertura de los productos y/o servicios de una designación anterior.
La lista de productos y servicios puede ser la misma que la del registro internacional (punto 5 a) del formulario oficial) o m ás reducida (punto 5 b) o c)). La l ista no puede ser más amplia que la del registro internacional aunque esté cubierta por la marca de base.
Por ejemplo, un registro internacional para las clases 18 y 25, que designa China para la clase 25 puede extenderse posteriormente a China para la clase 18; sin embargo, el mismo registro internacional no podrá extenderse posteriormente a China para la clase 9, ya que el registro internacional no c ubre esta clase, aunque esté cubierta por la marca de base.
Con esos límites, se pueden presentar listas diferentes para las distintas partes contratantes designadas a posteriori.
La marca ha de ser la misma que la del registro internacional inicial.
Las designaciones posteriores se deberán solicitar en la misma lengua que la solicitud internacional inicial, de lo contrario la OAMI denegará la transmisión de la designación posterior.
Si la solicitud no estuviera en inglés, francés o español, el solicitante deberá marcar el punto 0.1 del formulario EM 4 de la OAMI e indicar la lengua en la que se transmitirá a
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la OMPI la designación posterior. Dicha lengua puede ser diferente de la lengua del registro internacional. También se deberán cumplimentar los puntos 0.2 y 0.3 relativos a la traducción de la lista de productos y servicios y a la lengua de correspondencia entre el solicitante y la OAMI.
Cuando el titular/solicitante así lo solicite, la designación posterior podrá tener efecto después de que finalice un pr ocedimiento específico , en concreto, la inscripción de una modificación o de una cancelación respecto del registro internacional en cuestión, o después de la renovación del registro internacional.
2.3 Notificación de hechos que afectan al registro de base
Artículos 44 y 49, del RMC Regla 106, apartado 1, letras a), b) y c), regla 106, apartados 2, 3 y 4, del REMC
Si, en un plazo de cinco años a partir de la fecha del registro internacional, la marca de base caduca total o parcialmente, el registro internacional se cancelará en la misma medida, ya que es «dependiente» de l a misma. Esto ocurre no s ólo si un t ercero realiza un «ataque central» sino también si la marca de base caduca por acción u omisión de su titular.
Respecto de las marcas comunitarias, lo expuesto abarca los casos en los que, ya sea total o parcialmente (solo para algunos productos o servicios):
• la solicitud de marca comunitaria en la que se basaba el registro internacional se retira, se considera retirada o se deniega;
• la marca comunitaria en la que se basaba el registro internacional es objeto de renuncia, no se renueva o se declara su caducidad o su nulidad por la OAMI o, en el caso de una demanda de reconvención en procedimientos de infracción, por un tribunal de marcas comunitarias.
En el caso de que se debiere a una resolución (de la OAMI o de un tribunal de marcas comunitarias) ésta deberá ser definitiva.
Si esto sucede dentro del plazo de cinco años, la OAMI lo deberá notificar a la OMPI.
La OAMI debe comprobar que la solicitud internacional fue registrada antes de enviar una notificación informando a la OMPI de que la marca comunitaria de base deja de surtir efecto.
También se deberá enviar una notificación a la OMPI en determinados casos en los que se haya iniciado un procedimiento antes de la expiración del plazo de cinco años, pero no exista una resolución definitiva dentro de di cho plazo. Esta notificación se enviará inmediatamente después de expirar el plazo de cinco años. Los casos afectados son:
• sigue pendiente una resolución denegatoria de la solicitud de marca comunitaria de base por motivos absolutos (incluidos los recursos subsiguientes ante las Salas de Recurso o el TG/TJUE);
• existe un procedimiento de oposición pendiente (incluidos los recursos subsiguientes ante las Salas de Recurso o el TG/TJUE);
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• existe un procedimiento de anulación pendiente ante la OAMI (incluidos los recursos subsiguientes ante las Salas de Recurso o el TG/TJUE);
• con arreglo al Registro de Marcas Comunitarias, está pendiente una demanda de reconvención en procedimientos de infracción ante un tribunal de marcas comunitarias contra una marca comunitaria.
Una vez que se adopte una resolución definitiva o haya finalizado el procedimiento, se enviará una notificación a la OMPI en la que se indica si y en qué medida la marca de base ha dejado de existir o sigue siendo válida.
También deberá enviarse una notificación a la OMPI si, en el plazo de cinco años a partir de la fecha del registro internacional, la solicitud de m arca comunitaria o l a marca comunitaria de base se divide o es objeto de una cesión parcial. En otros casos, no obstante, no tendrá efectos sobre la validez del registro internacional, sino que el propósito de la notificación es solo llevar un control del número de marcas en las que se basa el registro internacional.
La OAMI no notificará a la OMPI otros cambios que se produzcan en la marca de base. Cuando el solicitante/titular desee registrar los mismos cambios en el registro internacional deberá solicitarlo de forma separada (véase el apartado 2.4 infra).
2.4 Transmisión de modificaciones que afectan a la marca internacional
Regla 107, del REMC
El registro internacional se conserva en la OMPI. Los cambios posibles que se indican a continuación solo podrán inscribirse una vez que se haya registrado la marca.
La OAMI no tramitará solicitudes de renovación ni pagos de las tasas de renovación.
En principio, la mayoría de los cambios relativos a los registros internacionales los pueden presentar el titular del registro internacional directamente ante la OMPI o a través de l a oficina de or igen. Sin embargo, algunas solicitudes de modificación pueden ser presentadas por la otra parte o través de otra oficina, tal como se indica a continuación.
2.4.1 Casos en los que las solicitudes de modificación se han de t ransmitir sin examen
Reglas 20 y 20 bis, regla 25, apartado 1, del RC
Las siguientes solicitudes de modificación relativas a un registro internacional también se podrán presentar ante la OAMI como «oficina de la parte contratante del titular»:
• formulario MM5 de la OMPI: cambio de titularidad, ya sea total o parcial, presentado por el titular del registro internacional inscrito (en la terminología de la marca comunitaria, equivalente a una cesión);
• formulario MM6 de la OMPI: limitación de la lista de productos y servicios de todas o de algunas partes contratantes;
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• formulario MM7 de l a OMPI: renuncia de una o más partes contratantes (no todas);
• formulario MM8 de la OMPI: cancelación total o parcial del registro internacional; • formulario MM9 de la OMPI: cambio en el nombre o en la dirección del titular; • formularios MM13/MM14 de l a OMPI: nueva licencia o m odificación de una
licencia presentada por el titular del registro internacional registrado; • formulario MM15 de la OMPI: para anular cancelar la inscripción de una licencia; • formulario MM19 de l a OMPI: restricción del derecho del titular a di sponer,
presentado por el titular del registro internacional registrado (en la terminología de la marca comunitaria, equivalente a un derecho real, una ejecución forzosa o un procedimiento de insolvencia, contemplados en los artículos 19, 20 y 21, del RMC).
Dichas solicitudes presentadas ante la OAMI por el titular del registro internacional sencillamente se transmitirán a la OMPI sin ningún examen. Las disposiciones del RMC y del REMC relativas a los procedimientos correspondientes no son, en este caso, de aplicación. En particular, las reglas en materia de lenguas son las previstas en el RC y no hay que pagar tasa alguna a la OAMI.
Dichas solicitudes solo se podrán presentar a través de l a OAMI si es la oficina de origen o si deviene competente para el titular como resultado de una cesión del registro internacional (véase la regla 1, inciso xxvi bis), del RC). Sin embargo, la OAMI no examinará esta condición porque simplemente se limitará a transmitir la solicitud y ésta se podría haber presentado directamente ante la OMPI.
No se utilizarán las opciones contempladas en la regla 20, apartado 1, letra a), del RC que permiten a la oficina de la parte contratante del titular notificar de oficio a la Oficina Internacional una limitación del derecho a disponer del titular.
2.4.2 Casos en los que las solicitudes de modificación se han de t ransmitir tras un examen
Regla 20, apartado 1, letra a), regla 20 bis, apartado 1, regla 25, apartado 1, letra b), del RC Regla 120, del REMC
El Reglamento Común establece que las solicitudes de inscripción de un cambio de titularidad, de una licencia o de una restricción del derecho del titular a disponer solo se podrán presentar directamente ante la OMPI por el titular del registro internacional. Sería prácticamente imposible inscribir un cambio de titularidad o licencia en la OMPI en caso de que:
• el titular original ya no exista (por fusión o fallecimiento), o • el titular no coopere con su licenciatario o (incluso más probablemente) sea el
beneficiario de una medida de ejecución forzosa.
Por estos motivos, el nuevo titular, el licenciatario o el beneficiario del derecho real no tienen otra elección que presentar la solicitud en la oficina de la parte contratante del titular. La OMPI registrará dichas solicitudes sin ningún examen sustantivo sobre la base de que las ha transmitido dicha oficina.
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Para evitar que un tercero pueda convertirse en titular o licenciatario de un registro internacional, resulta imperativo que la OAMI examine todas las solicitudes de cualquier persona que no sea el titular del registro internacional para comprobar si existe prueba de la cesión, licencia u otro derecho, con arreglo a lo establecido en la regla 120, del REMC. La OAMI se limita a examinar las pruebas de la cesión, licencia u otro derecho, y la regla 31, apartados 1 y 5, del REMC y las partes correspondientes de las Directrices de l a OAMI relativas a c esiones, licencias, derechos reales, procedimientos de ejecución forzosa e insolvencia son de aplicación por analogía. Si no se presenta la prueba, la OAMI denegará la transmisión de la solicitud a la OMPI.
Esta resolución es susceptible de recurso.
En todos los demás aspectos, no son aplicables las normas del RMC y del REMC. En particular, la solicitud deberá formularse en un a de l as lenguas de l a OMPI y en el correspondiente formulario de ésta, y no hay que pagar tasa alguna a la OAMI.
3 La OAMI como Oficina designada
3.1 Sinopsis
Desde el 1 de enero de 2004, cualquier persona que fuere nacional de, o tuviere domicilio o establecimiento comercial en, un Estado que fuere parte en el Protocolo de Madrid y que fuere el titular de u na solicitud o un r egistro nacional en es e mismo Estado (una «marca de base») podrá, a través de la oficina nacional donde estuviere registrada la marca de base (la «Oficina de origen»), presentar una solicitud internacional o una designación posterior en la que podrá designar a la Unión Europea.
Una vez que haya examinado la clasificación y comprobado que se cumplen determinadas formalidades (incluido el pago de las tasas) la OMPI publicará el registro internacional en la Gaceta Internacional, expedirá el certificado de registro y lo notificará a las oficinas designadas. La OAMI recibirá los datos de la OMPI exclusivamente en formato electrónico.
La OAMI identifica a los registros internacionales que designan a la UE con el número de registro de la OMPI, precedido de una « W» y seguido de un 0 en el caso de un nuevo registro internacional (por ejemplo, W01 234 567) y de un 1 en el caso de una designación posterior (por ejemplo, W10 987 654). Las designaciones posteriores de la UE para el mismo registro internacional se identificarán como W2, W3, etc. Sin embargo, en la búsqueda en las bases de datos electrónicas de la OAMI no debe indicarse la «W».
La OAMI disfruta de un plazo de 18 meses para informar a la OMPI de todos los posibles motivos para denegar la designación de l a UE. El plazo de 18 m eses comienza el día en que la OAMI recibe la notificación de la designación.
Cuando se reciban correcciones de l a OMPI que a fecten a la propia marca o a los productos y servicios o a l a fecha de designación, será competencia de l a OAMI decidir si el nuevo plazo de 18 m eses comienza a c ontar desde la nueva fecha de notificación. En el caso de que la corrección afecte solo a una parte de los productos y servicios, el nuevo plazo será de aplicación únicamente a aquella parte y la OAMI deberá republicar parcialmente el registro internacional en el Boletín de Marcas Comunitarias y reabrir el plazo de opos ición solo para dicha parte de productos y servicios.
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Las principales tareas que la OAMI debe llevar a cabo como Oficina designada son:
• la primera republicación de los registros internacionales que designan a la UE; • la elaboración de informes de búsqueda comunitaria; • el examen de las formalidades, incluidas las reivindicaciones de antigüedad; • el examen de motivos absolutos; • el examen de oposiciones contra registros internacionales; • el tratamiento de las comunicaciones de la OMPI relativas a los cambios en los
registros internacionales.
3.2 Representación profesional
Artículo 92, apartado 2, y artículo 93, del RMC
En principio, no es necesario que el titular del registro internacional designe a un representante ante la OAMI.
No obstante, los titulares de fuera de la UE están obligados a ac tuar representados a) para una denegación provisional, b) para presentar una reivindicación de antigüedad directamente ante la OAMI, o c) para presentar una objeción a una reivindicación de antigüedad (véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional, y los artículos 92 y 93, del RMC).
Si un titular de fuera de la UE ha designado un representante ante la OMPI que figura también en la base de datos de representantes de la OAMI, dicho representante se considerará automáticamente el representante del titular del registro internacional ante la OAMI.
Cuando un titular de un registro internacional de fuera de la UE no ha designado un representante o ha designado un representante ante la OMPI que no figura en la base de datos de representantes de la OAMI, todas las notificaciones de denegación provisional o de obj eción deberán incluir una invitación a des ignar un representante, de conformidad con los artículos 92 y 93, del RMC. Para más información sobre las particularidades de la representación de cada uno de los procedimientos ante la OAMI, véanse los apartados 3.3.3, 3.4 y 3.6.6.
3.3 Primera republicación, búsquedas y requisitos formales
3.3.1 Primera republicación1
Artículo 152, del RMC
Tras su recepción, los registros internacionales se republicarán inmediatamente en la Parte M.1 del Boletín de M arcas Comunitarias, salvo si no s e indica una segunda lengua.
1 Primero, los registros internacionales se publican en la Gaceta Internacional y posteriormente la OAMI los «republica».
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La publicación se limitará a los datos bibliográficos, la reproducción de la marca y los números de las clases, pero no incluirá la lista completa de productos y servicios. Esto supone en particular que la OAMI no traducirá los registros internacionales ni la lista de productos y servicios. La publicación también indicará la primera y la segunda lengua del registro internacional y contendrá una referencia a l a publicación del registro internacional en la Gaceta de la OMPI, que deberá consultarse para más información.En el Boletín de Marcas Comunitarias del sitio web de la OAMI obtendrá información más detallada.
A partir de la fecha de la primera republicación, el registro internacional surtirá los mismos efectos que una solicitud de marca comunitaria publicada.
3.3.2 Búsquedas
Artículo 155, del RMC
Tal como ocurría con las presentaciones directas de marcas comunitarias, la OAMI elaborará un informe de búsqueda comunitaria para cada registro internacional, que mencionará las marcas comunitarias y los registros internacionales similares que designan a la UE. Los titulares de las marcas anteriores mencionadas en el informe recibirán una carta informativa de conformidad con el artículo 155, apartado 4, del RMC. Además, a pe tición del titular internacional, la OAMI remitirá el registro internacional a las oficinas nacionales participantes para que lleven a cabo búsquedas nacionales (véanse las Directrices, Parte B, Examen, Sección 1, Procedimientos).
La solicitud de búsqueda nacional deberá presentarse directamente ante la OAMI. Los titulares de registros internacionales que designen a l a UE deben solicitar las búsquedas nacionales y abonar la correspondiente tasa en el plazo de un mes a partir del momento en que la OMPI informa a la OAMI de la designación. En caso de pago atrasado o de no realizar el pago de l as tasas de bús queda se tendrá por no presentada la solicitud de bús queda nacional y solo se elaborará el informe de búsqueda comunitaria.
El pago podrá realizarse por cualquiera de los medios de pago aceptados por la OAMI (para más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos, apartado 2).
Los informes de búsqueda se enviarán directamente al titular del registro internacional o a su representante, en caso de que este último haya designado uno, con independencia de dond e esté ubicado. El titular no estará obligado a designar un representante a los solos efectos de recibir el informe de búsqueda o de solicitar las búsquedas nacionales.
3.3.3 Examen de las formalidades
El examen de l as formalidades realizado por la OAMI respecto de los registros internacionales se limita a si se ha indicado una segunda lengua, cuando la solicitud es de una m arca colectiva y si existen reivindicaciones de ant igüedad. La OAMI no revisará la clasificación de productos y servicios realizada por la OMPI.
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3.3.3.1 Lenguas
Artículo 119, apartados 3 y 4, del RMC Regla 96, apartado 1 y reglas 112 y 126, del REMC Regla 9, apartado 5, letra g), inciso ii), del RC
La regla 9, apartado 5, letra g), inciso ii), del RC y la regla 126, del REMC exigen que el solicitante indique en su solicitud internacional que designe a la UE, una segunda lengua de entre las otras cuatro lenguas de la Oficina como segunda lengua, marcando la casilla adecuada en la sección de partes contratantes de los formularios MM2/MM3 o MM4 de la OMPI.
De conformidad con la regla 126, del REMC, la lengua de presentación de la solicitud internacional será la lengua del procedimiento con arreglo al artículo 119, apartado 4, del RMC. Si la lengua elegida por el titular del registro internacional en un procedimiento escrito no fuera la lengua de la solicitud internacional, éste deberá presentar una traducción a dicha lengua en el plazo de un mes a partir de la fecha de presentación del documento original. Si la traducción no se recibe en el plazo señalado, el documento original no se considerará recibido por la OAMI
La segunda lengua indicada en la solicitud internacional será la segunda lengua con arreglo al artículo 119, apartado 3, del RMC, es decir, una posible lengua del procedimiento en los procedimientos de oposición, caducidad o nulidad ante la OAMI.
Si no s e ha i ndicado una segunda lengua, el examinador enviará una deneg ación provisional de protección y concederá al titular un plazo de dos meses a partir de la fecha en que se emite dicha denegación para que subsane la irregularidad, de conformidad con lo establecido en l a regla 112, del REMC. En los casos en que el titular del registro internacional tenga la obligación de actuar representado en los procedimientos ante la OAMI y su representante ante la OMPI no figure en la base de datos de representantes de la OAMI, la notificación de la denegación provisional invitará al titular a que designe un representante, de conformidad con los artículos 92 y 93, del RMC. Dicha notificación se inscribirá en el Registro internacional, se publicará en l a Gaceta y se comunicará al titular del registro internacional. La respuesta a la denegación provisional deberá ir dirigida a la OAMI.
Si el titular del registro internacional subsana la irregularidad y cumple el requisito de designar un representante ante la OAMI, en su caso, dentro del plazo señalado, se procederá a republicar el registro internacional.
Si no se ha subsanado la irregularidad y/o si no se ha designado un representante (en su caso), la OAMI confirmará la denegación al titular del registro internacional. El titular dispondrá de un plazo de dos meses para interponer un recurso. Cuando la decisión sea definitiva, la OAMI informará a la OMPI de que se ha confirmado la denegación provisional.
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3.3.3.2 Marcas colectivas
Artículos 66 y 67, del RMC Regla 43, regla 121, apartados 1, 2 y 3, del REMC
El sistema de marcas comunitarias incluye únicamente dos tipos de marcas, las marcas individuales y las marcas colectivas (para más información, véanse las Directrices, Parte B, Examen, Sección 2, Formalidades).
El formulario de s olicitud internacional incluye una úni ca indicación que agrupa las marcas colectivas, las marcas de certificación y las marcas de garantía. Por lo tanto, si el registro internacional que designa a la UE está basado en una marca de certificación, una marca de garantía o una marca colectiva nacional, será identificada como una marca colectiva ante la OAMI, lo cual implica el pago de tasas más elevadas.
Las condiciones que resultan aplicables a las marcas colectivas comunitarias también resultan de apl icación a los registros internacionales que designan a la UE como marca colectiva.
De conformidad con la regla 121, apartado 2, del REMC, el titular presentará directamente a la Oficina, en un pl azo de dos meses a pa rtir de l a fecha en que la Oficina Internacional notificó la designación a la OAMI, el Reglamento de uso de l a marca.
Si para entonces aún no se ha presentado el Reglamento de uso, o contiene irregularidades o el titular no cumple los requisitos del artículo 66, el examinador emitirá una denegación provisional de protección y concederá al titular un plazo de dos meses a partir de la fecha en que la OAMI emite la denegación provisional, con arreglo a la regla 121, apartado 3, del REMC, para subsanar la irregularidad. En los casos en que el titular del registro internacional tenga la obligación de actuar representado en los procedimientos ante la OAMI y su representante ante la OMPI no figure en la base de datos de r epresentantes de la OAMI, la notificación de la denegación provisional invitará al titular a que designe un representante, de conformidad con los artículos 92 y 93, del RMC. Dicha notificación se inscribirá en el Registro internacional, se publicará en l a Gaceta y se comunicará al titular del registro internacional. La respuesta a la denegación provisional deberá ir dirigida a la OAMI.
Si el titular del registro internacional subsana la irregularidad y cumple el requisito de designar un representante ante la OAMI, en su caso, dentro del plazo señalado, el registro internacional proseguirá.
Si no se ha subsanado la irregularidad y/o si no se ha designado un representante (en su caso), la OAMI confirmará la denegación al titular del registro internacional y le concederá un plazo de dos meses para presentar un recurso. Cuando la decisión sea definitiva, la OAMI informará a la OMPI de que se ha confirmado la denegación provisional.
Cuando, en respuesta a la denegación provisional, se presenten elementos que convenzan a la OAMI de que la marca de base es una marca de certificación o una marca de garantía y que el titular del registro internacional no está cualificado para ser titular de una marca comunitaria colectiva, la OAMI examinará la designación como marca individual. Se informará como corresponda al titular del registro, a quien se le reembolsará la diferencia en euros entre las tasas de una designación individual de la UE y de una colectiva.
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3.3.3.3 Reivindicaciones de antigüedad
Reivindicaciones de antigüedad presentadas junto a la designación
Artículo 153, apartado 1, del RMC Regla 9, apartado 3, letra d), regla 9, apartado 7, regla 108, regla 109, apartados 1, 2, 3 y 4, del REMC Regla 9, apartado 5, letra g), inciso i), regla 21 bis, del RC
El solicitante podrá reivindicar, en una solicitud internacional que designe a la UE o en una designación posterior, la antigüedad de una marca anterior registrada en un Estado miembro. Dicha reivindicación deberá presentarse en el formulario MM17 adjunto a la solicitud internacional o solicitud de designación posterior, que incluirá para cada reivindicación:
• el Estado miembro de la UE en que está registrado el derecho anterior; • el número de registro; • la fecha de presentación del correspondiente registro.
No existe una disposición equivalente a la regla 8, apartado 2, del REMC aplicable a las presentaciones directas de marca comunitaria.
No es necesario adjuntar al formulario MM17 certificados o documentos que apoyen las reivindicaciones de antigüedad, puesto que la OAMI no los enviará a la OMPI.
Las reivindicaciones de antigüedad que se presentan junto a la solicitud internacional o una designación posterior serán examinadas del mismo modo que las reivindicaciones de antigüedad que se presenten junto a una solicitud de marca comunitaria. Para más información, véanse las Directrices, Parte B, Examen, Sección 2, Formalidades.
Si es necesario presentar documentación que apoye la reivindicación de antigüedad o si la reivindicación incluye irregularidades, el examinador emitirá una carta de irregularidad en la que se concederá un plazo de dos meses al titular del registro internacional para que subsane la irregularidad. En caso de que el titular del registro internacional esté obligado a actuar representado en los procedimientos ante la OAMI y su representante ante la OMPI no figure en la base de datos de representantes de la OAMI, también se le invitará a que designe un representante ante la OAMI.
Cuando la OAMI acepte la reivindicación de antigüedad, se informará a las oficinas de propiedad intelectual que corresponda. No es necesario informar a la OMPI ya que no se requiere modificar el registro internacional.
Si no se ha subsanado la irregularidad y/o si no se ha designado un representante (en su caso), se perderá el derecho de antigüedad con arreglo a la regla 109, apartado 2, del REMC. El titular del registro internacional podrá solicitar una resolución, que puede ser objeto de recurso. Una vez que sea definitiva, la OAMI informará a la OMPI de cualquier pérdida, denegación o cancelación del derecho de antigüedad o de cualquier renuncia de la reivindicación de antigüedad. Dichas modificaciones se inscribirán en el registro internacional y serán publicadas por la OMPI.
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Reivindicaciones de antigüedad presentadas directamente ante la OAMI
Artículo 153, apartado 2, del RMC Regla 110, apartados 1, 2, 4, 5 y 6, del REMC Regla 21 bis, apartado 2, del RC
El titular del registro internacional también podrá reivindicar directamente ante la OAMI la antigüedad de una marca anterior registrada, después de que se publique la aceptación final del registro internacional. Cuando el titular del registro internacional esté obligado a actuar representado en los procedimientos ante la OAMI y su representante ante la OMPI no figure en la base de datos de representantes de la OAMI, la Oficina le invitará a que designe un r epresentante, de c onformidad con lo establecido en los artículos 92 y 93, del RMC.
La respuesta a la carta de irregularidad deberá ir dirigida a la OAMI.
Todas las reivindicaciones de antigüedad presentadas en el intervalo entre la presentación de la solicitud internacional y la publicación de la aceptación final del registro internacional, se considerarán recibidas por la OAMI en la fecha de publicación de l a aceptación final del registro internacional y, por lo tanto, serán examinadas por la OAMI después de dicha fecha.
Si es necesario presentar documentación que apoye la reivindicación de antigüedad o si la reivindicación incluye irregularidades, el examinador emitirá una carta de irregularidad en la que se concederá un plazo de dos meses al titular del registro internacional para que subsane la irregularidad. En caso de que el titular del registro internacional esté obligado a actuar representado en los procedimientos ante la OAMI y su representante ante la OMPI no figure en la base de datos de representantes de la OAMI, se requerirá al titular que designe un representante ante la OAMI.
Si la OAMI acepta una reivindicación de ant igüedad, informará de el lo a l a OMPI, quien inscribirá este hecho en el registro internacional y lo publicará.
Se informará de la reivindicación de an tigüedad a las oficinas nacionales afectadas, con arreglo a la regla 110, apartado 6, del REMC.
Si no se ha subsanado la irregularidad y/o si no se ha designado un representante (en su caso), se denegará el derecho de antigüedad y se concederá al titular del registro internacional un plazo de dos meses para presentar recurso. En dichos casos, no se informará a la OMPI. Lo mismo es aplicable si se abandona la reivindicación de antigüedad.
3.4 Motivos de denegación absolutos
Artículo 154, apartado 1, del RMC Regla 112, apartado 5, y regla 113, del REMC
Los registros internacionales que designan a la UE serán objeto de un examen de los motivos absolutos de denegación del mismo modo que lo están las solicitudes de marcas comunitarias directas (para más información, véanse las Directrices, Parte B, Examen, Sección 4, Motivos absolutos de denegación y marcas comunitarias colectivas).
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Si la OAMI considera que la marca es susceptible de protección, enviará una situación provisional de la marca a la OMPI, indicando que se ha completado el examen de oficio pero que el registro internacional aún puede ser objeto de oposición u observaciones por terceros. Dicha notificación se inscribirá en el Registro internacional, se publicará en la Gaceta y se comunicará al titular del registro internacional.
Si la OAMI considera que la marca no es susceptible de p rotección, enviará una denegación provisional de protección, en la que concederá al titular un plazo de dos meses a partir del envío de dicha denegación para presentar observaciones. En los casos en que el titular del registro internacional tenga la obligación de estar representado en los procedimientos ante la OAMI y su representante ante la OMPI no figure en l a base de datos de representantes de l a OAMI, la notificación de l a denegación provisional invitará al titular a que designe un representante, de conformidad con los artículos 92 y 93, del RMC. Dicha notificación se inscribirá en el Registro internacional, se publicará en la Gaceta y se comunicará al titular del registro internacional. La respuesta a la denegación provisional deberá ir dirigida a la OAMI.
Si, después de reexaminar el asunto, se renuncia a la objeción, el examinador emitirá una situación provisional de la marca a la OMPI, siempre que no haya vencido el plazo de oposición.
Si la OAMI no expide una denegación provisional antes de que comience el plazo de oposición (seis meses a partir de la republicación), se considerará que ha concluido el examen de los motivos absolutos. La OAMI enviará, por tanto, una situación provisional de la marca a la OMPI.
Una vez que se haya enviado la denegación provisional, el examen posterior será igual que el de la solicitud de marca comunitaria directa; se mantendrán intercambios directos con el titular o su representante, siempre que sea necesario.
No se tramitarán las respuestas recibidas por el titular del registro internacional o de su representante cuando ambos estén establecidos fuera de la UE.
Si el titular no subsana las objeciones ni convence al examinador de que son infundadas, o se abstiene de responder a la objeción, se confirmará la denegación en la medida que se identifique en la denegación provisional. Dicho de otro modo, si la denegación provisional afectaba únicamente a parte de los productos y servicios, se denegarán solo dichos productos y servicios y se aceptará el resto. El titular del registro internacional dispondrá de un plazo de dos meses para interponer un recurso.
Cuando la resolución sea definitiva y siempre que la denegación sea total, la OAMI informará a l a OMPI de que se ha confirmado la denegación provisional. Si la denegación por motivos absolutos es solo parcial, se emitirá una comunicación a l a OMPI una vez que hayan finalizado el resto de procedimientos (oposiciones) o haya finalizado el plazo de opos ición sin que se reciban oposiciones (véase el apartado 3.9 infra).
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3.5 Observaciones de terceros
Artículo 40, del RMC Regla 112, apartado 5, del REMC
Las observaciones de terceros se pueden p resentar de forma válida ante la OAMI desde la fecha de notificación del registro internacional a la OAMI al menos hasta el final del plazo de opo sición y, si se presentó una opos ición, siempre que esté pendiente, aunque nunca más allá del plazo de 18 meses que la OAMI tiene para informar a la OMPI de todos los posibles motivos de dene gación (véase el apartado 3.1 supra).
Si las observaciones de terceros se reciben antes de que la OAMI envíe una comunicación a la OMPI sobre el resultado del examen de motivos absolutos y la OAMI las considera justificadas, la notificación de denegación provisional se emitirá sin mencionar las observaciones de terceros.
Si las observaciones de terceros se reciben después de e mitir una denegación provisional basada en motivos absolutos respecto de productos y servicios distintos de aquellos a l os que se hace referencia en l as observaciones y la OAMI las estima fundadas, se expedirá otra denegación provisional, sin mencionar las observaciones de terceros.
Si se reciben observaciones de terceros después de que se haya emitido una situación provisional de l a marca y la OAMI las estima fundadas, expedirá otra denegación provisional a l as observaciones de terceros. Las observaciones se adjuntarán a la denegación provisional.
El procedimiento de ex amen posterior es idéntico al procedimiento descrito en las Directrices, Parte B, Examen, Sección 1, Procedimientos, apartado 3.1, Aspectos procesales relativos a las observaciones de terceros y la revisión de motivos absolutos.
Si la OAMI estima que las observaciones carecen de fundamento, simplemente se enviarán al solicitante sin informar de ello a la OMPI.
3.6 Oposición
Artículo 156, del RMC Reglas 114 y 115, del REMC
3.6.1 Plazos
Las oposiciones contra el registro internacional se pueden presentar entre el sexto y el noveno mes a partir de la fecha de la primera republicación. Por ejemplo, si la primera republicación se realiza el 15/2/ 2012, el plazo de oposición comienza el 16/8/2012 y finaliza el 15/11/2012.
El plazo de opos ición es fijo e independiente del resultado del procedimiento sobre motivos absolutos. No obstante, el inicio del plazo de oposición depende del resultado del examen de motivos de denegación absolutos, en la medida en que el
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procedimiento de oposición puede verse suspendido si se expide una denegación de los motivos absolutos.
Las oposiciones presentadas después de la republicación del registro internacional pero antes del inicio del plazo de opos ición se retendrán y se considerarán presentadas el primer día del plazo de oposición. Si la oposición se retirare antes de dicha fecha, se devolverá la tasa de oposición.
Para más información sobre el procedimiento de oposición, véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales.
3.6.2 Recepción e información del titular internacional
Regla 16 bis, Regla 114, apartado 3, del REMC
La OAMI expedirá un recibo al oponente. Si se recibe una oposición antes del inicio del plazo de opos ición, se remitirá una c arta al oponente para informarle de q ue la oposición se considerará recibida el primer día del plazo de oposición y que, hasta entonces, se retendrá.
La Oficina enviará, asimismo, una copia del escrito de oposición, a título informativo, al titular del registro internacional o, si este último ha designado un representante ante la OMPI y la OAMI dispone de una información de contacto suficiente, a dicho representante, con independencia de su ubicación.
3.6.3 Tasas
Artículo 156, apartado 2, del RMC Regla 54, del REMC
La oposición no s e considerará debidamente presentada hasta que no s e haya abonado la tasa de oposición. Si no se puede determinar el pago de la tasa dentro del plazo de oposición, se considerará que la oposición no ha sido presentada.
Si el oponente está en desacuerdo con esta conclusión, podrá solicitar una resolución formal de pé rdida de derechos. Si la Oficina decide confirmar esta conclusión, se informará a ambas partes. Si el oponente recurre la resolución, la OAMI expedirá una denegación provisional a l a OMPI, aunque sea incompleta, a l os solos efectos de cumplir el plazo de 18 meses. Si la resolución deviene definitiva, se revocará la denegación provisional. De lo contrario, el procedimiento de op osición se iniciará normalmente.
3.6.4 Examen de admisibilidad
Artículo 92, apartado 2, del RMC Reglas 17 y 115, del REMC
La OAMI examinará si la oposición es admisible y si contiene los datos que la OMPI requiere.
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Si la oposición se considera inadmisible, la OAMI informará de ello al titular del registro internacional y no s e enviará a l a OMPI una denegación provisional basada en una oposición.
Para más información sobre el procedimiento de oposición, véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales.
3.6.5 Lengua del procedimiento
Artículo 119, apartado 6, del RMC Regla 16, apartado 1, del REMC
Las oposiciones (al igual que las solicitudes de anulación) se deberán presentar en la lengua de la solicitud internacional (la primera lengua) o en la segunda lengua que el solicitante internacional está obligado a indicar al designar a la UE. El oponente podrá elegir una de entre estas dos lenguas como la lengua del procedimiento de oposición. La oposición podrá asimismo presentarse en cualquiera de las otras tres lenguas de la Oficina, siempre que en el plazo de un mes se presente una traducción a la lengua del procedimiento.
La OAMI utilizará:
• la lengua del procedimiento de oposición elegida por el oponente en todas las comunicaciones realizadas directamente con las partes;
• la lengua en la que la OMPI hubiere registrado el registro internacional (primera lengua) en todas las comunicaciones con la OMPI, por ejemplo, la denegación provisional.
3.6.6 Representación del titular del registro internacional
3.6.6.1 Recibos de la oposición
Regla 16 bis, del REMC
En su caso, en l os recibos de l a oposición, la OAMI informará al titular del registro internacional de que si no nombra a un representante que cumpla los requisitos establecidos en el artículo 92, apartado 3, o el artículo 93, del RMC en el plazo de un mes desde que se recibe la comunicación, la OAMI comunicará el requisito formal de que se designe a un representante para el titular del registro internacional, junto con los plazos de oposición, una vez que se considere que la oposición es admisible.
Cuando el titular del registro internacional tiene un representante en el territorio de la UE que no figura en la base de datos de representantes de la OAMI, ésta informará a dicho representante de que si desea representar al titular del registro internacional ante la OAMI deberá especificar la base de su derecho (es decir, si es abogado o un representante profesional con arreglo al artículo 93, apartado 1, letras a) o b), del RMC o un empleado representante con arreglo al artículo 92, apartado 3, del RMC) (véanse asimismo las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional).
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3.6.6.2 Notificación del inicio del procedimiento de oposición
Regla 18, apartado 1, del REMC
Si se estima que la oposición es admisible y si, a pesar de la invitación con arreglo al apartado 3.6.6.1, el titular del registro internacional no designa a un representante de la UE antes de que se notifique la admisión de la oposición, el tratamiento ulterior del expediente dependerá de si el titular del registro internacional está o no obligado a actuar representado ante la OAMI, con arreglo al artículo 92, apartado 2, del RMC.
• Si el titular del registro internacional no está obligado a actuar representado ante la OAMI, el procedimiento continuará directamente con dicho titular, es decir, se notificará al titular del registro internacional la admisibilidad de la oposición y los plazos señalados para su fundamentación.
• Si el titular del registro internacional está obligado a actuar representado ante la OAMI, se notificará al titular del registro internacional la admisibilidad de la oposición y se le solicitará formalmente que designe a un representante de la UE en el plazo de dos meses desde la recepción de la comunicación (regla 114, apartado 4, del REMC), en cuyo defecto se denegará el registro internacional, con un derecho a recurso. Una vez que la resolución sea definitiva, se cerrará el procedimiento de oposición y se informará a la OMPI. A efectos de la imposición de costas, serán de aplicación las reglas normales. Esto quiere decir que no se dictará resolución sobre las costas y que la tasa de oposición no se devolverá.
3.6.7 Denegación provisional (basada en motivos relativos)
Artículo 156, apartado 2, del RMC Regla 18 y regla 115, apartado 1, del REMC Artículo 5, apartado 1, artículo 5, apartado 2, letras a) y b), del Protocolo de Madrid Regla 17, apartado 1, letra a), y apartado 2, letra v), del RC
Toda oposición que se considere presentada y admisible dará lugar al envío de una notificación de denegación provisional a la OMPI basada en una oposición en espera. Se informará a la OMPI sobre cada oposición admitida que haya sido debidamente presentada en el plazo de oposición, a través de una denegación provisional separada para cada oposición.
La denegación provisional contendrá la lista de productos y servicios contra la que se dirige la oposición, los derechos anteriores invocados, así como la lista pertinente de productos y servicios en la que se basa la oposición.
El oponente aportará la lista de productos y servicios en los que se basa la oposición en la lengua del procedimiento de oposición. La OAMI remitirá esta lista a la OMPI en esa lengua y no l a traducirá a l a lengua en l a que se hubiere inscrito el registro internacional.
Dicha notificación se inscribirá en el Registro internacional, se publicará en la Gaceta y se comunicará al titular del registro internacional. No contendrá, sin embargo, ningún plazo, ya que el plazo de inicio del procedimiento se señalará a través de una notificación directa a las partes que realiza en paralelo la OAMI, tal como ocurre para una marca comunitaria normal.
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3.6.8 Suspensión de la oposición en c aso de que estuviere pendiente una denegación provisional por motivos absolutos
Regla 18, apartado 2, y regla 20, apartado 7, del REMC
Si la oposición se presenta después de que la OAMI haya enviado una notificación de denegación provisional por motivos absolutos respecto de los mismos productos y servicios, la OAMI informará a la OMPI de la misma y comunicará a las partes que, a partir de la fecha de esa comunicación, el procedimiento de oposición queda suspendido hasta que se dicte una resolución definitiva respecto a los motivos absolutos.
Si la denegación provisional por motivos absolutos conduce a una denegación definitiva de la protección para todos los productos y servicios o para aquellos que han sido impugnados por la oposición, el procedimiento de oposición se da por concluido, sin que se proceda a dictar resolución, y se devuelve la tasa de oposición.
Si la denegación por motivos absolutos no se mantiene o se mantiene solo parcialmente, se reanudará el procedimiento de oposición para el resto de productos y servicios.
3.7 Anulación del registro internacional o re nuncia a la designación de la UE
Si, además de una denegación provisional por motivos absolutos o relativos, el titular solicita la anulación del registro internacional del Registro internacional o renuncia a su designación de la UE, se dará por concluido el expediente después de recibir la notificación por parte de la OMPI. Si esto ocurre antes del inicio de l a fase contradictoria del procedimiento de opos ición, se devolverá la tasa de oposición al oponente, ya que esto equivale a la retirada de la solicitud de marca comunitaria. El titular del registro internacional deberá presentar dichas peticiones a l a OMPI (o a través de la oficina de origen) empleando el formulario oficial (MM7/MM8). La OAMI no puede actuar a modo de intermediario y no transmitirá estas peticiones a la OMPI.
Sin embargo, la anulación del registro internacional a petición de la oficina de origen (a raíz de un «ataque central» durante el plazo de dependencia de cinco años) se considerará equivalente a la denegación de la solicitud de marca comunitaria en procedimientos paralelos, con arreglo a l a regla 18, apartado 2, del REMC, en c uyo caso no se reembolsará la tasa de oposición.
3.8 Limitaciones de la lista de productos y servicios
La OAMI no puede comunicar limitaciones como tal a la OMPI.
Por lo tanto, tras una denegación provisional por motivos absolutos o relativos, el titular del registro internacional puede optar por limitar la lista de productos o servicios:
• tanto a través de la OMPI, empleando el formulario adecuado (MM6/MM8) (en cuyo caso, siempre que la limitación permita que se retire la objeción, la OAMI comunicará a la OMPI que se ha retirado la denegación provisional), o
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• como directamente ante la OAMI. En cuyo caso, la OAMI comunicará la limitación a la OMPI confirmando la denegación provisional. En otras palabras, el registro de la OMPI reflejará la denegación parcial, no la limitación per se.
Cuando no existe una denegación provisional pendiente, todas las limitaciones deben presentarse únicamente a través de la OMPI.
Las limitaciones serán examinadas del mismo modo que las limitaciones o renuncias parciales a una (solicitud de) marca comunitaria (véanse las Directrices, Parte B, Examen, Sección 3, Clasificación, y las Directrices, Parte E, Operaciones de registro, Sección 1, Cambios en un r egistro). Cuando la limitación haya sido presentada a través de la OMPI y la OAMI la considere inadmisible, se emitirá una declaración de que la limitación no surte efectos en e l territorio de la UE, con arreglo a la regla 27, apartado 5, del RC. Dicha declaración no será susceptible de revisión ni de recurso.
Las anulaciones parciales a petición de la oficina de origen (más allá de un «ataque central» durante el plazo de dependencia de cinco años) serán inscritas tal como están por la OAMI.
Si la limitación se presenta antes del inicio de la fase contradictoria del procedimiento de oposición y permite que se concluya el procedimiento de oposición, se devolverá la tasa de oposición al oponente.
3.9 Confirmación o r etirada de la denegación provisional y emisión de la declaración de concesión de protección
Regla 113, apartado 2, letra a), 115, apartado 5, letra a) y 116, apartado 1, del REMC
En caso de haber remitido a la OMPI una o varias notificaciones de denegación provisional, la OAMI deberá, una vez concluidos todos los procedimientos y que todas las resoluciones sean definitivas:
• confirmar la denegación provisional a la OMPI
• o enviar a la OMPI un declaración de concesión de protección que indique que la o las denegaciones provisionales han sido revocadas total o parcialmente. La declaración de concesión de protección deberá especificar para qué productos y servicios se acepta la marca.
Si, después de que expire el plazo de opos ición, el registro internacional no ha s ido objeto de una denegación provisional, la OAMI enviará una declaración de concesión de protección a la OMPI para todos los productos y servicios.
Dicha declaración deberá incluir la fecha en que el registro internacional fue republicado en la Parte M.3 del Boletín de Marcas Comunitarias.
La OAMI no emitirá ningún certificado de registro para los registros internacionales.
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3.10 Segunda republicación
Artículo 151, apartados 2 y 3, artículo 152, apartado 2, y artículo 160, del RMC Regla 116, apartado 2, del REMC
La segunda republicación efectuada por la OAMI tendrá lugar cuando, como resultado del procedimiento, el registro internacional siga protegido (al menos en parte) en la UE.
La fecha de l a segunda republicación será el punto de par tida del plazo de us o de cinco años y la fecha a partir de la cual se podrá invocar el registro contra el infractor.
A partir de l a segunda republicación, la solicitud internacional tendrá los mismos efectos que una marca comunitaria registrada. Estos efectos podrán entrar en v igor, por tanto, antes de que haya vencido el plazo de 18 meses.
Solo se publicarán los siguientes datos en l a Parte M.3.1 del Boletín de Marcas Comunitarias:
111 Número del registro internacional; 460 Fecha de publicación en la Gaceta Internacional (si procede); 400 Fecha(s), número(s) y página(s) de l a(s) anterior(es) publicación(es) en el
Boletín de Marcas Comunitarias; 450 Fecha de p ublicación del registro internacional o designación posterior en el
Boletín de Marcas Comunitarias.
3.11 Cesión de la designación de la UE
Regla 120, del REMC
El registro internacional es un único registro desde el punto de vista administrativo ya que se trata de una sola inscripción en el Registro internacional. Sin embargo, en la práctica, se trata de un conjunto de marcas nacionales (regionales) si consideramos los efectos sustantivos y la marca como un objeto de propiedad. Por lo que respecta al nexo con la marca de base, aunque el registro internacional ha de inscribirse originalmente a no mbre del titular de l a marca de bas e, podrá ser cedido posteriormente de forma independiente de la misma.
De hecho, una «c esión del registro internacional» no es más que una cesión de l a marca con efectos para una, varias o todas las Partes Contratantes designadas, es decir, equivale a una cesión del número correspondiente de marcas nacionales (regionales).
Las cesiones no podrán presentarse directamente a la OAMI en su calidad de Oficina designada; deberán presentarse ante la OMPI o a través de la oficina de la parte contratante del titular, empleando el formulario MM5 de la OMPI. Una vez registrado en la OMPI, el cambio de titularidad de la designación de la UE se notificará a la OAMI y se integrará automáticamente en su base de datos.
En su calidad de Oficina designada, la OAMI no tiene nada que examinar por lo que respecta a la cesión. La regla 27, apartado 4, del RC permite que una Oficina designada envíe una declaración a la OMPI de que, en lo que respecta a su designación, un cambio de titularidad carece de efectos. Sin embargo, la OAMI no
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aplicará esta disposición, puesto que no está facultada para reexaminar si el cambio en el registro internacional se basó en una prueba de la cesión. Asimismo, la OAMI no reexamina la marca en cuanto a la posibilidad de inducir a error (artículo 17, apartado 4, del RMC), excepto si la cesión se presenta durante la fase de examen de los motivos absolutos.
3.12 Nulidad, caducidad y demandas de reconvención
Artículos 51, 52 y 53, artículo 151, apartado 2, artículo 152, apartado 2, y artículos 158 y 160, del RMC Regla 117, del REMC
Los efectos de l os registros internacionales que designan a la UE podrán ser declarados nulos y la solicitud de nulidad de los efectos de un registro internacional que designen a la UE se corresponde, en la terminología de la marca comunitaria, a una solicitud de declaración de caducidad o de nulidad.
No existe un plazo para presentar una solicitud de nulidad o de declaración de caducidad, con las siguientes excepciones:
• una solicitud de nul idad de un r egistro internacional que designa a l a UE solo será admisible una vez que la Oficina haya aceptado definitivamente la designación, es decir, una vez que se haya enviado la declaración de concesión de protección.
• solo será admisible una s olicitud de c aducidad por falta de us o de un registro internacional que designa a la UE si en la fecha de presentación de la petición, la aceptación definitiva del registro internacional ha sido republicada por la OAMI, al menos, cinco años antes (véase el artículo 160 del RMC que establece que la fecha de publ icación a que se refiere el artículo 152, apartado 2 sustituirá a la fecha de registro con miras al establecimiento de la fecha a partir de la cual la marca objeto de un registro internacional que designe a la Unión Europea deba ser puesta genuinamente en uso en la Unión Europea).
La OAMI examinará la solicitud del mismo modo que si estuviera dirigida contra marcas comunitarias directas (para más información, véanse las Directrices, Parte D, Anulación).
Si se declara total o parcialmente la nulidad/caducidad del registro internacional que designa a la UE, la Oficina se lo notificará a la OMPI con arreglo al artículo 5, apartado 6, del Protocolo de M adrid y la regla 19, del RC. La Oficina Internacional inscribirá la declaración de nulidad/caducidad y la publicará en la Gaceta Internacional.
3.13 Gestión de las tasas
El equivalente de la tasa de registro se ha e stablecido a cero para las marcas comunitarias directas. Esta modificación se aplica a las tasas de Madrid desde el 12/08/2009. Como consecuencia, ya no se realizará ningún reembolso de parte de la tasa individual para los registros internacionales que designan a la UE con una fecha de designación posterior a l a mencionada anteriormente, que haya sido denegada definitivamente o para la que el titular del registro internacional ha renunciado a la
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protección respecto de la UE, con anterioridad a que la resolución de denegación se convierta en definitiva, con arreglo a lo dispuesto en los artículos 154 y 156 del RMC.
De conformidad con lo establecido en el artículo 3 (último apartado) del Reglamento (CE) nº 355/2009 de la Comisión, de 31/3/2009, que modifica el Reglamento (CE) nº 2869/95, de 13/12/1995, relativo a las tasas que se han de abonar a la OAMI, las designaciones de la UE presentadas con anterioridad al 12 /8/ 2009 seguirán estando sujetas al artículo 13 del RTMC en su versión vigente antes de la fecha de entrada del Reglamento CE) nº 355/2009 de la Comisión.
4 Transformación (conversion), transformación, sustitución
4.1 Observaciones preliminares
Transformación (conversion) o transformación
Ambas son aplicables en los casos en que el registro internacional que designa a la UE deja de tener efectos, aunque por distintos motivos:
• Cuando un registro internacional deja de tener efectos porque la marca de origen ha sido objeto de un «ataque central» durante el plazo de dependencia de cinco años, puede llevarse a c abo la transformación a través de una solicitud de marca comunitaria directa. La transformación no está disponible cuando el registro internacional ha sido anulado a petición del titular o éste ha renunciado parcial o totalmente a la designación de la UE. La designación de la UE todavía será efectiva cuando se solicite la transformación, es decir, no debe haber sido denegada definitivamente por la OAMI, de l o contrario, no hab rá nada que transformar y la transformación (conversion) de la designación será la única posibilidad.
• Cuando el registro internacional que designe a la UE sea denegado definitivamente por la OAMI o dej e de tener efectos por motivos que s ean independientes de l a marca de bas e, solo será posible la transformación (conversion). La transformación (conversion) es posible dentro del plazo señalado incluso si, mientras tanto, el registro internacional ha sido anulado del Registro internacional a petición de la oficina de origen, es decir, a través de un «ataque central».
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4.2 Transformación (conversion)2
Artículos 112 a 114 y 159, del RMC Regla 24, apartado 2, letra a), inciso iii), del RC
La opción legal de la transformación (conversion) tiene su origen en el sistema de la marca comunitaria, que ha s ido adaptado con el fin de permitir la transformación (conversion) de una designación de la UE a través de un registro internacional en una solicitud de marca nacional, del mismo modo que para una marca comunitaria directa. También se han adaptado el sistema de la marca comunitaria y el sistema de Madrid para permitir la transformación (conversion) en una designación de Estados miembros que sean parte del sistema de Madrid (conocida como transformación con «opting- back» o vuelta atrás). Malta no forma parte del sistema de Madrid.
Esta última se envía a la OMPI como solicitud de designación posterior del Estado o Estado miembro(s). Este tipo de des ignación posterior es el único que, en l ugar de hacerlo directamente a través de l a Oficina de origen o a través de l a OMPI, debe presentarse a través de la Oficina designada.
Para más información sobre la transformación (conversion), véanse las Directrices, Parte E, Operaciones de registro, Sección 2, Transformación (Conversion).
4.3 Transformación
Artículo 6, apartado 3, artículo 9 quinquies, del Protocolo de Madrid Artículo 161, del RMC Regla 84, apartado 1, letra p) y regla 124, del REMC
4.3.1 Observaciones preliminares
La transformación tiene su origen exclusivamente en el Protocolo de Madrid. Se ha introducido con el fin de suavizar las consecuencias del plazo de dependencia de cinco años, que ya estaba previsto en el Arreglo de Madrid. En los casos en los que se anula parcial o totalmente un registro internacional debido a que la marca de base deja de surtir efecto y el titular presenta una solicitud de la misma marca y por los mismos productos y servicios que los del registro anulado ante la oficina de cualquiera de las partes contratantes en las que el registro internacional tenía efectos, dicha solicitud se tramitará como si hubiese sido presentada en l a fecha del registro internacional o, cuando las partes contratantes hayan sido designadas posteriormente, en la fecha de la designación posterior. Asimismo, gozará también de la misma prioridad, en su caso.
Dicha presentación no está regulada por el Protocolo, ni la OMPI resultará implicada de ningún modo. A diferencia de lo que ocurre con la transformación (conversion), no es posible transformar la designación de la UE en solicitudes nacionales, ni tampoco
2 En inglés, el término «conversion» (transformación) se utiliza para describir una disposición jurídica específica del sistema de la marca comunitaria (artículo 112 y ss.) mientras que «transformation» (transformación) se emplea para describir aquello contemplado en el artículo 9 quinquies del Protocolo de Madrid. En otras lenguas, existe solo una única palabra que se utiliza para describir estas dos disposiciones jurídicas distintas (por ejemplo, en español «transformación»). Para evitar confusiones, podrá utilizarse la palabra inglesa «conversion» entre paréntesis cuando se utilice, por ejemplo, la palabra española «transformación» con arreglo a lo establecido en el artículo 112 del RMC.
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transformar una des ignación de la UE en des ignaciones individuales de los Estados miembros. Si se ha designado a la UE, el registro internacional tendrá efectos en la UE y no en los Estados miembros individuales como tal.
La designación de la UE todavía será efectiva cuando se solicite la transformación, es decir, no debe haber sido denegada definitivamente por la OAMI, de lo contrario, no habrá nada que transformar y la transformación (conversion) de la designación será la única posibilidad.
4.3.2 Principio y efectos
Artículo 27, del RMC
Después de la anulación total o parcial de un registro internacional que designa a la UE a petición de la Oficina de origen, con arreglo al artículo 9 quinquies del Protocolo (es decir, después de un «ataque central» durante el plazo de dependencia de cinco años), el titular podrá presentar una solicitud de marca comunitaria «directa» para la misma marca y los mismos productos y servicios que los de la marca anulada.
La solicitud que resulta de la transformación será tramitada por la OAMI como si hubiera sido presentada en la fecha del registro internacional original o, en los casos en que se designó a la UE posteriormente, en la fecha de l a designación posterior. Deberá también gozar de la misma prioridad, en su caso.
La fecha del registro internacional o de la designación posterior no devendrá la fecha de presentación de la solicitud de marca comunitaria. El artículo 27 del RMC, que se aplica mutatis mutandis, establece condiciones claras para la concesión de una fecha de presentación, que también está sujeta al pago de una tasa de solicitud en el plazo de un mes. Sin embargo, la fecha del registro internacional o la designación posterior será la fecha que determine el «efecto de derecho anterior» de la marca comunitaria, a efectos de las búsquedas de prioridad, las oposiciones, etc.
A diferencia de l as reivindicaciones de pr ioridad y antigüedad (véase la regla 9, apartado 8, del REMC), no es posible tener una fecha «dividida» o «parcial», es decir solo para aquellos productos y servicios contenidos en el registro internacional y que la fecha de presentación de la solicitud de marca comunitaria sea la fecha relevante para los productos y servicios restantes. Ni el artículo 9 quinquies del Protocolo de Madrid, ni el artículo 161 del RMC recogen la posibilidad de un efecto de transformación parcial de este tipo.
La renovación comienza a contar a partir de la fecha de presentación de la marca comunitaria transformada.
4.3.3 Procedimiento
Las condiciones para invocar un der echo de t ransformación con arreglo al artículo 9 quinquies del Protocolo de Madrid son:
• que la solicitud se presente dentro del plazo de tres meses a partir de la fecha en que se canceló el registro internacional parcial o totalmente, y
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• que los productos y servicios de l a solicitud resultante estén realmente comprendidos en la lista de productos y servicios de la designación de la UE.
El solicitante deberá reivindicar este derecho en el correspondiente apartado del formulario de solicitud de l a marca comunitaria o formulario de presentación electrónica de la marca comunitaria. En dicho apartado deberán indicarse los siguientes datos:
1. el número de registro internacional cancelado total o parcialmente; 2. la fecha en la que la OMPI canceló parcial o totalmente el registro internacional; 3. la fecha del registro internacional con arreglo al artículo 3, apartado 4, del
Protocolo de Madrid o la fecha de la extensión territorial a la UE efectuada con posterioridad al registro internacional con arreglo al artículo 3 ter, apartado 2, del Protocolo de Madrid;
4. si procede, la fecha de prioridad o de an tigüedad reivindicada en el registro internacional.
La OAMI invitará al solicitante a subsanar las irregularidades detectadas en el plazo de dos meses.
Si no se subsanan las irregularidades, se perderá el derecho a la fecha del registro internacional o a la extensión territorial y, si se hubiere reivindicado, el derecho de prioridad del registro internacional. En otras palabras, si finalmente se denegara la transformación, la solicitud de marca comunitaria se examinará como si de una solicitud «normal» se tratara.
4.3.4 Examen
4.3.4.1 Solicitud de transformación del registro internacional que designa a la UE cuando no se han publicado las indicaciones
Cuando la solicitud de t ransformación se refiera a un registro internacional que designe a la UE cuyas indicaciones no se hayan publicado con arreglo a lo dispuesto en el artículo 152, apartado 2, del RMC (en otras palabras, la Oficina la ha denegado definitivamente), la marca comunitaria resultante de l a transformación se tramitará como si se tratara de una solicitud de marca comunitaria normal y, por tanto, se examinará con respecto a la clasificación, las formalidades y los motivos absolutos. Además, se publicará a los efectos de oposición. No existe ninguna disposición en los Reglamentos que permita a la OAMI omitir el proceso de examen.
No obstante, dado que este caso presupone que existía un registro internacional que designaba a la UE, la OAMI puede aprovechar la clasificación de la lista de productos y servicios del registro internacional cancelado (siempre que cumpla las reglas de la Oficina) así como los informes de búsqueda ya emitidos para dicho registro internacional (ya que la fecha de la solicitud de marca comunitaria resultante es la misma que la del registro internacional original, de manera que el informe de búsqueda obtendrá, por definición, los mismos resultados).
La marca comunitaria se publicará en la Parte A del Boletín de Marcas Comunitarias a efectos de oposición con un campo adicional bajo el código INID 646, que mencione los datos de la transformación. El resto del procedimiento será igual que para la marca comunitaria normal, incluso si el procedimiento de oposición contra el registro internacional que designa a la UE ya hubiera comenzado, pero no hubiera alcanzado
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la fase final de resolución. En tal caso, el procedimiento de oposición anterior queda concluido y tendrá que presentarse una nueva oposición.
4.3.4.2 Solicitud de transformación del registro internacional que designa a la UE cuando se han publicado las indicaciones
Cuando la solicitud de t ransformación se refiera a un registro internacional que designe a la UE cuyas indicaciones ya se han publicado con arreglo a lo dispuesto en el artículo 152, apartado 2, del RMC, se omitirán las etapas de examen y oposición (artículo 37 a 42, del RMC).
Sin embargo, la lista de productos y servicios tendrá que traducirse a todos los idiomas. Seguidamente, se publicará la marca comunitaria en l a Parte B.2 del Boletín de Marcas Comunitarias con las traducciones y el código INID 646 adicional y se expedirá inmediatamente un certificado de registro.
4.3.5 Transformación y antigüedad
Si en el expediente del registro internacional que designa a la UE transformado constaren reivindicaciones de antigüedad aceptadas por la Oficina e i nscritas por la OMPI, no será necesario reivindicarlas de nuevo en la marca comunitaria resultante de la transformación. Esta solución no está prevista de forma expresa en la regla 124, apartado 2, del REMC (solo se menciona la prioridad en la letra d)) pero se amplía por analogía a la antigüedad teniendo en cuenta que las condiciones son:
• la Oficina ya había aceptado las reivindicaciones y la OMPI las había publicado, • en el caso en que, entretanto, el titular haya dejado caducar las marcas
anteriores, no podrá presentar reivindicaciones nuevas ante la Oficina (una de las condiciones para una reivindicación de antigüedad válida es que el derecho anterior esté registrado y vigente en el momento en que se realiza la reivindicación).
4.3.6 Tasas
No existe una tasa de «transformación» específica. La solicitud de marca comunitaria resultante de la transformación del registro internacional que designa a la UE está sujeta a las mismas tasas que la solicitud de marca comunitaria «normal», es decir, la tasa de base.
La tasa de base de la solicitud de marca comunitaria debe abonarse a la Oficina en el plazo de un mes a partir de la presentación de la solicitud de marca comunitaria en la que se pide la transformación a fin de que la petición cumpla con lo establecido en el artículo 27 y el artículo 9 quinquies, inciso iii) y la transformación sea aceptada. Por ejemplo, si el plazo de tres meses para llevar a cabo la transformación finaliza el 1/4/ 2012 y la transformación a solicitud de marca comunitaria se presenta el 30/3/ 2012, el plazo límite para abonar la tasa de bas e es el 30/4/2012. Si el pago se realiza después de esa fecha, no se cumplirán las condiciones para la transformación, ésta será denegada y la fecha de presentación de la solicitud de marca comunitaria será la fecha del pago.
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4.4 Sustitución
Artículo 157, del RMC Regla 84, apartado 2, del REMC Artículo 4 bis, del Protocolo de Madrid Regla 21, del RC
4.4.1 Observaciones preliminares
La sustitución tiene su origen en el Arreglo de Madrid y en el Protocolo de Madrid. En ciertas condiciones, una marca registrada en l a oficina de una par te contratante se considerará sustituida por un registro internacional de la misma marca, sin perjuicio de los derechos adquiridos (fecha anterior). El tenor del artículo 4 bis, apartado 1, del Protocolo de Madrid indica claramente que se considera que la sustitución tiene lugar de forma automática, sin necesidad de que el titular lleve a cabo ningún tipo de acción y sin que tenga que inscribirse la sustitución. No obstante, cabe la posibilidad de solicitar a la OAMI que tome nota de la sustitución en su Registro (regla 21 del RC). Este procedimiento tiene por objeto garantizar que la información relevante sobre la sustitución sea accesible a terceros en los registros nacionales o regionales y en el Registro internacional. Es decir, no es obligatorio haber inscrito la sustitución a la hora de invocarla, pero puede resultar útil.
Aparte de la condición relativa a los derechos adquiridos con anterioridad, ni el Arreglo ni el Protocolo de Madrid proporcionan más detalles sobre la sustitución.
4.4.2 Principio y efectos
De acuerdo con el artículo 4 bis del Arreglo y el Protocolo, el titular puede solicitar a la Oficina que tome nota en su Registro de que un registro de marca comunitaria queda sustituido por un registro internacional correspondiente. Se considerará que los derechos del titular en la UE surten efectos a partir de la fecha de registro de la marca comunitaria anterior. Por consiguiente, en el Registro de Marcas Comunitarias se introducirá una mención según la cual una marca comunitaria directa ha s ido sustituida por una des ignación de l a UE a t ravés de un r egistro internacional y se publicará.
4.4.3 Procedimiento
El titular internacional puede presentar una solicitud de sustitución ante la OAMI en cualquier momento después de que la OMPI notifique la designación de la UE.
Una vez que se reciba una solicitud de registro de una sustitución, la OAMI llevará a cabo un examen formal, en el que se comprobará que las marcas son idénticas, que todos los productos y servicios contemplados en la marca comunitaria se incluyen en el registro internacional que designa a l a UE, que las partes son idénticas y que la marca comunitaria se ha registrado con anterioridad a la designación de la UE. No es necesario que el registro internacional incluya una lista idéntica de productos y servicios, sino que la lista puede tener un alcance mayor. Sin embargo, la lista no puede ser más reducida.
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La OAMI considera que es suficiente con que el registro internacional y la marca comunitaria coexistan en la fecha del registro internacional, para inscribir la sustitución en el Registro. En concreto, si la designación de l a UE a t ravés de un r egistro internacional aún no ha sido aceptada definitivamente, la Oficina no aguardará a la aceptación definitiva para inscribir la sustitución. Corresponde al titular internacional decidir el momento en el que debe solicitar la sustitución.
Si se cumplen todas las condiciones, en virtud de la regla 21 del RC, la OAMI tomará nota de la sustitución en el Registro de Marcas Comunitarias e informará a la OMPI de que una marca comunitaria ha sido sustituida por un registro internacional, indicando lo siguiente:
• el número del registro internacional; • el número de la marca comunitaria • la fecha de la solicitud de marca comunitaria • la fecha de registro de marca comunitaria • fecha(s) de prioridad (si procede) • número(s) de antigüedad, fecha(s) de presentación y país(es) (si procede) • la lista de productos y servicios de la sustitución (si procede).
Cuando se haya inscrito la sustitución, la marca comunitaria suele mantenerse en el Registro siempre que el titular la renueve. En otras palabras, la marca comunitaria sustituida en vigor y el registro internacional que designa a la UE coexisten.
De conformidad con la regla 21, apartado 2, del Reglamento Común del Arreglo y el Protocolo de Madrid, la OMPI inscribirá en el Registro internacional las indicaciones notificadas en virtud del apartado 1, las publicará e informará en consecuencia al titular, para garantizar que la información relevante concerniente a la sustitución esté a disposición de t erceros. En cualquier caso, la OAMI no es tá obligada a c omunicar cambios posteriores que afecten a la marca comunitaria sustituida.
4.4.4 Tasas
La solicitud de inscripción de una sustitución es gratuita.
4.4.5 Publicación
Regla 84, apartado 2, y regla 85, del REMC
La sustitución se inscribirá en el Registro de Marcas Comunitarias y se publicará en el Boletín de Marcas Comunitarias en la Parte C.3.7.
4.4.6 Sustitución y antigüedad
Artículo 4 bis, apartado 1, del Protocolo de Madrid
Dado que la sustitución tiene lugar «sin perjuicio de los derechos adquiridos» en virtud del registro anterior, la OAMI incluirá, en la notificación enviada a la OMPI en virtud de
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la regla 21 del RC, información relativa a l as reivindicaciones de ant igüedad contenidas en el registro de marca comunitaria sustituido.
4.4.7 Sustitución y transformación
Si el registro internacional que sustituyó a la marca comunitaria directa deja de producir efectos a raíz de un «ataque central» y, siempre que se cumplan las condiciones establecidas en el artículo 9 quinquies del Protocolo de Madrid, el titular podrá solicitar la transformación del registro internacional en virtud de dicho artículo y mantener, al mismo tiempo, los efectos de la sustitución de la marca comunitaria y sus efectos de fecha anterior, incluyendo, si procede, la prioridad y antigüedad.
4.4.8 Sustitución y transformación (conversion)
Para que la sustitución sea efectiva, el registro internacional y la marca comunitaria deberán coexistir en la fecha del registro internacional. Por lo tanto, si la OAMI deniega definitivamente el registro internacional que sustituye a l a marca comunitaria directa (debido a una opos ición, por ejemplo), el titular podrá solicitar la transformación (conversion) de la designación de l a UE y podrá, así, mantener los efectos de la sustitución de l a marca comunitaria y sus efectos de fecha anterior, incluyendo, si procede, la prioridad y antigüedad.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO
SOBRE LOS DIBUJOS Y MODELOS COMUNITARIOS REGISTRADOS
EXAMEN DE LAS SOLICITUDES DE DIBUJOS Y MODELOS COMUNITARIOS
REGISTRADOS
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Índice
1 Introducción............................................................................................... 7 1.1 Finalidad de las directrices........................................................................7 1.2 Principios generales ..................................................................................7
1.2.1 Deber de motivación....................................................................................... 7 1.2.2 Derecho a ser oído ......................................................................................... 8 1.2.3 Cumplimiento de los plazos............................................................................ 8 1.2.4 Alcance del examen que lleva a cabo la Oficina............................................ 9 1.2.5 Facilidad de uso ............................................................................................. 9
2 Presentación de una solicitud en la OAMI ............................................ 10 2.1 Introducción..............................................................................................10 2.2 Formulario de solicitud............................................................................10
2.2.1 Distintos medios de presentación................................................................. 10 2.2.2 Uso del formulario oficial .............................................................................. 10 2.2.3 Solicitudes enviadas por correo o entrega personal .................................... 11 2.2.4 Presentación electrónica .............................................................................. 11 2.2.5 Fax................................................................................................................ 11
2.3 Contenido de la solicitud .........................................................................11 2.4 Lengua de la solicitud..............................................................................12 2.5 Representación del solicitante................................................................12
2.5.1 Casos en que la representación es obligatoria ............................................ 12 2.5.2 Personas que pueden representar ............................................................... 13
2.6 Fecha de recepción, número de expediente y emisión de recibo......... 13 2.6.1 Solicitudes presentadas a t ravés de las oficinas nacionales (Oficina de
Propiedad Intelectual del Estado miembro u O ficina de Propiedad Intelectual del Benelux (BOIP)) ................................................................... 13
2.6.2 Solicitudes recibidas directamente en la Oficina.......................................... 14
2.7 Registro o informe de examen ................................................................14 2.7.1 Registro ........................................................................................................ 14 2.7.2 Informe de examen y comunicación informal sobre las posibles
irregularidades («informe de examen preliminar»)....................................... 15 2.7.2.1 Reivindicaciones de prioridad y documentos de apoyo.............................15 2.7.2.2 Reivindicaciones de prioridad realizadas con posterioridad a la
presentación..............................................................................................15 2.7.2.3 Solicitud presentada por fax......................................................................15 2.7.2.4 Pago de las tasas......................................................................................16 2.7.2.5 Solicitudes múltiples y solicitud de pago aplazado....................................16
3 Asignación de una fecha de presentación............................................ 17 3.1 Solicitud de registro.................................................................................17 3.2 Información que identifica al solicitante.................................................17 3.3 Representación del dibujo o modelo adecuada para su reproducción 18
3.3.1 Requisitos generales .................................................................................... 18 3.3.2 Fondo neutro ................................................................................................ 18
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3.3.3 Dibujos o modelos con retoques a tinta o líquido corrector ......................... 19 3.3.4 Calidad.......................................................................................................... 20
3.3.4.1 Fax ............................................................................................................20 3.3.4.2 Presentación electrónica ...........................................................................22
3.3.5 Muestra......................................................................................................... 22
4 Examen de los requisitos sustantivos................................................... 23 4.1 Conformidad con la definición de un dibujo o modelo..........................23
4.1.1 Proyectos, planos de c asas u ot ros planos arquitectónicos y dibujos y modelos de interiores o paisajes.................................................................. 24
4.1.2 Colores per se y combinaciones de colores................................................. 24 4.1.3 Iconos ........................................................................................................... 24 4.1.4 Meros elementos verbales ........................................................................... 24 4.1.5 Música y sonidos .......................................................................................... 24 4.1.6 Fotografías.................................................................................................... 25 4.1.7 Organismos vivos ......................................................................................... 25 4.1.8 Material didáctico.......................................................................................... 25 4.1.9 Conceptos..................................................................................................... 25
4.2 Orden público y buenas costumbres......................................................25 4.2.1 Principios comunes ...................................................................................... 25 4.2.2 Orden público ............................................................................................... 26 4.2.3 Buenas costumbres...................................................................................... 26
4.3 Objeción....................................................................................................26
5 Requisitos adicionales relativos a la reproducción del dibujo o modelo...................................................................................................... 27 5.1 Número de perspectivas..........................................................................28 5.2 Coherencia de las perspectivas ..............................................................29
5.2.1 Productos complejos .................................................................................... 30 5.2.2 Detalles......................................................................................................... 30 5.2.3 Juegos o conjuntos de artículos ................................................................... 31 5.2.4 Variaciones de un dibujo o modelo .............................................................. 32 5.2.5 Colores ......................................................................................................... 32 5.2.6 Elementos externos al dibujo o modelo ....................................................... 33
5.3 Uso de identificadores para excluir la protección a determinadas características ..........................................................................................34 5.3.1 Líneas discontinuas...................................................................................... 34 5.3.2 Delimitaciones .............................................................................................. 35 5.3.3 Sombreado en color y difuminación ............................................................. 35 5.3.4 Separaciones................................................................................................ 36
5.4 Texto explicativo, expresiones o símbolos ............................................36 5.5 Modificar y complementar las perspectivas...........................................37 5.6 Requisitos específicos.............................................................................37
5.6.1 Patrones de superficie repetitiva .................................................................. 37 5.6.2 Caracteres tipográficos................................................................................. 38
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6 Elementos adicionales que una solicitud debe o puede incluir.......... 38 6.1 Requisitos obligatorios............................................................................38
6.1.1 Identificación del solicitante y de su representante...................................... 39 6.1.2 Especificación de las lenguas ...................................................................... 39 6.1.3 Firma............................................................................................................. 40 6.1.4 Indicación de los productos .......................................................................... 40
6.1.4.1 Principios generales ..................................................................................40 6.1.4.2 Las clasificaciones de Locarno y de Eurolocarno......................................40 6.1.4.3 Cómo indicar los productos.......................................................................41 6.1.4.4 Cambio de indicación efectuado de oficio .................................................42
6.1.5 Listas de productos largas............................................................................ 43 6.1.6 Objeciones a las indicaciones del producto ................................................. 44
6.1.6.1 Sin indicación del producto........................................................................44 6.1.6.2 Indicación del producto insuficiente...........................................................44 6.1.6.3 Divergencia evidente.................................................................................45
6.2 Elementos opcionales..............................................................................45 6.2.1 Prioridad y prioridad de exposición .............................................................. 45
6.2.1.1 Prioridad....................................................................................................45 6.2.1.2 Prioridad de exposición .............................................................................52
6.2.2 Descripción ................................................................................................... 53 6.2.3 Indicación de la Clasificación de Locarno .................................................... 54
6.2.3.1 Principios generales ..................................................................................54 6.2.3.2 Solicitud múltiple y el requisito de «unidad de clase» ...............................54
6.2.4 Mención del diseñador o diseñadores.......................................................... 55 6.2.5 Solicitud de aplazamiento............................................................................. 55
6.2.5.1 Principios generales ..................................................................................55 6.2.5.2 Solicitud de aplazamiento..........................................................................56 6.2.5.3 Petición de publicación..............................................................................56 6.2.5.4 Cumplimiento de los plazos.......................................................................57 6.2.5.5 Irregularidades ..........................................................................................57
7 Solicitudes múltiples............................................................................... 59 7.1 Principios generales ................................................................................59 7.2 Requisitos formales que se aplican a las solicitudes múltiples ........... 59
7.2.1 Requisitos generales .................................................................................... 59 7.2.2 Examen separado ........................................................................................ 59 7.2.3 El requisito de «unidad de clase» ................................................................ 60
7.2.3.1 Principio.....................................................................................................60 7.2.3.2 Productos distintos de la ornamentación...................................................60 7.2.3.3 Ornamentación..........................................................................................61 7.2.3.4 Irregularidades ..........................................................................................62
8 Pago de las tasas .................................................................................... 62 8.1 Principios generales ................................................................................62 8.2 Moneda e importes...................................................................................63 8.3 Medios de pago, información sobre el pago y reembolso .................... 64
9 Retiradas y correcciones........................................................................ 64 9.1 Introducción..............................................................................................64 9.2 Retirada de la solicitud ............................................................................64
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9.3 Correcciones a la solicitud ......................................................................65 9.3.1 Elementos sujetos a corrección.................................................................... 65 9.3.2 Elementos que no pueden ser objeto de corrección .................................... 65 9.3.3 Procedimiento para solicitar una corrección ................................................ 66 9.3.4 Irregularidades.............................................................................................. 66
10 Registro, publicación y certificados ...................................................... 66 10.1 Registro.....................................................................................................66 10.2 Publicación ...............................................................................................67
10.2.1 Principios generales ..................................................................................... 67 10.2.2 Formato y estructura de la publicación ........................................................ 68
10.3 Certificado de registro .............................................................................69
11 Correcciones y cambios en el Registro y en la publicación de los registros de dibujos y modelos comunitarios ...................................... 70 11.1 Correcciones ............................................................................................70
11.1.1 Principios generales ..................................................................................... 70 11.1.2 Petición de corrección .................................................................................. 71 11.1.3 Publicación de las correcciones ................................................................... 71
11.2 Cambios en el Registro............................................................................72 11.2.1 Introducción .................................................................................................. 72 11.2.2 Renuncia del dibujo y modelo comunitario registrado ................................. 72
11.2.2.1 Principios generales ..................................................................................72 11.2.2.2 Requisitos formales para la declaración de renuncia ................................73
11.2.3 Cambios en e l nombre o en la dirección del solicitante/titular y/o de su representante................................................................................................ 74
11.2.4 Cesiones....................................................................................................... 75 11.2.4.1 Introducción...............................................................................................75 11.2.4.2 Derechos de uso anterior respecto de un dibujo o modelo comunitario
registrado ..................................................................................................75 11.2.4.3 Tasas.........................................................................................................75
11.2.5 Licencias...................................................................................................... 75 11.2.5.1 Principios generales ..................................................................................75 11.2.5.2 Dibujos y modelos comunitarios registrados .............................................76 11.2.5.3 Solicitudes múltiples de dibujos y modelos comunitarios registrados .......76 11.2.5.4 Tasas.........................................................................................................76
12 Registros internacionales....................................................................... 77 12.1 Descripción general del Sistema de La Haya .........................................77
12.1.1 El Arreglo de La Haya y el Acta de Ginebra................................................. 77 12.1.2 Procedimiento de presentación de solicitudes internacionales.................... 77
12.1.2.1 Particularidades.........................................................................................77 12.1.2.2 Aplazamiento de la publicación .................................................................78 12.1.2.3 Tasas.........................................................................................................78
12.1.3 Examen realizado por la Oficina Internacional............................................. 79
12.2 El papel de la Oficina como oficina designada ......................................79 12.2.1 Recepción del registro internacional que designa a la Unión Europea........ 79 12.2.2 Causas de denegación de registro............................................................... 79
12.2.2.1 Conformidad con la definición de un dibujo o modelo, el orden público y las buenas costumbres..............................................................................80
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12.2.2.2 Plazos........................................................................................................80 12.2.2.3 Lenguas.....................................................................................................80 12.2.2.4 Representación profesional.......................................................................81 12.2.2.5 Renuncia y limitación ................................................................................81 12.2.2.6 Concesión de protección...........................................................................81 12.2.2.7 Denegación ...............................................................................................81
12.3 Efectos de los registros internacionales ................................................82
13 Ampliación y dibujos y modelos comunitarios registrados................ 83 13.1 La extensión automática del dibujo o modelo comunitario a los
territorios de los nuevos Estados miembros .........................................83 13.2 Otras consecuencias prácticas...............................................................83
13.2.1 Presentación ante las oficinas nacionales ................................................... 83 13.2.2 Representación profesional.......................................................................... 84 13.2.3 Primera y segunda lengua............................................................................ 84 13.2.4 Traducción .................................................................................................... 84
13.3 Examen de las causa de denegación del registro..................................84 13.4 Inmunidad contra las acciones de anulación basadas en causas de
nulidad que pueden ser aplicables simplemente a causa de la adhesión de un nuevo Estado miembro .................................................85 13.4.1 Principio general ........................................................................................... 85
13.4.1.1 Causas de nulidad que son aplicables con independencia de la ampliación de la UE ..................................................................................85
13.4.1.2 Causas de nulidad debidas a la ampliación de la UE................................86 13.4.2 Efectos de una reivindicación de prioridad................................................... 87
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1 Introducción
1.1 Finalidad de las directrices
Las directrices explican cómo aplicará en la práctica el Servicio de Dibujos y Modelos de la OAMI los requisitos del Reglamento sobre los dibujos y modelos comunitarios1 (RDC), el Reglamento de ejecución del reglamento sobre los dibujos y modelos comunitarios2 (REDC), y el Reglamento de tasas3 (RTDC) desde la recepción de l a solicitud de di bujo o modelo comunitario registrado (DMC) hasta su registro y publicación. La Oficina no tiene competencia respecto de l os dibujos y modelos comunitarios no registrados.
Su finalidad es asegurar la coherencia de las resoluciones del Servicio de Dibujos y Modelos así como lograr una práctica uniforme en la tramitación de los expedientes. Las presentes directrices son un s imple conjunto de normas consolidadas que establecen la línea de comportamiento que la propia Oficina propone adoptar, lo cual significa que, en la medida en que dichas normas cumplan las disposiciones jurídicas de una autoridad superior, constituyen una limitación autoimpuesta sobre la Oficina, en el sentido de que esta debe cumplir las normas que ella misma ha establecido. Sin embargo, estas Directrices no pueden derogar el RDC, el REDC ni el RTDC, y es únicamente a l a luz de dichos Reglamentos que debe ev aluarse la capacidad del solicitante para presentar una solicitud de registro de un dibujo o modelo comunitario.
Las directrices están estructuradas de acuerdo con la secuencia del proceso de examen, donde cada punto representa una fase del procedimiento de registro desde la recepción de la solicitud hasta el registro y la publicación. Los principios generales (véase el apartado 1.2 infra) deberán tenerse en cuenta durante todo el proceso de examen.
1.2 Principios generales
1.2.1 Deber de motivación
Las resoluciones de la Oficina serán motivadas (artículo 62 del RDC). El razonamiento debe ser lógico y no debe mostrar incoherencias internas.
1Reglamento (CE) nº 6/2002 del Consejo, de 12 de di ciembre de 200 1, sobre los dibujos y modelos comunitarios), modificado por el Reglamento (CE) nº 1891/2006 del Consejo, de 18 de diciembre de 2006, por el que se modifican los Reglamentos (CE) nº 6/2002 y (CE) nº 40/94 para hacer efectiva la adhesión de la Comunidad Europea al Acta de Ginebra del Arreglo de La Haya relativo al Registro internacional de dibujos y modelos industriales. 2Reglamento (CE) nº 2245/2002 de la Comisión, de 21 de octubre de 2002, de ejecución del Reglamento (CE) nº 6/2002 del Consejo sobre los dibujos y modelos comunitarios, modificado por el Reglamento (CE) nº 876/2007 de la Comisión, de 24 de julio de 2007, que modifica el Reglamento (CE) nº 2245/2002 de ejecución del Reglamento (CE) nº 6/2002 del Consejo sobre los dibujos y modelos comunitarios a raíz de la adhesión de la Comunidad Europea al Acta de Ginebra del Arreglo de La Haya relativo al registro internacional de dibujos y modelos industriales. 3 Reglamento (CE) nº 2246/2002 de la Comisión, de 16 de diciembre de 2002 relativo a las tasas que se han de abonar a la Oficina de Armonización del Mercado Interior (marcas, dibujos y modelos) en concepto de registro de d ibujos y modelos comunitarios, modificado por el Reglamento (CE) nº 877/2007 de la Comisión, de 24 de julio de 2007, que modifica el Reglamento (CE) nº 2246/2002, relativo a las tasas que se han de abonar a la Oficina de Armonización del Mercado Interior (marcas, dibujos y modelos), a raíz de la adhesión de la Comunidad Europea al Acta de Ginebra del Arreglo de La Haya relativo al registro internacional de dibujos y modelos industriales.
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Sin embargo, no está obligada a motivar expresamente sus apreciaciones sobre el valor de c ada una de l as pruebas aportadas, en especial si considera que estas carecen de interés o pertinencia para la solución del litigio (véase, por analogía, la sentencia de 15/6/2000, en el asunto C-237/98 P, «Dorsch Consult Ingenieurgesellschaft mbH», apartado 51). Es suficiente que se refiera a los hechos y las consideraciones jurídicas que revisten una esencial importancia en el sistema de la resolución (sentencia de 12/11/2008, en el asunto T-7/04, «LIMONCELLO», apartado 81).
Para apreciar si la motivación de una decisión cumple dichos requisitos se debe tener en cuenta no solo el tenor literal de la misma, sino también su contexto, así como el conjunto de normas jurídicas que regulan la materia de que se trate (sentencia de 7/2/2007, en el asunto T-317/05, «GUITAR», apartado 57).
1.2.2 Derecho a ser oído
Las resoluciones de la Oficina solo podrán basarse en motivos o pruebas respecto de los cuales se haya brindado al solicitante la oportunidad de presentar observaciones (artículo 62, segunda frase, del RDC).
El derecho a ser oído se extiende a todos los elementos de hecho o de Derecho y a las pruebas que constituyen el fundamento de la resolución, aunque no se aplica a la posición final que la Oficina decide adoptar.
La obligación de que las resoluciones estén motivadas tiene dos objetivos: permitir que las partes interesadas conozcan la razón de las resoluciones que hayan sido tomadas, con el fin de permitirles defender sus derechos; y permitir que la siguiente instancia ejerza su poder de revisión de la legalidad de la resolución. Además […] la obligación de motivar las resoluciones es un requisito procesal imprescindible, que no tiene relación con que las motivaciones dadas sean correctas, ya que éste es un asunto de legalidad substancial de la resolución impugnada (véase sentencia de 27 de junio de 2013, T-608/11, “Instruments for writing II”, apartados 67y 68 y la jurisprudencia allí citada)
1.2.3 Cumplimiento de los plazos
Los solicitantes deben responder a las comunicaciones de la Oficina dentro de los plazos señalados en dichas comunicaciones.
Cualquier comunicación escrita o documento que no haya sido presentado dentro del plazo señalado por parte de la Oficina, se considerará fuera de plazo. Lo mismo se aplica a los materiales adicionales anexos a la “confirmation copy” de una comunicación que se envió dentro de plazo (normalmente por fax) si la “confirmation copy” llega fuera de plazo. Es irrelevante que dichos anexos hayan sido mencionados en la comunicación inicial (en relación a solicitudes enviadas por fax véase el apartado 2.7.2.3 infra)
La Oficina podrá declarar inadmisibles hechos o pruebas que el solicitante no hay a alegado a su debido tiempo (artículo 63, apartado 2, del RDC).
Para el cálculo de los plazos véase el artículo 56, del REDC.
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Las solicitudes de prórroga de un plazo por el solicitante deben presentarse antes del vencimiento de los mismos (artículo 57, apartado 1, del REDC).
Por regla general, se concederá la primera solicitud de prórroga de un plazo. No se concederán automáticamente nuevas prórrogas. Deberá motivarse cualquier otra solicitud de prórroga ante la Oficina. La solicitud de prórroga debe indicar los motivos por los que el solicitante no puede cumplir el plazo. Los obstáculos a los que se enfrentan los representantes de las partes no justifican una prórroga (véase por analogía el auto de 5/3/2009, en el asunto C-90/08 P, «CORPO LIVRE», apartados 20 a 23).
La prórroga no podrá ser superior a seis meses (artículo 57, apartado 1, del REDC) y se informará al solicitante sobre la misma.
Los solicitantes que incumplen los plazos corren el riesgo de que sus observaciones no se tengan en cuenta, lo cual puede dar lugar a la pérdida de derechos. En dicho caso, el solicitante podrá presentar una solicitud de restitutio in integrum (artículo 67 del RDC. Véanse, asimismo, las Directrices relativas a los procedimientos ante la Oficina de Armonización del Mercado Interior (Marcas, Dibujos y Modelos), Parte A, Sección 8, Restitutio in integrum).
1.2.4 Alcance del examen que lleva a cabo la Oficina
Al examinar una solicitud de un dibujo o modelo comunitario, la Oficina procederá al examen de oficio de los hechos (artículo 63, apartado 1, del RDC).
El proceso de examen se reduce al mínimo, es decir, principalmente a un examen de los requisitos formales. Sin embargo, la Oficina deberá examinar de oficio las causas de denegación de registro previstas en el artículo 47 del RDC:
a) si el objeto de la solicitud se corresponde con la definición de un dibujo o modelo que se establece en el artículo 3, letra a), del RDC; y
b) si el dibujo o modelo es contrario al orden público o a las buenas costumbres.
Si concurriere uno de estos dos motivos, se aplicará el procedimiento indicado en el apartado 4 infra.
La Oficina no examina otros requisitos de protección. Los dibujos o modelos comunitarios que hayan sido registrados contraviniendo los requisitos de protección establecidos en el artículo 25, apartado 1, letras b) a g), del RDC pueden ser objeto de anulación si la parte interesada presenta una solicitud de dec laración de nul idad (véanse las Directrices de examen de las solicitudes de nulidad de dibujos y modelos).
1.2.5 Facilidad de uso
Uno de l os principales objetivos del RDC es que el registro de dibujos o modelos comunitarios presente unos costes y dificultades mínimos para los solicitantes, de manera que puedan acceder fácilmente a dicho procedimiento las pequeñas y medianas empresas y los creadores particulares.
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A este efecto, se anima a los examinadores a que se pongan en c ontacto con el solicitante, o si se ha designado a un representante (véase el apartado 2.5 infra), con su representante por teléfono, para aclarar las cuestiones que deriven del examen de una solicitud de un dibujo o modelo comunitario, antes o después de que se envíe una carta oficial de irregularidad.
2 Presentación de una solicitud en la OAMI
2.1 Introducción
Existen dos formas de solicitar el registro de un dibujo o modelo comunitario: (i) directamente en la Oficina o en el servicio central de la propiedad industrial de un Estado miembro o, en los países del Benelux, en la Oficina de Propiedad Intelectual del Benelux (BOIP) (artículo 35 y siguientes. del RDC) o (ii) a través de un registro internacional presentado ante la Oficina Internacional de la Organización Mundial de la Propiedad Intelectual y que designe a la Unión Europea (artículo 106 bis y siguientes. del RDC).
Esta sección tratará sobre las presentaciones directas. El examen de l os requisitos formales relacionados con los registros internacionales que designan a la Unión Europea se explicará en el apartado 12 infra.
2.2 Formulario de solicitud
2.2.1 Distintos medios de presentación
Una solicitud de dibujo o modelo comunitario registrado puede presentarse directamente en la Oficina por fax, correo, entrega directa o po r presentación electrónica. También podrá presentarse en el servicio central de la propiedad industrial de un Estado miembro o, en los países del Benelux, en l a Oficina de Propiedad Intelectual del Benelux (BOIP)(artículo 35 del RDC).
2.2.2 Uso del formulario oficial
La Oficina ofrece un formulario (artículo 68, apartado 1, letra a), del REDC) que puede descargarse en el sitio web de la Oficina4. Se recomienda encarecidamente utilizar dicho formulario (artículo 68, apartado 6, del REDC) para facilitar la gestión de la solicitud y evitar errores, aunque su uso no es obligatorio.
Los solicitantes podrán utilizar formas de una estructura o formato similar, como los formularios generados por ordenador a partir de la información incluida en el formulario oficial.
4 https://oami.europa.eu/ohimportal/es/forms-and-filings
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2.2.3 Solicitudes enviadas por correo o entrega personal
Las solicitudes pueden enviarse a la Oficina por correo ordinario o servicios de mensajería privada a la siguiente dirección:
Oficina de Armonización del Mercado Interior Avenida de Europa, 4
E-03008 Alicante ESPAÑA
Las solicitudes también pueden entregarse en persona en la recepción de la Oficina de lunes a viernes, excepto fiestas oficiales, de las 8.30 a las 13.30 horas y de las 15.00 a las 17.00 horas.
La solicitud deberá estar firmada por el solicitante o por su representante. Se indicará el nombre del signatario y se especificará en qué capacidad actúa (véase el párrafo 6.1.3 Firma infra)
2.2.4 Presentación electrónica
La presentación electrónica, es un medio de presentación recomendado en la medida en que el sistema da orientaciones al solicitante, reduciendo de este modo el número de las posibles irregularidades y agilizando el proceso de examen.
Si la comunicación se presenta por vía electrónica a la Oficina, la mención del nombre del remitente equivale a su firma (véase el párrafo 6.1.3 Firma infra).
2.2.5 Fax
Las solicitudes deben enviarse por fax al siguiente número de fax: +34 96 513 1344.
Sin embargo, no se recomienda presentar una solicitud por fax porque la calidad de la representación del dibujo o modelo puede deteriorarse durante la transmisión o en la recepción por la Oficina.
Además, los solicitantes deben ser conscientes del hecho de que el tratamiento de su solicitud se retrasará hasta un mes (véase el apartado 2.7.2.3 infra).
2.3 Contenido de la solicitud
La solicitud debe cumplir todos los requisitos obligatorios establecidos en el artículo 1 («Contenido de la solicitud»), el artículo 3 («Clasificación e indicación de los productos»), el artículo 4 («Representación de los dibujos o modelos») y el artículo 6 del REDC («Tasas de solicitud»).
Se aplican requisitos adicionales cuando el solicitante selecciona una de las siguientes opciones: se presenta una solicitud múltiple (artículo 2 del REDC), se presentan muestras (artículo 5 del REDC), se reivindica una p rioridad o una prioridad de
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exposición (artículos 8 y 9 del REDC) o cuando el solicitante escoge ser, o debe ser, representado (artículo 77 del RDC).
2.4 Lengua de la solicitud
La solicitud podrá presentarse en cualquiera de las lenguas oficiales de l a Unión Europea (lengua de presentación) (artículo 98, apartado 1, del RDC; artículo 1, apartado 1, letra h), del REDC)5.
El solicitante deberá indicar una segunda lengua, la cual deberá ser una lengua de la Oficina, es decir, español (ES), alemán (DE), francés (FR), inglés (EN), o italiano (IT). La segunda lengua ha de ser distinta de la lengua de presentación.
Todas las comunicaciones escritas deben redactarse en l a lengua de p resentación, salvo si la primera lengua seleccionada no es una de las cinco lenguas de trabajo de la Oficina y el solicitante acepta recibir la comunicación en l a segunda lengua de l a solicitud. El consentimiento de uso de la segunda lengua se otorgará para cada solicitud individual de dibujo o modelo comunitario; no se podrá otorgar para todos los expedientes actuales o futuros.
Este régimen de lenguas se aplica a todo el procedimiento de solicitud y examen hasta su registro.
2.5 Representación del solicitante
2.5.1 Casos en que la representación es obligatoria
Cuando el solicitante no tenga su domicilio, sede social o establecimiento industrial o comercial efectivo en el territorio de la Unión Europea, deberá estar representado por un representante en todos los procedimientos ante la Oficina, salvo para la presentación de solicitudes (artículo 77, apartado 2, del RDC, artículo 10, apartado 3, letra a), del REDC).
Si no se cumple este requisito, se requerirá al solicitante que designe un representante en un plazo de dos meses. En el caso de que el solicitante haga caso omiso de la petición, la solicitud será denegada por considerarse inadmisible (artículo 77, apartado 2, del RDC; artículo 10, apartado 3, letra a), del REDC).
Al examinar si el solicitante tiene un es tablecimiento real y efectivo industrial o comercial en l a Unión Europea, la Oficina sigue las orientaciones del Tribunal de Justicia en la sentencia de 22 /11/978, en el asunto C-33/78, «Somafer SA»,
5 La Unión Europea tiene 24 lenguas oficiales y de t rabajo, incluido el irlandés. El irlandés consiguió el estatuto de lengua oficial de la UE el 1 de enero de 2007. Sin embargo, existe una derogación temporal para un per iodo renovable que s e amplía hasta el 31 de diciembre de 2016 durante el cual «las instituciones de la Unión Europea no estarán sujetas a la obligación de redactar todos los actos en irlandés y a publicarlos en este idioma en el Diario Oficial de la Unión Europea» (véase el Reglamento (CE) nº 920/2005, de 13 de junio de 2005 (DO L 156 de 18.6.2005, p. 3) y el Reglamento (UE) nº 1257/2010 del Consejo (DO L 343 de 29.12.2010, p. 5). Hasta ese momento, no será posible presentar una solicitud de dibujo o modelo comunitario registrado en irlandés. El croata se convirtió en lengua oficial el 1 de julio de 2013 (véase el apartado 13 infra).
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apartado 12 («el concepto de sucursal, agencia o cualquier otro establecimiento, supone un centro de operaciones, que se manifiesta de modo duradero hacia el exterior como la prolongación de una e mpresa principal, dotado de un a dirección y materialmente equipado para poder realizar negocios con terceros»). La prueba de que un solicitante tiene un establecimiento real y efectivo industrial o comercial en la Unión Europea puede consistir, entre otros, en estatutos, informes anuales, declaraciones escritas y otros documentos comerciales.
2.5.2 Personas que pueden representar
La representación de los solicitantes ante la Oficina solo podrá realizarse por un abogado o por un representante profesional que cumpla los requisitos establecidos en el artículo 78, apartado 1, del RDC.
Las personas físicas y jurídicas que tengan su domicilio o s u sede social o un establecimiento industrial o c omercial efectivo y serio en l a Unión Europea podrán actuar ante la Oficina a través de un empleado. Los empleados de las personas jurídicas también podrán representar a otra persona jurídica que no tenga una residencia ni un establecimiento industrial o comercial real y efectivo en la Unión Europea, siempre que ambas personas jurídicas estén económicamente vinculadas (artículo 77, apartado 3, del RDC). La Oficina podrá solicitar pruebas en este sentido.
Los empleados que actúan en nombre de personas físicas o jurídicas con arreglo al artículo 77, apartado 3, del RDC deberán presentar un poder firmado que se incluirá en los expedientes (artículo 62, apartado 2, del REDC).
2.6 Fecha de recepción, número de expediente y emisión de recibo
2.6.1 Solicitudes presentadas a través de las oficinas nacionales (Oficina de Propiedad Intelectual del Estado miembro u Oficina de Propiedad Intelectual del Benelux (BOIP))
Si se presenta una solicitud de dibujo o modelo comunitario en el servicio central de la propiedad industrial de un Estado miembro o en laOficina de Propiedad Intelectual del Benelux (BOIP), surtirá los mismos efectos que si se hubieran presentado ese mismo día en la Oficina, siempre que se reciba en la Oficina dentro del plazo de dos meses desde la fecha en que se presentó en la oficina nacional o, en su caso, en la Oficina de Propiedad Intelectual del Benelux (BOIP) (artículo 38, apartado 1, del RDC).
Si la solicitud de dibujo o modelo comunitario no llega a la Oficina dentro del plazo de dos meses, se considerará presentada en la fecha en que la Oficina la recibe (artículo 38, apartado 2, del RDC).
Si la solicitud de dibujo o modelo comunitario se recibe poco después de haber expirado este plazo de dos meses, el examinador comprobará si este plazo puede prorrogarse en virtud de una de las condiciones establecidas en el artículo 58, apartado 3, del REDC.
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2.6.2 Solicitudes recibidas directamente en la Oficina
Se considerará como fecha de recepción la fecha en que la solicitud llega a la Oficina. Esta fecha puede no coincidir con la «fecha de presentación» si no s e cumplen los requisitos para asignar dicha fecha (véase el apartado 3).
La Oficina está abierta para la recepción de solicitudes enviadas por correo o servicios de mensajería privada, de lunes a viernes, excepto fiestas oficiales. El Presidente de la Oficina especifica en una decisión anual los días en que la Oficina no está abierta para la recepción de documentos o en que el correo ordinario no se distribuye.
Las solicitudes enviadas por fax o mediante presentación electrónica se recibirán en la fecha en que el fax haya sido transmitido satisfactoriamente.
Si la solicitud se envía por correo o por fax, el solicitante no recibirá confirmación de la fecha de recibo ni del número de expediente hasta que haya sido recibida la primera comunicación por parte de un examinador (véase a continuación).
Respecto de las solicitudes de dibujos o modelos comunitarios presentadas por vía electrónica, el sistema emite un recibo de presentación automático de forma inmediata que aparece en la pantalla del ordenador desde el que se envía la solicitud. En principio, el solicitante deberá guardar o imprimir el recibo automático, ya que la Oficina no enviará un recibo adicional. Los recibos de l as solicitudes presentadas electrónicamente ya incluyen la fecha de p resentación y el número de expediente provisionales.
2.7 Registro o informe de examen
2.7.1 Registro
Si la solicitud de dibujo o modelo comunitario cumple todos los requisitos de registro, normalmente se registrará en el plazo de diez días laborables.
El registro de una s olicitud que cumpla todos los requisitos podrá, sin embargo, retrasarse si la relación de los productos a los que vaya a incorporarse o aplicarse el dibujo o modelo, no se hizo por referencia a la lista de productos incluida en la base de datos Eurolocarno (https://oami.europa.eu/ohimportal/es/eurolocarno ) En dicho caso, la indicación de los productos podrá enviarse a traducir a las lenguas oficiales de la Unión (véase el apartado 6.1.4.4 infra).
Una solicitud que cumple todos los requisitos de registro puede registrarse en dos días laborables si se cumplen las siguientes condiciones:
• la solicitud se presenta electrónicamente (presentación electrónica); • tanto la indicación de los productos como su clasificación se realiza utilizando el
sistema Eurolocarno (véase el apartado 6.1.4.4); • cuando se reivindica la prioridad, se incluyen documentos de prioridad con la
solicitud de presentación electrónica; • el titular y el representante, en su caso, están registrados en la base de datos de
la OAMI y se incluye la referencia al número de identificación interna de la Oficina;
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• las tasas deben adeudarse de una cuenta corriente con la Oficina; • no se han encontrado irregularidades en la solicitud.
2.7.2 Informe de examen y comunicación informal sobre las posibles irregularidades («informe de examen preliminar»)
Cuando se detecte una irregularidad en la solicitud, el examinador emitirá un informe de examen que resuma las irregularidades que se hayan detectado y concederá un plazo al solicitante, o al representante designado, para que las subsane.
Antes de env iar dicho informe de ex amen, el examinador podrá enviar una comunicación informal denominada «informe de examen preliminar», en la que se destacan algunas posibles irregularidades y que está destinada a acelerar el procedimiento de examen. Esta comunicación oficial informa al solicitante de que el procedimiento de ex amen está pendiente debido a al gunas de las siguientes circunstancias.
2.7.2.1 Reivindicaciones de prioridad y documentos de apoyo
Cuando la solicitud contenga una reivindicación de prioridad de una o más solicitudes anteriores sin presentar una copia certificada de la misma, el solicitante todavía podrá presentar una copia en el plazo de tres meses desde la fecha de recepción (artículo 42 del RDC; artículo 8, apartado 1, del REDC; véase el apartado 6.2.1.1 infra).
En dichas circunstancias, el examinador informará al solicitante de que el examen de la solicitud ha sido suspendido hasta que se presente la copia certificada de la solicitud anterior. El examen seguirá durante tres meses después de la fecha de presentación, excepto si se recibe con anterioridad una copia de las solicitudes anteriores, o una declaración de que la reivindicación de prioridad ha sido recibida.
2.7.2.2 Reivindicaciones de prioridad realizadas con posterioridad a la presentación
En los casos en que el solicitante declare en la solicitud su intención de reivindicar la prioridad de una o más solicitudes anteriores sin presentar detalles sobre las mismas, todavía podrá presentar, en el plazo de un m es desde la fecha de pr esentación, la declaración de pr ioridad, que indique la fecha y el país en q ue fue presentada la solicitud anterior (artículo 42 del RDC; artículo 8, apartado 2, del REDC; véase el apartado 6.2.1.1 infra).
En dichas circunstancias, el examinador informará al solicitante de que el examen de la solicitud ha s ido suspendido hasta que se presente la información que falta. El examen proseguirá un mes después de la fecha de presentación, excepto si se recibe con anterioridad una declaración de pr ioridad o una dec laración de que la reivindicación de prioridad ha sido retirada.
2.7.2.3 Solicitud presentada por fax
Si se presenta una solicitud por fax, el examinador informará al solicitante de que el examen proseguirá un mes después de la fecha de recepción del fax excepto si se
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recibe con anterioridad por correo, servicios de mensajería privada o entrega personal una copia de confirmación de la solicitud.
Este procedimiento intenta evitar situaciones en que el examen se realiza sobre la base de una reproducción del dibujo o modelo enviada por fax que no muestra todas sus características (como los colores) o cuya calidad no es óptima.
2.7.2.4 Pago de las tasas
Todas las tasas (es decir, las tasas de registro y publicación, así como las tasas adicionales en el caso de solicitudes múltiples) relacionadas con una solicitud deben abonarse en el momento en que se presente la solicitud en la Oficina (artículo 6 del REDC; véase el apartado 8 infra).
Falta de pago o pago no identificado
Cuando la solicitud no haya sido todavía vinculada al pago de la correspondiente tasa, el examinador informará al solicitante de que el examen continuará tan pronto como se identifique el pago y se relacione el mismo con la solicitud específica.
Si el solicitante no r esponde a l a comunicación de l a Oficina, y el pago sigue sin identificar, se enviará una carta de irregularidad.
Falta de fondos
Cuando el importe total de las tasas relativas a la solicitud no puede adeudarse de la cuenta corriente debido a fondos insuficientes, el examinador informará al solicitante de que el examen comenzará tan pronto como haya sido añadido el importe que faltaba.
Si el solicitante no responde a l a comunicación de la Oficina, y el pago sigue incompleto, se enviará una carta de irregularidad.
Para más información sobre el pago de las tasas, véase el apartado 8 infra.
2.7.2.5 Solicitudes múltiples y solicitud de pago aplazado
Si una s olicitud múltiple incluye una pe tición de aplazamiento respecto de algunos dibujos o modelos (véase el apartado 6.2.5 infra), el examinador enviará al solicitante un resumen de la solicitud que incluya una representación de la primera perspectiva de cada dibujo o modelo que se publicará sin dilaciones. Se requerirá al solicitante que confirme la exactitud de dicho resumen en el plazo de un mes. A falta de respuesta o instrucción en contrario por parte del solicitante, el examen continuará sobre la base de la información incluida en el expediente.
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3 Asignación de una fecha de presentación
La fecha en que se «presenta» un documento es la fecha de recepción por parte de la Oficina en lugar de la fecha en que fue enviado el documento (artículo 38, apartado 1, del RDC, artículo 7 del REDC).
Si la solicitud ha sido presentada en el servicio central de la propiedad industrial de un Estado miembro o en laOficina de Propiedad Intelectual del Benelux (BOIP), la fecha de presentación en dicha oficina será considerada la fecha de recepción por parte de la Oficina, excepto si la solicitud llega a la Oficina más de dos meses después de dicha fecha. En este caso, la fecha de presentación será la fecha de recepción de la solicitud por parte de la Oficina (artículo 38 del RDC).
De conformidad con el artículo 36, apartado 1, del RDC, la asignación de una fecha de presentación exige que la solicitud incluya, como mínimo:
(a) una solicitud de registro de un dibujo o modelo comunitario; (b) la información que identifica al solicitante; (c) una representación del dibujo o modelo adecuada para la reproducción, de
conformidad con el artículo 4, apartado 1, letras d) y e), del REDC o, en su caso, una muestra (artículo 10 del REDC).
El pago de l as tasas no es un r equisito para la asignación de un a fecha de presentación. Sin embargo, es un requisito para el registro de l a solicitud (véase el apartado 8 infra).
3.1 Solicitud de registro
Se considera presentada una solicitud de registro cuando el solicitante ha rellenado (al menos parcialmente) el formulario de solicitud que proporciona la Oficina o su propio formulario, o ha utilizado la presentación electrónica (véase el apartado 2.2 supra).
Cuando es evidente que el documento recibido por el solicitante no es una solicitud de un dibujo o modelo comunitario, sino una s olicitud de r egistro de una marca comunitaria, el examinador reenviará dicho documento al departamento competente de la Oficina y el examinador informará de ello al solicitante de inmediato.
3.2 Información que identifica al solicitante
La información que identifica al solicitante, a efectos de asignar una fecha de presentación, no tiene que cumplir todos los requisitos establecidos en el artículo 1, apartado 1, letra b), del REDC (véase el apartado 6.1.1). Bastará proporcionar la información relativa al nombre y apellidos de las personas físicas o de la razón social de las personas jurídicas, e indicar una dirección de notificación o cualquier otro medio para la comunicación de datos que permita contactar con el solicitante.
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3.3 Representación del dibujo o modelo adecuada para su reproducción
3.3.1 Requisitos generales
La representación de los dibujos y modelos consistirá en su reproducción gráfica y/o fotográfica en blanco y negro o en color (artículo 4, apartado 1, del REDC).
Con independencia del formulario que se utilice para presentar la solicitud (en papel, presentación electrónica o fax), el dibujo o modelo debe r eproducirse sobre fondo neutro y sin retoques a tinta o líquido corrector.
Su calidad permitirá distinguir claramente los pormenores de la cosa objeto de protección, así como reducir o ampliar cada una de las perspectivas a un tamaño que no exceda de 8 cm por 16 cm para su inscripción en el Registro de dibujos y modelos comunitarios y su publicación en el Boletín de dibujos y modelos comunitarios (artículo 4, apartado 1, letra e), del REDC).
El objeto de dicho requisito es permitir que los terceros identifiquen con exactitud todos los pormenores del dibujo o modelo comunitario para el que se solicita protección.
Se admiten los dibujos, fotografías (excepto diapositivas), las reproducciones informáticas o cualquier otra representación gráfica siempre que sean adecuadas para su reproducción, incluso en un certificado de registro en formato en papel. Por este motivo, no s e admiten simulaciones en 3D animadas por ordenador que generan movimiento en el dibujo o modelo. No se admiten CD-ROM ni otros soportes de datos.
3.3.2 Fondo neutro
El fondo de una perspectiva se considera neutro siempre que el dibujo o modelo que se muestra en l a misma se distinga claramente de s u entorno sin interferencias de ningún otro objeto, accesorio o decoración, cuya inclusión en la reproducción pudiera provocar dudas sobre la protección solicitada (resolución de 25/4/2012, R 2230/2011-3 – «Webcams», apartados 11 a 12).
En otras palabras, el requisito de un fondo neutro no exige ni un color «neutro» ni un fondo «vacío» (véase asimismo el apartado 5.2.6 infra). Resulta decisivo, en cambio, que el dibujo o modelo destaque claramente del fondo para que sea identificable (resolución de 25/1/2012, R 284/2011-3 – «Arcón para herramientas», apartado 13).
Se formulará una objeción contra las perspectivas, entre las siete que se permiten para representar un dibujo o modelo (artículo 4, apartado 2, del REDC), que no tengan un fondo neutro.
El examinador emitirá una carta de irregularidad y concederá al solicitante la posibilidad de subsanar las irregularidades en el plazo de dos meses para que:
• retire dichas perspectivas (que no formarán parte del dibujo o modelo comunitario); o
• presente nuevas perspectivas sobre un fondo neutro; o
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• modifique las perspectivas objetadas de tal modo que el dibujo o modelo quede aislado de su fondo.
La última opción utilizará identificadores como contornos o sombreados de color que aclaren las características del dibujo o modelo para el que se solicita la protección (véase el apartado 5.3 infra), como ocurre en la séptima perspectiva del RCD 2038216-0001 (cortesía de BMC S.r.l.):
Siempre que las irregularidades se subsanen en el plazo señalado por la Oficina, la fecha en que se subsanen las irregularidades determinará la fecha de presentación (artículo 10, apartado 2, del REDC).
Si no se subsanan las irregularidades dentro del plazo establecido por la Oficina, la solicitud no se tramitará como solicitud de dibujo o modelo comunitario. Se archivará el expediente mediante resolución del examinador que se notificará al solicitante. El examinador comunicará al Departamento Financiero que se reembolse al solicitante las tasas que hubiese abonado (artículo 10, apartado 2, del REDC).
3.3.3 Dibujos o modelos con retoques a tinta o líquido corrector
El dibujo o modelo no debe tener retoques a tinta o líquido corrector (artículo 4, apartado 1, letra e), del REDC).
Los examinadores no ven la versión en p apel de l a reproducción sino solo reproducciones escaneadas de la misma. Por lo tanto, solo cuando el uso de tinta o líquido corrector cree dudas respecto de s i la corrección visible es o no una característica ornamental que forme parte del dibujo o modelo las reproducciones corregidas se objetarán y denegarán a efectos de asignar una fecha de presentación.
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El solicitante podrá subsanar una irregularidad del mismo modo que se ha descrito en el apartado 3.3.2.
3.3.4 Calidad
El requisito de que el dibujo o modelo debe tener una calidad que permita distinguir claramente los pormenores de la cosa objeto de protección, a efectos de publicación, se aplica igualmente a todas las solicitudes, con independencia del medio de presentación.
Las solicitudes enviadas por fax y mediante presentación electrónica, plantean problemas específicos.
3.3.4.1 Fax
La transmisión por fax puede resultar inadecuada para las solicitudes de dibujos y modelos, porque puede distorsionar, volver borrosa o daña r de otro modo la reproducción. Cuando la solicitud se transmita por fax, se recomienda encarecidamente remitir una copia de confirmación lo antes posible, mediante correo ordinario, servicios de mensajería privada o entrega directa.
Si se presenta una solicitud por fax, el examinador esperará en todo caso un mes, a partir de la fecha de recepción del fax, para recibir la copia de confirmación antes de proseguir con la tramitación de la solicitud. Una vez que este periodo ha transcurrido, el examinador proseguirá con el examen de los documentos que obren en el expediente.
Pueden plantearse dos irregularidades provocadas por las transmisiones de fax no satisfactorias:
i) la reproducción de un dibujo o modelo tal como ha s ido transmitida por fax no tiene una calidad que permita distinguir claramente los pormenores de la cosa objeto de protección;
ii) la solicitud no está completa y/o es ilegible.
En lo referente a la cuestión de asignar una fecha de presentación, existen dos hipótesis diferenciadas.
La Oficina distingue una transmisión ilegible de una con calidad insuficiente tal como se indica a continuación. Cuando la comparación entre la transmisión inicial y la reproducción original permita extraer una conclusión sobre si estos documentos hacen referencia a la representación de un mismo dibujo o modelo, deberá considerarse que la transmisión inicial simplemente no tenía una calidad suficiente. Si dicha comparación no es en absoluto posible, se considerará que la transmisión inicial fue ilegible.
(i) la reproducción de un dibujo o modelo tal como ha s ido transmitida por fax no tiene una calidad que permita distinguir claramente los pormenores de la cosa objeto de protección.
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Se mantendrá la fecha de presentación original si el solicitante envía a iniciativa propia o en respuesta a una comunicación informal de la Oficina (véase el apartado 2.7.8 supra) la reproducción original del dibujo o modelo en el plazo de un mes después de la transmisión de fax, siempre que su calidad permita distinguir claramente todos los pormenores de la cosa objeto de protección (artículo 66, apartado 1, párrafo segundo, del REDC).
La copia de confirmación será el documento utilizado originalmente para la transmisión del fax. El examinador desestimará toda «copia de confirmación» que no sea idéntica al documento utilizado para la transmisión por fax. Este sería el caso, por ejemplo, si el solicitante hubiera presentado en s u confirmación perspectivas modificadas o adicionales del/de los dibujo(s) o modelo(s).
En caso de discrepancia entre el original y la copia anteriormente presentada por fax, solo se tendrá en cuenta la fecha de presentación del original.
Si no se recibe una reproducción original en el plazo de un mes después de recibir el fax, la Oficina enviará una notificación formal en la que requerirá al solicitante que presente la reproducción original en el plazo de dos meses.
Si se cumple con dicha solicitud dentro del plazo, la fecha de presentación será la fecha en que la Oficina recibe la reproducción original, siempre que su calidad permita distinguir claramente todos los pormenores de la cosa objeto de protección (artículo 66, apartado 1, párrafo tercero, del REDC).
Si no se subsanan las irregularidades dentro del plazo establecido por la Oficina en su notificación, la solicitud no se tramitará como solicitud de dibujo o modelo comunitario. Se archivará el expediente mediante resolución del examinador que se notificará al solicitante. El examinador comunicará al Departamento Financiero que se reembolse al solicitante las tasas que hubiese abonado (artículo 10, apartado 2, del REDC).
Si la Oficina recibe una representación de un dibujo o modelo, algunas de cuy as perspectivas presentan irregularidades debido a la transmisión por fax y si la copia de confirmación se ha recibido más de un mes después de la fecha de recepción del fax, el solicitante podrá elegir entre:
• obtener la fecha de recepción de la copia de confirmación como fecha de presentación; o
• mantener la fecha de recepción del fax como fecha de presentación, pero solo respecto de las perspectivas que no presentaron irregularidades; en dicho caso, las perspectivas con irregularidades se retirarán.
(ii) La solicitud no está completa y/o es ilegible.
En el caso en que el fax fuese incompleto o ilegible y si las partes que faltan o que están ilegibles afectan a la información que identifica al solicitante o a la representación del dibujo o modelo, la Oficina emitirá una notificación formal en la que se requerirá al solicitante que vuelva a enviar la solicitud por fax, correo o entrega personal en el plazo de dos meses. En el caso de que se cumpla esta solicitud dentro del plazo, la fecha de presentación será la fecha en que la Oficina recibe los documentos completos y legibles (artículo 66, apartado 2, del REDC).
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Si no se subsanan las irregularidades dentro del plazo establecido por la Oficina, la solicitud no se tramitará como solicitud de dibujo o modelo comunitario. Se archivará el expediente mediante resolución del examinador que se notificará al solicitante. El examinador comunicará al Departamento Financiero que se reembolse al solicitante las tasas que hubiese abonado (artículo 10, apartado 2, del REDC).
3.3.4.2 Presentación electrónica
La representación del dibujo o modelo deberá presentarse en forma de archivo adjunto al impreso electrónico de solicitud. Cada perspectiva debe p resentarse en forma de archivo adjunto a la solicitud electrónica y estará en formato .jpeg. El tamaño de cada archivo adjunto no puede superar los 5 MB (véase la Decisión nº EX-11-3 del Presidente de l a Oficina, de 18/4/2011, relativa a la comunicación electrónica con y desde la Oficina).
Es probable que los archivos adjuntos de baja resolución puedan ser objetados debido a su calidad insuficiente a efectos de reproducción y publicación cuando la ampliación de las perspectivas de un t amaño de 8 cm a 1 6 cm hace que estén borrosos los pormenores del dibujo o modelo.
Cuando esté claro que la presentación electrónica contenga irregularidades debido a problemas técnicos atribuibles a l a Oficina, tales como la carga parcial de todas las perspectivas, la Oficina permitirá que el solicitante vuelva a presentar las perspectivas que faltan (o todas las perspectivas) por carta, adjuntando una copia del recibo de la presentación electrónica. La fecha de presentación original mediante presentación electrónica se mantendrá, siempre que no exista ninguna otra irregularidad que afecta a la fecha de presentación.
3.3.5 Muestra
La reproducción gráfica o fotográfica del dibujo o modelo puede sustituirse por una muestra del dibujo o modelo siempre que se cumplan acumuladamente las siguientes condiciones:
• la solicitud se refiera a un dibujo (o sea un diseño bidimensional); • la solicitud contenga una petición de aplazamiento (artículo 36, apartado 1,
letra c), del RDC; artículo 5, apartado 1, del REDC).
En caso de s olicitud múltiple, la sustitución de la representación por una muestra puede efectuarse respecto de al gunos de los dibujos, a condición de que estos diseños sean dibujos (por tanto bidimensionales) y que hayan sido objeto de una petición de aplazamiento (véase el apartado 6.2.5 infra).
Una muestra es normalmente una muestra de una pieza de un material como tejido, papel de pared, raso, cuero, etc.
Las muestras no deben exceder las dimensiones de 26,2 cm x 17 cm, 50 gramos de peso o 3mm de grosor. Las muestras deberán poder almacenarse y desdoblarse (Art 5(2) REDC).
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Se deberán presentar cinco ejemplares de cada muestra; en el caso de una solicitud múltiple, se presentarán cinco ejemplares para cada uno de los dibujos o modelos. La solicitud y la(s) muestra(s) se presentarán juntas por correo o mediante entrega directa. No se asignará una fecha de presentación hasta que la solicitud y la(s) muestra(s) hayan llegado a la Oficina.
En caso de que el solicitante presente una muestra relacionada con una solicitud que no contenga una solicitud de aplazamiento, la muestra no es admisible. En dicho caso, la fecha de presentación se determinará en la fecha en que la Oficina recibe una reproducción gráfica o fotográfica adecuada del dibujo o m odelo, siempre que se subsane la irregularidad en el plazo de dos meses desde la recepción de l a notificación de la Oficina (artículo 10, apartado 2, del REDC).
4 Examen de los requisitos sustantivos
La Oficina realiza un examen de los requisitos de protección sustantivos que se limita a dos motivos de denegación absolutos.
La solicitud se denegará si el dibujo o modelo no se corresponde con la definición incluidas en el artículo 3, letra a), del RDC, o si es contrario al orden público o a las buenas costumbres (artículo 9 del RDC).
4.1 Conformidad con la definición de un dibujo o modelo
Se entiende por «dibujo o modelo» la apariencia de la totalidad o de una parte de un producto, que se derive de las características especiales de, en particular, línea, configuración, color, forma, textura o material del producto en sí o de s u ornamentación (artículo 3, letra a), del RDC).
Por «producto» se entenderá todo artículo industrial o artesanal, incluidas las piezas destinadas a su montaje en un producto complejo, los juegos o conjuntos de artículos, embalajes, estructuras, símbolos gráficos y caracteres tipográficos, con exclusión de los programas informáticos (artículo 3, letra b), del RDC).
No se examinará si el producto indicado se fabrica o se utiliza realmente, o si puede fabricarse o utilizarse de modo industrial o artesanal.
Si un di bujo o m odelo muestra la apariencia de l a totalidad o de parte de un «producto» se examinará a l a luz del propio dibujo o modelo, en la medida en que aclare la naturaleza del producto, su destino o su función, y de l a relación de l os productos a los que vaya a incorporarse o aplicarse el dibujo o modelo (artículo 36, apartado 2, del RDC).
Los siguientes ejemplos, aunque no son exhaustivos, ilustran la práctica de la Oficina.
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4.1.1 Proyectos, planos de casas u otros planos arquitectónicos y dibujos y modelos de interiores o paisajes
Los proyectos, planos de casas u otros planos arquitectónicos y dibujos o modelos de interiores o paisajes (por ejemplo, jardines) se considerarán «productos» a efectos de aplicar el artículo 7, apartado 1, del RDC y se admitirán solo con la correspondiente indicación de «productos de imprenta» de la clase 19-08 de la Clasificación de Locarno.
Se suscitará una objeción si el producto indicado en una solicitud de dibujo o modelo que está compuesto por un plano de una casa es «casas» de la clase 25-03 de la Clasificación de Lo carno, ya que el plano no muestra la apariencia del producto acabado como una casa.
4.1.2 Colores per se y combinaciones de colores
Por supuesto, un úni co color puede ser un el emento de un dibujo, aunque por sí mismo no c umpla con la definición de dibujo o modelo porque no compone la «apariencia de un producto».
Pueden aceptarse las combinaciones de c olores si del contorno de l a reproducción puede derivarse que se refieren a un producto como, por ejemplo, un logotipo o un símbolo gráfico de la clase 32 de la Clasificación de Locarno.
4.1.3 Iconos
Pueden registrarse los dibujos o modelos de pantallas de visualización e iconos y otros tipos de el ementos visibles de un p rograma informático (véase la clase 14-04 de la Clasificación de Locarno).
4.1.4 Meros elementos verbales
Las meras palabras o secuencias de letras (escritas en c aracteres estándares en blanco y negro) no cumplen la definición de dibujo o modelo porque no componen la apariencia de un producto.
Sin embargo, el uso de caracteres de fantasía y/o la inclusión de un elemento figurativo, hace que el dibujo o modelo sea susceptible de p rotección ya sea como logotipo o como símbolo gráfico de la clase 32 de la Clasificación de Locarno, o como representación ornamental de una pa rte de cualquier producto en que se aplicará el dibujo o modelo.
4.1.5 Música y sonidos
La música y los sonidos no componen per se la apariencia de un producto y, por tanto, no cumplen la definición de dibujo o modelo.
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Sin embargo, la representación gráfica de una composición musical, en forma de una cuerda musical, constituiría un dibujo o modelo si, se solicita, por ejemplo, para otros impresos de la clase 19-08 o símbolos gráficos de la clase 32 de la Clasificación de Locarno.
4.1.6 Fotografías
Una fotografía per se constituye la apariencia de un producto y, por lo tanto, cumple con la definición de di bujo o modelo, con independencia de l o que muestre. La indicación del producto puede ser papel de escribir, tarjetas de visita y de participación de la clase 19-01, otros impresos o fotografías de la clase 19-08 de la Clasificación de Locarno, o cualquier producto sobre el que se aplique.
4.1.7 Organismos vivos
Los organismos vivos no son «productos», es decir, artículos industriales o artesanales. Se denegará, en principio, un dibujo que muestre la apariencia de plantas, flores, frutas, etc., en su estado natural. Sin embargo, no s e planteará ninguna objeción si la indicación del producto especifica que dicho producto es artificial (véase en particular la clase 11-04 de la Clasificación de Locarno).
4.1.8 Material didáctico
El material didáctico como gráficos, cuadros, mapas, etc. puede ser reproducciones de productos de la clase 19-07 de la Clasificación de Locarno.
4.1.9 Conceptos
Se denegará la solicitud de dibujo o modelo si la reproducción es de un producto que es un mero ejemplo entre muchos de los que el solicitante desea proteger. No podrá concederse un derecho exclusivo a un dibujo o modelo «no específico» que es capaz de adoptar muchas apariencias distintas. Este es el caso cuando el objeto de la solicitud hace referencia, entre otros, a un concepto, a una invención o a un método de obtención del producto.
4.2 Orden público y buenas costumbres
4.2.1 Principios comunes
El concepto de orden público y buenas costumbres pueden variar de un país a otro. La medida restrictiva basada en el orden público y en las buenas costumbres podrá estar basada en una concepción que no sea compartida necesariamente por todos los Estados miembros (sentencia de 14/10/2004, en el asunto C-36/02, «Omega», apartados 33 y 37).
Dado el carácter unitario del dibujo o modelo comunitario registrado (artículo 1, apartado 3, del RDC), bastará que se considere contrario al orden público al menos en
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una parte de la Unión para que se deniegue este dibujo o modelo de conformidad con el artículo 9), del RDC (véase, por analogía, la sentencia de 20/9/2011, en el asunto T-232/10, «escudo soviético», apartados 37 y 62). Esta conclusión podrá estar apoyada por la legislación y la práctica administrativa de det erminados Estados miembros.
No es necesario que el uso del dibujo o modelo sea ilegal o esté prohibido. Sin embargo, la ilegalidad del uso del dibujo o modelo con arreglo a la legislación europea o nacional constituirá una sólida indicación de que el dibujo o modelo pueda ser denegado de conformidad con el artículo 9), del RDC.
4.2.2 Orden público
La protección del orden público podrá invocarse para denegar una solicitud de dibujo o modelo comunitario solo en caso de que exista una amenaza real y suficientemente grave que afecte a un interés fundamental de la sociedad (sentencia de 14/3/2000, en el asunto C-54/99, «Église de scientologie», apartado 17).
Los dibujos y modelos que describan o promuevan la violencia o la discriminación por razón de s exo, origen racial o ét nico, religión o convicciones, discapacidad, edad u orientación sexual serán denegados basándose en este motivo (artículo 10 del Tratado de Funcionamiento de la Unión Europea).
4.2.3 Buenas costumbres
La garantía de buenas costumbres puede invocarse para denegar una solicitud de dibujo o modelo comunitario si el dibujo o modelo se percibe como lo suficientemente insultante y ofensivo desde la perspectiva de una persona razonable con unos umbrales medios de sensibilidad y tolerancia (véase, por analogía, la sentencia de 9/3/2012, en el asunto T-417/10, «¡QUE BUENU YE! HIJOPUTA», apartado 21).
El mal gusto, al contrario de lo que ocurre con el carácter contrario a la moralidad, no es motivo de denegación.
4.3 Objeción
Si el examinador plantea una objeción respecto de uno u o tro de los dos motivos absolutos de denegación citados anteriormente, el solicitante tendrá la oportunidad de retirar o modificar la reproducción del dibujo o modelo o de presentar sus observaciones dentro del plazo de dos meses (artículo 47, apartado 2, del RDC, articulo 11 REDC ).
Si la objeción hace referencia al cumplimiento de la definición de un dibujo o modelo y si dicha objeción puede subsanarse mediante la modificación de la indicación de los productos a los que vaya a incorporarse o aplicarse el dibujo o modelo, el examinador propondrá dicha modificación en su comunicación al solicitante.
Cuando el solicitante opte por presentar una reproducción modificada del dibujo o modelo, dicha representación será admisible con la condición de que «se mantenga la identidad del dibujo o modelo» (artículo 11, apartado 2, del REDC).
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Por lo tanto, el mantenimiento de la forma modificada quedará limitado a los casos en que las características que se suprimen o no se reivindican sean tan insignificantes en función de su tamaño o importancia que es probable que pasen desapercibidas para el usuario informado.
Las características pueden suprimirse o no reivindicarse utilizando los identificadores que se mencionan en el apartado 5.3 infra.
Siempre que las irregularidades se subsanen en el plazo señalado por la Oficina, la fecha en que se subsanen las irregularidades determinará la fecha de presentación (artículo 10, apartado 2, del REDC).
En el caso de que el solicitante no subsane los motivos de denegación del registro dentro del plazo establecido, la Oficina denegará la solicitud. Si el motivo de denegación afecta solo a parte de los dibujos y modelos de una solicitud múltiple, la Oficina denegará la solicitud exclusivamente en la medida que corresponda a dichos dibujos y modelos (artículo 11, apartado 3, del REDC).
5 Requisitos adicionales relativos a la reproducción del dibujo o modelo
Se recuerda a los solicitantes que los requisitos relativos al formato de la reproducción del dibujo o modelo puede variar en función del modo en que se presentó la solicitud (en papel, presentación electrónica, uso de la muestra). Estos requisitos se establecen en los artículos 4 y 5 del REDC.
Las siguientes instrucciones complementan los requisitos relativos a la calidad de la reproducción y el fondo neutro (véase el apartado 3.3 supra).
Las instrucciones siguientes se aplican a todos los dibujos o modelos, con independencia del modo en que se presentó la solicitud.
Incluso si una reproducción del dibujo o modelo ha s ido sustituida por una muestra, con arreglo al artículo 5 del REDC (véase el apartado 3.3.5 supra), el solicitante deberá presentar una reproducción gráfica o fotográfica del dibujo o modelo a m ás tardar tres meses antes de que expire el periodo de apl azamiento de 30 meses (artículo 15, apartado 1, letra c), del REDC; véase el apartado 6.2.5.3 infra).
Cualquier irregularidad que se encuentre en una solicitud y que haga referencia a uno o a otro requisito contemplado en este apartado no debe i nfluir en la concesión de la fecha de presentación. Sin embargo, si no se subsanan las irregularidades dentro del plazo establecido por la Oficina en su informe de examen, la solicitud será denegada (artículo 46, apartado 3, del RDC). Si las irregularidades afectan solo a parte de los dibujos y modelos de una s olicitud múltiple, la Oficina denegará la solicitud exclusivamente en la medida que corresponda a dichos dibujos y modelos (artículo 11, apartado 3, del REDC).
Una vez que se conceda una fecha de presentación, la denegación de la solicitud no dará lugar al reembolso de las tasas abonadas por el solicitante (artículo 13 del REDC).
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5.1 Número de perspectivas
La finalidad de la representación gráfica es proporcionar las características del dibujo o modelo cuya protección se solicita. La representación gráfica debe ser autónoma, para determinar con claridad y precisión el objeto de la protección que el dibujo o modelo comunitario registrado confiere a su titular. Esta norma tiene en cuenta el requisito de seguridad jurídica.
Será responsabilidad del solicitante revelar lo más exhaustivamente posible las características de s u dibujo o m odelo. La O ficina no ex aminará si se exigirán perspectivas adicionales para mostrar la apariencia completa del dibujo o modelo, con las excepciones que se indican en los apartado 5.2.1 a 5.2.3.
Podrán presentarse un máximo de siete perspectivas distintas para representar el dibujo o modelo (artículo 4, apartado 2, del REDC). Las perspectivas pueden ser vistas de planta, de alzado, de sección, en perspectiva o desplegadas. Deberá presentarse únicamente una copia de cada perspectiva.
Una vista desplegada de la perspectiva en la que se muestren todos los componentes de un producto complejo que se muestran desmontados para explicar cómo pueden montarse, tal como se indica en el ejemplo siguiente (RCD 380969-0002, cortesía de Aygaz Anonim Sirketi, autor Zafer Dikmen).
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Las posiciones alternativas de las partes móviles y extraíbles de un dibujo o modelo pueden mostrarse en perspectivas separadas, tal como se indica en el ejemplo siguiente (RCD 588694-0012, cortesía de Fuj itsu Toshiba Mobile Communications, autor Hideki Hino).
El solicitante numerará cada perspectiva con cifras arábigas separadas por un punto, la primera de las cuales corresponderá a la del dibujo o modelo, y la segunda a la de la perspectiva. Por ejemplo, la 6ª perspectiva del segundo dibujo o modelo de una solicitud múltiple deberá numerarse del siguiente modo: 2.6.
Si se facilitan más de siete perspectivas, la Oficina podrá omitir a efectos de registro y publicación cualquiera de las suplementarias (resolución de 27/10/2009, R 571/2007- 3 – «Cuadros para bicicletas o motocicletas», apartado 13). La Oficina tomará las perspectivas en orden consecutivo tal como las hubiere numerado el solicitante (artículo 4, apartado 2, del REDC).
Si la reproducción incluye menos de siete perspectivas y las perspectivas no hayan sido numeradas, el examinador numerará las perspectivas según la secuencia facilitada en la solicitud.
El examinador no cambiará el orden ni la orientación de las perspectivas tal como aparecen en la solicitud.
5.2 Coherencia de las perspectivas
El examinador comprobará si las perspectivas se refieren al mismo dibujo o modelo, es decir, a la apariencia de un mismo producto o de sus partes.
Si las perspectivas son incoherentes y hacen referencia a más de un dibujo o modelo, se invitará al solicitante a retirar algunas perspectivas o a convertir la solicitud en una solicitud múltiple para distintos dibujos o modelos y abonar las correspondientes tasas.
Es responsabilidad del solicitante presentar una solicitud completa y correcta (incluyendo las representaciones del dibujo o modelo). Una vez que el dibujo o modelo haya sido registrado y publicado la Oficina no tiene la facultad para subsanar irregularidades relativas a la incongruencia de la perspectivas (resolución de 3/12/2013, R 1332/2013-3 – «Adapters», apartado 14 y ss.)
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La coherencia de las perspectivas puede s er especialmente difícil de valorar al examinar solicitudes de dibujos y modelos que se refieran a productos complejos, a detalles de productos y a juegos de artículos.
5.2.1 Productos complejos
Un producto complejo es un producto constituido por múltiples componentes reemplazables que permitan desmontar y volver a montar el producto (artículo 3, letra c), del RDC).
Los solicitantes deberán presentar, entre las siete perspectivas permitidas, al menos una que muestre el producto complejo en su forma montada. Véase el siguiente ejemplo (RCD 238092-0001, cortesía de Eglo Leuchten GmbH)
Cada uno de los componentes podría ser por sí mismo un «dibujo o modelo». Por lo tanto, si todas las perspectivas muestran componentes distintos, sin mostrar la relación entre ellos, el examinador podrá enviar al solicitante una carta de irregularidad, dándole dos opciones:
• el solicitante podrá convertir su solicitud en una solicitud múltiple combinando los dibujos o modelos separados para cada componente en cuestión y abonar las tasas correspondientes; o
• el solicitante podrá limitar su solicitud a un único dibujo o modelo, retirando las perspectivas que representen otros dibujos o modelos.
5.2.2 Detalles
Puede aplicarse el mismo razonamiento a los dibujos o modelos que se incorporarán a un producto complejo en que las perspectivas solo muestran detalles individuales que no pueden relacionarse con la apariencia de un producto en su totalidad.
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Cada uno de los detalles individuales del producto podría ser por sí mismo un «dibujo o modelo». Por lo tanto, si todas las perspectivas muestran características detalladas distintas, sin mostrar la relación entre ellas, el examinador podrá enviar al solicitante una carta de irregularidad, dándole dos opciones:
• el solicitante podrá convertir su solicitud en una solicitud múltiple combinando los dibujos o modelos separados para cada pormenor individual en c uestión y abonar las tasas correspondientes; o
• el solicitante podrá limitar su solicitud a un único dibujo o modelo, retirando las perspectivas que representen otros dibujos o modelos.
5.2.3 Juegos o conjuntos de artículos
Un juego de artículos es un grupo de productos del mismo tipo y que, por lo general, se considera un todo cuya utilización es indisociable. Véase el ejemplo de abajo (RCD 238092-0001, cortesía de Zaklady Porcelany Stolowej KAROLINA Sp. z o.o.)
La diferencia entre un producto complejo y un juego de artículos es que, a diferencia de lo que ocurre en un producto complejo, los artículos de un «juego de artículos» no están mecánicamente conectados.
Un juego de artículos puede s er un «producto» en s í mismo, en el sentido del artículo 3, del RDC. Puede representarse en una única solicitud de dibujo o modelo si los artículos que componen este juego están vinculados por una complementariedad estética y funcional y, en circunstancias normales, se venden juntos como un único producto, como un tablero de ajedrez y sus piezas o juegos de cuchillos, tenedores y cucharas.
Sin embargo, con la reproducción debe quedar clara la protección que se solicita para un dibujo o modelo que deriva de l a combinación de l os artículos que componen el juego.
Los solicitantes deberán presentar, entre las siete perspectivas permitidas, al menos una que muestre el juego de artículos en su totalidad.
De lo contrario, el examinador podrá enviar al solicitante una c arta de i rregularidad, concediéndole dos opciones:
• el solicitante podrá convertir su solicitud en una solicitud múltiple combinando los dibujos o modelos separados para cada artículo en cuestión y abonar las tasas correspondientes; o
• el solicitante podrá limitar su solicitud a un único dibujo o modelo, retirando las perspectivas que representen otros dibujos o modelos.
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5.2.4 Variaciones de un dibujo o modelo
Los juegos de productos no deben ser confundidos con las variaciones de un dibujo o modelo. Las diferentes materializaciones de un mismo concepto no pueden agruparse en una única solicitud porque cada una de ellas es un dibujo o modelo en sí misma, tal como se contempla en el siguiente ejemplo (RCD 1291652-0001; -0002; -0003; -0004, cortesía de TESCOMA s.r.o.).
Cuando, en una solicitud de un úni co dibujo o modelo comunitario registrado, las perspectivas hacen referencia a más de un dibujo o modelo, el examinador emitirá una carta de irregularidad concediéndole dos opciones al solicitante:
• el solicitante podrá convertir su solicitud en una solicitud múltiple combinando los dibujos o modelos separados y abonar las tasas correspondientes; o
• el solicitante podrá limitar su solicitud a un único dibujo o modelo, retirando las perspectivas que representen otros dibujos o modelos.
5.2.5 Colores
La reproducción del dibujo o modelo podrá presentarse tanto en blanco y negro (monocromo) como en color (artículo 4, apartado 1, del REDC).
Las reproducciones que combinan perspectivas en blanco y negro con perspectivas en color serán susceptibles de objeción debido a su falta de coherencia y la inseguridad jurídica que resulta para la protección que se solicita.
El mismo razonamiento se aplica cuando las mismas características de un dibujo o modelo se representan en distintos colores en las diversas perspectivas. Dicha incoherencia ilustra el hecho de que la solicitud hace referencia a más de un dibujo o modelo (resoluciones de 31 /3/2005, R 965/2004-3 – «Cinta de medir», apartados 18-20; y de 12/11/2009, R 1583/2007-3 – «Bekleidung», apartados 9-10).
Por lo tanto, se invitará al solicitante a retirar algunas de las perspectivas en color para mantener la coherencia entre las restantes, o convertir la solicitud en una solicitud múltiple, y abonar las correspondientes tasas.
Sin embargo, como excepción al principio anterior, las mismas características de un dibujo o modelo podrán ser representadas en distintos colores en las diversas perspectivas si el solicitante presenta pruebas de que el cambio de colores en distintos
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momentos, mientras que el producto está en uso, es una de l as características relevantes del dibujo o modelo, tal como se indica en el ejemplo siguiente (RCD 283817-0001, cortesía de ASEM Industrieberatung und Vermittlung).
Cuando la reproducción está en color, el registro y la publicación también estará en color (artículo 14, apartado 2, letra c), del REDC).
5.2.6 Elementos externos al dibujo o modelo
Las perspectivas podrán incluir elementos externos y ajenos al dibujo o modelo siempre que su inclusión no ponga en entredicho la protección solicitada y sirva únicamente para fines ilustrativos (véase el apartado 3.3.2 supra).
Véase, por ejemplo, los dos DMC siguientes, nº 210166-0003 (cortesía de Karl Storz GmbH & Co. KG) y nº 2068693-0002 (cortesía deTenzi Sp. z o.o.) en los cuales la inclusión de una mano o de edificios y vegetación en algunas de las perspectivas sirve para aclarar cómo se utilizará el producto en que se incorpora el dibujo o modelo o el contexto en que se utilizará:
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5.3 Uso de id entificadores para excluir la prot ección a determinadas características
A diferencia de lo indicado en el artículo 37 del RMC, ni el RDC ni el REDC establecen normas que hagan posible incluir en la solicitud una declaración de que el solicitante renuncia a cualquier derecho exclusivo sobre una o más características que muestran las perspectivas.
El uso de una descripción, en el sentido del artículo 36, apartado 3, letra a), del RDC, no es adecuado en este sentido ya que la descripción «no a fectará al ámbito de protección del dibujo o modelo como tal», con arreglo a lo dispuesto en el artículo 36, apartado 6, del RDC. Asimismo, únicamente se publicará una indicación de que se ha presentado una descripción, no la propia descripción (artículo 14, apartado 2, letra d), del REDC).
Las renuncias, por lo tanto, deben resultar de la reproducción del propio dibujo o modelo.
En una s olicitud de registro de un dibujo o modelo comunitario se permiten los siguientes identificadores:
5.3.1 Líneas discontinuas
Pueden utilizarse líneas discontinuas en una perspectiva bien para indicar los elementos para los que no se solicita protección (por ejemplo, se renuncia a la forma de una ornamentación aplicada en la superficie de un determinado producto) o indicar partes del dibujo o modelo que no son visibles en una de terminada perspectiva, es decir, líneas invisibles.
RCD 30606-0005, cortesía de Nokia Corporation (autor: Petteri Kolinen)
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5.3.2 Delimitaciones
Las delimitaciones pueden utilizarse para rodear características del dibujo o m odelo para el que se solicita protección, considerándose que el resto de partes tienen un fin puramente ilustrativo, es decir, para mostrar el entorno en que están colocadas las características reivindicadas.
RCD 164611-0004, cortesía de Valio Oy (autor: Aki Liukko)
RCD 2038216-0001 cortesía de BMC S.r.l.
5.3.3 Sombreado en color y difuminación
El sombreado en color y la difuminación pueden utilizarse para excluir la protección para una serie de características y, por lo tanto, destacar las características reivindicadas.
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RCD 244520-0002, cortesía de Nokian Tyres plc
RCD 222120-0002, cortesía de Altia Plc
RCD 220405-0003, cortesía de KUBOTA CORPORATION (autor:
Yoshitaka Higashikawa)
5.3.4 Separaciones
Podrán utilizarse las separaciones para indicar que, a modo de ejemplo, no se reivindica la longitud exacta del dibujo o modelo (longitud indeterminada).
RCD 1868753-0001, cortesía de Viskadalens Produktion AB (autor: Johan Larsson)
5.4 Texto explicativo, expresiones o símbolos
Las perspectivas no podrán mostrar textos explicativos, expresiones ni símbolos salvo la indicación «arriba» o el nombre o la dirección del solicitante (artículo 4, apartado 1, letra c), del REDC).
Si las palabras, letras, números y símbolos (como las flechas) claramente no forman parte del dibujo o modelo, el examinador podrá cortarlos de las perspectivas utilizando una de las herramientas informáticas específicas que están disponibles. Si por motivos técnicos el examinador no puede recortarlas, se requerirá al solicitante que envíe perspectivas claras o retire las que contienen irregularidades.
En los casos en que las palabras, letras, números, etc., forman parte del dibujo o modelo (símbolo gráfico), el dibujo o modelo será admisible.
Los elementos verbales incluidos en la reproducción que forman parte del dibujo o modelo se teclearán y se introducirán en el expediente. Cuando se muestren varios elementos verbales, el examinador únicamente tendrá en cuenta el más destacado.
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Las indicaciones como «lateral», «vista frontal», etc. se cortarán a efectos de publicación. Si el solicitante considera que estas indicaciones son relevantes, podrá desear incluirlas en la casilla «Descripción» en el momento de la presentación. No se permitirán modificaciones adicionales o la adición de una descripción.
5.5 Modificar y complementar las perspectivas
Por principio, la representación no podrá ser modificada después de que haya sido presentada la solicitud. No se admitirán, por tanto, la presentación de perspectivas adicionales o la retirada de algunas de ellas (artículo 12, apartado 2, del REDC) salvo que la Oficina lo permita o lo exija expresamente.
En particular, las perspectivas que se presentaron inicialmente no podrán ser sustituidas por otras de mejor calidad. Las representaciones examinadas y publicadas serán aquellas que el solicitante ha facilitado en su solicitud original.
La presentación de perspectivas modificadas o adicionales deberá realizarse electrónicamente a través de la página web de la OAMI (no por correo electrónico) por correo o por fax (sin embargo, no se recomienda este último; véase el apartado 2.2.5 supra).
5.6 Requisitos específicos
5.6.1 Patrones de superficie repetitiva
Cuando la solicitud haga referencia a un dibujo o modelo que está compuesto por un patrón de s uperficie repetitiva, la reproducción del dibujo o modelo debe mostrar el patrón completo y una porción suficiente de la superficie repetitiva (artículo 4, apartado 3, del REDC) para mostrar cómo este patrón se multiplica hasta el infinito.
Si la solicitud no contiene una descripción que aclare que el dibujo o modelo está compuesto por un patrón de superficie repetitiva, la Oficina asumirá que este no es el caso y no solicitará una porción suficiente de la superficie repetitiva.
Si las perspectivas adicionales representan el patrón aplicado a uno o más productos específicos a efectos ilustrativos, el solicitante debe asegurarse de que no se reivindica la forma de dichos productos como parte del dibujo o modelo, utilizando el método contemplado en el apartado 5.3 supra.
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RCD 002321232-0002, cortesía de Textiles Visatex SL
5.6.2 Caracteres tipográficos
Si la solicitud se refiere a un dibujo o modelo que consten de un carácter tipográfico, la representación del dibujo o modelo consistirá en la composición de todas las letras del alfabeto, en mayúsculas y minúsculas, y todas las cifras arábigas, así como un texto de cinco líneas producido en dicho carácter tipográfico, todo en el tamaño de fuente 16 (artículo 4, apartado 4, del REDC).
Si la solicitud no incluye un texto de cinco líneas utilizando los caracteres tipográficos de que se trate (artículo 4, apartado 4, del REDC), se requerirá al solicitante presentar dicho texto o aceptar un cambio en la indicación de los productos a «conjunto de caracteres» de la clase de Locarno 18.03.
6 Elementos adicionales que una solicitud debe o puede incluir
6.1 Requisitos obligatorios
Además de las condiciones para la concesión de una fecha de presentación (véase el apartado 3 supra), la solicitud deberá identificar adecuadamente el solicitante y, en su caso, a su representante (artículo 1, letras b) y e), del REDC), especificar las dos lenguas de la solicitud (artículo 1, letra h), del REDC), contener una firma (artículo 1, letra i), del REDC) e indicar los productos a los que vaya a incorporarse o aplicarse el dibujo o modelo (artículo 1, letra d), del REDC).
Incluso después de que haya sido concedida una fecha de p resentación, el examinador planteará una objeción si se detecta una irregularidad respecto de cualquiera de los requisitos citados anteriormente durante el examen de una solicitud de dibujo o modelo comunitario (artículo 10, apartado 3, letra a), del REDC).
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6.1.1 Identificación del solicitante y de su representante
De conformidad con el artículo 1, letra b), del REDC, se planteará una objeción a una solicitud si no contiene la siguiente información relativa al solicitante: su nombre, dirección y nacionalidad, y si es una persona jurídica en el Estado donde tiene su domicilio o s u sede o establecimiento. Cuando la Oficina asigne un número de identificación al solicitante, bastará con mencionarlo junto a su nombre.
Cuando la solicitud se presente en no mbre de más de un s olicitante, se aplicará el mismo requisito a cada uno de ellos.
Las personas físicas se designarán por su nombre y apellidos. Las personas jurídicas se designarán mediante su denominación oficial y se deberá indicar el Estado por cuya legislación se rijan.
Si el solicitante no tiene representante, se recomienda encarecidamente que se proporcione una indicación de los números de teléfonos y de fax, así como información sobre otros medios de comunicación, como los correos electrónicos.
En principio, no se mencionará más de una dirección por solicitante; cuando se indiquen varias direcciones, únicamente se tomará en consideración la primera, a no ser que el solicitante designe la otra como dirección para notificaciones.
En caso de pluralidad de solicitantes, la Oficina enviará sus comunicaciones al solicitante que se mencione en primer lugar en la solicitud.
Si el solicitante ha designado un representante, la solicitud deberá indicar el nombre de dicho representante y la dirección de s u domicilio profesional. Cuando la Oficina asigne un número de identificación al representante designado, bastará con mencionarlo junto a su nombre.
Si el representante dispone de más de un domicilio social o siendo varios los representantes son distintos los domicilios sociales, debe indicarse en la solicitud cuál se utilizará como dirección de correspondencia. De lo contrario, se tomará como dirección de correspondencia la primera dirección citada.
En caso de pluralidad de solicitantes, la solicitud podrá designar un representante para que sea un representante común para todos los solicitantes.
6.1.2 Especificación de las lenguas
La solicitud podrá presentarse en cualquiera de las lenguas oficiales de l a Unión Europea (lengua de presentación) (artículo 98, apartado 1, del RDC, véase el apartado 2.4). La lengua utilizada en el formulario de solicitud no afecta a la lengua de la solicitud, sino que la que es decisiva es la lengua del contenido que facilite el solicitante. La lengua de presentación será la primera lengua de la solicitud.
El solicitante deberá indicar una segunda lengua, que deberá ser una l engua de l a Oficina, es decir, español (ES), alemán (DE), francés (FR), inglés (EN), o italiano (IT).
La segunda lengua ha de ser distinta de la lengua de presentación.
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Los códigos ISO de dos letras (códigos establecidos para identificar las lenguas por la Organización Internacional de Normalización) podrán utilizarse en la casilla del formulario de solicitud.
6.1.3 Firma
La solicitud debe estar firmada por el solicitante o por su representante (artículo 1, letra i), del REDC). Cuando exista más de un solicitante o representante, bastará con la firma de uno de ellos.
Si la solicitud se presenta electrónicamente, bastará con indicar el nombre del signatario y se especificará en qué capacidad actúa. Si la solicitud se presenta por fax, se considerarán válidas las firmas facsímiles.
En el caso de los representantes, el nombre del bufete de abogados es aceptable como firma.
6.1.4 Indicación de los productos
6.1.4.1 Principios generales
De conformidad con el artículo 36, apartado 2, del RDC, una solicitud de di bujo o modelo comunitario deberá indicar los productos a los que vaya a i ncorporarse o aplicarse el dibujo o modelo. De conformidad asimismo con el artículo 1, apartado 1, letra d), y el artículo 3, apartado 3, del REDC, la indicación de los productos deberá formularse de modo que indique claramente el tipo de productos y haga posible que cada uno de el los se clasifique en una sola clase de l a clasificación del Arreglo de Locarno, preferentemente utilizando los términos de la lista de productos de dicha clasificación, o en la base de datos Eurolocarno (véase infra).
La indicación de los productos o la clasificación no afectan al alcance de la protección del dibujo o m odelo comunitario como tal (artículo 36, apartado 6, del RDC). La clasificación servirá exclusivamente a efectos administrativos, en particular para permitir a terceros que realicen búsquedas en las bases de datos de dibujos y modelos comunitarios registrados (artículo 3, apartado 2, del REDC).
Los solicitantes no tienen que clasificar los productos a los que vaya a incorporarse o aplicarse el dibujo o modelo, aunque esto es altamente recomendable para agilizar el procedimiento de registro (véase el apartado 6.2.3).
Las consideraciones que siguen se refieren exclusivamente a solicitudes de dibujo o modelo individuales. Para lo que concierne la solicitudes múltiples, se aplica el requisito de «unidad de clase»( véase párrafo 7.2.3 infra) 6.1.4.2 Las clasificaciones de Locarno y de Eurolocarno
La Clasificación de Lo carno es una c lasificación internacional para los dibujos y modelos industriales. Existe en dos lenguas oficiales, a saber, el inglés y el francés. Su contenido y estructura fueron adoptados y modificados por el Comité de Expertos de los países parte en eldel Arreglo de Locarno. La clasificación está administrada por la Organización Mundial de la Propiedad Intelectual (OMPI). La edición vigente, la décima, incluye 32 clases y 219 subclases.
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Eurolocarno es la herramienta de clasificación de los dibujos y modelos de la Oficina. Está basada en la Clasificación de Locarno, con la que comparte estructura (es decir, las mismas clases y subclases). Contiene la lista alfabética de p roductos de l a Clasificación de Locarno y se complementa con un gran número de términos de productos adicionales. Eurolocarno está disponible en el sitio web de la OAMI en todas las lenguas oficiales de la Unión.
A fin de ac elerar y simplificar el procedimiento de r egistro, se recomienda encarecidamente que se indiquen los productos utilizando los términos de la base de datos Eurolocarno.
El uso de los términos incluidos en la base de datos Eurolocarno obvia la necesidad de traducciones y, por tanto, evita retrasos en el procedimiento de registro. El uso de estos términos de productos cuando sea posible mejorará la transparencia y las posibilidades de búsqueda de las bases de datos de dibujos y modelos comunitarios registrados.
6.1.4.3 Cómo indicar los productos
En la solicitud podrá invocarse más de un producto.
Cuando se indica más de un producto en la solicitud, los productos no tienen que pertenecer a la misma clase de la Clasificación de Locarno, a menos que se combinen varios dibujos o modelos en una s olicitud múltiple (artículo 37, apartado 1, del RDC; artículo 2, apartado 2, del REDC; véase el apartado 7.2.3).
Cada clase y subclase de la Clasificación de Locarno y de Eurolocarno tiene un «título». Los títulos de clase y subclase dan una indicación general de los ámbitos a los que pertenecen los productos.
En cualquier caso, deberán indicarse los productos de tal modo que permita la clasificación tanto en l a correspondiente clase y subclase de l a Clasificación de Locarno (artículo 1, apartado 2, letra c), del REDC).
No se excluye por sí mismo el uso de los términos incluidos en el título de una determinada clase de l a Clasificación de Loc arno, aunque no s e recomienda. Los solicitantes no escogerán términos genéricos mencionados en el título de la correspondiente clase (por ejemplo, «prendas de vestir» de la clase 02-02) sino que, en su lugar, seleccionarán los términos incluidos en el título de la subclase (por ejemplo, «prendas» de la subclase 02-02) o términos más específicos de entre los contemplados en las subclases de la clase en cuestión (por ejemplo, «chaquetas» de la subclase 02-02).
Cuando la indicación del producto no permita la clasificación en una subclase, el examinador determinará la correspondiente subclase mediante referencia al producto mencionado en la reproducción gráfica (véase el apartado 6.2.3.1). Por ejemplo, cuando la solicitud contenga como indicación de producto el término «mobiliario» de la clase 6 de la Clasificación de Locarno, el examinador asignará una subclase teniendo en cuenta el propio dibujo o modelo en la medida en que quede clara la naturaleza del producto, su destino o su función. Si el dibujo o modelo muestra la apariencia de una cama, el examinador asignará la subclase 06-02 a la indicación genérica «mobiliario».
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El uso de adjetivos en indicaciones de pr oducto no queda excluido por sí mismo, incluso si dichos adjetivos no forman parte de la lista alfabética de productos de la Clasificación de Locarno o de Eurolocarno (por ejemplo, «herramientas de perforación eléctricas» de la subclase 08-01, o «pantalones de algodón» de la subclase 02-02). Sin embargo, si es necesaria la traducción de un adjetivo en todas las lenguas de la UE esto puede provocar retrasos en la tramitación de la solicitud.
6.1.4.4 Cambio de indicación efectuado de oficio
Términos de productos no incluidos en la lista de la Clasificación de Locarno o Eurolocarno
Cuando un solicitante utiliza términos que no están en Eurolocarno, el examinador sustituirá de oficio, en los casos sencillos, el texto utilizado por el solicitante por un término equivalente o m ás general incluido en l a Clasificación de Locarno o Eurolocarno. La finalidad de ello es evitar tener que traducir los términos en todas las lenguas de la UE, lo cual provocaría retrasos en la tramitación de la solicitud.
Por ejemplo, cuando un solicitante elige el término «zapatillas para correr» (un término que no se incluye en la lista Eurolocarno) para indicar los productos a los que vaya a incorporarse el dibujo o modelo, el examinador cambiará esta indicación para «calzado» (que es el título de la subclase 02-04) o «zapatos» (que están incluidos en la subclase 02-04).
Incluso cuando la indicación del producto no afecta al alcance de la protección de un dibujo o modelo comunitario como tal, el examinador no sustituirá las palabras del solicitante por términos más específicos.
Productos y sus partes; conjuntos o juegos
Cuando un dibujo o modelo reproduce la apariencia de una parte de un producto y dicho producto en su conjunto está indicado en la solicitud (por ejemplo, una solicitud de un dibujo o modelo de un mango de cuchillo especifica que los productos en que vaya a incorporarse el dibujo o modelo son «cuchillos» de la subclase 08-03), el examinador sustituirá dicha indicación de producto por la indicación «Producto(s) X (parte de -)», siempre que la parte de que se trate y el producto en su conjunto pertenezcan a la misma clase de la Clasificación de Locarno.
Cuando un dibujo o modelo represente un conjunto de productos, y estos productos estén indicados en la solicitud (por ejemplo, una solicitud del dibujo o modelo de un vajilla de platos especifica que los productos en que vaya a incorporarse dicho dibujo o modelo son «platos» de la subclase 07-01), el examinador sustituirá dicha indicación por «Producto(s) X (conjunto de -)».
Ornamentación
El mismo razonamiento es aplicable si el dibujo o modelo reproduce ornamentaciones para un determinado producto y dicho producto en su totalidad está indicado en la solicitud. El examinador sustituirá dicha indicación de producto por la indicación
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«Producto(s) X (Ornamentación para -)». El producto se clasificará, por tanto, en l a clase 32-00 de la Clasificación de Locarno.
Asimismo, si la indicación del producto es «Ornamentación» y el dibujo o modelo no se limita a reproducir dicha ornamentación sino que también muestra el producto en que vaya a aplicarse la ornamentación, o parte de dicho producto, sin que se renuncie a sus contornos, dicho producto se añadirá a la indicación del producto, y la clasificación se modificará como corresponda.
Las listas de productos que combinen la «Ornamentación» con otros productos que pertenecen a distintas clases de la Clasificación de Locarno darán lugar a una objeción cuando se combinen varios dibujos o modelos en una solicitud múltiple (véase el apartado 7.2.3.).
Notificación del cambio de indicación efectuado de oficio
Siempre que no ex istan irregularidades, el examinador registrará el(los) dibujo(s) o modelo(s) comunitario(s) y notificará al solicitante el cambio de la indicación del producto efectuado de oficio.
Si el solicitante se opone a dicho cambio de oficio, podrá solicitar la corrección de la correspondiente inscripción en el Registro (véase el apartado 11.1.) y que se mantengan los términos originales utilizados en l a solicitud, siempre que no existan problemas relacionados con la claridad y la precisión de di chos términos o de su clasificación (artículo 20 del REDC; véase la resolución de 5/7/2007, R 1421-2006-3, «Cajas registradoras»). En este caso, sin embargo, se informará a los solicitantes de que la traducción de los términos originales a las lenguas oficiales de la Unión puede retrasar el registro del dibujo o modelo comunitario.
6.1.5 Listas de productos largas
En la solicitud podrá indicarse más de un producto.
Sin embargo, para garantizar que se pueden seguir realizando búsquedas en e l Registro de dibujos y modelos comunitarios y ahorrar costes en la traducción, si una solicitud indica más de cinco productos diferentes que pertenecen a la misma subclase de la Clasificación de Locarno, el examinador sugerirá sustituir la indicación de productos por el título de la subclase en cuestión.
Por ejemplo, supongamos que una solicitud incluye la siguiente indicación de producto: Dispositivos de cierre o bloqueo, Llaves de automóviles, Tiras interlock antirrobo para puertas, Postes antirrobo para motocicletas, Candados (parte de -), Encastres de cerraduras, Pestillos, Esposas, Armazones de bolsos, Picaportes, Pestillos de cerradura, Dispositivos de cierre para puertas y ventanas, Dispositivos eléctricos para abrir puertas, Cerrojos de puertas, Cerraduras, Cierres para monederos y bolsos, Pernos de cabeza plana [cerraduras], Candados, Dispositivos de cierre, Cierres para artículos de cuero, Cierres para puertas, Fallebas para ventanas o puertas, Pestillos para persianas venecianas, Llaves para contactos eléctricos, Cadenas antirrobo para bicicletas, Cerraduras de alta seguridad, Llaves, Sujeciones para cajas, Frenos de puertas, Cerraduras de tambor, Cerraduras de puerta de vehículos, Cinchas para puertas de carga de camión, Candados de seguridad para
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bicicletas, Cierres para pitilleras, Tensores de contraventanas, Cepos para ruedas, Esposas, Cerraduras (partes de -).
Dado que todos estos productos están clasificados en la misma subclase de la Clasificación de Locarno, el examinador propondrá la sustitución de esta lista por el título de la subclase 08-07, es decir, «Dispositivos de cerrojo o de cierre».
En los casos en que la indicación del producto contenga más de cinco productos que no pertenecen a l a misma subclase de la Clasificación de Locarno, el examinador sugerirá al solicitante que limite el número de productos a cinco y escoja los productos que correspondan.
Si, en el plazo indicado en la comunicación del examinador, el solicitante expresa su deseo de mantener la lista original de productos, el examinador procederá sobre la base de dicha lista.
Si el solicitante no responde dentro de plazo o acepta expresamente la propuesta del examinador, el examen continuará sobre la base de la indicación del producto, tal como ha propuesto el examinador.
6.1.6 Objeciones a las indicaciones del producto
Si el examinador plantea una ob jeción, se concederá al solicitante dos meses para presentar sus observaciones y subsanar las irregularidades detectadas (artículo 10, apartado 3, del REDC).
El examinador puede invitar al solicitante a que especifique la naturaleza y el destino de los productos de tal modo que permita una correcta clasificación o puede sugerir términos de productos de Eurolocarno a fin de ayudar al solicitante.
En caso de no subsanarse dicha irregularidad dentro del plazo, se desestimará la solicitud (artículo 10, apartado 4, del REDC).
6.1.6.1 Sin indicación del producto
Se formulará una objeción si la solicitud no proporciona una relación de los productos de que se trate (artículo 36, apartado 2, del RDC). Sin embargo, si la indicación puede encontrarse en la descripción o en el documento de prioridad, el examinador registrará dicha indicación como la indicación del producto (resolución de 21/3/2011, R 2432/2010-3, «Kylkropp för elektronikbärare», apartado 14).
6.1.6.2 Indicación del producto insuficiente
El examinador también formulará una objeción a la indicación del producto si no es posible que cada producto esté clasificado en una s ola clase y subclase de l a clasificación de Locarno (artículo 3, apartado 3, del REDC).
Se dará esta situación cuando la indicación sea demasiado vaga o ambigua para determinar la naturaleza y el destino de los productos de que se trate, por ejemplo
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artículos, novedades, regalos, recuerdos, accesorios del hogar, dispositivos eléctricos, etc.
Tal es también el caso cuando la indicación se refiere a un servicio en lugar de a un producto, por ejemplo, transmisión y tratamiento de la información.
6.1.6.3 Divergencia evidente
Dado que uno de l os principales objetivos de l a indicación del producto y de la clasificación es que los terceros puedan realizar búsquedas en el registro de dibujos y modelos comunitarios, el examinador formulará una objeción en los casos en que la indicación del producto no s e corresponda claramente con el producto tal como muestra la reproducción del dibujo o modelo.
6.2 Elementos opcionales
Las solicitudes pueden contener una serie de elementos opcionales, tal como contempla el artículo 1, apartado 1, letras f) y g), y el artículo 1, apartado 2, del REDC, es decir:
• una reivindicación de prioridad o de exposición; • una descripción; • una indicación de l a Clasificación de Loc arno de los productos incluidos en l a
solicitud; • la mención del diseñador o diseñadores; • una petición de aplazamiento.
6.2.1 Prioridad y prioridad de exposición
6.2.1.1 Prioridad
Principios generales
Las solicitudes de dibujos o modelos comunitarios pueden reivindicar la prioridad de una o más solicitudes anteriores del mismo dibujo o modelo o modelo de utilidad en un Estado parte del Convenio de P arís, o del Acuerdo por el que se establece la Organización Mundial del Comercio, o en cualquier otro Estado que haya celebrado un acuerdo de reciprocidad (artículo 41 del RDC; artículo 8 del REDC). La «prioridad de convenio» es de seis meses a partir de la fecha de presentación de la primera solicitud.
El derecho de prioridad tendrá como efecto que la fecha de prioridad pase a considerarse fecha de presentación de la solicitud de un dibujo o modelo comunitario registrado a efectos de los artículos 5, 6, 7, 22, del artículo 25, apartado 1, letra d) y del artículo 50, apartado 1, del RDC (artículo 43 del RDC).
Las reivindicaciones de prioridad están sujetas a los siguientes requisitos formales :
• la prioridad podrá revindicarse dentro de los seis meses a partir de la fecha de presentación de la primera solicitud;
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• sólo se podrá reivindicar la prioridad de l a primera solicitud de un dibujo o modelo, o de un modelo de ut ilidad en un país perteneciente al Convenio de Paris o la Organización Mundial del Comercio (OMC) o en otro estado con el que haya un acuerdo de reciprocidad;
• el titular debe ser el mismo, o deberá proporcionarse un documento de transferencia que demuestre el derecho del solicitante del dibujo o modelo comunitario de reivindicar la prioridad de una solicitud anterior originalmente depositada por otro solicitante;
• la declaración de prioridad (que debe indicar fecha, número y país de la primera solicitud) deberá presentarse dentro de un mes contado a partir de la fecha de solicitud del DMC;
• los detalles y la copia certificada de la solicitud anterior deberán presentarse dentro de los tres meses contados a partir de la fecha de presentación de la reivindicación de prioridad;
Como requisito de fondo, el dibujo o modelo comunitario debe hacer referencia al «mismo dibujo o modelo o modelo de utilidad» para el que se reivindica la prioridad (artículo 41, apartado 1, del RDC). Esto significa que el objeto de la solicitud anterior debe ser idéntico al del correspondiente dibujo o modelo comunitario, sin añadir ni suprimir ninguna característica.
Sin embargo, la reivindicación de prioridad es válida si el diseño o modelo comunitario y la solicitud anterior para un derecho de diseño o modelo o de un modelo de utilidad difieren solo en detalles insignificantes conforme al articulo 5 RDC.
Al examinar una solicitud de dibujo o modelo comunitario, la Oficina no comprueba si la solicitud afecta al «mismo dibujo o modelo o modelo de utilidad» cuya prioridad se reivindica. Por lo tanto, sólo el solicitante es responsable de garantizar que se cumple este requisito, de l o contrario podrá cuestionarse la validez de l a reivindicación de prioridad en una fase posterior.
La Oficina examinará una reivindicación de prioridad a efectos de los artículos 5, 6 y 7, y el artículo 25, apartado 1, letra d), del RDC durante el procedimiento de nulidad si un tercero cuestiona la validez de dicha reivindicación de prioridad o si el titular cuestiona los efectos de la divulgación de un dibujo o modelo, cuando dicha divulgación tenga lugar dentro del periodo de prioridad (véanse las Directrices relativas al examen de las solicitudes de nulidad de dibujos y modelos, apartado 5.5.1.8: Divulgación dentro del periodo de prioridad).
Durante la fase de examen de una solicitud de un dibujo o modelo comunitario, la Oficina se limitará a verificar si se cumplen los requisitos formales relacionados con la reivindicación de prioridad (artículo 45, apartado 2, letra d), del RDC).
Reivindicación de prioridad
El solicitante podrá reivindicar la prioridad de uno o más dibujos o modelos o modelos de utilidad anteriores. Por lo tanto, puede reivindicarse la prioridad de más de una solicitud anterior cuando se combinan dos o más dibujos o modelos comunitarios en una solicitud múltiple.
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Si se reivindica la prioridad de la misma solicitud anterior para todos los dibujos o modelos de una solicitud múltiple, se marcará la casilla «Misma prioridad para todos los dibujos o modelos» en el formulario de solicitud (en papel).
Se reconoce que da origen al derecho de prioridad todo depósito que sea equivalente a una presentación nacional regular en virtud de la legislación nacional aplicable. Por depósito nacional regular se entiende todo depósito que sea adecuado para determinar la fecha en la cual la solicitud fue depositada en el país de que se trate, cualquiera que sea la suerte posterior de esta solicitud (artículo 41, apartado 3, del RDC).
La prioridad podrá reivindicarse tanto cuando se presenta una solicitud de dibujo o modelo comunitario como en el plazo de un mes a partir de la fecha de presentación. Durante este plazo de un mes, el solicitante debe presentar la declaración de prioridad e indicar la fecha y el país en q ue fue presentada la solicitud anterior (artículo 8, apartado 2, del REDC).
Cuando no exista una indicación de la reivindicación en la solicitud, la presentación de los documentos de p rioridad dentro del plazo de un m es a pa rtir de la fecha de presentación se entenderá como declaración de prioridad.
A menos que quede expresamente indicado en la solicitud de que se presentará una reivindicación de pr ioridad posteriormente, la solicitud se examinará sin demora y, si no se encuentran irregularidades, se registrará sin esperar un mes para una pos ible declaración de prioridad. Si se presenta válidamente una declaración de prioridad tras el registro de la solicitud de dibujo o modelo comunitario, se procederá a la inclusión de la correspondiente anotación en el Registro.
El solicitante deberá proporcionar a la Oficina el/los número(s) de expediente(s) de la(s) solicitud(es) anterior(es) y una copia de la(s) solicitud(es) anterior(es) (artículo 8, del REDC) en el plazo de tres meses desde la fecha de presentación o, en su caso, desde la recepción de la declaración de prioridad por parte de la Oficina.
Irregularidades
La Oficina se limitará a verificar si se cumplen los requisitos formales relativos a l a reivindicación de prioridad (artículo 45, apartado 2, letra d), del RDC), es decir:
• si la prioridad se reivindica en el plazo de seis meses desde la primera solicitud; • si la prioridad se reivindicó cuando se presentó la solicitud o en el plazo de un
mes desde la fecha de presentación; • si se han presentado dentro de pl azo los detalles y la copia de l a solicitud
anterior (en el plazo de tres meses desde la fecha de presentación o, en su caso, desde la recepción de la declaración de prioridad);
• si la solicitud anterior se refiere a un dibujo o modelo o a un modelo de utilidad; • si la solicitud anterior fue presentada en un país miembro del Convenio de París
o de la Organización Mundial del Comercio (OMC), o de otro Estado que haya celebrado un acuerdo de reciprocidad;
• si la solicitud previa era una primera presentación (por lo tanto la reivindicación de prioridad será rechazada si la solicitud cuya prioridad se reivindica contiene ella misma una reivindicación de prioridad )
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• si el titular es el mismo o s i el documento de cesión establece el derecho del solicitante del dibujo o modelo comunitario a reivindicar la prioridad de una solicitud anterior presentada inicialmente por otro solicitante.
Cuando se detecten irregularidades susceptibles de s er subsanadas, el examinador solicitará al solicitante que las subsane en el plazo de dos meses.
Si no se subsanan las irregularidades a su debido tiempo o no pueden subsanarse, la Oficina informará al solicitante de la pérdida del derecho de prioridad y de la posibilidad de s olicitar una resolución formal (es decir, que puede s er objeto de recurso) sobre dicha pérdida (artículo 46, apartados 1 y 4, del RDC; artículo 40, apartado 2, del REDC).
Si las irregularidades que no se subsanan afectan solo a parte de los dibujos y modelos de una s olicitud múltiple, se perderá el derecho de prioridad únicamente respecto de los dibujos y modelos individuales afectados (artículo 10, apartado 8, del REDC).
Si la prioridad se reivindica en el plazo de s eis meses desde la presentación de la primera solicitud
El examinador examinará si la fecha de p resentación asignada al dibujo o modelo comunitario no es superior a los seis meses a partir de la fecha de presentación de la primera solicitud. Los solicitantes deben s eñalar que la fecha de presentación asignada por la Oficina no siempre podrá corresponderse con la fecha de recepción de la solicitud de dibujo o modelo comunitario (véase el apartado 3).
Para agilizar el procedimiento de registro, cuando la fecha de p resentación de l a solicitud de dibujo o modelo comunitario esté de forma irrefutable e irremediable fuera del plazo de seis meses, la Oficina denegará la solicitud de prioridad sin notificar formalmente al solicitante dicha irregularidad.
Cuando la fecha de presentación de la solicitud de dibujo o modelo comunitario sea solo un poc o posterior al plazo de s eis meses, el examinador comprobará si podrá prorrogarse el plazo, de conformidad con una de las condiciones establecidas en e l artículo 58 del REDC.
El derecho de prioridad reivindicado siempre debe ser una solicitud anterior, el cual, por este motivo, no puede llevar la misma fecha que la solicitud de dibujo o modelo comunitario.
Si la prioridad se reivindicó cuando se presentó la solicitud o en el plazo de un mes desde la fecha de presentación
El examinador comprobará que se haya reivindicado la prioridad en el plazo máximo de un mes a partir de la fecha de presentación del dibujo o modelo comunitario.
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Si los detalles de la solicitud anterior y la copia del documento de prioridad se presentaron dentro de plazo
Cuando se reivindica la prioridad al presentar o enviar una declaración de prioridad, el solicitante debe indicar la fecha y el país en que fue presentada la solicitud anterior (artículo 1, apartado 1, letra f), del REDC). Si no se cumple lo anterior, esto no dará lugar a una objeción: el examinador esperará a que se presente el documento de prioridad.
El número de expediente y el documento de prioridad deberán presentarse en el plazo de tres meses desde la fecha de presentación de la solicitud de dibujo o modelo comunitario o de la presentación de la declaración de prioridad (artículo 8 del REDC).
El documento de prioridad debe consistir en una copia certificada de la solicitud o registro anterior, emitido por la autoridad que lo recibió, y debe ir acompañado por un certificado que establezca la fecha de presentación de la solicitud. El documento de prioridad podrá presentarse en formato original o mediante una fotocopia exacta. En la medida en que los documentos en formato original incluyan una r eproducción del dibujo o modelo en color, la fotocopia también será en color (Decisión nº EX-03-5 del Presidente de la Oficina, de 20/1/2003 relativa a los requisitos formales de las reivindicaciones de pr ioridad o de antigüedad). Se permite a los solicitantes que reivindican la prioridad de una solicitud de patente estadounidense (dibujo o modelo) que presenten una copia certificada de esta solicitud en CD-ROM (Comunicación nº 12/04 del Presidente de la Oficina de 20/10/2004).
Si se reivindica la prioridad de un dibujo o modelo comunitario registrado anterior, el solicitante deberá indicar el número de la solicitud anterior y su fecha de presentación. No se exigirá información o doc umentos adicionales (Decisión nº EX-03-5 del Presidente de la Oficina, de 20/1/2003 relativa a los requisitos formales de las reivindicaciones de prioridad o de antigüedad).
Si la lengua de l a solicitud anterior no e s una de las cinco lenguas oficiales de l a Oficina, el examinador invitará al solicitante a presentar una traducción en el plazo de dos meses (artículo 42 del RDC). No es necesario traducir todo el documento sino sólo la información que le permita al examinador comprobar la naturaleza del derecho (dibujo o modelo o modelo de ut ilidad), el país de presentación, el número de expediente, la fecha de presentación y el nombre del solicitante.
Para agilizar el procedimiento de registro, si un examinador detecta irregularidades en la reivindicación de prioridad, se emitirá una carta de irregularidad antes de que expire el plazo de presentación de todos los datos de la solicitud anterior, incluido el número de expediente y el documento de prioridad. El plazo para subsanar las irregularidades no será inferior a tres meses a partir de l a fecha de pr esentación o de la fecha de recepción de la declaración de prioridad.
Si la solicitud anterior se refiere a un dibujo o modelo o a un modelo de utilidad
Podrá reivindicarse la prioridad de una solicitud de di bujo o modelo o modelo de utilidad anterior, incluida la de un di bujo o modelo comunitario anterior o un r egistro internacional de dibujo o modelo.
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Muchas legislaciones nacionales no ofrecen protección a los modelos de utilidad, por ejemplo, la legislación de los Estados Unidos de América. En la Unión Europea, pueden registrarse modelos de utilidad en, entre otros, Austria, República Checa, Dinamarca, Finlandia, Alemania, Italia, Hungría, Polonia, Portugal, Eslovaquia y España. Los modelos de utilidad también pueden registrarse en Japón.
Se denegará, en principio, una reivindicación de prioridad basada en una solicitud de patente anterior. Sin embargo, la prioridad de una solicitud internacional presentada de conformidad con el Tratado de Cooperación en materia de Patentes (PCT) puede reivindicarse porque el artículo 2 del PCT define el término «patente» en un sentido amplio que abarca a los modelos de utilidad.
La reivindicación de prioridad podrá basarse en una solicitud anterior presentada en la Oficina Estadounidense de Patentes y Marcas Registradas (UPSTO) únicamente si el objeto de la solicitud anterior hace referencia a una «patente de dibujo o modelo» y no a una «patente».
Para agilizar el procedimiento de registro, en el que la solicitud anterior implica de forma irrefutable e irremediable un derecho que no es un dibujo o modelo o un modelo de utilidad, la Oficina denegará la reivindicación de prioridad sin notificar formalmente al solicitante dicha irregularidad.
Si la solicitud anterior fue presentada en un país miembro del Convenio de París o de la Organización Mundial del Comercio (OMC), o de otro Estado que haya celebrado un acuerdo de reciprocidad
Los Estados y el resto de territorios que se indican a continuación no son miembros de ninguno de los convenios relevantes ni se benefician de los acuerdos de reciprocidad. Por lo tanto, las reivindicaciones de prioridad basadas en las presentaciones en estos países y territorios serán desestimadas:
Afganistán (AF) Abjasia Samoa Americana (AS) Anguila (AI) Aruba (AW) Bermuda (BM) Islas Caimán (MH) Islas Cook (CK) Eritrea (ER) Etiopía (ET) Islas Malvinas (FK) Guernsey (Islas del Canal) (GG) Isla de Man (IM) Jersey (Isla del Canal) (JE) Kiribati (KI) Islas Marshall (MH) Micronesia (Estados Federados de) (FM) Montserrat (MS) Nauru (NR) Palaos (PW) Isla Pitcairn (PN)
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Saint Helena (SH) Somalia (SO) Islas Turcas y Caicos (TC) Tuvalu (TV) Islas Vírgenes Británicas (VG).
Para agilizar el procedimiento de registro, cuando la solicitud anterior fue presentada de forma irrefutable e irremediable en uno de l os países o territorios anteriores, la Oficina denegará la reivindicación de prioridad sin notificar formalmente al solicitante dicha irregularidad.
Si la solicitud anterior es una primera presentación
En principio, la solicitud anterior deberá ser una primera presentación. El examinador comprobará, por tanto, que el documento de prioridad no hace referencia a la prioridad que se reivindica respecto de una solicitud que es todavía más anterior.
Para agilizar el procedimiento de registro, cuando la solicitud anterior no constituye ni irrefutable ni irremediablemente una p rimera presentación, la Oficina denegará la reivindicación de prioridad sin notificar formalmente al solicitante dicha irregularidad.
Como excepción, recibirá la consideración de primera solicitud, a ef ectos de determinación de la prioridad, la solicitud ulterior depositada para un dibujo o modelo que haya sido objeto de una primera solicitud precedente, siempre y cuando, en la fecha de presentación de la posterior, hubiera sido la primera retirada, desestimada u objeto de renuncia, sin haber estado expuesta a consulta pública ni haber dado lugar a ningún derecho, y no h aya servido de fundamento para reivindicar un derecho de prioridad. La solicitud anterior ya no podr á servir de bas e para la reivindicación del derecho de prioridad (artículo 41, apartado 4, del RDC).
Si el titular es el mismo o se ha producido una cesión
La prioridad puede ser reivindicada por el solicitante de la primera solicitud o por su sucesor. En este último caso, la primera solicitud ha de cederse antes de la fecha de presentación de la solicitud de dibujo o modelo comunitario y deberá aportarse la documentación adecuada.
El derecho de p rioridad como tal podrá cederse, con independencia de la primera solicitud. Por tanto, se aceptará la prioridad incluso si los titulares del dibujo o modelo comunitario y de la solicitud anterior son distintos, siempre que se aporte pruebas de la cesión del derecho de prioridad. En este caso, la fecha de ejecución de la cesión debe ser anterior a la fecha de presentación de la solicitud del dibujo o modelo comunitario.
No se considera que las empresas subsidiarias o asociadas del solicitante sean la misma persona jurídica que el propio solicitante de dibujo o modelo comunitario.
Cuando, en respuesta a una objeción formulada por el examinador sobre una irregularidad entre la identidad del solicitante y la del titular de la solicitud anterior, el solicitante explique que ello es debido a un cambio en la denominación social, deberá presentarse en el plazo de dos meses un documento que establezca dicho cambio.
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6.2.1.2 Prioridad de exposición
Principios generales
El efecto de la prioridad de exposición es que la fecha en que dicho dibujo o modelo ha sido mostrado en una exposición oficialmente reconocida se considerará la fecha de presentación de la solicitud de dibujo o modelo comunitario registrado a efectos de los artículos 5, 6, 7 y 22, del artículo 25, apartado 1, letra d) y del artículo 50, apartado 1, del RDC (artículo 43 del RDC).
El solicitante puede invocar la prioridad de exposición en el plazo de seis meses desde la primera vez que se exhibió el dibujo o modelo. Deben presentarse las pruebas de la exposición (artículo 44, apartados 1 y 2, del CDR).
La prioridad de exhibición no puede ampliar el plazo de seis meses de la «prioridad de convenio» (artículo 44, apartado 3, del RDC).
Reivindicación de prioridad de exposición
Tal como ocurría con la «prioridad de c onvenio» (véase el apartado 6.2.1 supra), la prioridad de exposición puede reivindicarse tanto al presentar una solicitud de dibujo o modelo comunitario como posteriormente. Si el solicitante desea reivindicar la prioridad de exposición después de la presentación de la solicitud, la declaración de prioridad que indica el nombre de la exposición y la fecha de la primera exhibición del producto deberán presentarse en el plazo de un mes desde la fecha de s olicitud (artículo 9, apartado 2, del REDC).
En un plazo de tres meses a partir de la fecha de presentación o la recepción de la declaración de prioridad, el solicitante debe suministrar a la Oficina el certificado emitido en la exposición por parte de la autoridad responsable. Dicho certificado debe indicar que el dibujo o modelo se mostró en la exposición, especificar la fecha de apertura de la exposición y, si el primer uso público no coincide con la fecha de apertura de l a exposición, la fecha del primer uso público. El certificado deberá ir acompañado por una identificación de la divulgación efectiva del producto en que esté incorporado el dibujo o modelo, debidamente certificado por la autoridad (artículo 9, apartado 1 y 2, del REDC).
La prioridad solo podrá concederse si la solicitud de dibujo o modelo comunitario se presenta en el plazo de s eis meses desde la primera exhibición en una ex posición reconocida a tal efecto, en concreto una exposición mundial en el sentido del Convenio relativo a l as exposiciones internacionales de París, de 22/11/1928. Estas exposiciones son muy raras y el artículo 44 del RDC no abarca la exhibición en otras exposiciones nacionales o internacionales. Las exposiciones pueden encontrarse en la página web de la «Oficina Internacional de Exposiciones» de París: http://www.bie- paris.org/site/en/.
Irregularidades
La Oficina se limitará a verificar si se cumplen los requisitos formales relativos a l a reivindicación de prioridad de exposición (artículo 45, apartado 2, letra d), del RDC), es decir:
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• si la fecha de presentación del dibujo o modelo comunitario queda comprendida en un plazo de seis meses a partir de la fecha de la primera presentación del producto;
• si la prioridad se reivindicó cuando se presentó la solicitud o en el plazo de un mes desde la fecha de presentación;
• si la solicitud o la declaración de prioridad posterior proporciona información sobre el nombre de la exposición y la fecha de la primera exhibición del producto;
• si la exposición fue una exposición mundial en el sentido del Convenio relativo a las exposiciones internacionales de 22/11/1928;
• si el certificado emitido en la exposición por parte de la autoridad responsable fue presentado dentro de plazo;
• si el titular indicado en dicho certificado es la misma persona que el solicitante.
Si se detectan irregularidades subsanables, el examinador se dirigirá al solicitante para que las subsane en un plazo no i nferior al plazo de t res meses para presentar el certificado que se ha mencionado anteriormente.
Si las irregularidades no son subsanables o no se subsanan dentro de plazo, la Oficina informará al solicitante de la pérdida del derecho de prioridad y de la posibilidad de solicitar una resolución formal (es decir, que puede ser objeto de recurso) sobre dicha pérdida (artículo 46, apartados 1 y 4, del RDC; artículo 40, apartado 2, del REDC).
Si las irregularidades afectan solo a parte de los dibujos y modelos de una solicitud múltiple, se perderá el derecho de prioridad únicamente respecto de los dibujos y modelos individuales afectados (artículo 10, apartado 8, del REDC).
6.2.2 Descripción
La solicitud podrá incluir una descripción no s uperior a 100 pal abras en la que se explique la representación del dibujo o modelo o la muestra del dibujo (véase el apartado 3.3.5 supra). La descripción debe hac er referencia únicamente a a quellas características que están presentes en las reproducciones del dibujo o modelo o la muestra del dibujo. No podrá contener afirmaciones relativas a la supuesta novedad, al supuesto carácter singular del dibujo o m odelo ni a s u valor técnico (artículo 1, apartado 2, letra a), del REDC).
La descripción no afecta al alcance de la protección del dibujo o modelo comunitario como tal (artículo 36, apartado 6, del RDC).
Sin embargo, la descripción podrá aclarar la naturaleza o destino de algunas características del dibujo o modelo para salvar una posible objeción. Por ejemplo, si diferentes perspectivas de un mismo dibujo o modelo exhiben distintos colores, planteándose así dudas sobre la coherencia entre los mismos (véase el apartado 5.2.5 supra), la descripción podrá explicar que los colores del dibujo o modelo cambian cuando se utiliza el producto en el que está incorporado el dibujo o modelo.
No se aceptarán descripciones presentadas después de la fecha de presentación.
El Registro incluirá una mención de que ha sido presentada una descripción, aunque la descripción como tal no haya sido publicada. La descripción, sin embargo, seguirá siendo parte del expediente administrativo de la solicitud y estará abierta a consulta
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pública por parte de terceros en las condiciones establecidas en el artículo 74 del RDC y los artículos 74 y 75 del REDC.
6.2.3 Indicación de la Clasificación de Locarno
6.2.3.1 Principios generales
El propio solicitante podrá identificar la clasificación, de c onformidad con la Clasificación de Locarno, de los productos indicados en la solicitud (véase el apartado 6.1.4 supra).
Si el solicitante incluye una clasificación, los productos se agruparán de acuerdo con las clases de la clasificación de Locarno, y cada grupo irá precedido del número de la clase pertinente y se presentarán en el orden de las clases y subclases (artículo 3 del REDC).
Dado que la clasificación es opcional, no se formulará ninguna objeción si el solicitante no presenta una clasificación o si lo hace sin agrupar los productos como se exige, siempre que no se formule una ob jeción respecto de la indicación de los productos (apartado 4.6 supra). Si no s e formula dicha objeción, el examinador clasificará de oficio los productos con arreglo a la clasificación de Locarno.
Si el solicitante ha indicado solo la clase principal y no la subclase, el examinador asignará la subclase que parezca adecuada según el dibujo o modelo que se exhibe en la reproducción. Por ejemplo, si una solicitud de dibujo o modelo indica embalajes de la clase 9 de la Clasificación de Locarno y el dibujo o modelo representa una botella, el examinador asignará la subclase 09-01 (el título de l a cual es Botellas, frascos, potes, bombonas, garrafas y otros contenedores con distribuidores dinámicos).
Si el solicitante ha indicado una clasificación incorrecta, el examinador le asignará la clasificación correcta de oficio.
Los productos que combinan distintos elementos para realizar más de una función podrán clasificarse en tantas clases y subclases como número de destinos puedan tener. Por ejemplo, la indicación del producto Cajas de r efrigeración con radios y reproductores de CD se clasificarán en l as clases 14-01 (Equipos de grabación y reproducción de sonidos o imágenes), 14-03 (Equipo de comunicaciones, controles remotos inalámbricos y amplificadores de radio) y 15-07 (Maquinaria y aparatos de refrigeración) de la Clasificación de Locarno.
6.2.3.2 Solicitud múltiple y el requisito de «unidad de clase»
Si la misma indicación del producto se aplica a todos los dibujos y modelos incluidos en una solicitud múltiple, debe marcarse la correspondiente casilla «Misma indicación del producto para todos los dibujos o modelos» del formulario de solicitud (en papel) y dejar en blanco el campo «Indicación del producto» para los dibujos o modelos posteriores.
En el caso de que se combinen varios dibujos o modelos distintos de la ornamentación en una solicitud múltiple, la solicitud se dividirá si los productos en que van a incorporarse o aplicarse los dibujos y modelos pertenecen a más de una clase de la
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clasificación de Locarno (artículo 37, apartado 1, del RDC); artículo 2, apartado 2, del REDC; véase el apartado 7.2.3).
6.2.4 Mención del diseñador o diseñadores
La solicitud puede incluir:
(a) una mención del diseñador o diseñadores; o (b) una designación colectiva de un equipo de diseñadores; o (c) una indicación de que el autor o el equipo de autores han renunciado al derecho
a ser mencionados (artículo 18 del RDC; artículo 1, apartado 2, letra d), del REDC).
La mención, la renuncia o la mención del o de los autores es una cuestión opcional y no serán objeto de examen.
Si el diseñador o el equipo de di señadores es el mismo para todos los dibujos o modelos de una solicitud múltiple, deberá indicarse este hecho marcando la casilla «Mismo autor para todos los dibujos o modelos» en el formulario de solicitud (en papel).
Dado que el derecho a ser mencionado como autor no está limitado en el tiempo, el nombre del diseñador también podrá inscribirse en el Registro después del registro del dibujo o modelo (artículo 69, apartado 2, letra j), del REDC).
6.2.5 Solicitud de aplazamiento
6.2.5.1 Principios generales
El solicitante de un dibujo o modelo comunitario registrado podrá solicitar, al presentar la solicitud, que su publicación se aplace durante 30 meses a partir de la fecha de presentación o, si se reivindica una prioridad, desde la fecha de prioridad (artículo 50, apartado 1, del RDC).
Si no s e detectan irregularidades, se procederá a registrar el dibujo o m odelo comunitario. La información publicada en la Parte A.2. del Boletín de Dibujos y Modelos Comunitarios incluye el número de expediente, la fecha de presentación, la fecha de inscripción en el Registro, el número de registro, el nombre y dirección del titular y el nombre y la dirección profesional de su representante (en su caso). No se publicarán otros pormenores como la representación del dibujo o modelo o la indicación de los productos (artículo 14, apartado 3, del REDC).
Sin embargo, los terceros podrán consultar todo el expediente si han obtenido el consentimiento previo del solicitante o si pueden demostrar un i nterés legítimo (artículo 74, apartados 1 y 2, del RDC).
En especial, existe un interés legítimo cuando una persona interesada presente pruebas de que el titular del dibujo o modelo comunitario registrado cuya publicación se aplaza ha adoptado alguna medida para alegar contra él el derecho.
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No habrá disponible ningún certificado de registro mientras haya sido aplazada la publicación de un dibujo o modelo. El titular del registro del dibujo o modelo sujeto a aplazamiento podrá solicitar, sin embargo, un extracto certificado o sin certificar del registro, que contendrá la reproducción del dibujo y otros pormenores que identifiquen su apariencia (artículo 73, letra b), del REDC), a efectos de reivindicar sus derechos contra terceros (artículo 50, apartado 6, del RDC).
El procedimiento descrito en esta sección no es aplicable a los registros internacionales que designan a la Unión Europea (véase el apartado 12 infra).
6.2.5.2 Solicitud de aplazamiento
El aplazamiento de l a publicación deberá solicitarse en la solicitud (artículo 50, apartado 1, del RDC). Las solicitudes posteriores no se admitirán, incluso si se reciben el mismo día.
Los solicitantes deben tener presente que los dibujos o modelos pueden s er registrados y admitidos para su publicación en el plazo de dos días laborables e incluso en ocasiones en el día en que se recibe la solicitud (véase el apartado 2.7.1 supra). Si, por error, una solicitud no i ncluye una solicitud de apl azamiento, deberá retirarse la solicitud para evitar la publicación. Dada la velocidad con la que se desarrollan los procedimientos de registro y de publicación, lo anterior deberá llevarse a cabo inmediatamente después de la presentación. El solicitante deberá contactar asimismo con un examinador el día de la renuncia.
Una petición de aplazamiento de publicación podrá referirse a algunos de los dibujos y modelos de una solicitud múltiple. En este caso, los dibujos o m odelos que se aplazarán deben s er identificados de forma clara marcando la casilla «Petición de aplazamiento de la publicación» del formulario (en papel) o la casilla «Publicación que será aplazada» (presentación electrónica) para cada dibujo o modelo individual.
El solicitante deberá abonar una tasa de aplazamiento de la publicación junto con la tasa de registro (véase el apartado 8 infra). El pago de l a tasa de p ublicación es facultativo en el momento de presentación.
6.2.5.3 Petición de publicación
Al presentar la solicitud, o a m ás tardar tres meses antes de que expire el plazo de treinta meses (es decir, el último del 27º mes a partir de la fecha de presentación o la fecha de prioridad, según el caso), el solicitante deberá cumplir con los denominados «requisitos de petición de publicación» (artículo 15 del REDC):
• pagar la tasa de publicación para que pueda ser aplazado el dibujo o modelo (véase el apartado 8);
• en caso de que se haya sustituido una representación del dibujo o modelo por una muestra, de conformidad con el artículo 5 del REDC (véase el apartado 3.3.5 supra), presentar una representación de los dibujos o modelos de acuerdo con el artículo 4 del REDC (véase el apartado 5);
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• en el caso de los registros múltiples, indicar claramente los dibujos y modelos del registro múltiple que deberán publicarse, aquellos a los que se renunciará o, aquellos dibujos o modelos cuyo aplazamiento continuará, según el caso.
Cuando el titular del dibujo o modelo comunitario notifique a la Oficina, en cualquier momento antes de que expiren los veintisiete meses, o s i su deseo es que se publique el dibujo o modelo («petición de publicación anticipada»), deberá especificar si la publicación deberá tener lugar en cuanto sea posible técnicamente (artículo 16, apartado 1, del REDC) o cuando expire el periodo de aplazamiento de treinta meses. Cuando no ex ista una s olicitud específica del solicitante, los dibujos o modelos se publicarán cuando expire el periodo de aplazamiento.
Si el titular, a pesar de que exista una petición de publ icación anterior, decide finalmente que el dibujo o m odelo no debe s er publicado, deberá presentar una solicitud de renuncia por escrito antes de que deba publicarse el dibujo o modelo. No se reembolsarán ninguna de las tasas que ya han sido abonadas.
6.2.5.4 Cumplimiento de los plazos
Los titulares de un di bujo o modelo comunitario deben s er conscientes de que la Oficina no emitirá recordatorios en relación con la expiración del plazo de veintisiete meses antes del cual deberán cumplirse los requisitos de petición de publicación. Por consiguiente, es responsabilidad del solicitante (o, en s u caso, su representante) garantizar que se cumplen los plazos.
Debe prestarse especial atención al reivindicar una fecha de prioridad ya sea en el momento de la presentación o después de la misma, puesto que la fecha de prioridad señalará los plazos aplicables al aplazamiento. Asimismo, los plazos aplicables al aplazamiento podrán ser distintos para cada uno de l os dibujos o modelos de u n registro múltiple, si se reivindican fechas de prioridad distintas para cada dibujo o modelo individual.
Si no s e cumple el plazo de l os «requisitos de petición de publicación», lo que resultará por lo tanto en una pérdida de derechos, el titular del dibujo o modelo comunitario podrá presentar una petición de restitutio in integrum (artículo 67 del RDC; véanse, asimismo, las Directrices, relativa a l os procedimientos ante la Oficina de Armonización del Mercado Interior (Marcas, Dibujos y Modelos), Parte A, Sección 8, Restitutio in integrum).
6.2.5.5 Irregularidades
Irregularidades en la fase de examen
Si la información incluida en la solicitud es contradictoria (por ejemplo, la tasa de aplazamiento ha sido abonada pero el solicitante no ha marcado la casilla «Petición de aplazamiento de la publicación») o incoherente (por ejemplo, el importe de las tasas de aplazamiento abonadas para una s olicitud múltiple no s e corresponde con el número de dibujos o modelos que deben aplazarse), el examinador emitirá una carta de irregularidad en la que pedirá al solicitante que confirme si pide el aplazamiento y, en su caso, para qué dibujo(s) o modelo(s) específico(s) de una solicitud múltiple lo solicita, y/o que abone las correspondientes tasas.
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Irregularidades relativas a los «requisitos de petición de publicación»
Si, una vez expirado el plazo de v eintisiete meses después de la fecha de presentación o de la fecha de prioridad del registro de dibujo o modelo comunitario, el titular no ha cumplido los «requisitos de petición de publicación», el examinador emitirá una carta de i rregularidad por la que le concederá dos meses para subsanar las irregularidades (artículo 15, apartado 2, del REDC).
Cuando una irregularidad afecta al pago de las tasas de publicación, se pedirá al solicitante que abone el importe correcto más el recargo aplicado en caso de demora en el pago (es decir, 30 EUR por un diseño y, en el caso de una solicitud múltiple, el 25 % de las tasas para la publicación de cada dibujo o modelo adicional; artículo 15, apartado 4, del REDC; artículos 8 y 10 del anexo del RTDC).
Los solicitantes deben saber que el plazo señalado por el examinador no podr á prorrogarse más allá del periodo de aplazamiento de treinta meses (artículo 15, apartado 2, del REDC).
Si las irregularidades no se subsanan dentro del plazo señalado, se considerará que los dibujos y modelos comunitarios registrados que han de aplazarse no han surtido en ningún momento los efectos previstos en el RDC (artículo 15, apartado 3, letra a), del REDC).
El examinador así lo notificará al titular una vez transcurrido el periodo de aplazamiento de treinta meses.
En el caso de una «solicitud de publicación anticipada» (véase el apartado 6.2.5.3), el incumplimiento de los requisitos de petición de publicación hará que la solicitud se tenga por no presentada (artículo 15, apartado 3, letra a), del REDC). Se reembolsará la tasa de publicación si ya ha sido abonada. Sin embargo, si todavía quedan más de tres meses antes de que expire el plazo de veintisiete meses, el titular podrá presentar otra solicitud de publicación.
Si la irregularidad se refiere a un pago insuficiente para sufragar las tasas de publicación para todos los dibujos o modelos que deben aplazarse en una solicitud múltiple, incluidas las tasas por demora en el pago, se considerará que los dibujos o modelos no cubiertos por el importe abonado no han surtido en ningún momento los efectos contemplados en el RDC. A menos que el titular aclare qué dibujos o modelos quedan cubiertos por el importe abonado, el examinador seleccionará los dibujos o modelos por orden numérico consecutivo (artículo 15, apartado 4, del REDC).
Publicación tras el aplazamiento
Si no ex isten irregularidades o l as irregularidades han s ido subsanadas dentro de plazo, el registro se publicará en la Parte A.1. del Boletín de D ibujos y Modelos Comunitarios.
El titular podrá solicitar que se publiquen solo algunos de los dibujos o modelos de una solicitud múltiple.
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La mención se hará en la publicación del hecho de que el aplazamiento se solicitó inicialmente y, en su caso, de que se presentó una muestra en un inicio (artículo 16 del REDC).
7 Solicitudes múltiples
7.1 Principios generales
Las solicitudes múltiples son solicitudes de registro de más de un dibujo o modelo en una misma solicitud. Los dibujos y modelos contenidos en una solicitud o r egistro múltiple se examinan y se tratan independientemente. En particular, cada dibujo o modelo podrá, de forma independiente, ser objeto de ejecución, licencia, de derechos reales, de ejecución forzosa, incluirse en un procedimiento de insolvencia, ser objeto de renuncia, de renovación, de cesión, de aplazamiento de publicación o ser declarado nulo (artículo 37, apartado 4, del RDC).
Las solicitudes múltiples están sujetas a tasas de registro y publicación específicas, cuyo importe disminuye de forma proporcional al número de dibujos y modelos (véase el apartado 8 infra).
7.2 Requisitos formales que se aplican a las solicitudes múltiples
7.2.1 Requisitos generales
Todos los dibujos y modelos de una solicitud múltiple deben tener el mismo titular y el mismo representante (en su caso).
El número de di bujos y modelos que puede contener una s olicitud múltiple no es tá limitado. No es necesario que los dibujos o modelos estén relacionados entre sí o que sean similares en términos de apariencia, naturaleza o destino.
El número de dibujos o modelos no debe confundirse con el «número de perspectivas» que representan a los dibujos o modelos (véase el apartado 5.1 supra).
Los solicitantes deberán numerar con cifras arábigas de forma consecutiva los dibujos y modelos en una solicitud múltiple (artículo 2, apartado 4, del REDC).
Deberá facilitarse una representación adecuada de cada dibujo o modelo incluido en una solicitud múltiple (véase el apartado 5 supra) y una relación de los productos a los que vaya a i ncorporarse o apl icarse el dibujo o modelo (artículo 2, apartado 3, del REDC, véase el apartado 6.1.4 supra).
7.2.2 Examen separado
El número de dibujos y modelos que puede contener una solicitud múltiple se examinará por separado. Si una i rregularidad que afecta a algunos de los dibujos y modelos incluidos en una solicitud múltiple no se subsana dentro del plazo señalado por la Oficina, se denegará la solicitud exclusivamente en l a medida que afecte a dichos dibujos y modelos (artículo 10, apartado 8, del REDC).
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Todas las resoluciones sobre el registro o la denegación de los dibujos o modelos incluidos en una solicitud múltiple se adoptarán al mismo tiempo.
Incluso si algunos de los dibujos y modelos de una solicitud múltiple ya cumplen tanto los requisitos formales como los requisitos de fondo, no se registrarán hasta que no hayan sido subsanadas las irregularidades que afectan a otros dibujos o modelos o si los dibujos o modelos en cuestión han sido denegados por decisión de un examinador.
7.2.3 El requisito de «unidad de clase»
7.2.3.1 Principio
Por norma general, todos los productos indicados para los dibujos o modelos incluidos en una solicitud múltiple deberán clasificarse únicamente en una de las 32 clases de Locarno.
Como excepción, la indicación Ornamentación o Producto(s) X (Ornamentación para -) de la clase 32-00 podrá combinarse con las indicaciones de los productos que pertenecen a otra clase de Locarno.
7.2.3.2 Productos distintos de la ornamentación
Los productos indicados para cada dibujo o modelo de una s olicitud múltiple podrán ser distintos de los indicados para otros.
Sin embargo, salvo en los casos en que se trate de ornamentación (véase el apartado 7.2.3.3 infra), todos los productos indicados con respecto a cada uno de los dibujos y modelos en una solicitud múltiple pertenecerán a la misma clase de la clasificación de Locarno (artículo 37, apartado 1, del RDC; artículo 2, apartado 2, del REDC). Se considerará que se cumple esta «unidad de clase» incluso si los productos pertenecen a distintas subclases de la misma clase de la clasificación de Locarno.
Por ejemplo, se admitirá una solicitud múltiple si contiene un dibujo o modelo con la indicación del producto Vehículos a motor (clase 12, subclase 08) y un dibujo o modelo con la indicación del producto Interiores de vehículos (clase 12, subclase 16), o si ambos dibujos o modelos indican ambos términos. Lo anterior es un ejemplo de dos dibujos o modelos en distintas subclases de la misma clase, en concreto la clase 12 de la Clasificación de Locarno.
Se formularía una obj eción, sin embargo, si en el anterior ejemplo, los productos indicados fueran Vehículos a motor (clase 12, subclase 08) y Luces para vehículos, puesto que el segundo término pertenece a la clase 26, subclase 06 de la Clasificación de Locarno. El examinador exigiría en ese caso que se dividiera la solicitud múltiple, tal como se indica en el apartado 7.2.3.4 infra.
Una solicitud múltiple no podr á dividirse a m enos que exista una irregularidad que afecte al requisito de «unidad de clase» (artículo 37, apartado 4, del RDC).
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7.2.3.3 Ornamentación
La ornamentación es un elemento decorativo que puede aplicarse a la superficie de diversos productos sin alterar significativamente sus contornos. Puede tratarse de un diseño bidimensional o de una t alla o molde tridimensional, en l a que el dibujo o modelo sobresale de una superficie plana.
Aunque la ornamentación es en sí misma un producto con arreglo a la Clasificación de Locarno (clase 32), su principal destino es convertirse en una de las características de otros productos.
Una solicitud múltiple podrá, por lo tanto, combinar dibujos y modelos para la ornamentación con dibujos y modelos para productos en los que se aplicará dicha ornamentación, siempre que todos estos productos pertenezcan a la misma clase de la Clasificación de Locarno.
Para algunos dibujos y modelos, la indicación Ornamentación o Producto(s) X (Ornamentación para -) de la clase 32 de la Clasificación de Locarno es neutra y, por lo tanto, se ignora a efectos de examinar si la indicación del producto para el resto de dibujos y modelos cumple el requisito de «unidad de clase».
El mismo razonamiento es aplicable a las siguientes indicaciones del producto de la clase 32 de la Clasificación de Locarno: Símbolos gráficos, logotipos y patrones de superficie.
Por ejemplo, será admisible una s olicitud múltiple si combina dibujos y modelos Ornamentación o Porcelana (Ornamentación para -) de la clase 32 para los dibujos y modelos que representan piezas de un conjunto para té para Porcelana de la clase 7, subclase 01. A su vez, si Ropa de mesa se indicó como producto para uno de estos dibujos o modelos, se formulará una objeción puesto que este producto pertenece a la clase 6, subclase 13 de la Clasificación de Locarno, es decir, a una clase distinta.
Si el solicitante ha indicado el producto como Ornamentación o Producto(s) X (Ornamentación para -), el examinador lo examinará si a simple vista se considera que el dibujo o modelo en cuestión es para ornamentación. Si el examinador está de acuerdo con que es para ornamentación, el producto se clasificará en la clase 32.
Si el examinador no está de a cuerdo con que el dibujo o modelo es para ornamentación, se deberá enviar una carta de irregularidad sobre la base de un desajuste evidente entre los productos indicados y el dibujo o modelo (véase el apartado 6.1.6.3 supra).
Si la representación del dibujo o modelo no se limita a la propia ornamentación sino que también muestra el producto en que se aplica dicha ornamentación, sin que se renuncie a los contornos de dicho producto, este producto específico deberá añadirse a la lista de productos y la clasificación se modificará en consecuencia (véase el apartado 6.1.4.4).
Esto conducirá a una objeción en que una solicitud múltiple combine una serie de dibujos o modelos aplicados en productos que pertenecen a clases distintas de l a Clasificación de Locarno.
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7.2.3.4 Irregularidades
Por ejemplo, supongamos que se combinan tres dibujos o modelos que representan automóviles en una solicitud múltiple y que la indicación del producto para cada dibujo o modelo es Automóviles (subclase 12-08) y Modelos a escala (subclase 21-01).
El examinador formulará una objeción y pedirá al solicitante que:
• elimine algunas de las indicaciones del producto de forma que el resto de productos pueda clasificarse en una sola clase de Locarno; o
• divida la solicitud en dos solicitudes múltiples para cada una de las clases de Locarno afectadas, y abone las correspondientes tasas adicionales; o
• divida la solicitud en t res solicitudes múltiples para cada uno de los dibujos y modelos afectados y abone las correspondientes tasas adicionales.
En algunos casos, no será posible eliminar las indicaciones del producto, por ejemplo, cuando un determinado producto se deba clasificar en dos o más clases debido a la pluralidad de destinos para los que sirve (véase el apartado 6.2.3.1).
Se invitará al solicitante a que cumpla la petición del examinador en un plazo de dos meses y que abone el importe total de las tasas para todas las solicitudes resultantes de la división de la solicitud múltiple o que elimine algunos productos para cumplir con el requisito de «unidad de clase».
El examinador calculará el importe total que debe abonarse y lo notificará al solicitante en el informe de examen. El examinador propondrá la opción más rentable entre dividir en tantas solicitudes como clases de Locarno se hayan indicado o en tantas solicitudes como dibujos y modelos resulten afectados.
Si el solicitante no subsana las irregularidades dentro de plazo, la solicitud múltiple se desestimará en su totalidad.
8 Pago de las tasas
8.1 Principios generales
Las solicitudes de dibujos y modelos comunitarios están sujetas al pago de diversas tasas, que el solicitante debe abonar en el momento de la presentación (artículo 6, apartado 1, del REDC), incluida la tasa de r egistro y la tasa de publ icación o, si la solicitud incluye una petición de aplazamiento de la publicación, la tasa de aplazamiento.
En caso de solicitudes múltiples, deberá abonarse la tasa complementaria de registro, publicación o aplazamiento para cada uno de los dibujos o modelos. Si al presentar la solicitud todavía no se ha efectuado el pago, deberán abonarse asimismo las tasas por demora en el pago.
En caso de aplazamiento, los solicitantes podrán, en el momento de la presentación, elegir abonar no solo la tasa de registro y de aplazamiento sino también la tasa de publicación.
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Para información acerca de las tasas de los registros internacionales que designan la Unión Europea véase el apartado 12.1.2.3 Tasas infra.
8.2 Moneda e importes
Las tasas deberán abonarse en euros, no siendo válidos los pagos en otras monedas.
Las tasas de presentación de una solicitud son las siguientes:
Tasas de registro
Dibujo o modelo único o para el primero de una solicitud múltiple 230 EUR
Segundo hasta el décimo dibujo o modelo de una solicitud múltiple 115 EUR por dibujo omodelo
A partir del undécimo dibujo o modelo de una solicitud múltiple 50 EUR por dibujo omodelo
Tasas de publicación
Dibujo o modelo único o para el primero que se publicará de una solicitud múltiple 120 EUR
Segundo hasta el décimo dibujo o modelo que se publicará de una solicitud múltiple
60 EUR por dibujo o modelo
A partir del undécimo dibujo o modelo que se publicará de una solicitud múltiple
30 EUR por dibujo o modelo
Tasas de aplazamiento (si se solicita un aplazamiento de publicación)
Dibujo o modelo único o para el primero con aplazamiento de publicación de una solicitud múltiple 40 EUR
Segundo hasta el décimo dibujo o modelo con aplazamiento de publicación de una solicitud múltiple
20 EUR por dibujo o modelo
A partir del undécimo dibujo o modelo con aplazamiento de publicación de una solicitud múltiple
10 EUR por dibujo o modelo
Ejemplo de tasas debidas para la presentación de una solicitud múltiple en que solo deben aplazarse algunos dibujos o modelos
Número de dibujo o modelo Aplazamiento Tasa de registro Tasa de publicación
Tasa de aplazamiento
xxxxxxxx-0001 Sí 230 EUR - 40 EUR
xxxxxxxx-0002 Sí 115 EUR - 20 EUR
xxxxxxxx-0003 No 115 EUR 120 EUR -
xxxxxxxx-0004 No 115 EUR 60 EUR -
xxxxxxxx-0005 No 115 EUR 60 EUR -
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Si se solicita la publicación, después del registro, para el dibujo o modelo xxxxxxxx- 0001, este será en realidad el cuarto dibujo o modelo que debe publicarse y la tasa de publicación será de 60 euros.
8.3 Medios de pago, información sobre el pago y reembolso
Los medios de pa go, la información que acompaña el pago y las condiciones de reembolso de tasas abonadas se explican en las Directrices, Parte A, Sección 3, Pago de las tasas, costas y gastos.
Las tasas se reembolsarán si la solicitud se retira o deniega sin que se haya concedido una fecha de presentación (solicitud «no tratada como una solicitud de dibujo o modelo comunitario»).
La Oficina también reembolsa los importes abonados que no resultan suficientes para satisfacer las tasas de registro y publicación (o aplazamiento) para el dibujo o modelo o como mínimo un dibujo o modelo de una solicitud múltiple.
9 Retiradas y correcciones
9.1 Introducción
El solicitante podrá, en cualquier momento del examen, retirar su solicitud de dibujo o modelo comunitario registrado o retirar algunos de los dibujos y modelos incluidos en una solicitud múltiple. Las correcciones sólo se permiten en al gunas situaciones específicas.
Cualquier corrección o cambio en el Registro y/o publicación, posterior al registro del dibujo o modelo por parte del examinador, deberá tratarse con arreglo a lo dispuesto en el apartado 11 infra.
9.2 Retirada de la solicitud
Con anterioridad al registro, el solicitante podrá, en cualquier momento, retirar su solicitud de di bujo o modelo comunitario registrado o, en el caso de una solicitud múltiple, retirar algunos de l os dibujos y modelos incluidos en l a solicitud múltiple (artículo 12, apartado 1, del REDC). El examinador enviará una confirmación de la retirada.
Las solicitudes de retirada deberán presentarse por escrito y deberán incluir:
• el número de expediente de la solicitud de dibujo o modelo comunitario registrado o, si la solicitud de retirada se presenta antes de que haya sido asignado un número de solicitud, cualquier información que permita identificar la solicitud, como el número de referencia del solicitante/representante y/o el número de expediente provisional mencionado en el recibo automático para las solicitudes presentadas a través del sistema de presentación electrónica;
• en caso de una solicitud múltiple, una indicación del dibujo o modelo que el solicitante desea retirar si únicamente se retiran algunos;
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• el nombre y dirección del solicitante y/o, en su caso, el nombre y dirección del representante.
La «fecha de retirada» es la fecha en que la Oficina recibe la solicitud de retirada.
Si ha sido asignada una fecha de presentación no se reembolsarán las tasas, excepto si el importe abonado por el solicitante resulta insuficiente para satisfacer las tasas de registro y publicación (o aplazamiento, según el caso) del dibujo o modelo, o de al menos un dibujo o modelo de una solicitud múltiple.
Las solicitudes de retirada recibidas por la Oficina en la fecha de registro del dibujo o modelo o posteriormente serán tratadas como solicitudes de renuncia.
Las solicitudes de retirada recibidas por la Oficina en la fecha de presentación de la solicitud de dibujo o modelo se aceptarán incluso si el dibujo o modelo se registra ese mismo día.
9.3 Correcciones a la solicitud
9.3.1 Elementos sujetos a corrección
A petición del solicitante, solo podrá corregirse el nombre y la dirección del solicitante o del representante, errores de redacción o de copia, o errores manifiestos (artículo 12, apartado 2, del REDC).
Además del nombre y la dirección del solicitante o del representante, podrán corregirse los siguientes elementos, a petición del solicitante, si contienen errores de redacción o de copia o errores manifiestos:
• la fecha de presentación, si la solicitud ha sido presentada en el servicio central de la propiedad industrial de un Estado miembro o en laOficina de Propiedad Intelectual del Benelux (BOIP), tras notificación por parte de la oficina que se ha cometido un error relativo a la fecha de recepción;
• el nombre del diseñador o equipo de diseñadores; • la segunda lengua; • una indicación del producto o de los productos; • la clasificación de Locarno de los productos incluidos en la solicitud; • el país, la fecha y el número de l a solicitud anterior en que se reivindica la
prioridad de convenio; • el nombre, el lugar y la fecha de la primera exhibición del dibujo o modelo
cuando se reivindica una prioridad de exposición; • la descripción.
9.3.2 Elementos que no pueden ser objeto de corrección
Por principio, la representación del dibujo o modelo no podrá ser modificada después de que haya sido presentada la solicitud (artículo 12, apartado 2, del REDC). No se admitirá la presentación de perspectivas adicionales o la retirada de cualquiera de las perspectivas en una fase posterior, a menos que así lo permita o exija la Oficina (véanse los apartados 5.2 y 5.5).
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Si una solicitud de corrección modifica la representación del dibujo o modelo, se informará al solicitante de que su solicitud no es admisible. El solicitante deberá decidir si desea continuar con el proceso de registro o si desea presentar una nueva solicitud por la que deberá abonar las tasas aplicables.
9.3.3 Procedimiento para solicitar una corrección
En toda petición de corrección de una solicitud deberán constar:
a) el número de expediente de la solicitud; b) el nombre y dirección del solicitante; c) si el solicitante ha designado a un representante, el nombre y dirección
profesional del representante; d) la indicación de la parte de la solicitud que hay que corregir y la versión corregida
de dicho elemento.
Para corregir el mismo elemento en dos o más solicitudes pertenecientes al mismo solicitante se podrá presentar una única petición de corrección.
Si se cumplen todos los requisitos, el examinador enviará una c onfirmación de l a corrección.
Las correcciones y las modificaciones después del registro serán tratadas por el Departamento de Apoyo a las Operaciones (véase el apartado 11).
9.3.4 Irregularidades
Si la petición de corrección no cumple los requisitos anteriores y la irregularidad que se detecta puede ser subsanada, el examinador invitará al solicitante a subsanar la irregularidad en un plazo de dos meses. Si las irregularidades no s e subsanaren dentro del plazo preceptivo, el examinador denegará la petición de corrección.
Las peticiones de corrección que tendrían el efecto de modificar la representación del dibujo o modelo se denegarán de forma irremediable.
No se admitirán descripciones presentadas después de l a fecha de presentación (véase el apartado 6.2.2 supra). Por lo tanto, se denegarán las peticiones de corrección que supongan presentar una des cripción después de la fecha de presentación de la solicitud.
10 Registro, publicación y certificados
10.1 Registro
Una vez que se finalice el examen de los motivos de denegación absolutos y de los requisitos formales, el examinador deberá garantizar que se proporciona toda la información contemplada en el artículo 14 del REDC, (la información que es obligatoria para el solicitante y que se debe indicar en l a solicitud están resaltadas en negro a continuación):
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(a) la fecha de presentación de la solicitud; (b) el número de expediente de la solicitud y de cada uno de los dibujos o modelos
individuales incluidos en una solicitud múltiple; (c) la fecha de publicación del registro; (d) el nombre, dirección y nacionalidad del solicitante y Estado en que tenga
su domicilio, sede o establecimiento; (e) el nombre y la dirección profesional del representante, siempre que no sea
un empleado que actúe como representante de conformidad con el artículo 77, apartado 3, primera frase, del RDC; en el caso de que haya varios representantes, únicamente se inscribirán el nombre y la dirección profesional del citado en primer lugar, seguido de las palabras «et al.»; si se designa a una asociación de representantes, únicamente se hará constar el nombre y dirección de la asociación;
(f) la representación del dibujo o modelo; (g) una relación de los productos por sus nombres, precedidos del número de la
clase correspondiente y agrupados por clases y subclases de la Clasificación de Locarno;
h) los datos relativos a la reivindicación de pr ioridad con arreglo al artículo 42 del RDC;
(i) los datos relativos a la reivindicación de pr ioridad de exposición con arreglo al artículo 44 del RDC;
(j) una mención del diseñador o del equipo de diseñadores o una declaración de que el diseñador o el equipo de diseñadores ha renunciado al derecho a ser mencionado;
(k) la lengua en que se ha presentado la solicitud y la segunda lengua que ha indicado el solicitante en su solicitud, de conformidad con el artículo 98, apartado 2, del RDC;
(l) la fecha de inscripción del dibujo o modelo en el Registro y el número de registro; (m) una mención de cualquier petición de apl azamiento de la publicación de
conformidad con el artículo 50, apartado 3, del RDC, en la que se especifique la fecha de expiración del periodo de aplazamiento;
(n) una mención de que se ha depositado una muestra de conformidad con el artículo 5 del REDC;
(o) una mención de que se ha depositado una muestra de conformidad con el artículo 1, apartado 2, letra a), del REDC;
(p) una mención de que la representación del dibujo o modelo incluye un elemento verbal.
Una vez constatados todos los elementos de la lista de control, el examinador comprobará si se han abonado las tasas aplicables.
Si no se detectan irregularidades, se procederá a registrar la solicitud.
10.2 Publicación
10.2.1 Principios generales
Todos los dibujos o modelos comunitarios registrados se publican en el Boletín de Dibujos y Modelos Comunitarios, que se publica solo en formato electrónico, en el sitio web de la OAMI.
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Sin embargo, los registros internacionales que designan a la Unión Europea se publican en la OMPI (Boletín Hague Express) (véase el apartado 12).
A menos que una solicitud incluya una petición de aplazamiento de publicación, la publicación tendrá lugar inmediatamente después del registro; dicha publicación es una publicación diaria.
Si una solicitud incluye una petición de aplazamiento de publicación, la publicación se efectúa en la Parte A.2. del Boletín y se limitará a los siguientes datos: el número de dibujo o m odelo, la fecha de pr esentación, la fecha de r egistro y los nombres del solicitante y el representante, en su caso.
Si una solicitud incluye una petición de aplazamiento de publicación solo para algunos de los dibujos o modelos de una solicitud múltiple, sólo se publicarán en su totalidad los dibujos y modelos que no sean objeto de aplazamiento.
10.2.2 Formato y estructura de la publicación
El Boletín de Dibujos y Modelos Comunitarios está disponible en dos formatos:
• HTML • PDF
Ambos formatos son igualmente válidos a efectos de publicación y búsqueda.
El Boletín de Dibujos y Modelos Comunitarios incluye las cuatro partes siguientes:
• la Parte A se refiere a los registros de dibujos y modelos comunitarios e incluye tres secciones:
o Parte A.1.: los registros de dibujos y modelos comunitarios de conformidad con los artículos 48 y 50 del RDC;
o Parte A.2.: los registros de dibujos y modelos comunitarios con petición de aplazamiento y su primera publicación, según el artículo 50 del RDC y el artículo 14, apartado 3, del REDC;
o Parte A.3.: errores correspondientes a la Parte A (errores y faltas en los registros). A.3.1.: errores absolutos; A.3.2.: errores relativos.
• la Parte B se refiere a las inscripciones en el Registro posteriores al registro, como modificaciones, cesiones, licencias, etc., e incluye ocho secciones:
o Parte B.1.: errores y faltas o Parte B.2.: cesiones o Parte B.3.: procedimiento de nulidad y de reivindicación de la titularidad o Parte B.4.: renuncias y dibujos y modelos sin efecto o Parte B.5.: licencias o Parte B.6.: derechos reales o Parte B.7.: procedimientos de insolvencia o Parte B.8.: medidas de ejecución forzosa.
• la Parte C trata de las renovaciones y de la información sobre registros que han expirado; está subdividida en tres secciones:
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o Parte C.1.: renovaciones de conformidad con el artículo 13, apartado 4, del RDC y el artículo 69, apartado 3, letra m), del REDC.
o Parte C.2: registros expirados según lo dispuesto en el artículo 22, apartado 5, y el artículo 69, apartado 3, letra n), del REDC.
o Parte C.3: corrección de errores o carencias en las renovaciones y en los registros expirados.
• la Parte D atañe a la restitutio in integrum (artículo 67 del RDC) y está dividida en dos secciones:
o Parte D.1.: restitutio in integrum. o Parte D.2.: corrección de errores o carencias en la Parte D.
En el Boletín, cada mención viene precedida por el correspondiente código INID conforme a la norma ST.80 de la OMPI. En su caso, la información está publicada en todas las lenguas oficiales de la UE (artículo 70, apartado 4, del REDC).
Los códigos INID utilizados para los elementos publicados, por ejemplo, en la Parte A.1. del Boletín, son los siguientes:
21 Número de expediente. 25 Lengua de presentación de la solicitud y segunda lengua. 22 Fecha de presentación de la solicitud. 15 Fecha de inscripción en el Registro. 45 Fecha de publicación. 11 Número de registro. 46 Fecha de expiración del periodo de aplazamiento. 72 Nombre del autor, de los autores o del equipo de autores. 73 Nombre y dirección del titular. 74 Nombre y dirección profesional del representante. 51 Clasificación de Locarno. 54 Indicación del producto o productos 30 País, fecha y número de solicitud cuya prioridad se reivindica (Derecho de
prioridad por convenio). 23 Nombre, lugar y fecha en la que el dibujo o modelo se expuso por primera vez
(Derecho de prioridad por exposición). 29 Mención de que se ha presentado una muestra. 57 Mención de que se ha presentado una descripción. 55 Representación del dibujo o modelo.
La publicación se efectúa en todas las lenguas de la UE que sean oficiales en la fecha de la publicación.
10.3 Certificado de registro
Se expide un certificado de registro después de se haya publicado completamente el dibujo o modelo comunitario registrado (es decir, la publicación en la Parte A.1.).
Sin embargo, la Oficina no em itirá certificados de r egistro para los registros internacionales que designan a la Unión Europea (véase el apartado 12 infra).
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Desde el 15/11/2010, solo se han emitido certificados de registro en forma de certificados electrónicos en l ínea. Se invitará a los titulares de registros de dibujos y modelos comunitarios a descargar el certificado a par tir del día siguiente a l a publicación, utilizando la herramienta “eSearch plus” en la página web de la OAMI.. No se emitirá una copia en papel del certificado de registro. Sin embargo, podrán solicitarse copias certificadas o no certificadas del certificado de registro.
El certificado incluye todos los datos inscritos en el Registro de dibujos y modelos comunitarios en la fecha de registro. No se emitirá un nuevo certificado después de los cambios efectuados en el Registro tras la fecha de registro. Sin embargo, podrá solicitarse un extracto del Registro, que refleje la actual situación administrativa del (de los) dibujo(s) y modelo(s).
Se emitirá un c ertificado corregido después de la publicación de un error relativo detectado en un registro de dibujo y modelo (Parte A.3.2.) o después de la publicación de un error relativo detectado en una inscripción (Parte B.1.2.). Un error relativo es un error imputable a la Oficina que modifica el ámbito de aplicación del registro.
11 Correcciones y cambios en el Registro y en la publicación de los registros de dibujos y modelos comunitarios
11.1 Correcciones
11.1.1 Principios generales
A petición del solicitante, sólo podrá corregirse el nombre y la dirección del solicitante, errores de redacción o de copia, o errores manifiestos, siempre que tal corrección no modifique la representación de los dibujos o modelos (artículo 12, apartado 2, del REDC) (resolución del 3 de diciembre de 2013, R 1332/2013-3 «Adapters», apartado 14 y ss.). No existen tasas por dichas solicitudes.
En caso de que el registro de los dibujos y modelos o su publicación contenga errores o carencias imputables a la Oficina, esta corregirá dichos errores y carencias de oficio o a instancia del titular (artículo 20 del REDC). No existen tasas por dichas solicitudes.
La solicitud de corrección de carencias efectuada por la Oficina solo podrá hacer referencia al contenido de la publicación del registro (artículos 49, 73 y 99 del RDC y artículos 14 y 70 del REDC) y las inscripciones en el Registro (artículos 48, 72 y 99 del RDC y los artículos 13 y 69 del REDC).
A menos que la propia Oficina cometiera un error al publicar la representación del dibujo o modelo (por ejemplo, distorsionando o alterando la representación), no se permitirá que el titular solicite la corrección de su dibujo o modelo comunitario si tal corrección tiene el efecto de alterar la representación (artículo 12, apartado 2, del REDC) ( resolución del 3 de diciembre de 2013, R 1332/2013-3 – «Adapters», apartado 14 y ss.).
Las correcciones se efectuarán tan pronto como se detecte el error, en su caso, incluso años más tarde de la inscripción original en el Registro.
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11.1.2 Petición de corrección
De conformidad con los artículos 12 y 19 del REDC, las peticiones de rectificación de errores o faltas en el Registro y en la publicación del registro deben incluir:
a) el número de registro del dibujo y modelo comunitario registrado; b) el nombre y dirección del titular tal y como aparece en el Registro, o nombre del
titular y número de identificación asignado al titular por la Oficina; c) cuando el titular haya nombrado a un representante, nombre y dirección
profesional del mismo, o nombre del representante y número de identificación asignado al representante por la Oficina;
d) una indicación de la inscripción en el Registro y/o del contenido de la publicación del registro que deben corregirse y la versión corregida del elemento en cuestión.
Se podrá hacer una única solicitud de corrección de errores y carencias respecto de dos o más registros de un mismo titular (artículo 19, apartado 4 y artículo 20 del REDC).
Si no se cumplieran los requisitos para proceder a la corrección, la Oficina comunicará esta irregularidad al solicitante. Si no se subsanase dentro del plazo de dos meses señalados por la Oficina, esta desestimará la solicitud de corrección (artículo 19, apartado 5 y artículo 20 del REDC).
Se desestimarán las solicitudes de corrección de errores o c arencias que no s ean inscripciones en el Registro y/o no se refieran a los contenidos de la publicación de los registros. De acuerdo con lo anterior, se desestimarán las solicitudes de corrección de la descripción que explica la representación del dibujo o modelo o la muestra.
Los errores en la traducción de la indicación de los productos a las lenguas oficiales de la Unión Europea se considerarán imputables a la Oficina y serán corregidos, ya que dichas traducciones son inscripciones en el Registro y parte de los contenidos de la publicación del registro, y ello a pesar de que estas no se realicen en la Oficina, sino en el Centro de Traducción de los Órganos de la Unión Europea (Comunicación nº 4/05 del Presidente de la Oficina de 14/6/2005 relativa a la corrección de errores y carencias en el Registro y en la publicación del registro de dibujos y modelos comunitarios).
En caso de duda, dará fe el texto en la lengua de la Oficina en la que se presentó la solicitud de dibujo o modelo comunitario (artículo 99, apartado 3, del RDC). Si la solicitud se presentó en una lengua oficial de la Unión Europea distinta de una de las lenguas de la Oficina, dará fe el texto redactado en la segunda lengua indicada por el solicitante.
11.1.3 Publicación de las correcciones
Se comunicará al titular toda modificación producida en el Registro (artículo 69, apartado 5, del REDC).
Las correcciones serán publicadas por la Oficina en l a Parte A.3. del Boletín de Dibujos y Modelos Comunitarios e inscritas en el Registro junto con la fecha de su registro (artículo 20 y artículo 69, apartado 3, letra e), del REDC).
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Cuando el error o carencia sea imputable a la Oficina, tras su publicación, la Oficina expedirá para el titular un certificado de registro que contenga las inscripciones en el Registro (artículo 69, apartado 2, del REDC) y una declaración que certifique que tales inscripciones han sido inscritas en el Registro (artículo 17 del REDC).
En caso de que el error o la carencia sean imputables al titular, sólo se emitirá un certificado de registro que refleje el error o la carencia corregidos en caso de que previamente no se haya expedido ningún otro. En cualquier caso, los titulares siempre podrán pedirle a la Oficina un extracto del Registro (certificado o no) que refleje la situación actual de su dibujo o modelo.
11.2 Cambios en el Registro
11.2.1 Introducción
Esta sección describe los cambios en el Registro de dibujos y modelos comunitarios, a saber:
• renuncia de un dibujo o modelo comunitario con o sin aplazamiento, en particular una renuncia parcial;
• cambios en el nombre y dirección del solicitante y/o del representante, en su caso, que han sido notificados a la Oficina antes del registro del dibujo o modelo comunitario (es decir, antes de la emisión de la notificación del registro);
• cambios en el nombre y la dirección del titular y/o del representante, en su caso, de un dibujo o modelo comunitario con publicación aplazada que aún no haya sido publicado;
• inscripción de cesiones; • inscripción de licencias.
11.2.2 Renuncia del dibujo y modelo comunitario registrado
11.2.2.1 Principios generales
El titular podrá renunciar en c ualquier momento al dibujo o modelo comunitario después del registro. La renuncia se declarará por escrito ante la Oficina (artículo 51 del RDC).
Sin embargo, la renuncia de un dibujo o modelo internacional que designa a la Unión Europea deberá presentarse e i nscribirse en la Oficina Internacional (véase el artículo 16 del Acta de Ginebra y el apartado 12.2.2.5 infra).
La renuncia también puede declararse sólo para algunos de los dibujos o modelos incluidos en un registro múltiple (artículo 27, apartado 1, letra d), del REDC).
El efecto de una declaración de renuncia comienza en la fecha en que se inscribe la renuncia en el Registro de dibujos y modelos comunitarios, sin efectos retroactivos (artículo 51, apartado 1, del RDC). Sin embargo, si se renuncia a un dibujo o modelo comunitario cuya publicación ha sido aplazada, se considerará que el mismo no surtirá en ningún momento los efectos previstos en el RDC (artículo 51, apartado 2, del RDC).
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Podrá renunciarse parcialmente a un di bujo o modelo comunitario registrado siempre que su forma modificada cumpla los requisitos de protección y mantenga su identidad (artículo 51, apartado 3, del RDC). La renuncia parcial se limitará, por tanto, a los casos en que las características suprimidas o no reivindicadas no contribuyan a la novedad o al carácter singular del dibujo o modelo comunitario, en particular:
• cuando el dibujo o modelo comunitario se incorpora a un producto que constituya un componente de un producto complejo y las características que se suprimen o que no se reivindican son invisibles durante la utilización normal del producto complejo (artículo 4, apartado 2, del RDC); o
• cuando las características suprimidas o no reivindicadas están dictadas por su función o a efectos de interconexión (artículo 8, apartados 1 y 2 del RDC); o
• cuando las características que se suprimen o no se reivindican son tan insignificantes en función de su tamaño e importancia que es probable que pasen desapercibidas para el usuario informado.
La renuncia se inscribirá en el Registro sólo con el consentimiento del titular de l os derechos inscritos en el Registro (artículo 51, apartado 4, del RDC). Entre las personas que tienen un der echo registrado se incluyen los titulares de una l icencia registrada, los titulares de un derecho real registrado, los acreedores de una ejecución forzosa registrada o la autoridad competente para el procedimiento de quiebra o similar.
En el caso de licencias inscritas en el Registro de dibujos y modelos comunitarios, la renuncia de un dibujo y modelo comunitario se inscribe en el Registro únicamente después de r ecibir pruebas de q ue el titular del derecho ha i nformado de el lo al licenciatario de l a renuncia. La renuncia se inscribirá en el Registro tres meses después de la fecha en la que la Oficina haya recibido pruebas de que el titular ha informado de ello al licenciatario de la renuncia o con anterioridad si se obtienen pruebas del consentimiento del licenciatario (artículo 51, apartado 4, del RDC; artículo 27, apartado 2, del REDC).
Cuando se interponga una acción judicial en r eivindicación de l a titularidad de un dibujo o modelo comunitario registrado, de conformidad con el artículo 15 del RDC, la renuncia se inscribirá en el Registro únicamente con el consentimiento del reclamante (artículo 27, apartado 3, del REDC).
11.2.2.2 Requisitos formales para la declaración de renuncia
La declaración de renuncia contendrá los datos a que se refiere la regla 27, apartado 1, del REDC:
a) el número de registro del dibujo y modelo comunitario registrado; b) el nombre y la dirección del titular; c) el nombre y la dirección del representante, en su caso; d) la indicación de los dibujos y modelos cuya renuncia se declare en caso
de registros múltiples; e) una representación de un dibujo o modelo modificado, de conformidad
con el artículo 4 del REDC en el caso de renuncia parcial.
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En el caso de una renuncia parcial, el titular deberá presentar una representación del dibujo o modelo comunitario modificado (artículo 27, apartado 1, letra e), del REDC).
Si la declaración de renuncia no incluye todos los datos que se han indicado anteriormente y no c umple los requisitos anteriores, según la situación, la Oficina notificará al titular las irregularidades y le pedirá que las subsane dentro del plazo establecido. Si las irregularidades no se subsanan dentro del plazo, la renuncia no se inscribirá en el Registro y se informará por escrito al titular del dibujo o modelo comunitario (artículo 27, apartado 4, del REDC).
11.2.3 Cambios en el nombre o en la dirección del solicitante/titular y/o de su representante
El titular del dibujo o modelo comunitario podrá solicitar la inscripción en el Registro del cambio del nombre o de la dirección, presentando una petición por escrito a la Oficina. Las inscripciones de los cambios de nombre y/o dirección son gratuitas.
La solicitud de inscripción del cambio de nombre o dirección respecto de un dibujo o modelo internacional que designa a la Unión Europea podrá presentarse en la Oficina Internacional (véase el artículo 16 del Acta de Ginebra).
Para obtener más información sobre las diferencias entre un cambio de nombre y una cesión, véanse las Directrices relativas al examen de las marcas comunitarias, Parte E, Sección 3, Capítulo 1, Cesiones.
Se podrá presentar una única solicitud de cambio de nombre o dirección en relación con dos o más registros que pertenecen al mismo titular.
Las peticiones de cambio de nom bre o di rección por parte del titular de un dibujo o modelo comunitario deberán incluir:
a) el número de registro del dibujo y modelo comunitario; b) el nombre y la dirección del titular tal como se inscribió en el Registro o el
número de identificación del titular; c) una indicación del nombre y de la dirección del titular después del cambio; d) el nombre y la dirección del representante, en su caso.
Si no se cumplen los requisitos anteriores, la Oficina enviará una carta de irregularidad. En caso de no subsanarse dicha irregularidad en el plazo establecido, la Oficina desestimará la solicitud (artículo 19, apartado 5, del REDC).
Los cambios de no mbre y dirección de l os solicitantes de di bujos o m odelos comunitarios relacionados con la solicitud de di bujos y modelos comunitarios no s e inscribirán en el Registro aunque deberán inscribirse en los expedientes de la Oficina relativos a las solicitudes de dibujos y modelos comunitarios (artículo 19, apartado 7, del REDC).
Los cambios de titulares de l os registros de dibujos y modelos comunitarios se publican en l a Parte B.2.2. del Boletín de D ibujos y Modelos comunitarios, mientras que las cesiones de derechos se publican en la Parte B.2.1. Los cambios en los
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representantes se publican en la Parte B.9. del Boletín de Dibujos y Modelos Comunitarios.
11.2.4 Cesiones
11.2.4.1 Introducción
El registro de dibujo o modelo comunitario podrá ser cedido por el titular y, previa petición, las cesiones se inscribirán en el Registro. Sin embargo, la solicitud de inscripción de una cesión respecto de un dibujo o modelo internacional que designa a la Unión Europea deberá presentarse en la Oficina Internacional (véase el artículo 16 del Acta de Ginebra).
Las normas contenidas en el RDC, el REDC y el RTDC relativas a las cesiones concuerdan con las disposiciones del RMC, el REMC y el RTMC, respectivamente (véanse las Directrices relativas al examen de las marcas comunitarias, Parte E, Capítulo 1, Cesiones).
Los principios jurídicos y el procedimiento relativo al registro de cesiones de marcas se aplicarán mutatis mutandis a los dibujos y modelos comunitarios, con las siguientes especificidades.
11.2.4.2 Derechos de uso anterior respecto de un dibujo o modelo comunitario registrado
El derecho basado en el uso anterior de un dibujo o modelo comunitario registrado no podrá ser cedido, salvo si el tercero que reivindica la titularidad de dicho derecho antes de la fecha de presentación o de prioridad de la solicitud de dibujo o modelo comunitario registrado es una empresa, junto con la parte de esa empresa en el marco de la cual se haya efectuado el uso o se hayan realizado los preparativos (artículo 22, apartado 4, del RDC).
11.2.4.3 Tasas
La tasa de 200 EUR para la inscripción de una cesión se aplica por dibujo o modelo, con un límite máximo de 100 EUR si las solicitudes múltiples se presentan en la misma solicitud (puntos 16 y 17 del anexo del RTDC).
11.2.5 Licencias
11.2.5.1 Principios generales
El registro de dibujo o modelo comunitario podrá ser objeto de licencia por el titular y, previa petición, las licencias se inscribirán en el Registro. Las normas del RDC y del REDC relativas a las licencias de dibujos y modelos comunitarios (artículos 27, 32 y 33 y artículo 51, apartado 4, del RDC; artículos 24 y 25 y artículo 27, apartado 2, del REDC) son casi idénticas a aquellas del RMC y del REMC (véanse las Directrices relativas al examen de las marcas comunitarias, Parte E, Capítulo 2, Licencias).
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Los principios jurídicos y el procedimiento relativo al registro de licencias de marcas se aplicarán mutatis mutandis a los dibujos y modelos comunitarios (artículo 24, apartado 1, del REDC) con las siguientes especificidades.
11.2.5.2 Dibujos y modelos comunitarios registrados
En la legislación sobre dibujos y modelos comunitarios no se exige un requisito de uso. Por lo tanto, no se plantea la cuestión de si el uso por parte del licenciatario constituye un uso sin el consentimiento del titular del derecho.
El RDC y el REDC establecen la obligación de indicar los productos a los que se pretende incorporar o aplicar el dibujo o modelo (véase el apartado 6.1.4 supra). No es posible una licencia parcial concedida para algunos productos a los que se pretende incorporar o aplicar el dibujo o modelo.
La Oficina no tomará en consideración ninguna de estas limitaciones del alcance de la licencia y procederá al registro de la misma como si tales restricciones no existieran.
11.2.5.3 Solicitudes múltiples de dibujos y modelos comunitarios registrados
Una solicitud de dibujo o modelo comunitario registrado podrá presentarse en forma de solicitud múltiple por la que se combinan varios dibujos o modelos (artículo 37 del RDC).
Cada dibujo o modelo que figure en una solicitud múltiple podrá ser objeto de licencia independientemente de los demás dibujos y modelos (artículo 24, apartado 1, del REDC).
11.2.5.4 Tasas
La tasa de 200 EUR para la inscripción, cesión o anulación de una licencia se aplica por dibujo o modelo, no por solicitud, con un límite máximo de 100 EUR si las solicitudes múltiples se presentan en la misma solicitud (puntos 18 y 19 del anexo del RTDC).
Ejemplo 1: En una solicitud múltiple con diez dibujos y modelos, se ha concedido una licencia de seis de ellos al mismo licenciatario. La tasa de registro de las licencias será de 1 000 EUR siempre que:
• las seis licencias estén incluidas en una única solicitud de registro, o • las correspondientes solicitudes se presenten el mismo día.
La solicitud podrá indicar que la licencia es exclusiva para tres de los seis dibujos o modelos, sin que ello repercuta en las tasas que deberán abonarse.
Ejemplo 2: En una solicitud múltiple con diez dibujos y modelos, se ha concedido una licencia de c inco de ellos al mismo licenciatario. Asimismo se ha concedido una licencia para otro dibujo o modelo que no figura en dicha solicitud múltiple. La tasa es de 1 000 EUR siempre que:
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• las seis licencias se incluyan en una única solicitud de registro o que todas las solicitudes pertinentes se presenten el mismo día,
• el titular del dibujo o modelo comunitario y el licenciatario sean los mismos en los seis casos.
12 Registros internacionales
En esta parte de las Directrices se describen las particularidades del examen de los registros internacionales que designan a la Unión Europea que resultan de las solicitudes presentadas en la Oficina Internacional de l a Organización Mundial de l a Propiedad Intelectual (en adelante denominados «registros internacionales» y la «Oficina Internacional») conforme al Acta de Ginebra de 2 /7/1999 del Arreglo de La Haya relativo al Registro Internacional de Dibujos y Modelos Industriales.
12.1 Descripción general del Sistema de La Haya
12.1.1 El Arreglo de La Haya y el Acta de Ginebra
El Arreglo de La H aya es un s istema de registro internacional que posibilita la obtención de protección para los dibujos y modelos en una serie de Estados y/o organizaciones intergubernamentales, como la Unión Europea o la Organización Africana de l a Propiedad Industrial, a través de una única solicitud internacional presentada en l a Oficina Internacional. En virtud del Arreglo de La H aya, una úni ca solicitud internacional sustituye a todo el conjunto de solicitudes que, de otro modo, deberían presentarse en las diferentes oficinas nacionales de la propiedad intelectual o en las organizaciones intergubernamentales.
El Arreglo de La Haya está compuesto por tres tratados internacionales independientes: el Acta de Londres (1934), cuya aplicación fue congelada a partir del 1/1/2010, el Acta de La Haya (1960) y el Acta de Ginebra (1999). Cada Acta contiene un conjunto distinto de disposiciones jurídicas, que son independientes entre sí.
Los registros internacionales que designan a la Unión Europea quedan regidos por el Acta de Ginebra.
A diferencia del «Protocolo concerniente al Arreglo de M adrid relativo al registro internacional de marcas» de Madrid, ni el Acta de Ginebra ni el RDC establecen procedimientos de conversión o de transformación de un registro internacional en un dibujo o modelo nacional o comunitario o en designaciones de Estados miembros parte del sistema de La Haya, ni de sustitución de los dibujos o modelos nacionales o comunitarios por un registro internacional que designa a la parte contratante en cuestión.
12.1.2 Procedimiento de presentación de solicitudes internacionales
12.1.2.1 Particularidades
Otra diferencia con el Sistema de M adrid es que el Acta de G inebra no permite, ni requiere, que los registros internacionales estén basados en un dibujo o modelo
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comunitario o nacional previamente presentado. La OAMI solo puede ser una «oficina designada» no una «o ficina de origen». Las solicitudes internacionales deberán presentarse, por lo tanto, directamente en la Oficina Internacional (artículo 106 ter del RDC).
El Acta de Ginebra y el Reglamento Común relativo al Acta de 999 y el Acta de 1960 del Arreglo de La Haya (en adelante, el «Reglamento Común») contienen normas especiales, que pueden ser distintas de las aplicables a las «presentaciones directas» de dibujos y modelos comunitarios, es decir, las solicitudes presentadas directamente ante la OAMI o a través de un servicio central de la propiedad industrial de un Estado miembro o, en los países del Benelux, la Oficina de la Propiedad Intelectual del Benelux (BOIP) (véase el apartado 2.2.1 supra). Estas normas específicas hacen referencia, en particular, al derecho a presentar una s olicitud internacional, el contenido de una solicitud internacional, las tasas, el aplazamiento de publicación, el número de dibujos y modelos que pueden ser incluidos en una solicitud múltiple (hasta 100), la representación ante la Oficina Internacional y el uso de l as lenguas (una solicitud internacional debe estar redactada en inglés, francés o español).
12.1.2.2 Aplazamiento de la publicación
Una solicitud internacional puede contener una solicitud de aplazar la publicación del dibujo o modelo, o de todos los dibujos o modelos incluidos en una solicitud múltiple. El Acta de Ginebra no permite que se solicite el aplazamiento de la publicación solo para algunos de los dibujos o modelos contenidos en una solicitud múltiple (artículo 11 del Acta de Ginebra).
El plazo de aplazamiento de la publicación de una solicitud internacional que designa a la Unión Europea es de treinta meses a partir de la fecha de presentación o, cuando se reivindica prioridad, la fecha de prioridad. La solicitud se publicará al final de dicho periodo de treinta meses, a menos que el titular presente una solicitud de publicación anterior a la Oficina Internacional (artículo 11 del Acta de Ginebra).
El procedimiento que se describe en el apartado 6.2.5 supra no resulta aplicable puesto que la Oficina no es responsable de la publicación de los registros internacionales que designan a la Unión Europea.
12.1.2.3 Tasas
Deben abonarse tres tipos de tasas6 para una solicitud internacional que designa a la Unión Europea, a saber:
• una tasa de base; • una tasa de publicación; • una tasa de designación individual, es decir, 62 EUR por dibujo o modelo,
convertidos en francos suizos (artículo 106 quater del RDC; artículo 1 bis del anexo del RTDC; regla 28 del Reglamento Común).
6 Véase la página web www.wipo.int/hague/es/fees
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12.1.3 Examen realizado por la Oficina Internacional
Cuando recibe una solicitud internacional, la Oficina Internacional comprueba que se cumplen los requisitos formales, como aquellos relativos a l a calidad de l as reproducciones del (de los) dibujo(s) y modelo(s) y al pago de las tasas pertinentes. Se informará al solicitante de cualquier irregularidad, que deberá corregirse en el plazo señalado de tres meses, a falta de lo cual la solicitud internacional se dará por abandonada.
Si la solicitud internacional cumple con los requisitos formales exigibles, la Oficina Internacional la inscribirá en el Registro Internacional y (a menos que se haya pedido un aplazamiento de la publicación) publicará el correspondiente registro en el «Boletín de Dibujos y Modelos Internacionales». La publicación se efectúa electrónicamente en el sitio web de l a Organización Mundial de l a Propiedad Intelectual («OMPI») y contiene todos los datos pertinentes relativos al registro internacional, incluida una reproducción del dibujo o modelo.
La Oficina Internacional notifica el registro internacional a todas las oficinas designadas, las cuales tendrán la opción de d enegar la protección por motivos de fondo.
12.2 El papel de la Oficina como oficina designada
A continuación se explica cómo la Oficina trata los registros internacionales desde la notificación por la Oficina Internacional hasta la resolución final de aceptar o denegar la designación de la Unión Europea.
Las principales tareas que la Oficina debe llevar a cabo como Oficina designada son:
• la recepción del registro internacional que designaa la Unión Europea; • el examen de motivos absolutos.
12.2.1 Recepción del registro internacional que designa a la Unión Europea
Las comunicaciones entre la Oficina y la Oficina Internacional se realizan por medios electrónicos (artículo 43, apartado 3, del REDC).
12.2.2 Causas de denegación de registro
Una vez que el registro internacional que designa a la Unión Europea haya sido notificado a la Oficina por la Oficina Internacional, se aplicarán las normas establecidas en el Título XI bis del RDC y el artículo 11 bis del REDC (Examen de los motivos de denegación) (artículo 106 bis, apartado 1, del RDC).
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12.2.2.1 Conformidad con la definición de un di bujo o modelo, el orden público y las buenas costumbres
Un registro internacional no p uede denegarse por no cumplir requisitos formales, puesto que estos requisitos deben c onsiderarse ya satisfechos tras el examen realizado por la Oficina Internacional.
La Oficina limita su examen a dos motivos de denegación absolutos (artículo 11 bis del REDC). La solicitud internacional se denegará si el dibujo o modelo no se corresponde con la definición incluida en el artículo 3, letra a), del RDC, o si es contrario al orden público o a las buenas costumbres (artículo 9 del RDC) (véase el apartado 4 supra).
El examen de las causas de denegación de los registros internacionales se llevará a cabo como si el dibujo o modelo hubiera sido solicitado directamente en la Oficina. Los plazos y otros aspectos procesales generales que regulan dicho examen son los mismos que se aplican para las solicitudes de dibujos y diseños presentadas ante la Oficina (véase la Introducción, apartado 1.2.3, y apartado 4.3 supra).
12.2.2.2 Plazos
La Oficina deberá informar a la Oficina Internacional de cualquier denegación de protección en el plazo de seis meses desde la publicación del registro internacional en el sitio web de la OMPI (artículo 11 bis, apartado 1, del REDC).
La denegación preliminar debe ser motivada y hará constar las causas en que se basa la denegación. Deberá concederse al titular del registro internacional la oportunidad de ser oído (artículo 106 sexies, apartados 1 y 2, del RDC).
Por lo tanto, en el plazo de dos meses a partir de la fecha de recepción de la notificación de la denegación provisional por parte del titular del registro internacional, este último tendrá la oportunidad de renunciar al registro internacional, limitar dicho registro a uno o algunos de los dibujos y modelos de la Unión Europea o presentar observaciones (artículo 11 bis, apartado 2, del REDC).
La Oficina Internacional reenviará la notificación de la denegación provisional al titular (o a su representante ante la OMPI, en su caso). El titular deberá responder directamente a la Oficina o, en su caso, a través de su representante (véase el apartado 12.2.2.4 infra).
Para más información sobre las prórrogas de los plazos, véase la Introducción, apartado 1.2.3 supra.
12.2.2.3 Lenguas
La solicitud internacional debe pr esentarse en inglés, francés o español (regla 6, apartado 1, del Reglamento Común). En la inscripción y en la publicación del registro internacional se indicará la lengua en que la Oficina Internacional ha recibido la solicitud internacional (regla 6, apartado 2, del Reglamento Común). En la práctica, podrá identificarse esta lengua a partir de la indicación del producto (código INID 54): la primera lengua utilizada en l a indicación del producto será la lengua en que la Oficina Internacional recibió la solicitud internacional. Las indicaciones proporcionadas
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en las otras dos lenguas serán traducciones facilitadas por la Oficina Internacional (regla 6, apartado 2, del Reglamento Común).
La lengua en que la Oficina Internacional recibió la solicitud internacional será la primera lengua de la designación de la UE y, por lo tanto, se convertirá en la lengua del procedimiento de examen (artículo 98, apartados 1 y 3, del RDC).
En todas las comunicaciones con la Oficina Internacional, la Oficina utilizará, por lo tanto, la lengua en que se presentó el registro internacional.
Si el titular desea utilizar una lengua de la Oficina distinta, deberá proporcionar una traducción a la lengua en que fue presentado el registro internacional, en el plazo de un mes a partir de la fecha de presentación del documento original (artículo 98, apartado 3, del RDC; artículo 81, apartado 1, del REDC). Si la traducción no se recibe en el plazo señalado, el documento original no se considerará recibido por la Oficina.
12.2.2.4 Representación profesional
Si la representación es obligatoria con arreglo al artículo 77, apartado 2, del RDC (véase el apartado 2.5 supra), se podrá solicitar al titular que, en el plazo de dos meses, designe a un representante profesional ante la Oficina, de conformidad con el artículo 78, apartado 1, del RDC (artículos 11 bis, apartado 3, del REDC).
En caso de que el titular no des igne un representante en el plazo establecido, la Oficina desestimará la protección del registro internacional (artículo 11 bis, apartado 4, del REDC).
12.2.2.5 Renuncia y limitación
En caso de que el titular renuncie al registro internacional o lo limite a uno o al gunos de los dibujos y modelos para la Unión Europea, informará de ello a la Oficina Internacional según el procedimiento de inscripción de conformidad con lo dispuesto en el artículo 16, apartado 1, incisos iv) y v), del Acta de Ginebra. El titular podrá informar a l a Oficina mediante el envío de la correspondiente declaración (artículo 11 bis, apartado 6, del REDC).
12.2.2.6 Concesión de protección
Cuando la Oficina no encuentra ningún motivo para denegar la protección o cuando se retira la denegación preliminar, la Oficina informará inmediatamente de ello a la Oficina Internacional.
12.2.2.7 Denegación
En caso de que el titular no remita observaciones que la Oficina estime satisfactorias en el plazo prescrito, la Oficina confirmará su decisión de denegar la protección al registro internacional. Si la denegación afecta solo a parte de los dibujos y modelos de un registro internacional múltiple, la Oficina denegará el registro exclusivamente en la medida en que afecte a dichos dibujos y modelos (artículo 11, apartado 3, del REDC).
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El RDC y el REDC no contemplan normas que permitan al solicitante pedir correcciones del dibujo o modelo con el fin de superar el deniego de protección de un registro internacional. Sin embargo, el solicitante puede renunciar a la designación de la Unión Europea, dirigiéndose directamente a la OMPI, que a su vez notificará dicha renuncia a la Oficina.
El titular del registro internacional dispone de los mismos recursos de que dispondría si hubiera presentado el dibujo o modelo directamente ante la Oficina. El consiguiente procedimiento tendrá lugar únicamente a e scala de l a Oficina. El titular podrá interponer un recurso ante la Sala de Recurso contra una resolución que deniegue la protección, en el plazo y de c onformidad con las condiciones establecidas en l os artículo 55 a 60 del RDC y los artículos 34 a 37 del REDC (artículo 11 bis, apartado 5, del REDC). La Oficina Internacional no interviene en absoluto en este procedimiento.
Una vez que la resolución de denegación o aceptación del registro internacional sea firme, se remitirá a la Oficina Internacional una notificación definitiva, en la que se indicará si se ha aceptado o denegado finalmente el dibujo o modelo.
Cuando la denegación definitiva haga referencia únicamente a algunos de los dibujos o modelos incluidos en una solicitud múltiple, la notificación a la Oficina Internacional indicará qué dibujos o modelos han sido denegados y cuáles han sido aceptados.
12.3 Efectos de los registros internacionales
Si la Oficina no notifica la denegación en el sitio web de la OMPI en el plazo de seis meses a partir de la publicación del registro internacional, o si retira la notificación de denegación preliminar, el registro internacional surtirá los mismos efectos, a partir de la fecha de registro concedida por la Oficina Internacional, tal como se menciona en el artículo 10, apartado 2, del Acta de Ginebra (artículo 106 bis, apartado 2, del RDC), que si hubiera sido solicitada y registrada ante la Oficina.
Los registros internacionales pueden ser objeto de un procedimiento de nulidad con las mismas condiciones y normas procesales que las «presentaciones directas» (artículo 106 septies del RDC; véanse las Directrices relativas al examen de las solicitudes de nulidad de los dibujos y modelos). Dado que la lengua de presentación de un registro internacional que designa a la Unión Europea es necesariamente una lengua de la Oficina, una solicitud de declaración de nulidad contra dicho registro internacional deberá presentarse en dicha lengua.
La Oficina notificará al titular o a s u representante directo sobre cualquier solicitud de declaración de nulidad. El titular deberá responder directamente a la Oficina o, en su caso, a través de un r epresentante incluido en la lista de la Oficina, de conformidad con el artículo 78 del RDC (véase el apartado 2.5 supra).
Si la Oficina declara nulos los efectos de un registro internacional en el territorio de la Unión Europea, deberá informar a la Oficina Internacional de su decisión, tan pronto como esta última sea definitiva (artículo 106 septies, apartado 2, del RDC; artículo 71, apartado 3, del REDC).
Las particularidades de los procedimientos que regulan la renovación de los registros internacionales e inscripciones de los cambios de nombre, de las cesiones, renuncias o limitaciones a determinados productos, para cualquiera o todas las partes
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contratantes designadas, se tratan en l as Directrices relativas al examen de los procedimientos ante la Oficina sobre la renovación de dibujos y modelos comunitarios registrados y en los apartados 11.2.2 a 11.2.4 (artículos 16 y 17 del Acta de Ginebra; artículo 22 bis del REDC).
13 Ampliación y dibujos y modelos comunitarios registrados
En esta sección se tratan las normas relativas a la adhesión de los nuevos Estados miembros a la Unión Europea y sus consecuencias para los solicitantes y los titulares de dibujos y modelos comunitarios registrados.
El 1/5/2004 se incorporaron a l a Unión Europea diez nuevos Estados miembros (República Checa, Estonia, Chipre, Letonia, Lituania, Hungría, Malta, Polonia, Eslovenia y Eslovaquia), el 1/12007, lo hicieron dos (Bulgaria y Rumanía) y el 1/7/ 2013, se incorporó un Estado (Croacia), aumentando el número de Estados miembros hasta 28.
El artículo 110 bis del RDC incluye disposiciones relativas a la ampliación en cuanto a los dibujos y modelos comunitarios registrados. Dichas disposiciones fueron introducidas en el RDC cuando la UE se amplió en 2004 y siguen siendo aplicables a las ampliaciones sucesivas. La única modificación al texto del RDC es la adición de los nombres de los nuevos Estados miembros.
Por lo que se refiere al carácter registrable y a la validez de l os dibujos y modelos comunitarios, la ampliación de l a Unión Europea en los derechos de los dibujos y modelos comunitarios registrados tiene los efectos siguientes.
13.1 La extensión automática del dibujo o modelo comunitario a los territorios de los nuevos Estados miembros
De conformidad con el artículo 110 bis, apartado 1, del RDC, los efectos de todos los derechos de di bujos y modelos comunitarios presentados antes del 1/5/2004, el 1/1/2007 o del 1/7/2013 se extienden automáticamente a los territorios de los Estados miembros que se adhirieron en dichas fechas (artículo 110 bis, apartado 1, del RDC).
La extensión es automática en el sentido que no han de llevarse a cabo formalidades administrativas y no darán lugar al pago de tasas adicionales. Además, no puede ser objeto de oposición por el titular del dibujo o modelo comunitario o un tercero.
13.2 Otras consecuencias prácticas
13.2.1 Presentación ante las oficinas nacionales
A partir de la fecha de ampliación, la solicitud del dibujo o modelo comunitario también puede presentarse a través de un servicio central de la propiedad industrial de un nuevo Estado miembro.
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13.2.2 Representación profesional
A partir de la fecha de adhesión, ya no será necesario que los solicitantes (así como otras partes de los procedimientos ante la Oficina) que tengan su sede o domicilio en un nuevo Estado miembro estén representados por un representante profesional. A partir de la fecha de adhesión, los representantes profesionales de un nuevo Estado miembro podrán ser inscritos en la lista de representantes profesionales de la Oficina, con arreglo al artículo 78 del RDC y podrán representar a terceros ante la Oficina.
13.2.3 Primera y segunda lengua
Desde el 1/01/2004, existen nueve lenguas oficiales de l a UE nuevas, a s aber, el checo, el estonio, el letón, el lituano, el húngaro, el maltés, el polaco, el eslovaco y el esloveno. El 1/1/20077 fueron añadidas dos lenguas (búlgaro y rumano) y otra (croata) fue añadida el 1/7/2013.
Estas lenguas podrán ser utilizadas como primera lengua únicamente para las solicitudes de di bujos y modelos comunitarios presentados en l a correspondiente fecha de adhesión o con posterioridad.
13.2.4 Traducción
No será necesario traducir ni volver a publ icar en la lengua del o de los nuevos Estados miembros las solicitudes de dibujos y modelos comunitarios con una fecha de presentación anterior a la fecha de adhesión, o los registros de dibujos y modelos comunitarios existentes. Las solicitudes de dibujos y modelos comunitarios presentadas después de la fecha de adhesión serán traducidas y publicadas en todas las lenguas oficiales de la UE.
13.3 Examen de las causa de denegación del registro La Oficina limita su examen de los requisitos de protección sustantivos a únicamente dos causas de denegación del registro (artículo 47, apartado 1, del RDC). La solicitud se denegará si el dibujo o modelo no se corresponde con la definición incluida en el artículo 3, letra a), del RDC, o si es contrario al orden público o a las buenas costumbres (artículo 9, apartado 1, del RDC) (véase el apartado 4 supra).
La solicitud de registro de un di bujo o modelo comunitario no pod rá denegarse por ninguna de las causas de dene gación de registro enumeradas en el artículo 47, apartado 1, del RDC, si el hecho de que se apliquen tales causas obedece únicamente a la adhesión de un nuevo Estado miembro (artículo 110 bis, apartado 2, del RDC).
El hecho de si un dibujo o modelo comunitario es conforme al artículo 3 del RDC o si no es contrario al orden público o a las buenas costumbres se valorará normalmente sin hacer referencias a un contexto nacional o lingüístico particular.
Sin embargo, si un dibujo o modelo comunitario incluye un el emento denominativo ofensivo en una l engua que, como resultado de la adhesión de un n uevo Estado
7 En el caso del irlandés, véase el apartado 2.4. supra
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miembro, se convierta en lengua oficial de la Unión Europea después de la fecha de presentación, no será aplicable el motivo de denegación absoluto contemplado en el artículo 9, apartado 1, del RDC.
13.4 Inmunidad contra las acciones de anulación basadas en causas de nulidad que pueden ser aplicables simplemente a causa de la adhesión de un nuevo Estado miembro
13.4.1 Principio general
Los dibujos o modelos comunitarios presentados o registrados con anterioridad al 1/5/2004, el 1/1/2007 o el 1/7/2013 no serán anulados por las causas de nulidad que existen en uno de l os Estados miembros que se adhieren a l a Unión Europea en dichas fechas si dicha causa de nulidad resulta aplicable a partir de la correspondiente fecha de adhesión (artículo 110 bis, apartado 3, del RDC). Esto ilustra la necesidad de respetar los derechos adquiridos.
No todas las causas de nulidad establecidas en el artículo 25, apartado 1, del RDC podrán aplicarse «si el hecho de q ue se apliquen las causas de nul idad obedece únicamente a la adhesión de un nuevo Estado miembro».
13.4.1.1 Causas de nulidad que son aplicables con independencia de la ampliación de la UE
La adhesión de un nuevo Estado miembro no tiene efectos sobre la aplicabilidad de las siguientes cuatro causas de nulidad. El artículo 110 bis, apartado 3, del RDC n o ofrece, por tanto, protección alguna contra su aplicación respecto de los dibujos y modelos comunitarios presentados antes del 1/5/2004, el 1/1/007 o el 1/7/2013, respectivamente.
Falta de visibilidad y funcionalidad
La falta de visibilidad de un dibujo o modelo comunitario solicitado como parte de un producto complejo y las limitaciones que se aplican a las características de un dibujo o modelo dictadas únicamente por su función técnica o los requisitos de interconexión, son causas de nul idad que deben ser evaluadas basándose en el propio dibujo o modelo y no en la situación fáctica que existe en cualquier Estado miembro (artículo 25, apartado 1, letra b), del RDC, leído conjuntamente con los artículos 4 y 8 del RDC.
Novedad y carácter singular
En circunstancias normales, la falta de novedad o de c arácter singular de un dibujo o modelo comunitario no resultará afectada por la ampliación de la UE (artículo 25, apartado 1, letra b), del RDC, leído conjuntamente con los artículos 5 y 6 del RDC).
La divulgación de un dibujo o modelo con anterioridad a la presentación o la fecha de prioridad de un di bujo o modelo comunitario pueden destruir la novedad o el carácter
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singular de este último, incluso si dicha divulgación tiene lugar en un país antes de la fecha de su adhesión a la UE. El único requisito es que gracias a dicha divulgación los dibujos o modelos «hayan podido ser razonablemente conocidos en el tráfico comercial normal por los círculos especializados del sector de que se trate, que operen en la Comunidad» (artículo 7, apartado 1, del RDC).
Titularidad del dibujo o modelo comunitario
El hecho de que el titular no tenga derecho al dibujo o modelo comunitario como consecuencia de una resolución judicial constituye otra causa de nulidad que no se ve afectada por la ampliación (artículo 25, apartado 1, letra c) del RDC). El artículo 14 del RDC no impone ningún requisito de nacionalidad para la persona que reivindica ser titular de un dibujo o modelo comunitario, ni tampoco exige que la resolución judicial proceda de un tribunal ubicado en un Estado miembro.
Uso indebido de uno o más de los objetos que figuran en el artículo 6 ter del Convenio de París
La causa de nulidad de uso indebido de uno o más de los objetos que figuran en el artículo 6 ter del Convenio de París tampoco resulta afectada por la ampliación de la UE. No existe el requisito de que el signo cuyo uso se prohíbe proceda de un Estado miembro (artículo 25, apartado 1, letra g), del RDC).
13.4.1.2 Causas de nulidad debidas a la ampliación de la UE
Un dibujo o m odelo comunitario presentado con anterioridad al 30/4/2004, el 31/122006 o el 30/6/2013, o en dichas fechas, respectivamente, no podrá declararse nulo basándose en las cuatro causas de nulidad que se mencionan a continuación si el hecho de que se apliquen tales causas obedece únicamente a la adhesión de un nuevo Estado miembro en dichas fechas (artículo 110 bis, apartado 3, del RDC).
Conflicto con un dibujo o modelo anterior protegido en un nuevo Estado miembro (artículo 25, apartado 1, letra d), del RDC
Un dibujo o modelo comunitario presentado antes de la fecha de adhesión de un Estado miembro no podrá ser declarado nulo si entra en conflicto con un dibujo o modelo anterior que goza de protección en un nuevo Estado miembro desde una fecha anterior a la fecha de presentación o de prioridad del dibujo o modelo comunitario pero que ha sido hecho público en una fecha posterior.
Uso de un signo distintivo anterior (artículo 25, apartado 1, letra e), del RDC)
Un dibujo o modelo comunitario presentado antes de la fecha de adhesión de un Estado miembro no podrá ser declarado nulo basándose en el uso de un signo distintivo que haya gozado de protección en el nuevo Estado miembro en una fecha anterior desde una fecha anterior a la fecha de presentación o de prioridad del dibujo o modelo comunitario.
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Uso no autorizado de una obra protegida en virtud de la normativa sobre derechos de autor de un Estado miembro (artículo 25, apartado 1, letra f), del RDC)
Un dibujo o modelo comunitario presentado antes de la fecha de adhesión de un Estado miembro no podrá ser declarado nulo basándose en el uso no autorizado de una obra protegida en virtud de l a normativa sobre derechos de au tor de un nuevo Estado miembro desde una fecha anterior a la fecha de presentación o de prioridad del dibujo o modelo comunitario.
Uso indebido de signos, emblemas, escudos de armas, distintos de los incluidos en el artículo 6 ter del Convenio de París (artículo 25, apartado 1, letra g), del RDC)
Un dibujo o modelo comunitario presentado con anterioridad a la fecha de adhesión de un Estado miembro no puede ser declarado nulo debido al uso indebido de s ignos, emblemas o e scudos de armas, distintos de los incluidos en el artículo 6 ter del Convenio de París, que tiene un interés público especial en dicho nuevo Estado miembro.
Orden Público y buenas costumbres
Un dibujo y modelo solicitado antes de la fecha de adhesión de un nuevo Estado miembro no puede ser declarado nulo por ser contrario al orden público y buenas costumbres en territorio de dicho nuevo Estado miembro.
13.4.2 Efectos de una reivindicación de prioridad
Los dibujos o modelos comunitarios con fecha de presentación igual o posterior al 1/5/2004, el 1/1/2007 o el 1/7/2013, respectivamente, podrán ser declarados nulos basándose en las cuatro causas citadas anteriormente.
Lo anterior resulta aplicable incluso si la fecha de p rioridad del dibujo o modelo comunitario de que se trate precede a l a correspondiente fecha de adhesión. El derecho de prioridad no protege al titular del dibujo o modelo comunitario contra los cambios legislativos que resultan aplicables respecto de l a validez de su dibujo o modelo.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO
SOBRE LOS DIBUJOS Y MODELOS COMUNITARIOS REGISTRADOS
RENOVACIÓN DE DIBUJOS Y MODELOS COMUNITARIOS REGISTRADOS
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Índice de contenidos
1. Introducción............................................................................................... 3
2. ADVERTENCIA DE FRAUDE..................................................................... 3 2.1. Empresas privadas que envían facturas engañosas ...............................3 2.2. Renovación por parte de terceros no autorizados...................................4 2.3. Información de contacto............................................................................4
3. Duración de la protección......................................................................... 5
4. Notificación de expiración del registro.................................................... 5
5. Tasas y otros requisitos formales para la solicitud de renovación ...... 5 5.1 Personas que pueden solicitar la renovación ..........................................6 5.2 Contenido de la solicitud de renovación ..................................................7 5.3 Lengua del procedimiento .........................................................................7 5.4 Tasas...........................................................................................................8 5.5 Plazos..........................................................................................................9
5.5.1. Periodo de seis meses antes de la expiración para la renovación (período básico) ............................................................................................................ 9
5.5.2 Período de gracia de seis meses después de la expiración (período de gracia) ........................................................................................................................ 9
5.6 Formas de pago........................................................................................10
6. Procedimiento ante la Oficina ................................................................ 11 6.1 Competencia.............................................................................................11 6.2 Examen de los requisitos formales.........................................................11
6.2.1 Cumplimiento de plazos ............................................................................... 11 6.2.2 Cumplimiento de los requisitos formales...................................................... 12
6.3 Cuestiones no sometidas a examen .......................................................13 6.4 Modificación .............................................................................................13 6.5 Restitución de derechos..........................................................................13
7. Inscripción en el registro ........................................................................ 14
8. Fecha en que surte efectos la renovación o expiración ...................... 14
9. Renovación de registros internacionales de dibujos y modelos que designan a la Unión Europea ................................................................. 15
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1. Introducción
Existen dos formas de solicitar un di bujo o modelo comunitario registrado: (i) mediante una «s olicitud directa» en l a Oficina o en una O ficina nacional (artículo 35 y siguientes del RCD) o ( ii) mediante una s olicitud de registro internacional en la Oficina Internacional de la Organización Mundial de la Propiedad Intelectual y que designan a la Unión Europea (artículo 106bis y siguientes del RCD).
El objetivo de es tas Directrices es explicar la forma en que, en l a práctica, la Oficina aplica los requisitos del Reglamento sobre los Dibujos y Modelos Comunitarios1 (RCD), el Reglamento de E jecución sobre los Dibujos y Modelos Comunitarios2 (REDC) y el Reglamento sobre las Tasas3 (RTDC) respecto a los procedimientos de renovación relacionados con las «solicitudes directas» de dibujos y modelos comunitarios (véanse los apartados 3 a 8, infra). Estas Directrices no tienen como objetivo ni pueden añadir o eliminar disposición alguna del contenido jurídico de los Reglamentos.
A continuación, el apartado 9 hace referencia a los instrumentos pertinentes que son aplicables a la renovación de registros internacionales que designan a l a Unión Europea.
2. ADVERTENCIA DE FRAUDE
2.1. Empresas privadas que envían facturas engañosas
La Oficina es consciente de que los usuarios en Europa reciben cada vez más correo no solicitado de empresas que reclaman pagos por servicios de marcas registradas, dibujos y modelos, tales como su renovación.
En el sitio web de la Oficina figura una lista de cartas de empresas o registros que han recibido quejas de l os usuarios por ser engañosas. Tenga en c uenta que estos servicios no están relacionados con ningún servicio oficial de registro de marcas o dibujos y modelos proporcionado por las oficinas de P I u ot ros organismos públicos dentro de la Unión Europea, como lo es la OAMI.
1 Reglamento (CE) nº 6/2002 del Consejo de 12 de diciembre de 2001 sobre los dibujos y modelos comunitarios), modificado por el Reglamento (CE) nº 1891/2006 del Consejo de 18 de diciembre de 2006 por el que se modifican los Reglamentos (CE) nº 6/2002 y (CE) nº 40/94 para hacer efectiva la adhesión de la Comunidad Europea al Acta de Ginebra del Arreglo de La Haya relativo al registro internacional de dibujos y modelos industriales. 2 Reglamento (CE) nº 2245/2002 de la Comisión de 21 de octubre de 2002 de ejecución del Reglamento (CE) nº 6/2001 del Consejo sobre los dibujos y modelos comunitarios, modificado por el Reglamento (CE) nº 876/2007 de la Comisión de 24 de julio de 2007, que modifica el Reglamento (CE) nº 2245/2002, de ejecución del Reglamento (CE) nº 6/2002 del Consejo sobre los dibujos y modelos comunitarios, a raíz de la adhesión de la Comunidad Europea al Acta de Ginebra del Arreglo de La Haya relativo al registro internacional de dibujos y modelos industriales. 3 Reglamento (CE) nº 2246/2002 de la Comisión de 16 de diciembre de 2002 relativo a l as tasas, modificado por el Reglamento (CE) nº 877/2007 de la Comisión de 24 de julio de 2007 q ue modifica el Reglamento (CE) nº 2246/2002, relativo a las tasas que se han de abonar a la Oficina de Armonización del Mercado Interior (marcas, dibujos y modelos), a raíz de la adhesión de la Comunidad Europea al Acta de Ginebra del Arreglo de La Haya relativo al registro internacional de dibujos y modelos industriales.
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En caso de recibir una carta o una factura, compruebe atentamente lo que se ofrece y, especialmente, su procedencia. La OAMI nunca envía facturas o c artas a l os usuarios reclamando el pago directo de servicios (véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos).
2.2. Renovación por parte de terceros no autorizados
La Oficina también tiene constancia de estafas a través del módulo de renovación electrónica, en las que se solicita la renovación sin el consentimiento de los titulares y bloqueando así, la renovación en este módulo a las personas legítimamente autorizadas a realizar dicha renovación por esta vía. El bloqueo técnico se ha diseñado para evitar que una r enovación se abone dos veces. Si, al presentar una solicitud de renovación electrónica, descubre que la marca está «bloqueada» debido a que ya se ha solicitado la renovación, póngase en contacto con la Oficina.
2.3. Información de contacto
Si tiene cualquier duda o detecta un nuevo caso, busque asesoramiento jurídico o póngase en contacto con nosotros en el número de t eléfono +34 965 139 100 o a través de la siguiente dirección de correo electrónico: information@oami.europa.eu.
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3. Duración de la protección
Artículos 12 y 38, del RCD Artículo 10 del REDC
La duración de la protección de un dibujo o modelo comunitario registrado (DCR) es de cinco años a partir de la fecha de la presentación de la solicitud (artículo 12, del RCD).
La fecha de presentación de la solicitud viene determinada por el artículo 38 del DCR y el artículo 10 del REDC (véanse las Directrices relativas a las solicitudes de dibujos y modelos comunitarios registrados, Sección 2, Asignación de una fecha de presentación).
El registro puede ser renovado por uno o más períodos de cinco años cada uno, hasta un máximo de 25 años desde la fecha de presentación.
4. Notificación de expiración del registro
Artículo 13, apartado 2, del RCD Artículo 21, del REDC
Al menos seis meses antes de la expiración del registro, la Oficina comunicará:
• al titular del dibujo o un dibujo o modelo comunitario y • a cualquier persona que haya registrado un derecho respecto al dibujo o modelo
comunitario
que se acerca la fecha de ex piración del registro. Entre las personas que han registrado un der echo se encuentran los titulares de una l icencia registrada, los titulares de un der echo in rem registrado, los acreedores de un pr ocedimiento de ejecución forzosa o las autoridades competentes para actuar en nombre del titular en los procedimientos de insolvencia.
El hecho de no comunicar esta información no afecta a la expiración del registro y no implica responsabilidad alguna para la Oficina.
5. Tasas y otros requisitos formales para la solicitud de renovación
Artículo 22, apartado 8; artículos 65, 66 y 67; artículo 68, apartado 1, letra e), del REDC
Se aplica la normativa general relativa a l as comunicaciones de l a Oficina, lo que significa que la solicitud de renovación puede realizarse de las siguientes formas:
• por los medios electrónicos disponibles en la página web de la OAMI (módulo de renovación electrónica).. La introducción del nombre y apellidos en los campos correspondientes del formulario electrónico se considera una firma. Aparte de
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este descuento, el uso de la renovación electrónica ofrece ventajas, como la recepción automática de una confirmación electrónica inmediata de la solicitud de renovación o el uso del administrador de renovación electrónica para cumplimentar el formulario para tantos dibujos o modelos comunitarios registrados como sea necesario.
• mediante el envío por fax, correo o cualquier otro medio de un formulario original firmado. El formulario normalizado está disponible en el sitio web de la OAMI. Es necesario firmar los formularios, pero no los anexos.
Se recomienda encarecidamente renovar el registro de dibujos y modelos comunitarios por vía electrónica (renovación electrónica). El procedimiento de renovación electrónica comprueba y valida automáticamente los requisitos establecidos por el REDC.
Debe presentarse una única solicitud de renovación para dos o más dibujos o modelos, sean o no parte de un mismo registro múltiple, previo pago de las tasas correspondientes a cada uno de l os dibujos o modelos, siempre que los titulares de dichos dibujos o modelos comunitarios o sus representantes sean los mismos en cada caso.
Para más información sobre Tasas y Cumplimiento de los requisitos formales, véase el apartado 5.3 y 6.2.2, respectivamente.
5.1 Personas que pueden solicitar la renovación
Artículo 13, apartado 1, del RCD
Las siguientes personas pueden solicitar la renovación:
• el titular registrado del dibujo o modelo comunitario; • el sucesor en la titularidad en caso de cesión de un dibujo o modelo comunitario,
con efecto a par tir de l a recepción por parte de la Oficina de l a solicitud de registro de la cesión;
• una persona autorizada por el titular del dibujo o m odelo comunitario. Dicha persona puede, por ejemplo, ser un l icenciatario registrado, un l icenciatario no registrado o cualquier otra persona que cuente con la autorización del titular para renovar el dibujo o modelo comunitario;
• un representante que actúe en nombre de cualquiera de las personas mencionadas.
Las personas obligadas a hacerse representar ante la Oficina con arreglo a lo previsto en el artículo 77, apartado 2, del RCD pueden presentar directamente una solicitud de renovación.
Cuando una solicitud de renovación es presentada por una persona que no sea el titular registrado, debe existir una autorización a su favor; sin embargo, no debe presentarse ante la Oficina a menos que ésta la solicite. Por ejemplo, si la Oficina recibe tasas de dos fuentes diferentes, se pondrá en contacto con el titular para saber qué persona está autorizada a pr esentar la solicitud de r enovación. Si no se recibe
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respuesta por parte del titular, la Oficina validará el primer pago que se realizó (véase, por analogía, la sentencia del 12/05/2009, T-410/07, «Jurado», apartados 16-24).
5.2 Contenido de la solicitud de renovación
Artículo 22, apartado 1, del REDC
La solicitud de renovación de registro debe contener la siguiente información:
• El nombre de la persona que solicita la renovación (es decir, el titular del dibujo o modelo comunitario, una persona autorizada o un representante; véase el apartado 3.1. supra). Si la Oficina ha as ignado un núm ero de identificación al solicitante de la renovación, bastará con indicar este número.
• El número de r egistro de los dibujos y modelos comunitarios registrados. Este número se compone siempre de una r aíz de nueve dígitos, seguida de una terminación de otros cuatro más (p. ej., XXXXXXXXX-YYYY).
• En el caso de un registro múltiple, es necesario indicar que la solicitud de renovación es para todos los dibujos y modelos incluidos en el registro múltiple o, si no se solicita la renovación de todos los dibujos y modelos, debe indicarse para cuáles de ellos se solicita.
Cuando el titular de un dibujo o modelo comunitario nombre a un representante, debe indicarse el nombre del representante. Si el representante ya consta, bastará con indicar su número de identificación. En caso de nombrar a un nuevo representante al solicitar la renovación, debe facilitarse su nombre y dirección tal y como establece el artículo 1, apartado 1, letra e), del REDC.
El pago puede constituir, por sí mismo, una solicitud de renovación válida, a condición de que dicho pago llegue a la Oficina dentro de plazo y contenga el nombre de quien realiza el pago, el número de registro del dibujo o m odelo comunitario y la mención «renovación». En tal caso, no es necesario cumplir otras formalidades (véanse las Directrices relativas a los procedimientos ante la Oficina de Armonización del Mercado Interior (Marcas, dibujos y modelos), Parte A, Normas generales, Sección 3, Pago de tasas, costas y recargos).
5.3 Lengua del procedimiento
Artículo 80, letra b), del REDC
Las solicitudes de renovación pueden presentarse en cualquiera de las cinco lenguas oficiales de la Oficina. Esta lengua se convierte en la lengua del procedimiento de renovación. Sin embargo, si la solicitud de r enovación se presenta utilizando el formulario facilitado por la Oficina con arreglo al artículo 68, dicho formulario puede utilizarse en cualquiera de las lenguas oficiales de la Unión Europea, a condición de que los elementos de texto del formulario se cumplimenten en una de las lenguas de la Oficina.
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5.4 Tasas
Artículo 13, apartado 3, del RCD Artículo 22, apartado 2, letras a) y b), del REDC Artículo 7, apartado 1, del RTDC Anexo al RTDC, puntos 11 y 12
Las tasas que se deberán abonar por la renovación de un dibujo o modelo comunitario son las siguientes:
• una tasa de renovación que, en caso de varios dibujos o modelos incluidos en un registro múltiple, será proporcional al número de dibujos o modelos a que afecte la renovación;
• cualquier recargo aplicable por demora en el abono de la tasa de renovación o en la presentación de la solicitud de renovación.
El importe de la tasa de renovación, por dibujo o modelo, tanto si está incluido en un registro múltiple como si no, se especifica a continuación:
• por el primer plazo de renovación: 90 EUR • por el segundo plazo de renovación: 120 EUR • por el tercer plazo de renovación: 150 EUR • por el cuarto plazo de renovación: 180 EUR
La tasa deberá abonarse en un plazo de seis meses, que finalizará el último día del mes en que expire el plazo de la protección (véase el apartado 5.5, infra).
La tasa podrá abonarse en un plazo adicional de seis meses posteriores al último día del mes en que venza el plazo de protección, a condición de que se abone un recargo adicional del 25 % sobre el importe total de l a tasa de renovación (véase apartado 5.5.2 infra).
Cuando el pago se efectúe mediante transferencia o ingreso en una cuenta bancaria de la Oficina, la fecha en la que se considerará efectuado el pago será aquella en la que se abone la suma en una cuenta bancaria de la Oficina.
Las tasas abonadas antes del inicio del primer plazo de seis meses no se tendrán en cuenta y se reembolsarán.
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5.5 Plazos
Artículo 13, del RCD Artículos 22, apartado 2; y 58, apartado 1, del REDC
5.5.1. Periodo de seis meses antes de la expiración para la renovación (período básico)
Tanto la solicitud de renovación como la tasa de renovación deben presentarse en un plazo de seis meses, que finalizará el último día del mes en q ue expire el plazo de protección (en lo sucesivo, denominado «plazo ordinario»).
Si el plazo venciese un día en q ue la Oficina no es té abierta para la recepción de documentos o en que el correo ordinario no se distribuya en Alicante, se prorrogará hasta el primer día siguiente en que la Oficina esté abierta para la recepción de dicha entrega y se distribuya el correo ordinario. En el artículo 58, apartados 2 y 4, del REDC se contemplan otras excepciones.
Por ejemplo, si un dibujo o m odelo comunitario tiene una fecha de presentación del 01/04/2013, el último día del mes en q ue venza el plazo de pr otección será el 30/04/2018. Por lo tanto, la solicitud y la tasa de r enovación deberán presentarse y abonarse entre el 01/11/2017 y el 30/04/2018 o, en caso de que estas fechas caigan en sábado, domingo o cualquier día en que la Oficina esté cerrada o no reciba correo ordinario, el siguiente día hábil en que la Oficina esté abierta al público y reciba correo ordinario.
5.5.2 Período de gracia de seis meses después de la expiración (período de gracia)
Si no s e cumple con el plazo límite especificado, la solicitud de r enovación podrá presentarse fuera de plazo y la tasa de renovación podrá abonarse en un plazo adicional (en lo sucesivo, denominado «período de gr acia») de seis meses, que empezará a contar a partir del último día del mes en que venza el plazo ordinario, a condición de que se abone un recargo adicional del 25 % sobre el importe total de la tasa de renovación dentro del período de gracia (véase artículo 13.3 del RCD). Por lo tanto, la renovación se realizará con éxito únicamente si el pago de todas las tasas (tasas de renovación y recargo aplicado en c aso de dem ora en el pago) llega a la Oficina dentro del período de gracia.
En el ejemplo anterior, el período de gracia durante el cual se puede presentar la solicitud de renovación junto con el abono de la tasa de renovación más el recargo se cuenta desde el día siguiente al 30/04/2018, es decir, desde el 01/05/2018, y finaliza el 31/10/2018 o, en c aso de que el 31/10/2018 caiga en s ábado, domingo o c ualquier otro día en que la Oficina esté cerrada o no reciba correo postal, el siguiente día hábil en que la Oficina esté abierta al público y reciba correo postal. Esto será de aplicación incluso si, en el ejemplo anterior, el 30/04/2018 fuese sábado o dom ingo; la norma sobre el cumplimiento de un plazo límite con respecto a la Oficina y la ampliación hasta el siguiente día hábil solo será de aplicación una vez y hasta el final del primer plazo, y no hasta el primer día del siguiente plazo.
Las tasas que se paguen antes de que comience el primer período de seis meses, en principio no se tomarán en consideración y se reembolsarán.
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5.6 Formas de pago
Artículo 5, del RTDC
Las formas de pago aceptadas son transferencia bancaria, tarjeta de crédito (solo en caso de que la solicitud se realice por vía electrónica mediante el módulo de renovación electrónica) y el abono en cuentas corrientes de la Oficina. No se aceptan pagos mediante cheque. Las tasas y costes deben abonarse en euros.
Si el titular de un dibujo o modelo comunitario tiene una cuenta corriente en la Oficina, la tasa se adeudará automáticamente de su cuenta tras la presentación de la solicitud de renovación. Salvo que se especifiquen instrucciones distintas, la tasa de renovación se adeudará en el último día del plazo límite de seis meses que establece el artículo 13, apartado 3, del RCD, es decir, el último día del mes en que venza el plazo de protección.
En caso de demora de la presentación de solicitud de renovación (véase el apartado 5.5.2 supra), el adeudo se realizará, salvo que se especifiquen instrucciones distintas, con efecto a partir del día de presentación de la solicitud, y se aplicará una sobretasa.
En caso de presentar la solicitud mediante un representante profesional según lo que dispone el artículo 78, del RCD, en r epresentación del titular del dibujo o m odelo comunitario, y si este tiene una cuenta corriente en la Oficina, la tasa de renovación se adeudará en la cuenta corriente del representante.
El abono t ambién podrá ser efectuado por las personas especificadas en el apartado 5.1 supra.
El pago mediante adeudo en una c uenta corriente cuya titularidad corresponda a terceros requiere la autorización expresa del titular de la cuenta corriente para llevar a cabo el adeudo de l a tasa en c uestión en di cha cuenta. En estos casos, la Oficina comprobará que se ha obtenido dicha autorización. De lo contrario, se enviará una carta al solicitante de l a renovación para solicitar la presentación de l a autorización para proceder al adeudo en la cuenta del tercero. En estos casos, se considerará que el abono se ha efectuado en la fecha en que la Oficina recibe la autorización.
En caso de que las tasas (tasas de renovación y, en su caso, el recargo por demora en el pago) hayan sido abonadas pero el dibujo o modelo comunitario registrado no haya sido renovado (es decir, en aquellos casos en que la tasa se haya abonado con posterioridad al vencimiento del período de gracia, el importe abonado sea inferior a la tasa normal más el recargo por demora en el pago o en la presentación de la solicitud de renovación o no se hayan subsanado otras irregularidades determinadas; véase el apartado 6.2.2 infra), se reembolsarán las tasas en cuestión).
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6. Procedimiento ante la Oficina
6.1 Competencia
Artículo 104, del RCD
El Departamento de Apoyo a l as Operaciones es responsable de tramitar las solicitudes de renovación e introducirlas en el Registro.
6.2 Examen de los requisitos formales
El examen de la solicitud de renovación se limita a las siguientes formalidades.
6.2.1 Cumplimiento de plazos
(a) Previo a la expiración del plazo ordinario
Artículo 13, del RCD Artículo 22, apartado 3, del REDC Artículo 5; artículo 6, apartado 1, del RTDC
Si la solicitud de renovación ha sido presentada y la tasa de renovación abonada en el plazo ordinario, la Oficina registrará la renovación, siempre y cuando se cumplan el resto de las condiciones establecidas en el RCD y el REDC.
Si no se ha presentado la solicitud antes del vencimiento del plazo ordinario, pero la Oficina ha r ecibido el abono de l a tasa de r enovación con las indicaciones mínimas (nombre de l a persona que solicita la renovación y número de r egistro del dibujo o modelo comunitario renovado), dicho abono constituirá una solicitud válida y no será necesario cumplir otras formalidades.
Sin embargo, si no se ha presentado la solicitud, pero se ha abonado la tasa de renovación sin las indicaciones mínimas (nombre de l a persona que solicita la renovación y número de registro del dibujo o modelo comunitario renovado), la Oficina pedirá al titular del modelo o dibujo que presente la solicitud de renovación y abone, en su caso, el recargo por demora en la solicitud de renovación. Se le enviará una carta a la mayor brevedad tras la recepción de la tasa, de forma que la solicitud pueda quedar presentada antes de que el recargo por demora sea de aplicación.
Si se ha presentado la solicitud dentro del plazo ordinario pero no se ha realizado el abono de la tasa de renovación o no se ha abonado en su totalidad, la Oficina pedirá al solicitante de la renovación que abone la tasa de renovación o la cantidad restante junto con el recargo por demora en el pago.
Si una per sona autorizada por el titular del dibujo o modelo comunitario presenta la solicitud de renovación, el titular del dibujo o modelo comunitario recibirá copia de la notificación.
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(b) Previo a la expiración del periodo de gracia
Artículo 13, apartado 3, del RCD Artículo 22, apartado 4, del REDC
Si se ha presentado la solicitud dentro del período de gracia, pero no se ha realizado el abono de la tasa de renovación o no se ha abonado en su totalidad, la Oficina pedirá al solicitante de la renovación que abone la tasa de renovación o la cantidad restante junto con el recargo por demora en el pago.
La renovación se efectuará únicamente si se pagan todas las tasas (tasas de renovación y recargo aplicado en c aso de de mora en el pago) o s e piensan pagar antes de que expire el período de gracia (véase el apartado 3.5 y 3.6 supra).
(c) En caso de que el titular o su representante sea titular de una cuenta corriente
La Oficina no adeudará una cuenta corriente salvo que haya una solicitud expresa de renovación. El adeudo se realizará en l a cuenta de l a persona que lleva a c abo la acción (el titular del dibujo o modelo comunitario, su representante o un tercero).
Si la solicitud se presenta en el plazo ordinario, la Oficina realizará el adeudo de las tasa de renovación sin recargo alguno.
Si la solicitud se presenta en el plazo adicional, la Oficina realizará el adeudo de l a tasa de renovación junto con un recargo del 25 % (véase el apartado 3.4 supra).
6.2.2 Cumplimiento de los requisitos formales
Artículo 22 y artículo 40, del REDC
Si la solicitud de r enovación no c umple los requisitos formales (véase apartado 5 5.Tasas y otros requisitos formales para la solicitud de renovación supra) pero dichas irregularidades son subsanables, la Oficina pedirá al solicitante de la renovación que las subsane en un pl azo máximo de dos meses. Este plazo máximo es de aplicación incluso cuando haya vencido el plazo adicional.
Si una per sona autorizada por el titular del dibujo o modelo comunitario presenta la solicitud de renovación, el titular del dibujo o modelo comunitario recibirá copia de la notificación.
En el caso de que dos personas distintas presenten una solicitud de renovación y afirmen contar con la autorización del titular del dibujo o modelo comunitario, la Oficina contactará directamente con el titular para solicitar una aclaración sobre cuál es la persona autorizada.
Si las irregularidades no se subsanan antes de l a expiración de los plazos especificados, la Oficina procederá de la siguiente forma:
• Si la irregularidad consiste en que no se ha indicado qué dibujos y modelos de un registro múltiple se desean renovar, y las tasas abonadas son insuficientes
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para cubrir todos los dibujos y modelos de l a renovación solicitada, la Oficina determinará qué di bujos o m odelos pretende cubrir la cantidad abonada. En ausencia de otro criterio para determinar cuáles desean incluirse, la Oficina procederá por orden consecutivo de los números asignados a los dibujos y modelos. La O ficina comprobará que el registro ha caducado para todos aquellos dibujos y modelos cuya tasa de renovación no ha s ido abonada parcial o totalmente.
• En caso de ex istir otros tipos de irregularidades, la Oficina comprobará que el registro haya vencido y enviará una notificación de pérdida de derechos al titular, su representante o, si procede, al solicitante de la renovación y a c ualquier persona que conste en el Registro como titular de derechos sobre el dibujo o modelo comunitario.
El titular dispondrá de un plazo de dos meses para solicitar una resolución sobre esta cuestión, según lo dispuesto en el artículo 40, apartado 2, del REDC.
Si las tasas de renovación han sido abonadas en su totalidad pero el registro no se ha renovado, dichas tasas se reembolsarán.
6.3 Cuestiones no sometidas a examen
Para proceder a la renovación, no se examinarán la registrabilidad del dibujo o modelo ni la correcta clasificación de s us productos. Tampoco se reclasificarán los dibujos y modelos ya registrados de conformidad con una edición de la Clasificación de Locarno que ya no esté en v igor en el momento de l a renovación. Tal reclasificación no se producirá ni siquiera a instancias del titular.
6.4 Modificación
Artículo 12, apartado 2, del REDC
En principio, puesto que no puede modificarse la representación de un dibujo o modelo comunitario tras la presentación de l a solicitud, no s e aceptará la presentación de nuevas perspectivas ni la eliminación de ciertas perspectivas durante la renovación.
Los demás cambios que no supongan una modificación de la representación del dibujo o modelo comunitario en sí (cambios de nombre, dirección, etc.), y que el titular desee hacer constar en el Registro en el momento de la renovación, deben ser comunicados a la Oficina de ac uerdo con los procedimientos aplicables (véanse las Directrices relativas a las solicitudes de dibujos y modelos comunitarios registrados, Sección 10). Dichos cambios se incluirán en los datos registrados en l a renovación solo si se introducen en el Registro antes de l a fecha de expiración del registro del dibujo o modelo comunitario.
6.5 Restitución de derechos
Artículo 67, del RCD Artículo 15 del anexo al RTDC
Una parte de un procedimiento entablado ante la Oficina puede recuperar sus derechos (restitutio in integrum) si no ha sido posible cumplir con el plazo respecto a la
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Oficina, pese a habe r obrado con toda la diligencia exigida por las circunstancias, siempre que el incumplimiento del plazo tenga como consecuencia directa, en virtud de lo previsto en los Reglamentos, la pérdida de un derecho o de un medio de recurso.
La restitución de derechos solo podrá obtenerse previa solicitud ante la Oficina y se aplicará la tasa correspondiente (200 EUR).
La solicitud debe e fectuarse en un pl azo de dos meses a par tir del cese del impedimento y nunca más de un año tras la expiración del plazo límite no cumplido. El acto omitido debe completarse en ese mismo período.
En caso de no p resentar la solicitud de renovación o de no abonar la tasa de renovación, el plazo límite de un año c omienza el día en q ue vence el plazo de protección (plazo básico), y no en la fecha de expiración del siguiente plazo de seis meses (plazo adicional).
7. Inscripción en el registro
Artículo 13, apartado 4, del RCD Artículo 40; artículo 22, apartado 6; artículo 69, apartado 3, letra m); artículo 69, apartado 5; artículo 71, del REDC
Si la solicitud de renovación cumple con todos los requisitos, la renovación se inscribirá en el Registro.
La Oficina notificará al titular del dibujo o m odelo comunitario o a s u representante acerca de la renovación del dibujo o modelo, su inscripción en el Registro y la fecha a partir de la cual será efectiva la renovación.
En caso de determinar que el registro ha expirado, la Oficina informará al titular o representante del dibujo o modelo comunitario, así como a cualquier otra persona que conste en el registro como titular de derechos sobre el dibujo o modelo comunitario, sobre la expiración y su cancelación en el Registro.
El titular tendrá un plazo de dos meses para solicitar una resolución sobre este asunto, según lo dispuesto en el artículo 40, apartado 2, del REDC.
8. Fecha en que surte efectos la renovación o expiración
Artículo 13, apartado 4, del RCD Artículo 22, apartado 6; y artículo 56, del REDC
La renovación entrará en vigor a partir del día siguiente a la fecha de expiración de la inscripción vigente.
Si el dibujo o modelo comunitario ha expirado y ha sido cancelado en el Registro, la cancelación entrará en vigor a partir del día siguiente a la fecha de expiración de la inscripción vigente.
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9. Renovación de registros internacionales de dibujos y modelos que designan a la Unión Europea
Artículo 17 del Acta de Ginebra del Arreglo de La Haya relativo al registro internacional de dibujos y modelos industriales (el «Acta de Ginebra»). Artículo 12, del RCD
Los registros internacionales que designan a la Unión Europea están protegidos durante un período de t iempo inicial de c inco años desde la fecha del registro internacional, y pueden r enovarse por períodos adicionales de c inco años hasta un total de 25 años desde la fecha del registro.
Con arreglo a lo previsto en el artículo 11, letra a), del anexo al RTDC, las tasas de renovación individuales de un registro internacional que designa a la Unión Europea son, por dibujo o modelo, las siguientes:
• por el primer plazo de renovación: 31 EUR • por el segundo plazo de renovación: 31 EUR • por el tercer plazo de renovación: 31 EUR • por el cuarto plazo de renovación: 31 EUR.
Las renovaciones internacionales deben tramitarse directamente en la Oficina Internacional de la OMPI con arreglo a las disposiciones contenidas en el artículo 17 del Acta de Ginebra (artículo 22 bis, del REDC). La Oficina no tramitará solicitudes de renovación ni abonos de tasas relativos a registros internacionales.
La Oficina Internacional gestiona en s u totalidad el procedimiento de r enovación de marcas internacionales: envía la notificación de renovación, recibe las tasas de renovación e inscribe la renovación en e l Registro Internacional. En el caso de renovaciones de registros internacionales que designan a la Unión Europea, la Oficina Internacional también cursa su correspondiente notificación a la Oficina.
GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS)
EDITOR’S NOTE AND GENERAL INTRODUCTION
Editor’s Note and General Introduction
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Table of Contents
1 Subject Matter............................................................................................ 3
2 Objective of the Guidelines ...................................................................... 3
3 Guidelines Revision Process ................................................................... 4
4 Structure of the Guidelines....................................................................... 5
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1 Subject Matter
Council Regulation No 40/94 of 20 December 1993, as amended and codified in Council Regulation No 207/09 of 26 February 2009 (CTMR), established, in parallel with the national systems, a Community trade mark system with the aim of eliminating one of the main obstacles to the development of the single European market. Council Regulation No 6/02 of 12 December 2001 (CDR) did the same for Community designs. Hitherto, the law governing the registration and use of trade marks or designs had been exclusively national and made it difficult for the same trade mark or design to be used throughout the European Union.
The Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM or the Office), established in Alicante, is responsible for the registration of Community Trade Marks (CTM) and Registered Community Designs (RCD). These registrations provide uniform trade mark and design protection throughout the European Union.
The Office deals with registration procedures (including the examination of applications for absolute grounds for refusal and, where an opposition has been raised regarding a CTM application, for relative grounds for refusal), maintains the public registers of these rights and de cides on appl ications for those rights, once registered, to be declared invalid. The Office’s Guidelines cover practice in all these areas.
2 Objective of the Guidelines
The purpose of the Guidelines on CTMs and the Guidelines on RCDs is to improve the coherence, predictability and q uality of the Office’s decisions. The Guidelines are designed to bring together, systematically, the principles of practice derived from the jurisprudence of the European Court of Justice, the case-law of the Office’s Boards of Appeal, the decisions of the Office’s Operations Department and the outcome of the Office’s Convergence Programmes with EU IP offices. They provide a unique source of reference on Office practice with regard to CTMs and RCDs and are intended to be of practical use both to Office staff in charge of the various procedures and to users of the Office’s services.
The Guidelines have been drawn up t o reflect Office practice in the most frequent scenarios. They contain only general instructions, which have to be adapted to the particularities of a case. They are not legislative texts and, therefore, are not of a binding nature. Both the parties involved and the Office must, where necessary, refer to the CTMR, the CDR, and their respective Implementing Regulations, the Fee Regulations, Commission Regulation (EC) No 216/96 of 05/02/1996 laying down the rules of procedure of the Boards of Appeal and, finally, the interpretation of these texts handed down by the Boards of Appeal and the Court of Justice of the European Union, including the General Court of the European Union.
As case-law is evolving constantly, the Guidelines will also evolve. They will be adapted to reflect developments in Office practice on a yearly basis by means of an ongoing revision exercise (see point 3 below).
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3 Guidelines Revision Process
As the sole source of reference on Office practice with regard to CTMs and RCDs, the Guidelines are available in all official EU languages. They are revised by the cross- departmental Knowledge Circles of the Office in a cyclical and open process: ‘cyclical’ because practice is updated on a yearly basis by looking at the case-law of the preceding year and t aking into account operational needs and t he outcome of convergence initiatives, and ‘open’ because external stakeholders are involved in defining that practice.
The involvement of national offices and user associations not only benefits the quality of the Guidelines, but is also expected to facilitate convergence, that is, the process of exploring common ground on issues where there are diverging practices. Making the Guidelines available in all EU languages will raise awareness of Office practice amongst Member States and users and make differences in practice easier to identify.
The yearly work is split into two ‘work packages’: Work Package 1 (WP1) runs over a twelve-month period each year from January to December, and Work Package 2 (WP2) over a twelve-month period each year from July to June.
The process involves the following phases:
a. Initiation of update by stakeholders
Having been made aware of the Office’s revision plans, in particular what is to be revised and when, the national offices and user associations are welcome to submit comments before January (for WP1) and bef ore July (for WP2). Comments not received on time will be taken into consideration during the next cycle or may be submitted during phase c.
b. Preparation of the draft Guidelines by the Office
During this phase, the draft Guidelines are produced by the Office’s Knowledge Circles. The process starts each year in January (for WP1) and July (for WP2). Feedback and c omments submitted in advance from users are taken into consideration. The three steps of the process – analysis, drafting and discussion – must be c ompleted in a t imely manner. Analysis involves the Knowledge Circles extracting trends from the preceding year’s case-law, studying the conclusions of the convergence projects and taking into consideration the comments received from the Office’s users and internal stakeholders. As the next step, the Knowledge Circles draft the guidelines. Finally, the texts are discussed amongst the various units and departments of the Office.
c. Adoption of the Guidelines
In the last phase, the draft Guidelines are sent for translation into the Office languages. The texts and t ranslations are circulated amongst the user associations and the EU IP offices with a view to receiving feedback before the next meeting of the Office’s Administrative Board (AB). After consulting the AB in accordance with Article 126(4) CTMR and Article 101(b) CDR, the President adopts the updated Guidelines. The versions in the five Office languages together make up the official text, which is intended to be published in January (WP1) and July (WP2) of each year, respectively. In the event of discrepancies
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between different language versions, the text in the drafting language (English) will prevail. Once adopted, the Guidelines will be translated into the remaining official languages of the European Union as a matter of courtesy and for transparency. These additional translations will be publ ished on t he Office’s website, and external stakeholders, whether national offices or user associations, will be free to submit feedback on their quality; any linguistic amendments made as a result of this informal feedback will be incorporated into the texts without any formal procedure.
d. Fast-track procedure
Where a major external event has an immediate impact on Office practice (for example, certain judgments of the Court of Justice), the Office can amend the Guidelines in a fast-track procedure outside the normal time frame set out above. However, this procedure is the exception to the norm. As the process is cyclical, such changes will always be open to comments and r evision in the following cycle.
4 Structure of the Guidelines
The items dealt with in WP1 and WP2, respectively, are set out below. In exceptional circumstances, certain elements of practice might be changed from one WP to another. Should such a change occur, it will be communicated to stakeholders.
COMMUNITY TRADE MARK:
WP1 WP2
Part A: General Rules Part A: General Rules
Section 3, Payment of fees, costs and charges Section 1, Means of communication, time limits
Section 5, Professional representation Section 2, General principles to be respected in proceedings Section 4, Language of proceedings
Section 6, Revocation of decisions, cancellation of entries in the Register and correction of errors
Section 7, Revision
Section 8, Restitutio in Integrum
Section 9, Enlargement
Part B: Examination Part B: Examination
Section 2, Formalities Section 1, Proceedings
Section 4, Absolute Grounds for Refusal 7(1)(a) Section 3, Classification
Section 4, Absolute Grounds for Refusal 7(1)(b) Section 4, Absolute Grounds for Refusal 7(1)(f)
Section 4, Absolute Grounds for Refusal 7(1)(c) Section 4, Absolute Grounds for Refusal 7(1)(g)
Section 4, Absolute Grounds for Refusal 7(1)(d) Section 4, Absolute Grounds for Refusal 7(1)(h)+(i)
Section 4, Absolute Grounds for Refusal 7(1)(e) Section 4, Absolute Grounds for Refusal 7(1)(j)+(k)
Section 4, Absolute Grounds for Refusal 7(3)
Section 4, Collective marks
Editor’s Note and General Introduction
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Part C: Opposition Part C: Opposition
Section 0, Introduction Section 3, Unauthorised filing by agents of the TM proprietor (Article 8(3) CTMR)
Section 1, Procedural Matters Section 4, Rights under Article 8(4) CTMR
Section 2, Double identity and Likelihood of confusion Section 5, Trade marks with reputation Article 8 (5) CTMR
Chapter 1, General Principles and Methodology
Chapter 2, Comparison of Goods and Services
Chapter 3, Comparison of Signs
Chapter 4, Distinctiveness
Chapter 5, Dominant character
Chapter 6, Relevant public and degree of attention
Chapter 7, Other factors
Chapter 8, Global assessment
Section 6, Proof of Use
Part D: Cancellation Part D: Cancellation
Section 1, Cancellation proceedings
Section 2, Substantive provisions
Part E: Register Operations Part E: Register Operations
Section 2, Conversion Section 1, Changes in a registration
Section 4, Renewal Section 3, CTMs as objects of property
Section 5, Inspection of files Chapter 1, Transfer
Chapter 2, Licences
Section 6, Other entries in the Register Chapter 3, Rights in rem
Chapter 1, Counterclaims Chapter 4, Levy of execution
Chapter 5, Insolvency proceedings or similar proceedings
Part M: International marks
REGISTERED COMMUNITY DESIGN
WP1 WP2
Examination of Design Invalidity Applications Examination of Applications for Registered Community Designs Renewal of Registered Community Designs
Means of Communication, Time Limits
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 1
MEANS OF COMMUNICATION, TIME LIMITS
Means of Communication, Time Limits
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Table of Contents
1 Introduction................................................................................................ 3
2 Procedures for Filing and for Communication with the Office.............. 3
3 Notification and Communication of Documents..................................... 3 3.1 Communication to the Office.....................................................................4
3.1.1 By telecopier ................................................................................................... 4 3.1.2 By electronic means ....................................................................................... 4 3.1.3 By post, service or personal delivery.............................................................. 4
3.2 Notification by the Office ...........................................................................5 3.2.1 Notification by telecopier ................................................................................ 5 3.2.2 By normal post................................................................................................ 5 3.2.3 By deposit in a postbox .................................................................................. 6 3.2.4 By hand delivery ............................................................................................. 6 3.2.5 Through the Office’s official website............................................................... 6 3.2.6 By public notification....................................................................................... 6
3.3 Addressees.................................................................................................7
4 Time Limits................................................................................................. 7 4.1 Time limits specified by the Office............................................................7
4.1.1 Length of the time limits specified by the Office ............................................. 8 4.1.2 Expiry of time limits......................................................................................... 8 4.1.3 Extension of time limits................................................................................... 9 4.1.4 Continuation of proceedings......................................................................... 10 4.1.5 Restitutio in integrum .................................................................................... 11
Means of Communication, Time Limits
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1 Introduction
This part of the Guidelines includes those provisions which are common to all proceedings before the Office in trade mark matters, except appeals.
In the interest of efficiency and i n order to prevent parties encountering dissimilar practices, the Office applies procedural rules consistently.
Proceedings before the Office can be classified in two broad types: ex parte proceedings, which involve only one party, or inter partes proceedings, in which two or more parties are in conflict.
The first category comprises, in particular, applications for registration or renewal of a Community trade mark, entries in the Register related to transfers, licences, levy of execution or bankruptcy, and proceedings related to seniority and conversion.
The second category includes opposition proceedings and cancellation proceedings (revocation or declaration of invalidity of a registered Community trade mark).
2 Procedures for Filing and for Communication with the Office
Article 25 CTMR Rule 79 CTMIR
An application for a Community trade mark (CTM) may be filed directly at the Office or through a national office of a M ember State of the European Union, including the Benelux Trade Mark Office.
All other documents may only be filed directly at the Office.
All documents may be sent to the Office by normal post or courier services, handed in personally at the Office’s reception desk (Avenida de Europa, 4, 03008 Alicante) during Office opening hours (Monday to Friday, 8.30 – 13.30 and 15.00 – 17.00), or sent by fax. Applications for CTMs, oppositions and renewals may also be filed electronically via the Office’s official website. As a part of its e-business strategy, the Office will progressively open up electronic communication for filing other documents in all types of proceedings.
The Office has made various forms available to the public, in all official languages of the EU. With one exception, their use is not mandatory but strongly recommended. The exception is the filing of an international application or subsequent designation under the Madrid Protocol, for which either WIPO’s MM 2 or MM 4 or OHIM’s EM 2 or EM 4 form must be used. All these forms can be downloaded from the Office’s official website.
3 Notification and Communication of Documents
The CTMIR distinguishes between documents originating from the parties and addressed to the Office and notifications issued by the Office.
Means of Communication, Time Limits
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3.1 Communication to the Office
Rules 79, 79a, 80, 82 CTMIR Decision No EX-13-02 of the President of the Office
3.1.1 By telecopier
Where a document is communicated to the Office by fax, the original should be signed so that the fax received by the Office carries the facsimile of the signature. If a document communicated to the Office is not signed, the Office will invite the party concerned to correct the irregularity and specify a time limit in which they are to do so. If the document is not signed within that time limit, the respective application or request will be dec lared inadmissible, or the document will not be taken into account, as the case may be.
If, however, the fax was generated electronically on a computer (‘electronic fax’), the indication of the name of the sender is deemed equivalent to the signature.
Subsequent confirmation by mail of the fax is not necessary. The Office will acknowledge receipt of the fax only in the cases expressly specified by the CTMIR, namely when a CTM application is filed. The Office will not, therefore, acknowledge receipt of a fax, but if the communication is incomplete or illegible, or the Office has reasonable doubts as to the accuracy of the transmission, the Office will inform the sender accordingly and invite them, within a time limit to be specified, to retransmit the communication. If the retransmission is complete, the date of receipt will be considered to be that of the first transmission, except for the purposes of establishing a filing date for a CTM application. Otherwise the Office will not take into account the transmission at all, or consider only the received and/or legible parts (decision of 04/07/2012, R 2305/2010-4, ‘Houbigant/PARFUMS HOUBIGANT PARIS et al.).
For further information on Filing Date, see the Guidelines, Part B, Examination, Section 2, Formalities.
Where a document in colour is to be transmitted, it suffices if the document is sent by fax and the coloured original is filed within one additional month unless provided otherwise by the CTMR. In this case the date of receipt of the coloured original is deemed to be the date of receipt of the fax by the Office, including for the purposes of obtaining a filing date for a CTM application.
3.1.2 By electronic means
In accordance with Rule 82 CTMIR, if a CTM application is filed through e-filing, or a communication is sent to the Office using any electronic facilities, the indication of name of the sender is deemed equivalent to the signature.
3.1.3 By post, service or personal delivery
Documents sent by post should be addressed to the Office at the address indicated in the explanatory notes accompanying the forms provided by the Office.
Means of Communication, Time Limits
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Documents sent by post, courier service or personal delivery must bear an original signature. If a document sent to the Office is not signed, the Office will invite the party concerned to correct the irregularity and specify a time limit in which they are to do so. If the document is not signed within that time limit, the respective application or request will be declared inadmissible, or the document will not be taken into account, as the case may be.
3.2 Notification by the Office
Rules 61-69 CTMIR Decision No EX-97-1 of the President of the Office Decision No EX-5-6 of the President of the Office
Written communications from the Office to the party or parties to proceedings will be ‘notified’. ‘Notification’ means the way a document is transmitted to the addressee, not a formal legal procedure (‘legal service’). Notification means that the document has entered the sphere of the addressee, irrespective of whether they have been apprised of the document. The manner and relevant date of notification depend on the various means of communication.
Except for public notification, and subject to the fact that some means of notification require prior consent of the party, the Office can freely choose the most appropriate means of notification (Rule 61(3) CTMIR).
In practice, wherever feasible and provided that the number of pages to be transmitted is not excessively high, the Office will always opt for notification by electronic means if available.
If the proper procedure of notification has been followed, the document is deemed to have been notified unless the recipient proves that the document did not reach them at all, or reached them at a later point in time. Conversely, where the proper procedure of notification was not followed, the document will nevertheless be considered notified if the Office can prove that the document actually reached the recipient.
The Office will either notify the signed original document, by post, or a copy of the document which need not be signed, as the President of the Office in decision EX-97-1 made use of the power under Rule 55(2) CTMIR to prescribe that the indication of the name(s) of the official(s) suffices.
3.2.1 Notification by telecopier
The Office may use this means of notification if the party has indicated a fax number. All documents can and will be notified this way, including decisions. The Office keeps fax logs to be able to prove transmission time and content.
3.2.2 By normal post
With regard to notification by post, the procedure will vary according to the nature of the document notified.
Means of Communication, Time Limits
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If the addressee has a place of business or domicile within the EU or has appointed a professional representative (as defined in the Guidelines, Part A, General Rules, Section 5, Professional Representation), decisions subject to a time limit for appeal, as well as summonses and other documents as determined by the President of the Office, will be notified by registered letter with a record of delivery.
In all other cases, that is, where the recipient’s address is not in the EU or has not appointed a professional representative or for any other document to be notified, the Office may and will send the document by normal post. Notification will be deemed to have been e ffected on the 10th day following the posting of the document. This presumption may only be rebutted by the recipient by proving that they did not receive the document, or that they received it at a later date.
3.2.3 By deposit in a postbox
Notification may be effected to addressees who maintain a p ostbox at the Office by depositing the notified document therein. The date of deposit will be recorded by the Office. Notification will be deemed to have been effected on the 5th day following the deposit of the document.
3.2.4 By hand delivery
Notification may also be effected by hand delivery of the document to the addressee, if they are personally present at the Office. This way of notification will constitute an exception. A copy of the document, on which a dated and signed acknowledgement of receipt by the addressee appears, will be kept in the file.
3.2.5 Through the Office’s official website
Pursuant to Decision No EX-13-2 of the President of the Office of 26/11/2013, notification may also be made through the Office’s official website if the holder of the electronic account with the Office has accepted this means of notification. Notification consists of placing the electronic document in the holder’s inbox. The document is deemed to have been notified on the 5th day following its posting, irrespective of whether the recipient actually opened and read the document. The date on which the document was placed will be mentioned in the holder’s inbox and will be recorded by the Office (decision of 17/01/2011, R 0956/2010-4 ‘DURAMAXX/DURAMAX’).
3.2.6 By public notification
Public notification will be used for all notifications when the address of the addressee is unknown or when notification by post has been returned to the Office after at least one attempt.
This relates primarily to post returned to the Office by the Post Office annotated ‘not known at the address given’ and post which has not been claimed by its addressee.
The public notifications will be published on the Office’s website. The document will be deemed to have been notified one month after the day on which it is posted on the internet.
Means of Communication, Time Limits
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3.3 Addressees
Rule 67 CTMIR Articles 92, 93 CTMR
All notifications will be sent to the representative (judgment of 12/07/2012, T-279/09, ‘100% Capri/CAPRI’) if a professional representative has been dul y appointed. ‘Duly appointed’ means that the representative is entitled to represent and has been properly appointed, and that no general obstacle (such as illicit representation of both parties in an inter partes proceeding) exists to preclude representation by that person. Filing an authorisation is not required for the purposes of being the recipient of OHIM’s notifications. For further details see the Guidelines, Part A, General Rules, Section 5, Professional Representation.
Any notification addressed to the representative will have the same effect as if it had been addressed to the represented person. Similarly, any communication addressed to the Office by a representative will be considered to have originated from the represented person.
4 Time Limits
Rules 70-72 CTMIR
Time limits before the Office can be divided into two categories:
• those laid down by the CTMR or CTMIR which are, therefore, mandatory;
• those set by the Office which are, therefore, not mandatory and can be extended under certain circumstances.
4.1 Time limits specified by the Office
Time limits are an e ssential tool for conducting orderly and reasonably swift proceedings. They are a matter of public policy and rigorous compliance with them is necessary to ensure clarity and legal certainty.
As regards the measures which mitigate the rigorous application of the principle of strict observance of time limits, the Regulations foresee three means depending on whether the time limit is still running or has expired.
If the time limit is still running, the party may request an ex tension of the time limit pursuant to Rule 71(1) CTMIR.
If the time limit has expired, the party who has missed the time limit still has two possible courses of action: either to seek continuation of proceedings (pursuant to Article 82 CTMR), which only requires meeting certain formal requirements, or to request restitutio in integrum (pursuant to Article 81 CTMR), which requires meeting formal and substantive requirements (such as showing all due care).
Additional information is provided under paragraphs 4.1.4 and 4.1.5 below.
Means of Communication, Time Limits
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4.1.1 Length of the time limits specified by the Office
With the exception of the time limits expressly specified in the CTMR or CTMIR, the time limits specified by the Office, when the party concerned has its domicile or its principal place of business or an establishment within the European Union, may not be less than one month or longer than six months. When the party concerned does not have its domicile or principal place of business or an establishment within the EU, the time limits may not be less than two months or longer than six months. The general practice is to grant two months.
For further information, see the Guidelines, Part A, General Rules, Section 5, Professional Representation.
4.1.2 Expiry of time limits
When a time limit is set in a notification by the Office, the ‘relevant event’ is the date on which the document is notified or deemed notified, depending on the rules governing the means of notification.
Where a time limit is expressed in months, it will expire in the relevant subsequent month on the day which has the same number as the day on which the ‘relevant event’ occurred.
Therefore, if the Office sets a two-month time limit in a communication which is notified by fax on 28 June, the time limit will expire on 28 August. It is immaterial whether the ‘relevant event’ occurred on a working day or holiday or Sunday; that is relevant only for the expiry of the time limit.
Where the relevant subsequent month has no day with the same number or where the day on which the event occurred was the last day of the month, the time limit in question will expire on the last day of that month. A two-month time limit set in a notification on 31 July thus expires on 30 September. Similarly, a two-month time limit set in a notification on 30 June will end on 31 August.
Any time limit will be deemed to expire at midnight on the last day.
A time limit which expires on a day on w hich the Office is not open for receipt of documents or on which ordinary post is not delivered in the locality in which the Office is located will extend until the first working day thereafter. This refers to Saturdays, Sundays and public holidays. For this purpose, before the start of each calendar year, the President of the Office determines the days on which the Office is closed. The extension is automatic but it applies only at the end o f the time limit (decision of 12/05/2011, R 0924/2010-1, ‘whisper power-WHISPER’).
In the event of a general interruption of the postal service in Spain, any time limit that expires during that period will be extended until the first working day after the period of interruption. These periods will be determined by the President of the Office; the extension will apply for all parties to the proceedings.
In the event of an exceptional occurrence (strike, natural disaster, etc.) causing a disturbance in the running of the Office or a serious impediment in its communication with the outside world, time limits may be extended for a period determined by the President of the Office.
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4.1.3 Extension of time limits
An extension of the time limits may be granted if the request is made by the party concerned before the original time limit expires.
In ex parte proceedings before the Office, if before the expiry of a time limit a request is made for its extension, then a further time limit should be allowed for a period depending on the circumstances of the case, but not exceeding six months.
Where the request for extension of an extendable time limit has been filed before the expiry of this time limit and has not been accepted, the party concerned will be granted at least one day to meet the deadline, even if the request for extension arrived on the last day of the time limit.
For the rules applicable to the extension of time limits in inter partes proceedings (i.e. when there are two or more parties involved such as in opposition, invalidity and/or revocation proceedings) see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.
Unless otherwise provided either in the Regulations or in the specific paragraphs in this Guideline, as a general rule any first request for an extension which is received in time will always be granted independently of the explanation given by the party requesting it. However, any subsequent request for an ex tension of the same time limit will be refused, unless the party requesting it duly explains and j ustifies the ‘exceptional circumstances’ that prevented it from meeting the original time limit and the first extension and w hy a f urther extension is necessary. General, vague or standard explanations will not justify a second extension.
‘Exceptional circumstances’ entail events that are beyond reasonable control of the parties.
The party requesting an extension must explain and justify the exceptional circumstances that (a) prevented it from carrying out the required action during the previous two periods and (b) still prevent it from carrying it out, so that more time is needed.
Examples of justifications that can be accepted
• ‘Evidence is being gathered from distribution channels in several Member States / all our licensees / our suppliers. So far we have gathered documents from some of them but, due to the commercial structure of the company (as shown in the document enclosed), only recently have we been able to get in contact with the rest’.
• ‘In order to show that the mark has acquired distinctiveness through use we started market polls at the beginning of the period (on date X). The fieldwork was, however, only concluded recently (as shown in the enclosed documents); as a consequence, we need a second extension to finish the analysis and prepare our submissions to the Office.’
• ‘Death’ is also considered an ‘exceptional circumstance’. The same applies to serious illness, provided that no reasonable substitution was available.
Means of Communication, Time Limits
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• Finally, ‘exceptional circumstances’ also include ‘force majeure’ situations. ‘Force majeure’ is defined as a natural and unavoidable catastrophe that interrupts the expected course of events. It includes natural disasters, wars and terrorism, and unavoidable events that are beyond the party’s control.
4.1.4 Continuation of proceedings
Article 82 CTMR Communication No 6/05 of the President of the Office
The expressions ‘further processing’ and ‘continuation of proceedings’ are equivalent and are used indistinctly in these Guidelines.
Article 82 CTMR provides for the availability of further processing when time limits have been missed.
Communication No 6/05 of the President of the Office of 16/09/2005 on further processing indicates that Article 82 CTMR excludes various time limits laid down in certain articles of the CTMR. With a few exceptions, most of these references are self- explanatory.
• By excluding the time limits laid down in Article 81 CTMR, Article 82 CTMR excludes double relief for the same time limit.
• By excluding the time limits referred to in Article 112 CTMR, Article 82 CTMR provides that the three-month time limit within which conversion must be requested and the conversion fee must be p aid is not available for further processing. All other time limits fixed by the Office in the course of a conversion procedure are available.
• Article 82 CTMR further excludes the time limits laid down in Articles 41 and 42 CTMR.
○ The reference to Article 41 CTMR is to be interpreted in the same way as in Article 81(5) CTMR. Therefore, as regards Article 41 CTMR, only the opposition period and the time limit to pay the opposition fee is excluded from further processing, in accordance with the general rule that time limits which are not available for restitutio are also unavailable for further processing.
○ Article 42(1) CTMR lays down that the Office sets time limits for the parties to submit observations within the opposition procedure. Therefore, all the time limits set by the Office on the basis of Article 42(1) CTMR are excluded from further processing. This exclusion covers the time limits for the opponent to substantiate their opposition under Rule 19 CTMIR, the time limit laid down in Rule 20(2) CTMIR for the applicant to reply, the time limit under Rule 20(4) CTMIR for the opponent to rebut, as well as the time limits for any further exchange of arguments, if allowed by the Office (decision of 07/12/2011, R 2463/2010-1, ‘Pierre Robert/Pierre Robert’).
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Pursuant to Rule 50(1), 2nd sentence CTMIR, these (or the corresponding) time limits remain excluded in second instance proceedings before the Boards of Appeal.
None of the other time limits during the opposition procedure are referred to in Article 42 CTMR and, therefore, they are not excluded from further processing. Consequently, the Office will grant further processing for:
○ the time limit under Article 119(6) CTMR and Rule 16(1) CTMIR to translate the notice of opposition;
○ the time limit under Rule 17(4) CTMIR to remedy deficiencies that affect the admissibility of the opposition;
○ the time limit under Rule 22(1) CTMIR for the applicant to request that the opponent proves the use of its earlier mark;
○ the time limit under Rule 22(2) CTMIR for the opponent to submit proof of use of its earlier mark;
○ the time limit under Rule 22(6) CTMIR to translate proof of use.
• Article 82 CTMR does not exclude any of the time limits that apply in proceedings for revocation or declaration of invalidity.
The party seeking continuation of proceedings must make the request, which is subject to a fee as established in the CTMFR, within two months of the expiry of the original time limit and complete the omitted act by the time the request for continuation is received.
There can be no extension or continuation of the two-month deadline. There is no substantive requirement to be fulfilled such as when requesting restitutio in integrum.
4.1.5 Restitutio in integrum
A party to proceedings before the Office may be reinstated in its rights (restitutio in integrum) if it was, in spite of all due care required by the circumstances having been taken, unable to observe a t ime limit vis-à-vis the Office, provided that the failure to observe the time limit had the direct consequence, by virtue of the provisions of the Regulations, of causing the loss of any right or means of redress.
For further information see the Guidelines, Part A, General Rules, Section 8, Restitutio in Integrum.
General Principles to Be Respected in Proceedings
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 2
GENERAL PRINCIPLES TO BE RESPECTED IN PROCEEDINGS
General Principles to Be Respected in Proceedings
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Table of Contents
1 Adequate Reasoning................................................................................. 3
2 The Right to Be Heard............................................................................... 3 2.1 Examination by the Office of its own motion ...........................................3 2.2 Examination limited to adduced facts and evidence ...............................4
3 General Principles of EU Law................................................................... 4
4 Means of Taking Evidence........................................................................ 4 4.1 Written evidence.........................................................................................5 4.2 Oral evidence..............................................................................................5 4.3 Commissioning of experts.........................................................................6 4.4 Inspections .................................................................................................7 4.5 Affidavits.....................................................................................................7 4.6 Costs of taking evidence ...........................................................................7
5 Oral Proceedings....................................................................................... 8 5.1 Opening of oral proceedings.....................................................................8 5.2 Course of the oral proceedings.................................................................8
6 Minutes of Evidence and of Oral Proceedings........................................ 9
7 Decisions.................................................................................................... 9 7.1 Contents......................................................................................................9 7.2 Apportionment of costs .............................................................................9
General Principles to Be Respected in Proceedings
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1 Adequate Reasoning
Articles 75-78, 85 CTMR
Decisions of the Office will be in writing and shall state the reasons on which they are based. That duty has two purposes, namely to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgment of 12/07/2012, T-389/11 ‘Guddy’, not published in the ECR, para. 16 and the case-law cited).
However, the Office does not infringe the duty to state reasons when it does not respond to all the arguments raised by the parties.
It is sufficient that it sets out the facts and the legal considerations of fundamental importance in the context of the decision.
(See judgment of 16/05/2012, T-580/10, ‘Kindertraum’, and judgment of 10/10/2012, T-569/10, ‘Bimbo Doughnuts’).
2 The Right to Be Heard
In all proceedings before the Office, the parties will always have the opportunity to state their positions and to put forward their grounds of defence. The latter will be, in principle, submitted in writing.
Proceedings before the Office will primarily be in writing. Decisions may be only based on reasons on which the parties have had an opportunity to present their comments.
However, the Office is not obliged to give a legal opinion before the issue of a decision (see judgment of 08/03/2012, T-298/10, ‘Biodanza’).
The extent of the examination by the Office will vary, primarily, according to whether the proceedings are ex parte or inter partes. However, this examination may also vary depending on whether the proceedings relate to the examination of absolute grounds for refusal or relative grounds for refusal of registration or invalidity.
2.1 Examination by the Office of its own motion
The Office will examine the facts of its own motion:
• in ex parte proceedings, in particular the examination of a CTM application prior to publication.
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2.2 Examination limited to adduced facts and evidence
The Office is restricted in its examination to the facts, evidence and ar guments submitted by the parties:
• in inter partes proceedings (oppositions, cancellations).
If documents are filed or allegations are made after expiry of a t ime limit set by the Office, these will in principle be considered late and the document will not be taken into account.
Contrary to the above, legal issues will be taken into account by the Office irrespective of whether pleaded by the parties, for example in the assessment of similarity between signs or goods, made on t he basis of the comparison of the two trade mark applications/registrations.
Changing circumstances arising in the course of the proceedings will also be taken into account. For example, if during opposition proceedings the earlier right on which the opposition was based lapses (e.g. it is not renewed or is declared invalid), this will always be taken into account.
3 General Principles of EU Law
The general principles of EU Law such as equal treatment and sound administration must be respected by the Office (see judgment of 24/01/2012, T-260/08, ‘Visual Map’).
The principle of equal treatment must however be applied in a manner that is consistent with the principle of legality according to which a per son may not rely, in support of its claim, on an unlawful act committed in another procedure (see judgment of 02/05/2012, T-435/11, ‘UniversalPHOLED’).
4 Means of Taking Evidence
Article 78 CTMR Rules 57-59 CTMIR
In any proceedings before the Office, evidence may be t aken. The means for taking evidence are listed in Article 78 CTMR and R ule 57 CTMIR, although that list is not exhaustive.
The means of evidence are as follows:
• hearing the parties • requests for information • the production of documents and items of evidence • hearing witnesses • opinions by experts • statements in writing sworn or affirmed or having a similar effect under the law of
the State in which they are drawn up • inspection.
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Some of these means will be m ore frequently employed, such as requests for information, statements in writing and, in particular, the submission of documents and items of evidence. The others, such as hearing of the parties, witnesses or experts, inspections, etc., will be used only exceptionally.
The Office will be the sole judge of the expediency of employing these means. It will do so only when it considers them necessary for the examination of the file.
A decision to refuse a request for the taking of evidence will not be subject to a separate appeal and can only be appealed together with the final decision.
The procedure followed by the Office varies in accordance with the nature of the proposed means of taking evidence.
4.1 Written evidence
When taking evidence, the Office will confine itself to written evidence in most cases. This is the least costly, simplest and most flexible means of taking evidence.
In this regard, the Office will give preference to the submission of documents and items of evidence. However, other possible written means of taking evidence include not only a request for information or statements in writing sworn or affirmed or having a similar effect under the law of the State in which they are drawn up, but also opinions by experts which may be confined solely to the submission of a written report.
The Regulation makes no provision for any special procedure or formality. Therefore, the Office’s general rules of procedure apply.
In particular, any information, documents or items of evidence submitted by one party will be communicated to the other parties as soon as possible, and the Office may allow the other parties a time limit of, in principle, two months to reply thereto.
The Office will base its decision only on r easons on w hich both sides have had an opportunity to submit observations.
4.2 Oral evidence
This refers to evidence taken in oral proceedings, such as the hearing of oral evidence of parties, witnesses or experts.
Reminder: only in exceptional cases will the Office decide to hear oral evidence, in particular because of the cumbersome nature of the procedure, which is liable to protract the proceedings, and because of its cost which, eventually, has to be borne by the unsuccessful party in inter partes proceedings, or in some cases by both parties.
Where the Office considers it necessary to hear the oral evidence of parties, of witnesses or of experts, it will take a decision stating the means by which it intends to obtain evidence (in the present case, a hearing), the relevant facts to be proven and the date of hearing.
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If the oral evidence has been requested by one of the parties, the decision will likewise impose upon that party a period, in principle one month, within which that party must make known the names and addresses of the witnesses and experts whom it wishes to be heard.
Further to its prior decision, the Office will summon the parties, witnesses or experts. The period of notice to appear will be at least one month, unless the persons concerned agree to a shorter period. The summons will indicate, in addition to the date of the hearing and the matters of fact to which the hearing will relate, the names of the parties to the proceedings and particulars of the costs, if any, which the witnesses or experts may be entitled to have reimbursed by the Office.
If the Office invites a party to give evidence orally, it will so inform the other parties, who may in that case intervene.
Similarly, when the Office summons an expert or a witness for a hearing, it will so inform the parties who may in that case be present and put questions to the person giving evidence.
4.3 Commissioning of experts
The use of the means of taking evidence considered in this section is exceptional, for the abovementioned reasons. More especially, opinions by experts or inspections will be employed only as a very last resort to avoid the substantial costs and protraction of the proceedings caused thereby.
It is the Office who decides whether an expert’s opinion is commissioned, and who is appointed as expert. The Office does not maintain a list or special committee of experts, because of the exceptional nature of this means of taking evidence.
The terms of reference of the expert include:
• a precise description of their task • the time limit laid down for their report • the names of the parties to the proceedings • particulars of any costs which may be reimbursed by the Office.
On receipt of the expert’s report, the Office will submit copies thereof to the parties.
If the Office considers the report sufficient, and if the parties accept this form of report, it will in principle be used only in its written form. The submission of an oral report or the hearing of oral evidence given by the expert will, therefore, be an option to be employed at the Office’s discretion.
The parties have the option of objecting to an expert on grounds of incompetence, because of a conflict of interest, because the expert has previously been involved in the dispute or because the expert is suspected of partiality. No refusal may be based on the nationality of the appointed expert. If parties object to the expert, the Office will rule on the objection. The grounds which may be cited for objecting to an expert are the same as those on which objection may be made to an examiner or to a member of a Board of Appeal pursuant to Article 137 CTMR.
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4.4 Inspections
Only in very exceptional circumstances will the Office consider it necessary to carry out an inspection in situ. In that case, it will take a decision, which will be motivated as any other decision of the Office, stating the means by which it intends to obtain evidence (in the present case, an inspection), the relevant facts to be proven and the date of the inspection.
The date fixed for the inspection will be such as to allow the party concerned sufficient time to prepare for it.
4.5 Affidavits
Sworn or affirmed statements in writing are equally admissible as evidence, if provided by a party. However, the credibility of these statements must be considered, taking into account whether the information is correct, accurate, whether it comes from an independent source and/or is supported by written information (e.g. statements in which the issuing person confirms that the records of their company contain certain information). The abuse of Article 78(1)(f) CTMR by parties as a means of self- testifying is unacceptable.
In order for a statement to be considered sworn or affirmed, it must be established that making a false statement would, under the law of the Member State in which the document was drawn up, be considered a criminal offence. It is precisely the potential criminal sanction that will induce people to tell the truth, and will provide the Office with the assurance that the alleged facts are true.
Where that is not the case, the document can only be considered as any other written document or statement without any convincing evidential value.
4.6 Costs of taking evidence
The taking of evidence by the Office may be made conditional upon a deposit by the party who has requested it. The sum will be fixed by the Office by reference to an estimate of the costs.
The witnesses and ex perts summoned or heard by the Office will be entitled to reimbursement of expenses for travel and subsistence. An advance may be granted to them. The witnesses and experts will also be entitled, respectively, to compensation for loss of earnings and fees for their work.
The amounts reimbursed and the advances for expenses are determined by the President of the Office and are published in the Official Journal of the Office. For details, see Decision No EX-99-1 as amended by Decision No EX-03-2 of 20/1/2003.
When the Office, on its own initiative, adopts means of taking evidence which require oral evidence from witnesses or experts, liability for the costs will lie with the Office. However, if the giving of oral evidence has been requested by a party then liability will lie with that party, subject to the decision on apportionment of costs in inter partes proceedings.
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5 Oral Proceedings
Article 77 CTMR
Article 77 CTMR provides that the Office may hold oral proceedings.
Any unofficial contacts such as telephone conversations will not be considered to constitute oral proceedings within the meaning of Article 77 CTMR.
The Office will hold oral proceedings either to its own instance or at the request of any party to the proceedings only when it considers them absolutely necessary. This will be at the Office’s discretion. In the vast majority of cases the possibility for the parties to present their observations in writing will be sufficient, and it will be hard to see what additional material could be submitted at a hearing without breaching the principle that facts and evidence must be adduced in due time and within the time limits set in the written procedure.
5.1 Opening of oral proceedings
Where the Office has decided to hold oral proceedings and to summon the parties, the period of notice may not be less than one month unless the parties agree to a shorter period.
Since the purpose of any oral proceedings is to clarify all points remaining to be settled before the final decision is taken, it is appropriate that the Office, in its summons, should draw the parties’ attention to the points which in its opinion need to be discussed in order for the decision to be taken.
In so far as the Office considers that certain matters require it, and to facilitate the hearing, it may invite the parties to submit written observations or to submit evidence prior to the oral hearing. The period fixed by the Office for the receipt of such observations will take account of the fact that these must reach the Office within a reasonable period of time to enable them to be forwarded to the other parties.
The parties may likewise submit evidence in support of their arguments on their own initiative. However, if such evidence should have been produced at an earlier stage of the proceedings, the Office will be the sole judge of the admissibility of these items of evidence, which complies with the principle of hearing both parties where appropriate.
5.2 Course of the oral proceedings
Oral proceedings before the examiners, the Opposition Division and the department entrusted with the keeping of the Register will not be public.
Before the Cancellation Division and the Boards of Appeal, oral proceedings, including delivery of the decision, will, as a matter of principle, be public.
If a party who has been duly summoned to oral proceedings does not appear before the Office, the proceedings may continue without them.
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At the end of the oral proceedings the Office should allow the parties to present their final pleadings.
6 Minutes of Evidence and of Oral Proceedings
Rule 60 CTMIR
Minutes of the taking of evidence and o f oral proceedings will be c onfined to the essential elements. In particular, they will not contain the verbatim statements made, nor will they be submitted for approval. However, any statements of experts or witnesses will be recorded so that at further instances the exact statements made can be verified. The parties will receive a copy of the minutes (but not of the recorded statements).
7 Decisions
7.1 Contents
Article 75 CTMR Rule 55 CTMIR
Decisions of the Office shall be reasoned to such an extent that their legality can be assessed at the appeal stage or before the General Court or Court of Justice.
The decision will cover the relevant point raised by the parties. In particular, if there are different outcomes for some goods and services of the CTM application or registration at issue, the decision will make clear which of the goods and services are refused and which are not.
The name or names of the person(s) who took the decision will appear at the end of the decision (Rule 55 CTMIR)
At the end of the decision, a notice will be added about the availability of an appeal.
Failure to include such an availability notice does not affect the legality of the decision and does not affect the time limit for filing an appeal.
7.2 Apportionment of costs
Article 82(5) and Article 85 CTMR Rules 51 and 94 CTMIR
In ex parte proceedings, there is no decision on costs, nor any apportionment of costs. Fees paid to the Office will not be reimbursed (exceptions: Rule 51 CTMIR, refund of the appeal fee in certain cases, as well as Article 82(5) CTMR, refund of the fee for further processing if further processing is not granted).
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Decisions on costs, or the fixing of costs, are limited to opposition and cancellation proceedings (including the ensuing appeal proceedings or proceedings before the GC and CJ). ‘Costs’ comprise the costs incurred by the parties to the proceedings, chiefly representation costs (although subject to relatively low ceilings) as well as costs for taking part in oral hearings. ‘Costs’ also comprise the opposition or cancellation fee paid by the opponent or third party.
‘Apportionment of costs’ means that the Office will decide whether and to what extent the parties have to reimburse each other for those amounts. It does not involve the relationship to the Office (fees paid, internal costs of the Office).
Therefore, if a decision is given in inter partes proceedings, the Office will decide on the apportionment of costs. The losing party will bear the fees and costs incurred by the other party which are essential to the proceedings. If both parties fail on one or more heads or to the extent that equity so requires, the Office may determine a different apportionment of costs.
Where the amount of costs is limited to representation costs incurred by the other party (or possibly to the reimbursement of the opposition or cancellation fee), the decision will contain the fixing of the costs to be paid by the losing parties. No proof that those costs were actually incurred is needed for this purpose.
‘Representation costs’ means only costs for professional representatives within the meaning of Article 93 CTMR, not for employees (even of another company with economic connections).
This part of the decision is a title that can be executed in simplified proceedings, in all Member States of the EU.
In cases of a withdrawal or a surrender of the contested CTM application or CTM or a withdrawal of the opposition or the request for cancellation, the Office will not decide on the substance of the case but it will normally take a decision on costs. The party who terminates the proceedings will bear the fees and costs incurred by the other party. When the case is closed for other reasons the Office will fix the costs at its discretion. In no case will the decision on costs be based on the hypothetical assumptions of who might have won the proceedings if a decision on substance had become necessary. Furthermore, within one month of the date of notification fixing the amount of the costs, the party concerned may submit a r equest for review. This request must state the reasons on w hich it is based and must be accompanied by the corresponding fee (Article 2(30) CTMFR).
Language of Proceedings
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 4
LANGUAGE OF PROCEEDINGS
Language of Proceedings
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FINAL VERSION 1.0 01/08/2014
Table of Contents
1 Introduction ................................................................................................3 2 From filing to registration (excluding opposition) ...................................3
2.1 Application ...................................................................................................... 3 2.2 Other requests ................................................................................................ 4
3 After registration (excluding cancellation) ...............................................4 4 Opposition and cancellation......................................................................4 5 Invariable nature of the language rules ....................................................5 6 Translations and their certification ...........................................................5 7 Non-compliance with the language regime ..............................................5
Language of Proceedings
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1 Introduction
Article 119 CTMR Rules 95, 96, 98 CTMIR Communication No 4/04 of the President of the Office
There are five Office languages: English, French, German, Italian and Spanish. However, an application for a Community trade mark may be filed in any of the official EU languages. The CTMR lays down rules for determining and using the language of the proceedings. These rules may vary from one set of proceedings to another, in particular depending on whether the proceedings are ex parte or inter partes.
This section deals only with the horizontal provisions common to all types of proceedings. The exceptions for particular types of proceedings are dealt with in the corresponding sections of the Guidelines.
2 From filing to registration (excluding opposition)
2.1 Application
A Community trade mark application (CTM application) may be filed in any of the official EU languages.
A second language must be indicated from among the five languages of the Office.
During the proceedings, the applicant may use
• the first language if it is an Office language;
• or the second language, at its discretion, if the first language is not an Office language.
The Office uses
• only the first language if it is an Office language;
• the first language if it is not an Office language, following the CJEU ‘Kik’ judgment (judgment of 09/09/2003, C-361/01 P), unless the applicant has declared in writing its consent for the Office to use the second language, in which case the Office proceeds accordingly. Consent to use of the second language must be given for each individual file; it may not be given for all existing or future files.
This language regime applies throughout the application and ex amination procedure until registration, except for oppositions and ancillary requests (see following paragraph).
Language of Proceedings
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2.2 Other requests
Rule 95(a) CTMIR
During the period from filing to registration, any request, application or declaration that is not concerned with the examination of the application as such but that starts an ancillary procedure (inspection of files, registration of a transfer or licence, request for conversion, declaration of division) may be submitted in the first or second language, at the discretion of the CTM applicant or third party. That language then becomes the language of the proceedings for those ancillary proceedings. This applies irrespective of whether or not the first language is an Office language.
3 After registration (excluding cancellation)
Rule 95(b) CTMIR
Any request, application or declaration of division or surrender, with the exception of a cancellation request, made after the CTM has been registered must be submitted in one of the five Office languages.
Example: After a CTM has been registered, the CTM proprietor may file a request for the registration of a licence in English and, a few weeks later, file a request for renewal in Italian.
4 Opposition and cancellation
Rules 16 and 38(1) CTMIR
An opposition or request for cancellation (application for revocation or declaration of invalidity) may be filed
• at the discretion of the opponent/applicant for cancellation in the first or second language of the CTM application if the first language is one of the five languages of the Office;
• in the second language if the first language is not an Office language.
This language becomes the language of the proceedings for the opposition or cancellation proceedings, unless the parties agree to a different one (from among the official EU languages).
An opposition or request for cancellation may also be filed in any of the other Office languages, provided that within one month of the expiry of the opposition period or within one month of the filing of the application for cancellation, the opponent/applicant for cancellation files a t ranslation into a l anguage that is available as a l anguage of proceedings.
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5 Invariable nature of the language rules
The Regulations allow certain choices to be made from among the available languages in the course of the proceedings (see above) and, during specified periods, a different language to be chosen as the language of the proceedings for opposition and cancellation. However, with those exceptions, the language rules are invariable. In particular, the first and second languages may not be amended in the course of the proceedings.
6 Translations and their certification
Rule 98 CTMIR
The general rule is that where a translation of a document is required, it must reach the Office within the time limit set for filing the original document. This applies unless an exception to this rule is expressly provided in the Regulations.
The translation must identify the document to which it refers and r eproduce the structure and contents of the original document. The Office may require that a certified translation be filed within a specific period, but does so only if it has reason to doubt the veracity of the translation.
7 Non-compliance with the language regime
In case the language regime is not complied with the Office will issue a deficiency letter. S hould the deficiency not be r emedied the application or the request will be refused.
For more information on language regimes for particular types of proceedings the corresponding sections of the Guidelines should be consulted.
Revocation of Decisions, Cancellation of Entries in the Register and Correction of Errors
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FINAL VERSION 1.0 DATE 01/08/2014
GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 6
REVOCATION OF DECISIONS, CANCELLATION OF ENTRIES IN THE
REGISTER AND CORRECTION OF ERRORS
Revocation of Decisions, Cancellation of Entries in the Register and Correction of Errors
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Table of Contents
1 Revocation of Decisions and Cancellation of Entries in the Register .. 3 1.1 Obvious procedural error attributable to the Office....................... 3 1.2 Who decides on requests for revocation/cancellation? ................ 4 1.3 Procedural aspects ........................................................................... 4
1.3.1 Assessment.......................................................................................4 1.3.2 Distinction between one and two parties............................................5
1.3.2.1 Procedures for one party.................................................................. 6 1.3.2.2 Procedure for more than one party .................................................. 6
2 Correction of Errors in Decisions and other Notifications .................... 7 2.1 Correction of errors in decisions..................................................... 7
2.1.1 General remarks................................................................................7 2.1.2 Procedural aspects............................................................................8
2.1.2.1 Time limit .......................................................................................... 8 2.1.2.2 Assessment...................................................................................... 8 2.1.2.3 Procedure......................................................................................... 9
2.2 Correction of errors in notifications other than decisions............ 9
3 Correction of Errors in Publications and Correction of Errors in the Register or in the Publication of the Registration .................................. 9
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1 Revocation of Decisions and Cancellation of Entries in the Register
Article 80 CTMR
Under certain conditions a decision taken by the Office can be revoked or an entry in the Register cancelled. This part of the Guidelines deals with the practical aspects of revocation/cancellation under Article 80 CTMR; it does not apply to Registered Community designs (RCDs).
The revocation procedure can be initiated either by a party to the proceedings or by the Office on its own motion.
A decision can only be revoked by another decision. The same applies to cancellations of entries in the register.
1.1 Obvious procedural error attributable to the Office
A decision may be revoked or an entry in the Register cancelled only when it contains an obvious procedural error attributable to the Office.
A decision/entry contains an obvious procedural error where there was an error in the proceedings (usually when an essential procedural step was omitted) or where the decision/entry ignores a procedural action taken by the parties. Procedural errors have to be distinguished from errors in substance, where no r evocation is possible. The decision/entry is wrong from a procedural point of view (i.e. suffers from an obvious procedural error) if the procedure established by the Regulations was not followed properly.
The following is a non-exhaustive list of examples of obvious procedural errors demanding revocation.
• The CTM is registered despite having previously been withdrawn.
• The opposition has been found admissible even though some admissibility requirements were not met (see CJEU judgment of 18/10/2012, C-402/11 P, ‘REDTUBE’).
• The CTM is registered despite a deficiency in the payment of the application fees.
• The CTM is registered despite a successful opposition.
• The CTM’s refusal on absolute grounds is notified before expiry of the time limit given to the applicant to send observations in reply to the objection, or ignoring the observations the applicant filed on time. (Where the applicant has responded within the time limit, the examiner can continue dealing with the application, for example by issuing a decision, and is not required to wait until expiry of the time limit set in the objection letter.)
• The CTM is refused on absolute grounds, ignoring a valid request from the applicant for the opportunity to submit evidence of acquired distinctiveness (Article 7(3) CTMR).
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• The CTM is refused on absolute grounds, ignoring the evidence of acquired distinctiveness duly submitted.
• The CTM is refused by the Opposition Division, ignoring an unprocessed request for proof of use or without dealing with the issue of proof of use.
• The CTM is registered despite a pending opposition.
• The opposition is rejected on the basis of lack of proof of use but ○ the opponent was not expressly given a t ime limit for submitting proof of
use; ○ proof of use was filed on time and was overlooked.
• The opposition decision was rendered while the proceedings were suspended or interrupted or, more generally, while a time limit for one of the parties was still running.
• Any breach of the right to be heard (observations not forwarded to the other party when that party should have been given a time limit to reply pursuant to the Regulation or the Office’s practice).
• When closing a file due to a limitation of the contested CTMA or a withdrawal, the Office has issued a decision on costs, overlooking an agreement between both parties on costs that was on file at the time.
• A transfer of ownership was entered in the Register despite insufficient evidence of the transfer.
Whether or not these procedural errors were a result of human error or of the incorrect functioning of an IT tool is immaterial.
The effect of the revocation of a decision or of the cancellation of an entry in the Register is that the decision or entry is deemed to never have existed. The file is returned to the procedural stage it was at before the erroneous decision or entry was made.
1.2 Who decides on requests for revocation/cancellation?
Decisions on revocation/cancellation are made by the department or unit who made the entry or took the decision.
1.3 Procedural aspects
Article 80 CTMR
1.3.1 Assessment
Examiners must verify, firstly, whether the decision or entry contains an obv ious procedural error, secondly, whether more than six months have passed since notification of the decision or entry in the Register and, thirdly, whether there has been an appeal against the decision/entry in the Register.
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(a) Assessment: It must be verified whether the decision or entry contains an obvious procedural error. For further information see above under paragraph 1.1.
(b) Six months: Whenever an obvious procedural error comes to the attention of an examiner, it must be established whether more than six months have passed since notification of the decision or entry in the Register. Revocation/cancellation is not possible if more than six months have passed (Article 80(2) CTMR).
Article 80 CTMR mentions that cancellation or revocation ‘shall be det ermined’ within six months of the date of the entry or decision. This means that even if the time limit has lapsed, an entry will be cancelled or a decision revoked if the Office is made aware in writing of an obvious procedural error in that entry or decision within six months of notification of that entry/decision. It also means that an entry can be cancelled or a decision revoked after the six-month period if the Office sends a notification initiating the cancellation/revocation proceedings within six months of notification of that entry/decision.
(c) Decision/entry against which appeal pending: Before issuing a letter notifying parties of its intention to cancel an entry or revoke a decision, and before actual cancellation/revocation, the Office must verify whether the decision or entry in the Register has been appealed against. A decision or entry cannot be revoked/cancelled if an appeal against it is pending before the Boards (decision of 28/04/2009, R 323/2008-G – ‘BEHAVIOURAL INDEXING’).
1.3.2 Distinction between one and two parties
The procedure where only one party is affected is described below in paragraph 1.3.2.1. Examples are when the Office duly receives third-party observations that raise doubts but the CTMA is not blocked and continues to registration, and where a CTMA is registered although the application fee has not been paid.
Errors that concern incorrect handling of the files after a decision has been taken, for example where a CTMA is registered despite having been refused on absolute grounds, affect only one party – the applicant.
If revocation of a decision is likely to affect more than one party, the procedure described below in paragraph 1.3.2.2 must be followed. For example, more than one party is affected by the revocation of a decision in opposition proceedings where the Office overlooked a request for proof of use.
Errors that concern incorrect handling of the files after an opposition decision has been taken, such as where the entire CTMA is rejected but is still registered, are considered to affect both the applicant and the opponent.
Errors in registering a transfer of ownership also affect more than one party. While the procedure is essentially ex parte, the Office may, depending on the case, consider that more than one party is affected: the new owner, the old owner and the third party that should have been entered in the Register.
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1.3.2.1 Procedures for one party
Error found by Office
If the Office itself finds out that an error has been made, it informs the applicant/owner of its intention to revoke the decision/cancel the entry and sets a time limit for observations of one month if the applicant/owner has its head office in the EU or two months if it does not. The letter must state the reasons for the revocation/cancellation.
If the applicant/owner agrees or does not submit any observations, the Office revokes the decision/cancels the entry.
If the applicant/owner does not agree to revocation or cancellation, a formal decision has to be taken, which is subject to the usual requirements as described in the Guidelines, Part A, General Rules, Section 2, General Principles to be respected in Proceedings, paragraph 7, Decisions.
Error notified by affected party
If the applicant/owner informs the Office in writing of an error, there is no need to ask for observations. In such cases, it must be determined whether the request for revocation/cancellation is eligible. If so, the decision or entry in the Register is revoked/cancelled. If the Office finds that there are no reasons to revoke/cancel, it rejects the party’s request by a decision, giving the reasons why the request is rejected.
1.3.2.2 Procedure for more than one party
Error found by Office
If the Office itself finds out that an error has been made, it informs both parties of its intention to revoke the decision/cancel the entry and sets a time limit for observations of, in principle, two months (reduced to one month if both parties have their respective head offices in the EU).
If the parties agree or do no t submit any observations in reply, the Office must revoke/cancel the decision/entry in the Register.
If one of the parties does not agree to the revocation/cancellation, a reasoned decision has to be taken, which is subject to the usual requirements as described in the Guidelines, Part A, General Rules, Section 2, General Principles to be respected in Proceedings, paragraph 7, Decisions.
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Error notified by one of the parties
If the party adversely affected by the error informs the Office in writing of an error, it must be determined whether the request for revocation/cancellation is eligible. If so, the Office notifies the party that benefited from the error (the other party) of its intention to revoke/cancel (and sends a copy of this notification to the first party for information). A time limit for observations of, in principle, two months is set (which may be reduced to one month if the adversely affected party has its head office in the EU).
If the other party agrees or does not submit any observations in reply, the Office must revoke the decision/cancel the entry.
If the other party does not agree to revocation or cancellation, a reasoned decision has to be taken, which is subject to the usual requirements as described in the Guidelines, Part A, General Rules, Section 2, General Principles to be respected in Proceedings, paragraph 7, Decisions.
For example, where an opponent that has seen its opposition upheld and the CTMA rejected informs the Office that the CTMA has nevertheless been registered, the applicant must be informed and given two months to submit observations. The entry will be cancelled regardless of whether the applicant agrees or does not reply.
If the party that benefited from the error informs the Office in writing, it must be determined whether the request for revocation/cancellation is eligible. If so, the party adversely affected by the error must be informed accordingly. As revocation/cancellation will be to the latter’s advantage, the decision can be revoked or entry cancelled at the same time as the letter is sent (to both parties). There is no need for the party that benefited from the error to submit observations, as its letter informing the Office of the error can be taken as its agreement to revocation/cancellation.
For example, where an applicant informs the Office that its CTMA has been registered despite being rejected by decision of the Office, the entry in the Register must be cancelled. There is no need to hear the opponent.
Finally, once a revocation or cancellation has become final, it must be published if a wrong entry in the Register has already been published. If the Office finds that there are no reasons to revoke a decision/cancel an entry, it will reject the relevant request by letter and send copies of both this letter and the original request to the other party for information.
2 Correction of Errors in Decisions and other Notifications
Rule 53 CTMIR
2.1 Correction of errors in decisions
2.1.1 General remarks
According to Rule 53 CTMIR, where the Office becomes aware, of its own motion or at the instance of a party to the proceedings, of a linguistic error, error of transcription or obvious mistake in a decision, it has to ensure that the error or mistake is corrected by the department or division responsible. It is apparent from the wording that the only
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legitimate purpose of corrections made on the basis of this provision is to correct spelling or grammatical errors, errors of transcription – such as errors relating to the names of the parties or the written forms of the signs – or errors that are so obvious that nothing other than the wording as corrected could have been under stood. However, when the error affects the dictum of a decision, only revocation is possible, and then only if all the conditions are met.
The Office defines ‘obvious error’ as in No B.16 in the Joint Statements by the Council and the Commission entered in the minutes of the Council meeting at which the CTMR was adopted in relation to Article 44(2) CTMR and to Rule 53 CTMIR: ‘… the words “obvious mistake” should be understood as meaning mistakes which obviously require correction, in the sense that nothing else would have been i ntended than what is offered as the correction.’
The distinction between revocation under Article 80 CTMR and c orrection under Rule 53 CTMIR is that revocation annuls a decision, whereas the correction of errors does not affect the validity of the decision and does not open a new appeal period.
An example of an error of transcription would be when a trade mark is referred to incorrectly, for example, ‘HAMMER’ is referred to as ‘HUMMER’.
An example of an obvious error is when the earlier mark and the contested mark are interchanged in the comparison of the signs.
2.1.2 Procedural aspects
2.1.2.1 Time limit
The Regulations do not set a time limit for the correction of errors in decisions. This suggests that corrections can be made any time, as long as they do not clash with the principle of equity.
2.1.2.2 Assessment
Examiners must verify, firstly, whether the error to be corrected is a linguistic error, an error of transcription or an obvious error and, secondly, whether there has been a n appeal against the decision.
(a) Assessment: Before sending a correction letter, the examiner must verify whether the error to be corrected is a linguistic error, an error of transcription or an obvious error.
(b) Appeal: The examiner must also verify whether there has been an appeal against the decision. No correction can be made if an appea l against the decision is pending before the Boards. However, the Boards must be informed of the situation.
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2.1.2.3 Procedure
Linguistic errors, errors of transcription and obvious errors are corrected by sending a corrigendum to the affected party/parties. The accompanying letter must briefly explain the corrections.
Once the correction has been made, the examiner makes sure that the changes are reflected in the decision as it appears in the Office’s database.
The date of the decision or entry remains unchanged after correction. Therefore, the time limit for appeal is not affected.
When the fixation of costs is part of the dictum of the decision it can be corrected only by revocation.
2.2 Correction of errors in notifications other than decisions
Errors in notifications other than decisions can be remedied by sending a c orrected notification indicating that the latter replaces and annuls the one previously sent. The notification should include an apology for any inconvenience caused.
3 Correction of Errors in Publications and Correction of Errors in the Register or in the Publication of the Registration
Article 39 CTMR Rules 14, 27, 84, 85 CTMIR
Article 39 CTMR states that CTMAs that have not been refused on absolute grounds should be published one month after the search report has been issued.
Rule 14 CTMIR refers to the correction of mistakes and errors in the publication of the application pursuant to Article 39 CTMR.
Rule 27 CTMIR refers to mistakes and errors in the registration of a CTM or in any entry made in the Register in accordance with Rule 84 CTMIR, including any Decision of the President pursuant to Rule 84(4) CTMIR, and to errors in the publication of the those entries in the Register.
The main difference between the correction of an entry in the Register pursuant to Rule 27 and the cancellation of an entry in the Register pursuant to Article 80 CTMR is that the former relates to only one part of the publication, whereas the latter cancels the whole entry in the Register.
Where there is an error attributable to the Office, the latter corrects it either of its own motion (where the Office itself has become aware of the error) or at the proprietor’s request.
Corrections of errors in CTM applications that do not require republication of the application for opposition purposes are published in Section B.2 of the Bulletin. Corrections pursuant to Rule 14 CTMIR that do require republication of the application
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for opposition purposes are published in Section A.2. However, republication will only be required if the initial publication published a more limited list of goods and services.
In all cases, the affected party/parties are notified of the corrections pursuant to Rule 14 or 27.
The following are examples of errors that can be corrected (Rule 27(1) CTMIR).
• The CTM has been published for one class fewer than applied for.
• The sign ‘x’ was applied for and the publication refers to the sign ‘y’, or the list of goods and services published is wrong.
• The CTM has been registered without taking into consideration a limitation.
Corrections of errors in registered CTMs that do not require republication for opposition purposes are published in subsection B.4.2 of the Bulletin. Corrections pursuant to Rule 27 CTMIR that require republication of part of the application for opposition purposes are published in subsection A.2.1.2.
Republication for opposition purposes will always be required where a correction involves changes to the representation of the mark or a broadening of the list of goods and services already published. For other corrections, republication must be decided on a case-to-case basis.
Corrections to entries in the Register must be published pursuant to Rules 27(3) and 85(2) CTMIR. Corrections of relative errors in an entry in the Register are published in subsection B.4.2 of the Bulletin. All the examples listed above (of corrections and of revocation/cancellations) require publication.
No correction need be published pursuant to Rule 27 CTMIR when the initial publication was in the wrong section of the Bulletin. According to Communication No 11/98 of the President of the Office of 15/12/1998, ‘the legal effect of the publication under Article 9(3) of the Community Trade Mark Regulation remains the same regardless of whether the publication is made in Part B. 1 or Part B. 2 of the Bulletin’.
Time limit: There is no time limit for corrections pursuant to Rule 14 or 27 CTMIR. They can be made at any time once the error has been detected.
Revision
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 7
REVISION
Revision
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Table of Contents
1 General Principles ..................................................................................... 3 1.1 Introduction ................................................................................................3 1.2 In ex parte cases ........................................................................................3 1.3 In inter partes cases...................................................................................3
2 Procedure where Revision is Available ................................................... 4 2.1 Verification of whether the appeal is deemed to have been filed ...........4 2.2 Verification whether the appeal is admissible..........................................4 2.3 Verification whether the appeal is well founded ......................................5
2.3.1 Situations where the initial decision may be rectified ..................................... 5 2.3.2 Situations where, although the appeal is well founded, revision may not be
granted............................................................................................................ 5
2.4 Impact of a request for restitutio in integrum...........................................5 2.5 Decision to grant revision..........................................................................6
2.5.1 Deadline for taking the decision ..................................................................... 6 2.5.2 Contents of the decision ................................................................................. 6
2.6 Appeal against the decision ......................................................................6 2.7 Communication of the decision ................................................................7
3 Procedure where Revision is not Granted .............................................. 7
Revision
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1 General Principles
Articles 61, 62 CTMR
1.1 Introduction
It is the responsibility of the Boards of Appeal to decide on an appealed decision. Pursuant to Articles 61 and 62 CTMR, the Board sends the appealed decision back to the department that took the decision in order for it to be revised. This enables the first- instance decision-taker to rectify the decision if the appeal is admissible and well founded. Inter partes cases may only be rectified if authorised by the other party (see decision of 11/08/2009, R 1199/2008-4 – ‘DIPLOMÃTICO/DIPLOMAT’)
The purpose of revision is to avoid the Boards of Appeal being inundated with appeals against decisions for which a need for rectification has been recognised by the Office. However, the aim is not to remove mistakes in decisions made by the Office without changing the outcome of a case, but to grant the appellant the relief sought.
1.2 In ex parte cases
Revision can be granted where an appeal has been lodged against a decision for which the Boards of Appeal are competent pursuant to Article 58 CTMR.
If the division or instance of the Office whose decision is appealed considers the appeal to be admissible and well founded, it must rectify its decision.
If the decision is not rectified within one month after receipt of the statement of grounds of appeal, the appeal must be remitted to the Boards of Appeal without delay and without comment as to its merits.
1.3 In inter partes cases
Revision is also available in inter partes proceedings. These comprise opposition proceedings (including where the opposition is rejected as inadmissible), proceedings concerning applications for revocation or declaration of invalidity, and c ertain proceedings concerning inspection of files.
Revision is not available where the one-month time limit following receipt by the Office of the statement of grounds of appeal has expired.
Revision requires a pending appeal. It is not available where an appeal has been withdrawn before the one-month time limit for revision has expired and a decision on revision has not yet been taken.
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2 Procedure where Revision is Available
Articles 61, 130 CTMR
Where revision is available, the Registrar of the Board of Appeal sends the appeal documents and any subsequent communications relating to the appeal to the Office division that took the decision.
The division concerned examines whether revision may be granted.
Revision may only be granted where the appeal is admissible and well founded.
2.1 Verification whether the appeal is deemed to have been filed
Article 60 CTMR Rule 49(3) CTMIR Article 2(18), Article 8(3), (4) CTMFR
As an appeal is deemed to have been filed only when the appeal fee has been paid, the appealed decision for which the appeal fee has not been paid may not be revised.
The competent division must, therefore, verify whether the appeal fee has been fully paid within two months of notification of the contested decision.
Otherwise, the appealed decision cannot be r evised and has to be r emitted without delay (not necessarily only at the end of the one-month time limit) to the Registrar at the Boards of Appeal.
For more details on fees, see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges.
2.2 Verification whether the appeal is admissible
Articles 58-60 CTMR Rule 48, Rule 49(1), (2) CTMIR
The competent division must be satisfied that the appeal is admissible, that is that it complies with the requirements laid down in Articles 58 to 60 CTMR and Rule 48(1)(c) and Rule 48(2) CTMIR, as well as with all other requirements to which Rule 49(2) CTMIR refers.
The competent division may not under any circumstances contact the appellant to remedy formal or substantive deficiencies of the appeal. This prohibition includes oral contact. Where the requirements for admissibility of the appeal are not met, the case must be remitted without delay to the Boards of Appeal.
Where the language used is not available for lodging the appeal, revision will not be granted.
Revision
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Where essential indications such as the applicant’s name and address are missing or there is no signature or authorisation, revision will not be granted.
2.3 Verification whether the appeal is well founded
The competent division has to verify whether the appeal is well founded.
2.3.1 Situations where the initial decision may be rectified
The relevant date for assessing whether the appeal is well founded is that on which the competent division examines whether or not revision can be granted.
The appeal is well founded where the contested decision was incorrect.
2.3.2 Situations where, although the appeal is well founded, revision may not be granted
Articles 7(3), 37(1) CTMR Rules 9, 11 and 13 CTMIR
Revision may be gr anted only if the objections raised by the Office are completely overcome.
For example, an appeal may not be revised where the CTM applicant only partially removes the deficiencies pointed out by the Office.
Another example is where the examiner has objected to the list of goods and services and the CTM applicant files a new list of goods and services that fails to completely overcome the examiner’s objections and requires further examination.
A further example is when the Office has rejected a C TM application on absolute grounds but in its appeal the CTM applicant argues that the mark has acquired distinctiveness through use, which then requires proof.
Revision is not available when granting it would merely re-open but not resolve the issue. Revision need not necessarily result in a positive decision on the main issue (for example, in the case of a CTM application, in registration or at least publication): it may grant relief to the appellant insofar as it seeks to reverse a decision. When determining whether revision would grant the requested relief, the contested decision and the reasons on which it is based are taken as the basis.
2.4 Impact of a request for restitutio in integrum
Articles 60, 81 CTMR
Revision may not be granted where a notice of appeal, or a written statement of the grounds of appeal, was not filed in time but is accompanied by a request for restitutio in integrum seeking restoration of the two-month time limit for lodging an appeal or filing
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the statement of grounds. The appeal will be remitted to the Boards of Appeal without delay.
2.5 Decision to grant revision
Article 61(2) CTMR Rules 51 and 52 CTMIR
If the competent division concludes that revision should be granted, it must take a decision to this effect within one m onth of receipt of the statement of grounds of appeal.
2.5.1 Deadline for taking the decision
The decision must be dispatched at the latest on the last day of the time limit. It does not matter whether the date of notification of the decision is after that date. If, for example, the decision is notified by registered mail, the registered letter must be posted at the latest on the last day of the time limit.
2.5.2 Contents of the decision
The contents of the decision must at least provide for the annulment of the initial decision and may provide for further treatment of the case – for example, that the CTM application be registered or the registration of transfer applied for be entered in the files of the CTM application.
The decision must also state whether or not the appeal fee is reimbursed.
Reimbursement of the appeal fee is ordered only if equitable by reason of a substantial procedural violation. The basic consideration is whether or not the Office was at fault on the date on which the contested decision was taken. If the contested decision is found to be incorrect in itself, reimbursement is granted. If the contested decision was correct on the date on which it was taken, no reimbursement is granted unless it is established that a doc ument or observation removing the deficiency raised by the Office was actually received by the Office prior to the decision but not included in the file in time.
Where the appeal fee has been paid through a current account, the current account holder is reimbursed through that same account. Where it has not yet been debited, the decision will state that no appeal fee will be debited.
2.6 Appeal against the decision
Article 58 CTMR
Decisions to grant revision cannot be appealed.
A decision not to reimburse the appeal fee may be appealed separately.
Revision
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2.7 Communication of the decision
Once revision is granted, the competent division informs the Registrar of the Boards of Appeal accordingly.
3 Procedure where Revision is not Granted
Article 61(2) CTMR
When the competent division concludes that the conditions for granting revision are not met, and at the latest upon expiry of the one-month time limit provided for in Article 61(2) CTMR, the competent division must remit the case to the Boards of Appeal without any comment or statement.
When the competent division remits the case without comments, no decision has to be taken to refuse revision.
Restitutio in Integrum
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS)
PART A
GENERAL RULES
SECTION 8
RESTITUTIO IN INTEGRUM
Restitutio in Integrum
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Table of Contents
1 General Principles ..................................................................................... 3
2 Criteria for Granting restitutio .................................................................. 3 2.1 Proceedings to which restitutio applies ...................................................3 2.2 Parties .........................................................................................................4 2.3 Time limit for national offices to forward an application to the Office ...4 2.4 Time limits excluded from restitutio in integrum .....................................4 2.5 Loss of rights or means of redress caused directly by non-
observance of time limit.............................................................................5 2.6 Effect of restitutio in integrum...................................................................6
3 Procedure................................................................................................... 6 3.1 Time limit ....................................................................................................6 3.2 Fee...............................................................................................................7 3.3 Languages ..................................................................................................7 3.4 Particulars and Evidence ...........................................................................7 3.5 Competence................................................................................................7 3.6 Publications................................................................................................8 3.7 Decision, role of other parties in restitutio proceedings .........................8
4 Third-Party Proceedings........................................................................... 9
Restitutio in Integrum
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1 General Principles
Article 81 CTMR Article 67 CDR
A party to proceedings before the Office may be reinstated in their rights (restitutio in integrum) if they were unable to observe a time limit vis-à-vis the Office, in spite of all due care having been taken as required by the circumstances, provided that the failure to observe the time limit had the direct consequence, by virtue of the provisions of the Regulations, of causing a loss of rights or means of redress (see judgment of 28/06/2012, T-314/10, ‘Cook’s’, paras 16 and 17).
Restitutio in integrum is only available upon application to the Office and is subject to the payment of a fee.
2 Criteria for Granting restitutio
Restitutio in integrum will be granted only under exceptional circumstances which are unforeseeable and independent of the will of the party concerned. These include, for example, an error committed by a courier service in the course of delivering a communication to the Office, an error induced or committed by the Office or a general strike.
By contrast, human error during the management of renewal procedures on the part of the representative or the party itself, IT-related problems, postal delays, economic hardship, and errors in calculating deadlines or a misunderstanding of the applicable law are not considered exceptional circumstances (decision of 14/06/2012, R 2235/2011-1, ‘KA’ and judgment of 19/09/2012, T-267/11, ‘VR’).
2.1 Proceedings to which restitutio applies
Restitutio is available in all proceedings before the Office.
This includes proceedings under the CTMR, as well as proceedings concerning registered Community designs under the CDR. The respective provisions do not differ materially.
Restitutio is available in ex parte proceedings, inter partes proceedings and appeal proceedings.
For restitutio in relation to the missed time limit for lodging an appeal and to revision, see the Guidelines, Part A, General Rules, Section 7, Revision.
Restitutio in Integrum
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2.2 Parties
Article 81 CTMR Article 67 CDR
Restitutio is available to any party to proceedings before the Office, that is, not only to the applicant or proprietor for a Community trade mark or the applicant or holder of a registered Community design, but also to the opponent, the applicant for a declaration of revocation or invalidity, or an alleged infringer who is joined as a party to invalidity proceedings pursuant to Article 54 CDR.
The time limit must have been missed by the party concerned or their representative.
2.3 Time limit for national offices to forward an application to the Office
Article 25(2) CTMR Articles 35(1) and 38(2) CDR
The time limit of one month for transmission of a CTM application or two months for transmission of a Community design application filed at a national Office has to be observed by the national Office and not by the applicant and is consequently not open to restitutio in integrum.
Under Article 38(2) CDR, late transmission of a Community design application has the effect of postponing the filing date to the date of actual receipt of the relevant documents by the Office.
Furthermore, in the event of non-observance of the time limit under Article 25(3) CTMR for transmission of a C TM application, rather than considering the CTM application withdrawn, the Office will treat the CTM application as if it had arrived directly at the Office and not through a national Office, with the consequence that the filing date will be the date of actual receipt by OHIM.
2.4 Time limits excluded from restitutio in integrum
Article 81(5) CTMR Article 67(5) CDR
In the interest of legal certainty, restitutio in integrum is not applicable to the following time limits.
Articles 29(1) and 81(5) CTMR Rule 6(1) CTMIR Articles 41(1) and 67(5) CDR Article 8(1) CDIR
• The priority period, that is, the six- month time limit for filing an application claiming the priority of a previous trade mark or design application pursuant to
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Article 29(1) CTMR or Article 41(1) CDR. However, restitutio does apply to the three-month time limit for indicating the file number of, and filing a copy of, the previous application referred to in Rule 6(1) CTMIR or Article 8(1) CDIR.
Articles 41(1), (3) and 81(5) CTMR
• The time limit for filing an opposition pursuant to Article 41(1) CTMR, including the time limit for paying the opposition fee referred to in Article 41(3) CTMR.
Article 81(2), (5) CTMR Article 6(2), (5) CDR
• The time limits for restitutio itself, namely:
○ the two-month time limit from removal of the cause for non-compliance for filing the application for restitutio in integrum
○ the two-month time limit from that date for completing the omitted act ○ the one year time-limit from expiry of the unobserved time limit for filing the
application for restitution in integrum.
2.5 Loss of right s or means of re dress caused directly by non- observance of time limit
Article 81(1) CTMR
Failure to observe the time limit must have had the direct consequence of causing loss of rights or means of redress.
Articles 42(2), 76(2) and 77(1) CTMR Rules 19, 20(1)-(5) and 40(1)-(3) CTMIR
This is not the case where the Regulations offer procedural options of which parties to proceedings can freely avail themselves, for example, asking for an o ral hearing, or requesting that the opponent provide proof of genuine use of its earlier mark, or applying for an extension of the cooling-off period pursuant to Rule 19 CTMIR. The cooling-off period itself is not subject to restitutio either because it is not a t ime limit within which a party must perform actions.
Articles 36(1), (4) and 37 CTMR Rules 9(3), (4), 10 and 11(1), (3) CTMIR
On the other hand, restitutio in integrum does apply to the late response to an examiner’s notification of refusal if the application is not rectified within the time limit specified because, in this case, there is a direct relationship between non-observance of the time limit and possible refusal.
Restitutio is also available in the event of the late submission of facts and arguments, and late filing of observations on the other party’s statements in inter partes proceedings if and when the Office refuses to take them into account as filed too late.
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The loss of rights in this case involves the exclusion of these submissions and observations from the facts and arguments on which the Office bases its decision. (It is general Office practice to disregard any statements filed in inter partes proceedings after expiry of the time limit set therefor.)
2.6 Effect of restitutio in integrum
Granting restitutio in integrum has the retroactive legal effect that the unobserved time limit will be considered to have been observed, and that any loss of rights in the interim will be deemed never to have occurred. Any decision taken by the Office in the interim based on non-observance of the time limit will become void, with the consequence that once restitutio is granted, there is no longer any need to lodge an appeal against such a decision of the Office in order to have it removed. Effectively, restitutio will re- establish the applicant in all its rights.
3 Procedure
Article 81(2) CTMR Rule 83(1)(h) CTMIR Article 67(2) CDR Article 68(1)(g) CDIR
Restitutio in integrum must be applied for in writing. The application must be sent to the Office.
3.1 Time limit
Articles 47(3) and 81(2) CTMR Articles 13(3) and 67(2) CDR
The application must be made within two months of the removal of the cause of non- compliance and not later than one year after expiry of the unobserved time limit. Within the same period, the unobserved act must be completed. The date of removal of the cause of non-compliance is the first date on w hich the party knew or should have known about the facts which led to the non-observance. If the ground for non- compliance was absence or illness of the professional representative dealing with the case, the date of removal of the cause of non-compliance is the date on which the representative returns to work. In the event of failure to submit a request for renewal or to pay the renewal fee, the one-year time limit starts on the day on which the protection ends, and not on the date of expiry of the further six-month period s.
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3.2 Fee
Article 81(3) CTMR Article 2(19) CTMFR Article 67(3) CDR Annex, point 15 CDFR
Within the same time limit, the fee for restitutio in integrum must also be paid. If the fee is not paid within the time limit, the application for restitutio in integrum will be deemed not to have been filed.
3.3 Languages
Article 119 CTMR Rule 95 CTMIR Article 98 CDR Article 80 CDIR
The application for restitutio in integrum must be submitted in the language of, or in one of the languages available for, the proceedings in which non-observance of the time limit occurred. For example, in the registration procedure, this is the first language indicated in the application, in the opposition procedure, it is the language of the opposition procedure, and in the renewal procedure, it is any of the five languages of the Office.
3.4 Particulars and Evidence
Articles 78 and 81 CTMR Articles 65 and 67 CDR
The application for restitutio must state the grounds on which it is based and must set out the facts on which it relies. As granting restitution is essentially a question of facts, it is advisable for the requesting party to adduce evidence by means of sworn or affirmed statements.
Moreover, the omitted act must be c ompleted, together with the application for restitution, at the latest by the expiry of the time limit for submitting the application for restitutio.
3.5 Competence
Article 81 CTMR Article 67 CDR
Competence for dealing with applications for restitutio lies with the division or department competent to decide on the omitted act, that is, competent for the procedure within which non-observance of the time limit occurred.
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3.6 Publications
Article 81(7) CTMR Rules 30(4), (5), 84(3)(k), (l) and 85(2) CTMIR Article 67 CDR Articles 22(4), (5), 69(3)(m), (n) and 70(2) CDIR
The CTMR and C DR provide for a mention of the re-establishment of rights to be published in the Bulletin. Such a mention will be published only if the unobserved time limit which gave rise to the application for restitutio has actually led to publication of the change of status of the CTM or CD application or registration, because only in such a case can third parties have taken advantage of the absence of such rights. For example, mention of the granting of restitutio will be published if the Office published a mention of expiry of the registration due to non-observance of the time limit for paying the renewal fee.
In the event of such a publication, a corresponding entry will be made in the Register as well.
No mention of receipt of an application for restitutio will be published.
3.7 Decision, role of other parties in restitutio proceedings
Articles 58 and 59 CTMR
The applicant for restitutio in integrum is the sole party to the restitutio proceedings, even where non-observance of the time limit occurred in inter partes proceedings.
A decision to refuse restitutio will be motivated on the non-observance of the time limit and, if possible, be taken in the decision terminating the proceedings. If, for specific reasons, an interim decision on the application for restitutio is taken, a separate appeal will generally not be allowed. The applicant for restitutio can appeal the refusal of its request for restitutio together with the decision terminating the proceedings.
The decision to grant restitutio cannot be appealed.
The other party to the inter partes proceedings will be informed that restitutio has been requested, as well as of the outcome of the proceedings. If restitutio is actually granted, the other party’s only means of redress is to initiate third-party proceedings (see below, paragraph 4).
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4 Third-Party Proceedings
Article 81 CTMR Article 67 CDR
A third party who, in the course of the interim from the request for restitutio up until publication of the mention of the re-establishment of rights,
• has, in good faith, put goods on the market or supplied services under a sign which is identical or similar to the CTM, or
• in the case of a Community design, has, in good faith, put on the market products in which a des ign included within the scope of protection of the RCD is incorporated or to which it is applied,
may bring third-party proceedings against the decision re-establishing the rights of the applicant, proprietor or holder of the CTM or RCD.
This request is subject to a two-month time limit which starts:
• where publication has taken place, on the date of that publication
• where publication has not taken place, on the date on which the decision to grant restitutio took effect.
The Regulations do not contain any provisions governing such a procedure. Competence for third-party proceedings lies with the department or unit which took the decision to re-establish the rights. The Office will conduct adversarial inter partes proceedings.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART A
GENERAL RULES
SECTION 9
ENLARGEMENT
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Table of Contents
1 Introduction................................................................................................ 3
2 Rules Concerning Examination................................................................ 3 2.1 Automatic Extension of CTMs to New Member States ............................3 2.2 Pending CTM Applications ........................................................................3 2.3 Distinctiveness Acquired Through Use ....................................................4 2.4 Bad Faith.....................................................................................................4 2.5 Conversion..................................................................................................5 2.6 Other Practical Consequences..................................................................5
2.6.1 Filing at national Offices ................................................................................. 5 2.6.2 Professional representation............................................................................ 5 2.6.3 First and second language ............................................................................. 5 2.6.4 Translation ...................................................................................................... 5 2.6.5 Seniority.......................................................................................................... 6 2.6.6 Search ............................................................................................................ 6
3 Rules Concerning Oppositions and Cancellations................................. 6
Annex 1 ............................................................................................................. 9
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1 Introduction
This chapter discusses the rules relating to the accession of new Member States to the European Community and t he consequences for holders of Community trade marks. Both absolute and relative grounds are dealt with in this chapter.
Article 165 CTMR contains the relevant provisions relating to enlargement and Community trade marks. These provisions were introduced into the Regulation pursuant to the 2004 enlargement process (at that time Article 147a CTMR) and have remained unchanged during successive enlargement processes. The only modification in the text of the Regulation is the addition of the names of the new Member States.
A table in Annex 1 lists the new Member States along with their accession dates and official languages.
2 Rules Concerning Examination
2.1 Automatic Extension of CTMs to New Member States
Article 165(1) CTMR lays down the basic rule of enlargement, which is that all existing CTM applications and registered CTMs are automatically extended to the new Member States without any kind of additional intervention by OHIM, any other body or the holders of the rights concerned. There is no need to pay any extra fees or complete any other administrative formality. The extension of existing CTM applications or CTMs to the territories of new Member States ensures that these rights have equal effect throughout the EU and complies with the fundamental principle of the unitary character of the CTM.
2.2 Pending CTM Applications
Article 165(2) CTMR enshrines an important transitional provision, according to which CTM applications pending on the accession date may not be refused on the basis of any absolute ground for refusal if this ground becomes applicable merely because of the accession of a new Member State (‘grandfathering clause’). In practice, this means that if a CTM application is non-distinctive, descriptive, generic, deceptive or contrary to public policy or morality in the language or in the territory of a new Member State, it will not be refused if its filing date is before this State’s accession date.
For applications filed after the accession date the grounds for refusal of Article 7(1) CTMR apply also for the new Member State. This is the case even when the CTM application has a pr iority date which is earlier than the relevant accession date. The priority right does not protect the CTM applicant against any change in the law relevant to its application. Therefore, examiners have to apply the same examination criteria as for all the other official languages of the EU. This means that the examiner has to check if the CTM application is descriptive, etc. also in the new Member State.
However, this principle should be appl ied with caution as it merely means that the criteria for applying Article 7(1) CTMR should not be made stricter as a result of the accession of new Member States. The inverse conclusion that terms which are descriptive in a language or in the territory of a new Member State may, in any case, be registered for CTM applications filed prior to the accession date will not always be
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correct. For example, descriptive terms from new Member States’ languages may have entered the customary languages of existing Member States or be widely known in them (for example, Vodka), and geographical indications may already have to be refused as descriptive terms (for example, Balaton or Tokaj). Consideration must also be given to geographical indications already protected in the new Member States and to protection arising from Community legislation or bilateral treaties between the new Member States and the EU or existing Member States.
More precisely, the grounds for refusal of Article 7(1)(f) and (g) CTMR, relating to marks contrary to public policy or morality and deceptive marks respectively, are only affected by this provision insofar as the deceptiveness or breach of public morality is due to a meaning which is only understood in a language of a new Member State. The Office interprets Article 7(1)(f) CTMR in accordance with Community-wide criteria, irrespective of the relative levels of morality in different countries of the EU.
Finally, the provision of Article 165(2) CTMR does not affect the grounds for refusal of Article 7(1)(e) or (i) CTMR: the former relates to signs consisting exclusively of the shape of the goods themselves, the shape which is necessary to obtain a t echnical result or the shape which gives substantial value to the goods, and the latter relates to badges and emblems not protected by Article 6ter of the Paris Convention but of particular public interest.
2.3 Distinctiveness Acquired Through Use
According to Office practice, distinctiveness acquired through use (Article 7(3) CTMR) must exist on t he CTM filing date and subsist until its registration date. Where an applicant for a CTM application filed before the accession date is able to demonstrate that acquired distinctiveness existed at the filing date, Article 165(2) CTMR precludes an objection based on the ground that it is not distinctive through use in the new Member States. Therefore, the applicant does not have to prove acquired distinctiveness in the new Member States.
2.4 Bad Faith
The Office will consider the filing of a CTM application as having been made in bad faith if it was made prior to the accession date for a term which is descriptive or otherwise not eligible for registration in the language of a new Member State for the sole purpose of obtaining exclusive rights to a non-registrable term or for otherwise objectionable purposes.
This has no pr actical effect during the examination stage as bad faith does not constitute an absolute ground for refusal and, consequently, the Office has no authority to object ex officio. The Office will exercise its duties in respect of ‘bad faith filings’ only when a r equest for a declaration of invalidity is filed (Article 52(1)(b) CTMR). The national Offices of the new Member States are equally determined to act against bad faith in the context of enlargement. CTM applicants should, therefore, bear in mind that, even if there are no grounds for refusal during the registration procedure, their CTM registrations may be contested at a later date on the basis of Article 52(1)(b) CTMR.
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2.5 Conversion
Conversion of a CTM application into national trade mark applications for new Member States may be r equested as from the accession date of those States. Conversion is also possible when a converted CTM has a filing date prior to the accession date. However, in the case of a new Member State, the converted application will have the effect of an earlier right under national law. National law in new Member States has enacted provisions equivalent to Article 165 CTMR providing that extended CTMs have the effect of earlier rights in the new Member States only with effect from the accession date. In practice, this means that the ‘conversion date’ in a new Member State cannot be earlier than that State’s accession date.
Taking Croatia´s accession as an example, this means that even if a converted CTM has a filing date of 01/05/2005 in Croatia, the conversion date will not be 01/05/2005 but 01/07/2013, that is, Croatia’s accession date.
The date of enlargement does not trigger a new three-month time limit for requesting conversion under Article 112(4) CTMR.
2.6 Other Practical Consequences
2.6.1 Filing at national Offices
As from the accession date of a new Member State, a CTM application may also be filed through that State’s national Office.
2.6.2 Professional representation
As from the accession date of a new member State, applicants (as well as other parties to proceedings before the Office) having their seat or domicile in that State need no longer be represented by a professional representative. As from the accession date of a new Member State, professional representatives from that State may be entered on the list of professional representatives maintained by the Office pursuant to Article 93 CTMR and may then represent third parties before the Office.
2.6.3 First and second language
As of the accession date of a new Member State (see Annex 1), the official language(s) of that State may be used as the first language for CTM applications filed on or after that date.
2.6.4 Translation
CTM applications with a filing date prior to the accession date of a new Member State and existing CTM registrations will be neither translated into nor republished in the language of that State. CTM applications filed after the accession date of a new Member State will be translated into and published in all official languages of the EU.
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2.6.5 Seniority
Seniority may be claimed from a national trade mark which was registered before the accession of the new Member State in question or even before the creation of the European Union. The seniority claim may, however, only be made after the accession date. The mark registered in the new Member State must be ‘earlier’ than the CTM. As an extended CTM has, in the new Member State, the effect of an earlier right as from the accession date, the seniority claim only makes sense when the earlier national mark has a filing or priority date prior to the accession date.
Example 1: The same person files a CTM application on 01/04/1996 and a nat ional trade mark application in Romania on 01/01/1999. After 01/01/2007 (Romania’s date of accession) the seniority of the Romanian national trade mark application may be claimed.
Example 2: The same person owns an international registration designating the EU on 01/01/2005 and s ubsequently designating Romania on 01/01/2006. After 01/01/2007, the seniority of that Romanian designation may be c laimed even though the designation itself is later than the IR designating the EU. This is because the extended CTM takes effect from the accession date of the new Member State (in this case 01/01/2007).
2.6.6 Search
The national Offices of a new Member State may carry out searches (Article 38(2)(3) CTMR) as from that State’s accession date. Only CTM applications with a filing date on or after the accession date are sent to national Offices for a search.
3 Rules Concerning Oppositions and Cancellations
1. According to Article 165(4)(b) CTMR, a CTM application cannot be opposed or declared invalid on the basis of a national earlier right acquired in a new Member State prior to that State’s accession date.
However, CTM applications filed on or after the accession date are not subject to this ‘grandfathering clause’ and may be rejected upon opposition, or declared invalid, on account of an earlier national right existing in a new Member State, provided that the earlier right is ‘earlier’ when the two filing or priority dates are compared.
2. An exception to this (transitional) rule is contained in Article 165(3) CTMR regarding oppositions. A CTM application, filed within the six months preceding the accession date, may be challenged by an opposition based on a national right existing in a new Member State at the date of the accession, provided that this right
a) has an earlier filing or priority date and b) was acquired in good faith.
3. The filing date and not the priority date is the decisive element for determining when a CTM application can be opposed on the basis of an earlier right in a new Member State. In practice, the abovementioned provisions have the
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consequences illustrated in the following examples with reference to the accession of Croatia (01/07/2013):
a) A CTM application filed before 01/01/2013 (the priority date is irrelevant in this context) cannot be opposed or declared invalid on the basis of a national earlier right in a new Member State under any circumstances.
b) A CTM application with a filing date between 01/01/2013 and 30/06/2013 (i.e. during the six months prior to the date of accession), may be opposed by a Croatian trade mark, provided that the filing or priority date of the Croatian trade mark is earlier than the filing or priority date of the opposed CTM application and t he national mark was applied for in good faith.
c) A CTM application with a filing date of 01/07/2013 or later may be opposed or declared invalid on the basis of a trade mark registered in Croatia if that mark has an earlier filing or priority date under the normal rules. Acquisition in good faith is not a condition. This applies to all national marks and earlier non-registered rights filed or acquired in a new Member State prior to accession.
d) A CTM application with a filing date of 01/07/2013 or later but with a priority date before 01/07/2013 may be opposed or declared invalid on the basis of a national trade mark registered in Croatia if that mark has a an earlier filing or priority date under the normal rules.
This transitional exception is limited to the right to file an opposition and does not include the right to file an application for cancellation based on relative grounds. This means that once the abovementioned period of six months has expired without an opposition having been lodged, the CTM application cannot be challenged any more by an oppos ition or by an application for a declaration of invalidity.
4. According to Article 165(5) CTMR, the use of a CTM with a filing date prior to the date of accession of a new Member State, may be pr ohibited pursuant to Articles 110 and 111 C TMR on t he basis of an earlier national trade mark registered in the new Member State where the latter has a filing or priority date prior to the date of accession and was registered in good faith.
The above provision also applies to:
• applications for national marks filed in new Member States, provided that they have subsequently been registered,
• unregistered rights acquired in new Member States falling under Article 8(4) or Article 53(2) CTMR with the proviso that the date of acquisition of the right under national law replaces the filing or priority date.
5. Where an oppos ition is based on a nat ional registered mark or other right in a new Member State, whether or not that right may be validly invoked as a ground for opposition against a CTM application depends on whether the opposition is well founded and is not an issue of admissibility.
6. The acquisition in good faith of the earlier national mark is presumed. This means that, if good faith is questioned, the other party to the proceedings (the applicant
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for the opposed CTM application in the case of Article 165(4) CTMR or the owner of the registered CTM in the case of Article 165(5) CTMR) must prove that the owner of the earlier national right obtained in a new Member State acted in bad faith when filing the national application or otherwise acquiring the right.
7. Article 165 CTMR does not contain any transitional provisions concerning the use requirement (Articles 15 and 42 CTMR). In opposition proceedings, the obligation to make genuine use of the mark arises when the applicant for the opposed CTM application requests that the opponent prove use of the earlier mark pursuant to Article 42(2) and (3) CTMR and Rule 22 CTMIR. Issues relating to enlargement could arise regarding the time and place of use of the earlier mark.
Two cases can be distinguished:
a) The earlier mark is a national mark registered in a new Member State
In this case the opponent must prove genuine use of the earlier mark. This situation can only arise in the context of an opposition directed either against a CTM application with a filing date after the date of accession or against a CTM application filed within the period of six months preceding the date of accession.
The earlier national mark must have been put to genuine use in the territory in which it is protected during the five years preceding the date of publication of the opposed CTM application. In this regard, it is immaterial whether the use relates to a per iod during which the State concerned was already a Member of the European Union. In other words, the proof of use may relate also to a period prior to the date of accession (in the case of Croatia before 01/07/2013).
b) The earlier mark is a CTM
Where the owner of the earlier CTM can prove use only in the territory of a new Member State or several new Member States, since the obligation of use relates to the period of five years preceding the date of publication of the opposed CTM application, use in a new Member State (or several new Member States) can only be taken into account if the State concerned was a Member State of the European Union at the date of publication of the opposed CTM application (Article 43(1) CTMR requires use ‘in the Community’ ).Before their accession dates, the new States do not constitute ‘Member States of the Community’; therefore, it is not possible to prove use ‘in the Community’.
Therefore, the five-year period should be counted only from the relevant date of accession.
8. There are no par ticular transitional problems relating to the opposition proceedings. The right pursuant to Article 119(7) CTMR to choose a l anguage which is not one of the five languages of the Office as the language of the proceedings applies as from the date of accession in respect of the other official languages of the European Union.
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Annex 1
Member States Accession date Languages Czech Republic, Cyprus, Estonia, Latvia, Lithuania, Hungary, Malta, Poland, Slovakia, and Slovenia).
01/05/2004 Czech, Estonian, Hungarian, Latvian, Lithuanian, Maltese, Polish, Slovak and Slovenian
Bulgaria and Romania 01/01/2007 Bulgarian and Romanian
Croatia 01/07/2013 Croatian
Proceedings
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART B
EXAMINATION
SECTION 1
PROCEEDINGS
Proceedings
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Table of Contents
1 Introduction: General Overview of Examination Proceedings .............. 3
2 Search......................................................................................................... 4 2.1 Community search .....................................................................................4 2.2 National search...........................................................................................4
3 General Principles Concerning Examination Proceedings.................... 5 3.1 Procedural aspects concerning third-party observations and review of
absolute grounds .......................................................................................5 3.2 Decisions ....................................................................................................6
3.2.1 Appeals........................................................................................................... 6
3.3 International registrations designating the European Union ..................7
4 Publication ................................................................................................. 7
5 Amendments to the CTM Application...................................................... 7 5.1 Withdrawal of the CTM application ...........................................................8
5.1.1 Declaration of withdrawal ............................................................................... 8 5.1.2 Unconditional and binding character of the declaration ................................. 8 5.1.3 Action to be taken........................................................................................... 9
5.2 Restriction of the list of goods and services in a CTM application ........9 5.2.1 Procedural admissibility of a restriction ........................................................ 10
5.3 Other amendments...................................................................................10 5.3.1 Name, address and nationality of applicant or representative ..................... 11 5.3.2 Other elements of an application.................................................................. 12 5.3.3 Recordal and publication of amendments .................................................... 12
5.4 Division of the CTM application ..............................................................12 5.4.1 Requirements ............................................................................................... 13 5.4.2 Acceptance ................................................................................................... 14 5.4.3 New file and its publication ........................................................................... 14
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1 Introduction: General Overview of Examination Proceedings
This part of the Guidelines outlines the examination procedure from filing to publication of the Community trade mark (CTM) application.
Once the CTM application has been filed, a provisional filing date is accorded and the Office issues a receipt. At this early stage, the Office only checks if certain filing date requirements of the Regulation have been fulfilled. The filing date will only become definite when the application fee has been paid.
The receipt should be carefully checked by the applicant and the Office should be notified as soon as possible of any incorrect data. The applicant can only correct data that have an impact on the filing date, such as the applicant’s name, the representation of the mark and the list of goods and services, if the Office is notified on the same date as the incorrect data was submitted. After this date, any amendment is subject to the provisions of the CTMR and C TMIR, in particular, Article 17 CTMR and Article 43 CTMR. For further details, see Section 5 below and the Guidelines, Part B, Examination, Section 2, Formalities.
After the receipt has been issued, the Office carries out a language check of the verbal elements of the mark in all official EU languages, followed by a Community search.
Payment of the application fee and national search fee (if applicable) is validated at the latest one month after the filing of the CTM application. If the applicant has applied for a national search and paid the relevant fee, the Office forwards the application to the Offices of the Member States that perform national searches. For further information on searches, see Section 2 below. For further information on fees, see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges.
During examination proceedings the Office examines the following: filing date, formalities, classification, priority and/or seniority where applicable, the regulations governing use of the mark for collective marks, and absolute grounds for refusal. All these examination steps can be carried out in parallel as there is no strict sequence in examination proceedings.
Any deficiency is notified to the applicant, who is given two months within which to remedy the deficiency and/or submit observations. Any decision partially or wholly refusing a CTM application must give the grounds on which the CTM application is refused and inform the applicant of the possibility of appeal. For further details, see paragraphs 3.2. and 3.2.1. below.
Applications that comply with the requirements of the Regulation are accepted for publication and sent for translation into all official EU languages.
The last step in the examination procedure is publication of the application in Part A of the CTM Bulletin. Publication takes place one month after notification of the search reports (Community search and national search if applied for), giving the applicant the opportunity, if it so wishes, to abandon its application. For further details on publication, see Section 4 below.
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2 Search
Article 38 CTMR Rule 5a and Rule 10 CTMIR Communications 4/99, 5/00 and 4/01 of the President of the Office
The search report identifies earlier rights that could conflict with the CTM application. However, even if the search report does not indicate any similar earlier rights, an opposition could still be filed against the CTM application after its publication.
The results of the search report are for information purposes only and t o give the applicant the option of withdrawing the CTM application before its publication. Surveillance letters inform holders of earlier trade marks about new, similar trade mark applications.
Figurative elements are classified under the Vienna Classification.
2.1 Community search
After issuing the receipt, the Office draws up a Community search report covering:
1. CTM applications with a filing date or priority date earlier than that of the application in question;
2. Community trade marks already registered; and 3. prior international registrations designating the European Union.
The Community search takes into account the filing date, the verbal elements of the trade mark, the figurative elements of the mark (if applicable) and the classes of goods and services according to the Nice Classification. The search is designed to identify similar earlier marks filed for the same classes or classes considered by the Office as containing similar goods and/or services.
The Community search report is sent to the applicant in a standard letter. Once the new application has been published, the Office sends a surveillance letter to the holders of earlier Community trade marks or Community trade mark applications cited in the search report.
2.2 National search
CTM applications that include a v alid request for national searches are sent to the participating national offices once a filing date has been accorded and the classification has been validated. A request is deemed valid if it is made at the time of filing and the relevant fee has been paid.
National search reports are prepared by the offices that participate in the search system.
A request for national searches implies that all participating national offices will carry out the search within two months in accordance with Rule 5a CTMIR. This all-or-
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nothing policy means that the applicant cannot select which participating offices carry out the search. Holders of international registrations designating the EU that wish to apply for national searches must send the request and pay the relevant fee to OHIM within one month of the date of notification of the IR from WIPO.
Responsibility for the format and content of the national search report lies with the national offices. The Office’s role is limited to receiving the national reports and sending them together with the Community search report. The applicant is free to request further information directly from the national offices.
3 General Principles Concerning Examination Proceedings
This section describes only the procedural aspects of examining Absolute Grounds (AG) for refusal. For substantive aspects of examining Absolute Grounds for refusal, see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal and Community Collective Marks.
The Community Trade Mark Regulation (CTMR) is intended to enable proprietors to register a right that is valid throughout the European Union insofar as it does not impinge on the rights of others. Although rights can only be conferred in accordance with the provisions of the CTMR, the Office’s function is not to obstruct but rather facilitate applications.
During the examination of each application the trade mark and the goods or services of the application must be taken into account. The Office has to bear in mind the nature of the trade concerned, the manner in which the goods or services are provided and the relevant public, for example whether it consists of specialists or the general public.
3.1 Procedural aspects concerning third-party observations and review of absolute grounds
Article 40 CTMR Communication 2/09 of the President of the Office
Observations relating to the existence of an absolute ground for refusal can be made by third parties once an application has been published. Third-party observations received before a CTM application is published are dealt with in the course of the examination of absolute grounds for refusal. The Office accepts observations received within the opposition period (three months from the date of publication) or filed before pending oppositions are closed. The observations must be filed in one of the languages of the Office, namely Spanish, German, English, French or Italian.
The Office issues a receipt to the observer confirming that the observations have been received and have been forwarded to the applicant. The observer does not become a party to the proceedings before the Office but can consult the online search tools in order to check the status of the relevant CTM application. The Office does not inform the observer of any action taken, namely of whether or not the observations gave rise to an objection.
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All observations are forwarded to the applicant, who is invited to submit comments where appropriate. The Office considers whether the observations are well founded, that is, whether an absolute ground for refusal exists. If so, the Office issues an objection and may refuse the CTM application if the objection is not overcome by the applicant’s comments or by restriction of the list of goods and services.
If an issue raised in observations has already been considered during the examination of an application, it is unlikely to give rise to serious doubts after publication.
The Office may also re-open the examination on absolute grounds on any other ground and at any time prior to registration, for example when third-party observations are filed before publication of the application or when the Office itself finds that a ground for refusal has been overlooked. After publication of the application, this option should be exercised only in clear-cut cases.
For more information see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal.
3.2 Decisions
In all cases where the Office issues decisions against applicants the grounds for the decision must be given. These must address any arguments raised by the applicant in its observations insofar as they are pertinent. Decisions must not only refer to appropriate parts of the CTMR and CTMIR but also, except in the most self-evident cases (for example where a document is a missing or a fee has not been paid), give explicit reasons.
Where, for example, a decision is given on the basis of internet searches, the Office must provide the applicant with proof of those searches.
3.2.1 Appeals
Articles 58 and 65 CTMR Decision 2009-1 of 16/06/2009 of the Presidium of the Boards of Appeal
Applicants have a right to appeal against a decision that terminates proceedings and that adversely affects them. For practical purposes any decision issued by the Office that terminates proceedings and is not accepted by the applicant falls into this category. Any written communication of such a decision must also inform the applicant that the decision can be appealed within two months.
Appeals have suspensive effect. Within the period in which an appeal can be lodged the Office should not take any step that cannot easily be reversed (e.g. publication or entry in the Register). The same goes for the period up until a final decision is taken in the event that the case is brought before the GC or CJEU by an action under Article 65.
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3.3 International registrations designating the European Union
Details about examination of a CTM application resulting from the transformation of an international registration designating the European Union are given in the Guidelines, Part M, International Marks.
4 Publication
Article 39 CTMR Rules 12, 14 and 46 CTMIR
Publication takes place once the search reports have been sent to the applicant, provided that the application fulfils all the conditions required for acceptance.
Applications are published in all official EU languages.
The examiner must ensure that the following details, where applicable, are available:
(a) application file number (b) filing date (c) reproduction of the trade mark (d) indication of collective mark (e) indication of the mark type other than word marks, for example figurative marks,
three-dimensional marks, holograms, sound marks, colour per se marks, other marks
(f) description of the mark (g) colour indication(s) (h) figurative elements under the Vienna Classification (i) disclaimer (j) acquisition of distinctive character through use (k) applicant’s name, address and nationality (l) representative’s name and address (m) first and second language (n) goods and services under the Nice Classification (o) priority data if applicable (p) exhibition priority data (q) seniority data (r) transformation data.
Once all these elements are in order and the translation into all EU official languages has been received, the application is dispatched to the Publications Sector.
5 Amendments to the CTM Application
This part of the Guidelines only covers the relevant issues concerning amendments to a CTM application.
For amendments to registered Community trade marks, see the Guidelines, Part E, Register Operations, Section 1, Changes in a registration.
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5.1 Withdrawal of the CTM application
Article 43, Articles 58(1), 64(3) and Article 119 CTMR
5.1.1 Declaration of withdrawal
A CTM application can be withdrawn at any time up until a final decision is taken on its subject matter.
After the Office’s first-instance decision, at appeal level, an application can be withdrawn within the two-month appeal period even if no appeal was actually filed or up until the appeal has been decided by the Board of Appeal; this applies both to ex parte and inter partes proceedings (decision of 27/09/2006, R 0331/2006-G – ‘Optima’).
At the level of the General Court (GC), an application can be withdrawn within the two- month appeal period or up until completion of the appeal process before the GC.
At the level of the Court of Justice (CJEU), an application can be withdrawn within the two-month period for filing an appeal before the CJEU or before the CJEU has issued a final and binding decision (order of 18/09/2012, C-588/11, ‘OMNICARE’).
When the case is pending before the GC or the CJEU, the withdrawal must be requested before the Office (not the GC or CJEU). The Office then informs the GC or CJEU whether or not it finds the withdrawal acceptable and valid, but the withdrawal will not be effected until the GC or the CJEU has rendered a final decision on the issue (by analogy, see judgment of 16/05/2013, T-104/12, ‘VORTEX’).
Any declaration of withdrawal filed after the expiry of the appeal period is inadmissible.
The declaration of withdrawal must be made in writing. No special form is provided by the Office. The declaration is not subject to a fee.
The declaration of withdrawal can be made in the first or second language indicated by the applicant in its CTM application.
The same applies during opposition proceedings. However, for details of procedure where a restriction is made in a language other than the language of the opposition procedure, see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.
For details on restrictions see paragraph 5.2 below.
5.1.2 Unconditional and binding character of the declaration
A declaration of withdrawal becomes effective upon receipt by the Office, provided that no withdrawal of the declaration reaches the Office that same day.
This means that if a declaration of withdrawal and a letter withdrawing that declaration both reach the Office on the same day (regardless of the actual time of receipt), the latter annuls the former.
Once it becomes effective, a declaration cannot be withdrawn.
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A declaration of withdrawal is void where it contains conditions or time limitations. For example, it must not require the Office to take a particular decision or, in opposition proceedings, require the other party to make a p rocedural declaration. Such a requirement is instead seen as a m ere suggestion for resolving the case; the Office informs the opponent accordingly and may invite the parties to come to an amicable settlement. Furthermore, a declaration does not become effective if it is made in respect of some goods and/or services (partial withdrawal) on the condition that the Office accepts the application for the remaining goods and/or services. Instead, such a declaration is seen as a suggestion for the Office to arrive at an acceptable list of goods and services.
Where an applicant reacts to an official action by filing a restricted list of goods and services (partial withdrawal), the Office verifies whether the applicant is declaring the unequivocal withdrawal of the remaining goods and services or whether the amended list of goods and services is a proposal or counterproposal by the applicant subject to the Office’s agreement.
5.1.3 Action to be taken
The Office will process a declaration of withdrawal, ensure publication of the full or partial withdrawal in the Bulletin if the CTM application was already published, and close the file of the CTM application in the event of a full withdrawal.
For the consequences of full or partial withdrawal on opposition procedure, see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.
Detailed information concerning the refund of application fees can be found in the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges.
5.2 Restriction of the list of goods and services in a CTM application
Articles 43 and 119 CTMR
The applicant may restrict the list of goods and services of its CTM application at any time, either of its own volition, or in response to an objection regarding classification or absolute grounds, or in the course of opposition proceedings.
In principle, declarations of restrictions follow the same rules as declarations of withdrawals; see paragraph 5.1 above.
When the case is pending before the General Court (GC) or the Court of Justice (CJEU), the restriction must be filed with the Office (not the GC or the CJEU). The Office then informs the GC or the CJEU whether or not it finds the restriction acceptable and valid, but the restriction is not applied until the GC or the CJEU has rendered a final decision on the issue (by analogy, see judgment of 16/05/2013, T-104/12,‘VORTEX’)
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5.2.1 Procedural admissibility of a restriction
The restriction must be procedurally admissible; see paragraph 5.1.2 above.
As a matter of principle, a restriction becomes effective on the date on which it is received by the Office. The restriction can only be withdrawn if the withdrawal is received on the same date as the restriction itself.
Two requirements must be met in order for a restriction to be acceptable:
1. The new wording must not constitute an extension of the list of goods and services.
2. The restriction must constitute a valid description of goods and services and apply only to acceptable goods or services that appear in the original CTM application. For further details on restrictions of a CTM application, see the Guidelines, Part B, Examination, Section 3, Classification.
Otherwise, the Office must refuse the proposed restriction and t he list of goods and services will remain unchanged.
5.3 Other amendments
Article 43 CTMR Rules 13 and 26 CTMIR
This section and t he legal provisions cited above solely concern amendments of the CTM application requested by the applicant on its own motion and not amendments or restrictions made as the consequence of an examination, opposition or appeal procedure by virtue of the decision of an examiner, Opposition Division or Board of Appeal.
Likewise, this section does not apply to the correction of errors in the Office’s publications, which is carried out ex officio pursuant to Rule 14 CTMIR.
Amendments require a written request in the first or second language indicated by the applicant in its CTM application. They are not subject to any fees.
The following elements of a CTM application may be amended:
• the name and address of the applicant or representative (see paragraph 5.3.1 below);
• errors of wording or of copying, or obvious mistakes, provided that correction does not substantially change the trade mark (for further details on such amendments, see the Guidelines, Part B, Examination, Section 2, Formalities);
• the list of goods and services (see paragraph 5.2 above).
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5.3.1 Name, address and nationality of applicant or representative
Rule 1(1)(b) and (e), Rules 26 and 84 CTMIR Article 1(1)(b), Article 19(7) and Article 69(2)(d) CDIR
The name and add ress of an applicant or representative may be am ended freely, provided that
• as regards the name of an applicant, the change is not the consequence of a transfer,
and
• as regards the name of a representative, the representative is not being substituted by another representative.
The indication of the nationality of a legal person may also be a mended freely, provided that it is not the consequence of a transfer.
A change in an applicant’s name that does not affect the applicant’s identity is an acceptable change, whereas a c hange in the applicant’s identity is a transfer. For details and the applicable procedure in the event of doubt as to whether the change is considered to be a transfer, see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer.
Changes to a representative’s name are also limited to those that do not affect the identity of the appointed representative, for example where there is a change in the name (through marriage/divorce) of a representative or the name of an association of representatives. Such changes of name must be distinguished from the substitution of one representative by another, which is subject to the rules governing the appointment of representatives. For details concerning representatives, see the Guidelines, Part A, General Rules, Section 5, Professional Representation.
Changes of name, address or nationality may be the result of changed circumstances or of an error made at the time of filing.
The change of name and address must be requested by the applicant or its representative and must contain the CTM application number, as well as the name and address of the applicant or the representative, both as recorded on the file and as amended.
No proof or evidence of the change is necessary. Requests for change of name or address are not subject to any fees.
The applicant must indicate its name and official address in an application in a specific format according to the above-cited legal provisions, and may change it later using the same format. Both the name and the address will be registered.
Legal persons can only have one official address. In case of doubt, the Office may ask for evidence of the legal form, the State of Incorporation and/or the address. The official name and address are copied as the address for service by default. Ideally, an applicant should have only one address for service. Changes to the applicant’s official designation or official address will be registered for all CTM applications, registered
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Community trade marks and Registered Community Designs and, unlike the address for service, cannot be recorded just for specific portfolios of rights. In principle, these rules apply for representatives by analogy.
5.3.2 Other elements of an application
Other elements of a CTM application may also be c hanged, such as the representation, the type of mark, the description of the mark and the disclaimers.
For example, in priority claims, obvious mistakes in the indication of the country in which, and the date on which, the earlier mark was filed may be corrected, since the priority document will obviously show the correct version.
For further details on these changes, see the Guidelines, Part B, Examination, Section 2, Formalities.
5.3.3 Recordal and publication of amendments
Article 41(2) CTMR
If an amendment is allowed, it will be recorded in the file.
Where the CTM application has not yet been published, it is published in the CTM Bulletin in the amended form.
Where the CTM application has already been published and (only) if the amendment concerns the list of goods and services or the representation of the mark, the CTM application is published in its amended form in the CTM Bulletin. The publication of the amended application opens a new opposition period of three months.
Any other amendments are not published separately but appear in the publication of the registration.
5.4 Division of the CTM application
Article 44 CTMR Rule 13a CTMIR
A CTM application can be divided into different parts not only as the result of a partial transfer (see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer), but also on the CTM applicant’s own motion. Division is particularly useful for isolating a disputed CTM application for certain goods or services while maintaining the original application for the remainder. For information on the division of CTMs, see the Guidelines, Part E, Register Operations, Section 1, Changes in a registration.
Whereas a partial transfer is free of charge and involves a change of ownership, a request for the division of a CTM application is subject to a fee and the CTM application remains in the hands of the same applicant. If the fee is not paid, the
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request is deemed not to have been filed. The request can be made in the first or second language indicated by the applicant in its CTM application.
Division is not an option for international registrations under the Madrid Protocol designating the EU. The international register is kept at WIPO, and OHIM does not have the authority to divide an international registration designating the EU.
5.4.1 Requirements
A request for division must contain the following information:
• the file number of the CTM application to be divided;
• the name and address or name and ID number of the applicant;
• the list of goods and services for the divisional application, or, if more than one new application is to be created, for each divisional application;
• the list of the goods and services that will remain in the original CTM application.
Furthermore, the goods and services of the divisional application must not overlap with the list of goods and services of the original application.
The applicant will be notified of any deficiency in this regard and given two months to remedy it. If the deficiency is not remedied within this time limit, the request for division will be refused.
There are certain periods during which, for procedural economy or to safeguard third- party rights, division is not admissible. These periods are outlined below.
1. While an opposition is pending, only the non-contested goods and services may be divided off. The same applies if the case is pending before the Boards of Appeal or the Courts. The Office interprets the legal provisions cited above as preventing the applicant from dividing off some or all of the contested goods to form a new application, with the effect that the opposition proceedings have to be split. If such a request for division is made, the applicant is given the opportunity to amend it by dividing off the non-contested goods and services.
2. Division is not admissible during the three-month opposition period following publication of the application. Allowing a di vision during this time would counteract the aim of not splitting an oppo sition procedure and frustrate third parties, who have to rely on the CTM Bulletin to know what to oppose.
3. Division is not admissible during the period before a filing date has been accorded either. This does not necessarily coincide with the first month following filing. For further details on t he filing date, see the Guidelines, Part B, Examination, Section 2, Formalities.
For all practical purposes, in the period following publication of the application, a division is only admissible if an opposition has been entered against the application and only for the non-contested part. The aim of the provisions cited is to allow the
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applicant to register its mark for the non-contested goods quickly without having to wait for the outcome of a lengthy opposition procedure.
5.4.2 Acceptance
Article 44(6) CTMR
If the Office accepts the declaration of division, a new application is created as of the date of acceptance and not retroactively as of the date of the declaration.
The new application keeps the filing date as well as any priority and seniority dates. The seniority effect will then become partial.
All requests and applications submitted, and all fees paid, prior to the date on which the Office receives the declaration of division are deemed to have been made or paid also for the divisional application. Fees duly paid for the original application are, however, not refunded.
The practical effects of this provision can be exemplified as follows:
• Where an application for the registration of a licence was made and payment of the registration fee was received by the Office prior to the declaration of division, the licence will be registered against the original registration and recorded in the file of the new registration. No further fees need be paid.
• Where a CTM application claiming six classes is to be divided into two applications of three classes each, no class fees are payable as from the date the Office receives the declaration of division. However, fees paid prior to that date cannot be refunded.
Where the division is not accepted, the old application remains unchanged. It does not matter whether:
• the declaration of division was deemed not to have been f iled because no f ee had been paid;
• the declaration was refused because it failed to comply with the formal requirements;
• the declaration was found inadmissible because it was filed during one of the periods in which division is not admissible.
The worst-case scenario for the applicant is that the declaration of division is not accepted, but this never affects the original application. The applicant can repeat the declaration of division later, subject to a new fee.
5.4.3 New file and its publication
A new file has to be created for the divisional application, to contain all the documents that were on file for the original application, all correspondence related to the
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declaration of division and all future correspondence for the new application. Inspection of this file will be unrestricted under general rules.
If the declaration of division concerns a CTM application that is not yet published, both the divisional and the original application are published separately and in the normal way, without any express reference to each other.
If the declaration of division concerns a CTM application that is already published, the fact that there has been a division is published with reference to the original application. The new application must also be published with all the usual particulars; however, no new opposition period will be opened. Division is admissible only for goods for which an opposition period has already opened but not been made use of.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART B
EXAMINATION
SECTION 3
CLASSIFICATION
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Table of Contents
1 Introduction................................................................................................ 3
2 The Nice Classification ............................................................................. 3
3 Administrative Tools for Classification Purposes.................................. 4
4 Building a List of Goods and Services .................................................... 5 4.1 Clarity and precision ..................................................................................5
4.1.1 General principles........................................................................................... 5 4.1.2 Use of expressions (e.g. ‘namely’, ‘in particular’) to determine the scope
of the list of goods/services ............................................................................ 5 4.1.3 Use of the term ‘and/or’ .................................................................................. 6 4.1.4 Punctuation..................................................................................................... 6 4.1.5 Inclusion of abbreviations and acronyms in lists of goods and services ........ 7
4.2 Terms and expressions lacking clarity and precision .............................8 4.2.1 General indications of the class headings of the Nice Classification which
are deemed not to be sufficiently clear and precise ....................................... 8 4.2.2 Vague terms ................................................................................................. 11 4.2.3 The claim for all goods/services in this class or all goods/services of the
alphabetical list in this class ......................................................................... 12 4.2.4 Reference to other classes within the list ..................................................... 12 4.2.5 Trade marks in a list of goods/services ........................................................ 12 4.2.6 Inclusion of the terms parts and fittings; components and accessories in
lists of goods and services ........................................................................... 13 4.2.7 Use of indefinite qualifiers ............................................................................ 13 The use of qualifiers such as: ”the like”; “ancillary”, “associated goods”; “and........ 13 related goods” and “etc.” in a list of .......................................................................... 13 goods or services is unacceptable, since they do not comply with the .................... 13 requirements of clarity and precision (see paragraph 4.1.). ..................................... 13
5 Procedure of Examination ...................................................................... 13 5.1 Parallel applications.................................................................................13 5.2 Objections.................................................................................................13 5.3 Amendments.............................................................................................14 5.4 Addition of classes...................................................................................16
6 Annex 1..................................................................................................... 17
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1 Introduction
Every CTM application must contain a list of goods and services as a condition for a filing date to be accorded (Article 26(1)(c) CTMR). The list must be classified in accordance with the Nice Agreement (Article 28 CTMR and Rule 2(1) CTMIR).
The list must be worded in such a way as to (a) indicate clearly the nature of the goods and services, and ( b) allow each item to be classified in only one c lass of the Nice Classification (Rule 2(2) CTMIR).
The use of the Office’s administrative IT tools for classification (see paragraph 3) is highly recommended. Any part of the list of goods and services which does not match the data from the tools will be ex amined following the principles as set out in these Guidelines. Whenever the applicant selects a term from the available tools, it will not be examined any further and will speed up the registration procedure.
The goods and services covered by a CTM application – including general indications of the class headings – will be interpreted by the Office on the basis of their natural and usual meaning. The former practice of the Office, according to which the use of all the general indications listed in the class heading of a particular class constituted a claim to all goods or services falling under the class was abandoned in June 2012, following the judgment of 19/06/2012, C-307/10, ‘IP Translator’.
The purpose of this part of the Guidelines is to describe Office practice in the examination of classification of goods and services.
The first part (paragraphs 1 to 4) sets out the principles applied by the Office. The second part (paragraph 5) summarises the procedure of examining the list of goods and services.
In short, when examining the classification of a list of goods and services the Office does four tasks:
• it checks that each of the goods and services is clear and precise enough; • it checks that each term is proper to the class in which it is applied for; • it notifies any deficiency; • it refuses the application, in whole or in part, where the deficiency is not remedied
(Rule 9(4) and (8) CTMIR).
2 The Nice Classification
The version of the classification under the Nice Agreement in force at the filing date will be applied to the classification of the goods or services in an application (available at: http://tmclass.tmdn.org). Rule 2 requires the applicant to provide a list of goods and services in the following manner.
• The list must be worded in such a way as to indicate clearly the nature of the goods or services and to allow each item to be classified.
• The goods or services must be grouped according to the Nice Classification, each group preceded by the number of the class to which the goods or services belong and presented in the order of the classification.
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The Nice Classification consists, for each class, of the following:
1. Class headings: the class headings are general indications relating to the field to which, in principle, the goods or services belong;
2. Explanatory notes: the explanatory notes explain which goods or services are meant or not meant to fall under the class headings and are to be considered an integral part of the classification;
3. The alphabetical list: the alphabetical list shows how individual goods or services are appropriate to a class;
4. General remarks: the general remarks explain what criteria should be applied if a term cannot be classified in accordance with the class headings or alphabetical list.
More information regarding the Nice Classification can be found on the website of the World Intellectual Property Organization (WIPO) at https://www.wipo.int.
3 Administrative Tools for Classification Purposes
When filing an electronic application through e-filing, users can select pre-approved terms to build their list of goods & services. All those selectable terms originate from a harmonised database and will automatically be accepted for classification purposes. Using these pre-approved terms will facilitate a smoother trade mark registration process. The harmonised database brings together terms which are accepted for classification purposes in a number of EU offices.
Should the applicant use a list of goods & services containing terms that are not found in the harmonised database, the Office will verify through an examination procedure whether they can be accepted.
Before filing an application the content of the harmonised database can be searched through the Office’s tool TMclass (http://tmclass.tmdn.org/ec2/).This tool brings together classification databases of participating offices within and outside the EU and shows whether a term can be ac cepted in a particular jurisdiction. Within TMclass goods and services are grouped according to shared characteristics from a market perspective, starting from the more general and ending with the more specific. In this way, the user is provided with a simplified search, and is given a better overview of the content of each class, thus facilitating the selection of appropriate terms.
This grouping and ranking, also called Taxonomy, has no legal effect. In particular, the scope of protection of a Community trade mark is always defined by the natural and usual meaning of the chosen terms, not by the position of the terms in the Office’s classification tools.
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4 Building a List of Goods and Services
4.1 Clarity and precision
4.1.1 General principles
The goods and services for which the protection of the trade mark is sought should be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought (judgment of 19/06/2012, C-307/10, ‘IP Translator’, para. 49).
A description of goods and services is sufficiently clear and precise when its scope of protection can be under stood from its natural and us ual meaning. If this scope of protection cannot be understood, sufficient clarity and pr ecision may be achieved by identifying factors such as characteristics, purpose and/or identifiable market sector. Elements that could help to identify the market sector1 may be, but are not limited to, the following:
• consumers and/or sales channels • skills and know-how to be used/produced • technical capabilities to be used/produced.
A term may be part of the description of goods and services in a number of classes; it may be clear and precise in a particular class without further specification. For example: furniture (class 20), clothing (class 25), gloves (class 25).
If protection is sought for a specialised category of goods and services or a specialised market sector belonging to a di fferent class, further specification of the term may be necessary. For example: furniture especially made for medical purposes (Class 10), furniture especially made for laboratories (Class 9), protective clothing (Class 9) clothing especially for operating rooms (Class 10), clothing for pets (Class 18), gardening gloves (Class 21), baseball gloves (Class 28).
Tools such as TMclass (http://tmclass.tmdn.org/ec2/) are available to determine whether the particular category of goods and services needs this further specification or not.
4.1.2 Use of expressions (e.g. ‘namely’, ‘in particular’) to determine the scope of the list of goods/services
The use of the words ‘namely’ or ‘being’ is acceptable, but must be understood to be a restriction to the specific goods and services which are listed thereafter. For example, pharmaceutical preparations, namely analgesics in Class 5 means that the application only covers analgesics and not any other type of pharmaceuticals.
The expression ‘in particular’ can also be accepted as it serves to indicate an example of the goods and s ervices which are applied for. For example, pharmaceutical preparations, in particular analgesics means that the application covers any kind of pharmaceuticals, with analgesics being an example.
1 Market sector describes a set of businesses that are buying and selling such similar goods and services that they are in direct competition with each other.
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The same interpretation applies to the use of the terms ‘including’, ‘including (but not limited to)’, ‘especially’ or ‘mainly’ as in the example pharmaceutical preparations, including analgesics.
A term that would normally be c onsidered unclear or imprecise can be m ade acceptable provided that it is further specified, e.g. by using ‘namely’ and a l ist of acceptable terms. An example would be electrical apparatus, namely computers for goods in Class 9.
Further examples of acceptable use
Class 29: Dairy products namely cheese and butter
This would restrict the goods to only cheese and butter and exclude all other dairy products.
Class 41: Provision of sports facilities, all being outdoors.
This would restrict the services to cover only outdoor facilities and exclude any indoor facilities.
Class 25: Clothing, all being underwear
This would restrict the goods covered to only that which is considered underwear and will exclude all other types of clothing.
Other words or phrases may only point out that certain goods are important, and the inclusion of the term does not restrict the further listing in any way. Examples include:
Class 29: Dairy products, in particular cheese and butter
The coverage would include all dairy products; cheese and butter are probably the TM owner’s most successful goods.
Class 41: Provision of sports facilities, for example outdoor running tracks.
The coverage now merely gives an example of one of several possibilities.
Class 25: Clothing, including underwear The coverage extends to all clothing and not just underwear.
4.1.3 Use of the term ‘and/or’
The use of oblique strokes is acceptable in lists of goods and s ervices; the most common use is in the phrase ‘and/or’, meaning that both goods/services referred to fall in the same class. For example:
• Chemical/biochemical products • Chemical and/or biochemical products • Chemicals for use in industry/science • Chemicals for use in industry and/or science • Import/export agency services
4.1.4 Punctuation
The use of correct punctuation is very important in a list of goods and services, almost as important as the words.
The use of commas serves to separate items within a similar category or expression. For example, flour and preparations made from cereals, bread, pastry and confectionery in Class 30 must be read as that the goods can be or are made from any of those materials.
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The use of a semi-colon means a separation between expressions. For example, flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder in Class 30 must be interpreted that the terms honey and treacle are independent from the other terms and do not form part of preparations made from …
The separation of terms with incorrect punctuation can lead to changes in meaning and incorrect classification.
Take the example of computer software for use with agricultural machines; agricultural machines in Class 9. In this list of goods and services the inclusion of a semi-colon means that the term agricultural machines must be c onsidered as an independent category of goods. However, these are proper to Class 7, regardless of whether the intention was to protect computer software to be us ed in the field of agricultural machines and agricultural machinery.
A further example would be retail services in relation to clothing; footwear; headgear in Class 35. The use of a semi-colon renders the terms footwear and headgear as goods, which are separate and not included in the retail services. In such cases, the examiner will separate the terms by commas, inform the applicant and give it the opportunity to comment on the examiner’s proposal.
4.1.5 Inclusion of abbreviations and acronyms in lists of goods and services
Abbreviations within lists of goods and services should be accepted with caution. Trade marks could have an indefinite life, and the interpretation of an abbreviation could vary over time. However, provided that an abbreviation has only one meaning in relation to the class of goods or services applied for, it can be al lowed. The very well-known examples CD-ROMs and DVDs are acceptable in Class 9. If the abbreviation is well known in the field of activity it will be acceptable, but a more practical solution would be for examiners to initially carry out an internet search for the abbreviation to determine whether it needs to be expanded into words or the abbreviation or acronym followed by the abbreviation in square brackets (following WIPO’s example).
Example
Class 45 Services offering advice on the application and registration of CTMs.
This could be expanded to:
Class 45 Services offering advice on the application and registration of Community Trade Marks;
or
Class 45 Services offering advice on the application and registration of CTMs [Community Trade marks];
Acronyms can be accepted in a list of goods or services as long as they are comprehensible and appropriate to the class applied for.
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4.2 Terms and expressions lacking clarity and precision
4.2.1 General indications of the class headings of the Nice Classification which are deemed not to be sufficiently clear and precise
In collaboration with the Trade Mark Offices of the European Union, other (inter)national organisations, offices and various user associations, the Office has established a list of general indications of the class headings of the Nice Classification which are deemed not to be s ufficiently clear and precise in accordance with the judgment of 19/06/2012, C-307/10, ‘IP Translator’.
The 197 general indications of the Nice class headings were examined with respect to the requisites of clarity and precision. Of these, 11 were considered to lack the clarity and precision to specify the scope of protection that they would give, and consequently cannot be accepted without further specification. These are set out below in bold.
Class 6 Goods of common metal not included in other classes Class 7 Machines and machine tools Class 14 Precious metals and their alloys and goods in precious metals or coated
therewith, not included in other classes Class 16 Paper, cardboard and goods made from these materials [paper and
cardboard], not included in other classes Class 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these
materials [rubber, gutta-percha, gum, asbestos and m ica] and not included in other classes
Class 18 Leather and i mitations of leather, and goods made of these materials [leather and imitations of leather] and not included in other classes
Class 20 Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
Class 37 Repair Class 37 Installation services Class 40 Treatment of materials Class 45 Personal and social services rendered by others to meet the needs of
individuals
The remaining 186 Nice class heading terms comply with the requisites of clarity and precision and are therefore acceptable for classification purposes.
The reasons why each of the 11 Nice class heading terms were not found clear and precise are described below.
Class 6 Goods of common metal not included in other classes In light of the need for clarity and precision, this term does not provide a clear indication of what goods are covered as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be produced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.
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Class 7 Machines and machine tools In light of the need for clarity and pr ecision, the term machines does not provide a c lear indication of what machines are covered. Machines can have different characteristics or different purposes, they may require very different levels of technical capabilities and k now-how to be pr oduced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.
Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes In light of the need for clarity and precision, the term goods in precious metals or coated therewith, not included in other classes does not provide a clear indication of what goods are covered, as it simply states what the goods are made of or coated with, and not what the goods are. It covers a wide range of goods that may have very different characteristics, that may require very different levels of technical capabilities and k now-how to be produced, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.
Class 16 Paper, cardboard and goods made from these materials, not included in other classes In light of the need for clarity and precision, the term goods made from these materials [paper and cardboard], not included in other classes does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be pr oduced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.
Class 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes In light of the need for clarity and precision, the term goods made from these materials [rubber, gutta-percha, gum, asbestos and mica] and not included in other classes does not provide a clear indication of what goods are covered as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be pr oduced and/or used, could target different consumers, be s old through different sales channels, and therefore relate to different market sectors.
Class 18 Leather and i mitations of leather, and goods made of these materials and not included in other classes In light of the need for clarity and precision, the term goods made of these materials [leather and imitations of leather] and not included in other classes does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and k now-how to be pr oduced and/or used, could target
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different consumers, be sold through different sales channels, and therefore relate to different market sectors.
Class 20 Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics In light of the need for clarity and precision, this term does not provide a clear indication of what goods are covered as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be produced and/or used, that could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.
Class 37 Repair In light of the need for clarity and precision, this term does not provide a clear indication of the services being provided, as it simply states that these are repair services, and not what is to be repaired. As the goods to be repaired may have different characteristics, the repair services will be carried out by service providers with different levels of technical capabilities and know-how, and may relate to different market sectors.
Class 37 Installation services In light of the need for clarity and precision, this term does not provide a clear indication of the services being provided, as it simply states that these are installation services, and not what is to be installed. As the goods to be installed may have different characteristics, the installation services will be carried out by service providers with different levels of technical capabilities and know-how, and may relate to different market sectors.
Class 40 Treatment of materials In light of the need for clarity and precision, this term does not give a clear indication of the services being provided. The nature of the treatment is unclear, as are the materials to be t reated. These services cover a wide range of activities performed by different service providers on materials of different characteristics requiring very different levels of technical capabilities and know-how, and may relate to different market sectors.
Class 45 Personal and social services rendered by others to meet the needs of individuals In light of the need for clarity and precision, this term does not give a clear indication of the services being provided. These services cover a w ide range of activities performed by different service providers requiring very different levels of skill and k now-how, and m ay relate to different market sectors.
CTM applications including one of the abovementioned eleven general indications will be objected to as being too vague. The applicant will be asked to specify the vague term.
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The above non-acceptable general indications can become clear and precise if the applicant follows the principles set out before under paragraph 4.1. Principles of clarity and precision. The following is a non-exhaustive list of acceptable specifications.
Not a clear and precise term Example of a clear and precise term
Goods of common metal not included in other classes (class 6)
Construction elements of metal (Class 6) Building materials of metal (Class 6)
Machines (class 7) Agricultural machines (Class 7) Machines for processing plastics (Class 7) Milking machines (Class 7)
Goods in precious metals or coated therewith (class 14) Works of art of precious metal (Class 14)
Goods made from paper and cardboard (class 16) Filtering materials of paper (Class 16)
Goods made from rubber, gutta-percha, gum, asbestos and mica (class 17) Rings of rubber (Class 17)
Goods made of these materials [leather and imitations of leather] (class 18) Briefcases [leather goods] (Class 18)
Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics (class 20)
Door fittings, made of plastics (Class 20) Figurines of wood (Class 20)
Repair (class 37) Shoe repair (Class 37)Repair of computer hardware (Class 37)
Installation services (class 37) Installation of doors and windows (Class 37)Installation of burglar alarms (Class 37)
Treatment of materials (class 40) Treatment of toxic waste (Class 40)Air purification (Class 40)
Personal and social services rendered by others to meet the needs of individuals (class 45)
Personal background investigations (Class 45) Personal shopping for others (Class 45) Adoption agency services (Class 45)
Note that vague terms would not be made specific, or acceptable, by the addition of such terms as including or in particular. The example machines, including milking machines would not be acceptable as it remains vague. (see paragraph 4.1.2.)
4.2.2 Vague terms
The same principles regarding clarity and precision as described above are applicable to all the goods and services listed in the application. Terms which do not provide a clear indication of the goods covered, should be obj ected to. Examples of such expressions are:
• Electric/electronic apparatus/instruments • Association services • Facilities management services
They all must be specified as described above, i.e. by identifying factors such as characteristics, purpose and/or identifiable market sector.
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4.2.3 The claim for all goods/services in this class or all goods/services of the alphabetical list in this class
If the applicant intends to protect all goods or services included in the alphabetical list of a particular class, it has to expressly indicate this by listing these goods or services explicitly and i ndividually. In order to assist applicants, the use of the hierarchical structure (see paragraph 3 Administrative IT tools for classification purposes) is encouraged.
Applications are sometimes submitted for all goods in Class X, all services in Class X, all goods/services in this class or all goods/services of the alphabetical list in this class (or the like). This specification does not comply with Article 26(1)(c) CTMR which requires a list of the goods or services in respect of which the registration is requested. Consequently, no filing date is awarded.
On other occasions the applicant has correctly listed some goods and/or services to be covered and added, at the end of the listing in each class, the expression and all other goods/services in this class or and all goods/services of the alphabetical list in this class (or the like). In those cases, the application may proceed only for the part of the goods and/or services that is correctly listed. The Office will inform the applicant that those statements are not acceptable for classification purposes and thus will be deleted.
4.2.4 Reference to other classes within the list
References to other class numbers within a class are not acceptable for classification purposes. For example, the descriptions (in Class 39) transport services of all goods in Classes 32 and 33 or (in Class 9) computer software in the field of services in Classes 41 and 45 are not acceptable as in both cases the terms are considered to be unclear and i mprecise and l ack legal certainty as to what goods and s ervices are covered. The only way to overcome the objection to these lists of goods and services will be for the respective goods of Classes 32 and 33, and the services of Classes 41 and 45 to be specified.
The term …goods not included in other classes… is not acceptable in service classes because this expression only has a sense in its original goods class.
For example, the heading of Class 22 reads ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes). In that context the reference to … not included in other classes is meaningful. However, if that same term is used in a s ervice class list of goods and services it cannot make sense. For example, transport services of ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) in Class 39 could not be accepted. The mention of … (not included in other classes) must be deleted.
4.2.5 Trade marks in a list of goods/services
Trade marks cannot appear within a list of goods and services as if they were a generic term or a category of goods. In such cases, the Office will object to the inclusion of the term, and request its replacement by a generic term for the goods or services.
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Example
Class 9: Electronic devices for transmission of sound and images; video players; CD players; iPods
Since iPod™ is a trade mark, the applicant will be requested to replace it by a synonym such as a small portable digital audio player for storing data in a variety of formats including MP3.
Other examples are Caterpillar™ (the correct classification would be crawler type vehicle), Discman™ (portable compact disc player), Band-Aid™ (sticking plasters), Blu Ray discs™ (optical storage discs) or Teflon™ (nonstick coating based on polytetrafluoroethylene). This list is not exhaustive and i n cases of doubt examiners should refer cases to a relevant expert within the Office.
4.2.6 Inclusion of the terms parts and fittings; components and accessories in lists of goods and services
The terms parts and fittings; components and accessories are, on t heir own or in combination with each other, neither clear nor precise enough for classification purposes. Each of the terms requires further qualification to become acceptable in its proper class. Such terms would become acceptable by identifying factors such as characteristics, purpose and/or identifiable market sector. For example:
• Parts and fittings for motor vehicles is acceptable in Class 12 • Building components made of wood is acceptable in Class 19 • Musical accessories is acceptable in Class 15.
4.2.7 Use of indefinite qualifiers
The use of qualifiers such as: ”the like”; “ancillary”, “associated goods”; “and related goods” and “etc.” in a list of goods or services is unacceptable, since they do not comply with the requirements of clarity and precision (see paragraph 4.1.).
5 Procedure of Examination
5.1 Parallel applications
While the Office will always strive for consistency, the fact that a list of goods and services has been previously accepted, but which is wrongly classified, does not have to lead to the acceptance of the same list in any subsequent applications.
5.2 Objections
Where the Office considers that there is a need to amend the list of goods and services it should, if possible, discuss the issue with the applicant. Whenever reasonably
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possible the examiner should offer a p roposal for a c orrect classification. If the applicant submits a l ong list of goods/services which is not grouped under class numbers or classified at all, then the examiner should simply object under Rule 2, and ask the applicant to provide the list in a form that complies.
The response from the applicant must, under no circumstances, extend the scope or range of goods or services (Article 43(2) CTMR).
Where the applicant has failed to identify any classes, or has incorrectly identified the class(es) for the goods or services, then any further explanation of the scope of the application may extend the number of classes required to accommodate the list of goods and services. It does not automatically follow that the list itself has been extended.
Example
An application covering beer, wine and tea in Class 33 should be corrected to:
Class 30: Tea.
Class 32: Beer.
Class 33: Wine.
Although there are now three classes covering the goods, the list of goods has not been extended.
When the applicant has correctly attributed a class number to a pa rticular term, this limits the goods to those falling under that class. For example, an application for tea in Class 30 may not be amended to medicinal tea in Class 5 as that would extend the goods beyond those applied for.
Where there is a need to amend the classification, the Office will send a reasoned communication pointing out the error(s) detected in relation to the list of goods and services. The applicant will be requested to amend and/or to specify the list and the Office may propose the way in which the items should be classified.
The original time limit allowed to submit observations on the classification deficiency letter can only be extended once. No further extensions will be granted unless exceptional circumstances apply.
The Office will send a l etter informing the applicant of the definitive agreed list of accepted terms.
5.3 Amendments
See also the Guidelines, Part E, Register Operations, Section 1, Changes in a Registration.
Article 43(2) CTMR allows for the amendment of an appl ication. This includes the amendment of the list of goods and services provided that ‘such a correction does not substantially change the trade mark or extend the list of goods and services’.
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The amendment can be listed in either positive or negative terms, the following examples are both acceptable:
• Alcoholic beverages all being whisky and gin. • Alcoholic beverages none being whisky or gin.
For classification purposes, two basic requirements must be met in order to make an amendment acceptable:
1. the new wording must not in fact constitute an extension of the list of goods and services;
2. the restriction must constitute a valid description of goods and services and the restriction must apply only to goods or services that appear in the original application.
Otherwise, the Office has to refuse the proposed restriction and the list of goods and services will remain unchanged.
Because of point 1 and 2 a bove, such amendments must be i n the nature of a restriction or deletion of some of the terms originally contained in the application. Once such amendments (deletions) have been received (and later accepted) by the Office, the deleted terms cannot be re-introduced, nor can the remaining list of goods and services be extended.
A restriction may result in a l onger list of goods and s ervices than that filed. For example, the original list of goods and services may have been f iled as alcoholic beverages, but it could be restricted to alcoholic beverages being wines and spirits, but not including whisky or gin and not including liqueurs, cocktails or combinations of beverages containing elements of whisky or gin.
In light of all of the above, here are some examples of unacceptable amendments:
• A request to amend the list of goods and services from vehicles; apparatus for locomotion by land, air or water in Class 12 to batteries for vehicles, to the extent that these products are proper to Class 9 and were therefore not included in the original list.
• From Musical instruments to Steinway & Sons Pianos, to the extent that the amended list of goods and services contains a trade mark.
• A request made to restrict the goods from washing machines to washing machines for sale in France to the extent that the amendment goes against the concept of the unitary nature of a Community trade mark.
In certain circumstances restrictions are acceptable as long as the original term remains in the list of goods and services. Examples of acceptable restrictions are:
• clothing for use in the catering industry, to the extent that this means specific professional clothing;
• restaurant services, only in holiday resorts, to the extent that the services can be recognised as being restaurant services;
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• newspapers, only sold at railway stations, to the extent that the goods can be recognised as being newspapers;
5.4 Addition of classes
Under the provisions of Article 43(2) CMTR (listed above), it is possible to add a c lass or classes to an application, but only where the goods or services detailed in the original application were clearly included in the wrong class or when a good or service has been clarified and needs to be classified in new class(es). For example, assume the original list of goods reads:
Class 33: Alcoholic beverages including beer, wines and spirits.
Since beer is proper to Class 32, the applicant will be requested to transfer the term to Class 32, even if Class 32 was not listed in the original application. If the applicant agrees then the application will cover goods in Classes 32 and 33.
When classes are added, additional fees may be payable and the applicant must be informed accordingly.
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6 Annex 1
Table of Contents
Introduction...............................................................................................................19 Advertising services.................................................................................................19 Air freshening and perfuming preparations............................................................19 Amusement apparatus and electronic games ........................................................19 Association services or services provided by an association to its members .... 20 Beauty apparatus......................................................................................................20 Bringing together of services ..................................................................................20 Broadcasting and/or transmission services...........................................................20 Brokerage services...................................................................................................21 Cases (and carrying bags) .......................................................................................21 Charitable services...................................................................................................21 Collection and storage services ..............................................................................22 Computer games and computer games apparatus ................................................22 Curtains and blinds ..................................................................................................23 Custom manufacture/manufacturing for third parties............................................23 Data services.............................................................................................................23 Design services ........................................................................................................24 Digital imaging services...........................................................................................24 Downloadable goods................................................................................................24 Electricity and energy...............................................................................................25 Electronic and electric apparatus............................................................................25 Electronic cigarettes.................................................................................................25 Franchising ...............................................................................................................25 GPS systems – location, tracking and navigating..................................................26 Hair styling ................................................................................................................27 Hire services .............................................................................................................27 Humanitarian aid services........................................................................................27 Internet services, on-line services...........................................................................27 Kits and sets .............................................................................................................28 Leasing......................................................................................................................29 Mail order ..................................................................................................................29 Manuals (for computers, etc.) ..................................................................................29 Manufacturing services............................................................................................30 News services...........................................................................................................30 On-line services ........................................................................................................30 Ordering of services.................................................................................................30 Perfuming and air freshening preparations............................................................31
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Personal and soc ial services rendered by others to meet the needs of individuals.................................................................................................................31 Precious metal goods...............................................................................................32 Protective clothing....................................................................................................32 Rental services .........................................................................................................32 Retail and wholesale services .................................................................................33 Satellite tracking .......................................................................................................34 Sets............................................................................................................................34 Social networking services......................................................................................34 Software publishing..................................................................................................34 Solar power ...............................................................................................................34 Storage services .......................................................................................................35 Supply of ... ...............................................................................................................35 Systems.....................................................................................................................35 Tickets (for travel, entertainment etc.) ....................................................................36 Video games .............................................................................................................36 Virtual environment ..................................................................................................36
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Introduction
When classifying the general principles of the Nice Classification must be applied.
The purpose of this Annex is to clarify the classification of certain problematic terms. It also provides notes on classification practice (including words or phrases that should not be used).
The Office’s classification database TMclass is available at http://tmclass.tmdn.org
Advertising services
In principle, advertising services belong to Class 35. The main entries on advertising services in the list of services in the Nice Classification are:
• Advertising • Radio advertising • Radio commercials • Television advertising • Television commercials • Layout services for advertising purposes • Publication of publicity texts • Production of advertising films.
These entries cover the design of advertising material and production of commercials, as they are services which will be provided by advertising agencies.
Air freshening and perfuming preparations
See perfuming and air freshening preparations.
Amusement apparatus and electronic games
Following changes to the Nice Classification on 1 January 2012 (10th edition), all games (whether electronic or not) are classified in Class 28.
These are shown in the alphabetical list as follows:
• Games (Apparatus for-) • Video game machines • Arcade video game machines.
Most of these Class 28 devices come loaded with the games. However, if these games are not loaded on t he devices, they will be r ecorded on dat a carriers or they will be downloadable. In these cases, the games are considered to be game programmes which are especially adapted for use with gaming devices and thus will be classified in Class 9.
See also computer games.
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Association services or services provided by an association to its members
These, and similar terms are too vague to be acceptable. The type, or scope, of the service being provided needs to be mentioned. Examples of acceptable specifications are:
Class 35: Association services in the nature of business administration services.
Class 45: Services provided by an association to its members in the form of legal services.
See also charitable services.
Beauty apparatus
Class 7: Sprayers (machines) for applying artificial sun tanning preparations.
Class 8: Hand-operated instruments/tools for beauty purposes Tattooing needles/apparatus Depilatory apparatus (electric and non-electric).
Class 10: Massage apparatus Microdermabrasion apparatus Apparatus for the treatment of cellulite Lasers for cosmetic beauty treatments Laser hair removal apparatus Photoepilation apparatus.
Photoepilation is a procedure carried out by pulsed light devices. These devices use the same principle as lasers (i.e. heating up the hair follicle), yet they are not lasers.
Class 11: Ultra-violet ray lamps for cosmetic purposes Sun beds Steam apparatus for cleaning the skin.
Class 21: Cosmetic brushes and applicators.
Bringing together of services
See ordering of services and retail and wholesale services.
Broadcasting and/or transmission services
These services are proper to Class 38; both mean the same thing. The services provided in this area only cover the provision of the means of communication (e.g. the
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provision of a network of fibre optic cables; the provision of broadcasts or transmissions via geo-stationary satellite transmission facilities, the rental of communications apparatus and systems). Class 38 does not cover any programmes, advertising, information or advice which may be t ransmitted by means of telecommunications or broadcasting technology. Those services would remain in the appropriate classes.
Brokerage services
These are services provided by an individual or company whereby they buy and sell commodities for a fee or commission. The fee may be c harged to the buyer or the seller of the commodity (or both). The broker may never see the goods or services in question.
There are three listed classes for brokerage services. These are:
Class 35: Brokerage of name and address based lists.
Class 36: [A large number of listings for] brokerage of futures, carbon offsets, real estate, bonds, securities and other financial based items.
Class 39: Brokerage services relating to distribution, transport, and storage.
Cases (and carrying bags)
Cases (and bags) adapted to carry or transport the product they are intended to contain are in principle, classified in the same class as the product they are adapted to carry. For instance laptops bags are proper to class 9.
All non-adapted carrying bags are in Class 18.
Charitable services
This term is too vague to be accepted in any class without further qualification.
Charitable services are defined by the service which is being offered. Therefore, they can be c lassified in any of the service classes, given the correct definition. For example:
Class 35: Charitable services, namely administration and general office work.
Class 36: The organisation of charitable collections; charitable fund raising.
Class 38: Telecommunications services for charitable purposes.
Class 39: Charitable services, namely ambulance transport.
Class 40: Charitable services, namely water treatment services.
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Class 41: Charitable services, namely education and training.
Class 42: Charitable services, namely environmental protection services.
Class 43: Charitable services, namely providing food and drink and temporary accommodation.
Class 44: Charitable services, namely providing medical services.
Class 45: Charitable services, namely mentoring [personal or spiritual].
Collection and storage services
In the case of physical goods both collection and storage services would be proper to Class 39. This class includes transport and warehousing in its listings. This would also include the collection and physical storage of data, whether in written form or recorded on media (the Nice Classification has physical storage of electronically stored data or documents in Class 39).
Office services of electronically collecting, collating and m anipulating data are all proper to Class 35.
Storage of digital data and electronic data storage are seen to be i n analogy with hosting services, and so are proper to Class 42. Cloud computing data storage services are also proper to Class 42.
Computer games and computer games apparatus
The terms computer games and video games are highly similar and are treated as the same way.
The dictionary reference for computer games is as follows: 1. (Noun) ‘any of various games, recorded on cassette or disc for use in a home
computer, that are played by manipulating a mouse, joystick, or the keys on the keyboard of a c omputer in response to the graphics on t he screen’ (Collins English Dictionary).
The terms computer games / video games, as such, are therefore only acceptable in Class 9. The dictionary reference of the term clearly states that it must be a game, thus software. The terms can therefore be accepted in Class 9 without any further clarification.
Games which are acceptable in Class 28 come loaded with the games software. For example, the following terms can all be accepted in Class 28:
• Arcade games • Arcade video machines • Computer game consoles • Games (apparatus for)
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• Hand held computer game devices • Video game machines.
Curtains and blinds
Blinds, in all their forms, can be used on windows both internally and externally. The classification of these goods depends upon the purpose of the product and its material composition.
Curtains are normally found in use indoors and they are similarly classified according to their material composition.
Examples of acceptable entries are:
Class 6: Outdoor blinds of metal External metal blinds as part of a building for security purposes.
Class 17: Curtains of asbestos (safety-) (The material and pur pose determine the classification).
Class 19: Blinds [outdoor] not of metal and not of textile. (These goods are probably made of wood).
Class 20: Blinds (slatted indoor) Venetian and vertical window blinds. Indoor window blinds Blinds (indoor window) [shades] [furniture] Curtains (bamboo-) Paper blinds Curtains (bead-)[for decoration].
Class 24: Outdoor blinds of textile.
The vast majority of curtains will fall under Class 24 since most domestic curtains (sometimes referred to as ‘drapes’) are made of textiles or plastic.
Care should be t aken with any references to curtain walling, or curtain walls. These refer to a type of construction technique relating to buildings and the associated goods are building materials and are proper to Class 6 (for metal goods) or Class 19 (for non- metallic goods).
Custom manufacture/manufacturing for third parties
See manufacturing services.
Data services
The term cannot be accepted on its own. It must be qualified.
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The provision of data can be proper to several classes depending on the way in which the data is provided or the nature of the data being provided. In each case the exact nature of the service being offered will need to be stated, the provision of data is not enough. The following are examples of acceptable terms and their relevant classification:
Class 44: Provision of data (information) relating to the use of pharmaceuticals. (This would refer to the systemised provision of data which could only be interpreted by someone with specialised medical training.)
Class 45: Provision and interpretation of data relating to animal tracking. (This would refer to services in relation to the relocation of a lost or stolen animal. If the data was for other purposes, then the classification would be proper to other classes e.g. Class 42 for measuring or scientific reasons.)
Design services
Design services are, as such, proper to Class 42.
Design of advertising and design of brand names are both proper to Class 35 as these are both part of advertising services.
Likewise landscape design, floral design, turf design and planning [design] of gardens are proper to Class 44 as these are horticultural services.
Digital imaging services
The term digital imaging services has been deleted from Class 41 in the 10th edition of the Nice Classification. Consequently, the term cannot be accepted in Class 41 without any specification. This is because digital imaging can be c lassified in more than one class depending on the field the service refers to, e.g. medical, information technology or photography.
Acceptable terms include:
• Digital imaging (photo editing) in Class 41 • Medical imaging services in Class 44 • Digital imaging (IT services) in Class 42.
Downloadable goods
All material which is downloadable is proper to Class 9. This includes publications, music, ring tones, pictures, photographs, films or film extracts. The result of the download is that the material is captured onto the drives or memory of a c omputer, telephone or PDA where it operates independently of the source from whence it came. These can also be called virtual goods. All these downloadable goods can be retailed.
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Electricity and energy
The following is a guide to some of the goods and services which surround electricity.
Class 4: Electrical energy.
Class 7: Electrical generators.
Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating, or controlling electricity Solar cells for electricity generation Photovoltaic cells and modules.
Class 36: Brokerage of electricity (see also note under brokerage services).
Class 39: Distribution of electricity Storage of electricity.
Class 40: Generation of electricity.
See solar power.
Electronic and electric apparatus
The term electronic and electric apparatus/devices/instruments is too vague for classification purposes; it is not acceptable in any goods class, and should be specified.
Please be aw are that specifications of electronic and electric apparatus / devices / instruments such as listed below are considered too vague as well:
• for controlling the environment • for household purposes • for use in hairdresser salons.
Electronic cigarettes
Electronic cigarettes, e-cigarettes or e-cigs are – for classification purposes – acceptable only in Class 34, even if they would serve a m edical purpose. Non- electronic parts of these types of cigarettes, like cartridges, atomisers or (aroma) substances for these cigarettes are also classified in Class 34.
The electronic parts like batteries and a microcomputer controlled circuits for electronic cigarettes are not acceptable in these classes and belong – as usual – to Class 9.
Franchising
The verb ‘franchise’ refers to the giving or selling of a franchise to another party. As a noun ‘franchise’ means ‘the authorisation granted to an i ndividual or group by a
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company to sell its products or services in a particular area’ (Oxford English Dictionary).
Without any further specification, the office will not accept the term franchise service or franchising services in Class 35. In order to be acceptable a clarification is required.
For example: Class 35: Business advice relating to franchising.
Class 36: Financing services relating to franchising.
Class 45: Legal services relating to franchising.
GPS systems – location, tracking and navigating
GPS and s atellite navigation systems (class 09) provide location, tracking and navigating services, to provide the user with information.
The easiest way to classify these services is to divide them into those services which provide the telecommunications which run the services (Class 38) and those services which provide information via the GPS device. The range of information provided goes beyond mere travel route information (Class 39). It can include information regarding restaurants and accommodation (Class 43), information regarding shopping outlets (Class 35) or telephone numbers (Class 38).
The use of GPS devices in relation to the movement of vehicles and people can also lead to classifications over a range of classes. Route planning services (Class 39) have already been m entioned. This classification would also extend to logistic or freight moving companies keeping track of their vehicles using the same devices.
GPS systems can also be used in conjunction with other technology, to locate the source of a mobile telephone signal. If this is being done as part of a telecommunication service it will be proper to Class 38. If, however, it is being done as part of a criminal investigation service it would be proper to Class 45.
There are other services that can be as sociated with the services listed above. For example, the creation of maps for GPS systems is proper to Class 42. The downloadable applications which run the service or provide alternative ‘voices’ are proper to Class 9. The retail services for providing the downloadable applications are proper to Class 35.
The examples below demonstrate how these and other terms are classified.
Class 35: Compilation and provision of commercial directory information regarding service providers for GPS navigation.
Class 38: Satellite transmissions Providing public subscribers directory information for GPS navigation Providing access to general information supplied via satellite transmission Telecommunications services for location and tracking of persons and objects Tracking of mobile telephone via satellite signals
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Location of mobile telephones via satellite signals Providing access to GPS navigation services via satellite transmission Satellite transmission of navigation data.
Class 39: Providing GPS navigation services Providing traffic information services via satellite transmission Providing road information services via satellite transmission Location services for logistics purposes of vehicles and goods Tracking services for logistics purposes of vehicles and goods.
Class 42: Providing weather information via satellite transmission Creation of GPS maps.
Class 45: Providing public amenity and civic directory information for GPS navigation Tracing and locating of missing persons via satellite transmission Tracking of persons carrying electronic tagging devices Security tracking services of vehicles Security location services of vehicles.
Hair styling
Most electric and non-electric hair styling apparatus is classified in Class 8 (e.g. electric hair curling irons; hair tongs [non-electric hand implements]; crimping irons for the hair etc.). Except:
Class 26: Electric hair curlers/rollers (e.g. CARMEN™ CURLERS).
Class 26: Hair curlers/rollers, other than hand implements.
Class 11: Hair dryers.
Class 21: Combs and brushes (non-electric and electric).
Hire services
See rental services.
Humanitarian aid services
Office practice on humanitarian aid services is the same as that on charitable services; the nature of the services must be specified (see charitable services).
Internet services, on-line services
The term internet services is neither clear nor precise for acceptance in any class. It must be further defined.
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There are a range of services, offered by individuals and business to other individuals and businesses, which relate to the setting up, operation and servicing of internet web- sites and these are covered by appropriate entries in a number of classes.
There is an even wider range of services offered to customers through the medium of telecommunications including via the internet. It is possible to shop over the internet, obtain banking advice, learn a new language, or listen to a ‘local’ radio station which is situated on the other side of the world.
The application of the Nice Classification system generally applies regardless of whether the service is provided face-to-face, in dedicated premises, over a telephone, on-line from a database or from an internet web site.
Acceptable terms include:
Class 35: Advertising services provided over the internet.
Class 36: On-line banking services.
Class 38: Internet provider services.
Class 41: On-line gaming services.
Class 42: Providing on-line support services for computer program users.
Class 45: On-line social networking services.
Kits and sets
It is common in trade for certain goods to be sold in groups of more than one item. If the items are all the same, e.g. a pack of three toothbrushes, then the classification is simple. However, sometimes the collection of goods could be c omponent parts of another item, or have a function which is not defined by the individual goods. These groups of goods sometimes have collective names such as kit or set. These small words can have a big impact on (1) the acceptability as collection of goods and (2) the appropriate classification.
A kit can mean either:
1. a set of parts ready to be made into something (for example: a kit for a model plane) or
2. a set of tools or equipment that is to be used for a particular purpose (for example: a first-aid kit).
A set is a number of articles that are thought of as a group. This may have a def ined number or not (e.g. a set of keys, a set of saucepans, a set of golf clubs; a cutlery set).
Kits appear in the Nice Classification, for example, as in the following example:
Class 3: Cosmetic kits.
Class 5: First aid kits (seen as a collection of plasters and treatments).
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It sometimes happens that the individual goods which make up t he kit or set would normally be c lassified in more than one class. However, the Office will not object to acceptance of such collective terms, provided that they make sense and/or are in common usage.
When determining the correct classification for a kit or set, it is necessary to understand either; what the kit is going to be used for, or alternatively, if it going to make or construct something from its components, what the finished article will be.
Examples of acceptable terms would be:
Class 8: Manicure and pedicure sets.
Class 9: Hands free kits for phones.
Class 12: Tyre repair kits (for repairing a vehicle part that is in Class 12).
Class 27: Rug making kit.
Class 28: Scale model kits [toys] Toy model kits.
Class 32: Beer making kits.
Class 33: Wine making kits.
Leasing
The general remarks in the Nice Classification (10th edition) say, ‘Leasing services are analogous to rental services and therefore should be classified in the same way. However, hire- or lease-purchase financing is classified in Class 36 as a f inancial service.’
See also rental services.
Mail order
See retail and wholesale services.
Manuals (for computers, etc.)
Electronic items such as computers, printers, photocopiers and other electronic items are often delivered as new goods to the customer with a list of operating instructions. The instructions can be in paper (printed) format, or in an electronic format, such as a recording on a disc, or as a downloadable or non-downloadable document available at the manufacturer’s web-site.
Examples of this would be:
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Class 9: Computer software and hardware and associated manuals in electronic format sold as unit therewith.
Class 16: Manuals sold as a unit with computer software and hardware.
Manufacturing services
Manufacturing is only seen as a service when it is undertaken for third parties and must be specified as such. Custom manufacturing of certain single, ‘one-off’ products for third parties, for example a sailing boat or a sports car, by a specialist in that field would be proper to Class 40. Custom construction of e.g. made-to-measure kitchen units would be included in Class 40, but their installation would be proper to Class 37.
News services
News agency services are proper to Class 38. They are essentially a hub or collection point through which journalists and others can file and obtain newsworthy materials (in the form of stories, script or photographs). They do not perform any other function such as editing or verification services.
News reporting services are proper to Class 41. News has no boundaries, the subject could be anything.
Other examples include:
Class 38: News broadcasting services.
Class 40: Printing of newspapers.
Class 41: Presentation of news (programmes) Publication of news Editing of news.
As far as electronic news publications are concerned, downloadable news pod casts, news clips, news items, news publications, etc. are all goods which are proper to Class 9.
On-line services
See internet services.
Ordering of services
The ordering of goods/services for others can be accepted in Class 35 as a business service / office function. There are individuals and companies who offer services of providing solutions to a variety of problems on behalf of others, e.g. if you need a leaking tap to be fixed, the intermediary (service provider) will arrange the services of a plumber for you. This classification is in analogy with the Nice Classification entry procurement of services for others [purchasing goods and services for other business].
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Perfuming and air freshening preparations
There are preparations which serve to merely mask unpleasant smells (perfume) and there are also preparations which chemically ‘wrap-up’ and remove unpleasant odours (deodorisers) and their apparatus. They are properly classified as follows:
Class 3: Air fragrancing preparations Incense Potpourris [fragrances] Sachets for perfuming linen Scented wood Fumigation preparations [perfumes] Room sprays.
Class 5: Air deodorising preparations Air purifying preparations
Class 11: Air deodorising apparatus
Other goods which may release pleasant odours include perfumed candles which are proper to Class 4 (the release of perfume is a secondary characteristic) and perfumed drawer liners (proper to Class 16 as being analogous to packaging material and usually made of paper).
Personal and social services rendered by others to meet the needs of individuals
The general indication personal and social services rendered by others to meet the needs of individuals is not clear and precise enough and will not be accepted by the Office (see also paragraph 3.4.2).
The wording needs to be specified by the applicant.
There are many personal and s ocial services that are classifiable, but are proper to classes other than Class 45. These include:
Class 36: Personal insurance services (such as life assurance).
Class 41: Personal tuition.
Class 44: Personal medical services.
Class 45: Personal body guarding Consultancy services relating to personal appearance Personal tour guide services Personal shopping services.
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Precious metal goods
The general indication goods of precious metals or coated therewith, not included in other classes in Class 14 is not clear and precise enough and will not be accepted by the Office (see also paragraph 3.4.2). The applicant needs to specify the wording of the term.
Caution needs to be applied when classifying goods made from precious metals.
Historically, virtually all goods which were made from, or coated with, precious metals were grouped together in Class 14. It was considered that the material had an influence on why the goods were bought, and that in turn determined where the goods were classified.
Since 1 January 2007, the classification of many goods that would have been i n Class 14 has been re-classified. The reclassification of the goods is based upon their function, rather than the material from which they are made.
The following goods are examples of goods which are classified according to their function or purpose:
Class 8: Cutlery of precious metal.
Class 16: Pen nibs of gold.
Class 21: Teapots of precious metal
Class 34: Cigarette and cigar boxes made of precious metals.
Protective clothing
If items that are worn (or sometimes carried) have their primary function as the prevention of serious and/or permanent injury, or death or if that protection is offered against, for example contact with or exposure to extremes of temperature, chemicals, radiation, fire, or environmental or atmospheric hazards, then those goods would be proper to Class 9.
Examples of such protective goods would include hard-hats worn on building sites, and helmets worn by security guards, horse riders, motorcyclists, and American football players. Bullet-proof vests, metal toe-capped shoes, fireproof jackets and metal butchers’ gloves are examples of these: they are not clothing as such. Aprons, smocks and overalls which merely protect against stains and dirt are not proper to Class 9 but to Class 25 as general clothing. Protective sporting articles (except helmets) are proper to Class 28: none of these protect against loss of life or limb.
Rental services
Rental or hire services are classified, in principle, in the same class as the services provided. For example, the rental of cars falls in Class 39 (transport), rental of telephones in Class 38 (telecommunications), rental of vending machines in Class 35
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(retail services). The same principle applies to leasing services which are found on TMclass in all of the service classes.
Retail and wholesale services
A retail service is defined as ‘The action or business of selling goods in relatively small quantities for use or consumption’ (Oxford English Dictionary); this defines the scope of the services covered by this term.
There is an indication in the explanatory note to the listing of Class 35 in the Nice Classification that the term the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase these goods is acceptable in Class 35. Retail services are classified in analogy to this entry.
However, as regards retail services or similar services in Class 35 relating to the sale of goods, such as wholesale services, mail order services and e-commerce services, the Office applies judgment of 07/07/2005, C-418/02, ‘Praktiker’: the term retail services is only acceptable where the type of goods to be sold is indicated. For details, see Communication No 7/05 of the President of the Office.
If the nature of the place in which the goods are sold in is sufficiently specific to allow the recognition of the category of the goods, this will also be accepted. Acceptable wordings include:
• Retail services relating to clothes shops • Retail services relating to garden centres • Retail services relating to bakers.
As shown in the Communication of the President, the term retail services of a supermarket and, by extension, retail services of a department store and similar terms are not acceptable as the goods to be sold are not defined.
The 10th edition of the Nice Classification (version 2013) includes retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies, which shows how terms can be expressed.
Examples of categories of goods which are seen as being too vague for classification purposes include:
• Merchandising articles • Fair-trade goods • Lifestyle accessories • Gift articles • Souvenirs • Collectors’ articles • Housewares.
Examples of categories of goods which are not acceptable in relation to retail as they are seen as a service proper to a different class include:
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• Financial products – these are in fact financial services classified in Class 36. • Lottery tickets – these are lottery services classified in Class 41. • Airplane tickets – these are part of travel agency services classified in Class 39.
Finally, retail services for non-acceptable general indications of the class headings (see paragraph 3.4.2) are not acceptable. For example, the Office will not accept retail services for machines. However, retail services in relation to agricultural machines would be sufficiently precise and acceptable.
The specification of the goods by terms such as ‘including, in particular, for example, featuring, specifically, such as’ is not precise enough since all these terms mean, in principle, ‘for example’. They do not restrict the goods which follow. Consequently, the abovementioned terms should be r eplaced by ‘namely or being’ as it will restrict the goods which follow those terms.
Satellite tracking
See GPS systems – location, tracking and navigating.
Sets
See kits and sets.
Social networking services
Social networking services is an acceptable term in Class 45. It would be seen as a personal service which includes the identification and introduction of like-minded people for social purposes.
There are other aspects of the ‘social networking’ industry which could be proper to classes other than Class 45, for example:
Class 38: The operation of chat room services The provision of on-line forums.
Software publishing
Software publishing belongs to Class 41. A software publisher is a publishing company in the software industry between the developer and t he distributor. Publishing, according to its definition, includes newspaper publishing and software publishing.
Solar power
Solar power is energy that is derived from the sun and converted into heat or electricity.
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Goods relating to the generation and s torage of electricity from solar energy are classified in Class 9.
Goods relating to the generation and storage of heat from solar energy are classified in Class 11.
Services relating to the generation of electricity from solar energy are classified in Class 40.
Class 9: Photovoltaic cells Solar panels, modules and cells.
Class 11: Solar collectors for heating.
Class 40: Production of energy.
See electricity and energy.
Storage services
See collection and storage services.
Supply of ...
Care should be taken in the acceptance of this term when it is used to qualify services. It is acceptable in some circumstances, for example, supply of electricity in Class 39, where the term is often closely allied to distribution. It is also acceptable in the term catering services for the supply of meals (in Class 43) because the material being supplied, and the nature of the service, have both been given.
In the term supply of computer software (in Class 42) it is not clear what services are being provided. Whilst this class does include the services of design, rental, updating and maintaining computer software, it is not clear if any of those services are included in the general term supply. The word is often used as an apparent synonym for retail services but Class 42 does not include such services, they would be proper to Class 35.
Systems
This is another term which can be too unclear or too imprecise to be accepted.
It can be ac cepted only when qualified in a w ay that has a c lear and unam biguous meaning. For example, the following are acceptable:
Class 7: Exhaust systems.
Class 9: Telecommunication systems Computer systems Alarm systems.
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Class 16: Filing systems.
Tickets (for travel, entertainment etc.)
A ticket is a ‘promise to supply’ in relation to a service, or a reservation service, the right to a service. Examples include:
Class 39: Issuing of airplane tickets.
Class 41: Ticket agency services (box office).
Note that tickets are not seen as goods retailed in Class 35.
Video games
See computer games.
Virtual environment
The term providing a virtual environment is neither clear nor precise enough as it can relate to different areas of activities and classes. The term must be further defined.
Acceptable terms include:
Class 38: Providing a virtual chatroom Providing access to a virtual environment.
Class 42: Hosting of a virtual environment Maintenance of a virtual environment.
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Revision History
Version Date Author Description 1.1 06/09/2013 CDD Preliminary draft of the document 1.2 06/09/2013 CDD AP and TC comments incorporated 1.3 13/09/2013 CDD Draft adapted following CP1 meeting
12/09/2013 1.4 16/09/2013 CDD Draft adapted following meeting
escalation process 11/09/2013 1.5 22/09/2013 CDD All changes for revision cycle included 1.6 27/09/2013 AP/AW/KK/MJ Proposed changes members KC + QS
included 1.7 01/10/2013 JL Proposed change JL regarding
acceptability guidelines included 1.8 04/10/2013 CDD Proposal for KC members 1.9 09/10/2013 ZS KC member comments included 2.0 20/11/2013 CDD Revision after comments OD 2.1 16/12/2013 CDD Proofread + last changes CP1 – CC3,
ready for translation
Absolute Grounds for Refusal
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART B
EXAMINATION
SECTION 4
ABSOLUTE GROUNDS FOR REFUSAL
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Table of Contents
2.6 Public policy or morality, Article 7(1)(f) CTMR .........................................4 2.6.1 ‘Public policy’ .................................................................................................. 4
2.6.1.1 Concept and categories...............................................................................4 2.6.1.2 Plant Variety Denominations........................................................................5
2.6.2 Accepted principles of morality....................................................................... 7
2.7 Deceptiveness: Article 7(1)(g) CTMR.......................................................10 2.7.1 Examination of the deceptive character ....................................................... 10 2.7.2 Market reality and consumers’ habits and perceptions ................................ 12 2.7.3 Trade marks with geographical connotations relating to the location of the
applicant or the place of origin of the goods/services .................................. 13 2.7.4 Trade marks making reference to an ‘official’ approval, status or
recognition .................................................................................................... 13 2.7.5 Relation with other CTMR provisions ........................................................... 14
2.8 Protection of flags and other symbols – Articles 7(1)(h) and (i) CTMR.16 2.8.1. Protection of armorial bearings, flags, other state emblems, official signs
and hallmarks indicating control and warranty under Article 7(1)(h) CTMR – Article 6ter(1)(a) and (2) PC ...................................................................... 16 2.8.1.1 Examination of marks consisting of or containing a state flag ...................19 2.8.1.2. Examination of marks consisting of or containing armorial bearings and
other state emblems..................................................................................23 2.8.1.3 Examination of marks consisting of or containing official signs and
hallmarks indicating control and warranty..................................................26 2.8.2. Protection of armorial bearings, flags, other emblems, abbreviations and
names of international intergovernmental organisations under Article 7(1)(h) CTMR – Article 6ter(1)(b) and (c) PC .................................... 26
2.8.3. Protection of badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention under Article 7(1)(i) CTMR.............. 33
2.9 Article 7(1)(j) CTMR...................................................................................38 2.9.1 Introduction ................................................................................................... 38 2.9.2 The application of Article 7(1)(j) CTMR ........................................................ 41
2.9.2.1 Relevant PDOs/PGIs.................................................................................41 2.9.2.2 Situations covered by Article 103 of Regulation (EU) No 1308/2013 and
Article 16 of Regulation (EC) No 110/2008................................................42 2.9.2.3 Relevant goods .........................................................................................50
2.9.3 PDOs/PGIs not protected under Regulations (EC) No 1308/2013 and No 110/2008 ................................................................................................. 51 2.9.3.1 PDOs/PGIs protected at national level in an EU Member State ................52 2.9.3.2 PDOs/PGIs from third countries ................................................................52
2.10 Article 7(1)(k) CTMR ........................................................................ 54 2.10.1 Introduction ................................................................................................... 54 2.10.2 The application of Article 7(1)(k) CTMR....................................................... 55
2.10.2.1 Relevant PDOs/PGIs.................................................................................55 2.10.2.2 Situations covered by Article 13(1) of Regulation (EU) No 1151/2012 ......56 2.10.2.3 Relevant goods .........................................................................................64
2.10.3 PDOs/PDIs not protected under Regulation (EU) No 1151/2012 ................ 67 2.10.3.1 PDOs/PDIs protected at national level in an EU Member State ................67 2.10.3.2 PDOs/PDIs from third countries ................................................................68
2.11 Community collective marks ...................................................................70 2.11.1 Character of collective marks ....................................................................... 70 2.11.2 Ownership..................................................................................................... 71
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2.11.3 Particularities as regards absolute grounds for refusal ................................ 72 2.11.3.1 Descriptive signs .......................................................................................72 2.11.3.2 Misleading character as to its nature.........................................................73 2.11.3.3 Regulations of use contrary to public policy and morality..........................73
2.12 Acquired distinctiveness ................................................................ 73 2.12.1 Introduction ................................................................................................... 73 2.12.2 Request 74 2.12.3 The point in time the evidence must relate to............................................... 74
2.12.3.1 Examination proceedings ..........................................................................74 2.12.3.2 Cancellation Proceedings..........................................................................74
2.12.4 Consumer ..................................................................................................... 75 2.12.5 Goods and Services ..................................................................................... 75 2.12.6 Territorial Aspects......................................................................................... 75
2.12.6.1 Special provisions with respect to the accession of new Member States..76 2.12.6.2 3D marks, colours per se and figurative trade marks ................................76 2.12.6.3 Language area ..........................................................................................76 • German .....................................................................................................76 • Greek.........................................................................................................77 • English.......................................................................................................77 • French .......................................................................................................77 • Dutch.........................................................................................................77 • Swedish.....................................................................................................77
2.12.7 What has to be Proved ................................................................................. 78 2.12.8 The evidence and its assessment ................................................................ 79
2.12.8.1 The kind of evidence that may be submitted .............................................79 2.12.8.2 Assessment of evidence as a whole .........................................................79 2.12.8.3 Market share .............................................................................................80 2.12.8.4 Opinion polls and surveys .........................................................................80 2.12.8.5 Turnover and advertising...........................................................................80 2.12.8.6 Indirect evidence of use.............................................................................81 2.12.8.7 Extrapolation .............................................................................................81 2.12.8.8 Manner of use ...........................................................................................82 2.12.8.9 Length of use.............................................................................................82 2.12.8.10 Post-filing date evidence ...........................................................................82
2.12.9 Consequences of Acquired Distinctiveness ................................................. 82
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2.6 Public policy or morality, Article 7(1)(f) CTMR
Article 7(1)(f) CTMR excludes from registration trade marks that are contrary to public policy or to accepted principles of morality. The rationale of Article 7(1)(f) CTMR is to preclude trade marks from registration where granting a monopoly would contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norms of society.
The Office considers that ‘public policy’ and ‘accepted principles of morality’ are two different concepts, which often overlap.
The question whether the goods or services applied for can be legally offered in a particular Member State’s market is irrelevant for the question whether the sign itself falls foul of Article 7(1)(f) CTMR (judgment of 13/09/2005, T-140/02, ‘Intertops’, para. 33). Whether or not a mark is contrary to public policy or accepted principles of morality must be determined by the intrinsic qualities of the mark applied for and not by the circumstances relating to the conduct of the person applying for the trade mark (judgment of 13/09/2005, T-140/02, ‘Intertops’, para. 28). In its judgment of 20/09/2011, T-232/10, ‘Soviet Coat of Arms’, the General Court held that the concepts of ‘public policy’ and ‘ acceptable principles of morality’ must be i nterpreted not only with reference to the circumstances common to all Member States but by taking into account ‘the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those States’ (para. 34).
The legislation and administrative practice of certain Member States can also be taken into account in this context (i.e. for assessing subjective values), not because of their normative value, but as evidence of facts which make it possible to assess the perception of the relevant public in those Member States (judgment of 20/09/2011, T-232/10, ‘Soviet Coat of Arms’, para. 57). In such a c ase, the illegality of the CTM applied for is not the determining factor for the application of Article 7(1)(f) CTMR but rather is of evidential value with regard to the perception of the relevant public in the Member State(s) in question.
Considering that the specific circumstances of individual Member States may not be widely known in the European territory, the objection letter should explain these circumstances clearly in order to make sure that the applicant is able to fully understand the reasoning behind the objection and is able to respond accordingly.
2.6.1 ‘Public policy’
2.6.1.1 Concept and categories
This objection derives from an assessment based on objective criteria. ‘Public policy’ refers to the body of Union law applicable in a certain area, as well as to the legal order and the state of law as defined by the Treaties and secondary EU legislation, which reflect a common understanding on certain basic principles and values, such as human rights.
The following is a non-exhaustive list of examples of when signs will be caught by this prohibition.
1. On 27/12/2001 the Council of the European Union adopted Common Position 2001/931/CFSP on the application of specific measures to combat terrorism
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(OJ L 344, 28/12/2001, p. 93) later updated by Council Common Position 2009/64/CFSP (OJ L 23, 27/01/2009, p. 37 and av ailable online at: http://eur- lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:023:0025:0029:EN:PDF) which contains a list of individuals and groups facilitating, attempting to commit or committing terrorist acts in EU territory. Any CTM applied for which can be deemed to support or benefit an individual or a group on that list will be rejected as being against public policy.
2. Use of the symbols and names of Nazi organisations is prohibited in Germany (§ 86a dt. StGB (German Criminal Code), BGBl. Nr. I 75/1998) and in Austria (§ 1 öst. Abzeichengesetz (Austrian Law on I nsignias), BGBl. Nr. 84/1960 in conjunction with § 1 öst. Verbotsgesetz (Austrian Prohibition Law), BGBl. Nr. 25/1947). Any CTM applied for which uses such symbols or names will be rejected as being against public policy.
3. Bearing in mind that the notion of ‘public policy’ also covers specific EU legislation in force in a given field, and insofar as there is both an EU Regulation and an I nternational Convention that is binding on t he European Union preventing the granting of exclusive rights in the name of a pl ant variety registered in the European Union, it follows that it is contrary to European public policy to grant exclusive trade mark rights in the name of a plant variety registered in the European Union, which is, therefore, considered to be descriptive by law.
2.6.1.2 Plant Variety Denominations
Plant variety names describe cultivated varieties or subspecies of live plants or agricultural seeds. Council Regulation (EC) No 2100/94 on Community plant variety rights (CPVRR) establishes a s ystem of Community plant variety rights (CPVR) as the sole and exclusive form of Community industrial property rights for plant varieties. A variety denomination must ensure clear and unambiguous identification of the variety and fulfil several criteria (Article 63 CPVRR). The applicant for a CPVR must give a suitable variety denomination that shall be used by anyone who markets such variety in the territory of a member of the International Union for the Protection of New Varieties of Plants (UPOV), even after the termination of the breeder’s right (Article 17 CPVRR).
Since 2005, the European Union is party to the International Convention for the Protection of New Varieties of Plants (UPOV Convention), which has become an integral part of the Union’s legal order. Under Article 20(1) UPOV Convention, the variety shall be designated by a denomination which will be its generic designation. Furthermore, each Contracting Party shall ensure that no rights in the designation registered as the denomination of the variety shall hamper the free use of the denomination in connection with the variety, even after the termination of the breeder’s right.
Therefore, both the CPVRR and the UPOV Convention impose the obligation to use the variety denominations in order to commercialize protected varieties or varieties whose protection has ended.
The use of variety denominations allows the interested person to know the variety it is using or purchasing and possibly the breeder and the origin of the variety. The
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obligation to use the variety denominations contributes to the regulation of the market and to the safety of transactions in the agricultural and food sector, avoiding potential misleading of the public and counterfeiting. It is therefore a matter of public interest and public safety to use the adequate variety denomination in respect of a variety.
According to Art. 18(2) CPVRR, a third party may hamper the free use of a variety denomination only if the rights in respect of a designation that is identical with the variety denomination were granted before that variety denomination was designated pursuant to Article 63 CPVRR.
A contrario, Art. 18(2) CPVRR implies that no exclusive rights should be granted in respect of a designation that is identical with the variety denomination, after such variety denomination has been designated pursuant to Art. 63 CPVRR.
OHIM therefore considers that registration of a CTM that would hamper the free use of a variety denomination after the grant of a CPVR to the corresponding variety is contrary to public policy.
As a c onsequence, CTM applications consisting of or containing signs which, if registered, would lead to an undue monopolisation of a variety denomination designating a variety protected by a CPVR or a variety that is no longer protected by a CPVR, shall be objected to on the grounds of being contrary to public policy under Article 7(1)(f) CTMR, in relation to Article 18 (2) CPVRR, which provides for the free use by third parties of the denomination of a plant variety in connection with the variety itself (i.e. descriptive use).
The Community Plant Variety Office (CPVO), based in Angers (France), is the European Union’s agency responsible for implementing a system for the protection of plant variety rights.
The CPVO maintains a register of protected plant varieties. The protected varieties and the varieties whose CPVR was terminated can be searched, based on their variety denomination and/or other search criteria, through the CPVO Variety Finder1, available in the Office’s intranet, which should be consulted by examiners as a reference tool whenever the type of goods and/or services covered by the CTM application so dictate. In particular, whenever the specification of a CTM application refers to live plants, agricultural seeds, fresh fruits, fresh vegetables or equivalent wordings, the examiner must verify that the term or terms making up the trade mark do not coincide with a registered variety denomination or with the denominat ion of a var iety for which protect ion has been s urrendered, terminated or has expired. The examiner will check the CPVO database in order to ascertain whether the term or terms making up the CTM application coincide with a variety denomination already entered in the abovementioned CPVO register. The search should be confined to variety denominations registered for the European Union.
If the check shows that the CTM applied for consists of or contains an identical reproduction of the variety denomination (be it in a word or in a figurative mark), the examiner must raise an objection under Article 7(1)(f) CTMR in respect of the relevant plant, seeds and fruits, as well as the dried, preserved and frozen fruits, since registration of a CTM consisting of a variety denomination entered in the abovementioned EU register is contrary to public policy. If, for example, a CTM applied
1 http://www.cpvo.europa.eu/main/en/home/databases/cpvo-variety-finder
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for ‘flowers’ contains a VD for a kind of rose, the list of goods will have to be limited in order to exclude ‘roses’. Moreover, if more than one VD appear in a CTM applied for – say, a VD for ‘apples’ and another one for ‘strawberries’−, the list of goods will have to be limited in order to exclude the goods covered by each VD, i.e., apples and strawberries.
Finally, where a plant variety denomination is used in the market but has not been registered or published in the CPVO, or in case of national VD, Articles 7(1)(c) and 7(1)(d) might be applicable (see sections 2.3 and 2.4).
2.6.2 Accepted principles of morality
This objection concerns subjective values, but these must be applied as objectively as possible by the examiner. The provision excludes registration as Community trade marks of blasphemous, racist or discriminatory words or phrases, but only if that meaning is clearly conveyed by the mark applied for in an unambiguous manner; the standard to be applied is that of the reasonable consumer with average sensitivity and tolerance thresholds (judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’, para. 21).
It is normally necessary to consider the goods and services for which registration of the mark is sought, since the relevant public may be di fferent for different goods and services and, therefore, may have different thresholds with regard to what is clearly unacceptably offensive. For example, as the Grand Board held in its decision of 06/07/2006, R 0495/2005-G – ‘SCREW YOU’, para. 29, ‘a person who is sufficiently interested in [sex toys] to notice the trade marks under which they are sold is unlikely to be offended by a t erm with crude sexual connotations.’ Nevertheless, although the Court has held that the applied-for goods and services are important for identifying the relevant public whose perception needs to be examined, it has also made it clear that the relevant public is not necessarily only that which buys the goods and s ervices covered by the mark, since a br oader public than just the consumers targeted may encounter the mark (judgment of 05/10/2011, T-526/09, ‘Paki’, paras 17 and 18 respectively). Accordingly, the commercial context of a mark, in the sense of the public targeted by the goods and services, is not always the determining factor in whether that mark would breach accepted principles of morality (judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’, para. 24). See also decision of 15/03/2013, R 2073/2012-4, − ‘CURVE’, paras 17-18 (T-266/13 – pending).
It is not only signs with ‘negative’ connotation that can be offensive. The banal use of some signs with a highly positive connotation can also be offensive (e.g. terms with a religious meaning or national symbols with a spiritual and political value, like ATATURK for the European general public of Turkish origin (decision of 17/09/2012, R 2613/2011-2 – ATATURK, para. 31)).
There need not be illegality for this part of Article 7(1)(f) CTMR to be applied: there are words or signs that would not lead to proceedings before the relevant authorities and courts, but that are sufficiently offensive to the general public to not be registered as trade marks (decision of 01/09/2011, R 0168/2011-1 – ‘fucking freezing! by TÜRPITZ’, para. 16). Furthermore, there is an interest in ensuring that children and young people, even if they are not the relevant public of the goods and services in question, do not encounter offensive words in shops that are accessible to the general public. Dictionary definitions will in principle provide a pr eliminary indication as to whether the word in question carries an offensive meaning in the relevant language (decision of
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01/09/2011, R 0168/2011-1 – ‘fucking freezing! by TÜRPITZ’, para. 25) but the key factor must be the perception of the relevant public in the specific context of how and where the goods or services will be encountered.
On the other hand, the Board of Appeal took the view that the word KURO did not convey to the Hungarian public the offensive meaning of the word ‘kúró’ (meaning ‘fucker’ in English), since the vowels ‘ó’ and ‘ú’ are separate letters which are distinct from ‘o’ and ‘ u’ and they are pronounced differently (decision of 22/12/2012, R 482/2012-1 – ‘kuro’, paras 12 et seq.).
There is a clear risk that the wording of Article 7(1)(f) CTMR could be applied subjectively so as to exclude trade marks that are not to the examiner’s personal taste. However, for the word(s) to be obj ectionable, it (they) must have a c learly offensive impact on people of normal sensitivity (judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’, para. 21).
The concept of morality in Article 7(1)(f) CTMR is not concerned with bad taste or the protection of individuals’ feelings. In order to fall foul of Article 7(1)(f) CTMR, a trade mark must be per ceived by the relevant public, or at least a s ignificant part of it, as going directly against the basic moral norms of the society.
There is no need to establish that the applicant wants to shock or insult the public concerned; the objective fact that the CTM applied for might be seen as such a shock or insult is sufficient (decision of 23/10/2009, R 1805/2007-1 – ‘Paki’, para. 27, confirmed by judgment of 05/10/2011, T-526/09, ‘Paki’ para. 20 et seq.).
Finally, application of Article 7(1)(f) CTMR is not limited by the principle of freedom of expression (Article 10 European Convention on Human Rights) since the refusal to register only means that the sign is not granted protection under trade mark law and does not stop the sign being used – even in business (judgment of 09/03/2012, T-417/10, ‘HIJOPUTA’, para. 26).
Examples of rejected CTMAs (public policy and/or morality)
Sign Relevant Consumer Public policy / morality Case No
BIN LADIN General consumer
Morality & public policy – the mark applied for will be understood by the general public as the name of the leader of the notorious terrorist organisation Al Qaeda; terrorist crimes are in breach of public order and moral principles (para. 17).
R 0176/2004-2
CURVE 300 General consumer Morality – ‘CURVE’ is an offensive and vulgar word in Romanian (it means ‘whores’).
R 0288/2012-2
CURVE General consumer Morality – ‘CURVE’ is an offensive and vulgar word in Romanian (it means ‘whores’).
R 2073/2012-4 (T-266/13 –
pending)
General consumer Morality – ‘fucking’ is an offensive andvulgar word in English. R 0168/2011-1
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Sign Relevant Consumer Public policy / morality Case No
General consumer Morality – ‘HIJOPUTA’ is an offensiveand vulgar word in Spanish. T-417/10
General consumer
Public policy – the Hungarian criminal code bans certain ‘symbols of despotism’, including the hammer and sickle as well as the 5-pointed red star symbolising the former USSR. This law is not applicable by reason of its normative value but rather as evidence of the perception of the relevant public (paras 59-63).
T-232/10
PAKI General consumer Morality– ‘PAKI’ is a racist insult inEnglish. T-526/09
SCREW YOU General consumer (for products other than sex products)
Morality – a substantial proportion of ordinary citizens in Britain and Ireland would find the words ‘SCREW YOU’ offensive and objectionable (para. 26).
R 0495/2005-G
FICKEN General consumer Morality - ‘FICKEN’ is an offensive and vulgar word in German (it means ‘fuck’).
T-52/13
ATATURK
Average consumer in the European general public of Turkish origin
Banal use of signs with a highly positive connotation can be offensive under Article 7(1)(f). ATATURK is a national symbol with a s piritual and political value for the European general public of Turkish origin.
R 2613/2011-2
Examples of accepted CTMAs
Sign Relevant Consumer Public policy / morality Case No
KURO General consumer
The fact that a foreign term, name or abbreviation displays certain similarities with an offensive word (like kúró) is not in itself sufficient reason to refuse the CTM applied for (para. 20). Hungarian vowels ‘ò’ and ‘ù’ are clearly different from ‘o’ and ‘u’ without accent. Furthermore, Hungarian words never end with ‘o’ without accent (paras 15- 18).
R 482/2012-1
SCREW YOU General consumer(for sex products)
A person entering a sex shop is unlikely to be offended by a trade mark containing crude, sexually charged language (para. 26).
R 495/2005-G
DE PUTA MADRE General consumer
Although ‘puta’ means ‘whore’ in Spanish, the expression DE PUTA MADRE means ‘very good’ in Spanish (slang).
CTM 3 798 469 CTM 4 781 662 CTM 5 028 477
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2.7 Deceptiveness: Article 7(1)(g) CTMR
2.7.1 Examination of the deceptive character
Article 7(1)(g) CTMR provides that marks which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services, shall not be registered.
According to the case-law relating to Article 3(1)(g) of the First Trademark Directive (TMD), the wording of which is identical to that of Article 7(1)(g) CTMR, the circumstances for refusing registration referred to in Article 7(1)(g) CTMR presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see judgment of 30/05/2006, C-259/04, ‘Elizabeth Emanuel’, para. 47 and the case-law cited therein).
Pursuant to the above, the Office, as a matter of practice, makes the twin assumptions that:
1. There is no r eason to assume that a t rade mark is intentionally applied for to deceive customers. No deceptiveness objection should be r aised if a non- deceptive usage of the mark is possible vis-à-vis the goods and services specified: i.e. an assumption is made that non-deceptive use of the sign will be made if possible,
2. The average consumer is reasonably attentive and s hould not be regarded as particularly vulnerable to deception. An objection will generally only be raised where the mark leads to a clear expectation which is patently contradictory to, for instance, the nature or quality or geographical origin of the goods.
An objection should be raised when the list of goods/services is worded in such a way that a non-deceptive use of the trade mark is impossible.
The following are two examples of marks which were found to be deceptive with regard to all or part of the claimed goods2.
Mark and goods Reasoning Case
LACTOFREE
for lactose in Class 5
The nature of the sign would immediately lead the relevant consumer to believe that the product in question, i.e. ‘lactose’, does not contain any lactose. It is clear that if the good being marketed under the sign ‘LACTOFREE’ is actually lactose itself, then the mark would be clearly misleading. NB: The mark is also objectionable under 7(1)(c)
R 892/2009-1
2 These examples address only the issue of whether a deceptiveness objection should be raised or not. This paragraph does not deal with possible objections under other absolute grounds for refusal. Therefore, the possibility that a gi ven trade mark might appear to be prima facie objectionable under Article 7(1)(b) and/or (c) CTMR (or other provisions for that matter) is not contemplated here.
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Mark and goods Reasoning Case
TITAN (German word for ‘titanium’)
for portable and relocatable buildings; modular portable building units for use in the construction of prefabricated relocatable buildings; prefabricated relocatable buildings constructed of modular portable building units, none of the aforesaid goods being made from or including titanium in Classes 6 and 19.
The applicant, during the appeal proceedings, in an at tempt to overcome an ob jection of descriptiveness, offered to restrict the specifications in both classes by adding, at the end, the indication none of the aforesaid goods being made from or including titanium. The Board held that such a restriction, if accepted, would have had the effect of rendering the trade mark deceptive from the standpoint of the German- speaking public, as they would assume that the goods were made from titanium when in reality this is not the case.
R 789/2001-3
An objection should be raised when the list of goods/services, worded in a detailed manner, contains goods/services in respect of which a n on-deceptive use is impossible.
In the (invented) case of a trade mark ‘KODAK VODKA’ for vodka, rum, gin, whisky, an objection should be raised in respect of the specific goods in respect of which a non- deceptive use of the trade mark is not possible, i.e. rum, gin, whisky. Such cases are substantially different from those (see here below) where broad wording/categories are used and where a non-deceptive use of the sign is possible. For example, no objection would be raised in respect of ‘KODAK VODKA’ filed for alcoholic beverages, since this broad category includes vodka, in respect of which the trade mark is not deceptive.
No objection should be raised when the list of goods/services is worded in such a broad way that a non-deceptive use is possible.
When wide categories in the list of goods/services are used, the question arises whether an objection should be raised in relation to an entire category due to the mark being deceptive in relation to only some goods/services falling within that category. The policy of the Office is not to object in these circumstances. The examiner should assume that the mark will be used in a non-deceptive manner. In other words they will not object on the basis of deceptiveness wherever they can pinpoint (in a category) a non-deceptive use.
Therefore, the rule is that Article 7(1)(g) CTMR does not apply if the specification consists of wide categories which include goods/services for which use of the trade mark would be non-deceptive. For example, in the case of a trade mark ‘ARCADIA’ applied for ‘wines’, an objection under Article 7(1)(g) CTMR would not be appropriate, since the broad category ‘wines’ also covers wines originating from Arcadia (and since Arcadia – which identifies a wine-producing region in Greece – is not a protected geographical indication at Community level, there is no obligation on the part of the applicant to restrict the specification only to wines originating from Arcadia).
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2.7.2 Market reality and consumers’ habits and perceptions
When assessing if a given trade mark is deceptive or not, account should be taken of market reality and consumers’ habits and perceptions.
In order to evaluate the deceptiveness of a t rade mark under Article 7(1)(g) CTMR, account must be t aken of the reality of the market (i.e. the way the goods and services are normally distributed/held out for sale/purchased/rendered, etc.) as well as of the consumption habits and perception of the relevant public, which is normally composed of reasonably well-informed, observant and circumspect persons.
For example, in the (invented) trade mark ‘ELDORADO CAFÈ LATINO’ covering coffee, chocolate, preparations for use as substitutes for chocolate; tea, cocoa; sugar, rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice in Class 30, the examination should lead to the following conclusions:
• An objection under Article 7(1)(g) CTMR would be j ustified in relation to preparations for use as substitutes for coffee, artificial coffee, chicory, chicory flavourings because use of the mark on these goods would be nec essarily deceptive. One would assume one was purchasing coffee and this would not in fact be the case.
• An objection under Article 7(1)(g) CTMR would also be j ustified in respect of chocolate, tea and cocoa (assuming that those products do not contain coffee). Given that such goods may be sold in packaging quite similar to those used for coffee, and are often bought rather hastily, it is likely that many consumers will not indulge in analysing the wording on t he packaging, but will choose these goods from the shelf in the (erroneous) belief that they are coffee.
• However, as far as coffee is concerned, there is no ‘clear contradiction’ between the claim for coffee and the wording ‘CAFÈ LATINO’, since the general category coffee may include also coffee originating from Latin America. Hence no Article 7(1)(g) CTMR objection arises for the category of coffee itself. The same logic applies in relation to goods which could be flavoured with coffee (such as chocolate, ices and pastry and confectionery) – an assumption of non-deceptive use should be made, and no contradiction between the said wording and the goods necessarily arises.
• Finally, for the remainder of the goods are concerned, i.e. honey, bread, vinegar etc., the presence of the wording ‘CAFÈ LATINO’ will not give rise to any expectations at all. In relation to such goods, this wording will be seen as clearly non-descriptive and hence there is no potential for actual deception. In the ‘real’ market, coffee is not displayed on the same shelves or shop sections as bread, honey or vinegar. Furthermore, the goods in question have a different appearance and taste and are normally distributed in different packaging.
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2.7.3 Trade marks with geographical connotations relating to the location of the applicant or the place of origin of the goods/services
When it comes to trade marks having certain ‘geographical’ connotations relating to the location of the applicant or the place of origin of the goods/services, the following should be noted.
As a general rule, the Office will not raise an objection on deceptiveness based upon the applicant’s geographical location (address). Indeed, such a geographical location bears, in principle, no relation to the geographical origin of the goods and services, i.e. the actual place of production/offering of the goods and services covered by the mark.
As an example, a figurative mark containing the words MADE IN USA for clothing in Class 25 filed by a c ompany having its seat in Sweden would not be open t o an objection under Article 7(1)(g) CTMR. In such cases, the Office assumes a non - deceptive use of the mark on the part of the proprietor.
Deceptiveness would nonetheless arise in the hypothetical event that a figurative mark containing the words MADE IN USA, filed by a company having its seat in the United States of America, were filed for a specifically limited list of goods: clothing articles made in Vietnam – although, in practice, such cases seem unlikely to arise.
In certain cases, the sign could evoke in the consumers’ minds some impressions/expectations as to the geographical origin of the goods or of the designer thereof and which may not correspond to reality. For example, trade marks such as ALESSANDRO PERETTI or GIUSEPPE LANARO (invented examples) covering clothing or fashion goods in general may suggest to the relevant public that these goods are designed and produced by an Italian stylist, which may not be the case.
However, such a c ircumstance is not sufficient per se to render those marks misleading. Indeed, ‘false impressions/expectations’ caused by the trade mark are not tantamount to actual deceptiveness when the sign is merely evocative. In such cases there is no clear contrast between the impression/expectation a s ign may evoke and the characteristics/qualities of the goods and services it covers.
2.7.4 Trade marks making reference to an ‘official’ approval, status or recognition
It should be noted that, under the Office practice, trade marks which could evoke official approval, status or recognition without giving the firm impression that the goods/services issue from, or are endorsed by, a public body or statutory organisation, are acceptable.
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The following are two examples where the marks concerned, although allusive or suggestive, were not found to be deceptive:
Mark and services Reasoning Case
THE ECOMMERCE AUTHORITY
for business services, namely, providing rankings of and other information regarding electronic commerce vendors, goods and services via the Internet in Class 35 and providing research and advisory services and information in the area of electronic commerce in Class 42.
The Board found that the trade mark was not deceptive, as it did not convey the firm impression that the services issue from a governmental or statutory organisation (the Board, however, confirmed the refusal under Article 7(1)(b) on the grounds that the mark lacked distinctive character, as it would be perceived by the English- speaking public merely as a s imple statement of self-promotion which claims something about the level of competence of the service providers).
R 803/2000-1
for, among other things, teaching of ski in Class 41.
The Board held that the French consumers would understand that the trade mark alludes to the fact that the services are supplied in France, by a French teaching centre, and relate to learning skiing ‘in the French way’. It added that the French public had no reason to believe, simply because of the presence of a tricolour logo (not being a r eproduction of the French flag), that the services are supplied by public authorities or even authorised by such authorities.
R 235/2009-1
confirmed by the General Court in T-41/10
2.7.5 Relation with other CTMR provisions
The above explanations aim to define the scope of application of Article 7(1)(g) CTMR. Although addressed in their respective sections of the Guidelines, in the context of absolute grounds examination and of possible deceptiveness scenarios, the following provisions may be of particular relevance.
Article 7(1)(b) and (c) CTMR
Under the current practice of the Office, if, following a descriptiveness and/or lack of distinctiveness objection, the CTM applicant proposes a l imitation in an attempt to overcome it, and provided the proposed limitation meets the prescribed requirements (unconditional request and suitably worded), the original list of goods and/or services will be limited accordingly. However, if the limitation in question (albeit overcoming the initial objection) has the effect of rendering the trade mark applied for deceptive, then the examiner will have to raise a deceptiveness objection under Article 7(1)(g) CTMR. The following example illustrates such a scenario:
The trade mark ‘ARCADIA’ was originally applied in respect of wines, spirits (beverages) and liqueurs in Class 33. The examiner objected because the trade mark was descriptive of the geographical origin of wines, to the extent that Arcadia is a Greek region known for its wine production (however, it should be noted that Arcadia is not a protected geographical indication). The applicant offered to limit the specification of goods to exclude wines made in Greece or, if preferred, to include only wines
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produced in Italy. The examiner held that the proposed limitation would render the trade mark deceptive since it would convey false information as to the origin of the goods. On appeal, the Board confirmed the reasoning of the examiner (see decision of 27/03/2000, R 246/1999-1 – ‘ARCADIA’, para. 14).
Article 7(1)(h) CTMR
This provision excludes from registration those CTMs which consist of/contain flags and other symbols of States, on the one hand, and flags and other symbols of international intergovernmental organisations on the other, which are protected according to Article 6ter of the Paris Convention and the inclusion of which in the trade mark has not been expressly authorised by the competent authorities. When it comes to the flags and other symbols of international intergovernmental organisations, the problem arises when the public might erroneously believe that, in view of the goods/services concerned, there is a connection between the CTM applicant and the international organisation whose flag or symbol appears in the CTM.
Articles 7(1)(j) and (k) CTMR (protected geographical indications)
These provisions exclude trade marks for wines or spirits, on the one hand, and other agricultural foodstuffs on the other, which contain or consist of protected geographical indications (PGIs) or protected geographical denominations (PDOs) where the list of the respective goods does not specify that they have the purported geographical origin. Under the directly applicable rules of the corresponding specific EU Regulations underlying those provisions, the Office must object to CTM applications where the protected geographic indication is misused or which convey any other false or misleading indication as to the provenance, origin, nature or essential qualities of the products concerned.
Article 17(4) CTMR (transfer)
Under this provision, where it is clear from the transfer documents that, because of the transfer, the CTM is likely to mislead the public concerning the nature, quality or geographical origin of the goods or services in respect of which it is registered, the Office will not register the transfer unless the successor agrees to limit (the) registration of the CTM to goods or services in respect of which it is not likely to mislead (see also Part E. Section 3. Chapter 1. Point 3.6).
Article 51(1)(c) CTMR (grounds for revocation)
Whereas in examining a trade mark under Article 7(1)(g) CTMR an examiner must confine the assessment to the meaning conveyed by the sign vis-à-vis the goods/services concerned (meaning that the way the sign is actually used is of no relevance), under Article 51(1)(c) CTMR the way the sign is used is decisive, given that according to this provision a r egistered CTM may be dec lared revoked if, in consequence of the use made of the sign by its proprietor or with their consent, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods/services concerned.
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2.8 Protection of flags and other symbols – Articles 7(1)(h) and (i) CTMR
The objective of Article 6ter Paris Convention (PC) is to exclude the registration and use of trade marks that are identical or in some way similar to state emblems or the emblems, abbreviations and names of international intergovernmental organisations.
‘The reasons for this are that such registration or use would violate the right of the State to control the use of symbols of its sovereignty and furthermore might mislead the public with respect to the origin of goods to which such marks would be appl ied.’ (G.H.C. Bodenhausen, Guide to the application of the Paris Convention for the Protection of Industrial Property as revised in Stockholm in 1967, page 96.). Origin in this regard must be understood as coming from or endorsed by the relevant administration, not as being produced in the territory of that state or, in the case of the EU, in the EU.
Article 7(1)(h) therefore refers to the following symbols:
• Armorial bearings, flags, other emblems, official signs and hallmarks that belong to states and have been communicated to WIPO, although, in the case of flags, such communication is not mandatory.
• Armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations that have been communicated to WIPO, with the exception of those already the subject of international agreements for ensuring their protection (see, for example, the Geneva Convention for the Amelioration of the Condition of the Wounded and Sick in Armed Forces of 12/08/1949, Article 44 of which protects the emblems of the Red Cross on a white ground, the words ‘Red Cross’ or ‘Geneva Cross’, and analogous emblems).
The Court of Justice has made clear that these provisions can be applied regardless of whether the application concerns goods or services, and that the scopes of application of Article 7(1)(h) and 7 (1)(i) CTMR are analogous. Both articles should therefore be assumed to grant at least an equivalent level of protection, since they pursue the same objective, that is, to prohibit the use of specific emblems of public interest without the consent of the competent authorities (see judgment of 16/07/2009 in Joined Cases C-202/08 P and C-208/08 P, ‘RW feuille d’érable’, paras 78, 79 and 80).
2.8.1. Protection of armorial bearings, flags, other state emblems, official signs and hallmarks indicating control and warranty under Article 7(1)(h) CTMR – Article 6ter(1)(a) and (2) PC
In accordance with Article 6ter(1)(a) PC, the registration, either as a trade mark or as an element thereof, of armorial bearings, flags, and ot her state emblems of the countries of the Union (i.e. the countries to which the PC applies), or of official signs and hallmarks adopted by states as an indication of control and warranty, as well as any imitation from a heraldic point of view will be refused if no authorisation has been granted by the competent authority.
The members of the World Trade Organization (WTO) enjoy the same protection pursuant to Article 2(1) TRIPs, according to which members of the WTO must comply with Articles 1 to 12 and 19 of the Paris Convention.
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Therefore, to fall foul of Article 7(1)(h) CTMR, a trade mark:
• must consist solely of an identical reproduction or a ‘ heraldic imitation’ of the abovementioned symbols;
• must contain an identical reproduction or a ‘heraldic imitation’ of the abovementioned symbols.
Furthermore, the competent authority must not have given its authorisation.
Armorial bearings consist of a des ign or image depicted on a s hield. See the following example.
Bulgarian armorial bearing – 6ter database No BG2
State flags usually consist of a distinctive rectangular design that is used as the symbol of a nation. See the following example.
Croatian flag
The expression ‘other State emblems’ is rather vague. It usually indicates any emblems constituting the symbol of the sovereignty of a State, including the escutcheons of reigning houses as well as emblems of States included in a federative state that is party to the Paris Convention. See the following example.
Danish state emblem – 6ter database No DK3
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The purpose of official signs and hallmarks indicating control and warranty is to certify that a state or an organisation duly appointed by a state for that purpose has checked that certain goods meet specific standards or are of a given level of quality. There are official signs and hallmarks indicating control and warranty in several states for precious metals or products such as butter, cheese, meat, electrical equipment, etc. Official signs and hallmarks may also apply to services, for instance those relating to education, tourism, etc. See the following examples.
Spanish official sign for export promotion No ES1
UK hallmark for platinum articles No GB 40
It must be not ed that Article 6ter PC does not protect the abovementioned symbols against all imitations, only ‘heraldic imitations’. The notion of ‘heraldic imitation’ must be construed in the sense that ‘… the prohibition of the imitation of an emblem applies only to imitations of it from a heraldic perspective, that is to say, those which contain heraldic connotations which distinguish the emblem from other signs. Thus, the protection against any imitation from a heraldic point of view refers not to the image as such, but to its heraldic expression. It is therefore necessary, in order to determine whether the trade mark contains an imitation from a heraldic point of view, to consider the heraldic description of the emblem at issue’ (see CJEU judgment of 16/07/2009 in Joined Cases C-202/08 P and C-208/08 P, para. 48).
Consequently, when making a comparison ‘from a heraldic point of view’ within the meaning of Article 6ter PC, account must be t aken of the heraldic description of the emblem concerned and not any geometric description of the same emblem, which is by nature much more detailed. Indeed, if the geometric description of the emblem were taken into account, this ‘… would lead to the emblem being refused protection under Article 6ter(1)(a) of the Paris Convention in the event of any slight discrepancy between the two descriptions. Secondly, the case of graphic conformity with the emblem used by the trade mark is already covered by the first part of that provision, so that the expression “any imitation from a heraldic point of view” must be different in its scope’ (see ibidem, para. 49).
For example, an examiner should take into account the heraldic description of the
European emblem – ‘on an azure field a circle of twelve golden mullets, their points not touching’ – and not its geometrical description: ‘the emblem is in the form of a blue rectangular flag of which the fly is one and a hal f times the length of the hoist. Twelve gold stars situated at equal intervals form an invisible circle whose centre
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is the point of intersection of the diagonals of the rectangle. The radius of the circle is equal to one third of the height of the hoist. Each of the stars has five points which are situated on the circumference of an invisible circle whose radius is equal to one eighteenth of the height of the hoist. All the stars are upright — that is to say, with the one point vertical and two points in a straight line at right angles to the mast. The circle is arranged so that the stars appear in the position of the hours on the face of a clock. Their number is invariable.’
Furthermore, armorial bearings and other heraldic emblems are drawn on the basis of a relatively simple description of the layout and background colour that also lists the different elements (such as a lion, an eagle, a flower, etc.) constituting the emblem and gives information on their colour and position within the emblem. However, a heraldic description does not give details of the design of the emblem and the specific elements that constitute it, with the result that a number of artistic interpretations of one and the same emblem on the basis of the same heraldic description are possible. Although there may be di fferences in detail between each of those interpretations, the fact remains that they will all be i mitations ‘from a h eraldic point of view’ of the emblem concerned (T-215/06, 28/02/2008, paras 71 and 72).
It follows that a trade mark that does not exactly reproduce a state emblem can nevertheless be covered by Article 6ter(1)(a) PC where it is perceived by the relevant public as imitating such an emblem. So far as the expression ‘imitation from a heraldic point of view’ in that provision is concerned, a difference detected by a s pecialist in heraldic art between the trade mark applied for and the State emblem will not necessarily be perceived by the average consumer who, in spite of differences at the level of certain heraldic details, can see in the trade mark an imitation of the emblem in question (see CJEU judgment of 16/07/2009 in Joined Cases C-202/08 P and C-208/08 P, paras 50 and 51).
Furthermore, for Article 6ter(1)(a) PC to apply, it is not necessary to examine the overall impression produced by the mark by taking into account also its other elements (words, devices, etc.).
Indeed, Article 6ter(1)(a) PC applies not only to trade marks but also to elements of marks that include or imitate state emblems. It is sufficient, therefore, for a single element of the trade mark applied for to represent such an emblem or an i mitation thereof for that mark to be refused registration as a Community trade mark (see also judgment of 21/04/2004, T-127/02, ‘ECA’, paras 40 to 41).
2.8.1.1 Examination of marks consisting of or containing a state flag
There are three steps to examining marks that consist of or contain a state flag:
1 Find an official reproduction of the protected flag. 2 Compare the flag with the mark applied for. Does the mark applied for consist
solely of or contain an identical reproduction of the flag (b)? Or does the mark consist solely of or contain a heraldic imitation of that flag (b)?
3 Check whether there is any evidence on f ile to show that registration of the flag has been authorised by the competent authority.
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1 Find the protected flag
As seen above, states are not obliged to include flags in the list of emblems to be communicated to WIPO. This is because flags are supposed to be well known.
Nevertheless, some flags have been included in the list, which is accessible via the ‘Article 6ter Structured Search’ tool made available by WIPO. Otherwise, examiners should refer to the official websites of the relevant governments, and to encyclopaedias and/or dictionaries for an accurate reproduction of the state flag.
2 Compare the flag with the mark applied for
(a) Does the mark applied for consist solely of or contain an identical reproduction of a flag? If so, proceed to the next step.
(b) Does the mark consist solely of or contain a heraldic imitation of a flag?
In the case of flags, the mark must be compared with the heraldic description of the flag at issue. For example, in Case T-41/10 of 05/05/2011 (ESF Ecole du ski français), the French flag was described as a rectangular or square flag made up of three equal vertical bands of the colours blue, white and red.
The examiner will use the heraldic description, which gives details of the layout and background colour, lists the different elements (such as a lion, an eagle, a flower, etc.) that constitute the flag and specifies the colour, position and proportions of the latter to reach a conclusion on heraldic imitation.
As a rule, the flag and the mark (or the part of the mark in which the flag is reproduced) must be quite similar in order for a heraldic imitation to be found.
See the following example where a ‘heraldic imitation’ of a flag was found:
Flag Refused CTMA
Swiss flag CTMA 8 426 876
The use of a flag in black and white may still be considered a heraldic imitation when the flag consists of or contains unique heraldic features. For example, the black-and- white representation of the Canadian flag in the following example is considered to be a heraldic imitation.
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Flag Refused CTMA
Canadian flag CTMA 2 793 495
On the other hand, for flags consisting only of stripes of three colours (whether vertical or horizontal) a black-and-white reproduction will not be considered a heraldic imitation because flags of that kind are quite common.
As seen above, the presence of other elements in the marks is irrelevant.
If an element is a different shape from a flag (e.g. circular), it is not considered to be a heraldic imitation. Other different shapes that are not heraldic imitations are shown in the following examples:
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Flag Accepted CTMA
CTMA 5 851 721
Italian flag CTMA 5 514 062
Swiss flag CTMA 6 015 473
Finnish flag CTMA 7 087 281
Flag Accepted CTMA
Swedish flag CTMA 8 600 132
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Danish flag CTMA 8 600 173
French flag CTM 4 624 987, T-41/10
The distinction between the cases examined in CTMA No 8 426 876 (objected to) and CTMA No 6 015 473 (not objected to) should be noted. In the latter, it was decided not to object because of the number of changes: a change in the shape (from a square to a circle), a change in proportions (the white lines of the cross in CTMA No 6 015 473 are longer and thinner than in the flag) and a change of colour, since the cross in CTMA No 6 015 473 has a shadow.
3 Check whether registration has been authorised
Once the examiner has found that the mark consists of or contains a flag or a heraldic imitation thereof, he/she must check whether there is any evidence on file to show that the registration has been authorised by the competent authority.
Where there is no s uch evidence, the examiner will object to the registration of the mark applied for. The objection will reproduce the official flag in colour and indicate the source of the reproduction.
Such an obj ection can only be waived if the applicant produces evidence that the competent authority of the state concerned has authorised registration of the mark.
Extent of the refusal: In the case of state flags, trade marks that fall foul of Article 7(1)(h) CTMR must be refused for all goods and services applied for.
2.8.1.2. Examination of marks consisting of or containing armorial bearings and other state emblems
The same steps mentioned in relation to State flags are followed also when examining marks that consist of or contain armorial bearings or other state emblems.
Nevertheless, to be p rotected, armorial bearings and ot her state symbols must be contained in ‘the list of armorial bearings and state emblems’. This list is accessible via
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the ‘Article 6ter Structured Search’ tool made available by WIPO at https://www.wipo.int/ipdl/en/6ter/.
The WIPO Article 6ter database gives details of written elements and c ontains references to the categories of the Vienna classification code. Therefore, the best way to search is by using that code.
In these cases, the protected symbol, which very often consists of or contains recurring devices such as crowns, unicorns, eagles, lions, etc., and the mark (or the part of the mark in which the symbol is reproduced) must be closely similar.
For background on t his and her aldic descriptions, please see the explanation in paragraph 2.8.1.1 ‘Examination of marks consisting of or containing a state flag’ above.
Here are two examples where a ‘heraldic imitation’ of a state symbol was found:
Protected emblem Refused CTMA
British emblem: 6ter Number: GB4 CTMA 5 627 245, T-397/09
.
Canadian emblem: 6ter Number: CA2 CTMA 2 785 368 (CJEU C-202/08)
The General Court noted that the supporters contained in CTMA No 5 627 245 were almost identical to those in the emblem protected under sign GB4. The only difference lay in the crowns in both signs. However, the GC ruled that any difference between the mark and the state emblem detected by an expert in heraldry would not necessarily be perceived by the average consumer who, despite some differences in heraldic details, can see in the mark an imitation of the emblem. Therefore, the GC concluded that the Board was right to find that the mark applied for contained an imitation from a heraldic perspective of emblem GB4, protected under Article 6ter of the Paris Convention (Case T-397/09, paras 24-25).
On the other hand, it was considered that the following mark (CTM No 6 832 571)
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did not contain a heraldic imitation of the abovementioned British emblem. Indeed, as seen above, lions and unicorns are commonly used in this kind of symbol.
It should also be noted that black-and-white reproductions of armorial bearings and other state emblems may still be considered heraldic imitations when the protected symbol consists of or contains unique heraldic features (see the example of the Canadian emblem).
Furthermore, the presence of other elements in the rejected marks is irrelevant.
There is even a heraldic imitation when the protected symbol is only partially reproduced as long as what is partially reproduced represents the significant element(s) of the protected symbol and (a) unique heraldic feature(s).
The following is an example of a partial heraldic imitation because the significant element of the protected symbol, the eagle with the arrows over the emblem, is a unique heraldic device and its heraldic characteristics are imitated in the CTMA:
Protected emblem Refused CTMAt
Emblem of the Justice Department of the USA; 6ter Number: US40 CTMA 4 820 213
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In the following example there is no heraldic imitation of a state emblem:
Protected emblem Accepted CTMA
6ter number: AT10 CTMA 8 298 077
CTMA No 8 298 077 is not a heraldic imitation of the Austrian symbol because its shape is different and the lines inside the white cross in the Austrian symbol are not present in the CTMA.
Once the examiner has found that a mark reproduces a s ymbol (or is a her aldic imitation thereof), they must check whether there is any evidence on file to show that registration has been authorised by the competent authority.
Where there is no s uch evidence, the examiner will object to the registration of the mark applied for. The objection will reproduce the protected symbol, quoting its 6ter number.
Such an obj ection can only be waived if the applicant produces evidence that the competent authority of the state concerned has authorised registration of the mark.
Extent of the refusal: In the case of state symbols, trade marks that fall foul of Article 7(1)(h) CTMR must be refused for all goods and services applied for.
2.8.1.3 Examination of marks consisting of or containing official signs and hallmarks indicating control and warranty
The steps to be followed by the examiner are the same as for the state flags, protected armorial bearings and other state emblems mentioned above.
However, the extent of the refusal is limited. Trade marks that consist of or contain an identical reproduction / heraldic imitation of official signs and hal lmarks indicating control and warranty will be refused only for goods that are identical or similar to those to which said symbols apply (Article 6ter(2) PC).
2.8.2. Protection of armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations under Article 7(1)(h) CTMR – Article 6ter(1)(b) and (c) PC
In accordance with Article 6ter(1)(b) and (c) PC, the registration, either as a trade mark or as an element thereof, of armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations (of which one or more countries
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of the Paris Union is / are member(s)) or any imitation from a heraldic point of view will be refused if no authorisation has been granted by the competent authority.
The members of the WTO enjoy the same protection pursuant to Article 2(1) TRIPs, according to which members of the WTO must comply with Articles 1 to 12 and 19 of the Paris Convention.
Furthermore, the trade mark should be of such a nature as to suggest to the public that there is a connection between the organisation concerned and the armorial bearings, flags, emblems, abbreviations or names, or to mislead the public as to the existence of a connection between the owner and the organisation.
International intergovernmental organisations (IGOs) include bodies such as the United Nations, the Universal Postal Union, the World Tourism Organization, WIPO, etc.
In this respect, the European Union must be considered neither as an international organisation in the usual sense nor as an as sociation of states, but rather as a ‘supranational organisation’, i.e. an autonomous entity with its own sovereign rights and a legal order independent of the Member States, to which both the Member States themselves and their nationals are subject within the EU’s areas of competence.
On the one hand, the Treaties have led to the creation of an i ndependent Union to which the Member States have ceded some of their sovereign powers. The tasks allotted to the EU are very different from those of other international organisations. While the latter mainly have clearly defined tasks of a t echnical nature, the EU has areas of responsibility that together constitute essential attributes of statehood.
On the other hand, the EU institutions too only have powers in certain areas to pursue the objectives specified in the Treaties. They are not free to choose their objectives in the same way as a sovereign state. Moreover, the EU has neither the comprehensive jurisdiction enjoyed by sovereign states nor the powers to establish new areas of responsibility (‘jurisdiction over jurisdiction’).
Notwithstanding the particular legal nature of the EU, and for the sole purpose of the application of Article 7(1)(h), the European Union is likened to an international organisation. In practice, account will be taken of the fact that the EU’s field of activity is so broad (see judgment of 15/01/2013, Case T-413/11 ‘EUROPEAN DRIVESHFT SERVICES’, para. 69) that the examiner is very likely to find a link between the goods and services in question and the EU’s activities.
The most relevant EU flags and s ymbols, protected by the Council of Europe, are shown here:
6ter number: QO188 6ter number: QO189
The following have been protected for the Commission:
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6ter number: QO245 6ter number: QO246 6ter number: QO247
The following have been protected for the European Central Bank:
6ter number: QO852 6ter number: QO867
There are four steps to examining marks that contain the armorial bearing, flag or other symbols of an international intergovernmental organisation.
1 Find an official reproduction of the protected symbol (which may be an abbreviation or name).
2 Compare the symbol with the mark applied for.
3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and the international organisation or misleads the public as to the existence of such a connection.
4 Check whether there is any evidence on file to show that registration has been authorised by the competent authority.
1 Find the protected symbol (or abbreviation or name)
To be protected, the symbols of international intergovernmental organisations must be incorporated in the relevant list. Unlike the situation with state flags, this requirement also applies to international organisations’ flags.
The relevant database is accessible via the ‘Article 6ter Structured Search’ tool provided by WIPO. In this case too, the best way to search is by using the Vienna classification code.
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2 Compare the symbol with the mark applied for
Does the mark applied for consist solely of or contain an identical reproduction of the protected symbol of an international intergovernmental organisation Or does the mark applied for consist of or contain a heraldic imitation thereof?
(a) Does the mark applied for consist solely of or contain an identical reproduction of the protected symbol? If so, proceed to the next step.
(b) Does the mark applied for consist solely of or contain a heraldic imitation thereof?
The test is the same as that for state flags and symbols, that is, the protected symbol and the mark (or the part of the mark in which the protected symbol is reproduced) must be closely similar. The same applies to abbreviations and names of international intergovernmental organisations (see the Board’s decision in Case R 1414/2007-1 – ‘ESA’).
The following marks were rejected because they were considered to contain ‘heraldic imitations’ of the European Union flag protected under QO188:
CTMA 2 305 399 CTMA 448 266 CTMA 6 449 524
CTMA 7 117 658 CTMA 1 106 442 (T-127/02) CTM 4 081 014 (1640 C)
CTMA 2 180 800 (T-413/11)
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For heraldic imitations of the European Union flag (QO188 above), it is considered relevant that (a) there are 12 five-pointed stars, (b) the stars are in a circle and are not touching each other, and (c) the stars contrast with a darker background.
In particular, it must be taken into account that the ‘device in the form of twelve stars arranged in a circle is the most important element of the European Union emblem (‘the emblem’) because it conveys strong messages: (a) the circle of gold stars symbolises solidarity and har mony between the peoples of Europe and ( b) the number twelve evokes perfection, completeness and uni ty. The other element of the emblem is a background suitably coloured to highlight the device’ (see BoA decision in case R 1401/2011-1, para. 21).
It follows from the above that the representation of the EU flag in black and white may still be considered a heraldic imitation when the stars contrast with a dark background in such a way as to give the impression of being a black-and-white reproduction of the EU flag (see CTMA 1 106 442 above).
In contrast, the following example illustrates a c ase where the black-and-white reproduction of a circle of stars does not give the impression of being a black-and-white reproduction of the EU flag:
The following three cases are not considered to be heraldic imitations of the European Union flag because they do not reproduce twelve stars in a circle (i.e. all three marks were accepted):
CTMA 7 142 731 CTMA 5 639 984 CTMA 6 156 624
The following is not a heraldic imitation because, although the stars are yellow, there is no blue (or dark-coloured) background:
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3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and the international organisation or misleads the public as to the existence of such a connection.
A connection is suggested not only where the public would believe that the goods or services originate with the organisation in question, but also where the public could believe that the goods or services have the approval or warranty of, or are otherwise linked to, that organisation (see GC judgment of 15/01/2013, Case T-413/11, ‘EUROPEAN DRIVESHAFT SERVICES’, para. 61).
In order to assess the circumstances properly, the examiner must take into account the following:
- the goods and/or services covered by the CTM application;
- the relevant public;
- the overall impression conveyed by the mark.
With regard to the European Union flag, the examiner must evaluate whether there is any overlap between the claimed goods and / or services and the European Union’s activities, bearing in mind that the European Union is active in numerous sectors and regulates goods and services in all fields of industry and commerce, as is clear from the wide variety of Directives that it has adopted. Likewise, the examiner must take into account that even average consumers could be aware of such activities, which means, in practice, that the examiner is very likely to find a link in most cases.
Finally, in contrast to Article 6ter(1)(a) PC, for which it is sufficient for the sign to consist of or contain the emblem or a heraldic imitation thereof, Article 6ter(1)(c) PC requires an overall assessment.
It follows that, unlike for state emblems and flags, the examiner must take into account also the other elements of which the mark is composed. For it cannot be ruled out that all the other elements of the sign could lead to the conclusion that the public would not connect the sign with an international intergovernmental organisation (see judgment of 15/01/2013, Case T-413/11 ‘EUROPEAN DRIVESHAFT SERVICES’, para. 59).
Still with regard to the EU flag, it must be noted that, as a rule, word elements such as ‘EURO’/‘EUROPEAN’ in a CTMA are likely to suggest a connection even more, since they could be perceived as implying an official EU agency’s approval, quality control or warranty services in respect of the claimed goods and services.
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Here are two examples of where a connection with the EU was found:
G&S Class 16: Periodical and other publications Class 42: Preparation of reports or studies relating to cars, motorcycles and bicycles
Reasoning
The mark was refused for all the goods and services for the following reasons: (26) Consumers in this market are aware of how important it is for companies that provide surveys and reports on expensive and potentially dangerous goods like vehicles to be credible. Consumers may also be aware that the European Union itself is involved in such activities through its association with Euro E.N.C.A.P., which provides motoring consumers with independent assessments of the safety and performance of cars sold on the European market. Given these facts, and the fact that the proprietor’s mark contains a r ecognisable heraldic element of the European emblem, it is likely that the public would assume that the inclusion of the twelve gold stars of the EU emblem in the CTM pointed to a c onnection between the proprietor and the EU.
G&S Class 9: Computer hardware, computer software, recorded data carriers. Class 41: Arranging and conducting of colloquiums, seminars, symposiums, congresses and conferences; providing of tuition, instruction, training; consultancy on training and further training. Class 42: Creating, updating and maintenance of computer programs; computer program design; consultancy in the field of computers; rental of computer hardware and computer software; leasing access time to a computer database.
Reasoning
The mark was refused for all the goods and services for the following reasons: The Board of Appeal found that, contrary to what the applicant claimed, there was some overlap between the goods and services offered by the applicant and the activities of the Council of Europe and the European Union. The Board of Appeal referred, inter alia, to the Official Journal of the European Union, which is available on CD-ROM (i.e. on a record data carrier), to seminars, training programmes and conferences offered by the Council of Europe and the European Union in a variety of areas, and to a large number of databases made available to the public by those institutions, in particular EUR-Lex. Given the wide variety of services and goods that may be offered by the Council of Europe and the European Union, it cannot be ruled out, for the kind of goods and services for which registration was sought, that the relevant public might believe that there is a c onnection between the applicant and those institutions. Accordingly, the Board of Appeal was right to find that registration of the mark sought was likely to give the public the impression that there was a connection between the mark sought and the institutions in question.
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4 Check whether registration has been authorised
Where there is no evidence that registration of the mark applied for has been authorised, the examiner will object to its registration. The objection must reproduce the protected symbol, quoting its 6ter number.
The examiner must also indicate the refused goods and s ervices clearly and g ive reasons why the mark suggests to the public a c onnection with the organisation concerned.
Such an obj ection can only be waived if the applicant provides evidence that the competent authority has authorised registration of the mark.
Extent of the refusal: In the case of flags and symbols of international intergovernmental organisations, the refusal must specify the goods and / or services affected, that is, those in respect of which the public would, according to the examiner, see a connection between the mark and an organisation.
2.8.3. Protection of badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention under Article 7(1)(i) CTMR
In accordance with Article 7(1)(i) CTMR, trade marks will not be r egistered if they include badges, emblems or escutcheons other than those that are covered by Article 6ter of the Paris Convention and are of particular public interest, unless the competent authority has consented to their registration.
As seen above, Article 7(1)(i) CTMR refers to all other badges, emblems or escutcheons that have not been communicated in accordance with Article 6ter(3)(a) PC regardless of whether they are the emblems of a state or international intergovernmental organisation within the meaning of Article 6ter(1)(a) or (b) PC or of public bodies or administrations other than those covered by Article 6ter PC, such as provinces or municipalities.
Furthermore, according to the case-law, Article 7(1)(i) and Article 7(1)(h) CTMR both have a similar scope of application and grant at least equivalent levels of protection.
This means that Article 7(1)(i) CTMR applies not only where the abovementioned symbols are reproduced identically as a trade mark or a part thereof, but also where the mark consists of or contains a her aldic imitation of those symbols. Any other interpretation of this provision would result in less protection being provided by Article 7(1)(i) CTMR than by Article 7(1)(h) CTMR. Following the same line of reasoning, Article 7(1)(i) CTMR applies where the mark is liable to mislead the public as to the existence of a connection between the owner of the trade mark and the body to which the abovementioned symbols refer. In other words, the protection afforded by Article 7(1)(i) CTMR is conditional on a link between the mark and the symbol. Otherwise, trade marks to which Article 7(1)(i) CTMR applies, would obtain broader protection than under Article 7(1)(h) CTMR (see judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’).
Article 7(1)(i) does not define symbols of ‘particular public interest’. However, it is reasonable to assume that the nature of these could vary and could include, for example, religious symbols, political symbols or symbols of public bodies or
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administrations other than those covered by Article 6ter PC, such as provinces or municipalities. In any case, the ‘particular public interest’ involved must be reflected in a public document, for example a national or international legal instrument, regulation or other normative act.
The General Court stated that a ‘particular public interest’ existed when the emblem had a particular link with one of the activities carried out by an international intergovernmental organisation (see judgment of 10/07/2013, Case T-3/12, ‘MEMBER OF EURO EXPERTS’, para. 44). In particular, the Court specified that Article 7(1)(i) CTMR applied also when the emblem merely evoked one of the fields of activity of the European Union, and even if that activity concerned only some of the EU states (see ibid., paras 45 and 46).
This confirms that the protection afforded by Article 7(1)(i) CTMR applies also to symbols that are of particular public interest in only a single Member State or part thereof (Article 7(2) CTMR).
There are four steps to examining marks that contain badges, emblems and escutcheons of particular public interest.
1 Find the symbol of particular public interest.
2 Compare the symbol with the mark applied for.
3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and t he authority to which the symbol refers or misleads the public as to the existence of such a connection.
4 Check whether there is any evidence on file to show that registration has been authorised by the appropriate authority.
1 Find the symbol of particular public interest
At present, there is no l ist or database allowing examiners to identify which symbols are of particular public interest, especially in a Member State or part thereof. Therefore, third party observations are likely to remain the source of many objections to such symbols.
One example of a s ymbol of particular public interest is the Red Cross, which is protected by the Convention for the Amelioration of the Condition of the Wounded and Sick in Armed Forces in the Field, signed in Geneva (http://www.icrc.org/ and http://www.icrc.org/Web/Eng/siteeng0.nsf/htmlall/genevaconventions).
The following symbols are protected under the Geneva Convention:
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Apart from the symbols, their names are also protected (from left to right) as follows: ‘Red Cross’, ‘Red Crescent’ and ‘Red Crystal’.
Another example of a symbol of particular public interest is the Olympic symbol as defined in the Nairobi Treaty on the Protection of the Olympic Symbol. According to the definition in the Nairobi Treaty, ‘the Olympic symbol consists of five interlaced rings: blue, yellow, black, green and red, arranged in that order from left to right. It consists of the Olympic rings alone, whether delineated in a single color or in different colors.’
The following symbol was considered not to be a symbol of particular public interest:
The recycling symbol (on the left) was not considered to be protected under this provision because it is a commercial symbol.
2 Compare the symbol with the mark applied for
Does the mark applied for consist solely of or contain an identical reproduction of the symbol of particular public interest? Or does the mark applied for consist of or contain a heraldic imitation thereof?
(a) Does the mark applied for consist solely of or contain an identical reproduction of the symbol? If so, proceed to the next step.
(b) Does the mark applied for consist solely of or contain a heraldic imitation of the symbol?
The test is the same as the one for flags and symbols of international intergovernmental organisations, that is, the symbol and t he mark (or the part of the mark in which the symbol is reproduced) must be quite similar.
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The following are examples of marks that were rejected because they contained the Red Cross symbol or a heraldic imitation thereof.
Refused CTMAs
WO 964 979 CTMA 2 966 265 CTMA 5 988 985
On the other hand, a number of well-known red crosses have traditionally been used and are still in use, the incorporation of which in a m ark would not be considered a reproduction of the ‘Red Cross’. Examples of these famous crosses include the following:
Templar cross St George’s cross Maltese cross
The following CTM was accepted because it contained two reproductions of the Templar cross.
A mark which contains a c ross in black and white (or shades of grey) is not objectionable. Nor is a cross in a c olour other than red objectionable under Article 7(1)(i) CTMR.
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Accepted CTMAs
CTMA 8 986 069 CTMA 9 019 647 CTMA 9 025 768
3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and t he authority to which the symbol refers or misleads the public as to the existence of such a connection.
A connection is suggested not only where the public would believe that the goods or services originate with the authority in question, but also where the public could believe that the goods or services have the approval or warranty of, or are otherwise linked to, that authority (see GC judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’, para. 78).
In order to assess the circumstances properly, the examiner must, as above, take into account the following:
- the goods and/or services covered by the CTM application;
- the relevant public;
- the overall impression conveyed by the mark.
The examiner must evaluate whether there is any overlap between the claimed goods and / or services and the activities of the authority at issue and whether the relevant public could be aware of it.
In particular, with regard to the European Union, the examiner must take into account that the latter is active in numerous fields, as is clear from the wide variety of Directives that it has adopted.
Furthermore, the examiner must also take into account the other elements of which the mark is composed. For it cannot be r uled out that all the other elements of the sign could lead to the conclusion that the public would not connect the sign with the authority concerned (see GC judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’, para. 107).
Still with regard to the EU, it must be not ed that, as a r ule, word elements such as ‘EURO’/‘EUROPEAN’ in a CTMA are likely to suggest a connection even more, since they could be perceived as implying EU approval (see GC judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’, para. 113).
For example, the General Court (in Case T-3/12) confirmed that the following mark (CTMA No 6 110 423, covering Classes 9, 16, 35, 36, 39, 41, 42, 44 and 45)
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fell foul of Article 7(1)(i) CTMR since it contained a (heraldic) imitation of the ‘Euro’ symbol.
4 Check whether registration has been authorised
Is there any evidence on file that the appropriate authority has authorised registration?
Where there is no such evidence, the examiner will object to the registration of the mark applied for. The objection will reproduce the symbol and provide the applicant with all necessary details and, in particular, information on why the symbol is of ‘particular public interest’ (for example, if protected by an international instrument, a reference to that instrument; in the case of the Red Cross this is the Convention for the Amelioration of the Condition of the Wounded and S ick in Armed Forces in the Field, signed in Geneva (http://www.icrc.org/ and http://www.icrc.org/Web/Eng/siteeng0 .nsf/htmlall/genevaconventions)).
Such an objection can only be waived if the applicant submits evidence that the appropriate authority has consented to registration of the mark.
Extent of the refusal: In the case of symbols of particular public interest, the refusal must specify the goods and / or services affected, that is, those in respect of which the public would, according to the examiner, see a connection between the mark and the authority.
2.9 Article 7(1)(j) CTMR
2.9.1 Introduction
Article 7(1)(j) CTMR applies to CTMs that are in conflict with geographical indications for wines and spirits.
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More specifically, it provides for the refusal of CTMs for wines that contain or consist of a geographical indication identifying wines or for spirits that contain or consist of a geographical indication identifying spirits in respect of wines or spirits not of such origin.
Article 7(1)(j) CTMR does not explicitly refer to the specific EU regulations on t he protection of geographical indications for wines and spirits. In this respect, the Office follows a s ystematic approach and interprets Article 7(1)(j) CTMR in line with Article 7(1)(k) CTMR. That is to say, the Office applies Article 7(1)(j) CTMR in conjunction with the relevant provisions of the EU regulations on t he protection of geographical indications for wines and spirits, namely Council Regulation (EU) No 1308/20133 and Regulation (EC) No 110/2008 of the European Parliament and of the Council4 respectively.
According to Article 93 of Regulation (EU) No 1308/2013:
(a) ‘designation of origin’ means the name of a region, a s pecific place or, in exceptional cases, a c ountry used to describe a wine that complies with the following requirements:
(i) its quality and characteristics are essentially or exclusively due t o a particular geographical environment with its inherent natural and human factors;
(ii) the grapes from which it is produced come exclusively from this geographical area;
(iii) its production takes place in this geographical area; and (iv) it is obtained from vine varieties belonging to Vitis vinifera;
(b) ‘geographical indication’ means an i ndication referring to a r egion, a s pecific place or, in exceptional cases, a country, used to describe a wine that complies with the following requirements:
(i) it possesses a s pecific quality, reputation or other characteristics attributable to that geographical origin;
(ii) at least 85 % of the grapes used for its production come exclusively from this geographical area;
(iii) its production takes place in this geographical area; and (iv) it is obtained from vine varieties belonging to Vitis vinifera or a c ross
between the Vitis vinifera species and other species of the genus Vitis.
According to Article 15(1) of Regulation (EC) No 110/2008, a ‘geographical indication’ is an indication that identifies a spirit drink as originating in the territory of a country, or a region or locality in that territory, where a g iven quality, reputation or other characteristic of that spirit drink is essentially attributable to its geographical origin.
Protected designations of origin (PDOs) therefore have a closer link with the area. This distinction, however, does not affect scope of protection, which is the same for PDOs and PGIs (protected geographical indications). In other words, Article 7(1)(j) CTMR applies equally to all designations covered by Regulation (EU) No 1308/2013,
3 Council Regulation (EU) No 1308/2013 of 17 December 2013 establishing a common organisation of the markets in agricultural products.
4 Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89.
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regardless of whether they are registered as PDOs or as PGIs. Regulation No 110/2008, however, covers only PGIs, not PDOs.
Protection is granted to PDOs/PGIs in order, inter alia, to protect the legitimate interests of consumers and producers.
In this respect, it must also be underlined that the concepts of PDO and PGI differ from a ‘simple indication of geographical provenance’. For the latter, there is no direct link between a s pecific quality, reputation or other characteristic of the product and i ts specific geographical origin, with the result that it does not come within the scope of Article 93 of Regulation (EU) No 1308/2013 or Article 15(1) of Regulation (EC) No 110/2008 (see, by analogy, judgment of 07/11/2000, C-312/98, ‘Warsteiner Brauerei’, paras 43 and 44). For example, ‘Rioja’ is a PDO for wines since it designates a wine with particular characteristics that comply with the definition of a PDO. However, wine produced in ‘Tabarca’ (a ‘simple geographical indication’ designating a s mall island close to Alicante) cannot qualify for a PDO/PGI unless it meets specific requirements.
According to Article 102(1) of Regulation (EU) No 1308/2013, the registration of a trade mark that contains or consists of a pr otected designation of origin or a geographical indication which does not comply with the product specification concerned or the use of which falls under Article 103(2), and that relates to a product falling under one of the categories listed in Part II of Annex VII shall be refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the designation of origin or geographical indication to the Commission and the designation of origin or geographical indication is subsequently protected.
Furthermore, according to Article 23(1) of Regulation (EC) No 110/2008, ‘the registration of a trade mark which contains or consists of a geographical indication registered in Annex III shall be refused or invalidated if its use would lead to any of the situations referred to in Article 16’.
Article 103(2) of Regulation (EU) No 1308/2013 and Article 16 of Regulation (EC) No 110/2008 set out the situations that infringe the rights deriving from a P DO/PGI: (i) direct or indirect commercial use of the PDO/PGI; (ii) misuse, imitation or evocation; (iii) other misleading practices.
Three cumulative conditions are necessary in order for Article 7(1)(j) CTMR to apply.
1. The PDO/PGI in question must be registered at EU level (see paragraph 2.9.2.1 below).
2. Use of the CTM that consists of or contains a PDO/PGI for wines or a PGI for spirits must constitute one of the situations provided for in Article 103(2) of Regulation (EU) No 1308/2013 or in Article 16 of Regulation (EC) No 110/2008 (see paragraph 2.9.2.2 below).
3. The CTM application must include goods that are identical or ‘comparable’ to the goods covered by the PDO/PGI (see paragraph 2.9.2.3 below).
For these three conditions, reference is made below to: (i) which PDOs/PGIs may give rise to an objection under Article 7(1)(j) CTMR; (ii) under what circumstances a CTM contains or consists of a PDO/PGI in such a way that it falls under Article 103(2) of Regulation (EU) No 1308/2013 or Article 16 of Regulation (EC) No 110/2008; (iii) the
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goods of the CTM application affected by the protection granted to the PDO/PGI. Finally, reference is also made below to how goods can be restricted in order to waive an objection.
2.9.2 The application of Article 7(1)(j) CTMR
2.9.2.1 Relevant PDOs/PGIs
Article 7(1)(j) CTMR applies where PDOs/PGIs (either from an E U Member State or from a third country) have been r egistered under the procedure laid down by Regulations No 1308/2013 and No 110/2008.
For third-country PDOs/PGIs that enjoy protection in the European Union through international agreements concluded between the European Union and third countries see paragraph 2.9.3.2 below.
Relevant information about PDOs/PGIs for wines can be f ound in the ‘E-Bacchus’ database maintained by the Commission, which can be accessed through the internet at http://ec.europa.eu/agriculture/markets/wine/e-bacchus/. PGI’s for spirit drinks are listed in Annex III of Regulation No 110/2008 (Article 15(2) of Regulation No 110/2008), as amended, which can be accessed at http://eur- lex.europa.eu/Notice.do?val=464638:cs&lang=en&list=531377:cs,500631:cs,500623:c s,500621:cs,464638:cs,&pos=5&page=1&nbl=5&pgs=10&hwords=. The Commission also maintains a database, ‘E-Spirit-Drinks’, accessible at http://ec.europa.eu/agriculture/spirits/. However, this is not an official register and is, therefore, only informative in character.
Protection is granted solely to the name of a PDO/PGI and does not extend ipso iure to the names of sub-regions, sub-denominations, local administrative areas or localities in the area covered by that PDO/PGI. In this respect, a distinction must be made between the doctrine of the General Court in judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’ and the current legal framework. That judgment refers to a system of Member State competencies on the designation of geographical indications for wines that existed under previous Regulation (EC) No 1493/1999 but is no l onger in force. According to Article 67 of Commission Regulation (EC) No 607/2009 (see also Article 120(1)(g) of Regulation (EU) No 1308/2013) the names of those small geographical areas are now considered merely optional particulars on labels.
On the other hand, the trade agreements signed by the EU with third countries typically have annexed to them a list of the PDOs/PGIs registered at EU level that are also to be protected in the third countries in question (see judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’, paras 104-108 and decision of 19/06/2013, R 1546/2011-4 – ‘FONT DE LA FIGUERA’). However, examiners should not use those lists as a s ource of information about EU PDOs/PGIs but should refer to the corresponding databases cited above. Firstly, the lists of EU PDOs/PGIs to be protected abroad may vary from one agreement to another, depending on t he particularities of the negotiations. Secondly, the annexes to the agreements are usually amended and updated through an ‘Exchange of Letters’.
Article 7(1)(j) CTMR applies only in respect of PDOs/PGIs that were applied for before the CTM and are registered at the time of examining the CTM. The relevant dates for establishing the priority of a trade mark and of a PDO/PGI are the date of application of
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the CTM (or the so-called Paris Convention priority, if claimed) and the date of application for protection of a PDO/PGI to the Commission respectively.
Therefore, no objection will be raised under Article 7(1)(j) CTMR when the PDO/PGI was applied for after the filing date (or priority date, if applicable) of the CTM application. For wines, where there is no relevant date information in the ‘E-Bacchus’ extract, this means that the PDO/PGI in question was already in existence on 01/08/2009, the date on which the register was set up. For any PDOs/PGIs for wines added subsequently, the ‘E-Bacchus’ extract includes a reference to the publication in the Official Journal, which gives the relevant information. For spirit drinks, the initial publication of Annex III of Regulation (EC) No 110/2008 contained all PGIs for spirit drinks that existed on 20/02/2008, the date of entry into force of that regulation. For any PGIs for spirit drinks added subsequently, the corresponding amendment regulation contains the relevant information;
Notwithstanding the above, and in view of the fact that the vast majority of applications for PDO/PGI usually mature in a r egistration, an objection will be r aised when the PDO/PGI was applied for before the filing date (or the priority date, if applicable) of the CTM application but had not yet been registered at the time of examining the CTM application. However, if the CTM applicant submits that the PDO/PGI in question has not yet been registered, the proceedings will be s uspended until the outcome of the registration procedure of the PDO/PGI.
2.9.2.2 Situations covered by Article 103 of Regulation (EU) No 1308/2013 and Article 16 of Regulation (EC) No 110/2008
Article 7(1)(j) CTMR applies (provided that the other conditions also apply) in all of the following situations:
1. the CTM consists solely of a whole PDO/PGI (‘direct use’); 2. the CTM contains a w hole PDO/PGI in addition to other word or figurative
elements (‘direct or indirect use’); 3. the CTM contains or consists of an imitation or evocation of a PDO/PGI; 4. other misleading indications and practices; 5. the reputation of PDOs/PGIs.
CTM consists solely of a whole PDO/PGI (‘direct use’)
This situation covers the ‘direct use’ of a PDO/PGI as a CTM, that is, the trade mark consists solely of the name of the PDO/PGI.
Examples
PDO/PGI Community trade mark
MADEIRA
(PDO-PT-A0038)
MADEIRA
(Collective CTM No 3 540 911)
MANZANILLA
(PDO-ES-A1482)
MANZANILLA
(Collective CTM No 1 723 345)
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If the mark consists solely of the PDO/PGI, the CTM also falls under Article 7(1)(c) CTMR, since it is considered descriptive of the geographical origin of the goods in question. This means that the examiner’s objection will simultaneously raise absolute grounds for refusal under both Article 7(1)(j) and 7(1)(c) CTMR. There is an exception to this, pursuant to Article 66(2) CTMR, when the CTM is a collective trade mark and the regulations governing use thereof include the particulars foreseen in Article 67(2) (for the contrary situation, where the mark had been applied for as an individual mark, see decision of 07/03/2006, R 1073/2005-1 – ‘TEQUILA’, para. 15).
While restricting the relevant goods (to comply with the specifications of the PDO/PGI) is usually a m eans of waiving the objection under Article 7(1)(j) CTMR (see paragraph 2.9.2.3 below), such restriction is irrelevant for Article 7(1)(c) CTMR.
For example, an application for the word mark ‘Bergerac’ for wines will simultaneously be objected to under both Article 7(1)(j) and Article 7(1)(c) CTMR: it consists solely of the PDO ‘Bergerac’ and is therefore descriptive. If the goods are subsequently limited to wines complying with the specifications of the PDO ‘Bergerac’, the objection under Article 7(1)(j) CTMR will be waived but the trade mark is still descriptive and continues to be obj ectionable under Article 7(1)(c) CTMR, unless it has been app lied for as a collective trade mark that complies with Article 67(2) CTMR.
CTM contains a whole PDO/PGI in addition to other word or figurative elements (‘direct or indirect use’)
This situation also covers the ‘direct use’ of a PDO/PGI in a CTM through reproduction of the name of the PDO/PGI together with other elements.
The following CTMs are considered to fall under Article 7(1)(j) CTMR since they contain the whole denomination of a PDO/PGI.
PDO/PGI Community trade mark
BEAUJOLAIS
(PDO-FR-A0934)
BEAUX JOURS BEAUJOLAIS
(CTM No 1 503 259)
CHAMPAGNE
(PDO-FR-A1359)
CHAMPAGNE VEUVE DEVANLAY
(CTM No 11 593 381)
BEAUJOLAIS
(PDO-FR-A0934)
(CTM No 1 561 646)
Under Article 7(1)(j) CTMR it is irrelevant whether or not the other word or figurative elements may give the trade mark distinctive character. The sign can be acceptable as a whole under Article 7(1)(b) and (c) CTMR and still be objectionable (as in the cases above) under Article 7(1)(j) CTMR.
Absolute Grounds for Refusal
Guidelines for Examination in the Office, Part B Examination Page 44
FINAL VERSION 1.0 01/08/2014
There is ‘indirect use’ of a P DO/PGI, for example, when the PDO/PGI appears in a complex trade mark (such as the representation of a l abel) in smaller characters as information about the origin or type of the product or as part of the producer’s address. In such cases the trade mark will be obj ectionable irrespective of the position or the size of the PDO/PGI within the trade mark as a whole, provided that it is visible.
PDO/PGI Community trade mark
OPORTO
(PDO-PT-A1540)
CTMs No 11 907 334 and No 2 281 970)
CTM contains or consists of an imitation or evocation of a PDO/PGI
Neither the CTMR nor Regulations No 1308/2013 and No 110/2008 define the meaning of ‘imitation’ or ‘evocation’. To a large extent, they are closely related concepts.
According to the Court, ‘evocation’ covers ‘a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’ (judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 25 and judgment of 26/02/2008, C-132/05, para. 44).
The above means that there may be evocation when the CTM reproduces part of a PDO/PGI, such as (one of its) geographically significant word element(s) (in the sense that it is not a generic element, like ‘cabernet’ and ‘ron’ in the PDO/PGI ‘Cabernet d’Anjou’ or ‘Ron de Granada’), or even part of a word, such as a characteristic root or ending (examples are given below).
Moreover, Article 103(2)(b) of Regulation (EU) No 1308/2013 and Article 16 of Regulation (EC) No 110/2008 protect PDOs/PGIs against misuse, imitation or evocation, ‘even if the true origin of the product is indicated or if the protected name is translated or accompanied by an ex pression such as “style”, “type”, “method”, “as produced in”, “imitation” … or similar’, thus even if consumers are not misled.
According to the Advocate General (opinion of 17/12/1998, C-87/97, ‘Cambozola’, para. 33), ‘the term “evocation” is objective, so that it is not necessary to show that the owner of the mark intended to evoke the protected name’.
In this respect, and for the purposes of Article 7(1)(j) CTMR, the Office will assess in an equally objective way the situations described below, regardless of the CTM applicant’s actual intention.
Absolute Grounds for Refusal
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Furthermore, the Office considers the terms ‘imitation’ and ‘ evocation’ as two corollaries of essentially the same concept. The mark ‘imitates’ (mimics, reproduces elements of, etc.), with the result that the product designated by the PDO/PGI is ‘evoked’ (called to mind).
In the light of the above, the Office finds that there is evocation or imitation of a PDO where:
(a) the CTM incorporates the geographically significant part (in the sense that it is not the generic element) of the PDO/PGI;
(b) the CTM contains an equivalent adjective/noun that indicates the same geographical origin;
(c) the PDO/PGI is translated; (d) the CTM includes a ‘ de-localizer’ expression in addition to the PDO/PGI or its
evocation.
The CTM incorporates part of the PDO/PGI
According to the Court (judgment of 04/03/1999, C-87/97, ‘Cambozola’, and judgment of 26/02/2008, C-132/05, cited above), the CTM must trigger in the consumer’s mind the image of the product whose designation is protected.
The Court has also stated that ‘it is possible (…) for a protected designation to be evoked where there is no l ikelihood of confusion between the products concerned’ (judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 26).
Importantly, evocation is not assessed in the same way as likelihood of confusion (see opinion of the Advocate General of 17/12/1998, C-87/97, ‘Cambozola’, para. 37). A link must be made with the product whose designation is protected. Therefore, whether or not there is evocation will not be analysed according to the principles laid down by the CJEU in judgment of 11/11/1997, C-251/95, ‘Sabèl’.
As pointed out above, evocation is understood as encompassing not only when the CTM incorporates (one of) the geographically significant word(s) (as opposed to generic) element(s) of a PDO/PGI, but also when the CTM reproduces other parts of that PDO/PGI, such as a characteristic root or ending.
Although the following examples concern foodstuffs, they equally serve to demonstrate ‘imitation’ and ‘evocation’ for wines and spirit drinks.
Absolute Grounds for Refusal
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FINAL VERSION 1.0 01/08/2014
PDO/PGI Trade Mark Explanation
CHIANTI CLASSICO
(IT/PDO/0005/0108)
(CTM 9 567 851)
The term ‘chianti’ evokes the PDO ‘Chianti Classico’.
(R 1474/2011-2, ‘AZIENDA OLEARIA CHIANTI’, paras 14-15)
GORGONZOLA
(IT/PDO/0017/0010) CAMBOZOLA
‘… a protected name is indeed evoked where the term used to designate that product ends in the same two syllables and contains the same number of syllables, with the result that the phonetic and visual similarity between the two names is obvious’
(C-87/97, para. 27)
If a PDO/PGI contains or evokes the name of a product that is considered generic, protection does not extend to the generic element. For example, in the PGI ‘Ron de Málaga’, it is a well-known fact that the term ‘ron’ (rum in Spanish) is generic and therefore does not deserve protection. Accordingly, no objection will be raised to the mere fact that a CTM contains a generic term that is part of a PDO/PGI.
Where the generic nature of an element in a PDO/PGI can be determined by standard dictionary definitions, the perspective of the public in the country of origin of the PDO/PGI is determinative. For instance, in the examples cited above, it suffices that the term ‘ron’ is generic for Spanish consumers for it to be concluded that it is generic, regardless of whether or not it can be understood by other parts of the public in the European Union.
By contrast, where no definition can be found in a standard, well-known dictionary, the generic nature of the term in question should be assessed following the criteria laid down by the Court (see judgment of 26/02/2008, C-132/05 and judgment of 12/09/2007, T-291/03, ‘Grana Biraghi’), such as relevant national and EU legislation, how the term is perceived by the public, and circumstances relating to the marketing of the product in question.
Finally, in some cases a CTM may constitute direct/indirect use or evocation of more than one PDO/PGI at the same time. This is likely to happen when the CTM contains an element (not being a generic one) that appears in more than one PDO/PGI.
Absolute Grounds for Refusal
Guidelines for Examination in the Office, Part B Examination Page 47
FINAL VERSION 1.0 01/08/2014
PDO/PGI RIOJA (PDO-ES-A0117)
SANTIAGO (Chilean PGI)
Community trade mark RIOJA SANTIAGO
Explanation
The trade mark applied for consists of the terms ‘RIOJA’ and ‘SANTIAGO’, each of which coincides with a protected designation of origin for wines, the former (‘RIOJA’) being protected by the European Union and t he latter (‘SANTIAGO’), a geogr aphical indication for a wine originating from Chile, being protected under a bilateral agreement between the European Union and the Republic of Chile (…)
It is not possible to accept any limitation that includes ‘wine’ originating from the territory of one of the two designations of origin since such a limitation automatically excludes wines originating from the other designation of origin, which inevitably means that the trade mark applied for will lead to confusion. By the same token, a hypothetical limitation of the list of goods to wine from the geographical area covered by either of the designations of origin, e.g. ‘wines from the Rioja designation of origin and w ines from the Santiago designation of origin’, in Class 33, would be c overed by the prohibition of Article 7(1)(j) CTMR insofar as the trade mark would inevitably – and confusingly – identify wines with a geographical origin other than that of the respective designations of origin included under the trade mark. Preventing such an eventuality is the principal purpose of that Article.
(R 0053/2010-2, ‘RIOJA SANTIAGO’)
Provided that the CTM covers the relevant goods, an objection should be raised in respect of all the PDOs/PGIs concerned. However, the examiner will indicate that the objection cannot be overcome, because limiting the goods to those that comply with either one of or all of the PDOs/PGIs would necessarily trigger another objection under Article 7(1)(j) CTMR since such a l imitation would inevitably and c onfusingly identify wines with a geographical origin other than that of the PDO/PGI in question.
Equivalent adjectives/nouns
The use of an e quivalent adjective/noun to indicate the same origin constitutes an evocation of a PDO/PGI.
PDO/PGI Community trade mark(invented examples) Explanation
IBIZA
(PGI-ES-A0110) IBICENCO Noun in the PDO → Adjective in the CTM
AÇORES
(PGI-PT-A1447) AÇORIANO Noun in the PDO → Adjective in the CTM
BORDEAUX
(PDO-FR-A0821) BORDELAIS Noun in the PDO → Adjective in the CTM
Absolute Grounds for Refusal
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Translated PDOs/PGIs
Likewise, there is evocation or imitation of the PDO/PGI when the CTM contains or consists of a translation of the whole or part of a PDO/PGI in any of the EU languages.
PDO/PGI Community trade mark Explanation
COGNAC KONJAKKI(invented example) A CTM that contains the term ‘Konjakki’ will be considered to evoke ‘Cognac’ in Finnish.
BOURGOGNE
CTM 2417269
‘Borgoña’ is the Spanish translation of the French PDO ‘Bourgogne’
Trade marks consisting of these terms must be refused under both Article 7(1)(j) and 7(1)(c) CTMR rather than solely under Article 7(1)(c) CTMR.
Expressions used as ‘de-localisers’
According to Article 103(2)(b) of Regulation (EU) No 1308/2013 and Article 16(b) of Regulation (EC) No 110/2008, PDOs/PGIs are protected ‘even if the true origin of the product … is indicated or if the protected name is … accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” … or similar’.
Therefore, the fact that the PDO/PGI reproduced or evoked in the CTM is accompanied by these expressions does not militate against the application of Article 7(1)(j) CTMR. In other words, even if the public is thereby informed about the actual origin of the product, an objection will still be raised under Article 7(1)(j) CTMR. Notwithstanding this, the trade mark will be m isleading under Article 7(1)(g) CTMR since there is a contradiction between the goods (restricted to the specific PDO/PGI) and the message conveyed by the mark (that the goods are not ‘genuine’ PDO/PGI products), which will thus necessarily lead to a further objection under that Article.
PDO/PGI Community trade mark (invented examples)
Explanation
RIOJA
(PDO-ES-A0117) RIOJA STYLE RED WINE
A CTM that contains an expression such as ‘Rioja Style Red Wine’ will be considered to evoke the PDO ‘Rioja’ even if it conveys the idea that the product in question is not a ‘genuine’ PDO Rioja wine.
Where the applicant has its legal seat is irrelevant for assessing Article 7(1)(j) CTMR. Article 103(1) of Regulation (EU) No 1308/2013 sets out that protected designations of origin and protected geographical indications may be used by any operator marketing a product that conforms to the corresponding specification. Hence, provided that the goods comply with the specification of the PDO/PGI in question (which is guaranteed by restricting the goods appropriately), the location of the applicant’s legal seat as
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indicated in the CTM application is irrelevant. For example, a company with legal domicile in Poland can own a vineyard located in Spain that produces wine complying with the product specification of the PDO ‘Ribera del Duero’.
Other misleading indications and practices
Article 103(2)(c) and (d) of Regulation (EU) No 1308/2013 and Article 16(c) and (d) of Regulation (EC) No 110/2008 protect the PDO/PGI against a nu mber of false or misleading indications about the origin, nature or essential qualities of the product.
Although it very much depends on the particularities of each case, each of which must therefore be as sessed individually, a C TM may be c onsidered misleading when, for example, it contains figurative elements that are typically associated with the geographical area in question (such as well-known historical monuments).
The above must be interpreted in a restrictive way: it refers solely to CTMs that depict a well-known and s ingular image that is generally taken as a s ymbol of the particular place of origin of the products covered by the PDO/PGI.
PDO/PGI Community trade mark(invented examples) Explanation
PORTO
(PDO-PT-A1540)
CTM depicting the ‘Dom Luís I Bridge’
in the city of Porto
A picture of the Dom Luís I Bridge and its riverside is a well-known emblem of the city of Porto. Use of this image for wines other than those covered by the PDO ‘Porto’ would fall under Article 103(2)(c) and (d) of Regulation (EU) No 1308/2013.
Given the inherent difficulty in identifying evocative figurative elements, particularly in less obvious cases, the Office will in such cases rely principally on objections by third parties.
The reputation of PDOs/PGIs
According to Article 103(2)(a) of Regulation (EU) No 1308/2013 and Article 16(a) of Regulation (EC) No 110/2008, registered names are protected against use that exploits the reputation of the protected name. This protection extends even to different products (see by analogy judgment of 12/06/2007, joined cases T-53/04 to T-56/04, T-58/04 and T-59/04, ‘Budweiser’, para. 176).
However, the scope of such protection must be read in line with the mandate contained in Article 102 of Regulation (EU) No 1308/2013, which limits the refusal of trade marks to products listed in its Annex VII, Part II.
Therefore, the Office considers that, in the context of examining absolute grounds for refusal, the PDO/PGI’s protection is limited to identical or comparable products.
However, the extended scope of protection of a PDO/PGI with reputation can be invoked in the context of Article 8(4) CTMR (see the Guidelines, Part C, Opposition, Section 4, Rights Under Article 8(4) CTMR).
Absolute Grounds for Refusal
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FINAL VERSION 1.0 01/08/2014
2.9.2.3 Relevant goods
Comparable products
Objections based on A rticle 7(1)(j) CTMR can be raised only in respect of specific goods of the CTM application, namely those that are identical or ‘comparable’ to ones covered by the PDO/PGI.
The different terms used in Articles 102(1) and 103(2) of Regulation (EU) No 1308/2013 (‘product falling under one of the categories listed in Part II of Annex VII’ and ‘comparable products’ respectively) are interpreted by the Office as synonyms referring to the same concept.
For ease of reference, the categories listed in Part II of Annex VII can be grouped in: (i) wine; (ii) sparkling wine; (iii) grape must; (iv) wine vinegar.
The notion of comparable goods must be understood restrictively and it is independent of the analysis of similarity between goods in trade mark law. Accordingly, the criteria set out in judgment of 29/09/1998, C-39/97, ‘Canon’, should not necessarily be adhered to, although some of them may be us eful. For example, given that a PDO/PGI serves to indicate the geographical origin and the particular qualities of a product, criteria such as the nature of the product or its composition are more relevant than, for instance, whether or not goods are complementary.
In particular, the CJEU (in judgment of 14/07/2011, joined cases C-4/10 and C-27/10, ‘BNI Cognac’, para. 54) has listed the following criteria for determining whether goods are comparable:
• whether or not they have common objective characteristics (such as method of elaboration, physical appearance of the product or use of the same raw materials);
• whether or not they are consumed, from the point of view of the relevant public, on largely identical occasions;
• whether or not they are distributed through the same channels and s ubject to similar marketing rules.
Although it is not possible in these Guidelines to list all the possible scenarios, the following are some examples of comparable products.
Products covered by the PDO/PGI Comparable products
Wine All types of wines (including sparkling wine); grape must; wine vinegar; wine-based beverages (e.g. ‘sangría’)
Spirits All types of spirits; spirit-based drinks
Restrictions of the list of goods
According to Article 103(1) of Regulation (EU) No 1308/2013, protected designations of origin and protected geographical indications may be used by any operator marketing a wine conforming to the corresponding specification.
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Objections raised under Article 7(1)(j) CTMR may be waived if the relevant goods are restricted to comply with the specifications of the PDO/PGI in question.
Restriction of goods can be a complex task, which may depend to a large extent on a case-by-case examination.
• Products of the same type as those covered by the PDO/PGI must be restricted in order to meet the specifications of the PDO/PGI. The proper wording is ‘[name of the product] complying with the specifications of the [PDO/PGI ‘X’]’. No other wording should be proposed or allowed. Restrictions such as ‘[name of the product] with the [PDO/PGI ‘X’]’ or ‘[name of the product] originating in [name of a place]’ are not acceptable.
PDO/PGI in the Community trade mark Acceptable list of goods
Slovácká
(PDO-CZ-A0890)
Wine complying with the specifications of the PDO ‘Slovácká’
• The category of products that includes those covered by the PDO/PGI should be restricted to designate ‘wines’ that comply with the specifications of the PDO/PGI. For spirit drinks, the restriction should designate the exact category of product (e.g. ‘whisky’, ‘rum’, ‘fruit spirit’, in accordance with Annex III of Regulation (EC) No 110/2008) that complies with the specifications of the PDO/PGI.
PDO/PGI in the Community trade mark
Original specification (not acceptable)
Acceptable list of goods Explanation
TOKAJI
(PDO-HU-A1254) Wines
Wine complying with the specifications of the PDO ‘Tokaji’
The CTM can be accepted only for wine covered by the PDO
• Comparable products are restricted to those products, within the category of comparable products, covered by the PDO/PGI.
PDO/PGI in the Community trade mark
Original specification (not acceptable)
Acceptable list of goods Explanation
MOSLAVINA
(PDO-HR-A1653)
Alcoholic beverages (except beers)
Wine complying with the specifications of the PDO ‘Moslavina’; alcoholic beverages other than wines
The CTM can be accepted only for wine covered by the PDO, and for alcoholic beverages other than wines.
There may be c ases where the objection cannot be ov ercome by a l imitation, for example when the goods applied for, although ‘comparable’, do not include the product covered by the PDO/PGI (e.g. where the PGI covers ‘whisky’ and the goods applied for are ‘rum’).
2.9.3 PDOs/PGIs not protected under Regulations (EC) No 1308/2013 and No 110/2008
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2.9.3.1 PDOs/PGIs protected at national level in an EU Member State
The Court of Justice has set out (judgment of 08/09/2009, C-478/07, ‘Bud’) that the EU system of protection for PDOs/PGIs for agricultural products and foodstuffs laid down in Regulation (EC) No 510/2006 [then in effect] is ‘exhaustive in nature’. The Office applies an analogous approach for PDOs/PGIs for wines and spirits, for the following reasons.
The former protection at national level of geographical indications for wines and spirit drinks that now qualify for a PDO/PGI under Regulation (EU) No 1308/2013 and Regulation (EC) No 110/2008 respectively was discontinued once those geographical indications were registered at EU level (see Article 107 of Regulation (EU) No 1308/2013 and Articles 15(2), 20(1) of Regulation (EC) No 110/2008).
Geographical indications for wines that now qualify for a P DO/PGI under Regulation (EU) No 1308/2013 and in the past enjoyed protection by means of national legislation do not fall within the scope of Article 7(1)(j) CTMR. Accordingly, they do not constitute as such, and for that reason alone, a ground for refusal under Article 7(1)(j) CTMR, unless they have also been registered at EU level. Therefore, if for example a t hird party argues that a CTM contains or consists of a geographical indication for wines that was registered in the past at national level in an EU Member State, the examiner will check whether such geographical indication is also registered at EU level as a PDO/PGI. If not, the third party observations will be deemed not to raise serious doubts as regards Article 7(1)(j) CTMR.
2.9.3.2 PDOs/PGIs from third countries
The following situations refer to PDOs/PGIs from third countries that are not simultaneously registered at EU level.
The geographical indication is protected only in the country of origin under national legislation.
Article 7(1)(j) CTMR does not apply since the third-country geographical indication is not recognised and protected expressis verbis under EU legislation. In this respect, note that the provisions of the TRIPs Agreement are not such as to create rights upon which individuals may rely directly before the courts by virtue of EU law (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 44).
Nevertheless, when the CTM contains or consists of one such protected geographical indication, it must also be assessed whether or not the CTM may be considered descriptive and/or deceptive under Article 7(1)(c) and (g) CTMR in accordance with the general rules set out in these Guidelines. For example, where a third party observes that a CTM consists of the term ‘Murakami’ (invented example), which is a PGI for spirits in accordance with the national legislation of country X, Article 7(1)(j) CTMR will not apply for the reasons set out above, but it must be examined whether or not the CTM will be per ceived as a des criptive and/or deceptive sign by the relevant EU consumers.
The geographical indication is protected under an agreement to which the European Union is a contracting party.
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The EU has signed a number of trade agreements with third countries that protect geographical indications. These instruments typically include a list of the geographical indications, as well as provisions on their conflicts with trade marks. The content and degree of precision may nevertheless vary from one agr eement to another. Geographical indications from third countries are protected at EU level after the relevant agreement has entered into force.
In this respect, it is settled case-law that a provision of an agreement entered into by the EU with non-member countries must be r egarded as being directly applicable when, in view of the wording, purpose and nature of the agreement, it may be concluded that the provision contains a clear, precise and unconditional obligation that is not subject, in its implementation or effects, to the adoption of any subsequent measure (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 42).
The scope of protection given to these PGIs by third countries is defined through the substantive provisions of the agreement concerned. While the oldest agreements usually contained only general provisions, the ‘last generation’ of free trade agreements refer to the relationship between trade marks and PGIs in similar terms to Articles 102 and 103 of Regulation (EU) No 1308/2013 (see, for example, Articles 210 and 211 of the ‘Trade Agreement between the European Union and its Member States, of the one part, and Colombia and Peru, of the other part’, OJ L 354, 21/12/2012).
In the light of this, CTMs that contain or consist of a third-country PDO/PGI that is protected by an agreement to which the EU is a contracting party (and is not simultaneously registered under Regulation (EU) No 1308/2013) are examined, on a case-by-case basis, in accordance with the specific substantive provisions of the agreement in question on the refusal of conflicting trade marks, taking into account the case-law cited above. The mere fact that a PDO/PGI from a third country is protected by those instruments does not automatically imply that a CTM that contains or consists of the PDO/PGI must be refused: this will depend on t he content and scope of the agreement’s relevant provisions.
The geographical indication is protected under an international agreement signed only by Member States
Protection of geographical indications under agreements between two Member States is precluded under current EU regulation of PDOs/PGIs (see the doctrine in judgment of 08/09/2009, C-478/07, ‘Bud’, applied by the Office by analogy for PDOs/PGIs for wines and spirits). Such agreements are redundant and have no legal effect.
As regards international agreements signed exclusively by Member States with third countries (in particular, the Lisbon Agreement for the Protection of Appellations of Provenance and t heir International Registration), and for the sole purpose of the examination of absolute grounds for refusal, the EU is not a contracting party to these agreements, and they do not impose any obligations on the EU (see, by analogy, judgment of 14/10/1980, 812/79, para. 9).
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2.10 Article 7(1)(k) CTMR
2.10.1 Introduction
Article 7(1)(k) CTMR applies to CTMs that are in conflict with protected designations of origin/protected geographical indications (PDOs/PGIs) for agricultural products and foodstuffs registered at EU level.
More specifically, it provides for the refusal of CTMs that contain or consist of a PDO/PGI for agricultural products and foodstuffs that has been registered under Regulation (EU) No 1151/20125, provided that the situation corresponds to one covered in that regulation.
According to Regulation (EU) No 1151/2012, PDOs/PGIs cover products for which there is an i ntrinsic link between the product or foodstuff characteristics and i ts geographical origin.
More particularly:
A ‘designation of origin’ is a name that identifies a product:
1. originating in a specific place, region or, in exceptional cases, a country; 2. whose quality or characteristics are essentially or exclusively due to a particular
geographical environment with its inherent natural and human factors; and 3. the production steps of which all take place in the defined geographical area.
A ‘geographical indication’ is a name that identifies a product:
1. originating in a specific place, region or country; 2. whose given quality, reputation or other characteristic is essentially attributable to
its geographical origin; and 3. of which at least one of the production steps takes place in the defined
geographical area.
PDO is the term used to describe foodstuffs that are produced, processed and prepared in a given geographical area using recognised know-how. A PGI indicates a link with the area in at least one of the stages of production, processing or preparation. PDOs therefore have a stronger link with the area.
This distinction, however, does not affect the scope of protection, which is the same for both PDOs and PGIs. In other words, Article 7(1)(k) CTMR applies indiscriminately to the designations covered by Regulation (EU) No 1151/2012, regardless of whether they are registered as PDOs or as PGIs.
Protection is granted to PDOs/PGIs with the aim of ensuring that they are used fairly and in order to prevent practices liable to mislead consumers (see Recital 29 of Regulation (EU) No 1151/2012).
In this respect, it must also be underlined that the concepts of PDO and PGI differ from ‘simple indications of geographical provenance’. For the latter, there is no direct link
5 Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs. It replaced and repealed Regulation (EC) No 510/2006.
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between a s pecific quality, reputation or other characteristic of the product and i ts specific geographical origin, with the result that it does not come within the scope of Article 5(2) of Regulation (EU) No 1151/2012 (judgment of 07/11/2000, C-312/98 ‘Haus Cramer’, paras 43 and 44). For example, ‘Queso Manchego’ is a PDO for cheese since it designates a product with particular characteristics that comply with the definition of a PDO. However, ‘Queso de Alicante’ (a ‘simple geographical indication’) cannot qualify for a PDO/PGI since it does not enjoy such characteristics and requirements.
According to Article 14(1) of Regulation (EU) No 1151/2012,
where a des ignation of origin or a g eographical indication is registered under this Regulation, the registration of a trade mark the use of which would contravene Article 13(1) and which relates to a product of the same type shall be refused if the application for registration of the trade mark is submitted after the date of submission of the registration application in respect of the designation of origin or the geographical indication to the Commission.
Article 13(1) of Regulation (EU) No 1151/2012 sets out the situations that infringe the rights deriving from a PDO/PGI: (i) direct or indirect commercial use of the PDO/PGI; (ii) misuse, imitation or evocation; (iii) other misleading practices.
Three cumulative conditions are necessary in order for Article 7(1)(k) CTMR to apply:
• The PDO/PGI in question must be registered at EU level under the procedure laid down in Regulation (EU) No 1151/2012 (see paragraph 2.10.2.1 below);
• Use of the CTM that consists of or contains a PDO/PGI for agricultural products and foodstuffs must constitute one of the situations provided for in Article 13(1) of Regulation (EU) No 1151/2012 (see paragraph 2.10.2.2 below);
• The CTM application must include goods that are identical or ‘comparable’ to the goods covered by the PDO/PGI (see paragraph 2.10.2.3 below).
For these three conditions, reference is made below to: (i) which PDOs/PGIs may give rise to an objection under Article 7(1)(k) CTMR; (ii) under what circumstances a CTM contains or consists of a PDO/PGI in such a way that it falls under Article 13(1) of Regulation (EU) No 1151/2012; (iii) the goods of the CTM application affected by the protection granted to the PDO/PGI. Finally, reference is also made below to how goods can be restricted in order to waive an objection.
2.10.2 The application of Article 7(1)(k) CTMR
2.10.2.1 Relevant PDOs/PGIs
Article 7(1)(k) CTMR applies where PDOs/PGIs (either from an EU Member State or from a t hird country) have been r egistered under the procedure laid down by Regulation (EU) No 1151/2012.
For third-country PDOs/PGIs that enjoy protection in the European Union through international agreements concluded between the European Union and third countries, see paragraph 2.10.3.2 below.
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Relevant information about PDOs/PGIs registered under Regulation (EU) No 1151/2012 can be found in the database ‘DOOR’ maintained by the Commission, which can be accessed through the internet at http://ec.europa.eu/agriculture/quality/door/list.html.
Protection is granted solely to the name of a PDO/PGI as registered (see Article 13(1) of Regulation (EU) No 1151/2012) and does not extend ipso iure to the names of sub- regions, sub-denominations, local administrative areas or localities in the area covered by that PDO/PGI. In this respect, a distinction must be made between the doctrine of the General Court in judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’ and the current legal framework. That judgment refers to a s ystem of Member State competencies on t he designation of geographical indications for wines that existed under previous Regulation (EC) No 1493/1999 but is no longer in force.
On the other hand, the trade agreements signed by the EU with third countries typically have annexed to them a list of the PDOs/PGIs registered at EU level that are also to be protected in the third countries in question (see judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’, paras 104-108 and decision of 19/06/2013, R 1546/2011-4 – ‘FONT DE LA FIGUERA’). However, examiners should not use those lists as a s ource of information about EU PDOs/PGIs but should refer to the database cited above. Firstly, the lists of EU PDOs/PGIs to be pr otected abroad may vary from one agreement to another, depending on the particularities of the negotiations. Secondly, the annexes to the agreements are usually amended and updated through an ‘Exchange of Letters’.
Article 7(1)(k) CTMR applies only in respect of PDOs/PGIs that were applied for before the CTM and are registered at the time of examining the CTM. The relevant dates for establishing the priority of a trade mark and of a PDO/PGI are the date of application of the CTM (or the so-called Paris Convention priority, if claimed) and the date of application for protection of a PDO/PGI to the Commission respectively.
Therefore, no objection will be raised under Article 7(1)(k) CTMR when the PDO/PGI was applied for after the filing date (or the priority date, if applicable) of the CTM application. Details of the date of application for the PDO/PGI are available in the ‘DOOR’ database.
Notwithstanding the above, and in view of the fact that the vast majority of applications for PDO/PGI usually mature in a r egistration, an objection will be r aised when the PDO/PGI was applied for before the filing date (or the priority date, if applicable) of the CTM application but had not yet been registered at the time of examining the CTM application. However, if the CTM applicant submits that the PDO/PGI in question has not yet been registered, the proceedings will be s uspended until the outcome of the registration procedure of the PDO/PGI
2.10.2.2 Situations covered by Article 13(1) of Regulation (EU) No 1151/2012
Article 7(1)(k) CTMR applies (provided that the other conditions also apply) in all of the following situations:
1. the CTM consists solely of a whole PDO/PGI (‘direct use’); 2. the CTM contains a w hole PDO/PGI in addition to other word or figurative
elements (‘direct or indirect use’); 3. the CTM contains or consists of an imitation or evocation of a PDO/PGI;
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4. other misleading indications and practices; 5. the reputation of PDOs/PGIs CTM consists solely of a whole PDO/PGI (‘direct use’)
This situation covers the ‘direct use’ of a PDO/PGI as a CTM, that is, the trade mark consists solely of the name of the PDO/PGI.
Examples
PDO/PGI Community trade mark
DRESDNER CHRISTSTOLLEN (DE/PGI/005/0704)
DRESDNER CHRISTSTOLLEN (Collective CTM No 262 949)
PROSCIUTTO DI PARMA (IT/PDO/0117/0067)
PROSCIUTTO DI PARMA (Collective CTM No 1 116 458)
If the mark consists solely of the PDO/PGI, the CTM also falls under Article 7(1)(c) CTMR, since it is considered descriptive of the geographical origin of the goods in question. This means that the examiner’s objection will simultaneously raise absolute grounds for refusal under both Article 7(1)(k) and 7(1)(c) CTMR. There is an exception to this, pursuant to Article 66(2) CTMR, when the CTM is a collective trade mark and the regulations governing use thereof include the particulars foreseen in Article 67(2) (for the contrary situation where the mark had been applied for as an individual mark, see decision of 07/03/2006, R 1073/2005-1, ‘TEQUILA’, para. 15).
While restricting the relevant goods (to comply with the specifications of the PDO/PGI) is usually a means of waiving the objection under Article 7(1)(k) CTMR (see paragraph 2.10.2.3 below), such restriction is irrelevant for Article 7(1)(c) CTMR.
For example, a CTM consisting of the expression ‘PROSCIUTTO DI PARMA’ for meat will simultaneously be objected to under both Article 7(1)(k) and Article 7(1)(c) CTMR: it consists solely of the PDO ‘Prosciutto di Parma’, which enjoys protection for meat products, namely a specific type of ham, and is therefore descriptive. If the goods are subsequently limited to ham complying with the specifications of the PDO ‘Prosciutto di Parma’, the objection under Article 7(1)(k) CTMR will be waived but the trade mark is still descriptive and continues to be objectionable under Article 7(1)(c) CTMR, unless it has been applied for as a collective trade mark that complies with Article 67(2) CTMR.
CTM contains a whole PDO/PGI in addition to other word or figurative elements (‘direct or indirect use’)
This situation also covers the ‘direct use’ of a PDO/PGI in a CTM through reproduction of the name of the PDO/PGI together with other elements.
The following CTMs are considered to fall under Article 7(1)(k) CTMR since they contain the whole denomination of a PDO/PGI:
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PDO/PGI Community trade mark
PROSCIUTTO DI PARMA
(IT/PDO/0117/0067)
CONSORZIO DEL PROSCIUTTO DI PARMA
(CTM No 6 380 141)
DRESDNER CHRISTSTOLLEN
(DE/PGI/005/0704)
(CTM No 5 966 668)
PARMIGIANO REGGIANO
(IT/PDO/0117/0016)
(CTM No 6 380 141)
WELSH BEEF
(UK/PGI/0005/0057)
(CTM No 10 513 729)
Under Article 7(1)(k) CTMR it is irrelevant whether or not the other word or figurative elements may give the trade mark distinctive character. The sign can be acceptable as a whole under Article 7(1)(b) and (c) CTMR and still be objectionable (as in the cases above) under Article 7(1)(k) CTMR.
There is ‘indirect use’ of a P DO/PGI, for example, when the PDO/PGI appears in a complex trade mark (such as the representation of a l abel) in smaller characters as information about the origin or type of the product or as part of the producer’s address. In such cases the trade mark will be obj ectionable irrespective of the position or the size of the PDO/PGI within the trade mark as a whole, provided that it is visible.
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PDO/PGI Community trade mark
WELSH LAMB
(UK/PGI/0005/0081)
(CTM No 11 927 472)
QUESO MANCHEGO
(ES/PDO/0117/0087)
(CTM No 5 582 267)
CTM contains or consists of an imitation or evocation of a PDO/PGI
Neither the CTMR nor Regulation (EU) No 1151/2012 defines the meaning of ‘imitation’ or ‘evocation’. To a large extent, they are closely related concepts.
According to the Court, ‘evocation’ covers ‘a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’ (judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 25 and judgment of 26/02/2008, C-132/05, para. 44).
The above means that there may be evocation when the CTM reproduces part of a PDO/PGI, such as (one of its) geographically significant word element(s) (in the sense that it is not a generic element), or even part of a word, such as a characteristic root or ending (examples are given below).
Moreover, Article 13(1)(b) of Regulation (EU) No 1151/2012 protects PDOs/PGIs against ‘any misuse, imitation or evocation, even if the true origin of the products or services is indicated or if the protected name is translated or accompanied by an expression such as “ style”, “type”, “method”, “as produced in”, “imitation” or similar’ (emphasis added), thus even if consumers are not misled.
According to the Advocate General (opinion of 17/12/1998, C-87/97, ‘Cambozola’, para. 33), ‘the term “evocation” is objective, so that it is not necessary to show that the owner of the mark intended to evoke the protected name’.
In this respect, and for the purposes of Article 7(1)(k) CTMR, the Office will assess in an equally objective way the situations described below, regardless of the CTM applicant’s actual intention.
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Furthermore, the Office considers the terms ‘imitation’ and ‘ evocation’ as two corollaries of essentially the same concept. The mark ‘imitates’ (mimics, reproduces elements of, etc.), with the result that the goods designated by the PDO/PGI are ‘evoked’ (called to mind).
In the light of the above, there is evocation or imitation of a PDO/PGI where:
(a) the CTM incorporates the geographically significant part (in the sense that it is not the generic element) of the PDO/PGI;
(b) the CTM contains an equivalent adjective/noun that indicates the same geographical origin;
(c) the PDO/PGI is translated; (d) the CTM includes a ‘ de-localizer’ expression in addition to the PDO/PGI or its
evocation.
The CTM incorporates part of the PDO/PGI
According to the Court (judgment of 04/03/1999, C-87/97, Cambozola’ and judgment of 26/02/2008, C-132/05, cited above), the CTM must trigger in the consumer’s mind the image of the product whose designation is protected.
The Court has also stated that ‘it is possible (…) for a protected designation to be evoked where there is no l ikelihood of confusion between the products concerned’ (judgment of 04/03/1999, C-87/97, Cambozola’, para. 26).
Importantly, evocation is not assessed in the same way as likelihood of confusion (see opinion of the Advocate General of 17/12/1998, C-87/97, ‘Cambozola’, para. 37). A link must be made with the product whose designation is protected. Therefore, whether or not there is evocation will not be analysed according to the principles laid down by the CJEU in judgment of 11/11/1997, C-251/95, ‘Sabèl’.
As pointed out above, evocation is understood as encompassing not only when the CTM incorporates (one of) the geographically significant word(s) (as opposed to generic) element(s) of a PDO/PGI, but also when the CTM reproduces other parts of that PDO/PGI, such as a characteristic root or ending.
PDO/PGI Trade Mark Explanation
CHIANTI CLASSICO
(IT/PDO/0005/0108)
(CTM No 9 567 851)
The term ‘chianti’ is an evocation of the PDO ‘Chianti Classico’
(R 1474/2011-2, ‘AZIENDA OLEARIA CHIANTI, paras 14-15)
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PDO/PGI Trade Mark Explanation
GORGONZOLA
(IT/PDO/0017/0010) CAMBOZOLA
‘… a protected name is indeed evoked where the term used to designate that product ends in the same two syllables and contains the same number of syllables, with the result that the phonetic and visual similarity between the two names is obvious’
(C-87/97, para. 27)
NÜRNBERGER BRATWÜRSTE/NÜRNBERGER
ROSTBRATWÜRSTE
(DE/PGI/0005/0184)
NUERNBERGA
(CTM No 9 691 577)
‘due to the phonetic equivalence, NUERNBERGA is understood in the sense of the geographical indication Nürnberger’
(R 1331/2011-4, ‘NUERNBERGA’, para. 12)
If a P DO/PGI contains or evokes the name of a product that is considered generic, protection does not extend to the generic element (see Article 13(1) of Regulation (EU) No 1151/2012, in fine and judgment of 12/09/2007, T-291/03, ‘Grana Biraghi’, paras 58 and 60). For example, in the PGIs ‘Maçã de Alcobaça’ and ‘Jambon d'Ardenne’, it is a well-known fact that the terms ‘maçã’ (apple in Portuguese) and ‘ jambon’ (ham in French) are generic and therefore they do not deserve protection. Accordingly, no objection will be raised to the mere fact that a CTM contains those generic terms that are part of a PDO/PGI.
In particular, it must also be m entioned that the terms ‘camembert’ and ‘brie’ are generic (see judgment of 26/02/2008, C-132/05, para. 36). Other examples are ‘cheddar’ or ‘gouda’ (see Regulation (EC) No 1107/96, footnotes to the PDOs ‘West Country farmhouse Cheddar’ and ‘ Noord-Hollandse Gouda’). Therefore, no obj ection was raised in the following case:
PDO/PGI Community trade mark
(none, because ‘camembert’ is not a geographical indication, but a generic term)
(CTM No 7 389 158)
Where the generic nature of an element in a PDO/PGI can be determined by standard dictionary definitions, the perspective of the public in the country of origin of the PDO/PGI is determinative. For instance, in the examples cited above, it suffices that the terms ‘maçã’ and ‘jambon’ are generic for the Portuguese and French consumers, respectively, for it to be concluded that they are generic, regardless of whether or not these terms can be understood by other parts of the public in the European Union.
By contrast, where no definition can be found in a standard, well-known dictionary, the generic nature of the term in question should be assessed following the criteria laid
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down by the Court (see judgment of 26/02/2008, C-132/05 and judgment of 12/09/2007, T-291/03, ‘Grana Biraghi’), such as relevant national and EU legislation, how the term is perceived by the public, and circumstances relating to the marketing of the product in question.
Finally, in some cases a CTM may constitute direct/indirect use or evocation of more than one PDO/PGI at the same time. This is likely to happen when the CTM contains an element (not being a generic one) that appears in more than one PDO/PGI.
PDO/PGI Community trade mark Explanation
Amarene Brusche di Modena
(CTM No 11 338 779)
The CTM contains the element ‘MODENA’ which evokes all PDOs/PGIs which include ‘MODENA’
Aceto Balsamico di Modena
Aceto balsamico tradizionale di Modena
Cotechino Modena
Zampone Modena
Prosciutto di Modena
Provided that the CTM covers the relevant goods, an objection should be raised in respect of all the PDOs/PGIs concerned. However, the examiner will indicate that the objection cannot be overcome, because limiting the goods to those that comply with either one or all PDOs/PGIs would necessarily trigger another objection under Article 7(1)(k) CTMR since such a l imitation would inevitably and confusingly identify goods with a geographical origin other than that of the PDO/PGI in question.
Equivalent adjectives/nouns
The use of an e quivalent adjective/noun to indicate the same origin constitutes an evocation of a PDO/PGI:
PDO/PGI Community trade mark(invented examples) Explanation
JAGNIĘCINA PODHALAŃSKA
(PL/PGI/0005/00837)
JAGNIĘCINA Z PODHALA Adjective in the PGI → Noun in the CTM
MEL DO ALENTEJO
(PT/PDO/0017/0252) MEL ALENTEJANA Noun in the PDO → Adjective in the CTM
SCOTTISH WILD SALMON
(GB/PGI/0005/00863)
WILD SALMON FROM SCOTLAND Adjective in the PGI → Noun in the CTM
Translated PDOs/PGIs
Likewise, there is evocation or imitation of the PDO/PGI when the CTM contains or consists of a translation of the whole or part of a PDO/PGI in any of the EU languages.
PDO/PGI Community trade mark(invented example) Explanation
PÂTES D'ALSACE
(FR/PGI/0005/0324) ALSATIAN PASTA
A CTM that contains the expression ‘Alsatian Pasta’ will be considered to evoke the PGI ‘Pâtes d'Alsace’
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Trade marks consisting of these terms must be refused under both Article 7(1)(k) and 7(1)(c) CTMR rather than solely under Article 7(1)(c) CTMR.
Expressions used as ‘de-localisers’
According to Article 13(1)(b) of Regulation (EU) No 1151/2012, PDOs/PGIs are protected even ‘if the true origin of the products or services is indicated or if the protected name is (…) accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” … or similar’.
Therefore, the fact that the PDO/PGI reproduced or evoked in the CTM is accompanied by these expressions does not militate against the application of Article 7(1)(k) CTMR. In other words, even if the public is thereby informed about the actual origin of the product, an obj ection will still be raised under Article 7(1)(k) CTMR. Notwithstanding this, the trade mark will be m isleading under Article 7(1)(g) CTMR since there is a contradiction between the goods (restricted to the specific PDO/PGI) and the message conveyed by the mark (that the goods are not ‘genuine’ PDO/PGI products), which will thus necessarily lead to a further objection under that Article 7.
PDO/PGI Community trade mark(invented examples) Explanation
FETA
(EL/PDO/0017/0427)
GREEK STYLE PLAIN FETA
ARABIAN FETA
A CTM that contains expressions such as ‘Greek Style Plain Feta’ or ‘Arabian Feta’, will be considered to evoke the PDO ‘Feta’, even if it conveys the idea that the product in question is not a ‘genuine PDO Feta’ cheese
Where the applicant has its legal seat is irrelevant for assessing Article 7(1)(k) CTMR. Article 12(1) of Regulation (EU) No 1151/2012 sets out that protected designations of origin and protected geographical indications may be used by any operator marketing a product that conforms to the corresponding specification. Hence, provided that the goods comply with the specification of the PDO/PGI in question (which is guaranteed by restricting the goods appropriately), the location of the applicant’s legal seat as indicated in the CTM application is irrelevant. For example, a company with legal domicile in Lithuania can own a f actory located in Spain that elaborates products complying with the PGI ‘Chorizo de Cantimpalos’.
Other misleading indications and practices
Article 13(1)(c) and (d) of Regulation (EU) No 1151/2012 protects the PDO/PGI against a number of false or misleading indications about the origin, nature or essential qualities of the product.
Although it very much depends on the particularities of each case, each of which must therefore be as sessed individually, a CTM may be c onsidered misleading when, for example, it contains figurative elements that are typically associated with the geographical area in question (such as well-known historical monuments) or when it reproduces a particular shape of the product.
The above must be interpreted in a restrictive way: it refers solely to CTMs that depict a well-known and s ingular image that is generally taken as a s ymbol of the particular
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place of origin of the products covered by the PDO/PGI or a singular shape of the product which is described in the specifications of the PDO/PGI.
PDO/PGI Community trade mark(invented examples) Explanation
MOULES DE BOUCHOT DE LA BAIE DU MONT-SAINT-
MICHEL
(FR/PDO/0005/0547)
A CTM which contains an image of the Mont-Saint-
Michel Abbey
A picture of the Mont-Saint-Michel Abbey is a w ell-known emblem of the city and island of Mont Saint Michel in Normandy. Use of this image for seafood other than that covered by the PDO ‘Moules de Bouchot de la Baie du Mont-Saint-Michel’ would fall under Article 13(1)(c) and (d) of Regulation (EU) No 1151/2012
QUESO TETILLA
(ES/PDO/0017/0088)
A CTM which depicts a cheese conical in shape
The singular shape of the product is described in the specifications of the PDO ‘Queso Tetilla’
Given the inherent difficulty in identifying evocative figurative elements, particularly in less obvious cases, the Office will in such cases rely principally on objections by third parties.
The reputation of PDOs/PGIs
According to Article 13(1)(a) of Regulation (EU) No 1151/2012, registered names are protected against use that exploits the reputation of the protected name. This protection in principle extends even to different products (see judgment of 12/06/2007, joined cases T-53/04 to T-56/04, T-58/04 and T-59/04, ‘Budweiser’, para. 176).
However, the scope of such protection must be read in line with the mandate contained in Article 14 of the same regulation, which limits the refusal of trade marks to products ‘of the same type’.
Therefore, the Office considers that, in the context of examining absolute grounds for refusal, the PDO/PGI’s protection is limited to identical or comparable products.
However, the extended scope of protection of a PDO/PGI with reputation can be invoked in the context of Article 8(4) CTMR (see the Guidelines, Part C, Opposition, Part 4, Rights Under Article 8(4) CTMR).
2.10.2.3 Relevant goods
Comparable products
Objections based on Article 7(1)(k) CTMR can be r aised only in respect of specific goods of the CTM application, namely those that are identical or ‘comparable’ to ones covered by the PDO/PGI.
The different terms used in Articles 13 and 1 4 of Regulation (EU) No 1151/2012 (‘comparable products’, and ‘products of the same type’ respectively) are interpreted by the Office as synonyms referring to the same concept.
The notion of comparable goods must be understood restrictively and i t is independent of the analysis of similarity between goods in trade mark law. Accordingly,
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the criteria set out in judgment of 29/09/1998, C 39/97, ‘Canon’ should not necessarily be adhered to, although some of them may be us eful. For example, given that a PDO/PGI serves to indicate the geographical origin and the particular qualities of a product, criteria such as the nature of the product or its composition are more relevant than, for instance, whether or not goods are complementary.
In particular, the CJEU (in judgment of 14/07/2011, joined cases C-4/10 and C-27/10, ‘BNI Cognac’, para. 54) has listed the following criteria for determining whether goods are comparable:
• whether or not they have common objective characteristics (such as method of elaboration, physical appearance of the product or use of the same raw materials);
• whether or not they are consumed, from the point of view of the relevant public, on largely identical occasions;
• whether or not they are distributed through the same channels and s ubject to similar marketing rules.
Although it is not possible in these Guidelines to list all the possible scenarios, the following are some examples of comparable products.
Products covered by the PDO/PGI Comparable products
Specific meat and specific meat preparations Any meat and any meat preparation(R 659/2012-5, p.14-17)
Milk Cheese and other milk products
Fresh fruit
Preserved, frozen, dried and cooked fruits (jellies, jams, compotes are not ‘comparable products’, but the fruit covered by the PDO/PGI can be a commercially relevant ingredient, see below under ‘Products used as ingredients’)
Fresh vegetables
Preserved, frozen, dried and cooked vegetables (jellies, jams are not ‘comparable products’, but the vegetable covered by the PDO/PGI can be a commercially relevant ingredient, see below under ‘Products used as ingredients’)
Restrictions of the list of goods
According to Article 12(1) of Regulation (EU) No 1151/2012, ‘protected designations of origin and protected geographical indications may be used by any operator marketing a product conforming to the corresponding specification’.
Objections raised under Article 7(1)(k) CTMR may be waived if the relevant goods are restricted to comply with the specifications of the PDO/PGI in question.
Restriction of goods can be a complex task, which may depend to a large extent on a case-by-case examination.
• Products of the same type as those covered by the PDO/PGI must be restricted in order to meet the specifications of the PDO/PGI. The proper wording is ‘[name of the product] complying with the specifications of the [PDO/PGI ‘X’]’. No other
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wording should be proposed or allowed. Restrictions such as ‘[name of the product] with the [PDO/PGI ‘X’]’ or ‘[name of the product] originating in [name of a place]’ are not acceptable.
PDO/PGI in the CTM Acceptable list of goods
WELSH BEEF
(UK/PGI/0005/0057)
Beef meat complying with the specifications of the PGI ‘Welsh Beef’’
The category of products that includes those covered by the PDO/PGI in question can be consulted in the ‘DOOR’ database. The exact product covered can be found in the application document attached to the publication in the Official Journal, also accessible through ‘DOOR’.
• The category of products that includes those covered by the PDO/PGI should be restricted to designate exactly the products covered by the PDO/PGI and that comply with its specifications.
PDO/PGI in the CTM Original specification(which is not acceptable) Acceptable
list of goods Explanation
WELSH BEEF
(UK/PGI/0005/0057) Meat
Beef meat complying with the
specifications of the PGI ‘Welsh Beef’
‘Meat’ includes products (e.g. pork) which cannot comply with the specifications of a particular PDO/PGI that covers the specific product ‘beef meat
POMME DU LIMOUSIN
(FR/PDO/0005/0442 Fruits
Apples complying with the
specifications of the PDO ‘Pomme du
Limousin’
The category ‘fruits’ includes products such as pearl or peaches which cannot meet the specifications of a PDO that exclusively covers apples
• Comparable products are restricted to those products, within the category of comparable products, covered by the PDO/PGI:
PDO/PGI in the CTM Original specification(which is not acceptable) Acceptable
list of goods Explanation
POMME DU LIMOUSIN
(FR/PDO/0005/0442
Preserved, frozen, dried and cooked fruits
Preserved, frozen, dried and cooked apples complying
with the specifications of the
PDO ‘Pomme du Limousin’
‘Preserved, frozen, dried and cooked fruits’ includes products made of other fruits which cannot meet the specifications of a PDO which exclusively covers apples. Also to note that the limitation should not be for ‘apples’.
There may be c ases where the objection cannot be ov ercome by a l imitation, for example, when the goods applied for, although ‘comparable’, do no t include the product covered by the PDO/PGI (e.g. where the PDO covers ‘cheese’ and the goods applied for are ‘milk’).
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• Products used as i ngredients: if the goods covered by the PDO/PGI can be used as a commercially relevant ingredient (in the sense that it may determine the choice of the main product) of any of the goods included in the CTM application, a r estriction will be r equested. This is because Article 13(1)(a) and (b) of Regulation (EU) No 1151/2012 expressly extend the scope of protection of a PDO/PGI registered for a given product ‘when those products are used as an ingredient’.
PDO/PGI in the CTM Original specification(which is not acceptable) Acceptable
list of goods Explanation
POMME DU LIMOUSIN
(FR/PDO/0005/0442) Jams and compotes
Jams and compotes of apples complying
with the specifications of the
PDO ‘Pomme du Limousin’
The fruit is the main ingredient of jams and compotes
PROSCIUTTO DI PARMA
(IT/PDO/0117/0067)
Pizzas
Pizzas with ham complying with the
specifications of the PDO ‘Prosciutto di
Parma’
This topping is the main ingredient of a pizza and the one which determines the consumer’s choice
A restriction is not necessary if the goods covered by the PDO/PGI are used as a secondary, not commercially relevant ingredient of the claimed goods.
PDO/PGI in the CTM Original specification Acceptablelist of goods Explanation
ACEITE DE LA ALCARRIA
(ES/PDO/0005/0562)
Pastry Pastry
The goods do not need to be restricted by the mere fact that oil is used in their preparation. ‘Oil’ is a secondary ingredient which is not commercially relevant
2.10.3 PDOs/PDIs not protected under Regulation (EU) No 1151/2012
2.10.3.1 PDOs/PDIs protected at national level in an EU Member State
The Court of Justice has set out (judgment of 08/09/2009, C-478/07, ‘Bud’) that the EU system of protection for PDOs/PGIs for agricultural products and foodstuffs laid down in Regulation (EC) No 510/2006 [then in effect] is ‘exhaustive in nature’.
Article 9 of Regulation (EU) No 1151/2012 states that
a Member State may, on a t ransitional basis only, grant protection to a name under that Regulation at national level, with effect from the date on which an appl ication is lodged with the Commission. Such national protection shall cease on the date on which either a decision on registration under that Regulation is taken or the application is withdrawn’. Those measures taken by Member States ‘shall produce effects at national level only, and they shall have no effect on intra-Union or international trade.
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This provision is in line with Recital 24 of the same regulation, which declares that
to qualify for protection in the territories of Member States, designations of origin and geographical indications should be registered only at Union level. With effect from the date of application for such registration at Union level, Member States should be abl e to grant transitional protection at national level without affecting intra-Union or international trade.
Moreover, reference must also be made to Council Regulation (EEC) No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. That regulation (which preceded and w as repealed by Regulation (EC) No 510/2006) set out in Article 17(1) that Member States had ‘to inform the Commission which of their legally protected names (…) they wish[ed] to register’ pursuant to that regulation. Paragraph (3) added that Member States could ‘maintain national protection of the names communicated in accordance with paragraph 1 until such time as a decision on registration has been taken’ (see in this respect judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 18).
As a consequence of this, the former protection at national level of geographical indications for agricultural products and foodstuffs was discontinued once those geographical indications were registered at EU level.
Geographical indications for these kinds of products that in the past enjoyed protection by means of national legislation do not fall within the scope of Article 7(1)(k) CTMR. Accordingly, they do not constitute, as such and for that reason alone, a ground for refusal under Article 7(1)(k) CTMR, unless they have also been registered at EU level. Therefore, if for example a third party argues that a CTM contains or consists of a geographical indication for agricultural products and foodstuffs that was registered in the past at national level in an EU Member State, the examiner will check whether such geographical indication is also registered at EU level as a PDO/PGI. If not, the third party observations will be deemed not to raise serious doubts as regards Article 7(1)(k) CTMR.
2.10.3.2 PDOs/PDIs from third countries
The following situations refer to those PDOs/PGIs from third countries that are not simultaneously registered at EU level.
The geographical indication is protected only in the country of origin under national legislation
Article 7(1)(k) CTMR does not apply since the third-country geographical indication is not recognised and protected expressis verbis under EU legislation. In this respect, note that the provisions of the TRIPs Agreement are not such as to create rights upon which individuals may rely directly before the courts by virtue of EU law (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 44).
Nevertheless, when the CTM contains or consists of one such protected geographical indications, it must also be as sessed whether or not the CTM may be c onsidered descriptive and/or deceptive under Article 7(1)(c) and (g) CTMR in accordance with the general rules set out in these Guidelines. For example, where a third party observes that a CTM consists of the expression ‘Tea Murakami’ (invented example) which is a
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PGI in accordance with the national legislation of country X, Article 7(1)(k) CTMR will not apply for the reasons set out above, but it must be examined whether or not the CTM will be per ceived as a des criptive and/or deceptive sign by the relevant EU consumers.
The geographical indication is protected under an agreement to which the European Union is a contracting party
The EU has signed a number of trade agreements with third countries that protect geographical indications. These instruments typically include a list of the geographical indications, as well as provisions on their conflicts with trade marks. The content and degree of precision may nevertheless vary from one agr eement to another. Geographical indications from third countries are protected at EU level after the relevant agreement has entered into force.
In this respect, it is settled case-law that a provision of an agreement entered into by the EU with non-member countries must be r egarded as being directly applicable when, in view of the wording, purpose and nat ure of the agreement, it may be concluded that the provision contains a clear, precise and unconditional obligation that is not subject, in its implementation or effects, to the adoption of any subsequent measure (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 42).
The scope of protection given to these PGIs by third countries is defined through the substantive provisions of the agreement concerned. While the oldest agreements (in particular in the field of wines and spirits) usually contained only general provisions, the ‘last generation’ of free trade agreements refer to the relationship between trade marks and PGIs in similar terms to those of Articles 13 and 14 of Regulation (EU) No 1151/2012 (see, for example, Articles 210 and 211 of the ‘Trade Agreement between the European Union and its Member States, of the one par t, and Colombia and Peru, of the other part’, OJ L 354, 21/12/2012).
In the light of this, CTMs that contain or consist of a third-country PDO/PGI that is protected by an agreement to which the EU is a contracting party (and is not simultaneously registered under Regulation (EU) No 1151/2012) are examined, on a case-by-case basis, in accordance with the specific substantive provisions of the agreement in question on the refusal of conflicting trade marks, taking into account the case-law cited above. The mere fact that a PDO/PGI from a third country is protected by those instruments does not automatically imply that a CTM that contains or consists of the PDO/PGI must be refused: this will depend on t he content and scope of the agreement’s relevant provisions.
The geographical indication is protected under an international agreement signed only by Member States
Protection of geographical indications under agreements between two Member States is precluded under current EU regulation of the PDOs/PGIs for agricultural products and foodstuffs (judgment of 08/09/2009, C-478/07, ‘Bud’). Such agreements are redundant and have no legal effect.
As regards international agreements signed exclusively by Member States with third countries (in particular, the Lisbon Agreement for the Protection of Appellations of Provenance and t heir International Registration), and for the sole purpose of the
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examination of absolute grounds for refusal, the EU is not a contracting party to these agreements, and they do not impose any obligations on the EU (see, by analogy, judgment of 14/10/1980, 812/79, para. 9).
2.11 Community collective marks
2.11.1 Character of collective marks
A Community collective mark (CCTM) is a specific type of CTM which, pursuant to Article 66(1) CTMR, ‘is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings’.
A Community collective mark is aimed at distinguishing the goods and services of the members of the association which owns the mark from those of other companies which do not belong to that association. Therefore, the Community collective mark qualifies the commercial origin of certain goods and services by informing the consumer that the producer of the goods or the service provider belongs to a certain association and that it has the right to use the mark.
A CCTM is typically used by companies, together with their own individual marks, to indicate that they are members of a certain association. For example, Spain’s Association of Shoe Manufacturers may want to apply for the collective trade mark ‘Asociación Española de Fabricantes de C alzado’, which, while belonging to the association, is going to be used by all its members.A member of the association may want to use the collective mark in addition to its own individual mark, for example, ‘Calzados Luis’.
Collective marks do no t necessarily certify the quality of the goods, although this is sometimes the case. For example, regulations governing use frequently contain provisions to certify the quality of the goods and services of the members of the association and this is acceptable (see decision of 10/05/2012, R 1007/2011-2, para. 13).
It is up to the applicant to decide whether the trade mark fulfils the requirements of a collective mark or of an individual mark. This means that, in principle, the same sign could be applied for either as an individual CTM or, if the conditions described in this chapter are met, as a c ollective CTM. Differences between individual and collective marks do not depend on the signs per se, rather they depend on ot her characteristics such as the ownership or the conditions of use of the mark.
For example, an association can file an application for the word mark ‘Tamaki’ either as an individual mark or as a collective mark, depending on the use which is intended to be made of the mark (only by the association itself or also by the members thereof). If it is applied for as a CCTM, certain additional formalities must be m et, such as the submission of regulations of use, etc.
After filing, changes of the kind of mark (from collective to individual or vice versa) are accepted only under certain circumstances (see the Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 8.2.5). The CTMR provisions apply to CCTMs, unless Articles 67-74 CTMR provide otherwise. CCTMs are thus subject, on t he one hand, to the general CTM regime and, on t he other hand, to some exceptions and particularities.
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It follows, firstly, that a CCTM is subject to broadly the same examination procedure and conditions as individual marks. In general terms, the classification of goods and services, examination of formalities and of absolute grounds for refusal is done according to the same procedure as that applied to individual trade marks. For example, examiners will check the list of goods and s ervices or the language requirements in the same way as they do with individual trade marks. Likewise, whether the CCTM falls under one of the grounds for refusal of Article 7 CTMR will also be examined.
Secondly, the examination of a CCTM will also consider the exceptions and particularities of this kind of mark. These exceptions and particularities refer both to the formal and s ubstantive provisions. As regards formalities, the requirement of the regulations governing use of the mark is, for example, a specific characteristic of a CCTM. (For further details of the examination of formalities of CCTMs, including the regulations of use of the mark, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 8.2 Collective marks).
The substantive exceptions and par ticularities which apply to a CCTM are described below.
2.11.2 Ownership
Ownership of CCTMs is limited to (i) associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued; and (ii) legal persons governed by public law.
The first type of owners typically comprises private associations with a c ommon purpose or interest. They must have their own legal personality and c apacity to act. Therefore, private companies such as sociedades anónimas, Gesellschaften mit beschränkten Haftung, etc., multiple applicants with separate legal personality or temporary unions of companies cannot be owners of a CCTM. As set out in the Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 8.2.1, ‘collective does not mean that the mark belongs to several persons (co-applicants/co-owners) nor that it designates/covers more than one country’.
As regards the second type of owners, the concept ‘legal persons governed by public law’ must be interpreted broadly. This concept includes, on the one hand, associations, corporations and other entities governed by public law. This is, for example, the case of ‘Consejos Reguladores’ or ‘Colegios Profesionales’ under Spanish Law. On the other hand, it also includes other legal persons governed by public law, for example, the European Union, States or municipalities, which do not necessarily have a corporative or an associative structure but which can nevertheless be owners of CCTMs. In these cases, the requirement concerning the conditions for membership under Article 67(2) CTMR is not applicable (see decision of 22/11/2011, R 828/2011-1, para. 18 and decision of 10/05/2012, R 1007/2011-2, paras 17, 18). That is to say, when the applicant for a C CTM is a l egal person governed by public law which does not necessarily have a corporative or an associative structure, such as the European Union, a State or a municipality, the regulations governing use of the mark need not contain details concerning membership.
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2.11.3 Particularities as regards absolute grounds for refusal
The absolute grounds for refusal listed in Article 7(1) CTMR apply to CCTMs. This means that these marks will first be ex amined under those provisions to verify, for example, whether or not they are distinctive, deceptive or have become a customary sign. If, for instance, a mark is not inherently distinctive under Article 7(1)(b) CTMR, it will be refused (see decision of 18/07/2008, R 229/2006-4, para. 7).
However, there are some exceptions and particularities which must also be taken into account when examining the absolute grounds for refusal for CCTMs. In addition to the grounds for refusal of a CTM application contained in Article 7(1) CTMR, examiners also assess the following specific grounds:
• descriptive signs • misleading character as to its nature • regulations of use contrary to public policy and morality.
These specific grounds for refusals can also be the object of observations filed by third parties.
2.11.3.1 Descriptive signs
Signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks (see judgment of 15/10/2003, T-295/01, para. 32 and judgment of 25/10/2005, T-379/03, para. 35).
As a result, a sign which exclusively describes the geographical origin of the goods or services (and which must be refused if it is applied for as an individual CTM) can be accepted if (i) it is validly applied for as a CCTM and (ii) it complies with the authorisation foreseen in Article 67(2) CTMR (see decision of 05/10/2006, R 280/2006-1, paras 16, 17).
According to this provision, the regulations governing use of a CCTM which is descriptive must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark.
For example, an application for the word mark ‘Alicante’, specifying tourist services should be refused under Article 7(1)(c) CTMR if it is applied for as an individual CTM given that it describes the geographical origin of the services. However, as an exception, if it is validly applied for as a CCTM (i.e. it is applied for by an association or a legal person governed by public law and it complies with the other requirements of Community collective marks) and the regulations governing use of the mark contain the authorisation foreseen in Article 67(2) CTMR, it will be accepted under Article 7(1)(c) CTMR.
This exception exclusively applies to those signs which are descriptive of the geographical origin of the goods and services. If the CCTM is descriptive of other characteristics of the goods or services, this exception does not apply and the application will be refused under Article 7(1)(c) CTMR.
For example, if the word mark ‘Do-it-yourself’ is applied for as a CCTM for tools in Class 7, it will be considered descriptive of the intended purpose of the goods. Since
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the sign is descriptive of certain characteristics of the goods other than their geographical origin, it will be refused under Article 7(1)(c) CTMR despite having been applied for as a CCTM (see decision of 08/07/2010, R 934/2010-1, para. 35).
2.11.3.2 Misleading character as to its nature
The examiner must refuse the application if the public is liable to be misled as regards the character or the meaning of the mark, in particular if it is likely to be perceived as something other than a collective mark.
A collective mark which is available for use only by members of an association which owns the mark could be liable to mislead if it gives the impression that it is available for use by anyone who is able to meet certain objective standards.
2.11.3.3 Regulations of use contrary to public policy and morality
If the regulations governing use of the mark are contrary to public policy or to accepted principles of morality, the CCTM application must be refused.
This ground for refusal must be di fferentiated from that contained in Article 7(1)(f) CTMR, which prohibits registration of those trade marks which are by themselves contrary to public policy or to accepted principles of morality.
The refusal foreseen in Article 68(1) CTMR refers to situations where, regardless of the trade mark, the regulations governing use of the mark contain a provision which is contrary to public policy or to accepted principles of morality, for instance rules which discriminate on t he grounds of sex, creed or race. For example, if the regulations contain a clause which prohibits women from using the mark, the CCTM application will be refused, even if the trade mark does not fall under Article 7(1)(f) CTMR.
The examiner’s objection can be waived if the regulations are amended in order to remove the conflicting provision. In the above example, the CCTM application will be accepted if the clause which prohibits women from using the mark is deleted from the regulations.
2.12 Acquired distinctiveness
2.12.1 Introduction
In accordance with Article 7(3) CTMR, a trade mark may still be registered despite the fact that it does not comply with Article 7(1)(b), (c) or (d) CTMR, provided that ‘the mark has become distinctive in relation to the goods and services for which registration is requested in consequence of the use which has been made of it’.
Article 7(3) CTMR constitutes an exception to the rule laid down in Articles 7(1)(b), (c) or (d) CTMR, whereby registration must be refused for trade marks which are per se devoid of any distinctive character, for descriptive marks, and for marks which consist exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade.
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Distinctive character acquired through use means that although the sign ab initio lacks inherent distinctiveness with regard to the goods and services claimed, owing to the use made of it on the market, the relevant public has come to see it as identifying the goods and services claimed in the CTM application as originating from a particular undertaking. Thus, the sign has become capable of distinguishing goods and services from those of other undertakings because they are perceived as originating from a particular undertaking. In this way, a sign originally unable to be r egistered under Article 7(1)(b), (c) or (d) CTMR can acquire a new significance and its connotation, no longer purely descriptive or non-distinctive, permits it to overcome those absolute grounds for refusal of registration as a trade mark that would have otherwise applied.
2.12.2 Request
The Office will only examine the acquired distinctive character following a request from the CTM applicant, which may be filed at any time during the examination proceedings.
2.12.3 The point in time the evidence must relate to
The evidence must prove that distinctiveness through use was acquired prior to the CTMA’s filing date. In the case of an IR, the relevant date is the date of registration by the International Bureau. Where priority is claimed, the relevant date is the priority date. Hereafter, all these dates are referred to as the ‘filing date’.
2.12.3.1 Examination proceedings
Since a trade mark enjoys protection as of its filing date, and since the filing date of the application for registration determines the priority of one mark over another, a t rade mark must be r egistrable on t hat date. Consequently, the applicant must prove that distinctive character has been acquired through use of the trade mark prior to the date of application for registration (judgment of 11/06/2009, C-0542/07P, ‘Pure Digital’, paras 49 and 51; and judgment of 07/09/2006, C-0108/05, ‘Europolis’, para. 22). Evidence of use made of the trade mark after this date should not be automatically disregarded, to the extent that it may provide indicative information regarding the situation prior to the date of application (judgment of 28/10/2009, T-137/08, ‘Green/Yellow’, para. 49).
2.12.3.2 Cancellation Proceedings
In Cancellation Proceedings, a trade mark which was registered in breach of the provisions of Article 7(1)(b), (c) or (d) CTMR may nevertheless no longer be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a di stinctive character for the goods or services for which it is registered (Article 52(2) CTMR).
The precise purpose of this norm is to maintain the registration of those marks which, due to the use which has been made of them, have in the meantime – that is to say, after their registration – acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when it took place, such registration was contrary to Article 7 CTMR (judgment of 14/12/2011, T-237/10, ‘Louis Vuitton’, para. 86 and judgment of 15/10/2008, T-405/05, ‘Manpower’ para. 127).
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2.12.4 Consumer
Distinctive character, including that acquired through use, of a sign must be assessed in relation to the presumed perception of the average consumer for the category of goods or services in question. These consumers are deemed to be reasonably well- informed, and reasonably observant and c ircumspect. The definition of the relevant public is linked to an examination of the intended purchasers of the goods or services concerned, since it is in relation to those purchasers that the mark must perform its essential function. Consequently, such a definition must be arrived at by reference to the essential function of a trade mark, namely to guarantee the identity of the origin of the goods or services covered by the mark to consumers or end-users by enabling them, without any possibility of confusion, to distinguish the goods or services from others which have another origin (judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, paras 33, 38).
The relevant consumer includes, therefore, not only persons who have actually purchased the goods and s ervices but also any potentially interested person, in the strict sense of prospective purchasers (judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, paras 41 et seq.).
Prospective purchasers are defined by the precise product or service for which registration is sought. If the claimed goods or services are broad (for example, bags or watches), it is irrelevant that the actual products offered under the sign are extremely expensive luxury items – the public will include all the prospective purchasers for the goods claimed in the CTMA, including non-luxury and cheaper items if the claim is for the broad category.
2.12.5 Goods and Services
Since one of the main functions of a trade mark is to guarantee the origin of goods and services, acquired distinctiveness must be a ssessed in respect of the goods and services at issue. Consequently, the applicant’s evidence must prove a l ink between the sign and the goods and services for which the sign is applied for, establishing that the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark (judgment of 04/05/1999, C-0108/97 & C-0109/97, ‘Chiemsee’, para. 52; and judgment of 19/05/2009, T-0211/06, ‘Cybercrédit et al.’, para. 51).
2.12.6 Territorial Aspects
Pursuant to Article 1 CTMR, a Community trade mark has a unitary character and has equal effect throughout the European Union. Article 7(2) CTMR provides that a trade mark must be r efused registration if an abs olute ground exists only in part of the European Union.
As a l ogical consequence thereto, acquired distinctiveness must be established throughout the territory in which the trade mark did not, ab initio, have such character (judgment of 22/06/2006, C-0025/05P, ‘Sweet wrapper’, paras 83, 86; and judgment of 29/09/2010, T-0378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, para. 30).
This is because the unitary character of the Community trade mark requires a sign to possess distinctive character, inherent or acquired through use, throughout the
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European Union (judgment of 17/05/2011, T-7/10, ‘υγεία’, para. 40). It would be paradoxical to accept, on the one hand, pursuant to Article 3(1)(b) TMD that a Member State has to refuse to register as a national mark a sign that is devoid of any distinctive character in its territory and, on the other, that that same Member State has to respect a Community trade mark relating to that sign for the sole reason that it has acquired distinctive character in the territory of another Member State (judgment of 14/12/2011, T-237/10, ‘Louis Vuitton’, para. 100).
2.12.6.1 Special provisions with respect to the accession of new Member States
In accordance with the provisions of the EU Accession Treaties, a C TM applied for before the date of accession of a given Member State may only be rejected for reasons which already existed before the date of accession. Hence, in the Office’s examination proceedings, acquired distinctiveness must be demonstrated only with respect to Member States of the EU at the time of the CTM application, and not those which have joined the EU subsequently.
2.12.6.2 3D marks, colours per se and figurative trade marks
If the objection exists throughout the European Union, as is normally the case for 3D marks, colours per se and figurative trade marks consisting exclusively of the depiction of the goods in question, acquired distinctiveness must be proven throughout the entire European Union. For the possibility of extrapolating the evidence, see paragraph 2.12.8.7 below.
2.12.6.3 Language area
Where the CTM applied for is rejected with respect to its meaning in a s pecific language, acquired distinctiveness through use must be shown at least with respect to the Member States in which that language is an official language.
Particular care should be taken when a language is an official language in more than one EU Member State. In such cases, when dealing with an absolute grounds objection based on t he meaning of wording in a certain language, acquired distinctiveness through use must be proven for each of the Member States where that language is official (as well as any other Member States or markets where it will be understood).
(a) Examples of languages being official languages in more than one EU Member State include:
• German
German is an o fficial language in Germany and Austria as well as in Luxembourg and Belgium. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an abs olute grounds objection based on t he meaning of German language wording must automatically be examined for all these countries.
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• Greek
Greek is an o fficial language not only in Greece but also in Cyprus. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of Greek language wording must automatically be examined for both these countries.
• English
English is an o fficial language in the United Kingdom, in Ireland and in Malta. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of English language wording must automatically be examined for all these countries.
• French
French is an official language not only in France but also in Belgium and Luxembourg. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of French language wording must automatically be examined for all these countries.
• Dutch
Dutch is an o fficial language not only in the Netherlands but also in Belgium. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of Dutch language wording must automatically be ex amined for both these countries.
• Swedish
Swedish is an official language not only in Sweden but also in Finland. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on t he meaning of Swedish language wording must automatically be examined for both of these countries.
(b) Understanding of a Member State language in Member States where it is not official
In addition to the Member States where the language of a sign’s wording is an official EU language, it must also be c onsidered whether a given official EU language is understood in other Member States where it is not official. This may be bec ause, depending on the goods and services claimed in the CTMA, the relevant public in that Member State have an elementary understanding of the language in question, or because the relevant public consists of specialists for whom certain technical terms in another EU Member State’s official language are understood. If so, then acquired distinctiveness must be proven for the relevant public in these other EU Member States, and not only the Member States where the language is official.
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By way of example, the GC has held that a very large proportion of European consumers and professionals have an elementary knowledge of English (judgment of 26/09/2012, T-301/09, ‘Citigate’, para. 41). Accordingly, depending on the relevant consumer of the goods and services in question and whether the sign consists of an elementary English word or not, acquired distinctiveness may also have to be assessed with respect to further Member States.
Moving from the general public to a more specialist public for goods and services, the GC has held that certain English terms in the medical field (judgment of 29/03/2012, T-242/11, ‘3D eXam’, para. 26), in technical fields (judgment of 09/03/2012, T-172/10, ‘Base-seal’, para. 54) and in financial matters (judgment of 26/09/2012, T-301/09, ‘Citigate’, para. 41) will be understood by the relevant professionals throughout the European Union as English is the commonly used professional language in these areas.
On the other hand, since the understanding of languages is not strictly limited by geographical borders, it may well be that, for historical, cultural or cross-border market reasons, certain (usually elementary) vocabulary of a given language may spread and could be widely understood by the general public in other Member States, particularly those with contiguous land borders. By way of example, German and French are commonly used in the Italian regions of Trentino-Alto Adige and Valle d’Aosta, respectively.
2.12.7 What has to be Proved
The Court of Justice has provided guidance on the conditions which should result in a finding that a t rade mark has acquired a di stinctive character through use: ‘If the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be s atisfied.’ (Judgment of 04/05/1999, C-0108/97 & C-0109/97, ‘Chiemsee’, para. 45 et seq.).
Accordingly, the evidence must demonstrate that a significant proportion of the relevant public for the claimed goods and services in the relevant territory see the trade mark as identifying the relevant goods or services of a specific undertaking, in other words, that the use made of the mark has created a link in the mind of the relevant public with a specific company’s goods or services, regardless of the fact that the wording at issue would lack the distinctiveness to make this link had such use not taken place.
With regards to the extent of market penetration and relevant public recognition a trade mark must achieve to hold that it has acquired distinctiveness through use, in that it has come to identify the goods and services of one undertaking as opposed to those of others for the relevant public, case-law does not prescribe fixed percentages of market recognition for the relevant public. Rather than using a fixed percentage of the relevant public in a given market, the evidence should rather show that a significant proportion of the public perceive the mark as identifying specific goods or services.
Finally, the evidence must relate to each of the goods and services claimed in the CTM application. After an initial absolute grounds objection under Article 7(1)(b), (c) or (d) CTMR, only the goods and s ervices claimed in the application for which acquired distinctiveness through use has been proven will be registerable.
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2.12.8 The evidence and its assessment
In establishing acquired distinctiveness, evidence of the following items may be taken into consideration: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant public who, because of the mark, identify goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (judgment of 04/05/1999, C-108/97 & C-0109/97, ‘Chiemsee’, para. 31; and judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, para. 32).
The Office is not bound to examine facts showing that the mark claimed has become distinctive through use within the meaning of Article 7(3) unless the applicant has pleaded them ( judgment of 12/12/2002, T-247/01, ‘Ecopy’, para. 47).
2.12.8.1 The kind of evidence that may be submitted
Examples of evidence which can serve to indicate some or all of the above factors which may show acquired distinctiveness include items such as sales brochures, catalogues, price lists, invoices, annual reports, turnover figures, advertising investment figures and r eports, advertisements (press cuttings, billboard posters, TV adverts) together with evidence as to their intensity and reach, as well as customer and / or market surveys.
Applicants should take great care to make sure that the evidence shows not only use of the mark applied-for but also that it is sufficient to identify the dates of such use and the specific geographical territory of use within the EU. Undated evidence will normally be insufficient to show that distinctiveness had been acquired before the filing date, and evidence of use outside the EU cannot show the required market recognition of the relevant public within the EU. Further, if evidence mixes materials concerning EU and non-EU territories, and does not permit the Office to identify the specific extent of EU- only use, it will be similarly devoid of probative value for the relevant EU public.
Article 78 CTMR contains a non-exhaustive list of means of giving or obtaining evidence in proceedings before the Office, which may serve as guidance to applicants.
2.12.8.2 Assessment of evidence as a whole
Since the Office must assess the evidence as a whole (R 0159/2005-4, ‘Metavit/MEXA- VIT C et al’, para. 37). It is not necessary that any one i tem of evidence alone is capable of proving the matter at issue. Such proof can result from an ov erall assessment of all items of evidence submitted (judgment of 07/06/2005, T-303/03, ‘Salvita’, para. 42; and decision of 08/03/2006, R 0358/2004-4, ‘MediQi/MEDICE’, para. 34). In order to assess the evidential value of a doc ument, regard should be given to its credibility. It is also necessary to take into account the origin of the document, the circumstances in which it came into being, the person to whom it was addressed and whether the document appears sound and reliable (judgment of 07/06/2005, T-303/03, ‘Salvita’, para. 42; and judgment of 16/12/2008, T-86/07, ‘DEITECH’ [Fig. Mark], paras 46 et seq.).
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2.12.8.3 Market share
The market share held by the trade mark may be relevant for assessing whether that mark has acquired distinctive character through use, to the extent that such market penetration might enable the Office to infer that the relevant public would recognise the mark as identifying the goods or services of a s pecific undertaking, and t hus distinguishing those goods or services from those of other undertakings.
The amount of publicity on the relevant market for the goods or services claimed (as represented by advertising investment in promoting a mark) may also be relevant for assessing whether the mark has acquired distinctive character through use (judgment of 22/06/2006, C-0025/05P, ‘Sweet wrapper’, paras 76 et seq.). However, many attempts to prove distinctiveness acquired through use fail because the applicant’s evidence is not sufficient to prove a link between the market share and advertising, on the one hand, and the consumer perception on the other.
2.12.8.4 Opinion polls and surveys
Opinion polls concerning the level of recognition of the trade mark by the relevant public on the market in question can, if conducted properly, constitute one of the most direct kinds of evidence, since they can show the actual perception of the relevant public. However, it is not an eas y matter to correctly formulate and i mplement an opinion poll so that it can be s een to be truly neutral and r epresentative. Leading questions, unrepresentative samples of the public, and undue editing of responses should be avoided, as these can undermine the probative value of such surveys.
The GC has found that in principle it is not inconceivable that a survey compiled some time before or after the filing date could contain useful indications, although it is clear that its evidential value is likely to vary depending on whether the period covered is close to or distant from the filing date or priority date of the trade mark application at issue. Furthermore, its evidential value depends on the survey method used (judgment of 12/07/2006, T-277/04, ‘Vitacoat’, paras 38-39).
Accordingly, any opinion poll evidence must be assessed carefully. It is important that the questions asked are relevant and not leading. The criteria for the selection of the interviewed public must be assessed carefully. The sample must be indicative of the entire relevant public and, accordingly, must be selected randomly.
Evidence from independent trade associations, consumer organisations and competitors should also be g iven weight. Evidence from suppliers or distributors should, generally, be given less weight, since it is less likely that their evidence will be from a third-party independent perspective. In this regard, the degree of independence of the latter will influence the weight to be given to the evidence by the Office (judgment of 28/10/2009 T-137/08, ‘Green/Yellow’).
2.12.8.5 Turnover and advertising
Information concerning turnover is one of the most readily available forms of evidence to companies. The same holds true with respect to advertising expenses.
These figures can have a significant impact on the assessment of the evidence, but in the great majority of cases are not sufficient alone to prove the issue of acquired
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distinctiveness of a trade mark through use. This is because turnover/advertising costs alone, without additional corroborative details, are frequently too general to allow specific conclusions to be drawn about the use of one particular trade mark: it must be possible to identify with precision the turnover/advertising figures and evidence relating to the mark applied for, and also the relevant goods and services must be identifiable.
Goods and services are often marketed under several trade marks, which renders it difficult to see what the relevant customer perception is of the applied-for mark alone, and turnover/advertising can often include sales or promotion of other trade marks, or of significantly different forms of the trade mark at issue (for example, figurative trade marks rather than word marks, or differing word elements in a figurative mark), or are too general to allow identification of the specific markets under consideration. Consequently, broadly consolidated turnover or advertising figures may not be sufficient to prove whether the relevant public perceives the trade mark at issue as a badge of origin or not.
Where figures for turnover or advertising are supplied, these should relate not only to the trade mark for which registration is sought, but also specifically to the goods or services covered by that mark. It is desirable that the turnover figures be segregated on an annual and market-by-market basis. The specific period(s) of use (including details as to when the use commenced) should be shown by the evidence, so that the Office is able to satisfy itself that the evidence proves that the trade mark acquired distinctiveness before the filing date.
2.12.8.6 Indirect evidence of use
The evidence may consist of or include Member State registrations obtained on t he basis of acquired distinctiveness.
The date to which the evidence filed at national level refers will usually be different from the filing date of the CTM application. These registrations may be taken into account, although they are not binding, when the examiner is able to assess the evidence which was submitted before the national IP office.
2.12.8.7 Extrapolation
Another important issue in the evaluation of evidence is whether the Office can extrapolate from selective evidence to draw broader conclusions. This concerns the extent to which evidence showing distinctiveness acquired through use in certain Member States can be used to make inferences with regard to the market situation in other Member States not covered by the evidence.
Extrapolating in this way to make broader inferences is of particular relevance to an enlarged European Union comprising many Member States, since it is very unlikely that a party will be able to provide evidence with respect to the whole European Union, but will rather tend to concentrate on some areas.
Extrapolation is possible where the market is homogenous and i f at least some evidence is submitted. The market conditions and t he consumer habits have to be comparable. Consequently, it is particularly important that the applicant submits data concerning the size of the market, its own market share, and if possible that of its main competitors, as well as its marketing expenses. Only if all data is comparable, may the
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Office extrapolate the results from one territory to another. For example, if the CTM is used in the entire relevant territory but the evidence only refers to a part of it, inference is possible if the circumstances are comparable. However, if the CTM is only used in part of the relevant territory (and the evidence refers to this), it will usually be difficult to extrapolate those facts to other parts of the territory.
2.12.8.8 Manner of use
The evidence should show examples of how the trade mark is used (brochures, packaging, samples of the goods, etc.). Use of a substantially different mark should not be given any weight.
It is sometimes the case that the use shown is of a sign which, while similar to the mark applied for, is in itself distinctive. In such cases the evidence should be disregarded. Acquired distinctiveness must be shown with respect to the sign applied for. However, in accordance with Article 15(1)(a) CTMR, minor amendments to the sign which do not change the distinctive character of the sign may be al lowed (decision of 15/01/2010, R 0735/2009-2, ‘PLAYNOW’; and dec ision of 09/02/2010, R 1291/2009-2, ‘EUROFLORIST’).
It is possible to prove acquired distinctiveness of a sign which has been used together with other trade marks (judgment of 28/10/2009,T-137/08, ‘Green/Yellow’, para. 27), provided that the relevant consumer attributes to the sign in question the identification function (judgment of 07/07/2005, C-353/03, ‘Have a br eak’; judgment of 30/09/2009 T-75/08, ‘!’ [Fig. Mark], para. 43; and judgment of 28/10/2009, T-137/08, ‘Green/Yellow’, para. 46).
2.12.8.9 Length of use
The evidence should indicate when use commenced and should also show that the use was continuous or indicate reasons if there are gaps in the period of use.
2.12.8.10 Post-filing date evidence
The evidence must show that prior to the filing date, the trade mark had acquired distinctive character through use.
However, evidence cannot be rejected merely because it postdates the filing date, since it may provide indications as to the situation before the filing date. Accordingly, such evidence must be assessed and due weight given to it.
As an example, a trade mark which enjoys a particularly relevant recognition on the market or a substantially relevant market share a few months after the filing date may have acquired distinctiveness also on the filing date.
2.12.9 Consequences of Acquired Distinctiveness
A trade mark registered in accordance with Article 7(3) CTMR enjoys the same protection as any other trade mark which was found inherently registrable upon examination.
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If the CTM application is accepted based on A rticle 7(3) CTMR, this information is published in the CTM Bulletin, using the INID code 521.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART C
OPPOSITION
SECTION 3
UNAUTHORISED FILING BY AGENTS OF THE TM PROPRIETOR
(ARTICLE 8(3) CTMR)
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Table of Contents
1 Preliminary Remarks................................................................................. 3 1.1 Origin of Article 8(3) CTMR........................................................................3 1.2 Purpose of Article 8(3) CTMR ....................................................................3
2 Entitlement of the Opponent .................................................................... 4
3 Scope of Application................................................................................. 5 3.1 Kinds of mark covered...............................................................................5 3.2 Origin of the earlier mark...........................................................................6
4 Conditions of Application ......................................................................... 7 4.1 Agent or representative relationship ........................................................7
4.1.1 Nature of the relationship ............................................................................... 7 4.1.2 Form of the agreement ................................................................................... 9 4.1.3 Territorial scope of the agreement ............................................................... 10 4.1.4 Relevant points in time ................................................................................. 11
4.2 Application in the agent’s name..............................................................12 4.3 Application without the proprietor’s consent.........................................14 4.4 Absence of justification on the part of the applicant.............................16 4.5 Applicability beyond identical signs – goods and services .................. 17
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1 Preliminary Remarks
According to Article 8(3) CTMR, upon oppos ition by the proprietor of an earlier trade mark, a trade mark shall not be registered:
where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.
1.1 Origin of Article 8(3) CTMR
Article 8(3) CTMR has its origin in Article 6septies of the Paris Convention which was introduced into the Convention by the Revision Conference of Lisbon in 1958. The protection it affords to trade mark proprietors consists of the right to prevent, cancel, or claim as their own unauthorised registrations of their marks by their agents or representatives, and to prohibit use thereof, where the agent or representative cannot justify its acts. Article 6septies reads as follows:
(1) If the agent or representative of the person who is the proprietor of the mark in one of the countries of the Union applies, without such proprietor’s authorisation, for the registration of the mark in his own name, in one or more countries of the Union, the proprietor shall be ent itled to oppose the registration applied for, or demand its cancellation or, if the law of the country so allows, the assignment in his favor of the said registration, unless such agent or representative justifies his action.
(2) The proprietor of the mark shall, subject to the provisions of paragraph (1), above, be entitled to oppose the use of his mark by his agent or representative if he has not authorised such use.
(3) Domestic legislation may provide an equitable time limit within which the proprietor of a mark must exercise the rights provided for in this Article.
Article 8(3) CTMR implements this provision only to the extent it gives the rightful proprietor the right to oppose applications filed without its authorisation. The other elements of Article 6septies of the Paris Convention are implemented by Articles 11, 18 and 53(1)(b) CTMR. Article 53(1)(b) CTMR gives the proprietor the right to cancel unauthorised registrations, whereas Articles 11 and 18 CTMR enable the proprietor to prohibit the use thereof and/or to request the transfer of the registration to its own name.
Since Article 41 CTMR provides that an opposition may only be based on the grounds provided for in Article 8, the additional rights conferred on the proprietor by the above provisions may not be invoked in opposition proceedings. Hence, any request by the opponent, either for the prohibition of use of the agent’s mark, or for an assignment of the application to itself, will be dismissed as inadmissible.
1.2 Purpose of Article 8(3) CTMR
The unauthorised filing of the proprietor’s trade mark by its agent or representative is contrary to the general obligation of trust underlying commercial co-operation
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agreements of this type. Such a misappropriation of the proprietor’s mark is particularly harmful to its commercial interests, as the applicant may exploit the knowledge and experience acquired during its business relationship with the proprietor and, thus, improperly benefit from the proprietor’s effort and investment (confirmed by judgment of 06/09/2006, T-6/05, ‘First Defense (I)’, para. 38 and subsequent references in, inter alia, Board of Appeal decisions of 16/05/2011, R 0085/2010-4, ‘Lingham’s’, para. 14, of 03/08/2010, R 1231/2009-2, ‘Berik’, para. 24, and of 30/09/2009, R 1547/2006-4, ‘Powerball’, para. 17).
Therefore, the purpose of Article 8(3) CTMR is to safeguard the legitimate interests of trade mark proprietors against the arbitrary appropriation of their trade marks, by granting them the right to prohibit registrations by agents or representatives that are applied for without their consent.
Article 8(3) CTMR is a manifestation of the principle that commercial transactions must be conducted in good faith. Article 52(1)(b) CTMR, which allows for the declaration of invalidity of a CTM on the ground that the applicant was acting in bad faith, is the general expression of this principle.
However, the protection granted by Article 8(3) CTMR is narrower than the one afforded by Article 52(1)(b) CTMR, because the applicability of Article 8(3) CTMR is subject to the fulfilment of a number of additional conditions laid down in this provision.
Consequently, the fact that the applicant filed the application in bad faith will not be in itself sufficient for the purposes of Article 8(3). Therefore, the opposition will be rejected if, despite being based exclusively on the bad faith of the applicant, it does not fulfil the necessary cumulative conditions required by Article 8(3) CTMR (set out in Section IV below). Such a filing may only be sanctioned under Article 52(1)(b) by requesting the cancellation of the mark after it has been registered.
2 Entitlement of the Opponent
According to Article 41(1)(b) CTMR, the right to file an oppos ition on t he grounds of Article 8(3) CTMR is reserved only for the proprietors of the earlier trade marks. This is in contrast both to Article 41(1)(a) CTMR, which stipulates that oppositions based on Article 8(1) CTMR or 8(5) CTMR may also be filed by authorised licensees, and to Article 41(1)(c) CTMR, which stipulates that for oppositions based on Article 8(4) CTMR the right to file an opposition is also extended to persons authorised by national law to exercise the relevant rights.
It follows that since the right to oppose a CTM application on the grounds of Article 8(3) CTMR belongs exclusively to the proprietors of the earlier trade marks, oppositions filed in the name of third persons, be they licensees or otherwise authorised by the relevant national laws, will be dismissed as inadmissible due to lack of entitlement.
Case No Comment
Decision of 30/09/2009, R 1547/2006-4 ‘Powerball’ (confirmed by judgment of 16/11/2011, T-484/09, ‘Powerball’)
The Board confirmed OD’s decision rejecting the opposition based on Article 8(3) CTMR to the extent that the opponent was not the proprietor of the earlier right but merely claimed to be the licensee of the company Nanosecond Technology Co. Ltd.
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Case No Comment
Decision of 14/06/2010, R 1795/2008-4 ‘ZAPPER-CLICK’ (on appeal, judgment of 03/10/2012, T-360/10, ‘ZAPPER-CLICK’)
The respondent failed to meet the requirement regarding ownership of the trade mark, namely of the ownership of the registered mark ZAPPER-CLICK. On appeal, the Court did not address this point.
Likewise, if the opponent fails to prove that it was the rightful proprietor of the mark when the opposition was filed, the opposition will be dismissed without any examination of its merits due to lack of substantiation. The evidence required in each case will depend on t he kind of right relied upon. The current proprietor may also invoke the rights of its predecessor in title if the agency/representation agreement was concluded between the previous proprietor and the applicant, but this needs to be duly substantiated by evidence.
3 Scope of Application
3.1 Kinds of mark covered
Article 8(3) CTMR applies to earlier ‘trade marks’ that have been appl ied for as Community trade marks without their proprietor’s consent. However, Article 8(2) CTMR does not apply to oppositions based on this ground, as it only enumerates the kinds of earlier rights on which an opposition may be entered under paragraphs (1) and (5) of the same article. Therefore, the kinds of rights on which an opposition based on Article 8(3) CTMR may be entered needs to be determined in more detail, both as regards their nature and their geographical origin.
In the absence of any restriction in Article 8(3) CTMR and i n view of the need to provide effective protection to the legitimate interests of the real proprietor, the term ‘trade marks’ should be interpreted broadly and must be understood as including pending applications, since there is nothing in this provision restricting its scope exclusively to registered trade marks.
For the same reasons unregistered marks or well-known marks within the meaning of Article 6bis of the Paris Convention also fall within the term ‘trade marks’ within the sense of Article 8(3) CTMR. Consequently, both registered and unr egistered trade marks are covered by this provision, to the extent of course that the law of the country of origin recognises rights of the latter kind.
In contrast, the express reference to ‘trade marks’ means that Article 8(3) CTMR does not apply to mere signs used in the course of trade, other than unregistered trade marks. Likewise, other kinds of intellectual property rights that could be used as a basis for an invalidity action cannot be invoked in the context of Article 8(3) CTMR either.
Case No Comment
Decision of 08/06/2010, B 1 461 948 ‘Gu Tong Tie Gao’
As Article 8(3) refers only to earlier trade marks, the evidence filed by the opponent with regard to rights in respect of copyright law in the territory of China was not relevant. This is another kind of intellectual property right which is excluded as a result of the express reference in the article to ‘trade marks’.
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It is clear from the wording of Article 8(3) CTMR that the trade mark on which the opposition is based must be earlier than the CTM application. Hence, the relevant point in time that should be t aken into account is the filing or priority date of the contested application. The rules according to which the priority should be determined depends on t he kind of right relied upon. If the earlier right has been acquired by registration, it is its priority date that should be taken into account for assessing whether it precedes the application, whereas if it is a us er-based right, it must have been acquired before the filing date of the CTM application. In the case of earlier well- known marks, the mark must have become well-known by the time the CTMA is applied for
Case No Comment
Decision of 21/12/2009, R 1621/2006-4, ‘D-Raintank’
The Board noted that the trade mark applications filed by the cancellation applicant in 2003 were all later than the filing date of the contested CTM and even later than its date of registration, and could not serve to establish that the cancellation applicant owned a ‘mark’ in the sense of a registered mark, be it anywhere in the world, for the sign at issue when the CTM was filed. It went on to affirm that ‘Obviously, nobody can base a claim on relative grounds for refusal or declaration of invalidity on rights which are younger than the contested CTM’ (para. 53).
Decision of 19/06/1999, B 3 436, ‘NORAXON’
The period to be t aken into account in order to determine the applicability of Article 8(3) CTMR starts on the date on which the CTM application in question came into force, i.e. 26/10/1995. This was the priority date in Germany, claimed by the applicant, granted by the Office and subsequently published, and not the filing date of the CTM application at the Office.
3.2 Origin of the earlier mark
As Article 8(2) CTMR does not apply to oppositions based on Article 8(3) CTMR, it cannot serve to define the territorial extent of protection granted by Article 8(3) CTMR. In the absence of any other reference in Article 8(3) CTMR to a ‘relevant territory’, it is immaterial whether the earlier trade mark rights reside in the European Union or not.
The practical importance of this provision lies precisely in the legal capacity it confers on holders of trade mark rights outside the European Union to defend these rights against fraudulent filings, since proprietors of trade mark rights within the European Union may rely on t he other grounds provided for in Article 8 CTMR to defend their earlier rights from such acts. Of course, Community trade marks or national marks, which provide a basis for opposition pursuant to Article 8 CTMR, also qualify as earlier marks that can be invoked as a basis for an Article 8(3) CTMR opposition.
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Case No Comment
Decision of 19/12/2006, B 715 146, ‘SQUIRT’
For the purpose of Article 8(3), it is immaterial where in the world the rights of proprietorship reside. Indeed, if in the Paris Convention the proprietorship in a Paris Union member country is required, in the absence of any reference in the CTMR to any territory in which such proprietorship shall exist, one must conclude that it is sufficient that the opponent complies with the requirements of Article 5 CTMR concerning ‘Persons who can be proprietors of Community trade marks’. In the present case, the opponent complied with such a requirement, as it was a company based in the USA.
Decision of 10/01/2011, 3253 C, ‘MUSASHI’ (fig. mark) Cancellation proceedings
The fact that the earlier registrations were from non-EU countries has no bearing on the invalidity ground at issue, since Article 8(2) CTMR, imposing this territorial condition, does not apply to proceedings based on Article 8(3) CTMR and cannot serve to define the territorial extent of protection granted by that article. ‘In the absence of any reference to a “relevant territory” in Article 8(3) CTMR, the Cancellation Division must presume that earlier trade marks registered in countries outside the EU may constitute the basis for an invalidity request based on A rticle 8(3) CTMR’ (para. 33).
Decision of 26/01/2012, R 1956/2010-1 ‘Heatstrip’ (appealed T-184/12)
The opposition was based on an unregistered mark protected in Australia, Canada, the United States and the United Kingdom. The Board considered that the evidence submitted by the opponent supports that it has been using the mark in Australia to a substantial extent (paras 3 and 34 respectively).
Decision of 19/05/2011, R 0085/2010-4 ‘Lingham’s’ (fig. mark)
The opposition was based on a r egistered mark protected in Malaysia. By filing the Malaysian registration certificate, it was proven that the opponent is the owner of the Malaysian trade mark.
4 Conditions of Application
Article 8(3) CTMR entitles trade mark proprietors to oppose the registration of their marks as Community trade marks, provided the following substantive cumulative requirements are met (see judgment of 13/04/2011, T-262/09, ‘First Defense’ (II), para. 61):
1. The applicant is or was an agent or representative of the proprietor of the mark; 2. The application is in the name of the agent or representative; 3. The application was filed without the proprietor’s consent; 4. The agent or representative fails to justify its acts; 5. The signs are identical or with slight modifications and t he goods and services
are identical or closely related.
4.1 Agent or representative relationship
4.1.1 Nature of the relationship
In view of the purpose of this provision, which is to safeguard the legal interests of trade mark proprietors against the misappropriation of their trade marks by their commercial associates, the terms ‘agent’ and ‘ representative’ should be interpreted broadly to cover all kinds of relationships based on any business arrangement (governed by written or oral contract) where one party is representing the interests of
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another, regardless of the nomen juris of the contractual relationship between the principal-proprietor and the CTM applicant (confirmed by judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), para. 64).
Therefore, it is sufficient for the purposes of Article 8(3) CTMR that there is some agreement of commercial co-operation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the trade mark proprietor. It follows that Article 8(3) CTMR may also extend, for example, to licensees of the proprietor, or to authorised distributors of the goods for which the mark in question is used. The burden of proof regarding the existence of an agent-principal relationship lies with the opponent (confirmed by the judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), paras 64 and 67).
Case No Comment
Decision of 29/02/2012, B 1 818 791, ‘HOVERCAM’ (fig. mark)
The Opposition Division found that the evidence submitted by the opponent showed that the relationship and its ultimate purpose constituted an example of commercial cooperation, through which a general duty of trust and l oyalty was imposed on the applicant and was the type of relationship envisioned under Article 8(3) CTMR (p. 5).
Given the variety of forms that commercial relationships may acquire in practice, a case-by-case approach is applied, focusing on whether the contractual link between the proprietor-opponent and t he applicant is only limited to a s eries of occasional transactions, or if, conversely, it is of such a duration and content to justify the application of Article 8(3) CTMR (as regards the points in time which are crucial for the relationship, see below, paragraph 4.1.4). The material question should be whether it was the co-operation with the proprietor that gave the applicant the possibility to get to know and appreciate the value of the mark and incited the applicant to subsequently try to register the mark in its own name.
Nevertheless, some kind of agency agreement has to exist between the parties. If the applicant acts completely independently, without having entered into any kind of fiduciary relationship with the proprietor, it cannot be considered an agent within the meaning of Article 8(3) CTMR (confirmed by judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), para. 64).
Case No Comment
Decision of 16/06/2011, 4103 C, ‘D’Angelico’ (fig. mark) Cancellation proceedings.
The Cancellation Division found that rather than an agent or representative relationship, at the time of filing the CTM the parties held parallel and independent rights to the marks in the USA and Japan. For these reasons, Article 8(3) CTMR was not applicable .
Case No Comment
Decision of 17/03/2000, B 26 759 ‘EAST SIDE MARIO’S’
A mere desire to establish a commercial relationship with the opponent cannot be considered as a concluded agreement between the parties regarding the use of the contested trade mark.
Therefore, a mere customer or a client of the proprietor cannot amount to an ‘agent or representative’ for the purposes of Article 8(3) CTMR, since such persons are under no special obligation of trust to the trade mark proprietor.
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Case No Comment
Judgment of 13/04/2011, T-262/09, ‘First Defense’ (II)
The opponent did not submit any evidence showing the existence of an agent-principal relationship with the applicant. The opponent provided invoices and order forms addressed to itself, on the basis of which the existence of a business agreement between the parties could, in other circumstances, be assumed. However, in the present case, the GC concluded that the evidence does not show that the applicant acted on behalf of the opponent, but merely that there was a seller-customer relationship which could have been established without a prior agreement between them. Such a relationship is not sufficient for Article 8(3) CTMR to be applicable (para. 67).
Decision of 26/06/2009, B 955 528 ‘FUSION’ (fig. mark)
The Office considered that the evidence on the kind of commercial link between the opponent and the applicant was inconclusive, that is, it could not be established whether the applicant was really an agent or representative or a m ere purchaser of the opponent’s goods. Accordingly, the Office was unable to hold that Article 8(3) CTMR applied.
It is irrelevant for the purposes of Article 8(3) CTMR whether an exclusive agreement exists between the parties, or just a simple, non-exclusive commercial relationship.
Article 8(3) CTMR also applies to analogous forms of business relationships that give rise to an obligation of trust and confidentiality between the trade mark proprietor and the professional, as is the case with legal practitioners and a ttorneys, consultants, trade mark agents etc. However, the legal representative or manager of the opponent’s company cannot be considered as an agent or representative within the meaning of Article 8(3) CTMR, given that such persons are not business associates of the opponent. The purpose of this provision is not to protect the proprietor from infringing acts coming from within its company. It may well be that such acts can be sanctioned under the general bad faith provision in Article 52(1)(b) CTMR.
Case No Comment
Decision of 20/03/2000, B 126 633 ‘Harpoon’ (fig. mark)
In this case, the applicant was a l egal representative of the opponent’s company. The opposition was rejected.
4.1.2 Form of the agreement
It is not necessary that the agreement between the parties assumes the form of a written contract. Of course, the existence of a formal agreement between the parties will be of great value in determining exactly what kind of relationship exists between them. As mentioned above, the title of such an agreement and the terminology chosen by the parties should not be taken as conclusive. What counts is the kind of commercial co-operation established in substance and not its formal description.
Even in cases where a written contract does not exist, it may still be possible to infer the existence of a commercial agreement of the kind required by Article 8(3) CTMR by reference to indirect indications and evidence, such as the commercial correspondence between the parties, invoices and purchase orders for goods sold to the agent, or credit notes and other banking instruments (always bearing in mind that a mere customer relationship is insufficient for Article 8(3) CTMR). Even dispute resolution agreements may be relevant to the extent they give sufficient information about the past relationship between the parties.
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Case No Comment
Decision of 07/07/2003, R 336/2001-2 ‘GORDON and SMITH’ (fig. mark)
The Opposition Division was correct to conclude that there was an agency relationship between the applicant and the opponents, on the basis of correspondence indicating that the two parties had a long and close commercial relationship. The applicant company acted as a distributor of the opponents’ goods (para. 19).
Furthermore, circumstances such as sales targets imposed on the applicant, or payment of royalties, or production of the goods covered by the mark under license or help in the setting up o f a l ocal distribution network, will be s trong indications in the direction of a commercial relationship of the type covered by Article 8(3) CTMR.
Case No Comment
Decision of 26/01/2012, R 1956/2010-1 ‘Heatstrip’ (appealed T-184/12)
The Board considered that a binding contractual relationship can be established by means of business letters exchanged by the parties, including by email. It thus examined the e-mail correspondence between the parties to determine what each party asked from the other (para. 50). The Board concluded that the emails showed that both parties were actively cooperating in the promotion of the product, by advertising it in brochures and exhibiting it at a fair, in order to create the best conditions for its successful marketing: the opponent supplied the material for these purposes and the applicant adapted it to the German market (para. 54). The Board thus concluded that the e-mail correspondence denoted an agreement of commercial co-operation between the parties of a kind that gives rise to a fiduciary relationship (para. 56).
On the other hand, the mere desire of the applicant to enter into a commercial relationship with the opponent cannot be considered as a concluded agreement between the parties. Prospective agents or representatives are not covered by Article 8(3) CTMR (see B 26 759 ‘East Side Mario’s’, quoted above).
4.1.3 Territorial scope of the agreement
Even though the letter of Article 8(3) CTMR does not refer to the territorial scope of the agreement between the trade mark proprietor and its agent or representative, an inherent limitation to relationships covering the EU or a part thereof must be read in this provision.
This is more in line with the economic considerations underlying Article 8(3), which are to prevent agents or representatives from unduly exploiting a commercial relationship covering a given territory, by filing an unauthorised application for the principal’s mark precisely in that territory, that is, in the territory where the applicant will be more able to benefit from the infrastructure and know-how it possesses as a result of its prior relationship with the proprietor. Therefore, as the filing prohibited by Article 8(3) CTMR is an application for the acquisition of trade mark rights in the EU, the agreement must also concern the same territory.
Hence, a purposive interpretation must be followed in this regard, according to which Article 8(3) CTMR only applies to agreements which cover the territory of the EU, whether in whole or in part. In practice, this means that world-wide or pan-European agreements are covered by this provision, as are agreements extending to one or more
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Member States, or only covering part of their territory, irrespective of whether they also include third territories. Conversely, agreements exclusively applying to third territories are not covered.
4.1.4 Relevant points in time
The agent-representative relationship must have been established prior to the filing date of the CTM application. Therefore, it is immaterial whether after that time the applicant entered negotiations with the opponent, or made unilateral proposals with the purpose of becoming a representative or agent of the latter.
Case No Comment
Decision of 19/05/2011, R 0085/2010-4 ‘Lingham’s’
The opponent granted the applicant a special power of attorney (PoA), consenting to the applicant‘s filing of trade mark applications. Subsequent to this PoA, the applicant filed a CTM. After the filing, the opponent revoked the PoA and filed the opposition.
The Board considered that the relevant point in time is the filing date. At that moment, the owner’s consent was present. The revocation had effects ex nunc (and does not affect the validity of actions performed under the PoA) and not ex tunc (as if the PoA had never existed) (para. 24).
Judgment of 06/09/2006, T-6/05 ‘FIRST DEFENSE’ (I)
The Board of Appeal ought to have examined whether, on the day of the application for registration of the mark, the intervener was still bound by the consent (para. 50).
However, even if the agreement between the parties was formally concluded after the filing date of the application, it may still be possible to deduce from the evidence that the parties were already in some form of commercial co-operation before the signature of the relevant contract and that the applicant was already acting as the opponent’s agent, representative, distributor or licensee.
On the other hand, the agreement between the parties does not have to be technically still in force when the application is filed. The reference to a filing made by an ‘agent or representative’ should not be understood as a formal requirement that must be pr esent at the time the CTM application is filed. Article 8(3) also applies to agreements that expired before the filing date of the CTM application, provided that the time that has lapsed is of such duration that it can be reasonably assumed that the obligation of trust and confidentiality was still present when the CTM application was filed (confirmed by judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), para. 65).
Article 8(3) CTMR and Article 6septies of the Paris Convention do not protect a trade mark proprietor who is careless and makes no efforts to secure trade mark protection on its own. Post-contractual fiduciary obligations mean that none o f the parties may use the termination of an agreement as a pretext for getting rid of its obligations, for example by terminating an agreement and immediately afterwards filing a trade mark. The rationale of Article 8(3) CTMR and A rticle 6septies of the Paris Convention is to prevent a situation where a representative in country A of a principal who owns trade marks in country B, and who is meant to market the trade-marked goods and observe the interests of the latter in country A, uses the filing of a trade mark application in country A as a w eapon against the principal, for example to force the principal to
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continue with the representative and to prevent him from entering the market in country A. This rationale likewise applies if an agr eement exists but the representative terminates it to take advantage and file a trade mark for the same reasons. However, this does not create absolute rights for the principal to obtain trade mark protection in other countries. The mere fact that the principal holds a trade mark in country B does not give him an abs olute right to obtain trade marks in all other countries; the trade marks registered in different countries are in principle independent from each other and may have different proprietors, in accordance with Article 6(3) of the Paris Convention. Article 6septies of the Paris Convention is an exception to this principle and only to the extent that the contractual or de facto obligations of the parties involved justify this. Only to that extent is it justified that the ensuing CTM would ‘belong’ to the principal under Article 18 CTMR (decision of 19/11/2007, R 0073/2006-4 ‘Porter’, para. 26).
This should be assessed on a case-by-case basis, and the decisive factor should be whether it is still possible for the applicant to take commercial advantage of its expired relationship with the trade mark proprietor by exploiting the know-how and contacts it acquired because of its position.
Case No Comment
Decision of 19/11/2007, R 0073/2006-4 ‘Porter’
The contested application was not filed during the validity of the agreements between Gallant (owner of shares in Porter, the applicant) and Yoshida (opponent) which allowed Gallant to file a CTM, but nearly one year after the termination of the last agreement (para. 25). The Board noted that post-termination fiduciary obligations are not meant to last forever but for a certain transitional period after the termination of the agreement in which the parties may re-define their commercial strategies and concluded, inter alia, that any post-contractual relationship between Yoshida and Gallant was phased out at the time of the filing of the CTM (para. 27).
Decision of 21/02/2002, B 167 926 ‘AZONIC’
In this case, less than three months after the expiry of a contract relationship, such as a license agreement, is a period within which it was still considered that the fiduciary relationship between the parties exists and imposes on the applicant a duty of loyalty and confidence.
4.2 Application in the agent’s name
According to Article 8(3) CTMR, the trade mark applied for shall not be r egistered where the agent or representative applies for registration thereof in its own name. It will usually be eas y to assess whether this requirement has been fulfilled, by comparing the name of the applicant with that of the person appearing in the evidence as the agent or representative of the proprietor.
However, there may be cases where the agent or representative will try to circumvent this provision by arranging for the application to be filed by a third person, whom it either controls, or with whom it has entered into some form of understanding to that effect. In such cases adopting a more flexible approach is justified. Therefore, if it is clear that because of the nature of the relationship between the person filing the application and the agent, the situation is effectively the same as if the application had been filed by the agent himself, it is still possible to apply Article 8(3) CTMR, notwithstanding the apparent discrepancy between the applicant’s name and the name of the proprietor’s agent.
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Such a c ase could arise if the application is filed not in the name of the agent’s company, but in the name of a natural person that shares the same economic interests as the agent, as for example its president, vice-president or legal representative. Given that in this case the agent or representative could still benefit from such a filing, it should be considered that the natural person is bound by the same limitations as the company.
Case No Comment
Decision of 21/02/2002, B 167 926 ‘AZONIC’
The Opposition Division considered that, even though the CTM application was applied for in the name of the natural person Mr Costahaude instead of directly in the name of the legal person STYLE’N USA, INC., the situation was effectively the same as if it had been filed in the name of the legal person.
Decision of 28/05/2003, B 413 890 ‘CELLFOOD’
If it is clear that because of the nature of the relationship between the person filing the application and t he agent, the situation is effectively the same as if the application had been filed by the agent himself, it is still possible to apply Article 8(3) CTMR, notwithstanding the apparent discrepancy between the applicant’s name and the name of the owner’s agent.
Moreover, if the person filing the contested application had also signed the agency agreement on behalf of the company, this would have to be c onsidered a s trong argument in favour of the application of Article 8(3) CTMR, since in such a case the applicant cannot possibly deny direct knowledge of the relevant prohibitions. Similarly, if an agency agreement contained a clause holding the management of the company personally responsible for the observance of the contractual obligations undertaken by the agent, this would also have to be considered a further indication that the filing of the application is covered by the prohibition of Article 8(3) CTMR.
Case No Comment
Decision of 21/02/2002, B 167 926 ‘AZONIC’
Bearing in mind the position of the authorised representative of the Licensee Company, the Office considered that despite the fact that the CTM application was made in the name of this natural person, the situation was effectively the same as if it had been filed by the legal person, i.e. the Licensee Company. The CTM application in the name of the former could have a direct effect on the latter due to their professional relationship, and, furthermore, the President or Vice-President of a company should be considered obliged by the same limitations as their company, or at least temporarily obliged in the case of the expiry of their professional relationship.
This position is strengthened by the fact that in the present case there is a clause in the renewed agreement that establishes the licensor’s immediate termination right in the case that ‘… control of STYLE’N (the licensee) is transferred and the management thereby changed’, which shows that the management of the licensee company was also bound by the terms of the agreement.
A similar case arises where the agent or the representative and t he applicant are distinct legal entities, but the evidence shows that they are controlled, managed or run by the same natural person. For the reasons given above it is appropriate to ‘lift the corporate veil’ and apply Article 8(3) also to these cases.
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4.3 Application without the proprietor’s consent
Even though the absence of the proprietor’s consent is a necessary condition for the application of Article 8(3), the opponent does not have to submit evidence which shows that the agent was not permitted to file the CTM application. A mere statement that the filing was made without its consent is generally sufficient. This is because the opponent cannot be ex pected to prove a ‘ negative’ fact, such as the absence of consent. In these cases the burden of proof is reversed and it is up to the applicant to prove that the filing was authorised, or to give some other justification for its acts.
In view of the need to provide effective protection to the legitimate proprietor from unauthorised acts of its agents, the application of Article 8(3) should be denied only where the proprietor’s consent is sufficiently clear, specific and unconditional (see, for example, judgment of 06/09/2006, T-6/05, ‘First Defense’ (I), para. 40).
Therefore, even if the proprietor has expressly authorised the filing of the CTM application, its consent cannot be considered sufficiently clear if it has not also explicitly specified that the application may be in the name of the agent.
Case No Comment
Decision of 07/07/2003, R 336/2001-2 ‘GORDON and SMITH’ (fig. mark)
‘In view of its serious effect in extinguishing the exclusive rights of the proprietors of the trade marks in issue in the main proceedings (rights which enable them to control the initial marketing in the EEA), consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated’ (para. 18).
Likewise, even if the proprietor has expressly authorised the filing of a CTM application, its consent cannot be considered specific enough for the purposes of Article 8(3) CTMR if there is no indication of the specific signs which the applicant has permission to file as Community trade marks.
It will be generally easier to assess whether the filing was authorised by the proprietor where the conditions under which an agent or representative may apply for a CTM application are adequately regulated by contract, or are given by other kinds of direct evidence (letters, written representations etc.). In most cases, such evidence will be sufficient to show whether the proprietor has given its express consent, or if the applicant has exceeded the limits of its authorisation.
In other cases a contract will either not exist or it will be inadequate on the subject. Although the wording of Article 8(3) is in principle broad enough to include cases of tacit or implied consent, such consent should only be i nferred if the evidence is sufficiently clear as to the intentions of the proprietor. If the evidence is completely silent as to the existence of an ex press or implied authorisation, lack of consent should be generally presumed.
Notwithstanding indirect indications and evidence pointing to implied consent, any ambiguity or doubt should be interpreted in favour of the opponent, as it will usually be q uite difficult to assess whether such consent is sufficiently clear and unequivocal.
For example, the mere fact that the proprietor tolerated unauthorised applications in the name of the agent in third jurisdictions cannot alone create legitimate expectations on
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the part of the applicant that the proprietor will not object to the filing of a CTM application either.
Case No Comment
Decision of 31/01/2001, B 140 006 ‘GORDON and SMITH’ (fig. mark) (confirmed by decision of 07/07/2003, R 336/2001-2)
The mere fact that the opponents failed to immediately oppose the applicant’s action to register the trade mark after they received notice of the fact did not constitute consent.
The fact that the proprietor tolerates conduct outside the boundaries of a contract (such as use of the sign) cannot lead to the conclusion that filing the CTM did not breach the established fiduciary duty if consent is not clear, specific and unconditional.
Case No Comment
Joined cases T-537/10 and T-538/10, ‘FAGUMIT’
The applicant (the CTM owner in cancellation proceedings) focused her line of argument on the consent allegedly granted by the proprietor of the mark. The Court held (like the Board of Appeal) that the consent for the purposes of the registration of the mark in the name of the representative or agent must be clear, specific and unconditional (paras 22-23).
The document relied upon by the CTM owner does not show consent within the meaning of Article 8(3) CTMR (para. 28). The CTM owner was not mentioned in the document and it did not refer to the possibility of registration of the sign as a t rade mark. The CTM owner cannot rely on the fact that the cancellation applicant did not object to the use of the sign by companies other than those referred to in the document. Use of the marks occurred during the course of marketing the goods produced by the cancellation applicant. However, such use is the logical consequence of the cooperation between the cancellation applicant and the distributors of its goods and does not show any abandonment of the sign, which would enable anyone to make an application for the registration of that sign – or its dominant element – as a CTM (para. 27)
Even where consent of the proprietor has been deemed to be clear, specific and unconditional, it will be a q uestion of fact to determine if such consent survives a change of proprietor by way of an asset sale.
Case No Comment
Judgment of 06/09/2006, T-6/05, ‘FIRST DEFENSE’ (I)
The General Court remitted a case of this nature back to the Board of Appeal in order to determine whether the consent obtained by the CTM applicant had survived the purchase of the assets of the former trade mark holder and whether, on the day of the application for registration of the mark, the new holder of the trade mark in the USA (the opponent) was still bound by that consent.
If the opponent was no l onger bound by the consent, the GC indicated that the Board ought then to determine whether the applicant had a valid justification which could offset the lack of such consent.
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4.4 Absence of justification on the part of the applicant
As mentioned above, since it is not possible for the opponent to prove the absence of consent, the burden of proof is reversed and it is up to the applicant to show that the filing of the application was authorised by the proprietor. Although Article 8(3) CTMR treats the lack of the proprietor’s consent and the absence of a valid justification on the part of the applicant as two separate conditions, these requirements largely overlap to the extent that if the applicant establishes that the filing of the application was based on some agreement or understanding to this effect, then it will have also provided a valid justification for its acts.
In addition, the applicant may invoke any other kind of circumstance showing that it was justified to file the CTM application in its own name. However, in the absence of evidence of direct consent, only exceptional reasons are accepted as valid justifications, in view of the need to avoid a v iolation of the proprietor’s legitimate interests without sufficient indications that its intention was to allow the agent to file the application in its own name.
For example, it could be possible to infer that the proprietor has tacitly consented to the filing of the application if it does not react within a r easonable period of time after having been i nformed by the applicant that it intends to apply for a C TM in its own name. However, even in such a c ase it will not be pos sible to assume that the application has been authorised by the proprietor if the agent had not made it sufficiently clear to the proprietor in advance in whose name it would file the application.
Another case of valid justification could be if the proprietor causes its agent to believe that it has abandoned the mark, or that it is not interested in obtaining or maintaining any rights in the territory concerned, for example by suspending the use of the mark over a relatively long period of time.
The fact that the proprietor does not want to spend money on a registration of its trade mark does not give the agent a right to act on its own initiative, as the proprietor might still have an interest in using its trade mark in the territory although it is not registered. Such a bus iness decision cannot be t aken in itself as a s ign that the proprietor has given up the rights in its mark.
Justifications exclusively linked to applicant’s economic interests, such as the need to protect its investment in setting up a local distribution network and promoting the mark in the relevant territory, cannot be considered valid for the purposes of Article 8(3) CTMR.
Nor can the applicant successfully argue in its defence that it is entitled to some financial remuneration for its efforts and ex penditure in building-up goodwill for the mark. Even if such remuneration were well deserved or is expressly stipulated in the agency agreement, the applicant cannot use the registration of the mark in its own name as a means of extracting money from the opponent or in lieu of financial compensation, but should try to settle its dispute with the proprietor either by way of agreement or by suing for damages.
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Case No Comment
Decision of 04/10/2011, 4443 C, ‘CELLO’
As to the justificatory argument that the CTM application was filed in order to protect the goodwill of the mark in the EU, which had been established solely as a result of its trading activities, the Cancellation Division considered that the fact that a di stributor, exclusive or otherwise, develops the goodwill of the trade mark of the owner in its allocated territory forms part of the usual duties of a distributor and cannot constitute, in itself and in the absence of other circumstances, a valid justification for the appropriation of the owner’s mark by the distributor.
Decision of 10/01/2011, 3253 C, ‘MUSASHI’ (fig. mark)
As regards justification concerning economic claims of the party filing the CTM and its arguments that it is entitled to some financial remuneration for permitting the sign to enjoy protection at EU level, and that it could be transferred to the Cancellation applicant, it was held that this could not be valid justification within the meaning of Article 8(3). ‘Even if remuneration were well deserved, the CTM proprietor cannot use the registration of a mark in its own name as a means of receiving payment’ (from the Cancellation applicant) (para. 47).
Decision of 07/07/2003, R 336/2001-2 ‘GORDON and SMITH’ (fig. mark)
An act which compromises the interests of the trade mark proprietor, such as the filing of a t rade mark application in the agent’s or a representative’s name without the proprietor’s consent, and is driven solely by an intention to safeguard the agent’s or a representative’s own interests, is not considered justifiable for the purposes of Article 8(3) CTMR. The same applies to the applicant’s second argument, that is, that it was justified in doing so because it bore the registration costs. The interests of the trade mark proprietor cannot be subordinate to an agent’s or a representative’s financial expenses. The fact that an opponent might be unwilling to incur any financial expenses to register a t rade mark does not automatically grant a right to the agent or representative to proceed with the registration of the trade mark in its own name. This would constitute a violation of the agent’s or representative’s duty of trust and loyalty towards the trade mark proprietor (para. 24).
4.5 Applicability beyond identical signs – goods and services
Article 8(3) CTMR provides that a CTM application will not be registered where ‘an agent or representative of the proprietor of the mark applies for registration thereof in his own name’. Such an explicit reference to the principal’s trade mark gives the prima facie impression that the CTM applied for must be the same as the earlier mark.
Hence, a literal interpretation of Article 8(3) CTMR would lead to the conclusion that its application is only possible where the agent or representative intends to register a mark identical to that of the proprietor.
Moreover, the text of Article 8(3) CTMR does not refer to the goods and services for which the application has been filed and for which the earlier mark is protected and, thus, gives no guidance as to what the exact relationship between the respective goods and services should be for the article to apply.
However, applying Article 8(3) CTMR exclusively to identical signs for identical goods or services would render this provision largely ineffective, as it would allow the applicant to escape its consequences by merely making slight modifications either to the earlier mark or to the specification of goods and s ervices. In such a c ase, the proprietor’s interests would be seriously prejudiced, especially if the earlier mark were already in use and the variations made by the applicant were not significant enough to
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rule out confusion. What is more, if the application were allowed to proceed to registration despite its similarity to the earlier mark, the applicant would be in a position to prevent any subsequent registration and/or use of the earlier mark by the original proprietor within the EU, by relying on A rticles 8(1) or 9(1) CTMR, or the equivalent provisions of national law.
To sum up, in view of the need to effectively protect the legitimate proprietor against unfair practices by its representatives, a restrictive interpretation of Article 8(3) CTMR must be av oided. Therefore, Article 8(3) CTMR must be appl ied not only where the respective marks are identical, but also:
• when the sign applied for by the representative or agent essentially reproduces the earlier mark with slight modifications, additions or deletions, which do no t substantially affect its distinctiveness; and
• when the goods and services in conflict are closely related or equivalent in commercial terms. In other words, what finally counts is that the goods or services of the applicant may be perceived by the public as ‘authorised’ products, the quality of which is still somehow ‘guaranteed’ by the opponent, and which it would have been reasonable for the opponent to market in view of the goods and services protected under the earlier mark.
The following are examples of conflicting signs where the Office considered that Article 8(3) CTMR is applicable:
Earlier mark CTM application Case No
FIRST DEFENSE
(2 US earlier rights)
Decision of 04/05/2009, R 0493/2002-4, ‘First Defense’
(II)
Judgment of 13/04/2011, T-262/09, ‘FIRST DEFENSE’ (II)
Decision of 03/05/2012, R 1642/2011-2 ‘Maritime Acopafi’
(fig. mark)
BERIK (word mark) (2 earlier rights)
Decision of 03/08/2010, R 1367/2009-2 ‘BERIK DESIGN’
(fig. mark)
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Earlier mark CTM application Case No
BERIK (word mark) (2 earlier rights)
Decision of 03/08/2010, R 1231/2009-2 ‘BERIK’ (fig.
mark)
NORAXON Decision of 19/06/1999, B 3 436‘NORAXON’
APEX Decisions of 26/09/2001,
B 150 955 and B 170 789, ‘APEX’
The following are examples of goods and services in conflict where the Office considered that Article 8(3) CTMR is applicable:
Case No Comment
Decision of 04/05/2009, R 0493/2002-4 – ‘FIRST DEFENSE’ (II)
The Board held that the contested disabling sprays in Class 13 were covered by the proprietor’s non-explosive defense weapons in the nature of an organic irritant packaged in an aerosol (or pressurized spray) canister.
However, it considered that protection did not extend to the contested side arms, ammunition, projectiles. These are goods for which commercial activity from the proprietor cannot be reasonably expected. Side arms and a mmunition are far too different from pepper sprays to be covered by Article 8(3) CTMR given that the opponent markets a very specific product (paras 19 to 24).
In its judgment of 13/04/2011, T-262/09, the GC did not examine the arguments of the parties regarding the similarity of the goods.
Decision of 03/05/2012, R 1642/2011-2 ‘Maritime Acopafi’ (fig. mark)
The Board held that the wording suggests only if the mark applied for is essentially identical to the earlier right, in terms of both signs and goods/services, it can be prohibited. On the other hand, a too- literal reading of that provision would fatally weaken its utility by allowing fraudulent agents to register their principals’ marks by merely making minor modifications or unimportant additions to them. Despite these considerations, however, the provision must apply only where the signs and the goods/services are essentially the same, or largely equivalent (para. 18).
In view of this, the Board upheld OD’s findings that the earlier mark’s use for installation of marine accommodation was fundamentally different from the applicant’s services in Class 42 (scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software).
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Case No Comment
Decision of 03/08/2010, R 1367/2009-2 ‘Berik’ (fig. mark)
The Board agreed with the Cancellation Division that the cancellation applicant’s goods in Class 25 could not be considered closely related or equivalent in commercial terms to the applicant’s goods in Class 18, leather or imitation leather. The latter are raw materials for producers of goods made of leather or imitation of leather and, thus, target a different public and have different distribution channels from the goods covered by the cancellation applicant’s marks (paras 30 and 31).
It further agreed with the Cancellation Division that the cancellation applicant’s goods in Class 25 could not be considered closely related or equivalent in commercial terms to the applicant’s goods in Class 16 even if, for example, some of the contested goods could be u sed as merchandising items for a l ine of clothing (paras 28-30).
Decision of 27/02/2012, B 1 302 530 ‘GEOWEB / NEOWEB’
‘In view of the necessity to effectively protect the legitimate proprietor against unfair practices by its representatives, a restrictive interpretation of Article 8(3) CTMR must be a voided. Therefore, this provision must be applied not only where the respective marks are identical, but also where the mark applied for by the representative or agent essentially reproduces the earlier mark with slight modifications, additions or deletions, which do not substantially affect its distinctiveness.
In line with the aforementioned reasoning, Article 8(3) CTMR does not only cover cases where the respective lists of goods and services are strictly identical, but it also applies where the goods and services in conflict are closely related or equivalent in commercial terms. In other words, what finally counts is that the goods or services of the applicant may be perceived by the public as ‘authorised’ products, the quality of which is still somehow “guaranteed” by the opponent’ (p. 20).
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART C
OPPOSITION
SECTION 4
RIGHTS UNDER ARTICLE 8(4) CTMR
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Table of Contents
1 Introduction................................................................................................ 6
2 Structure of Article 8(4) CTMR ................................................................. 6
3 Conditions of Article 8(4) CTMR............................................................... 8 3.1 Direct right conferred on the opponent ....................................................8 3.2 Types of rights falling under Article 8(4) CTMR .......................................9
3.2.1 Introduction........................................................................................9 3.2.2 Non-registered trade marks ...............................................................9 3.2.3 Other business identifiers ................................................................10
3.2.3.1 Trade names .............................................................................................11 3.2.3.2 Corporate names.......................................................................................11 3.2.3.3 Domain names ..........................................................................................12 3.2.3.4 Titles..........................................................................................................12
3.2.4 Geographical indications .................................................................13 3.2.4.1 Earlier rights deriving from EU legislation..................................................13 3.2.4.2 Earlier rights deriving from the laws of Member States .............................14 3.2.4.3 Earlier rights deriving from international agreements ................................15 3.2.4.4. Scope of protection of PGIs.......................................................................16
3.3 Use requirements .....................................................................................18 3.3.1 National Standard............................................................................18 3.3.2 European Standard – use in the course of trade of more than mere
local significance .............................................................................18 3.3.2.1 Use in the course of trade .........................................................................19 3.3.2.2 Significance of the use ..............................................................................22
3.4 Earlier right ...............................................................................................27 3.5 Scope of protection..................................................................................27
4 Evidence and Standard of Proof ............................................................ 28
TABLE ON NATIONAL RIGHTS THAT CONSTITUTE ‘EARLIER RIGHTS’ IN THE SENSE OF ARTICLE 8(4) CTMR ..................................................... 31
1 Benelux..................................................................................................... 33 1.1 Unregistered trade marks ........................................................................33 1.2 Other signs used in the course of trade .................................................33
1.2.1 Belgium ...........................................................................................33 1.2.2 Luxembourg ....................................................................................33 1.2.3 Netherlands .....................................................................................34
2 Bulgaria .................................................................................................... 34 2.1 Unregistered trade marks ........................................................................34 2.2 Other signs used in the course of trade .................................................35
3 Czech Republic........................................................................................ 35 3.1 Unregistered trade marks ........................................................................35
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3.2 Other signs used in the course of trade .................................................36
4 Denmark ................................................................................................... 36 4.1 Unregistered trade marks ........................................................................36 4.2 Other signs used in the course of trade .................................................37
5 Germany................................................................................................... 37 5.1 Unregistered trade marks ........................................................................37 5.2 Other signs used in the course of trade .................................................38
6 Estonia...................................................................................................... 39 6.1 Unregistered trade marks ........................................................................39 6.2 Other signs used in the course of trade .................................................39
7 Ireland....................................................................................................... 40 7.1 Unregistered trade marks ........................................................................40 7.2 Other signs used in the course of trade .................................................41
8 Greece ...................................................................................................... 41 8.1 Unregistered trade marks ........................................................................41 8.2 Other signs used in the course of trade .................................................42
9 Spain......................................................................................................... 43 9.1 Unregistered trade marks ........................................................................43 9.2 Other signs used in the course of trade .................................................43
10 France....................................................................................................... 44 10.1 Unregistered trade marks ........................................................................44 10.2 Other signs used in the course of trade .................................................44
11 Croatia ...................................................................................................... 45 11.1 Unregistered trade marks ........................................................................45 11.2 Other signs used in the course of trade .................................................46
12 Italy ........................................................................................................... 46 12.1 Unregistered trade marks ........................................................................46 12.2 Other signs used in the course of trade .................................................47
13 Cyprus ...................................................................................................... 47 13.1 Unregistered trade marks ........................................................................47
14 Latvia ........................................................................................................ 48 14.1 Unregistered trade marks ........................................................................48 14.2 Other signs used in the course of trade .................................................48
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15 Lithuania................................................................................................... 49 15.1 Unregistered trade marks ........................................................................49 15.2 Other signs used in the course of trade .................................................49
16 Hungary.................................................................................................... 49 16.1 Unregistered trade marks ........................................................................49
17 Malta ......................................................................................................... 50 17.1 Unregistered trade marks ........................................................................50 17.2 Other signs used in the course of trade .................................................50
18 Austria ...................................................................................................... 50 18.1 Unregistered trade marks ........................................................................50 18.2 Other signs used in the course of trade .................................................51
19 Poland....................................................................................................... 52 19.1 Unregistered trade marks ........................................................................52 19.2 Other signs used in the course of trade .................................................53
20 Portugal .................................................................................................... 53 20.1 Unregistered trade marks ........................................................................53 20.2 Other signs used in the course of trade .................................................54
21 Romania ................................................................................................... 55 21.1 Unregistered trade marks ........................................................................55 21.2 Other signs used in the course of trade .................................................55
22 Slovenia.................................................................................................... 56 22.1 Unregistered trade marks ........................................................................56 22.2 Other signs used in the course of trade .................................................56
23 Slovakia .................................................................................................... 56 23.1 Unregistered trade marks ........................................................................56 23.2 Other signs used in the course of trade .................................................57
24 Finland...................................................................................................... 57 24.1 Unregistered trade marks ........................................................................57 24.2 Other signs used in the course of trade .................................................58
25 Sweden..................................................................................................... 59 25.1 Unregistered trade marks ........................................................................59 25.2 Other signs used in the course of trade .................................................59
26 United Kingdom....................................................................................... 60
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26.1 Unregistered trade marks ........................................................................60 26.2 Other signs used in the course of trade .................................................60
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1 Introduction
The relationship between the Community Trade Mark system and national law is characterised by the principle of coexistence. This means that both the Community Trade Mark system and the national laws exist and oper ate side by side. The same sign can be protected by the same proprietor as a CTM and as a national trade mark in one (or all) of the Member States. The principle of coexistence further implies that the CTM system actively acknowledges the relevance of national rights and their scope of protection. Where conflicts arise between CTMs and na tional trade marks or other national rights, there is no hierarchy determining that one system prevails over the other; instead, these conflicts apply the principle of priority. If the respective requirements are met, earlier national trade marks or other earlier national rights can prevent registration of, or invalidate a later CTM.
Although the TM Directive and its subsequent implementation have harmonised the laws relating to registered trade marks, no such harmonisation has taken place on an EU scale with regard to non-registered trade marks nor for most other earlier rights of a similar nature. These un-harmonised rights remain completely governed by national laws.
The types of earlier rights which can be relied upon in proceedings before the Office are specified in the CTMR under:
• Article 8(4) CTMR, which restricts the scope of protection in opposition proceedings to earlier non-registered trade marks and ot her signs used i n the course of trade of more than mere local significance;
• Article 53(2)(a)-(d) CTMR, which broadens the scope of possible earlier rights to be relied upon f or invalidity proceedings beyond those of Article 8(4) CTMR to also cover other earlier rights, in particular the right to a na me, the right of personal portrayal, a copyright and an industrial property right;
• Article 111 CTMR, which complements the range of earlier rights to be relied upon in opposition proceedings by providing that rights which are only valid in particular localities and, thus, do not meet the ‘more than mere local significance’ criterion of Article 8(4) CTMR, can oppose use of a CTM even though these local rights cannot impede its registration.
This part of the Guidelines only deals with the earlier rights falling under Article 8(4) CTMR.
2 Structure of Article 8(4) CTMR
Article 8(4) CTMR reads:
Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign:
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(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Article 8(4) CTMR means that in addition to the earlier trade marks specified in Article 8(2) CTMR, non-registered trade marks and other signs protected at Member State level used in the course of trade as ‘business identifiers’ of more than mere local significance can be invoked in an opposition provided that such rights confer on their proprietors the right to prohibit the use of a subsequent trade mark.
Article 8(4) CTMR does not expressly or exhaustively enumerate the particular rights which can be invoked under this provision, but rather outlines a broad spectrum of rights that might serve as basis for an opposition against a CTM application. Therefore, Article 8(4) CTMR can be regarded as a general ‘catch-all-provision’ for oppositions based on non-registered trade marks and other signs used in the course of trade.
Nevertheless, the broad scope of earlier rights to be r elied upon i n opposition proceedings under Article 8(4) CTMR is subject to a number of restrictive conditions:, these rights must confer an entitlement to the proprietor to exercise them, they must be of more than local significance, they must be protected by the national law governing them against the use of the subsequent trade mark and the rights must have been acquired prior to the CTMA under the law of the Member State governing that sign.
The ‘more than mere local significance’ requirement aims at restricting the number of potential opposing non-registered rights, thus avoiding the risk of a collapse or paralysis of the CTM system by being flooded with opposing, relatively insignificant rights.
The ‘national protection’ requirement is deemed necessary as the non-registered national rights are not easily identifiable and their protection is not harmonised on an EU level. Consequently, only national law governing the earlier signs may define the scope of their protection.
While the requirements of ‘use in the course of trade’ and ‘use of more than mere local significance’ are to be interpreted in the context of Community law (European standard), national law applies when determining whether a par ticular right is recognised and protected under the national law, whether its holder is entitled to prohibit the use of a subsequent trade mark, and what conditions need to be met under national law for the right to be successfully exercised.
As a consequence of this dualism, the Office must apply both the relevant provisions of the CTMR and the national law governing the earlier opposing right. In view of the two- tier examination to be applied under Article 8(4) CTMR, this provision, as the link between Community and National law, displays a somewhat ‘hybrid’ nature.
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3 Conditions of Article 8(4) CTMR
The conditions for successfully invoking Article 8(4) CTMR are:
a) the opponent must be the beneficiary of a non-registered trade mark or of another sign used in the course of trade;
b) use of more than mere local significance;
c) acquisition prior to the CTMA under the law of the Member State governing that sign;
d) right to prohibit the use of a subsequent trade mark under the law of the Member State governing that sign.
3.1 Direct right conferred on the opponent
The legal systems of the EU Member States provide various means of preventing the use of later marks on the basis of earlier signs used in the course of trade. However, in order to come within the meaning of Article 8(4) CTMR, the earlier right must be vested in a particular owner or a precise class of user that has a quasi-proprietorial interest over it, in the sense that it can exclude or prevent others from unlawfully using the sign. This is because Article 8(4) CTMR is a ‘ relative’ ground for opposition and Article 41(1)(c) CTMR provides that oppositions may be filed only by the proprietors of earlier marks or signs referred to in Article 8(4) CMTR and by persons authorised under the relevant national law to exercise these rights. In other words, only persons having an interest directly recognised by law in initiating proceedings are entitled to file an opposition within the meaning of Article 8(4) CTMR.
For example, in some Member States, the use of a sign may be prohibited if it results in unfair or misleading business practices. In such cases, if the earlier right lacks any ‘proprietorial quality’, it will not fall within Article 8(4) CTMR. It does not matter whether these signs are protected against misleading or unfair use under trade mark law, the law relating to unfair competition, or any other set of provisions. An example in this respect is the German Regulation governing the use of the geographical indication ‘Solingen’ for specific goods (cutlery scissors, knives etc.). This law would not be a proper basis for an opposition under Article 8(4) CTMR because the sign in question lacks any proprietorial quality and, as such, is more public in nature.
Earlier right Case No
A.O. CUBA R0051/2007-4
Where the national law does not confer on a legal entity (whether public or private) a subjective right allowing it to prohibit the use of a subsequent trade mark, the “proprietary requirement” is not met. The Board found that the Spanish law giving effect to the bilateral Agreement between Spain and Cuba for the protection of the appellation of origin “Cuba” was not sufficient to grant such a subjective right (para. 23-27).
In assessing the proprietorship of a sign used in the course of trade, the Office must analyse specifically whether the opponent has acquired rights over the sign ‘in accordance with the national law’ (judgment of 18/01/2012, T-304/09, ‘Basmati’).
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3.2 Types of rights falling under Article 8(4) CTMR
3.2.1 Introduction
When assessing which kind of intellectual property rights can be invoked under Article 8(4) CTMR and which cannot, a European standard applies. The distinction follows from the scheme of the CTMR and, in particular, from the differentiation made between the kinds of earlier signs upon which an oppos ition may be based under Article 8(4) CTMR and t he types of further rights that may be the basis for invalidity under Article 53(2) CTMR. While Article 8(4) CTMR refers to signs (‘non-registered trade mark or … another sign’), Article 53(2) CTMR refers to a broader set of rights: (a) a right to a name; (b) a right of personal portrayal; (c) a copyright; and (d) an industrial property right.
Therefore, although the signs covered by Article 8(4) CTMR fall within the broad category of ‘industrial property rights’, not all industrial property rights are ‘signs’ for the purposes of Article 8(4) CTMR. Since this distinction is contained in the CTMR, the classification of a r ight under the respective national law is not decisive, and it is immaterial whether the national law governing the respective sign or industrial property right treats both types of rights in one and the same law.
The types of rights falling under Article 8(4) CTMR are:
• ‘non-registered trade marks’; and • ‘other signs used in the course of trade’ which cover:
○ business identifiers such as:
— trade names; — corporate names; — establishment names; — titles of publications or similar works; — domain names;
○ geographical indications.
Most national business identifiers falling within the category of earlier rights within the meaning of Article 8(4) CTMR will be non -registered signs. However, the fact that a sign is also registered in accordance with the requirements of the respective national law does not bar it from being invoked under Article 8(4) CTMR.
3.2.2 Non-registered trade marks
Non-registered use-based trade marks exist in a number of the Member States1 (see the Table at the end of the document for an overview) and are signs that indicate the commercial origin of a product or service. Therefore, they are signs which function as a trade mark. The rules and conditions governing acquisition of rights under the relevant
1 Benelux, Cyprus, Croatia, Estonia, France, Lithuania, Poland, Romania, Slovenia and Spain do not protect unregistered trade marks (unless, for some jurisdictions, they are considered well-known within the meaning of Article 6bis of the Paris Convention).
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national law vary from simple use to use having acquired a reputation. Neither is their scope of protection uniform, although it is generally quite similar to the scope of protection under the provisions in the CTMR concerning registered trade marks.
Article 8(4) CTMR reflects the existence of such rights in Member States and gr ants the proprietors of non-registered marks the possibility of preventing the registration of a CTMA where they would succeed in preventing use of that CTMA under the relevant national law, by showing that the conditions set by the national law for prohibiting use of the later CTM are satisfied and the other conditions of Article 8(4) CTMR are met.
Example: R 1529/2010-1 ‘Gladiator’ where a non -registered trade mark in the Czech Republic was invoked.
3.2.3 Other business identifiers
‘Other signs used in the course of trade’ is a broad category that is not enumerated in Article 8(4) CTMR. In order for such signs to come within the ambit of Article 8(4) CTMR, they must have an identifying function, that is, they must primarily serve to identify in trade a business (business identifiers) or a geographical origin (geographical indications). Article 8(4) CTMR does not cover other types of intellectual property rights that are not ‘commercial signs’ – such as patents, copyrights or design rights which do not have a pr imarily identifying function but which protect technical or artistic achievements or the ‘appearance’ of something.
Some examples of cases dealing with whether a r ight is a ‘ sign’ for the purposes of Article 8(4) CTMR are set out below.
Earlier right Case No
JOSE PADILLA (copyright)
T-255/08
The Court found that copyright cannot constitute a ‘sign used in the course of trade’ within the meaning of Article 8(4) CTMR. It is apparent from the scheme of Article 53 CTMR that copyright is not such a sign. Article 53(1)(c) CTMR provides that a Community trade mark is to be declared invalid where there is an earlier right as referred to in Article 8(4) CTMR and the conditions set out in that paragraph are fulfilled. Article 53(2)(c) CTMR provides that a Community trade mark is also to be declared invalid where the use of such a trade mark may be prohibited pursuant to any ‘other’ earlier right and in particular a copyright. It follows that copyright is not one of the earlier rights referred to in Article 8(4) CTMR.
Earlier right Case No
Dr. No (copyright) T-435/05
In addition, it is clear from Article 8(4) CTMR read in conjunction with Article 53(2) CTMR that the protection provided for by copyright cannot be relied on in opposition proceedings, but only in proceedings for a declaration of invalidity of the Community mark in question (para. 41).
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Earlier rights Case No
and
(Community designs)
B 1 530 875
Designs are a form of intellectual property dealing with the ornamental or aesthetic aspects of an article’s appearance. Designs are deemed to be the result of a creative work which needs to be protected against unauthorised copying or imitation by third parties in order to ensure a fair return on investment. They are protected as intellectual property, but they are not business identifiers or trade signs. Therefore, designs do not qualify as signs used in the course of trade for the purpose of Article 8(4) CTMR.
3.2.3.1 Trade names
Trade names are the names used to identify businesses, as distinguished from trade marks which identify goods or services as produced or marketed by a par ticular undertaking.
A trade name is not necessarily identical with the corporate name or commercial name entered in a commercial or similar register as trade names can cover other non- registered names such as a sign which identifies and di stinguishes a c ertain establishment. Trade names are protected as exclusive rights in all Member States.
Pursuant to Article 8 of the Paris Convention, trade names enjoy protection without any registration requirement. If national legislation requires registration for national trade names, the respective provision is not applicable by virtue of Article 8 of the Paris Convention with respect to trade names held by a national of another Contracting Party to the Paris Convention. This applies as well in respect of nationals of a member of the WTO Agreement.
As regards the application of Article 8(4) CTMR to trade names, where the trade name is invoked on the basis of the law of one of the Member States where a registration is a condition for the enforcement of rights in a t rade name, the Office will apply this requirement where the Member State and the nationality of the opponent are the same, but will not apply this requirement in all other cases, since this would violate the provisions of Article 8 of the Paris Convention.
Examples: R 1714/2010-4 where the Spanish trade name ‘JAMON DE HUELVA’ was invoked.
3.2.3.2 Corporate names
A corporate name or company name is the official designation of an undertaking, in most cases registered in the respective national commercial register.
Article 8(4) CTMR requires that actual use be shown, even if national law vests in the holder of such a name the right to prohibit the use of a subsequent trade mark on the basis of registration alone. However, if under national law registration is a prerequisite for protection, registration must be shown as well. Otherwise, there would be no
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national right that the opponent could invoke.
Examples: judgment of 14/09/2011, T-485/07, ‘O-live (fig.)’ where the Spanish commercial name ‘OLIVE LINE’ was invoked and R 0021/2011-1 where the French company name ‘MARIONNAUD PERFUMERIES’ was invoked.
3.2.3.3 Domain names
A domain name is a combination of typographical characters corresponding to one or several numeric IP addresses that are used to identify a particular web page or set of web pages on the internet. As such, a domain name functions as an ‘address’ used to refer to a s pecific location on t he internet (oami.europa.eu) or an e mail address (@oami.europa.eu).
Domain names are registered with organisations or commercial entities called ‘domain name registrars’. Although a domain name is unique and may be a valuable commercial asset, a domain name registration per se is not an intellectual property right. Such registrations do not create any form of exclusive right. Instead, ‘registration’ in this context refers to a contractual agreement between a dom ain name registrant and the domain name registrar.
However, the use of a domain name may give rise to rights that can be the basis for an opposition under Article 8(4) CTMR. This can occur if the use of the domain name means that it is protected as a non-registered trade mark or a business identifier under the applicable national law.
Examples: R 0275/2011-1 where rights based on the use of the German domain name ‘lucky-pet.de’ were invoked and B 1 719 379 where rights based on the use of the French domain name ‘Helloresto.fr’ were invoked.
3.2.3.4 Titles
Titles of magazines and other publications, or titles of similar categories of works such as films, television series, etc. fall under Article 8(4) CTMR only if, under the applicable national law, they are protected as business identifiers.
The fact that the copyright in a t itle of a w ork can be i nvoked under the respective national law against a subsequent trade mark is not material for the purposes of Article 8(4) CTMR. As set out above, whilst a right in copyright may be us ed to invalidate a CTM under Article 53(2) CTMR, it is only where a title has an ‘identifying’ function and acts as a business identifier that it comes within the scope of Article 8(4) CTMR. Therefore, for such signs to be relied on under Article 8(4) CTMR in the context of opposition proceedings, the national law must foresee a p rotection which is independent from that recognised by copyright law (judgment of 30/06/2009, T-435/05, ‘Dr. No’, paras. 41-43.)
As with all rights under Article 8(4), the title must have been used in the course of trade. This will normally require that the work to which the title relates must have been placed on t he market. Where the title relates to a service (such as a t elevision programme), that service must have been m ade available. However, there will be circumstances where pre-use advertising may be sufficient to create rights, and where such advertising will constitute ‘use’ within the meaning of Article 8(4) CTMR. In all
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cases, the title must have been used as an indicator of the commercial origin of the goods and services in question. Where a title is used only to indicate the artistic origin of a work, such use falls outside the scope of Article 8(4) CTMR (judgment of 30/06/2009, T-435/05, ‘Dr. No’, 25-31).
Example: R 0181/2011-1 where the magazine title ‘ART’ was invoked.
3.2.4 Geographical indications
Geographical indications are used to designate the origin of goods as being from a particular region or locality. For a general overview on geographical indications see the Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and Community Collective Trade Marks, paragraph 2.09 on Article 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR.
Depending on t he context, as described below, the term ‘protected geographical indication’ (PGI) may cover terms such as ‘designations of origin’, ‘appellations of origin’ and equivalent terms, and is used in this chapter to refer to PGIs in general.
PGIs are protected in various ways in the EU (national law, EU law, international agreements) and cover various product areas (such as foodstuffs or handicrafts).
This section identifies the types of PGIs that may serve as a valid basis for oppositions under Article 8(4) CTMR.
3.2.4.1 Earlier rights deriving from EU legislation
At EU level, there is protection for PGIs for the following categories of products:
1. certain foodstuffs and certain non-food agricultural products (pursuant to Regulation No 1151/20122, the ‘Foodstuffs Regulation’);
2. wines and sparkling wines (pursuant to Regulation No 1308/20133, the ‘Wines Regulation’); and
3. spirits (pursuant to Regulation No 110/20084, the ‘Spirits Regulation’).
The nature of the indications covered is broadly the same albeit that the precise definition of terms varies according to the legislation. Earlier rights that are registered or applied for as PGIs under the above regulations (which can even include PGIs from third countries), can constitute a ‘ sign used in the course of trade’ under Article 8(4) CTMR and m ay be a v alid basis for an oppos ition to the extent that they allow the proprietor to prevent use of a s ubsequent mark. Their ability to prevent use is governed by the relevant provisions of the Regulations cited above (Article 13, Article 103(2) and Article 16 of the Foodstuffs, Wines and Spirits Regulations
2 Replaced and repealed Regulation No 510/2006 which had replaced and repealed Regulation No 2081/92. 3 Replaced and repealed Regulation No 1234/2007 which had integrated, through codification by Regulation No 491/2009, Regulation No 479/2008 which was repealed at the same time. 4 Replaced and repealed Regulation No 1576/89.
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respectively). In this context, it is important to distinguish the latter provisions preventing use from those that prevent registration5 of a trade mark, which are not a basis for opposition under Article 8(4) CTMR.
In order to substantiate its right, the opponent must provide the Office with the necessary facts and evidence regarding the existence of its right. A mere extract of the relevant online EU databases (DOOR, E-Bacchus or E-Spirit-Drinks) or in the case of spirits, an extract of Annex III of the Spirits Regulation, is not sufficient, as they do not contain sufficient data to determine all the relevant particulars of the earlier right (e.g. entitlement of the opponent or goods protected by the PGI).
The opponent must in any event provide the Office with copies of the publication and registration of the PGI in the Official Journal and, if these documents lack information on the opponent’s entitlement, further documents proving its entitlement to file the opposition as proprietor or person authorised under the relevant national law to exercise the right (Article 41(1)(c) CTMR and Rule 19(2) CTMIR). See in this respect decision of 17/10/2013, R1825/2012-4 ‘Dresdner StriezelGlühwein/Desdner Stollen’ para. 37)
The EU system of protection of PGIs for foodstuffs, wines and spirits is exhaustive in nature and super sedes national protection for those goods. This arises from the findings of the Court in the judgment of 08/09/2009, C-478/07 ‘BUD’, paras. 95-129. Here the Court held that the aim of Regulation No 510/2006 (the predecessor of the current Foodstuffs Regulation) was to provide a uni form and exclusive system of protection of PGIs for agricultural products and foodstuffs that superseded national laws for the relevant products6. Although the Court has not specifically pronounced upon the exhaustive nature of the Wines and Spirits Regulations, the same principle must apply because they contain substantively similar provisions to the Foodstuffs Regulation and they have the same purpose for the respective products.
3.2.4.2 Earlier rights deriving from the laws of Member States
Certain PGIs deriving from the laws of Member States may be a basis for opposition under Article 8(4) CTMR. Nevertheless, for the reasons set out above, in the areas of foodstuffs, wines and spirits protection at EU level is exhaustive in nature which means that an opposition under Article 8(4) CTMR cannot be based on national rights in these areas. This is because the EU system of protection comprising the above regulations overrides and replaces national protection of PGIs for foodstuffs, wines and spirits.
Consequently, PGIs for certain foodstuffs7 and certain non-food agricultural products8 (as set out in Annex I of the Treaty on the Functioning of the European Union (TFEU) and Annex I of the Foodstuffs Regulation), wines and grapevine products9 (as set out in Annex VII, part 2 of the Wines Regulation) and spirit drinks10 (as set out in Annex II
5 Articles 14, 102 and 23 of the Foodstuffs, Wines and Spirits Regulations respectively. 6 For additional information, see the Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and Community Collective Trade Marks, paragraph 2.09 on Article 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR. 7 E.g. meat, cheese, pastry, edible oils, vegetables, fruits, beverages made from plant extracts, vinegar (including wine vinegar), unmanufactured tobacco, beer, confectionery. 8 E.g. wool, leather, essential oils. 9 E.g. wine, sparkling wine, liqueur wine, wine must, but not wine vinegar. 10 E.g. grain spirit, wine spirit, fruit spirit, brandy, liqueurs, rum, whisky, gin.
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of the Spirits Regulation) that are protected under national laws are not a p roper ground of opposition under Article 8(4) CTMR. For the latter products, the opponent must invoke the relevant EU legislation in the notice of opposition.
Nevertheless, where no uniform EU protection is in place for a category of goods (e.g. handicrafts), PGIs that are protected under national laws can be a bas is for opposition under Article 8(4) CTMR (e.g. ČESKÝ PORCELÁN / FINE BOHEMIAN CHINA for crystal ware).
3.2.4.3 Earlier rights deriving from international agreements
In order for an opposition under Article 8(4) CTMR to be successful on the basis of a right deriving from any international agreement, the provisions under the international agreement must be directly applicable and they must allow the holder of a PGI to take direct legal action to prohibit the use of a subsequent trade mark.
In the latter respect, international agreements are not always self-executing. This depends on the characteristics of the agreement itself and on how they have been interpreted in the relevant jurisdiction. For example, the Office considers that the provisions of the Lisbon Agreement (in particular Articles 3 and 8) are not self- executing. As expressly indicated by Article 8 of the Lisbon Agreement, it is the relevant national legislation that must determine which type of legal actions may be taken, their scope and whether these legal actions include allowing the proprietor of an appellation of origin to prohibit the use of a subsequent trade mark. Therefore, in such cases, the requisite national legislation must be adduced as this is a nec essary component in order for the opponent to prove that the PGI in question can prevent use of the subsequent mark and that the opponent is entitled by the law governing the right to exercise this right.
International agreements entered into by the EU
PGIs deriving from agreements between the EU and third countries can be i nvoked under Article 8(4) CTMR if the provisions of these agreements vest the PGI in a particular beneficiary or a precise class of users that have direct right of action11.
International agreements entered into by Member States including the Lisbon Agreement12
For the reasons set out in paragraph 3.2.4.2 above, a PGI protected under an international agreement concluded by Member States (either among Members States or with third countries) cannot be invoked as an earlier right under Article 8(4) CTMR if it encroaches upon the exhaustive nature of EU law in the relevant areas (currently foodstuffs, wines and spirits).
In C-478/07 ‘BUD’, the Court discussed the exhaustive nature of EU law as regards PGIs originating from Member States. In the Office’s interpretation, this also applies a
11 PGIs from third countries can also be registered at EU level under the Foodstuffs, Wines and Spirits Regulations. 12Some Member States (Bulgaria, Czech Republic, France, Hungary, Italy, Portugal and Slovakia) are party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 1958 (as revised at Stockholm 1967, and as amended on 28/09/1979). The European Union is not a signatory to the Lisbon Agreement.
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fortiori to third-country PGIs in the relevant product fields which enjoy protection in the territory of a Member State through an international agreement concluded between that Member State and a non-EU-country13.
This equally applies to the Lisbon Agreement. The Lisbon Agreement creates an international registration and protection system for ‘appellations of origin’ (Article 2(1)). The definition of ‘appellations of origin’ for food and bev erage products under this agreement is largely equivalent to that of a ‘designation of origin’14 under EU regulations. Therefore, appellations of origin protected in a Member State by virtue of the Lisbon Agreement cannot be a basis for opposition under Article 8(4) CTMR.
The only exceptions in this regard are the following.
• International agreements which cover PGIs which do not relate to foodstuffs, wines or spirits.
• International agreements concluded with third countries by a Member State before its accession to the EU. This is because the obligations arising out of an international agreement entered into by a Member State before its accession to the EU have to be respected. However, Member States are required to take all appropriate steps to eliminate the incompatibilities between an agreement concluded before a M ember State’s accession and t he Treaty (see Article 307 Treaty Establishing the European Community, now Article 351 TFEU, as interpreted by the Court in its judgment of 18/11/2003, C-216/01 ‘BUD’, paras. 168-172).
• International agreements concluded with a third country by a Member State after its accession to the EU, but before the entry into force of the uniform EU system of protection in the given product area.
As Member States are under obligation to eliminate incompatibilities with EU law, the Office will apply the last two exceptions (which exclusively concern third country PGIs in the fields of foodstuffs, wines or spirits) only when the opponent expressly refers to the exception and supports it by a coherent line of argument and relevant evidence (in particular, concerning the date of entry into force of the cited international agreement in the EU Member State where protection is claimed and its continued validity). General allegations by the opponent (such as merely citing the relevant international agreement) will not be sufficient in themselves for the Office to consider that one of the latter two exceptions applies.
3.2.4.4. Scope of protection of PGIs
The ability of PGIs to prevent use is governed by the relevant provisions of the EU Regulations (Articles 13, 103(2) and 16 of the Foodstuffs, Wines and Spirits Regulations respectively). In this context, it is important to distinguish the latter provisions preventing use from those that prevent registration15 of a trade mark
13 To which the EU is not a contracting party. 14This term is defined and explained in The Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and C ommunity Collective Trade Marks, paragraph 2.09 on A rticle 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR. 15Articles 14, 102 and 23 of the Foodstuffs, Wines and Spirits Regulations respectively.
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and which are not a b asis for opposition under Article 8(4) CTMR16. Therefore, under Article 8(4) CTMR, a PGI can prevail if the conditions set out in the provisions preventing use are met, these are:
• the contested CTMA exclusively consists of the whole PGI or adds other words or figurative elements (direct or indirect use) for comparable products or, even for non-comparable products, if the use of the PGI exploits the reputation of the protected name17
• the contested CTMA contains or consists of an imitation or of an evocation of the PGI18
• other misleading indications and practices.19
Detailed information on the scope of protection of PGIs protected under the EU legislation is included in the Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and Community Collective Trade Marks, paragraph 2.09 on Article 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR (e.g. definitions of direct use, comparable products or evocation).
The provisions of the EU Regulations preventing use contemplate situations where a PGI can be invoked against goods or services which do not necessarily fall within the scope of objectionable goods and services under the ex officio examination of absolute grounds, subject to the conditions of the relevant provisions of the corresponding EU regulations. For instance, under Article 13(1)(a), Article 103(2)(a)(ii) and Article 16(a) of the Foodstuffs, Wines and Spirits Regulations respectively, a PGI with repute can be invoked against products and s ervices which would not be ex officio objectionable under absolute grounds.
The scope of protection of PGIs that are protected by regulations other than the abovementioned EU Regulations depends on the relevant provisions.
Nevertheless, either under EU or national legislation, the scope of protection of PGIs cannot exceed what is required in order to safeguard the function of the PGI, the function in question is to designate goods as being from a particular geographic origin and the special qualities connected therewith. Unlike other signs, PGIs are not used to indicate the commercial origin of goods and t hey afford no pr otection in this regard. Therefore, where the specification of a CTMA is limited to goods in conformity with the specification of the relevant protected PGI, the function of the PGI in question is safeguarded in relation to those products because the CTMA only covers products from the particular geographic origin and the special qualities connected therewith. Consequently, an opposition against a CTMA which has been appropriately limited will not succeed. See in this regard Article 12(1) of the Foodstuffs Regulation or Article 103(1) of the Wines Regulation.
Where a P GI is invoked under Article 8(4) CTMR, as for all other signs under this article, the opponent must prove that the sign is used in the course of trade of more than mere local significance. The use must be made in accordance with the essential function of such a sign, namely to guarantee to consumers the geographical origin of the goods and the special qualities inherent in them, but it
16 See, in this sense, judgment of 12/06/2007, joined cases T-60/04 to 64/04, ‘Bud’, para. 78. 17Article 13(1)(a), 103(2)(a), 16(1)(a) of the Foodstuffs, Wines and Spirits Regulations respectively. 18Article 13(1)(b), 103(2)(b), 16(1)(b) of the Foodstuffs, Wines and Spirits Regulations respectively. 19Article 13(1)(c) and (d), 103(2)(c) and (d), 16(1)(c) and (d) of the Foodstuffs, Wines and S pirits Regulations respectively.
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must also be s hown that the sign was used in the course of trade, that is, as a distinctive element which serves to identify an economic activity engaged in by its proprietor (see judgment of 29/03/2011, C-96/09P ‘BUD’, paras. 147 and 149, respectively). Therefore, documents mentioning a P GI exclusively in a non-trade context are not sufficient for the purposes of Article 8(4) CTMR.
3.3 Use requirements
In order to successfully invoke Article 8(4) CTMR in opposition proceedings, the earlier rights must be used. There are two different use requirement standards which must be taken into account:
• National standard • European standard
The two use requirement standards, however, clearly overlap. They must not be viewed in isolation but have to be assessed together. This applies, in particular, to the ‘intensity of use’ under the National standard and ‘use in trade of more than mere local significance’ under the European standard.
3.3.1 National Standard
National standard is relevant as it defines the scope of protection of the earlier rights which are often not easily identifiable, all the more so since their protection is not harmonised on an E U level (see further below paragraph 3.4 on t he scope of protection). This standard determines the existence of the national right and t he conditions of protection. For non-registered trade marks and business identifiers which do not require registration, use constitutes the only factual premise justifying the existence of the right, including the ascertainment of the beginning of its existence. The National standard also prescribes the intensity of use under the relevant national law which may vary from mere first use in trade to use requiring recognition or reputation.
For example, right to an unregistered trade mark in Denmark is acquired by mere commencement of its use in the Danish territory.
In Germany, however, an unregistered trade mark is acquired through use which has led to recognition by the relevant public as a trade mark (‘Verkehrsgeltung’). According to case law distinctive signs require 20 to 25% recognition whereas non-distinctive signs must acquire recognition by 50% of the relevant public.
3.3.2 European Standard – use in the course of trade of more than mere local significance
Under Article 8(4) CTMR, the existence of an earlier non-registered trade mark or of another sign gives good grounds for opposition if the sign satisfies, inter alia, the following conditions: it must be used in the course of trade and the use must be of more than mere local significance.
The above two conditions are apparent from the very wording of Article 8(4) CTMR and must, therefore, be interpreted in the light of Community law. The common purpose of
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the two conditions laid down in Article 8(4) CTMR is to limit conflicts between signs by preventing an ear lier right which is not sufficiently definite – that is to say, important and significant in the course of trade – from preventing registration of a new Community trade mark. A right of opposition of that kind must be r eserved to signs which actually have a real presence on their relevant market (judgment of 29/03/2011, C-96/09 P, ‘BUD’, para. 157).
3.3.2.1 Use in the course of trade
The first requirement under Article 8(4) CTMR is that the sign must be used in the course of trade.
The notion of ‘use in the course of trade’ in accordance with Article 8(4) CTMR is not the same as ‘genuine use’ in accordance with Article 42(2) and (3) CTMR (judgment of 30/09/2010, T-534/08, ‘Granuflex’, paras 24-27). The aims and conditions connected with proof of genuine use of registered Community or national trade marks are different from those relating to proof of use in the course of trade of the signs referred to in Article 8(4) CTMR (judgment of 09/07/2010, T-430/08 ‘Grain Millers’, para. 26, and judgment of 29/03/2011, C-96/09 P, ‘BUD’ para. 143). Therefore, use must be interpreted according to the particular type of right at issue.
The Court of Justice ruled that the ‘use of the sign in the course of trade’ within the meaning of Article 8(4) CTMR refers to the use of the sign ‘in the course of a commercial activity with a view to economic advantage and not as a p rivate matter’ (judgments of 12/11/2002, C-206/01, ‘Arsenal Football Club’, para. 40; of 25/01/2007, C-48/05, ‘Adam Opel’, para. 18; of 11/09/2007, C-17/06, ‘Céline’, para. 17).
However, the Court of Justice also ruled that deliveries made without charge may be taken into account in order to ascertain whether the requirement for use of the earlier right in the course of trade has been met, since those deliveries could have been made in the context of a commercial activity with a view to economic advantage, namely to acquire new outlets (judgment of 29/03/2011, C-96/09 P ‘BUD’, para. 152).
As far as the time of use of the sign is concerned, an opponent must prove that use took place before the filing of the CTM application or the priority date if relevant (see judgment of 29/03/2011, C 96/09 P ‘BUD’, para. 166-168).
Earlier sign Case No
BUD C-96/09 P
The Court discussed whether use which takes place exclusively or to a large extent between the filing of an application for registration and its publication was sufficient to meet the use requirement. One of the parties had argued that only the acquisition of the right had to take place before filing of the CTMA but not its use. The Court applied the same temporal condition as to the acquisition of the right and concluded that use had to take place before the filing of the application. The Court of Justice considered that in view of the considerable period of time which may elapse between the filing of an application for registration and its publication, the obligation of use in the course of trade of the sign before the filing of the application guarantees that the use claimed for the sign concerned is real and not an exercise whose sole aim has been to prevent registration of a new trade mark (paras 166 to168).
In the case of unregistered signs, the use must be continuous and uninterrupted until the filing of the opposition, since otherwise there is no certainty that the rights in the
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unregistered sign have not lapsed. In this context, Rule 19(2)(d) CTMIR expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) CTMR, the opponent shall provide evidence of its acquisition, continued existence (emphasis added) and scope of protection of that right.
The following is an example of an inter partes case relating to invalidity proceedings. The reasoning and the findings also apply to oppositions, given that Article 8(4) CTMR is a ground that can be invoked both in opposition and in invalidity:
Earlier sign Case No
‘BAMBOLINA’ (non-registered mark in a number of MS)
Cancellation decision 3728 C (confirmed by BoA R 1822/2010-2, and
judgment T-581/11)
The evidence showed use in the course of trade of the non-registered trade mark for three years, not covering the last two years before the date of filing of the invalidity request. The Cancellation Division held that an earlier non-registered sign relied on in an invalidity action must be in use at the time of filing the request. Since for these signs use constitutes the factual premise justifying the existence of the right, the same factual premise must still exist, and be proven, on the date of filing of the invalidity request (paras 25-28 of the Cancellation decision). The Board confirmed the finding of the Cancellation Division, adding that Rules 19(1) and (2)(d) CTMIR state that where an opposition is based on Article 8(4) CTMR, evidence of, inter alia, its ‘continued existence’ must be adduced within the period given by the Office for presenting or completing facts, evidence or arguments in support of the opposition. Failure to prove the existence, validity and scope of protection of the earlier mark or right within that period will lead to the opposition being rejected as unfounded (Rule 20(1) CTMIR). In the Board’s opinion, these Rules apply mutatis mutandis to cancellation proceedings (para. 15 of the BoA decision).
The requirement that the sign be used in the course of trade must, as stated above, be interpreted in the light of Community law. It must be di stinguished from the requirements provided for under the applicable national laws which might set specific requirements as far as the intensity of the use is concerned.
The European use requirement as prescribed by Article 8(4) CTMR applies independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a sign alone, i.e. without any requirement relating to use. The following is an example where the opponent relied on the registration, at national level, of a trade name, but failed to prove that the sign was used in trade:
Earlier sign Case No
‘NACIONAL’ (Portuguese name of establishment) R 693/2011-2
Under Article 8(4) CTMR, the fact that the opponent may, in accordance with the law of Portugal, have acquired exclusive rights plainly enforceable against subsequent trade marks on the basis of the registration of a ‘name of establishment’, does not exempt it from the burden of proving that the sign in question has been used in the course of trade of more than local significance. The mere fact that the sign is registered in accordance with the requirements of the respective Portuguese law is not in itself sufficient for the application of Article 8(4) CTMR (paras 20-26).
Depending on the applicable national law, an opponent might have to prove not only that the sign relied on is used in the course of trade (this being, as stated, a requirement under Community law), but also that it has been registered with the competent national authorities. It would not be sufficient that the European requirement
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of ‘use in trade’ is met if the registration requirement is not fulfilled. However, under certain national laws, rights in a company name may be i nvoked, as long as the company name has been used, prior to the registration of the entity in the companies register. The following is an e xample where the opponent invoked prior rights in a company name used in the course of trade in Germany that was not registered at the time of filing the contested CTMA:
Earlier sign Case No
‘Grain Millers GmbH & Co. KG’ (German company name) T-430/08
The opponent invoked under Article 8(4) CTMR the company name ‘Grain Millers GmbH & Co. KG’ used in the course of trade in Germany for ‘flour, in particular wheat flour and r ye flour’. Therefore, the opponent claimed the name of a GmbH (Gesellschaft mit beschränkter Haftung, ‘limited liablitiy company’ in English). The applicant argued that, according to Article 11(1) German Limited Companies Act (GmbH Gesetz), a GmbH does not exist before its registration and that the opponent was therefore not entitled, in support of its opposition, to rely on its business name, because the company was registered only after the filing of the contested CTM application. The GC took a different view and held that, according to the case- law of the German courts, the right to a business name exists pursuant to Paragraph 5(2) of the Markengesetz from the first use in the course of trade, without the obligation to register (para. 36).
A sign is used in the course of trade where that use occurs in the context of commercial activity with a view to economic advantage and not as a private matter.
Therefore, the Office will reject an oppos ition in the absence of actual use of the invoked sign. The following are examples where the opponent failed to meet this basic requirement:
Earlier sign Case No
Octopussy (film title) R 526/2008-4
The opponent merely submitted general information explaining the content of the film, its characters, gross figures, video offers on the internet and advertisements without any details as regards the relevant market. The information as regards turnover is also insufficient since it is too broad a general reference to the activities carried out by the opponent and does not specify either the type of activity or the territories concerned. For the same reason, the figures from a periodical, relating to the box office receipts generated by the film, have no bearing on the use of the sign in Germany. The remaining press articles furnished by the opponent concern subjects which cannot corroborate the use of the sign in the Member States indicated. The licence agreements for merchandising do not constitute any evidence with regard to the use of the sign as a f ilm title. Lastly, the mere fact that the film was a w orldwide success cannot substitute the obligation of the opponent to file concrete evidence with regard to the Member States in which it claims protection under Article 8(4) CTMR (para. 26).
Earlier sign Case No
‘lucky-pet.de’ (German domain name) R 275/2011-1
The opponent invoked under Article 8(4) CTMR the domain name ‘lucky-pet.de’ used in the course of trade in Germany for ‘mats for animals; retail services with respect to pet supplies’. It has not been proven that the domain has been used with more than local significance for the claimed goods and services. The
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invoices provided and the catalogue only show the internet address www.lucky-pet.de. However, they do not prove that the website www.lucky-pet.de has been visited and, if so, to what extent. It has neither been stated nor proven by any document how many people visited the website and ordered products via email (para. 31).
3.3.2.2 Significance of the use
Rights falling under Article 8(4) CTMR may only be invoked if their use is of more than mere local significance. This requirement applies for all the rights within the scope of Article 8(4) CTMR, that is, both to unregistered trade marks and t o other business identifiers. The proprietors of rights the use of which is of mere local significance retain their exclusive rights under the applicable national law pursuant to Article 111 CTMR.
The question whether the use of a non-registered sign is of more than mere local significance will be answered by applying a uniform European standard.
The General Court held that the significance of a sign used to identify specific business activities must be es tablished in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) CTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (judgment of 24/03/2009, T-318/06 to T-321/06, ‘GENERAL OPTICA’, paras 36-37 and judgment of 30/09/2010, T-534/08, ‘GRANUflex’, para. 19).
The Court of Justice clarified that the significance of a sign cannot be a function of the mere geographical extent of its protection, since, if that were the case, a sign whose protection is not merely local could, by virtue of that fact alone, prevent registration of a Community trade mark, even though the sign might be used only to a very limited extent in the course of trade. The sign must be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory (judgment of 29/03/2011 C-96/09 P ‘BUD’, para. 158-159).
However, it is not possible to establish a priori, in an abstract manner, which part of a territory must be used to prove that the use of a s ign is of more than mere local significance. Therefore, the assessment of the sign’s significance must be m ade in concreto, according to the circumstances of each case.
Therefore, the criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and t he evidence must relate, to these elements:
a) the intensity of use (sales made under the sign)
b) the length of use
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c) the spread of the goods (location of the customers)
d) the advertising under the sign and the media used for that advertising, including the distribution of the advertising.
In the following examples, both the geographic and the economic dimension of use of the sign were found to meet the standards:
Earlier sign Case No
GLADIATOR (non-registered trade mark in the Czech Republic) R 1529/2010-1
The around 230 invoices are sufficient to conclude that the sign ‘GLADIATOR’ has been used in the course of trade for ‘all terrain vehicles’. They are issued to the opponent’s clients in Czech cities such as ‘Praha’, ‘Kraslice’, ‘Dolnì Lánov’, ‘Pelhrimov’, ‘Opava’, ‘Bozkov’, ‘Plzen’ and many other Czech cities which cover many different areas of the Czech Republic. Furthermore, the catalogues and the magazines ‘4X4 Style’ from 2007 are written in Czech and it is very likely that they are distributed in different venues within the Czech Republic. The documents such as the list of distributors, catalogues and magazines support the findings that the sign has been used in the course of trade (paras 22-33).
Earlier sign Case No
‘FORGE DE LAGUIOLE’ (French company name)
R 181/2007-1 (appealed T-453/11)
The company name ‘FORGE DE LAGUIOLE’, which the invalidity applicant adopted in 1994, appears on all the documents supplied, in particular on the articles of association and on the extract from the company’s certificate of registration, on t he company’s letterhead, on t he 1998 price lists and on the correspondence and invoices, dated from 1998, sent to addressees throughout France. The very rapid expansion of the invalidity applicant’s activities and i ts sales network, as well as its sales turnover, is proved by the documents filed. From the list of customers for 2001 it is clear that the applicant had gained a clientele covering the whole of the French territory. This finding is also confirmed by the invoices produced, made out to customers all over France as well as in other European countries. Finally, the fact is established that the company is mentioned in a number of articles both in the French press and in the European and international press (paras 52-68).
Earlier sign Case No
‘PORTO’ (Portuguese appellation of origin)
Opposition B 998 510 (confirmed by the BoA in R 1101/2009-2
The evidence filed, and the amount and content of the legislation, regulation and registration certificates indicate that Port wine has been and is being used as an appellation of origin for wine. It is clear from the evidence in its totality that the significance of the appellation of origin is not merely local, but rather has an international impact, as reflected in its history and its use as a tool to attract tourists. The promotion of the appellation of origin has taken place, among others, through the establishments ‘SOLAR DO VINHO DO PORTO’ in Lisbon and Oporto, as well as through the ‘PORT WINE ROUTE’, in the Douro region. Taking this into consideration, the Office finds that the opponent has proved that it has used its appellations of origin in the course of trade and that the use is of more than mere local significance.
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Earlier sign Case No
BRADBURY (non-registered trade mark in the UK) R 66/2008-2
As regards goodwill of the mark, the BoA held that the evidence submitted by the opponent was sufficient to prove that the BRADBURY non-registered sign enjoyed goodwill: 1) The invoice evidence shows sales of a range of goods to various entities in the UK and in other countries. 2) The amounts of those invoices vary from a little over GBP 100 to several thousand pounds sterling. This evidence proves sales of products bearing the earlier non-registered mark to various entities. 3) The declarations and market survey also demonstrate that the sign has enjoyed a degree of recognition among the relevant public for the right holder’s goods. 4) The fact that the sign appears in a nu mber of catalogues and advertisements and that after sales service centres are located in various major towns and cities throughout the UK demonstrates that the trade mark has been brought to the attention of a wide public in terms of geographic spread (paras 31-33).
Earlier sign Case No
‘GOLDEN ELEPHANT fig.’ (non-registered trade mark in the UK) T-303/08
The party relying on the earlier non-registered trade mark had sold rice consistently under the sign since 1988, i.e. for a period of eight years prior to the date on which the applicant filed the application for the contested Community trade mark. The quantity of rice sold – between 42 and 84 tonnes per year from 1988 to 1996 – cannot be regarded as totally insignificant. The mere fact that the party’s market share was very small in comparison with the total amount of rice imported into the United Kingdom is not sufficient to justify a finding that those rice sales were below the de minimis threshold. In that context, it should be observed that the courts in the United Kingdom are very unwilling to assume that a business can have customers but no goodwill. ‘Even if it were to be assumed that that goodwill had to be regarded as low on account of the limited quantities of the sales, it cannot, on any view, be regarded as non- existent’ (paras 112-116).
As far as the geographic dimension of the use of the sign is concerned, in general, neither the territory of a city alone, even a b ig one, is of more than mere local significance, and no r is a regional district or province. It will depend on t he circumstances of the case (see examples below). The leading judgment in this respect is the one rendered by the General Court in the General Optica case, where use of the sign was confined to a s pecific locality and was, therefore, insufficient to meet the prescribed requirements:
Earlier sign Case No
Generalóptica (Portuguese establishment name) Joined Cases T-318/06 to T-321/06
It is not apparent from the evidence provided by the opponent that the significance of the sign relied on in the present case is more than merely local within the meaning of Article 8(4) CTMR. As the Board of Appeal stated in paragraph 33 of the contested decisions, it is apparent from the documents submitted by the opponent that at the time when registration of the first two Community trade marks was applied for, the sign in question had been used for almost 10 years merely to designate a business establishment open to the public in the Portuguese town of Vila Nova de Famalicão, which has 120 000 inhabitants. In spite of its explanations at the hearing, the applicant did not provide any evidence of recognition of the sign by consumers or of its business relationships outside the abovementioned town. Likewise, the applicant has not shown that it had developed any advertising activity in order to ensure that its business establishment was promoted outside that town. It must therefore be held that the business establishment name Generalóptica is of mere local significance within the meaning of Article 8(4) CTMR (para. 44).
Rights Under Article 8(4) CTMR
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FINAL VERSION 1.0 DATE 01/08/2014
Earlier sign Case No
FORTRESS FORTRESS INVESTMENTS
FORTRESS INVESTMENT GROUP (non-registered trade marks in the UK)
R 354/2009-2
R 355/2009-2
The fact that the invalidity applicant was involved in the acquisition, lease-back and management of nationwide property portfolios of major UK institutions and companies proves that the use was of more than mere local significance. The fact that use is limited to London is relevant in the sense that London is the seat of nearly all governmental institutions and bodies and home to the City of London, one of the leading financial centres of the world. The economic dimension of the sign’s significance was important since by mid-2000 the invalidity applicant had already an equity capital under management in excess of US$1 billion. Furthermore, the group of addressees among which the sign was known is significant since it included major players in the financial field and UK public institutions. The exposure given to the sign was also significant, cf. the national and specialised press coverage. Therefore, use in the course of trade was of more than mere local significance (paras 49-51).
The notion that the use in trade of the sign relied on must be proven in the territory of the Member State/s where protection is sought is not incompatible with use of the sign in connection with cross-border commercial transactions:
Earlier sign Case No
GRAIN MILLERS (German business name) T-430/08
The use of a business name in the context of the importation of goods from another State (in this case, documents of the transaction concluded by opponent concerning the import of wheat from Romania to Germany) is indeed use in the context of a commercial activity with a view to economic advantage, since import-export constitutes a normal, everyday activity of an undertaking, necessarily involving at least two States (para. 41).
The following are examples where the opponent failed to prove that the economic dimension of the use of the signs concerned was sufficient to meet the prescribed legal requirements:
Earlier sign Case No
BRIGHTON (non-registered mark in several MS) R 408/2009-4
The sales chart provided by the opponent shows that the sale activities in the Member States concerned were not consistent over time to the extent that for certain years no sales at all appear to have taken place and that for others the sales revenue was very low indeed. Therefore, the sales figures show that the opponent was not able to maintain an intensity of use of the signs over three consecutive years. It is unlikely in those cases that the public was able to memorise the mark as an indication of origin. The opponent did not submit any evidence relating to the advertising and promotion of the marks invested in the concerned Member States, or other material showing that the signs in question had established themselves in the marketplace to such an extent as to justify the acquisition of exclusive rights in non- registered trade marks (paras 12-21).
Rights Under Article 8(4) CTMR
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FINAL VERSION 1.0 DATE 01/08/2014
Earlier sign Case No
(Greek non-registered mark)
R 242/2010-1
Although the documents confirm the geographical extent of the trade mark to Greece, the evidence regarding the extent of time of the alleged use is clearly insufficient. The last dated document is from 1997, i.e. seven years before the contested application was submitted. Moreover, the most recent documents in which the trade mark ‘ESKIMO’ can be seen are the invoices dating from 1991 to 1994. They only reflect the sales of a little less than 100 units throughout these four years, which cannot be deemed sufficient to prove the use of the mark as a business identifier by the opponent (paras 27-28).
Earlier sign Case No
Up Way Systems – Representaçoes Unipessoal LDA (Portuguese company name) R 274/2012-5
Three invoices, addressed to companies in the Porto region of Portugal, for a total sales amount of EUR 16 314, are not sufficient to show that the sign was used in the course, considering the price level of building materials and building services in general (paras 20-23).
Use of a sign relied on under Article 8(4) CTMR must be made in accordance with the essential function of such a sign. This means that if an opponen t relies on a non - registered trade mark, proof of use of the sign as a c ompany name would not be sufficient to substantiate the earlier right.
The following is an example where the evidence shows use of a sign whose function does not correspond to that of the sign relied on:
Earlier sign Case No
JAMON DE HUELVA (Spanish trade name) R 1714/2010-4
The proof furnished in order to substantiate the use of ‘Jamón de Huelva’ almost exclusively relates to the designation of origin ‘Jamón de Huelva’. Designations of origin are very different legal concepts from trade names, as, instead of identifying a particular commercial origin, they are geographical indications relating to an agricultural or food product of which the quality or characteristics are fundamentally or exclusively due to the geographical environment in which they are produced, processed or prepared. The opposition based on the use in Spain of the trade name ‘Jamón de Huelva’ must be dismissed in view of the fact that the proof furnished does not relate to this legal concept and does not identify a s pecific commercial activity, but instead the activities relating to a designation of origin and the Supervisory Council thereof (paras 34-37).
The requirement that the sign must be used in trade for its own particular economic function does not exclude that the same sign might be used for several purposes.
It is common market practice to also use company or trade names as trade marks, either alone, or together with other product identifiers. This is the case when use of a ‘house mark’ is concerned, that is, an indication which usually coincides with the manufacturer’s company or trade name and which not only identifies the product or service as such, but also provides a direct link between one or more product/service lines and a specific undertaking.
Rights Under Article 8(4) CTMR
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Therefore, depending on the specific circumstances of the case, in a case where an opponent relies on a n on-registered trade mark, the use of the same sign as a company name or trade name may well also accomplish the function of indicating the origin of the goods/services concerned (thus, a trade mark function), as long as the sign is used in such a way that a link is established between the sign which constitutes the company or trade name and the goods marketed or the services provided (see, by analogy, judgment of 11/09/2007, C-17/06 ‘CELINE’ paras 22-23).
3.4 Earlier right
The right invoked under Article 8(4) CTMR must be earlier than the CTM application. In order to determine which of the conflicting rights is earlier, the relevant dates on which the rights were obtained must be compared.
• For the CTM application, this is the filing date or any priority date validly claimed (hereinafter the ‘CTM date’). Seniority claims, even if they relate to the Member State where the other earlier right is claimed to exist, are not relevant.
• As regards the right falling under Article 8(4) CTMR, the relevant date of acquisition of exclusive rights under the national law is decisive.
Where under the national law mere use is sufficient, this must have begun before the CTM date. Where recognition in the trade or reputation are required, these must have been acquired before the CTM date. Where these conditions are fulfilled only after the CTM date, the opposition will have to be rejected.
3.5 Scope of protection
Earlier rights falling under Article 8(4) CTMR are protected only if they confer on their proprietors under the applicable law the right to prohibit the use of a later trade mark.
This requires a finding that under the applicable national law rights of the type involved, in the abstract, are exclusive rights enforceable by means of an injunction vis-à-vis later marks and a f inding that in the actual case under consideration the conditions for obtaining such injunctive relief, if the mark that is the subject of the opposed CTM application were used in the territory in question, are present (scope of protection). Both questions have to be answered in accordance with the applicable law. The Office will apply the laws of the Member States, Community law or International agreements.
The difficulties of applying national law should not be overestimated. The list in the Table at the end of this document provides appropriate indications (see also Section 4 below). For many, if not most, of the rights falling under Article 8(4) CTMR, the prerequisites of national regulations are quite similar to those applied in conflicts between trade marks which Office examiners are familiar with, namely, likelihood of confusion, or damage to reputation or distinctiveness.
For example, unregistered marks are generally protected against subsequent marks in the event of a likelihood of confusion and, thus, in accordance with the same criteria that are applicable to conflicts between registered marks, namely, identity or similarity of the signs, identity or similarity of the goods or services, etc. In these cases, the criteria developed by the courts and by the Office for applying Article 8(1) CTMR may
Rights Under Article 8(4) CTMR
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easily be t ransported into Article 8(4) CTMR, unless the party can provide relevant case-law of the national courts proving a different approach.
Where the applicable national law provides protection for unregistered trade marks, which is different from that found in Article 8(1) CTMR, the scope of protection of the earlier right invoked follows from national law. If, for example, the applicable national law grants protection to unregistered marks also for dissimilar goods and services under certain conditions, the same protection will be granted under Article 8(4) CTMR.
4 Evidence and Standard of Proof
According to Article 76(1) CTMR, in all inter partes cases, the burden is on the party making a par ticular claim or allegation to provide the Office with the necessary facts and arguments in order to substantiate the claim.
A particular difficulty in applying Article 8(4) CTMR is the proper standard of proof required by the relevant national or European law.
Article 8(4) CTMR refers to national law (the law in the particular Member State) but it also lays down its own (‘European’) prerequisites for protection (use in the course of trade, of more than mere local significance). The national law of the country where the protection of the ‘sign’ is claimed determines the existence of the right /title and t he conditions of protection. The corresponding standard of proof (national or European) has to be applied accordingly.
The ‘facts’ to be established and proven are:
FACTS STANDARD
− National provisions providing for the protection of the sign.
− The requirements for obtaining such a protection. − Existence of a right/title to the sign. − If the right has been validly acquired (e.g. through use,
reputation). − The condition of legal protection (e.g. in cause of
misleading use, use of identical or similar sign, likelihood of confusion).
− The scope of protection (right to prohibit use, etc.).
‘National’ standard applies
− Use in course of trade. − Of more than mere local significance.
‘European’ standard applies (see paragraph 3.2 above)
For all of these, the opponent carries the burden of proof. The general principle of Article 76(1) CTMR is applicable. The opponent can use all means of evidence as specified in Article 78 CTMR.
As regards the law of the Member States applicable by virtue of Article 8(4) CTMR, the Office shall treat this also as an issue of fact which is subject to proof by the party alleging such a right.
Rights Under Article 8(4) CTMR
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It appears from the ‘BUD’ judgment that the opponent has the responsibility to provide the relevant national law and to show that it would succeed under that national law in preventing use of the later mark:
In that regard, it should be observed that Article 8(4)(b) [CTMR] lays down the condition that, pursuant to the law of the Member State governing the sign relied on under Article 8(4), that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Furthermore, in accordance with Article 74(1) of Regulation 40/94 [now Article 76(1) CTMR], the burden of proving that that condition is met lies with the opponent before OHIM.
In that context and in relation to the earlier rights relied on in the present case, … regard must be had, in particular, to the national rules advanced in support of the opposition and to the judicial decisions delivered in the Member State concerned and t hat, on that basis, the opponent must establish that the sign concerned falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited.
(See judgment of 29/03/2011, C-96/09 P ‘BUD’, paras 188-190.)
According to the judgment of 05/07/2011 C-263/09P ‘Elio Fiorucci’, it is up to the opponent ‘to provide OHIM not only with particulars showing that he s atisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a Community trade mark prohibited by virtue of an ea rlier right, but also particulars establishing the content of that law’ (para. 50). See also in this respect the judgment of 07/05/2013, T-579/10 ‘Makro’, para. 60.
Earlier sign Case No
CROWN R1182/2011-4
The appeal was dismissed as far as Article 8(4) CTMR was concerned due to the lack of substantiation. The opponent merely wrote the indication ‘unregistered mark’ and ticked all the country boxes in the opposition form, but he made no further indication as to the relevant law of each of the Member States concerned.
By referring to the ‘Eilo Fiorucci’ judgment, the BoA recalled that whilst an opponent is not required to ‘prove’ the existence of the respective national law, he is well required to indicate precisely the provisions of national law which he invokes as the basis for protection of the earlier right. Only then can the Office examine what type of right is concerned and under which conditions (e.g. whether protection is granted against likelihood of confusion) it is protected, and only thereafter, as a further step, can the evidence be judged as to whether it satisfies those legal conditions.
In the particular case, no statements at all were provided as concerns the legal bases and conditions for the claimed right in each (or at least one) of the Member States, throughout the proceedings, including on appeal. The sole submission in this regard was that the opponent sent a c opy of the passages on Article 8(4) from the Office’s brochure ‘National Law Relating to the CTM’, arguing that he should not have to prove the contents of those passages (or the national law mentioned therein). That, however, is irrelevant, as the opponent does not have to substantiate what can be protected in theory, but whether and how the claimed right is protected (paras 48-50).
Treating proof of the national legal situation as an issue of fact by the Office is in accordance with the approach of the courts in the Member States with respect to
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foreign law under their private international law principles. Moreover, the Office is not always in a position to determine with sufficient accuracy on its own motion what the law relating to Article 8(4) CTMR rights is in all the Member States and to monitor the corresponding changes of legislation or development of the case-law.
At the end o f this Section of the Guidelines, there is an overview Table with the essentials of the national law applicable in the Member States (see Table at the end). It is included in the present Guidelines for information purposes only.
Therefore, as regards proof of the national legal situation, the opponent will have to:
• Provide a clear reference to the applicable legislation or case-law (the Table may help in this regard). However, the Table is not a legal source and may not contain the latest legislative developments; therefore, the other party can always contest its content.
• Put forward a cogent line of argument why the opponent would succeed under specific national law in preventing the use of the contested mark (supported, where possible, by case-law and/or legal literature). A mere reference to the national law will not be considered sufficient: it is not for the Office to make that argument on behalf of the opponent.
Where the opponent relies on national case-law to prove its case, it will have to provide the Office with this case-law in sufficient detail (a copy of the decision invoked) and not only by reference to a publ ication somewhere in legal literature.
Rights Under Article 8(4) CTMR
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TABLE ON NATIONAL RIGHTS THAT CONSTITUTE ‘EARLIER RIGHTS’ IN THE SENSE OF ARTICLE 8(4) CTMR
FOR INFORMATION PURPOSES20
Table of Contents 1 Benelux..................................................................................................... 33 2 Bulgaria .................................................................................................... 34 3 Czech Republic........................................................................................ 35 4 Denmark ................................................................................................... 36 5 Germany................................................................................................... 37 6 Estonia...................................................................................................... 39 7 Ireland....................................................................................................... 40 8 Greece ...................................................................................................... 41 9 Spain......................................................................................................... 43 10 France....................................................................................................... 44 11 Croatia ...................................................................................................... 45 12 Italy ........................................................................................................... 46 13 Cyprus ...................................................................................................... 47 14 Latvia ........................................................................................................ 48 15 Lithuania................................................................................................... 49 16 Hungary.................................................................................................... 49 17 Malta ......................................................................................................... 50 18 Austria ...................................................................................................... 50 19 Poland....................................................................................................... 52 20 Portugal .................................................................................................... 53 21 Romania ................................................................................................... 55 22 Slovenia.................................................................................................... 56 23 Slovakia .................................................................................................... 56 24 Finland...................................................................................................... 57 25 Sweden..................................................................................................... 59
20 The content of the Table is largely based on the information and feed-back received from trade mark offices and user associations in 2013/2014. However, it is not a legal source and it is made available for information purposes only. It may not contain the latest legislative developments or an exhaustive list of all the national earlier rights that can be invoked under Article 8(4) CTMR.
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26 United Kingdom....................................................................................... 60
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1 Benelux
1.1 Unregistered trade marks
Unregistered trade marks (TMs) are not recognised under the uniform Benelux Convention on Intellectual Property (BCIP).
1.2 Other signs used in the course of trade
For the Benelux territory each state must be considered separately.
1.2.1 Belgium
Trade name (nom commercial)/Company name (dénomination sociale)
Article 2.19 BCIP Article 95 of ‘Loi du 6 avril 2010 relative aux pratiques du marché et à la protection du consommateur’ Article 1382 of the ‘Code Civil’ (Civil Code)
Conditions for protection
Trade name is acquired by its first use in trade. Protection is limited to the geographical area where the trade name or company name is used.
Company name is acquired, in principle, from the date of the establishment of the company. Protection extends to the whole national territory.
Rights conferred
Right to prohibit use of subsequent (registered) trade marks.
1.2.2 Luxembourg
Trade name (nom commercial)/company name (dénomination sociale)
Article 2.19 BCIP Article 14 of ‘Loi du 30 juillet 2002 réglementant certaines pratiques commerciales, sanctionnant la concurrence déloyale et transposant la directive 97/55/CE du Parlement Européen et du Conseil modifiant la directive 84/450/CEE sur la publicité trompeuse afin d’y inclure la publicité comparative’
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Rights conferred
Right to prohibit use of subsequent (registered) trade marks.
1.2.3 Netherlands
Trade name
Article 2.19 BCIP Law of 5 July 1921 on trade names (Handelsnaamwet) Article 6:162, Dutch Civil Code (Burgerlijk Wetboek)
Conditions for protection
Right is acquired by the first use of the trade name in trade. Protection is limited to the geographical area where the trade name is used. Trade names may be registered voluntarily with the Trade Register at the Chamber of Commerce but doing so does not confer any rights on the owner. There is no particular requirement that the trade name be distinctive and non-descriptive.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) trade marks. (b) Likelihood of confusion must be found.
2 Bulgaria
2.1 Unregistered trade marks
Unregistered trade marks (TMs) are protected in Bulgaria in two ways.
Unregistered TMs
Article 12(6) Bulgarian Trade Mark Law on Marks and Geographical Indications (2010)
Conditions for protection
The TM must have been used in the course of trade in the territory of Bulgaria prior to the filing date of the contested trade mark.
Rights conferred (a) and conditions (b)
(a) Right to prohibit registration of a subsequent trade mark.
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(b) The subsequent trade mark must be identical or similar and must cover identical or similar goods and/or services.
Well-known TMs
Article 12(2)7 Bulgarian Trade Mark Law on M arks and Geographical Indications (2010)
Conditions for protection
The TM must be well-known in the territory of Bulgaria within the meaning of Article 6bis of the Paris Convention prior to the filing date of the contested trade mark.
Rights conferred (a) and conditions (b)
(a) Right to prohibit registration of a subsequent trade mark. (b) The subsequent trade mark must be identical or similar and must cover identical
or similar goods and/or services.
2.2 Other signs used in the course of trade
Other signs used in the course of trade are not included by Bulgarian trade mark law as prior rights that could form a basis for opposition.
3 Czech Republic
3.1 Unregistered trade marks
Unregistered trade marks are protected in the Czech Republic:
Article 7(1)(g) of the Czech Trade Marks Act (CZ-TMA).
Conditions for protection
Unregistered signs that have acquired distinctiveness through use in the course of trade of more than mere local significance prior to the filing of the contested application.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks.
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(b) Signs must be i dentical or similar (interpreted as likelihood of confusion) and must cover identical or similar goods and/or services. Scope of protection is identical to that of a Czech registered mark.
3.2 Other signs used in the course of trade
Article 7(1)(g) CZ-TML
Trade names and other related signs (e.g. names of non-commercial organisations)
Conditions for protection
These names/signs must have acquired distinctiveness through use in the course of trade of more than mere local significance prior to the filing of the contested application.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Signs must be i dentical or similar (interpreted as likelihood of confusion) and
must cover identical or similar goods and/or services. Scope of protection is identical to that of a Czech registered mark.
4 Denmark
4.1 Unregistered trade marks
Unregistered trade marks (TMs) are protected in Denmark:
§ 3(1)(ii) of the Danish Trade Mark Act (DK-TML) § 4(1), (2) and § 15(4)(ii) DK-TML
Conditions for protection
Rights to an unregistered TM are acquired by starting to use the TM in Denmark.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) TMs. (b) The unregistered TM must continue to be used for the goods and/or services for
which it was first used. The scope of protection is the same as for Danish registered TMs, i.e. corresponding to Article 9(1)(a), (b) and (c) CTMR.
Rights Under Article 8(4) CTMR
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4.2 Other signs used in the course of trade
Company names
The term ‘company name’ is to be i nterpreted broadly and c overs not only private companies such as private firms, limited liability companies, other commercial companies and secondary trade names but also foundations, unions, associations, museums and public institutions.
§ 18 Danish Marketing Practices Act § 2(ii) Danish Companies Act § 6(ii) Consolidated Act on Certain Commercial Undertakings
Conditions for protection
Company name protection does not require registration. However, the person concerned must have legal title to the company name.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) trade marks. (b) Signs must be identical or similar.
Signs used in the course of trade such as business names and shop facades
The term ‘signs used in the course of trade’ is to be interpreted broadly and, according to Danish law, covers any commercial name or symbol that can serve as a connecting link between a business and its customers/users, including, inter alia, business names and shop facades.
§ 18 Danish Marketing Practices Act
5 Germany
5.1 Unregistered trade marks
§ 4 No 2 German Trade Mark Act (DE-TMA), § 12, 14 DE-TMA
Conditions for protection
Protection is acquired through use leading to recognition by the relevant public as a trade mark (‘Verkehrsgeltung’) (§4 No 2 DE-TMA). According to case-law, 20 to 25% recognition by the relevant public is normally sufficient, rising to 50% or more if a sign is not distinctive.
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Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of a subsequent trade mark if recognition is established in the whole of Germany, i.e. not if recognition is only established for a particular town or region (§§ 12, 14 DE-TMA).
(b) The same as for registered German trade marks, i.e. protection corresponds to Article 9(1)(a), (b) and (c) CTMR (§ 14(2) No 1, 2 and 3 DE-TMA).
5.2 Other signs used in the course of trade
§5(1), (2), (3) DE-TMA
Commercial designations (‘geschäftliche Bezeichnungen’) is a br oad category that includes the following.
Company symbols (‘Unternehmenskennzeichen’) are signs used in the course of trade as a name, company name or special designation of a business operation or enterprise. Business symbols and ot her signs that are intended to distinguish one business operation from others and are regarded as symbols of the business operation by the relevant public are deemed equivalent to the special designation of a business operation.
A name or firm is a trader’s official or officially registered designation. A business symbol is a sign used by a trader to identify its business or undertaking as such, which functions as the name of the business or enterprise.
Titles of works are the names or special designations of printed publications, cinematic works, music works, stage works or other comparable works. This can be an individual work, a series of works, or a periodical publication. This also includes titles of radio or television series, computer games and video games, possibly also computer programs. It is not required that the work designated by the title is protected under copyright law.
Conditions for protection
Company symbols – If the sign is inherently distinctive, protection is acquired through use in the course of trade as a company symbol. According to case-law the required degree of inherent distinctiveness is low. ‘Use in the course of trade as a c ompany symbol’ covers every external business activity in Germany aimed at long-term commercial activity. If the sign is not inherently distinctive, protection is acquired through recognition as a s ign of the undertaking by the relevant public (‘Verkehrsgeltung’).
Business symbols and ot her signs for distinguishing business operations – Protection is acquired through recognition as a sign of the undertaking by the relevant public.
Titles of works: if the title of work is inherently distinctive, acquisition through use in the course of trade, i.e. normally as from the appearance of the work. The required degree of inherent distinctiveness is low. If the work title is not inherently distinctive, acquisition of the right through market recognition ("Verkehrsgeltung").
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Rights conferred (a) and conditions (b)
(a) Right to prohibit use of a subsequent trade mark. (b) Likelihood of confusion (§ 15(2) DE-TMA); in the case of a business designation
with reputation, if use would take unfair advantage of, or would be detrimental to, the distinctive character or repute of a commercial designation (§ 15(3) DE-TMA).
6 Estonia
6.1 Unregistered trade marks
Unregistered trade marks are not protected under Estonian law unless the marks are considered to be well-known in Estonia within the meaning of Article 6bis of the Paris Convention.
6.2 Other signs used in the course of trade
Business names
Article 10(1)(4) of the Estonian Trade Mark Act (EST-TMA)
Conditions for protection
Entry in the commercial register prior to the filing date of the application, the date of international registration or the priority date. Protection for a business name is acquired from the date of entry in the commercial register.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) trade marks. (b) Signs must be identical or similar and the area of activity for which a notation has
been made in the commercial register must include the goods and/or services for which the contested trade mark is used or is going to be used (designates).
Names of proprietary medicinal products
Article 10(1)(5) EST-TMA
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Conditions for protection
The names must be registered in Estonia prior to the filing date of the trade mark application, the date of international registration or the date of priority.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) trade marks. (b) The contested sign must be i dentical or confusingly similar to the name of a
proprietary medicinal product registered in Estonia and the goods for which the trade mark is used or is going to be used must belong to the field of medicine.
7 Ireland
7.1 Unregistered trade marks
Unregistered trade marks (TMs) used in the course of trade are protected in Ireland.
Section 10(4)(a) IE-TMA
Conditions for protection
Must be used in the course of trade if protected by any rule of law, including that of passing off.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade mark if protected by any rule of law, in particular the law of passing off.
(b) The later sign must constitute a misrepresentation likely to lead to deception or confusion, with consequent likelihood of damage to the goodwill or business of the proprietor of the earlier sign. The plaintiff must prove that its goodwill and business suffered or are likely to suffer damage as a r esult of the defendant’s activities.
The action for passing off is based upon goodwill acquired by use of the earlier sign. Goodwill is sometimes referred to as reputation. In Ireland, goodwill can be acquired without necessarily trading within the territory. The tort arises if a later sign constitutes a misrepresentation likely to lead to deception or confusion, with consequent likelihood of damage to the goodwill or business of the proprietor of the earlier sign. The law is explained in ‘Intellectual Property in Ireland’ by Robert Clark and S hane Smyth, Butterworths, 1997, Chapter 24. Authoritative statements of the law are found in court judgments, for example in C. & A. Modes vs C. & A. (Waterford) [1978] Fleet Street Reports 126; Adidas K.G. v. O'Neill & Co Limited [1983] Fleet Street Reports 76; and Guiness Ireland Group v. Kilkenny Brewing Co Limited [2000] Fleet Street Reports 112.
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7.2 Other signs used in the course of trade
Business sign used in the course of trade
Section 10(4)(a) and (5), IE-TMA
Right to prohibit use of subsequent TMs if protected by any rule of law, in particular the law of passing off. On the law of passing off, see remarks above under point A.
Conditions for protection
As under Section 7.1 above.
a) Rights conferred (a) and conditions (b)
As under Section 7.1 above.
8 Greece
8.1 Unregistered trade marks
There are two sets of provisions dealing with the protection of unregistered trade marks and related signs: (a) trade mark law confers on t he owner the right to prohibit registration of a later trade mark, whereas (b) the law on unfair competition and other specific provisions deal with the issue of use. As the complementary application of trade mark law for any matter not directly dealt with in other statutes is generally accepted, both sets of rules are indicated.
Article 124(3)(a) GR-TML (Law No 4072/2012); Article 13(1) of Law 146/1914 on Unfair Competition
Conditions for protection
Protection is acquired through use in the course of trade. If not inherently distinctive, unregistered trade marks must also be ‘established in the market’.
Rights conferred (a) and conditions (b)
(a) Right to prohibit registration of a subsequent trade mark. (b) Prior use, likelihood of confusion as to origin.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 42
FINAL VERSION 1.0 DATE 01/08/2014
8.2 Other signs used in the course of trade
Company names
Article 58 Civil code Articles 4-8 Law 1089/1980, as amended by 1746/1988
Conditions for protection
Protection is acquired exclusively through use in the course of trade. Registration is not relevant for protection; it only serves administrative purposes.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Prior use, likelihood of confusion as to origin.
Trade names and commercial establishment insignia
Article 124(3)(a) GR-TML (Law No 4072/2012) Article 13(1)(2) Law 146/1914 on Unfair Competition
Conditions for protection
Protection is acquired exclusively through use in the course of trade. If not inherently distinctive, the trade name or insignia must also be ‘established in the market’.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Prior use, likelihood of confusion as to origin.
Other distinctive signs
Article 124(3)(a) GR-TML
The peculiar shape of the goods or of their packaging, as well as the peculiar get-up or decoration thereof (Iδιαίτερος διασχηματισμός, διακόσμηση).
Conditions for protection
The signs must be known in the relevant commercial sector as product identifiers of a given trader. Protection is acquired through use in the course of trade. The signs must be capable of performing a trade mark-like function (i.e. they must have distinctive character as a result of a certain degree of originality).
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 43
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Prior use, likelihood of confusion as to origin.
General note: All the exclusive signs referred to above are also protected under Article 1 of Law 146/1914 on ‘Unfair Competition’, especially as regards infringing acts not covered by the above provisions (e.g. protection of reputed signs for dissimilar goods – dilution of, or unfair advantage to, their distinctiveness or repute, that is, where likelihood of confusion is not relevant).
9 Spain
9.1 Unregistered trade marks
Unregistered trade marks are not protected in Spain unless they are considered to be well known in Spain within the meaning of Article 6bis of the Paris Convention.
9.2 Other signs used in the course of trade
Business names (Nombres comerciales) Article 7(1)(a) and (b), 7(2)(a) and (b) ES -TML
Conditions for protection
The name must be registered or applied for at the Spanish Patent and Trade Mark Office.
Rights conferred (a) and conditions (b)
(a) Right to oppose and prohibit the use of subsequent trade marks. (b) Identical or similar signs and identical or similar goods or services and likelihood
of confusion.
Business names, designations or corporate names of legal persons Article 9(1)(d) ES–TML
Conditions for protection
The names do not have to be registered or applied for at the Spanish Patent and Trade Mark Office provided that they identify a person (enterprise) for the purposes of trade. Evidence of use or evidence that the sign is well known in the national territory must be provided.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 44
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) Identical or similar signs and identical or similar goods or services and likelihood
of confusion.
10 France
10.1 Unregistered trade marks
Unregistered trade marks are not recognised under French law with the exception of well‐known trade marks in the sense of Article 6bis of the Paris Convention (Article L711-4(a) French Intellectual Property Code (FR-IP CODE))
10.2 Other signs used in the course of trade
Article L711-4 FR-IP Code provides a non exhaustive list of signs that, if qualified as earlier, might prohibit use of a later trade mark.
Company name or style of a company (‘dénomination sociale’)
Article L711-4(b) FR-IP Code
Conditions for protection
Protection of the company name is acquired upon c ompletion of the documents founding the company. Must be known throughout the French territory.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of a subsequent trade mark. (b) There must be a risk of confusion in the mind of the public.
Trade name (nom commercial)
Article L711-4(c) FR-IP CODE
Conditions for protection
Protection acquired from first use in trade.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 45
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of a subsequent trade mark. (b) There must be a risk of confusion in the mind of the public.
Business sign (‘enseigne’)
Article L711-4(c) FR-IP CODE
Conditions for protection
Protection acquired from first use in trade. Must be known throughout the territory of France (enseigne notoire).
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of a subsequent trade mark. (b) There must be a risk of confusion in the mind of the public.
Domain names (‘noms de domaine’)
Conditions for protection
The domain name is protected when it is reserved and used.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of a subsequent trade mark for identical or similar products and/or in the event of unfair advantage or dilution of reputations.
(b) There must be a likelihood of confusion or damage to first user.
11 Croatia
11.1 Unregistered trade marks
Unregistered trade marks are protected in Croatia. Article 6(2), (4) Croatian Trade Marks Act and the Act on Amendments to the Trade Mark Act
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 46
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
The unregistered trade mark must be well-known in the Republic of Croatia prior to the filing/priority date of the contested trade mark in the sense in which the words ‘well- known’ are used in Article 6bis of the Paris Convention.
Rights conferred (a) and conditions (b)
(a) Right to oppose the registration of a subsequent trade mark. (b) The subsequent trade mark must be i dentical or similar and h ave applied for
identical or similar goods and/or services.
11.2 Other signs used in the course of trade
Earlier firm
Article 6(6) Croatian Trade Marks Act and the Act on Amendments to the Trade Mark Act
Conditions for protection
It must be registered.
Rights conferred (a) and conditions (b)
(a) Right to oppose the registration of a subsequent trade mark. (b) The firm or the essential part thereof must be identical or similar to the sign in
respect of which registration is sought, and the goods and/or services must be identical or similar, unless the applicant had t he identical or similar firm at the time of filing the application for registration of a trade mark.
12 Italy
12.1 Unregistered trade marks
An unregistered trade mark (‘marchio di fatto’) is defined as a sign known as a trade mark or as a sign that is distinctive for manufactured goods or services on the market. Prior use must be notoriously known.
Article 12(1)(a) IT-IP CODE
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 47
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
The unregistered trade mark must be used to the extent that it is ‘notoriously known throughout Italy or a substantial part thereof.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent trade marks. (b) Identical or similar signs and identical or similar goods or services and likelihood
of confusion including likelihood of association.
12.2 Other signs used in the course of trade
Article 12(1)(b) IT-IP Code
Company name, corporate name, trade name or business signs, domain name adopted by others (‘ditta’, ‘denominazione sociale’, ‘ragione sociale’, ‘insegna’, ‘nome a dominio’)
Conditions for protection
Used to the extent that it is ‘notoriously known throughout Italy or a s ubstantial part thereof.
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent trade mark, provided it is known by the relevant public throughout Italy or a substantial part thereof.
(b) Identical or similar signs and identical or similar goods or services and likelihood of confusion including likelihood of association.
13 Cyprus
13.1 Unregistered trade marks
Unregistered trade marks are not recognised under the law of Cyprus.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 48
FINAL VERSION 1.0 DATE 01/08/2014
14 Latvia
14.1 Unregistered trade marks
Unregistered trade marks are protected in Latvia. Article 9(3) No 4 LV-TML
Conditions for protection
The unregistered mark must have been used in good faith and lawfully prior to the date of filing of the application for registration of the trade mark (or the priority date respectively) in commercial activities in Latvia in connection with identical or similar goods or services.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Identical or similar signs and i dentical or similar goods or services; use of the
subsequent trade mark must also be capable of misleading consumers as to the origin of the goods and services.
14.2 Other signs used in the course of trade
Trade names originating in Latvia or in a foreign country (commercial designations, names of a mass medium, or other similar signs) that are well-known in Latvia.
Article 9(3) No 3, LV-TML
Conditions for protection
The trade name must be acquired through fair and lawful use in the course of trade in Latvia before the filing/priority date of a subsequent trade mark used in an identical or similar business sector. A ‘well-known’ trade name must have become well known in Latvia before the filing/priority date of the subsequent trade mark.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) The signs must be the same or confusingly similar and must cover identical or
similar goods and services.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 49
FINAL VERSION 1.0 DATE 01/08/2014
15 Lithuania
15.1 Unregistered trade marks
Article 7(1), (3), 9 LT-TML.
Conditions for protection
Unregistered trade marks are protected only if recognised as well known by a c ourt decision.
15.2 Other signs used in the course of trade
Trade names/business names and other business identifiers
Rights conferred (a) and conditions (b)
(a) Right to invalidate subsequent (registered) trade marks. (b) Registration of a mark will be declared invalid if the mark is identical to a legal person’s business name or is likely to be confused with a legal person’s business name.
Article 7(1), No 4 LT-TML
16 Hungary
16.1 Unregistered trade marks
An unregistered trade mark is not protected under Hungarian trade mark law unless it has been used effectively in the country where use of the sign without the consent of the prior user would be contrary to law.
Article 5(2)(a) HU-TML
Article 6 of Act LVII of 1996 on the prohibition of unfair and restrictive market practices prohibits the manufacture, distribution or advertising of goods and services without the consent of competitors if the goods and s ervices concerned have a c haracteristic presentation, packaging or labelling (including designation of origin), and the use of a name, mark or designation by which a competitor or its goods and services are usually recognised.
The above-mentioned provisions are only exemplificative.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 50
FINAL VERSION 1.0 DATE 01/08/2014
17 Malta
17.1 Unregistered trade marks
Chapter 26 of Malta’s Trade Mark Act; Article 6(4) MT‐TMA
Conditions for protection
Protection is acquired through continuous prior use.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) Signs must be likely to be confused and must cover identical or similar goods and
services.
17.2 Other signs used in the course of trade
Article 11(3) MT-TMA
Conditions for protection
Protection is acquired through continuous use.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks (Article 6(2) MT-TMA). (b) Likelihood of confusion.
In view of Articles 6(4) and 11(3) MT-TMA, other signs used in the course of trade are regarded as earlier rights.
18 Austria
18.1 Unregistered trade marks
Unregistered trade marks (TMs) are protected in Austria:
§ 31 Austrian Trade Mark Protection Act (1970)
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 51
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
An unregistered TM must have acquired a certain recognition in the course of trade (‘Verkehrsgeltung’) before the owner of a s ubsequent (registered) TM applied for registration of its TM, unless the owner of the subsequent (registered) TM has used its TM in trade without registering it for at least as long as the owner of the unregistered TM.
Rights conferred (a) and conditions (b)
(a) Right to apply for cancellation of a subsequent (registered) TM. (b) The owner of the unregistered TM must not have tolerated use in trade of the
subsequent registered TM during five successive years (‘Verwirkung’). This applies only to those goods and/or services for which the registered trade mark was used and only if the application for the registered trade mark was not filed in bad faith. Likelihood of confusion must be found.
18.2 Other signs used in the course of trade
§ 32 Austrian Trade Mark Protection Act (1970) § 9 of the Federal Act Against Unfair Competition (1984)
Corporate signs (‘Unternehmenskennzeichen’), i.e. names, firms (trade names) (‘Firma’) or specific designations of an und ertaking (‘besondere Bezeichnung eines Unternehmens’), or similar designations
Conditions for protection
The entrepreneur must be the owner of the corporate sign(s).
Rights conferred (a) and conditions (b)
(a) Right to apply for cancellation of a subsequent (registered) TM. (b) The entrepreneur must not have tolerated use in trade of the registered TM
during five successive years (‘Verwirkung’). This applies only to those goods and/or services for which the registered trade mark was used and onl y if the application for the registered trade mark was not filed in bad faith. Use of the trade mark could entail a likelihood of confusion in trade with one of the petitioner’s aforementioned corporate signs.
Business signs (‘Geschäftsabzeichen’) and other facilities designed to distinguish the enterprise from other enterprises including the get-up or packaging of goods or the presentation of business stationery
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 52
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
The business signs must be perceived as designations of the enterprise by the market participants involved or have acquired such recognition through use (‘Verkehrsgeltung’).
Rights conferred (a) and conditions (b)
(a) [Only] the right to sue the infringer to cease and desist [from such action] as well as to claim damages if the infringement was carried out with intent or in a negligent way. [In addition to the above, with registered TMs the owner also has the right to sue for cease and desist [use of its TM] and to claim damages before a civil court.]
(b) The entrepreneur must not have tolerated use in trade of the registered TM during five successive years (‘Verwirkung’). This applies only to those goods and/or services for which the registered trade mark was used and onl y if the application for the registered trade mark was not filed in bad faith. The trade mark must be used in such a way that it is likely to be confused in trade with one of the entrepreneur’s business signs.
19 Poland
19.1 Unregistered trade marks
Article 132(1)(ii) PL-IP Law
Conditions for protection
Unregistered trade marks (TMs) are protected only if they are well known and used in the course of trade.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) Unregistered TM must be well known and used in the course of trade; likelihood
of confusion.
Additional protection is available to well-known unregistered marks with a reputation (renowned trade mark). The owner of such a TM may request that the registration of a later identical or similar TM be declared invalid, irrespective of the goods or services for which it is registered, if the use thereof without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier TM. A trade mark owner is prohibited from bringing such an action if the owner has been aware of and tolerated use of the later TM for five consecutive years.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 53
FINAL VERSION 1.0 DATE 01/08/2014
19.2 Other signs used in the course of trade
Article 131(1), (5) PL-IP Law Article 156(1)(i) PL-IP Law, Article 158(1) PL-IP Law
Name or address under which a person runs his business activity
Conditions for protection
Name under which a person runs their business activity.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the filing of a trade mark. (b) There must have been prior use of the name for business activity for identical or
similar goods such as to be l ikely to mislead the public as to the origin of the product.
20 Portugal
20.1 Unregistered trade marks
The following unregistered trade marks (TMs) are protected in Portugal.
Unregistered TMs that are being used
Article 227 PT–IP Code
Conditions for protection
The unregistered TM must have been used in Portugal during the six months prior to the filing of an application for registration.
Rights conferred (a) and conditions (b)
(a) Right to oppose registration of the same trade mark by other entities. (b) The signs and the goods and/or services must be the same.
Well-known marks
Article 241, PT-IP Code
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 54
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
The mark in question must be well known in Portugal.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) The signs must be identical or similar and the goods and/or services identical or
similar; likelihood of confusion or association with the holder of the earlier right must be established; the interested party must have applied for registration of the well-known mark.
Prestigious trade marks
Article 241 PT-IP Code
Conditions for protection
The mark in question must enjoy prestige in Portugal.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) The signs must be identical or similar or, even if the goods and services are
dissimilar, use of the trade mark applied for must be likely to take unfair advantage of, or be det rimental to, the distinctive character or repute of the earlier prestigious trade mark; the interested party must have applied for registration of the prestigious trade mark.
20.2 Other signs used in the course of trade
Trade names, company names
Article 239(2)(a) PT-IP Code
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) The name in question must be likely to mislead or confuse the consumer.
Logotypes (name and emblem/insignia of an establishment) (Word and figurative signs identifying an entity trading products or providing services)
Article 304-N PT-IP Code
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 55
FINAL VERSION 1.0 DATE 01/08/2014
Conditions for protection
The sign in question must be registered.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent signs. (b) The proprietor must not have given its consent, and the subsequent sign must be
identical or similar to the proprietor’s sign.
21 Romania
21.1 Unregistered trade marks
As a general rule, unregistered trade marks (TMs) are not protected under Romanian TM Law (Law No 84/1998 on trade marks and geographical indications). As an exception to that rule, in the case of an opposition, an unregistered trade mark may be regarded as an earlier right if it is well-known in Romania within the meaning of Article 6bis of the Paris Convention).
Article 3(d) and Article 6(2)(f) of the RO-IP Law
Conditions for protection
The unregistered TM must be well known in Romania within the meaning of Article 6bis of the Paris Convention.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) It must be well-known in Romania and there must be a likelihood of confusion.
21.2 Other signs used in the course of trade
Other signs used in the course of trade that are considered to be ear lier rights are trade names.
Only the owner of a trade name, can oppose a trade mark or request the competent judicial body to cancel that trade mark.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 56
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. Only the owner of a trade name can oppose a trade mark or request the competent judicial body to cancel that trade mark right.
(b) Prior use on the market.
22 Slovenia
22.1 Unregistered trade marks
Unregistered trade marks are not directly recognised under the Slovenian IP Act.
Nevertheless, under Article 44(1)(d) SL–IP Act, a sign is not eligible for registration as a mark if it is identical or similar to a m ark or unregistered sign; in the Republic of Slovenia, the latter is regarded as a well-known mark within the meaning of Article 6bis of the Paris Convention.
22.2 Other signs used in the course of trade
Article 44(1)(f) SL–IP Act
Registered trade names (registered company names), where the term ‘company name’ is interpreted broadly and c overs not only private companies such as private firms, limited liability companies, other commercial companies, and secondary trade names, but also foundations, unions, associations, museums and public institutions.
23 Slovakia
23.1 Unregistered trade marks
Article 7(f) SK-TML
Unregistered marks are defined as non-registered signs acquired and used in the course of trade prior to the filing of a subsequent application. They must be distinctive and of more than mere local significance.
Conditions for protection
The unregistered mark must have been used earlier in the course of trade of more than mere local significance and must have acquired distinctiveness through use in the
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 57
FINAL VERSION 1.0 DATE 01/08/2014
course of trade in the territory of the Slovak Republic of more than mere local significance prior to the filing of the contested application.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) Signs must be i dentical or similar and must cover identical or similar goods
and/or services
23.2 Other signs used in the course of trade
Article 7(f) SK-TML
Trade names and other related signs.
Conditions for protection
Recordal in the Register of Companies or a similar register.
These signs must have acquired distinctiveness through use in the course of trade in the territory of the Slovak Republic of more than mere local significance prior to the filing of the contested application.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) Signs must be i dentical or similar and must cover identical or similar goods
and/or services..
24 Finland
24.1 Unregistered trade marks
Unregistered trade marks are protected in Finland:
§ 1, § 2(3), § 6, § 14(1), (6) of the Finnish Trade Mark Act (FI-TML)
Conditions for protection
Use leading to an unregistered mark becoming established on the market. A mark is considered established if it has become generally known in the appropriate business or consumer circles in Finland as a s ymbol specific to its proprietor’s goods and/or services.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 58
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) trade marks. (b) The scope of protection is identical to that of a Finnish registered trade mark, i.e.
corresponding to Article 9(1)(a), (b) and (c) CTMR.
24.2 Other signs used in the course of trade
§ 1, § 2(2), 3(2), § 6, § 14(1), (6) FI-TML
Trade names (toiminimi, firma: any name that a nat ural or legal person uses in business activities), including secondary trade names (aputoiminimi, bifirma: natural or legal persons can carry out part of their business under a secondary trade name) and secondary symbols (toissijainen tunnus, sekundärt kännetecken: signs, including figurative signs, used in the course of trade).
Conditions for protection
Use leading to a trade name becoming established on the market.
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) The signs must relate to identical or similar goods and/or services and there must
be a likelihood of confusion.
Trader’s name
§ 1, 6, § 14(1), (6) FI-TML
Rights conferred (a) and conditions (b)
(a) Right to prohibit subsequent trade marks. (b) The signs must relate to identical or similar goods and/or services and there must
be a likelihood of confusion.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 59
FINAL VERSION 1.0 DATE 01/08/2014
25 Sweden
New Swedish Trade Marks Act (2010:1877)
25.1 Unregistered trade marks
Chapter 1, Article 7 and Chapter 2, Article 8 SE-TMA
Conditions for protection
The unregistered trade mark must have been used in such a way that it has become established on the market.
Rights conferred (a) and conditions (b)
(a) The same as for registered trade marks: right to prohibit the use of subsequent trade marks.
(b) A mark is considered to have become established on the market when it is, within a significant portion of the circle for which it is intended, known as a symbol for the goods being made available under it.
25.2 Other signs used in the course of trade
Trade names/Company names
Chapter 1, Article 7(1); Chapter 1, Article 8; Chapter 2, Article 9 SE-TMA
Conditions for protection
The name must be registered as a company name or used in such a way that it has become established on the market. May be limited to the part of the country in which it is established on the market.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) There must be a l ikelihood of confusion and the signs must cover identical or
similar goods and services.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 60
FINAL VERSION 1.0 DATE 01/08/2014
26 United Kingdom
General note for unregistered signs: passing off is not in any way a ‘proprietary right’ that ‘protects an unregistered trade mark or other sign used in the course of trade’. It refers rather to a ‘wrongful invasion’ of a property right, but the property protected in this case is the goodwill and r eputation of a business that is likely to be har med by misrepresentation. Whether, e.g., an opposition based on Section 5(4)(a) is successful will, then, depend on a number of cumulative factors: (demonstration and scope of goodwill; misrepresentation, damage to goodwill). On that basis, any distinction between ‘protection’ given to ‘unregistered trade marks’ and to ‘other signs used in the course of trade’ in the context of the UK’s common-law right of ‘passing off’ is meaningless. The right of ‘passing off’ could potentially (and more often than not does) arise purely at local level (relative to the UK as a whole). (See below, ‘The particularities of the action of passing off’).
26.1 Unregistered trade marks
Unregistered trade marks used in the course of trade
Section 5(4)(a) UK-TMA
Conditions for protection
Must be used in the course of trade if protected by any rule of law, including that of passing off.
Rights conferred (a) and conditions (b)
(a) Right to prohibit the use of subsequent trade marks. (b) Goodwill must be demonstrated in the UK at the relevant date, the scope of
which must extend to the goods or services of the application; misrepresentation as regards the ‘signs’ at issue; damage to the opponent’s goodwill can be inferred by use of the sign applied for.
26.2 Other signs used in the course of trade
Section 5(4)(a) UK-TMA
Sign used in the course of trade.
Sign used in the course of trade, protected by any rule of law, including that of passing off.
Conditions for protection
Same as under Section 26.1.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 61
FINAL VERSION 1.0 DATE 01/08/2014
Rights conferred (a) and conditions (b)
Same as under Section 26.1.
Remarks: The Olympic Symbol Protection Act 1995 c ontains provisions on t he exclusive use for commercial purposes of the Olympic symbol and certain words associated with the Olympic games by an individual nominated by the Secretary of State; such entitlement is not a basis for Article 8(4) CTMR.
The particularities of the action of passing off
Passing off is an economic tort in the common-law jurisdictions, the essential elements of which are (i) a misrepresentation (ii) causing damage to (iii) the goodwill of a trader or traders. It is a form of intellectual property enforcement against unauthorised use of an intellectual property right.
The purpose of this section is not to analyse the substantive requirements of passing- off actions as developed by the jurisprudence of the common-law courts but rather to set out which rights that can be protected by passing-off actions fall within the scope of Article 8(4) CTMR, and t o show how the European judicature has applied the key requirements of Article 8(4) CTMR as regards passing off.
Historically, and in their most common form, passing-off actions offer protection similar to that for registered trade marks to non-registered trade marks in that they prevent use of a name, word, device or get-up that leads to the goods or services of one trader being misrepresented as those of another. In doing so, passing-off actions protect the goodwill that traders accrue by using signs rather than protecting signs per se.
The tort of passing off covers a broad set of situations ranging from its usual form above to an extended form which may prevent the use of generic terms where such use misrepresents goods or services as possessing a characteristic or quality that they do not have (e.g. Vodkat used on a type of drink that is not Vodka).
In passing-off actions, the opponent (claimant) must prove three elements, the so-called classical trinity:
(a) goodwill attached to the goods or services that it supplies;
(b) misrepresentation by the defendant to the public (intentional or not) leading or likely to lead the public to believe that the goods or services offered are those of the opponent (claimant);
(c) damage (actual or potential) by reason of the erroneous belief engendered by the defendant’s misrepresentation.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART C
OPPOSITION
SECTION 5
TRADE MARKS WITH REPUTATION ARTICLE 8(5) CTMR
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Table of Contents
1 Introduction................................................................................................ 4 1.1 Purpose of Article 8(5) CTMR ....................................................................4 1.2 Legal framework.........................................................................................4
2 Scope of Applicability ............................................................................... 5 2.1 Applicability to registered marks ..............................................................5
2.1.1 The requirement of registration ...................................................................... 5 2.1.2 Relationship between marks with reputation (Article 8(5) CTMR) and well-
known marks (Article 8(2)(c) CTMR).............................................................. 6
2.2 Applicability to similar and identical goods and services.......................8
3 Conditions of Application ......................................................................... 9 3.1 Earlier mark with reputation ....................................................................10
3.1.1 Nature of reputation...................................................................................... 10 3.1.2 Scope of reputation ...................................................................................... 11
3.1.2.1 Degree of recognition ................................................................................11 3.1.2.2 Relevant public..........................................................................................12 3.1.2.3 Goods and services covered.....................................................................13 3.1.2.4 Relevant territory .......................................................................................14 3.1.2.5 Relevant point in time................................................................................16
3.1.3 Assessment of reputation – relevant factors ................................................ 18 3.1.3.1 Trade mark awareness..............................................................................19 3.1.3.2 Market share .............................................................................................20 3.1.3.3 Intensity of use ..........................................................................................22 3.1.3.4 Geographical extent of use........................................................................24 3.1.3.5 Duration of use ..........................................................................................24 3.1.3.6 Promotional activities ................................................................................25 3.1.3.7 Other factors..............................................................................................27
3.1.4 Proof of reputation ........................................................................................ 28 3.1.4.1 Standard of proof.......................................................................................28 3.1.4.2 Burden of proof..........................................................................................29 3.1.4.3 Evaluation of the evidence ........................................................................30 3.1.4.4 Means of evidence ....................................................................................31
3.2 The similarity of the signs .......................................................................39 3.2.1 Notion of ‘similarity’ pursuant to Article 8(5) CTMR compared with
Article 8(1)(b) CTMR .................................................................................... 40
3.3 The link between the signs ......................................................................41 3.3.1 Examples where a link was found between the signs .................................. 43 3.3.2 Examples where no link was found between the signs................................ 44
3.4 Encroachment upon reputation...............................................................46 3.4.1 Protected subject matter............................................................................... 46 3.4.2 Assessment of encroachment upon reputation ............................................ 47 3.4.3 Forms of encroachment................................................................................ 49
3.4.3.1 Taking unfair advantage of distinctiveness or repute ................................50 3.4.3.2 Detriment to distinctiveness.......................................................................56 3.4.3.3 Detriment to repute....................................................................................61
3.4.4 Proof of encroachment upon reputation ....................................................... 67 3.4.4.1 Standard and burden of proof....................................................................67
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3.4.4.2 Means of evidence ....................................................................................70
3.5 Use without due cause.............................................................................70 3.5.1 Examples of due cause ................................................................................ 71
3.5.1.1 Due cause was accepted ..........................................................................71 3.5.1.2 Due cause was not accepted ....................................................................72
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1 Introduction
1.1 Purpose of Article 8(5) CTMR
Whereas under Article 8(1)(a) CTMR double identity of signs and goods/services and under Article 8(1)(b) CTMR a likelihood of confusion are the necessary preconditions for the protection of a registered trade mark, Article 8(5) CTMR requires neither identity/similarity of goods/services nor a l ikelihood of confusion. Article 8(5) CTMR grants the protection for registered trade marks not only as regards identical/similar goods/services but also in relation to dissimilar goods/services without requiring any likelihood of confusion, provided the signs are identical/similar and the earlier mark enjoys a reputation which would be encroached upon by the use without due cause of the trade mark applied for.
The rationale behind the extended protection under Article 8(5) CTMR is the consideration that the function and value of a trade mark are not confined to its being an indicator of origin. A trade mark can also convey messages other than an indication of the origin of the goods and services, such as a promise or reassurance of quality or a certain image of, for example, luxury, lifestyle, exclusivity etc. (‘advertising function’) (judgment of 18/06/2009, C-487/07 L’Oréal and others). Trade mark owners frequently invest large sums of money and effort to create a certain brand image associated with their trade mark. This image associated with a trade mark confers on it an – often significant – economic value, which is independent of that of the goods and services for which it is registered.
Article 8(5) CTMR aims at protecting this advertising function and the investment made in creating a c ertain brand image by granting protection to reputed trade marks, irrespective of the similarity of the goods or services or of a l ikelihood of confusion, provided it can be demonstrated that the use of the contested application without due cause would encroach upon this reputation. Consequently, the main focus of Article 8(5) CTMR is not the protection of the general public against confusion as to origin, but rather the protection of the trade mark proprietor against encroachment upon the reputation of a mark for which it has made significant investments.
1.2 Legal framework
According to Article 8(5) CTMR, upon opposition by the proprietor of an 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 the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national 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.
The same wording is used in the parallel provisions of the Trade Mark Directive (Directive 2008/95/EC of the European Parliament and o f the Council of 22 October
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2008 to approximate the laws of the Member States relating to trade marks (Codified version), ‘TMD’), namely Article 4(3) TMD, which deals with the protection of Community trade marks with reputation, and Article 4(4)(a) TMD, the equivalent provision for national marks. Even though the implementation of Article 4(4)(a) TMD was optional, all the Member States have in fact adopted provisions granting enlarged protection to national marks with reputation.
However, even in the hypothetical case that an acceding country decides not to enact an equivalent provision in its trade mark law, the independent reference to national marks with reputation in Article 8(5) CTMR means that they are directly protected at Community level, that is, irrespective of whether the national law grants them enlarged protection.
The wording of Article 8(5) CTMR is also very similar to the one used in Article 9(1)(c) CTMR and Article 5(2) TMD, that is, the provisions determining the exclusive rights of a trade mark proprietor, with a slight difference in the way these refer to the condition of detriment. Unlike the conditional form in Article 8(5) CTMR, which applies where use of the trade mark applied for ‘would take unfair advantage of, or be detrimental to the distinctiveness or repute of the earlier mark’, Article 9(1)(c) CTMR and Article 5(2) TMD read ‘takes unfair advantage of or is detrimental to’. The reason for this difference is that in the first case – Article 8(5) CTMR – registrability is at stake, which may have to be decided upon w ithout any use of the later mark having been made, while in the second case the prohibition of use is at issue. The impact of this difference on the kind of evidence required for proving detriment in either case is discussed in paragraph 3.4 below.
2 Scope of Applicability
The wording of Article 8(5) CTMR has given rise to some controversy as regards its applicability exclusively to (a) earlier registered marks and ( b) dissimilar goods and services. As these issues directly affect the scope of its application, it is necessary to clarify at the outset whether it is possible to also apply Article 8(5) CTMR to (a) unregistered/well-known marks and (b) similar or identical goods and services.
2.1 Applicability to registered marks
2.1.1 The requirement of registration
Article 8(5) CTMR specifies the kinds of earlier rights on which an opposition may be based by reference to paragraph 2 of the same article, which, apart from Community, international, Benelux and nat ional registrations or applications, includes earlier well- known marks within the meaning of Article 6bis of the Paris Convention, that is, marks that may or may not be registered.
It has been argued that as a consequence of this reference, Article 8(5) CTMR should also apply to unregistered marks, at least to the extent that these have become well- known in the relevant territory, all the more so since the protection of well-known marks against dissimilar goods and services is favoured both by Article 4(1)(b) of the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks and by Article 16(3) TRIPS.
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However, such an i nterpretation cannot be s ustained by the wording of Article 8(5) CTMR, which restricts, indirectly but clearly, its applicability to earlier registered marks by prohibiting registration ‘where [the application] is identical or similar to the earlier trade mark and is to be registered for goods and services that are not similar to those for which the earlier trade mark is registered. It follows that the existence of an earlier registration is a necessary condition for the application of Article 8(5) CTMR and that, as a consequence, the reference to Article 8(2) CTMR should be l imited to earlier registrations and to earlier applications subject to their registration (judgment of 11/07/2007, T-150/04, ‘TOSCA BLU’, para. 55).
Such a restrictive approach is not incompatible with Article 16(3) TRIPS, which also refers to an earlier registration in a very similar manner:
Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark … would indicate a connection between those goods or services and t he owner of the registered trademark and provided that the interests of the owner of the registered trade mark are likely to be damaged by such use. (Emphasis added)
Nor can this view be e xcluded by the fact that the WIPO Recommendations do not impose any conditions for granting extended protection to earlier well-known marks as they are not binding for the interpretation of the CTMR.
Therefore, Article 8(5) CTMR only applies to earlier Community, international, Benelux and national registrations, and to earlier applications, subject to their registration.
2.1.2 Relationship between marks with reputation (Article 8(5) CTMR) and well-known marks (Article 8(2)(c) CTMR)
The requirement of registration serves to mark the border between Article 8(5) CTMR and Article 8(2)(c) CTMR. However, neither Article 8(2)(c) CTMR nor Article 6bis of the Paris Convention stipulate expressly that the well-known mark has to be a non- registered mark. The reason for the principle that only non-registered marks are covered by these latter provisions results indirectly both from the spirit and the ratio legis of these provisions.
As regards the Paris Convention, the purpose of the provision of Article 6bis, introduced for the first time in the Convention in 1925, was to prevent the registration and use of a trade mark liable to create confusion with another mark already well known in the country of such registration, although the latter well-known mark was not, or not yet, protected in that country by registration.
As regards the CTMR, the purpose was to avoid a legal gap as Article 8(5) protects only registered CTMs. Without Article 8(2)(c) CTMR, reputed non-registered trade marks would have remained without protection (apart from that of Article 8(4) CTMR). In order to avoid this legal gap, the CTMR foresaw the protection of well-known marks within the sense of Article 6bis of the Paris Convention as this article was drawn up mainly to grant protection to non-registered trade-marks with a well-known character.
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Consequently, on the one hand, well-known marks which are not registered in the relevant territory cannot be protected under Article 8(5) CTMR against dissimilar goods. They can only be protected against identical or similar goods if there exists a likelihood of confusion pursuant to Article 8(1)(b) CTMR, to which Article 8(2)(c) CTMR refers for determining the scope of protection. However, this is without prejudice to the fact that well-known marks, to the extent they are not registered, may also be protected under Article 8(4) CTMR. Therefore, if the relevant national law affords them protection against dissimilar goods and services, such enhanced protection may also be invoked under Article 8(4) CTMR.
On the other hand, where well-known marks have been registered, either as CTMs, or as national marks in one of the Member States, they can be invoked under Article 8(5) CTMR, but only if they also fulfil the requirements of reputation.
Even though the terms ‘well-known’ (a traditional term used in Article 6bis of the Paris Convention) and ‘reputation’ denote distinct legal concepts, there is a substantial overlap between them, as shown by a comparison of the way well-known marks are defined in the WIPO Recommendations with the way reputation was described by the Court in its judgment of 14/09/1999, C-375/97 ‘General Motors’ (concluding that the different terminology is merely a ‘…nuance, which does not entail any real contradiction…’, para 22).
In practical terms, the threshold for establishing whether a trade mark is well-known or enjoys reputation will usually be the same. Therefore, it will not be unusual for a mark which has acquired well-known character to have also reached the threshold laid down by the Court in General Motors for marks with reputation, given that in both cases the assessment is principally based on quantitative considerations regarding the degree of knowledge of the mark among the public, and that the thresholds required for each case are expressed in quite similar terms (‘known or well-known at the relevant sector of the public1’ for well-known marks, as against ‘known by a s ignificant part of the relevant public’ as regards marks with reputation’).
This has also been confirmed by case-law. In its judgment of 22/11/2007, C-328/06 ‘Fincas Tarragona’, the Court qualified the notions of ‘reputation’ and ‘well-known’ as kindred notions (‘notions voisines’), underlining in this way the substantial overlap and relationship between them (see para. 17). See also the judgment of 11/07/2007, T- 150/04 ‘TOSCA BLU’ (paras. 56-57) The overlap between marks with reputation and r egistered well-known marks has a repercussion on the raising of the ground of opposition, in the sense that it should not matter for the applicability of Article 8(5) CTMR if the opponent calls its earlier registration a well-known mark instead of a mark with reputation. For this reason, the terminology used must be carefully scrutinised, especially where the grounds of the opposition are not clearly explained, and a flexible approach should be taken where appropriate.
In the context of Article 8(2)(c) CTMR, the requirements for applying Article 6bis of the Paris Convention and Article 8(1)(a)/(b) CTMR are the same, although the terminology used is different. Both provisions require similarity or identity between the goods or services and similar or identical signs (Article 6bis uses the terms ‘reproduction’ which is equivalent to identity and ‘imitation’ which refers to similarity). Both articles also require a l ikelihood of confusion (‘liable to create confusion’ is the term used in
1 Article 2(2)(b) and 2(2)(c) of the WIPO Recommendations.
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Article 6bis). However, while according to Article 8(2)(c) CTMR a well-known mark can serve as an earlier right and, thus, as the basis of an opposition, the grounds for an opposition under Article 8(2)(c) CTMR are (solely) Article 8(1)(a) or (b) CTMR.
For example, if the opponent bases the opposition on (i) an earlier registration invoking Article 8(1)(b) CTMR and Article 8(5) CTMR and (ii) an identical earlier well-known mark in the same territory under Article 8(2)(c) CTMR, the earlier right must be examined:
1. under Article 8(1)(b) CTMR as an ear lier registration with enhanced distinctiveness (in view of its well-known character);
2. under Article 8(5) CTMR, as an earlier registration with reputation;
3. under Article 8(2)(c) CTMR in conjunction with Article 8(1)(b) CTMR as an earlier non-registered well-known mark (which will only be useful if registration is not proven, as otherwise the outcome is the same as in (i) above).
Even if the opponent has not expressly based its opposition on Article 8(5) CTMR, the contents of the notice and the wording of the explanation of grounds must be carefully analysed with a v iew to objectively establishing whether the opponent also wants to rely on Article 8(5) CTMR.
2.2 Applicability to similar and identical goods and services
The literal interpretation of Article 8(5) CTMR leads to the prima facie conclusion that it only applies to dissimilar goods and services, as its wording provides that the mark applied for will not be registered ‘where it is identical with, or similar to, the earlier trade mark and is to be registered for goods and services which are not similar to those for which the earlier trade mark is registered’.
However, the above interpretation has been strongly criticised for leaving a gap in the protection of marks with reputation, because if protection may be granted under Article 8(5) CTMR where the goods and services are not similar, it would seem inconsistent to deny its application to similar or identical goods and services where the rest of its requirements are fulfilled and Article 8(1)(b) CTMR does not apply because there is no likelihood of confusion. In such a case trade mark owners would get more protection in the less dangerous case, that is, only where a priori the goods and services were not similar. For this reason, it has been s uggested that Article 8(5) CTMR should also apply, directly or by analogy, where the goods and services are identical or similar.
This question with regard to the correct interpretation of the equivalent provisions of the TMD (Article 4(4)(a) and Article 5(2) TMD) was referred to the Court of Justice for a preliminary ruling (judgment of 09/01/2003, C-292/00, ‘Davidoff’).
The Advocate General in Davidoff suggested following the literal approach and, thus, limiting the protection afforded by Article 4(4)(a) and Article 5(2) TMD only to cases where the goods and services of the later mark are not similar to those of the earlier mark. He considered that it was the intention of the legislator to limit the special protection granted to marks with reputation to dissimilar goods and that there was no
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real gap in the law worthy of interpreting the text in a manner contrary to its express wording.
However, the Court did not follow the opinion of the Advocate General and came to the opposite conclusion, namely that Article 4(4)(a) and Article 5(2) TMD should be interpreted ‘as entitling the Member States to provide specific protection for registered trade marks with a reputation in cases where a later mark … is intended to be used or is used for goods or services identical with or similar to those covered by the registered mark’ (emphasis added, para. 30).
In reaching this conclusion, the Court observed that Article 5(2) TMD must not be interpreted solely on the basis of its wording, but also in the light of the overall scheme and objectives of the system of which it is a part. Therefore, it cannot be interpreted in a manner which would lead to marks with a reputation having less protection where a sign is used for identical or similar goods or services. The Court justified this approach as the only one consistent with its interpretation of Articles 4(1)(b) and 5(1)(b) TMD, by referring to its findings in its judgment of 11/11/1997, C-251/95 ‘Sabel’, and its judgment of 22/06/2000, C-425/98 ‘Marca Mode’, where it excluded a broad interpretation of the notion of confusion.
The ruling of the Court in Davidoff, granting extended protection under Article 4(4)(a) TMD and Article 5(2) TMD also for similar or identical goods or services, was reaffirmed in several later judgments (judgment of 23/03/2010, C-238/08, ‘Google France’, para. 48; judgment of 18/06/2009, C-487/07, ‘L’Oreal and ot hers, para. 35; judgment of 23/10/2003, C-408/01, ‘Adidas Salomon and Adidas Benelux’, para. 18).
In practice, the gap of protection closed through the inclusion of identical and similar goods under Article 8(5) CTMR will be confined to the rare cases where the signs are similar, the goods are identical or similar and the earlier mark has a r eputation, but there is no likelihood of confusion within the sense of Article 8(1)(b) CTMR. As the Advocate General pointed out in his opinion, such a scenario will be quite exceptional.
3 Conditions of Application
The following conditions need be m et for Article 8(5) CTMR to apply (judgment of 16/12/2010 joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by the Court of Justice in judgment of 10/05/2012 C-100/11 P):
1. earlier registered mark with reputation in the relevant territory;
2. identity or similarity between the contested CTM application and the earlier mark;
3. use of the sign applied for must be capable of taking an unfair advantage of, or being detrimental to, the distinctiveness or the repute of the earlier mark;
4. such use must be without due cause.
These conditions are cumulative and failure to satisfy any one of them is sufficient to render that provision inapplicable (judgment of 25/05/2005, T-67/04, ‘SPA-FINDERS’, para. 30; judgment of 22/03/ 2007, T-215/03, ‘VIPS’, para. 34; judgment of 16/12/2010 joined cases T-345/08 and T-357/08 ‘BOTOCYL’, para. 41).
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The order of the examination of these requirements may change depending on the circumstances of each case. For instance, the examination may start with the assessment of the similarities between the signs, especially in cases where there is little or nothing to say about it, either because the marks are identical or because they are patently similar or dissimilar.
3.1 Earlier mark with reputation
3.1.1 Nature of reputation
The nature and scope of reputation are not defined by either the CTMR or the TMD. Furthermore, the terms used in the different language versions of these texts are not fully equivalent, which has led to considerable confusion as to the true meaning of the term reputation, as admitted by Advocate General Jacobs in his opinion of 26/11/1998 in C-375/97 ‘General Motors’, paras 34-36.
Given the lack of statutory definition, the Court defined the nature of reputation by reference to the purpose of the relevant provisions. In interpreting Article 5(2) TMD the Court held that the text of the TMD ‘implies a certain degree of knowledge of the earlier mark among the public’ and explained that it ‘is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade mark, may possibly make an as sociation between the two trade marks … and the earlier mark may consequently be damaged’ (judgment of 14/09/1999, C-375/97 ‘General Motors’, para. 23).
In view of these considerations, the Court concluded that reputation is a knowledge threshold requirement, implying that it must be principally assessed on the basis of quantitative criteria. In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (judgment of 14/09/1999, C-375/97 ‘General Motors’, paras 22, 23, judgment of 25/05/2005, T-67/04 ‘Spa-Finders’, para. 34).
Moreover, if reputation is to be as sessed on the basis of quantitative criteria, arguments or evidence relating to the esteem that the public might have for the mark, rather than to its recognition, are not directly relevant for establishing that the earlier mark has acquired sufficient reputation for the purposes of Article 8(5) CTMR. However, as the economic value of reputation is also the protected subject-matter of this provision, any qualitative aspects thereof are relevant when assessing the possibility of detriment or unfair advantage (see also paragraph 3.4 below). Article 8(5) CTMR protects ‘famous’ marks not as such, but rather for the success and r enown (‘goodwill’) they have acquired in the market. A sign does not enjoy any reputation inherently, for example, simply because it refers to a renowned person or event, but only for the goods and services it designates and the use that has been made of it.
Case No Comment
R 0011/2008-4, ‘CASAS DE FERNANDO ALONSO (fig.)’
All the evidence submitted by the opponent related to the fame of Fernando Alonso as a champion racing driver and to the use of his image made by different undertakings to promote their goods and services. However, there was no proof of reputation for the use of the earlier mark as it is registered for the relevant goods and services (paras 44, 48).
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Case No Comment
R 0201/2010-2 ‘BALMAIN ASSET MANAGEMENT’
The only items of evidence regarding reputation of the earlier mark submitted within the time limit, namely a page showing websites containing the word ‘BALMAIN’, a Wikipedia extract about the French designer Pierre Balmain and five extracts from the website www.style.com containing ‘BALMAIN’ wear collection, were clearly not sufficient to establish reputation of the earlier mark in the EU. Therefore, the opposition was rejected as unsubstantiated (paras 36, 37).
3.1.2 Scope of reputation
3.1.2.1 Degree of recognition
Having defined reputation as a k nowledge threshold requirement, the question that necessarily follows is how much awareness the earlier mark must attain among the public in order to pass this threshold. The Court held in this respect that the ‘degree of knowledge required must be considered to be reached when the earlier trade mark is known by a significant part of the public’ and added that it ‘cannot be inferred from either the letter or the spirit of Article 5(2) [TMD] that the trade mark must be known by a given percentage of the public’ (judgment of 14/09/1999, C-375/97 ‘General Motors’, paras 25, 26, judgment of 16/11/2011, T-500/10 ‘Dorma’, para. 45).
By refraining from defining in more detail the meaning of the term ‘significant’ and by stating that the trade mark does not have to be known by a given percentage of the public, the Court in substance advised against the use o f fixed criteria of general applicability, since a predetermined degree of recognition may not be appropriate for a realistic assessment of reputation if taken alone.
Hence, in determining whether the earlier mark is known by a s ignificant part of the public, account must be taken not only of the degree of awareness of the mark, but also of any other factor relevant to the specific case. For more about the relevant factors and their interplay, see paragraph 3.1.3 below.
However, where goods or services concern quite small groups of consumers, the limited overall size of the market means that a significant part thereof is also restricted in absolute numbers. Hence, the limited size of the relevant market should not be regarded in itself as a factor capable of preventing a mark from acquiring a reputation within the meaning of Article 8(5) CTMR, as reputation is more a question of proportions and less of absolute numbers.
The need for the earlier mark to be known by a significant part of the public also serves to mark the difference between the notions of reputation as necessary condition for the application of Article 8(5) CTMR and enhanced distinctiveness through use as a factor for evaluating likelihood of confusion for the purposes of Article 8(1)(b) CTMR.
Even though both terms are concerned with the recognition of the mark among the relevant public, in the case of reputation a threshold exists below which extended protection cannot be granted, whereas in the case of enhanced distinctiveness there is no threshold. It follows that in the latter case any indication of enhanced recognition of the mark should be taken into account and evaluated according to its significance, regardless of whether it reaches the limit required by Article 8(5) CTMR. Therefore, a
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finding of ‘enhanced distinctiveness’ under Article 8(1)(b) CTMR will not necessarily be conclusive for the purposes of Article 8(5) CTMR.
Case No Comment
R 1054/2007-4 ‘mandarino (fig.)’
The documents submitted by the opponent showed promotional efforts in such a manner that the distinctiveness is increased through use. However, the use was not enough to reach the threshold of reputation. None of the documents referred to the recognition of the earlier trade mark by the relevant end consumers, nor was evidence about the market share of the opponent’s goods filed (para. 61).
3.1.2.2 Relevant public
In defining the kind of public that should be taken into account for assessing reputation, the Court held that the ‘public amongst which the earlier trade mark must have acquired a reputation is that [public] concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector’ (C-375/97 ‘General Motors’, para. 24, ‘SPA-FINDERS’, paras 34, 41).
Hence, if the goods and services covered by the mark are mass consumption products, the relevant public will be the public at large, whereas if the designated goods have a very specific application or exclusively target professional or industrial users, the relevant public will be limited to the specific purchasers of the products in question.
Case No Comment
R 1265/2010-2 ‘MATTONI (fig.)’ Taking into account the nature of the goods for which the opponent claims reputation, namely mineral water, the relevant public is the public at large (para. 44).
R 2100/2010-1 SEXIALIS
The goods for which the sign enjoys reputation are medicinal preparations for the treatment of sexual dysfunction. The relevant public is the general public and professionals with a high level of attention (para. 64).
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
The goods for which the earlier mark enjoys reputation are pharmaceutical preparations for the treatment of wrinkles. The evidence of the promotion of the earlier mark ‘BOTOX’ in English in scientific and general-interest press was sufficient to establish reputation of the mark amongst both the general public and health- care professionals (paras 65-67 in C-100/11 P). Therefore, both these categories of consumers have to be taken into account.
In addition to the actual buyers of the relevant goods, the notion of relevant public extends to the potential purchasers thereof, as well as to those members of the public that only come indirectly into contact with the mark, to the extent that such consumer groups are also targeted by the goods in question, for instance, sports fans in relation to athletic gear, or frequent air-travellers as regards air carriers, etc.
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Case No Comment
T-47/06 ‘NASDAQ’
The relevant services are stock exchange price quotation services in Classes 35 and 36, which normally target professionals. The opponent submitted evidence showing that the mark ‘NASDAQ’ appears almost daily in many newspapers and on many television channels that can be read/viewed throughout Europe. Therefore, the Board was right to hold that the reputation of the trade mark ‘NASDAQ’ had to be determined for the European consumers not only among the professional public, but also to an important subsection of the general public (paras 47, 51).
T-60/10 ‘ROYAL SHAKESPEARE’
The evidence of reputation supports and reinforces the fact that the relevant public for theatre productions is the public at large and not a limited and exclusive circle. The intervener’s activities were advertised, presented and commented on in numerous newspapers targeting the public at large. The intervener toured different regions throughout the United Kingdom and performed before a wide public in the United Kingdom. An activity on a large scale and, hence, a service offered to the public at large, is reflected both in the high turnover and the high box office sales. Furthermore, it is clear from the documents submitted by the intervener that the intervener received substantial annual sponsorship income from undertakings in diverse sectors which also reach the public at large, such as banks, undertakings in the alcoholic drinks sector and car manufacturers (paras 35, 36).
Quite often, a given product will concern various purchaser groups with different profiles, as in the case of multipurpose goods or goods that are handled by several intermediates before they reach their final destination (distributors, retailers, end- users). In such cases the question arises whether reputation has to be assessed within each separate group or if it should cover all the different types of purchaser. The example given by the Court in C-375/97, ‘General Motors’, (traders in a specific sector) implies that reputation within one single group may suffice.
Likewise, if the earlier trade mark is registered for quite heterogeneous goods and services, different segments of the public may be concerned by each type of goods, and, therefore, the overall reputation of the mark will have to be assessed separately for each category of goods involved.
The foregoing only deals with the kind of public to be taken into account in assessing whether the earlier mark has reached the threshold of reputation laid down by the Court in General Motors. However, a r elevant question arises when assessing detriment or unfair advantage, namely whether the earlier mark must also be known to the public concerned by the goods and services of the later mark, since otherwise it is difficult to see how the public will be in a position to associate the two. This issue is discussed in paragraph 3.4 below.
3.1.2.3 Goods and services covered
The goods and services must be first of all those for which the earlier trade mark is registered and for which reputation is claimed.
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Case No Comment
R 1473/2010-1 ‘SUEDTIROL’
The opposition was dismissed since the earlier marks were not registered for the services which, according to the opponent, enjoy a reputation. Article 8(5) CTMR can only be i nvoked if the trade mark affirmed to be w ell known/renowned is a r egistered trade mark and if the goods/services for which this reputation/renown is claimed appear on the certificate (para. 49).
The goods and services to which the evidence refers have to be i dentical (not only similar) to the goods and services for which the earlier trade mark is registered.
Case No Comment
R 1033/2009-4 ‘PEPE’
The goods which were assessed to be reputed in Germany by the decision and order referred to only concern articles of skin and body care and children’s cream. These articles are not identical to the earlier mark’s goods in Class 3, make-up products; nail treating products; namely nail lacquer and remover. Therefore, the opponent did not prove reputation for the earlier German mark in the relevant territories (para. 31).
Where the earlier mark is registered for a wide range of goods and services targeting different kinds of public, it will be necessary to assess reputation separately for each category of goods. In such cases the earlier mark may not have a reputation for all of them, as it may not have been used at all for some of the goods, whereas for others it may not have reached the degree of knowledge necessary for the application of Article 8(5) CTMR.
Hence, if the evidence shows that the earlier mark enjoys partial reputation, that is, the reputation only covers some of the goods or services for which it is registered, it is only to that extent that this mark may be protected under Article 8(5) CTMR. Consequently, it is only these goods that may be taken into account for the purposes of the examination.
Case No Comment
R 1588/2009-4 ‘PINEAPPLE’
The Board concluded that the enhanced distinctiveness and reputation of the earlier marks did not concern the opponent’s G&S which were considered to be identical or similar to the contested G&S. For these G&S no e nhanced distinctiveness or reputation was proven, with the exception of computer software in Class 9 (para. 43).
R 1466/2008-2 and R 1565/2008-2, ‘COMMERZBANK ARENA’
The evidence submitted sufficiently demonstrated that the ‘ARENA’ brand was known by a significant part of the relevant public. However, the evidence did not include any relevant information which could allow the level of brand awareness of the ‘ARENA’ brand in sectors other than swimwear and swimming articles to be determined (paras 58, 60).
3.1.2.4 Relevant territory
According to Article 8(5) CTMR, the relevant territory for establishing the reputation of the earlier mark is the territory of protection: the earlier mark must have a reputation in the territory where it is registered. Therefore, for national marks the relevant
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territory is the Member State concerned, whereas for CTMs the relevant territory is the European Union.
In General Motors, the Court stated that a national trade mark cannot be required to have a reputation throughout the entire territory of the Member State concerned. It is sufficient if reputation exists in a s ubstantial part of that territory. For the Benelux territory in particular, the Court held that a substantial part thereof may consist of a part of one of the Benelux countries (judgment of 14/09/1999, C-375/97 ‘General Motors’, paras 28, 29).
The ECJ has clarified that for an earlier Community trade mark reputation throughout the territory of a single Member State may suffice.
Case No Comment
C-301/07 ‘PAGO’
The case concerned a Community trade mark with a reputation throughout Austria. The Court indicated that a Community trade mark must be known in a substantial part of the Community by a significant part of the public concerned by the goods or services covered by that trade mark. In view of the facts of the particular case, the territory of the Member State in question (Austria) was considered to constitute a substantial part of the territory of the Community (paras 29, 30).
In general, however, when evaluating whether the part of the territory in question is a substantial one, account must be taken both of the size of the geographical area concerned and of the proportion of the overall population living there, since both these criteria may affect the overall significance of the specific territory.
Case No Comment
R 1283/2006-4 ‘RANCHO PANCHO (fig.)’
Although the evidence submitted showed use of the mark in 17 restaurants in France in 2002, this figure was considered rather low for a country of 65 million inhabitants. Therefore, the reputation was not proven (para. 22).
Opponents often indicate in the notice of opposition that the earlier mark has a reputation in an area that extends beyond the territory of protection (e.g. a pan- European reputation is alleged for a national mark). In such a case the opponent’s claim must be examined with regard to the relevant territory.
Similarly, the submitted evidence must specifically concern the relevant territory. For example, if the evidence relates to Japan for instance, or to undefined regions, it will not be able to show reputation in the Community or in a Member State. Therefore, figures concerning sales in the Community as a whole, or world-wide sales, are not appropriate for showing reputation in a specific Member State, if the relevant data are not broken down by territory. In other words, a ‘wider’ reputation must also be specifically proven for the relevant territory if it is to be taken into account.
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Case No Comment
R 1718/2008-1 ‘LINGLONG’
Most of the documents submitted related to countries outside the European Union, mainly China, the opponent’s home country, and other Asian countries. Consequently, the opponent cannot successfully claim to hold a well-known mark in the EU (para. 53).
R 1795/2008-4 ‘ZAPPER-CLICK’ (appeal dismissed T-360/10)
The respondent sustained in the notice of cancellation that reputation was claimed for the territory of the UK. However, the international registration only designated Spain, France and Portugal and, therefore, did not extend to the territory of the UK. In addition, the respondent did not file any evidence of a reputation in the Member States designated by the international registration (para. 45).
However, where reputation is claimed as extending beyond the territory of protection and there is evidence to this effect, this must be taken into account because it may reinforce the finding of reputation in the territory of protection.
3.1.2.5 Relevant point in time
The opponent must show that the earlier mark had acquired a reputation by the filing date of the contested CTM application, taking account, where appropriate, of any priority claimed, on condition of course that the priority claim has been accepted by the Office.
In addition, the reputation of the earlier mark must subsist until the decision on t he opposition is taken. However, in principle it will be sufficient for the opponent to show that its mark already had a reputation on the filing/priority date of the CTM application, while any subsequent loss of reputation is for the applicant to claim and prove. In practice, such an occurrence will be rather exceptional, since it presupposes a dramatic change of market conditions over a relatively short period of time.
Where the opposition is based on an earlier application, there is no formal obstacle for the application of Article 8(5) CTMR, which encompasses earlier applications by reference to Article 8(2) CTMR. Although in most cases the earlier application will not have acquired sufficient reputation in so short a time, it cannot be a priori excluded that a sufficient degree of reputation may be achieved in an exceptionally short period. In addition, the application may be for a mark which was already in use long before the application was filed and has had sufficient time to acquire a reputation. In any event, as the effects of registration are retroactive, the applicability of Article 8(5) CTMR to earlier applications cannot be regarded as a dev iation from the rule that Article 8(5) CTMR only applies to earlier registrations, as concluded in paragraph 2.1 above.
In general, the closer to the relevant date the evidence is, the easier it will be to assume that the earlier mark had acquired reputation at that time. The evidential value of a particular document is likely to vary depending on how close the period covered is to the filing date. Evidence of reputation with regard to a later point in time than the relevant date might nevertheless allow the drawing of conclusions as to the reputation of the earlier mark at the relevant date (see, by analogy, order of 27/01/2004, C-259/02 ‘La Mer Technology’, para. 31; judgment of 17/04/2008, C-108/07 ‘Ferro’, para 53; judgment of 15/12/2005, T-262/04 ‘Shape of a l ighter’, para. 82).
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For this reason, the materials filed with a view to proving reputation must be dated, or at least clearly indicate when the facts attested therein took place. Consequently, undated documents, or documents bearing a date added afterwards (e.g. hand-written dates on pr inted documents), are not apt for giving reliable information about the material time.
Case No Comment
R 0055/2009-2 ‘BRAVIA’
The evidence showed that the mark ‘BRAVIA’ was used for LCD televisions in Poland, the Czech Republic, Slovakia, Hungary, Germany, Turkey, Portugal, Austria, France, Italy and the Netherlands. However, none of the documents were dated. The opponent failed to submit any information regarding duration. Therefore, the evidence, taken as whole, was insufficient to prove the reputation in the European Union (paras 27, 28).
R 1033/2009-4 ‘PEPE’
In the Board’s view, a judgment from 1972 was not able to prove enhanced distinctiveness at the time of filing the CTM, that is, 20/10/2006. Furthermore, ‘it follows from the decision of the CFI [T- 164/03] that the reputation of the earlier mark has been assessed as from 13 June 1996, i.e. more than ten years before the reputation date to be taken into consideration’ (para. 31).
If the period elapsed between the latest evidence of use and t he filing of the CTM application is quite significant, the relevance of the evidence should be carefully assessed by reference to the kind of goods and services concerned. This is because changes in consumer habits and perceptions may take some time to happen, usually depending on the particular market involved.
For instance, the clothing market is strongly tied to yearly seasons and to the different collections issued every quarter. This will have to be taken into account in assessing a possible loss of reputation in this particular field. Likewise, the market for internet providers and e-commerce companies is very competitive and knows rapid growth, as well as rapid demise, which means that reputation in this area may be diluted faster than in other market sectors.
Case No Comment
R 0883/2009-4 ‘MUSTANG’
The appellant failed to prove that its earlier mark was already well known on the application date of the contested CTM. The certificates regarding the reputation of the ‘Mustang designation’ refer neither to the asserted ‘Calzados Mustang’ figurative mark nor to the time when reputation must be determined (para. 28).
A similar question arises in the case of evidence that post-dates the filing date of the CTM application. Even though such evidence will not usually be sufficient on its own to prove that the mark had acquired a r eputation when the CTM was filed, it is not appropriate to reject it as irrelevant either. Given that reputation is usually built up over a period of years and cannot simply be switched on and off, and that certain kinds of evidence (e.g. opinion polls, affidavits) are not necessarily available before the relevant date, as they are usually prepared only after the dispute arises, such evidence must be evaluated on the basis of its contents and in conjunction with the rest of the evidence. For example, an opinion poll conducted after the material time but showing a sufficiently high degree of recognition might be sufficient to prove that the mark had acquired a reputation on the relevant date if it is also shown that the market conditions
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have not changed (e.g. the same levels of sales and adv ertising expenditure were maintained before the opinion poll was carried out).
Case No Comment
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
Although the reputation of an earlier mark must be established at the filing date of the contested mark, documents bearing a later date cannot be denied evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date (para. 52).
The possibility cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on how close the period covered is to the filing date (see, by analogy, order of 27/01/2004, C-259/02 ‘La Mer Technology’, para. 31; judgment of 17/04/2008, C-108/07 P ‘Ferro’, para. 53; judgment of 15/12/2005, T-262/04 ‘Shape of a lighter’, para. 82).
Case No Comment
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
The press articles submitted proved that there was significant media coverage of the products marketed under the trade mark BOTOX on the filing date of the disputed marks (para. 53).
3.1.3 Assessment of reputation – relevant factors
Apart from indicating that ‘It cannot be inferred from either the letter or the spirit of Article 5(2) of the [TMD] that the trade mark must be known by a given percentage of the public’, the Court also held that all the relevant facts must be considered in assessing the reputation of the earlier mark, ‘in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it’ (judgment of 14/11/1999, C-375/97 ‘General Motors’, paras 25, 27).
If these two statements are taken together, it follows that the level of knowledge required for the purposes of Article 8(5) CTMR cannot be defined in the abstract, but should be ev aluated on a case-by-case basis, taking into account not only the degree of awareness of the mark, but also any other fact relevant to the specific case, that is, any factor capable of giving information about the performance of the mark in the market.
The list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark (such as the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking in promoting it) only serve as examples.
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Case No Comment
T-47/06 ‘Nasdaq’
The opponent provided detailed evidence relating to the intensity, geographical extent and duration of the use of its trade mark NASDAQ and the amount spent in promoting it, demonstrating that it was known by a significant part of the public concerned by it. The Court considered that the fact that it did not produce figures regarding the market share did not call this finding into question (para. 51). The Court concluded that the list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark only serve as examples, as all the relevant evidence in the case must be taken into consideration and, second, the other detailed and verifiable evidence produced by the intervener is already sufficient in itself to conclusively prove the reputation of its mark NASDAQ (para. 52).
Moreover, the relevant factors should be assessed with a view not only to establish the degree of recognition of the mark amongst the relevant public, but also to ascertain whether the other requirements related to reputation are fulfilled, for example, whether the alleged reputation covers a significant part of the territory concerned or whether the reputation had indeed been acquired by the filing/priority date of the contested CTM application.
The same kind of test is applied to ascertain whether the trade mark has acquired enhanced distinctiveness through use for the purposes of Article 8(1)(b) CTMR, or whether the mark is well-known within the meaning of Article 6bis of the Paris Convention, since the subject-matter of proof in all these cases is in substance the same, namely the degree to which the mark is known by the relevant public, without prejudice to the threshold required in each case.
3.1.3.1 Trade mark awareness
The statement of the Court that ‘it is not necessary for the mark to be known by a given percentage of the public’, cannot be taken in itself as meaning that figures of trade mark awareness are irrelevant for, or that they should be given a lower probative value in, the assessment of reputation. It only implies that percentages of awareness defined in the abstract may not be appropriate for all cases and that, consequently, it is not possible to fix a pr iori a gener ally applicable threshold of recognition beyond which it should be assumed that the mark is reputed (see, to that effect and by analogy, judgment of 04/05/1999, joined cases C-108/97 and C -109/97 ‘Windsurfing Chiemsee’, para. 52; judgment of 22/06/1999, C-342/97 ‘Lloyd Schuhfabrik Meyer’, para. 24, judgment of 16/11/2011 T-500/10, ‘DORMA’, para. 52).
Therefore, even though not expressly listed by the Court among the factors to be taken into account for assessing reputation, the degree of recognition of the mark amongst the relevant public is directly relevant and can be particularly helpful in evaluating whether the mark is sufficiently known for the purposes of Article 8(5) CTMR, provided of course that the method of its calculation is reliable.
As a rule, the higher the percentage of trade mark awareness, the easier it will be to accept that the mark has a reputation. However, in the absence of a clear threshold, only if the evidence shows a high degree of trade mark awareness, will percentages of recognition be persuasive. Percentages alone are not conclusive. Rather, as explained before, reputation has to be evaluated by making an overall assessment of
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all the factors relevant to the case. The higher the degree of awareness, the less additional evidence may be required to prove reputation and vice versa.
Case No Comment
R 0765/2009-1 ‘BOB THE BUILDER (fig.)’
The evidence submitted proved that the earlier mark enjoyed a very significant reputation in Sweden for jellies’, jams, fruit stews, fruit drinks, concentrates for production of drinks and juice’. According to the survey conducted by TNS Gallup, the spontaneous awareness (answers by telephone to the question ‘What brands for – ‘the relevant group of products is mentioned’ – have you heard about or do you know about?’) for the trade mark ‘BOB’ varied between 25 and 71% depending on the goods: apple sauces, jams, marmalades, soft drinks, fruit drinks and fruit juices. The supported awareness (answer to a questionnaire showing the products bearing the mark) varied between 49 and 90% depending on the goods. Furthermore, the market share for 2001 to 2006 averaged 30-35% in the above product groups (para. 34).
Where the evidence shows that the mark only enjoys a lesser degree of recognition, it should not be automatically assumed that the mark is reputed, which means that, most of the time, mere percentages will not be conclusive in themselves. In such cases, only if the evidence of awareness is coupled with sufficient indications of the overall performance of the mark in the market will it be possible to evaluate with a reasonable degree of certainty whether the mark is known by a significant part of the relevant public.
3.1.3.2 Market share
The market share enjoyed by the goods offered or sold under the mark and t he position it occupies in the market are valuable indications for assessing reputation, as they both serve to indicate the percentage of the relevant public that actually buys the goods and to measure the success of the mark against competing goods.
Market share is defined as the percentage of total sales obtained by a br and in a particular sector of the market. When defining the relevant market sector, the goods and services for which the mark has been u sed must be t aken into account. If the scope of such goods and services is narrower than those for which the mark is registered, a situation of partial reputation arises, similar to the one where the mark is registered for a variety of goods, but has acquired a reputation only for part of them. This means that in such a case, only the goods and services for which the mark has actually been used and acquired a reputation will be taken into account for the purposes of the examination.
Therefore, a very substantial market share, or a leader position in the market, will usually be a strong indication of reputation, especially if combined with a reasonably high degree of trade mark awareness. Conversely, a small market share will in most cases be an indication against reputation, unless there are other factors which suffice on their own to support such a claim.
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Case No Comment
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
‘… the size of the market share of BOTOX in the United Kingdom, 74.3% in 2003, like the degree of awareness of the trade mark of 75% among the specialised public accustomed to pharmaceutical treatments against wrinkles, is sufficient to substantiate the existence of a considerable degree of recognition on the market’ (para. 76).
T-08/03 ‘Emilio Pucci’
The CFI considered that the opponent failed to prove the enhanced distinctiveness or reputation of its earlier trade marks, since the evidence submitted (advertisements, seven letters from a number of advertising directors and a v ideo cassette) did not include adequately substantiated or verifiable objective evidence to make it possible to assess the market share held by the marks EMIDIO TUCCI in Spain, how intensive, geographically widespread and long-standing use of the marks had been or the amount invested by the undertaking in promoting them (para. 73).
Another reason why a moderate market share will not always be conclusive against reputation is that the percentage of the public that in reality knows the mark may be much higher than the number of actual buyers of the relevant goods. This would be the case, for example, for goods that are normally used by more than one user (e.g. family magazines or newspapers) (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’ paras 35, 36 and judgment of 10/05/2007, T-47/06 ‘NASDAQ’ paras 47, 51) or for luxury goods, which many may know, but few can buy (e.g. a high percentage of European consumers know the trade mark ‘Ferrari’ for cars, but only few own one). For this reason, the market share proved by the evidence should be assessed taking into account the particularities of the specific market.
Case No Comment
R 1659/2011-2 ‘KENZO’
‘KENZO’ identifies, in the eyes of the European public, a pre- eminent provider of recognised fashion and luxury items in the form of perfumes, cosmetics and clothing. The relevant public however was considered to be the general public (para. 29).
In certain cases it will not be easy to define the market share of the earlier mark, for example when the exact size of the relevant market cannot be measured accurately, owing to peculiarities of the goods or services concerned.
Case No Comment
R 0446/2010-1 ‘TURBOMANIA’
The limited presence of the product on t he market by no means prevented it from becoming well known by the relevant public. The evidence clearly showed that the trade mark appeared continuously in specialist magazines for the market from December 2003 to March 2007 (the date of the Community trade mark application). That meant that the public targeted by the magazines had constant, on-going exposure to the opponent’s trade mark over a long period covering more than three years prior to the relevant date. Such a huge presence in the press specifically targeting the relevant public was more than sufficient evidence that the relevant public was aware of the trade mark (para. 31).
In such cases, other similar indications may be relevant, such as TV audience rates, as in the case of motor racing and other sporting or cultural events.
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Case No Comment
T-47/06 ‘NASDAQ’
The opponent submitted evidence showing that the mark ‘NASDAQ’ appeared almost daily, particularly by reference to the Nasdaq indices, in many newspapers and on many television channels that can be read/viewed throughout Europe. The opponent also submitted evidence of substantial investments in advertising. The Court found reputation proven, even though the opponent did not submit any market share figures (paras 47-52).
3.1.3.3 Intensity of use
The intensity of use of a mark may be demonstrated by sales volumes (i.e. the number of units sold) and turnover (i.e. the total value of those sales) attained by the opponent for goods bearing the mark. Usually, the relevant figures correspond to sales in one year, but there may be cases where the time unit used is different.
Case No Comment
R 2100/2010-1 ‘SEXIALIS’
The documents submitted (press articles, sales figures, surveys) showed that the earlier sign ‘CIALIS’ was intensively used before the filing date of the CTM application, that the products under the mark ‘CIALIS’ were marketed in several Member States where they enjoyed a consolidated position among the leading brands, and that there was a high degree of recognition in comparison to the market leader ‘VIAGRA’. Large and c onstantly growing market share and sales numbers also showed ‘the vast expansion of ‘CIALIS’ ’ (para. 55).
In evaluating the importance of a given turnover or sales volume, account should be taken of how large the relevant market is in terms of population, as this has a bearing on the number of potential purchasers of the products in question. For example, the relative value of the same number of sales will be m uch bigger, for example, in Luxembourg than in Germany.
Moreover, whether or not a given sales volume or turnover is substantial will depend on the kind of product concerned. For example, it is much easier to achieve a high sales volume for everyday, mass consumption goods than for luxury or durable products that are bought rarely, without this meaning that in the former case more consumers have come into contact with the mark, as it is likely that the same person has bought the same product more than once. It follows that the kind, value and dur ability of the goods and services in question should be taken into consideration in determining the significance of a given sales volume or turnover.
Figures of turnover and sales will be more useful as indirect indications that should be assessed in conjunction with the rest of the evidence, rather than as direct proof of reputation. In particular, such indications can be especially helpful for completing the information given by percentages as regards market share and a wareness, by giving a more realistic impression of the market. For example, they may reveal a very large amount of sales behind a not-so-impressive market share, which may be useful in assessing reputation in the case of competitive markets, where it is in general more difficult for a single brand to account for a substantial portion of the overall sales.
In contrast, where the market share of the products for which the mark is used is not given separately, it will not be pos sible to determine whether a g iven turnover
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corresponds to a substantial presence in the market or not, unless the opponent also submits evidence showing the overall size of the relevant market in terms of money, so that its percentage in it may be inferred.
Case No Comment
R 1054/2007-4 ‘mandarino’ (fig.)
The reputation was not sufficiently proven in particular because none of the documents referred to the recognition of the earlier trade mark by the relevant end consumers. Nor was any evidence about the market share of the opponent’s goods submitted. Information about the market share is particularly important in the sector in which the opponent had its core business (handbags, transport items, accessories and clothing) which is ‘a quite atomized and competitive sector’ and there are many different competitors and designers in that product range (paras 59-61).
This does not mean that the importance of turnover figures or volume of sales should be underestimated, as both are significant indications of the number of consumers that are expected to have encountered the mark. Therefore, it cannot be excl uded that a substantial amount of turnover or sales volume may, in certain cases, be decisive for a finding of reputation, either alone, or in conjunction with very little other evidence.
Case No Comment
R 0445/2010-1 ‘FLATZ’
Although, for reasons of force majeure, it was not possible for the earlier trade mark to become well known by traditional methods, that is, through selling the product, it did become extremely well known as a result of promotional activities, by publicising the trade mark extensively, continually and constantly in the specialist press and at sectorial fairs, thereby reaching virtually the whole of the three relevant sectors of the public. The limited presence of the product on the market by no means prevented it from becoming well known by the relevant public that, on the relevant date, FLATZ was the trade mark with which the opponent identified its electronic bingo machines (paras 41, 42, 50, 51).
R 1466/2008-2 and R1565/2008-2, ‘COMMERZBANK ARENA’
The lack of figures regarding the market share held by the trade mark ‘ARENA’ in the relevant countries was not in itself capable of calling the finding of reputation into question. First, the list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark only serves to illustrate examples, as all the relevant evidence in the case must be taken into consideration and, second, the other detailed and verifiable evidence submitted by the opponent is already sufficient in itself to prove conclusively the substantial degree of recognition of the ‘ARENA’ mark amongst the relevant public (para. 59).
However, as this would deviate from the rule that reputation has to be evaluated by making an overall assessment of all factors relevant to the case, findings of reputation based almost exclusively on s uch figures should be g enerally avoided, or at least confined to exceptional cases that would really justify such a finding.
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3.1.3.4 Geographical extent of use
Indications of the territorial extent of use are mainly useful for determining whether the alleged reputation is widespread enough to cover a substantial part of the relevant territory, within the sense given in paragraph 3.1 above. In this assessment, account should be taken of the density of population in the respective areas, as the critical criterion is the proportion of consumers knowing the mark, rather than the size of the geographical area as such. Similarly, what is important is public awareness of the mark rather than availability of goods or services. A mark may, therefore, have a territorially widespread reputation on the basis of advertising, promotion, media reports, etc.
In general, the more widespread the use, the easier it will be to conclude that the mark has passed the required threshold, whereas any indication showing use beyond a substantial part of the relevant territory will be a pos itive sign in the direction of reputation. Conversely, a very limited amount of use in the relevant territory will be a strong indication against reputation, as for example where the vast majority of the goods are exported to a third jurisdiction in sealed containers, directly from their place of production.
Case No Comment
R 0966/2010-1 ‘ERT (fig.)’
If the earlier mark were so well known in the 27 Member States of the EU for TV broadcasting and magazines, it should have been easy for the opponent to provide information about ‘the reach of the mark’ just before 2008, when the CTM application was filed. The magazine sales figures did not cover the right period. The submitted documents did not give any indication of the extent to which the public was aware of the mark (paras 16, 18).
However, evidence of actual use in the relevant territory should not be regarded as a necessary condition for the acquisition of reputation, as what matters most is knowledge of the mark and not how it was acquired.
Such knowledge may be generated by, for example, intensive advertising prior to the launching of a new product, or in the case of important cross-border shopping it may be fuelled by a significant price difference in the respective markets, a phenomenon often referred to as ‘territorial spill-over’ of reputation from one t erritory to another. However, when it is claimed that such circumstances have occurred, the corresponding evidence must demonstrate this. For example, it cannot be assumed, merely because of the principle of free trade in the European Union, that goods put in the market in Member State X have also penetrated the market of Member State Y in significant numbers.
3.1.3.5 Duration of use
Indications of the duration of use are particularly useful for determining the longevity of the mark. The longer the mark has been used in the market, the larger will be the number of consumers that are likely to have encountered it, and the more likely it is that such consumers will have encountered the mark more than once. For example, a market presence of 45, 50 or 100-plus years is considered a s trong indication of reputation.
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Case No Comment
R 1466/2008-2 and R1565/2008-2, ‘COMMERZBANK ARENA’
The evidence submitted showed a particularly impressive duration of use (over thirty years) and geographical extent of use (over seventy-five countries worldwide, including the Member States concerned) of the ‘ARENA’ brand (para. 55).
T-369/10 ‘BEATLE’ The Beatles group was considered to be a gr oup with anexceptional reputation lasting for more than 40 years (para. 36).
The duration of use of the mark should not be inferred by mere reference to the term of its registration. Registration and use do not necessarily coincide, as the mark may have been put to actual use either before or after it was filed. Therefore, where the opponent invokes actual use, going beyond the term of registration, it must prove that such use actually began before it applied for its mark.
Nevertheless, a long registration period may sometimes serve as an indirect indication of a long presence on the market, as it would be unusual for a proprietor to maintain a registered mark for many decades without any economic interest behind it.
In the end, the decisive element is whether the earlier mark had acquired a reputation at the time of filing of the contested application. Whether that reputation also existed at some earlier point in time is legally irrelevant. Therefore, evidence of continuous use up to the filing date of the application will be a positive indication in the direction of reputation.
In contrast, if the use of the mark was suspended over a significant period, or if the period elapsed between the latest evidence of use and the filing of the CTM application is quite long, it will be more difficult to conclude that the reputation of the mark survived the interruption of use, or that it subsisted until the filing date of the application (see paragraph 3.1.2.5 above).
3.1.3.6 Promotional activities
The nature and scale of the promotional activities undertaken by the opponent are useful indications in assessing the reputation of the mark, to the extent that these activities were undertaken to build-up a b rand image and enhanc e trade mark awareness among the public. Therefore, a long, intensive and widespread promotional campaign may be a strong indication that the mark has acquired a reputation among the potential or actual purchasers of the goods in question, and may actually have become known beyond the circle of the actual purchasers of those goods.
Case No Comment
C-100/11 P ‘BOTOCYL’
Evidence of the promotion of ‘BOTOX’ in English in scientific and general-interest press was sufficient to establish reputation of the mark both amongst the general public and amongst health-care professionals (paras 65, 66).
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Case No Comment
R 0445/2010-1 ‘FLATZ’
Although, for reasons of force majeure, it was not possible for the earlier trade mark to become well known by traditional methods, that is, through selling the product, it did become extremely well known as a result of promotional activities, by publicising the trade mark extensively, continually and constantly in the specialist press and at sectorial fairs, thereby reaching virtually the whole of the three relevant sectors of the public. The limited presence of the product on the market by no means prevented it from becoming well known by the relevant public that, on the relevant date, FLATZ was the trade mark with which the opponent identified its electronic bingo machines (paras 41, 42, 50, 51).
R 1659/2011-2 ‘KENZO’ and R 1364/2012-2 ‘KENZO’
The opponent’s goods have been adv ertised and articles have been written about them in many of the world’s leading fashion- related lifestyle magazines, and in some of Europe’s leading mainstream periodicals. In line with the case-law, the reputation of ‘KENZO’ for the said goods is confirmed. The goods for which the earlier mark has reputation are cosmetics, perfumes and clothing. Because of its substantial reputation, the earlier mark ‘KENZO’ possesses an ‘undisputable allure’ that can be transferred to nearly any luxury product (para. 33). Subsequent case confirmed reputation (para. 33).
Even though it cannot be ruled out that a mark acquires a reputation before any actual use, promotional activities will usually not be sufficient on their own for establishing that the earlier mark has indeed acquired a reputation (see paragraph 3.1.3.4 above). For example, it will be difficult to prove knowledge amongst a significant part of the public exclusively by reference to promotion or advertising, carried out as preparatory acts for the launching of a new product, as the actual impact of publicity on the perception of the public will be difficult to measure without reference to sales. In such situations, the only means of evidence available to the opponent are opinion polls and s imilar instruments, the probative value of which may vary depending of the reliability of the method used, the size of the statistical sample etc. (for the probative value of opinion polls, see paragraph 3.1.4 below).
The impact of the opponent’s promotional activities may be shown either directly, by reference to the amount of promotional expenditure, or indirectly, by way of inference from the nature of the promotional strategy adopted by the opponent and the kind of medium used for advertising the mark.
For example, advertising on a na tion-wide TV channel or in a pr estigious periodical should be given more weight than campaigns of a regional or local scope, especially if coupled with high audience or circulation figures. Likewise, the sponsoring of prestigious athletic or cultural events may be a further indication of intensive promotion, as such schemes often involve a considerable investment.
Case No Comment
R 1673/2008-2 ‘FIESTA’
It is apparent from Ferrero’s various advertising campaigns on Italian television (including Rai) that the earlier mark was widely exposed to viewers in 2005 and 2006. Many of these spots appear to have been broadcast in peak viewing times (e.g. during Formula 1 Grand Prix coverage) (para. 41).
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Furthermore, the contents of the advertising strategy chosen by the opponent can be useful for revealing the kind of image the opponent is trying to create for its brand. This may be of particular importance when assessing the possibility of detriment to, or of taking unfair advantage of, a particular image allegedly conveyed by the mark, since the existence and contents of such an image must be abundantly clear from the evidence submitted by the opponent (see paragraph 3.4 below).
Case No Comment
T-332/10 ‘VIAGUARA’ (‘VIAGRA’)
The General Court found that in regard to the nature of the goods concerned, the BoA rightly considered that the aphrodisiac and stimulating properties claimed for commercial purposes for the non- alcoholic beverages covered by Class 32 coincide with the therapeutic indications of the earlier mark’s goods or at least with the images it projects, namely an image of pleasure, vitality, strength and youth (para. 66).
R 0306/2010-4 ‘CARRERA’ (under appeal T-0173/11)
The opponent’s trade mark is not only known per se, but due to the high price of sports cars and the opponent’s intensive expenditure on advertising and against the background of its successes in racing, the public associates it with an image of luxury, high tech and high performance (para. 31).
3.1.3.7 Other factors
The Court has made clear that the above list of factors is only indicative and has underlined that all the facts relevant to the particular case must be taken into consideration in assessing the reputation of the earlier mark (judgment of 14/09/1999, C-375/97 ‘General Motors’, para. 27). Other factors may be found in the case-law of the Court dealing with enhanced distinctiveness through use, or in the WIPO Recommendations on the protection of well-known marks. Therefore, depending on their relevance in each case, the following may be added t o the above factors: record of successful enforcement; number of registrations; certifications and awards; and the value associated with the mark.
Record of successful enforcement
Records of successful enforcement of a mark against dissimilar goods or services are important because they may demonstrate that, at least in relation to other traders, there is acceptance of protection against dissimilar goods or services.
Such records may consist of successful prosecution of complaints outside the courts, such as acceptance of cease and desist requests, delimitation agreements in trade mark cases, and the like.
Furthermore, evidence showing that the reputation of the opponent’s mark has been repeatedly recognised and protected against infringing acts by decisions of judicial or administrative authorities will be an important indication that the mark enjoys a reputation in the relevant territory, especially where such decisions are recent. That effect may be reinforced when the decisions of this kind are substantial in number (on the probative value of decisions, see paragraph 3.1.4.4 below). This factor is mentioned in Article 2(1)(b)(5) of the WIPO Recommendations.
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Number of registrations
The number and duration of registrations and applications of the mark around Europe or the world is also relevant, but in itself it is a weak indication of the degree of recognition of the sign by the relevant public. The fact that the opponent has many trade mark registrations and in many classes may indirectly attest to an international circulation of the brand, but cannot be decisively prove in itself a reputation. This factor is mentioned in Article 2(1)(b)(4) of the WIPO Recommendations, where the need of actual use is made clear: the duration and geographical area of any registrations, and/or any applications for registration, of the mark are relevant ‘to the extent that they reflect use or recognition of the mark’.
Certifications and awards
Certifications, awards, and similar public recognition instruments usually provide information about the history of the mark, or reveal certain quality aspects of the opponent’s products, but as a rule they will not be sufficient in themselves to establish reputation and will be more useful as indirect indications. For example, the fact that the opponent has been a holder of a royal warrant for many years may perhaps show that the mark invoked is a t raditional brand, but cannot give first-hand information about trade mark awareness. However, if the certification concerns facts that are related to the performance of the mark, its relevance will be much higher. This factor is mentioned by the Court in ‘Lloyd Schuhfabrik Meyer’ and ‘Windsurfing Chiemsee’ in relation to the assessment of enhanced distinctiveness through use.
Case No Comment
R 1637/2011-5 ‘APART’
The new evidence submitted by the appellant and accepted by BoA shows that the earlier mark had consistently been granted a high brand rating as well as prizes in surveys carried out by specialised companies in Poland between 2005 and 2009 (para. 30). It was therefore considered that the appellant successfully proved reputation in Poland for jewellery, but did not prove reputation for the other goods and services covered by its earlier signs.
The value associated with the mark
The fact that a mark is solicited by third companies for reproduction on their products, either as a trade mark, or as mere decoration, is a strong indication that the mark possesses a hi gh degree of attractiveness and an i mportant economic value. Therefore, the extent to which the mark is exploited through licensing, merchandising and sponsoring, as well as the importance of the respective schemes, are useful indications in assessing reputation. This factor is mentioned in Article 2(1)(b)(6) of the WIPO Recommendations.
3.1.4 Proof of reputation
3.1.4.1 Standard of proof
The opponent must submit evidence enabling the Office to reach a positive finding that the earlier mark has acquired a r eputation in the relevant territory. The wording
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used in Article 8(5) CTMR and Rule 19(2)(c) CTMIR is quite clear in this respect: the earlier mark deserves enlarged protection only if it ‘has a reputation’.
It follows that the evidence must be clear and convincing, in the sense that the opponent must clearly establish all the facts necessary to safely conclude that the mark is known by a significant part of the public. The reputation of the earlier mark must be established to the satisfaction of the Office and not merely assumed.
3.1.4.2 Burden of proof
According to the second sentence of Article 76(1) CTMR, in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. It follows that in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a r esult of its own private knowledge of the market nor conduct an ex-officio investigation, but should exclusively base its findings on the information and evidence submitted by the opponent.
Exceptions to this rule apply where particular facts are so well-established that they can be considered as universally known and, thus, are also presumed to be known to the Office (e.g. the fact that a particular country has a certain number of consumers, or the fact that food products target the general public). However, whether or not a mark has passed the threshold of reputation established by the Court in General Motors is not in itself a pure question of fact, since it requires the legal evaluation of several factual indications, and, as such, the reputation of the earlier mark may not be simply assumed to be a universally known fact.
Case No Comment
T-185/02 ‘PICARO’ (confirmed by C-361/04 P)
The Board of Appeal, in addition to the facts expressly put forward by the parties, may take into consideration facts which are well known, that is, which are likely to be k nown by anyone or which may be learnt from generally accessible sources. ‘It must be borne in mind, at the outset, that the legal rule stated in Article 76(1) in fine of Regulation No 40/94 constitutes an exception to the principle of examination of the facts by OHIM of its own motion, laid down in limine by that provision. That exception must therefore be given a strict interpretation, defining its extent so as not to exceed what is necessary for achieving its object’ (paras 29-32).
R 1472/2007-2 ‘El Polo’
It is common knowledge that the earlier mark is indeed a v ery famous brand, not only in France, but in most European countries, in large part due to the public’s exposure to products at airport and duty free boutiques as well as long-standing advertising in widely circulated magazines. The weight of evidence required to support statements which are universally known to be true need not be great (para. 32).
Rule 19(2)(c) CTMIR provides that the burden of putting forward and proving the relevant facts lies with the opponent, by expressly requiring it to provide ‘evidence attesting that the earlier mark has a r eputation’. According to Rule 19(1) and Rule 19(2)(c) CTMIR and the practice of the Opposition Division, such evidence may be submitted either together with the notice of opposition, or subsequently within four months of the date of notification of the opposition to the applicant. The opponent may also refer to facts and evidence submitted in the course of another opposition, provided
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that the relevant materials are indicated in a clear and unambiguous way and that the language of proceedings is the same in both cases.
If the evidence of reputation is not in the correct language, it will have to be translated into the language of the proceedings within the same period of four months, as required by Rules 16(1) and 17( 3) CTMIR. However, in view of the volume of documents often needed for proving reputation, it is sufficient to translate only the material parts of long documents or publications. Similarly, it is not necessary to translate in their entirety documents or parts of documents that contain mainly figures or statistics, the meaning of which is evident, as is often the case with invoices, order forms, diagrams, brochures, catalogues etc.
Case No Comment
R 1472/2007-2 ‘El Polo’
Although there is a requirement to adduce evidence to substantiate the existence of an earlier right in the language of the opposition proceedings, it is not specified that such translations have to be in any specific format. Many opponents simply provide their own, often hand-written, translations of the registration details. It is primarily for the Office and, to a lesser extent, for the applicant to check the accuracy of these translations. If a t ranslation is incorrect, the document cannot be relied upon (para. 17).
3.1.4.3 Evaluation of the evidence
The basic rules on the evaluation of evidence are also applicable here: the evidence should be assessed as a whole, that is, each indication should be weighed-up against the others, whereas information confirmed by more than one source will generally be more reliable than facts derived from isolated references. Moreover, the more independent, reliable and well-informed the source of the information is, the higher the probative value of the evidence will be.
Therefore, information deriving directly from the opponent is unlikely to be enough on its own, especially if it only consists of opinions and estimates instead of facts, or if it is of an unofficial character and lacks objective confirmation, as for example when the opponent submits internal memoranda or tables with data and figures of unknown origin.
Case No Comment
R 0295/2009-4 ‘PG PROINGEC CONSULTORIA (fig.)’
The content of the documentation submitted does not clearly demonstrate that the earlier marks enjoy a reputation. The documentation emanates, in the main, from the respondent directly and contains information taken from the respondent’s trade catalogues, and its own advertising and documents downloaded from its website. There is insufficient documentation/information from third parties to reflect clearly and objectively what the respondent’s position on the market precisely is. Reputation not proved (para. 26).
T-500/10 ‘doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS’ (fig.)
As regards documents in the case-file which come from the company itself, the General Court has held that to assess the evidential value of such a document, first and foremost account should be taken of the credibility of the account it contains. The Court added that it is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, prima facie, the documents appear sound and reliable (para. 49).
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However, if such information is publicly available or has been c ompiled for official purposes and contains information and da ta that have been ob jectively verified, or reproduces statements made in public, its probative value is generally higher.
As regards its contents, the more indications the evidence gives about the various factors from which reputation may be inferred, the more relevant and conclusive it will be. In particular, evidence which as a whole gives little or no quantitative data and information will not be appropriate for providing indications about vital factors, such as trade mark awareness, market share and intensity of use and, consequently, will not be sufficient to support a finding of reputation.
3.1.4.4 Means of evidence
There is no direct indication in the Regulations as to which kind of evidence is more appropriate for proving reputation, as for instance the one in Rule 22(4) CTMIR about evidence of use. The opponent may avail itself of all the means of evidence of Article 78(1) CTMR, provided they are capable of showing that the mark has indeed the required reputation. The following means of evidence are more frequently submitted by opponents in Opposition proceedings before the Office (this list does not reflect their relative importance or probative value):
1. sworn or affirmed statements 2. decisions of Courts or Administrative authorities 3. decisions of the Office 4. opinion polls and market surveys 5. audits and inspections 6. certifications and awards 7. articles in the press or in specialised publications 8. annual reports on economic results and company profiles 9. invoices and other commercial documents 10. advertising and promotional material.
Evidence of this kind may also be s ubmitted under Article 8(1)(b) CTMR in order to prove that the earlier mark has obtained a higher degree of distinctiveness, or under Article 8(2)(c) CTMR in relation to well-known marks.
Sworn or affirmed statements
Pursuant to Article 78(1)(f) CTMR, statements in writing, sworn or affirmed or having a similar effect under the law of the State in which they are drawn up, are valid means of evidence. Therefore, such evidence is admissible if it fulfils the formal requirements laid down by the relevant national law, regardless of the term used by the opponent for their description or translation (‘Affidavit’, ‘Statutory Declaration’, ‘Sworn Statement’ etc.). Therefore, if the national law does not make its admissibility dependent on the capacity in which the person gives the evidence, statements of this kind are admissible independently of whether the declaration is made by the opponent itself, or by a director of the company, or by one of its employees.
The weight and probative value of statutory declarations is determined by the general rules applied by the Office to the assessment of such evidence. In particular, both the
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capacity of the person giving the evidence and the relevance of the contents of the statement to the particular case must be taken into account.
As a rule, affidavits will be of greater value if the information they contain is clear, it relates to specific facts and it is supported by objective exhibits or attachments, the veracity of which is also affirmed. Conversely, if the declaration merely contains vague or unsupported statements, or subjective evaluations and opinions, or if the source of the information is not revealed, its probative value will be much lower.
Case No Comment
R 0729/2009-1 ‘SKYBLOG’
The statement submitted by an expert consultancy firm in the area of digital media strategy in the UK attests to the opponent ‘as the leading supplier of digital television in the UK’ and that ‘Sky’ has an enormous and impressive reputation (para. 37).
Decisions of Courts or Administrative authorities
Opponents often invoke decisions of national authorities or Courts which have accepted the reputation of the earlier mark. Even though national decisions are admissible evidence and may have evidentiary value, especially if they originate from a Member State the territory of which is also relevant for the opposition at hand, they are not binding for the Office, in the sense that it is not mandatory to follow their conclusion.
Case No Comment
T-0192/09 ‘SEVE TROPHY’
As far as judgments of Spanish courts are concerned, the Community trade mark system is an autonomous system, consisting of a s et of rules and objectives that are specific, and applied independently of any national system (para. 79).
Since such decisions may serve to indicate reputation and to record successful enforcement of the mark, their relevance should be addressed and examined. Relevance should be given to the type of proceedings involved, to whether the issue was in fact reputation within the sense of Article 8(5) CTMR, to the level of the court, as well as to the number of such decisions.
Case No Comment
C-100/11 P ‘BOTOCYL’
Decisions of the UK national office related to the reputation of ‘BOTOX’ are facts that may, if relevant, be taken into account by the General Court, despite the CTM owners not being parties in those decisions (para. 78).
There might be differences between the substantive and procedural conditions applicable in national proceedings and those applied in opposition proceedings before the Office. Firstly, there may be differences as to how the requirement of reputation is defined or interpreted. Secondly, the weight the Office gives to the evidence is not necessarily the same as the weight given to it in national proceedings. Furthermore, national instances may be able to take into account ex officio facts known to them directly, whereas the Office may not, pursuant to Article 76 CTMR.
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For these reasons, the probative value of national decisions will be considerably enhanced if the conditions of law and facts on the basis of which they were taken are made abundantly clear. This is because, in the absence of these elements, it will be more difficult both for the applicant to exercise its right of defence and for the Office to assess the decision’s relevance with a reasonable degree of certainty. Similarly, if the decision is not yet final, or if it is outdated due to the time that has elapsed between the two cases, its probative value will be diminished accordingly.
Consequently, the probative value of national decisions should be assessed on the basis of their contents and it may vary depending on the case.
Decisions of the Office
The opponent may also refer to earlier decisions of the Office, on condition that such a reference is clear and unambiguous, and that the language of the proceedings is the same. Otherwise, the opponent must also file a t ranslation of the decision within the four-month period to file further facts, evidence and arguments, in order to allow the applicant to exercise its right of defence.
As regards the relevance and probative value of previous Office decisions, the same rules as for national decisions apply. Even where the reference is admissible and the decision is relevant, the Office is not bound to come to the same conclusion and must examine each case on its own merits.
It follows that previous Office decisions only have a relative probative value and should be evaluated in conjunction with the rest of the evidence, especially where the reference of the opponent does not extend to the materials filed in the first case, that is, where the applicant has not had a chance to comment on them, or where the time that has elapsed between the two cases is quite long.
Case No Comment
R 0141/2011-1 ‘GUSSACI GUSSACI GUSSACI GUSSACI’ (fig.)
The finding of reputation is confirmed by the previous decision of the Boards of Appeal, according to which ‘GUCCI’ was considered to be one of the world’s leading brands in the field of luxury goods, and r eputation of the mark ‘GUCCI’ as well as the letter ‘G’, in its various configuration as an abbreviation for ‘GUCCI’, was found. In particular, reputation was found for the following goods: watches and jewellery (decision of 14/042011, R 143/2010-1, ‘GUDDY / GUCCI’), clothing, handbags, leather goods, luggage, shoes, gift, jewellery, fragrance and eyewear (decision of 11/02/2010, R 1281/2008-1 ‘G’ (fig.) / ‘G’ (fig.) et al.), clothing, handbags, leather goods, luggage and shoes (decision of 17/03/2011, R 543/2010-1, ‘G’ (fig.) / ‘G’ (fig.) et al.) (para. 18).
Opinion polls and market surveys
Opinion polls and m arket surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark, the market share it has, or the position it occupies in the market in relation to competitors’ goods.
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The probative value of opinion polls and market surveys is determined by the status and degree of independence of the entity conducting it, by the relevance and t he accuracy of the information it provides, and by the reliability of the applied method.
More particularly, in evaluating the credibility of an opinion poll or market survey, the Office needs to know the following.
1. Whether or not it has been conducted by an i ndependent and recognised research institute or company, in order to determine the reliability of the source of the evidence.
2. The number and profile (sex, age, occupation and bac kground) of the interviewees, in order to evaluate whether the results of the survey are representative of the different kinds of potential consumers of the goods in question. In principle, samples of 1 000 – 2 000 interviewees are considered sufficient, provided they are representative of the type of consumer concerned.
3. The method and circumstances under which the survey was carried out and the complete list of questions included in the questionnaire. It is also important to know how and in what order the questions were formulated, in order to ascertain whether the respondents were confronted with leading questions.
4. Whether the percentage reflected in the survey corresponds to the total amount of persons questioned or only to those who actually replied.
Unless the above indications are present, the results of a market survey or opinion poll should not be considered of high probative value, and will not in principle be sufficient on their own to support a finding of reputation.
Case No Comment
R 0925/2010-2 ‘1 CLEAN! 2 FRESH! 3 STRONG!’ (fig.)
The cancellation applicant did not submit sufficient proof of the reputation of its trade marks. According to the extracts from the 2001 survey conducted in Italy, although the level of ‘prompted recognition’ stands at 86 %, the rate of ‘spontaneous recognition’ is only 56 %. Moreover, no indication is given of the questions put to the people surveyed, making it impossible to determine whether the questions were really open and unassisted. The survey further fails to state for which goods the trade mark is known (para. 27).
Likewise, if the above indications are given, but the reliability of source and method are questionable or the statistical sample is too small, or the questions were leading, the credibility of the evidence will be diminished accordingly.
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Case No Comment
R 1191/2010-4 ‘MÁS KOLOMBIANA …Y QUÉ MÁS!! (fig.)’
The survey submitted by the opponent does not provide conclusive information to demonstrate that the earlier sign is well-known to the Spanish public for aerated waters as the interviewees were carefully selected on the basis of their origin, that is, Colombians resident in Spain. This is only a very small part of the population living in Spain. The sales figures, publicity investment and presence in publications directed at the immigrant public, contained in the statement before a notary public, are likewise in insufficient amounts for a finding that the earlier sign is well-known. Moreover, the statements are not corroborated by conclusive data on the extent or turnover of the goods (para. 23).
R 1345/2010-1 ‘Fukato Fukato (fig.)’
In support of its claim under Article 8(5) CTMR, the opponent relies exclusively on an opinion poll that was carried out in 2007. That opinion poll was conducted by an independent company. In principle, samples of 1 000–2 000 interviewees are considered sufficient, provided they are representative of the type of consumer concerned. The opponent’s opinion poll was based on a sample of 500 interviewees, which is not sufficient in respect of the services for which reputation is claimed. According to the opinion poll, the logo of the earlier mark has been associated especially with services in the financial and insurance fields. Since the opposition is only based on Class 42 with regard to the earlier Community trade mark, it does not cover financial and i nsurance services. Consequently, the submitted opinion poll is not suitable proof of the reputation of the opponent’s Community trade mark (para. 58).
Conversely, opinion polls and m arket surveys that fulfil the above requirements (independence and trustworthiness of source, reasonably large and widespread sample and reliable method) will be a strong indication of reputation, especially if they show a high degree of trade mark awareness.
Audits and inspections
Audits and inspections of the opponent’s undertaking may provide useful information about the intensity of use of the mark, as they usually comprise data on f inancial results, sales volumes, turnovers, profits etc. However, such evidence will be pertinent only if it specifically refers to the goods sold under the mark in question, rather than to the opponent’s activities in general.
Audits and i nspections may be c arried out on t he initiative of the opponent itself, or may be required by company law and/or financial regulations. In the former case, the same rules as for opinion polls and m arket surveys apply, that is, the status of the entity conducting the audit and the reliability of the applied method will be of essence for determining its credibility, whereas the probative value of official audits and inspections will be as a rule much higher, since they are usually conducted by a state authority or by a r ecognised body of auditors, on t he basis of generally accepted standards and rules.
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Certifications and awards
This kind of evidence includes certifications and awards by public authorities or official institutions, such as chambers of commerce and industry, professional associations and societies, consumer organisations etc.
The reliability of certifications by authorities is generally high, as they emanate from independent and specialised sources, which attest facts in the course of their official tasks. For example, the average circulation figures for periodicals issued by the competent press-distribution associations are conclusive evidence about the performance of a mark in the sector.
Case No Comment
R 0907/2009-2 ‘O2PLS’
The many brand awards won by the mark were considered an important part of the evidence to show reputation together with the huge advertising investments and the number of articles published in different publications (para. 9(iii) and para. 27).
The same applies to quality certifications and awards granted by such authorities, as the opponent usually has to meet objective standards in order to receive the award. Conversely, prizes and awards offered by unknown entities, or on the basis of unspecified or subjective criteria, should be given very little weight.
The relevance of a c ertification or award to the specific case largely depends on i ts contents. For example, the fact that the opponent is a holder of an ISO 9001 quality certificate, or of a royal warrant, does not automatically mean that the sign is known to the public. It only means that the opponent’s goods meet certain quality or technical standards or that it is a supplier of a royal house. However, if such evidence is coupled with other indications of quality and market success, it may lead to the conclusion that the earlier mark has a reputation. Articles in the press or in specialised publications
The probative value of press articles and other publications concerning the opponent’s mark mainly depends on whether such publications are covert promotional matter, or if, on the contrary, they are the result of independent and objective research.
Case No Comment
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
The very existence of articles in a scientific publication or the general-interest press constitutes a r elevant factor in establishing the reputation of the products marketed under the trade mark BOTOX with the general public, irrespective of the positive or negative content of those articles (para. 54).
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Case No Comment
R 0555/2009-2 ‘BACI MILANO’ (fig.)
The reputation of the earlier trade mark in Italy was proven by the copious amount of documentation submitted by the opponent, which included, inter alia, an article from Economy revealing that in 2005 the ‘BACI & ABBR ACCI’ trade mark was one of the fifteen most counterfeited fashion brands in the world; an article published in Il Tempo on 05/08/2005, in which the ‘BACI & ABBRACCI’ trade mark is mentioned alongside others, including Dolce & Gabbana, Armani, Lacoste and Puma, as being targeted by counterfeiters; an article published in Fashion on 15/06/2006, in which the trade mark is defined as ‘a true market phenomenon’; publicity campaigns from 2004 to 2007, with testimonials from entertainment and sports celebrities; a market survey conducted by the renowned independent agency Doxa in September 2007, from which it emerges that the trade mark is at the top of mind in the fashion sector for 0.6% of the Italian public (para. 35).
Hence, if such articles appear in publications of a hi gh status or are written by independent professionals, they will have a quite high value, as for example when the success of a specific brand becomes the object of a case study in specialised journals or in scientific publications. The presence of a mark in a dictionary (which is not a press article but is still a publication) is a means of evidence with high value.
Case No Comment
Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P
The inclusion of a word in a dictionary is the expression of a fair amount of recognition on the part of the public. The references in the 2002 and 2003 editions of a number of dictionaries published in the United Kingdom constitute one of the items of evidence which may establish the reputation of the trade mark BOTOX in that country or amongst the English-speaking public of the European Union. (paras 55, 56).
Annual reports on economic results and company profiles
This type of evidence includes all kinds of internal publications giving varied information about the history, activities and per spectives of the opponent’s company, or more detailed figures about turnovers, sales, advertising etc.
To the extent that such evidence derives from the opponent and is mainly intended to promote its image, its probative value will mostly depend on i ts contents and the relevant information should be t reated with caution, especially if it mainly consists of estimates and subjective evaluations.
However, where such publications are circulated to clients and other interested circles and contain objectively verifiable information and data, which may have been compiled or revised by independent auditors (as is often the case with annual reports), their probative value will be substantially enhanced.
Invoices and other commercial documents
All kinds of commercial documents may be grouped under this heading, such as invoices, order forms, distribution and s ponsoring contracts, samples of
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correspondence with clients, suppliers or associates etc. Documents of this sort may provide a great variety of information as to the intensity of use, the geographical extent and duration of the use of the mark.
Even though the relevance and credibility of commercial documents is not disputed, it will be generally difficult to prove reputation on the basis of such materials alone, given the variety of factors involved and the volume of documents required. Furthermore, evidence such as distribution or sponsoring contracts and commercial correspondence are more appropriate for giving indications about the geographical extent or the promotional side of the opponent’s activities, than for measuring the success of the mark in the market and thus may only serve as indirect indications of reputation.
Case No Comment
R 1272/2010-1 ‘GRUPO BIMBO’ (fig.) (T-357/11)
The evidence submitted shows a high level of recognition of the mark on the Spanish market. The total invoices on the Spanish tin- loaf market in 2004 amounted to EUR 346.7 million, of which the opponent’s invoices amounted to EUR 204.9 million. The submitted invoices cover advertisements on T V, as well as in newspapers and magazines. Therefore, the reputation of ‘BIMBO’ in Spain for industrially produced bread has been substantiated (para. 64). The Court did not address this point.
Advertising and promotional material
This kind of evidence may take various forms, such as press cuttings, advertising spots, promotional articles, offers, brochures, catalogues, leaflets etc. In general, such evidence cannot be conclusive of reputation on its own, due to the fact that it cannot give much information about actual trade mark awareness.
However, some conclusions about the degree of exposure of the public to advertising messages concerning the mark may be drawn by reference to the kind of the medium used (national, regional, local) and to the audience rates or circulation figures attained by the relevant spots or publications, if of course this kind of information is available.
Case No Comment
R 0043/2010-4 ‘FFR’ (fig.) (T-143/11)
The documents submitted show that the device of a black rooster has acquired reputation and will be associated with wines from the Chianti Classico-region. The opponent provided several copies of advertisements in newspapers and magazines showing its promotional activity as well as independent articles displaying a black rooster in connection with the Chianti Classico region. However, given that the reputation only pertains to the device of a black rooster and given that this device is only one part of the earlier marks, serious doubts arise about whether reputation can be attributed to the marks as a w hole. Moreover, for the same reason, doubt also arises about which marks the reputation could be attributed to, given that the opponent owns several marks. (paras 26, 27). The Court did not assess the evidence on reputation.
In addition, such evidence may give useful indications of the kind of goods covered, the form in which the mark is actually used and the kind of image the opponent is trying to create for its brand. For example, if the evidence shows that the earlier registration for
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which reputation is claimed covers a device, but in reality this device is used combined with a verbal element, it would not be consistent to accept that the device by itself has a reputation.
Case No Comment
R 1308/2010-4 ‘WM GRAND PRIX’
In all the examples of actual use on the podia, media kits, posters, race cards, letter head, programme covers, tickets, passes etc., submitted by the opponent, the words GRAND PRIX are always used in combination with other elements. No evidence of use was submitted of the use of the trade mark GRAND PRIX in an independent way (paras 53, 54).
T-10/09, ‘F1-LIVE’ (C-196/11 P)
The evidence of reputation makes reference to the earlier figurative mark ‘F1 Formula 1’ and not to the earlier word marks. Without its particular logotype the text ‘Formula 1’ and its abbreviation ‘F1’ are perceived as descriptive elements for a category of racing cars or races involving those cars. The reputation was not proven for the word marks which are not identical or similar (paras 53, 54, 67). The Court did not address this point.
3.2 The similarity of the signs
A ‘certain degree of similarity between the signs’ must be found for an opposition under Article 8(5) CTMR to succeed (judgment of 24/03/2011, C-552/09 P, ‘TiMi KINDERJOGHURT’, para. 53). If the signs are found dissimilar overall, the examination aimed at establishing whether the other requirements under Article 8(5) CTMR are met should not be carried out, as the opposition cannot succeed.
A subject of some uncertainty is the relationship between ‘similarity’ within the meaning of Article 8(5) CTMR and the meaning of the same term used in Article 8(1)(b) CTMR. According to the clear wording of these two provisions, a similarity (or identity) between the signs is a precondition for the application of both Article 8(1)(b) and Article 8(5) CTMR. The use of the same term in both provisions is an ar gument in favour of the need to interpret this term in the same way and the case-law has confirmed this.
Accordingly, the assessment of similarity should be made according to the same criteria that apply in the context of Article 8(1)(b) CTMR, thus taking into account elements of visual, aural or conceptual similarity (judgment of 23/10/2003, C-408/01, ‘Adidas’, para. 28, relating to the interpretation of Article 5(2) TMD, and judgment of 24/03/2011, C-552/09P, ‘TiMi KINDERJOGHURT’, para. 52). See the Guidelines, Part C, Opposition, Section 2, Identity and Li kelihood of Confusion, Chapter 3, Comparison of Signs.
The general rules for assessing the signs established for the examination of this criterion under Article 8(1)(b) CTMR apply, such as the rule that consumers perceive the sign as a whole and only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect image of them that they have kept in mind (judgment of 25/01/2012, T-332/10 ‘Viaguara’, paras 33, 34) (see the Guidelines, Part C, Opposition, Section 2, Identity and Li kelihood of Confusion, Chapter 8, Global Assessment, paragraph 4, Imperfect recollection).
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3.2.1 Notion of ‘similarity’ pursuant to Article 8(5) CTMR compared with Article 8(1)(b) CTMR
Despite application of the same criteria for similarity of the signs in Article 8(1)(b) and Article 8(5) CTMR, the purposes underlying these Articles are different: for Article 8(1)(b) CTMR, the aim is to prevent the registration of a later trade mark that, if used, could confuse the relevant public as regards the commercial origin of the goods or services concerned, whereas for Article 8(5) CTMR, the aim is to prevent the registration of a l ater trade mark that, if used, could encroach on t he reputation/distinctiveness of the earlier reputed trade mark.
The relationship between the notion of ‘similarity’ under the two provisions was addressed by the ECJ in TiMi KINDERJOGHURT: ‘It should be noted at the outset that … the existence of a similarity between the earlier mark and the challenged mark is a precondition for the application both of Article 8(1)(b) [CTMR] and of Article 8(5) [CTMR]’ (para. 51).
In the context both of Article 8(1)(b) and o f Article 8(5) CTMR, a finding of similarity between the marks in question requires the existence, in particular, of elements of visual, aural or conceptual similarity (judgment of 23/10/2003, C-408/01 ‘Adidas- Salomon and Adidas Benelux’, para. 28).
However, those provisions differ in terms of the degree of similarity required. Whereas the protection provided for under Article 8(1)(b) CTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) CTMR. Accordingly, the types of injury referred to in Article 8(5) CTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks that is to say, to establish a l ink between them (judgment of 23/10/2003, C-408/01 ‘Adidas- Salomon and A didas Benelux’, paras 27, 29, 31, and judgment of 27/11/2008, C-252/07 ‘Intel Corporation’, paras 57, 58, 66).
Nevertheless, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, depending on whether the assessment is carried out under Article 8(1)(b) CTMR or under Article 8(5) CTMR.
To sum up, the application of both Article 8(1)(b) and Article 8(5) CTMR requires a finding of similarity between the signs. Consequently, if in the examination of Article 8(1)(b) CTMR the signs were found to be dissimilar, the opposition will necessarily fail under Article 8(5) CTMR too.
However, once the signs have been found to be similar, depending on whether Article 8(1)(b) or Article 8(5) CTMR are involved, the examiner will independently assess whether the degree of similarity is sufficient for the relevant provision to apply (and in correlation with the further relevant factors).
Therefore, a degree of similarity between the marks that, after an overall assessment of the factors, led to a partial finding of likelihood of confusion under Article 8(1)(b) CTMR does not necessarily trigger a link between the signs under Article 8(5) CTMR, for example because the markets concerned are completely distinct. A full analysis
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must take place. This is because the similarity of the signs is only one of the factors to be consi dered when assessing whether there is such a l ink (see the relevant criteria listed under paragraph 3.3 below on the ‘link’).
Depending on the case, the following scenarios are possible.
• Article 8(1)(b) CTMR fails because the signs are dissimilar – Article 8(5) CTMR fails too, since the same conclusion applies.
• Likelihood of confusion pursuant to Article 8(1)(b) CTMR is excluded (e.g. because the goods or services are dissimilar or very remotely similar), but the signs are similar – the examination of Article 8(5) CTMR must be carried out (see T-143/11 ‘CHIANTI CLASSICO’ paras 66-71).
• The similarity of the signs together with the other relevant factors justifies the exclusion of likelihood of confusion pursuant to Article 8(1)(b) CTMR, but the similarity between the signs might be sufficient to establish a link between them under Article 8(5) CTMR, in view of the other relevant factors to be taken into account.
3.3 The link between the signs
The ECJ has made it clear that in order to assess whether the use of the contested mark would be likely to cause detriment to, or take unfair advantage of, the distinctive character or repute of the earlier mark, it is necessary to establish – once the signs have been f ound to be similar – if, given all the relevant factors, a l ink (or association) between the signs will be est ablished in the mind of the relevant public. The subsequent case-law has made it clear that such an analysis should precede the final assessment as to whether encroachment would be likely or not.
The notion of a link between the signs was addressed by the ECJ in its judgment of 27/11/2008, C-252/07 ‘Intel Corporation’, para. 30 (and the case-law cited therein), which, although referring to the interpretation of Article 4(4)(a) TMD, is applicable to Article 8(5) CTMR which is the equivalent provision in the CTMR. In Intel, the ECJ, stated the following (para. 30):
The types of injury referred to in Article 4(4)(a) of the Directive, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see, in relation to Article 5(2) of the Directive, General Motors, para. 23; Adidas-Salomon and Adidas Benelux, para. 29, and adidas and adidas Benelux, para. 41).
The term ‘link’ is often also referred to as ‘association’ in other paragraphs of this part of the Guidelines as well as in case-law. These terms are, at times, used interchangeably.
The Court made it clear that the mere fact that the marks in question are similar is not sufficient for it to be concluded that there is a link between them. Rather, whether or not there is a link between the marks at issue must be appr eciated globally, taking into account all factors relevant to the circumstances of the case.
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According to Intel, (para. 42), the following may be relevant factors when assessing whether such a link exists.
• The degree of similarity between the conflicting marks. The more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 26 and, by analogy, preliminary ruling of 27/11/2008, C-252/07, Intel, para. 44).
• The nature of the goods or services for which the earlier mark is reputed and the later mark seeks registration, including the degree of similarity or dissimilarity between those goods or services, and the relevant section of the public. The goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public (Intel, para. 49).
• The strength of the earlier mark’s reputation.
• The degree of the earlier mark’s distinctive character, whether inherent or acquired through use. The more inherently distinctive the prior mark, the more likely it will be brought to a consumer’s mind when encountering a similar (or identical) later mark.
• The existence of likelihood of confusion on the part of the public.
This list is not exhaustive. A link between the marks at issue may be established or excluded on the basis of only some of those criteria. The question of whether the relevant public will establish a link between the marks at issue is a question of fact which must be answered in the light of the facts and circumstances of each individual case.
The assessment of whether a ‘link’ will be es tablished must take into account all the relevant factors that will then need to be balanced. Therefore, even a faint or remote degree of similarity between the signs (which might not be s ufficient for a f inding of likelihood of confusion under Article 8(1)(b) CTMR) still justifies assessing all the relevant factors to determine if it is likely that a l ink between the signs will be established in the mind of the relevant public. In this respect, in its judgment of 24/03/2011, C-552/09 P, ‘TiMi Kinderjoghurt’, paras 65, 66, the ECJ stated the following:
Although that global assessment implies some interdependence between the relevant factors, and a low degree of similarity between the marks may therefore be offset by the strong distinctive character of the earlier mark … the fact remains that where there is no similarity between the earlier mark and the challenged mark, the reputation or recognition enjoyed by the earlier mark and the fact that the goods or services respectively covered are identical or similar are not sufficient for it to be found that the relevant public makes a link between them ...
… It is only if there is some similarity, even faint, between the marks at issue that the General Court must carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as
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the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public.
Case-law has made it clear that a link is not sufficient, in itself, to establish that there may be one o f the forms of damage referred to in Article 8(5) CTMR (judgment of 26/09/ 2012, T-301/09, ‘Citigate’, para. 96, and the case-law cited therein). However, as will be ex plained in detail under paragraph 3.4 ‘Encroachment upon reputation’ below, the existence of the link (or association) between the signs is necessary before determining whether detriment or unfair advantage are likely.
3.3.1 Examples where a link was found between the signs
The following are examples where it was found that the degree of similarity between the signs (together with further factors) was sufficient to conclude that consumers would establish a link between them.
Earlier reputed sign CTM application Case No
BOTOX BOTOLYST and BOTOCYL Joined Cases
T-345/08 and T-357/08 confirmed by ECJ in C-100/11P)
The trade mark BOTOX had a reputation for pharmaceutical preparations for the treatment of wrinkles in the United Kingdom on the filing date of the contested marks, which cover a range of goods in Class 3. The General Court confirmed the Board’s finding that there is a certain overlap between the goods, namely a low degree of similarity between the opponent’s pharmaceutical preparations for the treatment of wrinkles and the contested cosmetics among other creams, whereas the remaining contested goods, namely perfumes, sun-tanning milks, shampoos, bath salts, etc., are dissimilar. Nevertheless, the goods at issue concern related market sectors. The General Court confirmed the Board’s finding that the relevant public – practitioners as well as the general public – would not fail to notice that both the applied for trade marks, BOTOLIST and B OTOCYL, begin with ‘BOTO-’, which comprises almost the whole of the mark BOTOX, which is well known to the public. The General Court pointed out that ‘BOTO- is not a common prefix, either in the pharmaceutical field or in the cosmetic field and that it has no descriptive meaning. Even if the sign BOTOX could be broken down into ‘bo’ for ‘botulinum’ and ‘tox’ for ‘toxin’ in reference to the active ingredient which it uses, that word would then have to be considered to have acquired a distinctive character, inherent or through use, at least in the United Kingdom. In light of all the relevant factors, the public would naturally be led to establish a l ink between the marks BOTOLIST and BOTOCYL and the reputed mark BOTOX (paras 65-79).
Earlier reputed sign CTM application Case No
RED BULL R 0070/2009-1
The Board found that a link would be established between RED DOG and RED BULL because (i) the marks have some relevant common features, (ii) the conflicting goods in Classes 32-33 are identical, (3) the RED BULL mark is reputed, (iv) the RED BULL mark has acquired a strong distinctive character through use and (v) there might be a possibility of confusion (para 19). It is reasonable to assume that the average consumer of beverages, who knows the reputed RED BULL mark and sees the RED DOG marks on the same kind of beverages would immediately recall the earlier mark. According to the Intel judgement, this is ‘tantamount to the existence of a link’ between the marks (para 24).
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Earlier reputed sign CTM application Case No
VIAGRA VIAGUARA T-332/10
The trade marks are highly similar overall (para. 42). Visually, all the letters of the earlier trade mark are present in the contested one, the first four and the final two are in the same sequence. There is a visual similarity, especially since the public tends to pay more attention to the beginnings of words (para 35, 36). The identity of the first and the last syllable, together with the fact that the middle syllables have in common the sound [g], leads to a high degree of phonetic similarity (paras 38, 39). Neither of the signs has a meaning and, therefore, the public will not differentiate them conceptually (para. 40).
The earlier mark covers pharmaceuticals for the treatment of erectile dysfunctions in Class 5, whereas the contested mark covers non-alcoholic and alcoholic drinks in Classes 32 and 33. The reputation of the earlier sign for the mentioned goods is not disputed. The General Court found that although no direct connection can be established between the goods covered by the marks in dispute since they are dissimilar, an association with the earlier mark remains possible, taking into account the high degree of similarity between the signs and the strong reputation acquired by the earlier mark. Therefore, the General Court concludes that a link is likely to be established between the marks (para. 52).
Earlier reputed sign CTM application Case No
RSC-ROYAL SHAKESPEARE COMPANY ROYAL SHAKESPEARE T-60/10
As the contested trade mark is exclusively made up of the central and distinctive element of the earlier trade mark, namely the expression ‘royal shakespeare’, the signs at issue are visually, phonetically and conceptually similar. Therefore, the average consumer will establish a link between those signs (para 29).The earlier mark covers services in Class 41, including theatre productions, whereas the contested mark covers non-alcoholic and alcoholic drinks in Classes 32 and 33 and providing of food and drink, restaurants, bars, pubs, hotels; temporary accommodation in Class 42. The General Court confirmed the Board’s finding of the ‘exceptional’ reputation of the earlier mark in the United Kingdom for theatre productions. The relevant public for the contested trade mark is the same as the relevant public for the earlier trade mark, namely the public at large (para 58). Although the contested goods in Classes 32-33 do not appear to be directly and immediately linked to the opponent’s theatre productions, there is a certain proximity and link between them. The General Court refers to the judgment of 04/11/2008, T-161/07 ‘Ugly (COYOTE UGLY)’, paras 31-37, where a c ertain similarity between entertainment services and beer was found due to their complementarity. The General Court added that it is common practice, in theatres, for bar and catering services to be offered either alongside and in the interval of a p erformance. Moreover, irrespective of the above, in view of the established reputation of the earlier trade mark, the relevant public, namely the public at large in the United Kingdom, would be able to make a link with the intervener when seeing a beer with the contested trade mark in a supermarket or in a bar (para. 60).
3.3.2 Examples where no link was found between the signs
The following are examples where an overall assessment of all of the relevant factors showed that it was unlikely that a link would be established between the signs.
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Earlier reputed sign CTM application Case No
R 0724/2009-4
The signs only have a certain degree of visual and aural similarity. The Board confirms that the reputation of the earlier marks has been proven solely for distribution of energy services. These services are completely different from the goods for which protection is requested in Classes 18, 20, 24 and 27. The relevant section of the public is the same, given that the services for which a reputation has been proven, namely distribution of energy services, are aimed at the general public and the goods in dispute are also aimed at the average consumer who is reasonably observant and c ircumspect. However, even if the relevant section of the public for the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. The huge differences in usage between the goods in dispute and the services for which a r eputation has been proven make it very unlikely that the public will make a link between the signs in dispute, which is essential for the application of Article 8(5) CTMR and f or unfair advantage to be taken of the distinctive character or repute of the earlier mark. It is even less likely that, when intending to purchase a bag or item of furniture, the relevant public will link these goods to a trade mark that is very well known, but for services in the energy sector (paras 69-79).
Earlier reputed sign CTM application Case No
G-STAR and
T-309/08
Visually the signs cause a different overall impression, due to the figurative element of a Chinese dragon’s head placed at the beginning of the mark applied for. Aurally, there is a rather close aural similarity between the marks at issue. The signs are conceptually different, since the element ‘star’ of the earlier marks is a w ord which is part of basic English vocabulary, the meaning of which is widely understood throughout the Community. Therefore, the earlier marks will be perceived as referring to a star or a famous person. It is possible that a part of the relevant public will attribute to the element ‘stor’ of the contested mark the sense of the Danish and Swedish word ‘stor’, meaning ‘big, large’, or will regard it as a reference to the English word ‘store’ meaning ‘shop, storage’. It is, however, more likely that the majority of the relevant public will not attribute any particular meaning to that element. Therefore, the relevant public will perceive the marks at issue as conceptually different inasmuch as the earlier marks have a clear meaning throughout the Community, while the mark applied for has either a different meaning for part of the relevant public or has no meaning. According to settled case-law, where the meaning of at least one of the two signs at issue is clear and specific so that it can be gr asped immediately by the relevant public, the conceptual differences between those signs may counteract the visual and aural similarities between them. The Board of Appeal was right to find that the visual and conceptual differences between the marks prevented any assumption of a possible link between them (paras 25-36).
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Earlier reputed sign CTM application Case No
ONLY R 1556/2009-2(confirmed by T-586/10)
The goods in Class 3 are identical and target the same public. There is a slight degree of visual and conceptual similarity between the signs at issue and a moderate degree of aural similarity. Even if the earlier marks had a reputation, the differences between the signs, in particular due to the conceptual unit created by the combination of the element ‘only’ and the distinctive dominant element ‘givenchy’, would be significant enough for the public not to make any connection between them. Therefore, the Board of Appeal was correct in finding that one of the conditions for applying Article 8(5) CTMR, namely that the signs be sufficiently similar to lead the relevant public to make a connection between them, has not been met (paras 65, 66).
Earlier reputed sign CTM application Case No
KARUNA R 696/2009-4(confirmed by T-357/10)
The goods concerned, chocolate in Class 30, are identical. The signs differ visually not only because of the figurative elements in the sign applied for, but also because of their verbal elements. Even though the verbal elements of the marks at issue have three letters out of six in common, a difference arises because the earlier marks begin with the letters ‘ka’ while the mark applied for begins with the letters ‘co’ and because the consumer normally attaches more importance to the first part of words. There is a low degree of phonetic similarity between the signs taken as a whole. Conceptually, the word ‘corona’, meaning ‘crown’ in Spanish, does not have any meaning in Estonian, Latvian or Lithuanian. Accordingly, no conceptual comparison is possible between the signs at issue in the three Baltic States. The mere fact that the Lithuanian word ‘karūna’ means ‘crown’ is not sufficient to establish that the relevant public associates the terms ‘karuna’ or ‘karūna’ with the word ‘corona’, which remains a foreign word. To conclude, the General Court reiterated that if the condition of similarity of the signs is not met under Article 8(1)(b) CTMR, it must also be held, on the basis of the same analysis, that that condition is not met under Article 8(5) CTMR either (paras 30-34 and 49).
3.4 Encroachment upon reputation
3.4.1 Protected subject matter
Article 8(5) CTMR does not protect the reputation of the earlier mark as such, in the sense that it does not intend to prevent the registration of all marks identical with or similar to a mark with reputation. In addition, there must be a l ikelihood that use of the contested application without due c ause would take unfair advantage of, or would be detrimental to, the distinctive character or the repute of the earlier mark. The Court confirmed this by stating that ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be det rimentally affected without due cause’ (see judgment of 14/09/1999, C-375/97, ‘General Motors’, para. 30).
The Court did not set out in more detail exactly what would count as detriment or unfair advantage, even though it stated in Sabel that Article 8(5) CTMR ‘[does] not require proof of likelihood of confusion’, thereby stating the obvious, namely that the enlarged protection granted to reputed marks is not concerned with their function of origin (see judgment of 11/11/1997, C-251/95, ‘Sabel’, para. 20).
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However, in a series of previous decisions the Court stated that apart from indicating origin, a trade mark may also fulfil other functions worthy of protection. More particularly, it confirmed that a trade mark can offer a guarantee that all the goods coming from a single undertaking have the same quality (guarantee function) and that it can serve as an advertising instrument by reflecting back the goodwill and prestige it has acquired in the market (advertising function) (judgment of 17/10/1990, C-10/89 CNL-SUCAL v HAG, judgment of 11/07/1993, joined cases C-427/93, C-429/93 and C-436/93, ‘Bristol-Myers Squibb and Others v Paranova’, judgment of 11/11/1997, C-349/95, ‘Loendersloot v Ballantine & Son and Others’, judgment of 04/11/1997, C-337/95, ‘Parfums Christian Dior v Evora’, and j udgment of 23/02/199, C-63/97, ‘BMW’).
It follows that trade marks do not only serve to indicate the origin of a product, but also to convey a certain message or image to the consumer, which is incorporated in the sign mostly through use and, once acquired, forms part of its distinctiveness and repute. In most cases of reputation these features of the trade mark will be particularly developed, as the commercial success of a brand is usually based on product quality, successful promotion, or both and, for this reason, they will be especially valuable to the trade mark owner. This added value of a mark with reputation is precisely what Article 8(5) CTMR intends to protect against undue detriment or unfair advantage.
Hence, the notion of encroachment upon reputation extends to all cases where the use of the contested trade mark applied for is likely to have an adverse effect on the earlier mark, in the sense that it would diminish its attractiveness (detriment to distinctiveness), or would devalue the image it has acquired among the public (detriment to repute), or the contested mark is likely to result in a misappropriation of its attractive powers or an exploitation of its image and prestige (unfair advantage of the distinctive character or repute).
Given also that a very strong reputation is both easier to harm and more tempting to take advantage of, owing to its great value, the Court underlined that ‘the stronger the earlier mark’s distinctive character and r eputation, the easier it will be t o accept that detriment has been caused to it’ (judgment of 27/11/2008, C-252/07 ‘Intel’, paras 67, 74, judgment of 25/05/2005, T-67/04, ‘Spa-finders’, para. 41). Even though the Court did not say so expressly, the same must be accepted as regards the unfair advantage that the applicant might enjoy at the expense of the earlier mark.
3.4.2 Assessment of encroachment upon reputation
In General Motors the Court did not deal with the assessment of detriment and unfair advantage in great detail, as this issue was not part of the question referred to it. It only stated that it ‘is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade mark, may possibly make an association between the two trade marks … and that the earlier trade mark may consequently be damaged’ (judgment of 14/09/1999, C-375/97, ‘General Motors’, para. 23).
Even though this statement is too limited to serve as a basis for a comprehensive analysis of the condition of encroachment upon reputation, it gives at least a significant indication, namely that detriment or unfair advantage must be the consequence of an association between the conflicting marks in the minds of the public, made possible by
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the similarities between the marks, their distinctiveness, the reputation and ot her factors (see paragraph 3.3 above).
The need for an association capable of causing detriment has a two-fold consequence for the assessment of detriment or unfair advantage.
• Firstly, if the alleged detriment or unfair advantage is not the result of an association between the marks, but is due to other, extraneous reasons, it is not actionable under Article 8(5) CTMR.
• Secondly, if in view of the overall circumstances of the case, an association between the marks is not likely, the necessary link between the use of the later mark and t he detrimental effect will be m issing. Therefore, the similarities between the signs and the reputation of the earlier mark must be of such a nature and degree that, considering all factors, the consumer will associate the signs, in the sense that encountering one of them will bring to mind the other.
Furthermore, as the Court observed, an association between the marks requires that the part of the public which is already familiar with the earlier mark is also exposed to the later mark. This will be easier to establish where the earlier mark is known to the public at large, or where the consumers of the respective goods and services largely overlap. However, in cases where the goods and services are significantly different from each other and such a connection between the respective publics is not obvious, the opponent must justify why the marks will be associated, by reference to some other link between its activities and those of the applicant, for example where the earlier mark is exploited outside its natural market sector, for instance, by licensing or merchandising (see paragraph 3.3 above).
Earlier reputed sign CTM application Case No
R 1074/2011-5
Repute for services in Classes 38, 42 and 45, inter alia, a website for social networking
Classes 14, 18 and 25
The Board defined the relevant public as the average European consumer of the goods applied for, which are ordinary goods meant for the general public.
The Board found it likely that the applicant’s goods could be seen as merchandising products coming from the opponent. Items such as t-shirts, key chains, watches, hand bags, jewellery, caps etc. are very frequently used as marketing means bearing trade marks which relate to entirely distinct goods and services. Upon encountering the sign TWITTER used on a w atch, a scarf or a t -shirt, the relevant consumer would inevitably make a mental connection with the opponent’s sign and the services it offers on account of the reputation of the opponent’s mark. This would give the applicant a competitive advantage since its goods would benefit from the extra attractiveness they would gain from the association with the opponent’s older mark. Buying a TWITTER watch as a present for someone who is known to be a TWITTER user is, for example, an action motivated by the fondness for the earlier mark (para. 40).
The more immediately and s trongly the earlier mark is brought to mind by the later sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will
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be, detrimental to it (judgments of 27/11/2008, C-252/07 ‘Intel’, paras 67-69; judgment of 18/06/2009, C-487/07 ‘L’Oréal’, paras 41, 43).
Therefore, the evaluation of detriment or unfair advantage must be based on an overall assessment of all the factors relevant to the case (including in particular the similarity of signs, the reputation of the earlier mark, the respective consumer groups and market sectors), with a view to determining whether the marks may be associated in a way which may encroach the earlier trade mark.
3.4.3 Forms of encroachment
Article 8(5) CTMR refers to the following forms of encroachment: ‘take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’. Therefore, Article 8(5) CMTR applies if any of the following three alternative requirements showing encroachment is fulfilled, namely if use of the contested mark would:
• take unfair advantage of the distinctiveness, or the repute of the earlier mark; • cause unfair detriment to the distinctiveness; • cause unfair detriment to the repute.
As regards the first form of encroachment, the wording of Article 8(5) CTMR suggests the existence of two kinds of unfair advantage, but settled case-law treats both as a single injury under Article 8(5) CTMR (see, for example, judgment of 06/07/2012, T-60/10, ‘RSC-Royal Shakespeare Company’, para. 47). For the sake of completeness, both aspects of the same injury will be deal t with under paragraph 3.4.3.1 below.
As demonstrated in the Guidelines, Part C, Opposition, Section 2, Identity and Likelihood of Confusion, likelihood of confusion relates only to confusion about the commercial origin of goods and s ervices. Article 8(5) CTMR, in contrast, protects earlier reputed marks in cases of association or confusion that does not necessarily relate to the commercial origin of goods/services. Article 8(5) CTMR protects the heightened effort and financial investment that is involved in creating and promoting trade marks to the extent that they become reputed by protecting these marks against later similar marks taking unfair advantage of, or being detrimental to, the distinctive character or the repute of the earlier trade mark. There is a rich lexicon of vocabulary that is used in relation to this area of trade mark law. The most common terms are set out below.
Terms in Article 8(5) CTMR Commonly used equivalents
Unfair advantage Free-riding, riding on the coat-tails
Detriment to distinctiveness Dilution by blurring, dilution, blurring, watering down, debilitating,whittling away
Detriment to repute Dilution by tarnishing, tarnishment, degradation
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3.4.3.1 Taking unfair advantage of distinctiveness or repute
The nature of the injury
The notion of taking unfair advantage of distinctiveness or repute covers cases where the applicant benefits from the attractiveness of the earlier right by affixing on its goods/services a sign which is similar (or identical) to one widely known in the market and, thus, misappropriating its attractive powers and advertising value or exploiting its reputation, image and prestige. This may lead to unacceptable situations of commercial parasitism where the applicant is allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up goodwill for its mark, as it may stimulate the sales of the applicant’s products to an ex tent which is disproportionately high in comparison with the size of its promotional investment.
In its judgment of 12/07/2011, C-324/09, ‘L’Oréal and others’, the Court indicated that unfair advantage exists where there is a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign. By riding on the coat-tails of the reputed mark, the applicant benefits from its power of attraction, its reputation and its prestige. It also exploits, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the image of that mark (paras 41, 49).
Earlier reputed sign CTM application Case No
SPA
LES THERMES DE SPA SPA-FINDERS T-67/04
The concept of taking unfair advantage of the distinctive character or the repute of the earlier mark must be intended to encompass instances where there is clear exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation (see to that effect Opinion of Advocate General Jacobs in Adidas, point 39) (para. 51).
Earlier reputed sign CTM application Case No
RSC-ROYAL SHAKESPEARE COMPANY
ROYAL SHAKESPEARE T-60/10
The unfair advantage taken of the distinctive character or the repute of the earlier trade mark consists in the fact that the image of the mark with a r eputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods can be made easier by that association with the earlier mark with a reputation (para. 48).
Relevant consumer
The concept of ‘unfair advantage’ focuses on benefit to the later mark rather than harm to the earlier mark; what is prohibited is the exploitation of the earlier mark by the proprietor of the later mark. Accordingly, the existence of the injury consisting of unfair advantage obtained from the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods or services for which the later mark is applied for (judgment of 27/11/2008, C-252/07, ‘Intel’,
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paras 35, 36; judgment of 12/03/2009, C-320/07P, ‘nasdaq’, paras 46-48; judgment of 07/12/2010, T-59/08, ‘NIMEI LA PERLA MODERN CLASSIC’, para. 35).
The assessment of unfair advantage
In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment which takes into account all the factors relevant to the circumstances of the case (judgment of 10/05/2007, T-47/06, ‘nasdaq’, para. 53, confirmed, on appeal, by judgment of 12/03/2009, C-320/07P, ‘nasdaq’; see also judgment of 23/10/2003, C-408/01 ‘Adidas’, paras 29, 30, 38; judgment of 27/11/2008, C-252/07 ‘Intel’, paras 57, 58, 66; and judgment of 24/03/2011, C-552/09P, ‘Kinder’, para. 53).
The misappropriation of the distinctiveness and repute of the earlier mark presupposes an association between the respective marks, which makes possible the transfer of attractiveness and prestige to the sign applied for. An association of this kind will be more likely in the following circumstances.
1. Where the earlier mark possesses a strong reputation or a very strong (inherent) distinctive character, because in such a c ase it will be bot h more tempting for the applicant to try to benefit from its value and easier to associate it with the sign applied for. Such marks will be recognised in almost any context, exactly because of their outstanding distinctiveness or ‘good’ or ‘special’ reputation, in the sense that it reflects an image of excellence, reliability or quality, or some other positive message, which could positively influence the choice of the consumer as regards goods of other producers (judgment of 12/07/2011, C-324/09, ‘L’Oréal and others’, para. 44). The stronger the distinctive character of the earlier mark, the more likely it is that, when encountering a later identical or similar mark, the relevant public will associate it with that earlier mark (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 27).
2. Where the degree of similarity between the signs at issue is high. The more similar the marks are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 26; see, by analogy, judgment of 27/11/2008, C-252/07, ‘Intel’, para. 44).
3. Where there is a special connection between the goods/services which allows for some of the qualities of the opponent’s goods/services to be a ttributed to those of the applicant. This will be particularly so in the case of neighbouring markets, where a ‘brand extension’ would seem more natural, as in the example of pharmaceuticals and cosmetics; the healing properties of the former may be presumed in the latter when it bears the same mark. Conversely, such a link was not found between credit card services and cosmetics, as it was thought that the image of the former is not transferable to the latter, even though their respective users largely coincide.
4. Where, in view of its special attractiveness and prestige, the earlier mark may be exploited even outside its natural market sector, for example, by licensing or merchandising. In this case, if the applicant uses a sign identical or similar to the earlier mark, for goods for which the latter is already exploited, it will obviously
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profit from its de facto value in that sector (see decision of 16/03/2012, R 1074/2011-5, ‘Twitter’).
The applicant’s intention is not a material factor. Taking unfair advantage of the distinctiveness or the repute of a trade mark may be a deliberate decision, for example where there is a clear exploitation and free riding on the coat-tails of a famous mark, or an attempt to trade upon the reputation of a famous mark. However, taking unfair advantage does not necessarily require a del iberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a r eputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a r eputation’ (judgment of 19/06/2008, T-93/06, ‘Mineral Spa’, para. 40, judgment of 22/03/2007, T-215/03, ‘VIPS’, para. 40, judgment 30/01/2008, T-128/06, ‘Camelo’, para. 46).
Therefore, bad faith is not in itself a condition for the application of Article 8(5) CTMR, which only requires that the advantage be ‘unfair’, in that there is no justification for the applicant’s profit. However, where the evidence shows that the applicant is clearly acting in bad faith, there will be a strong indication of unfair advantage. The existence of bad faith may be inferred from various factors, such as an obvious attempt by the applicant to imitate an earlier sign of great distinctiveness as closely as possible, or where there is no apparent reason why it chose for its goods a mark which includes such a sign.
Finally, the concept of unfair advantage in Article 8(5) CTMR does not relate to the detriment caused to the reputed mark. Accordingly, an adv antage taken by a third party of the distinctive character or the repute of the mark may be unfair, even if the use of the identical or similar sign is not detrimental to the distinctive character or to the repute of the mark or, more generally, to its proprietor. It is, therefore, not necessary for the opponent to show that the applicant’s benefit is detrimental to its economic interests or to the image of its mark (unlike with tarnishing, see below), as in most cases the ‘borrowed’ distinctiveness/prestige of the sign will principally affect the applicant’s competitors, that is, traders dealing in identical/similar/neighbouring markets, by putting them at a competitive disadvantage. However, the possibility of simultaneous detriment to the opponent’s interests should not be ruled out completely, especially in instances where use of the applied-for sign could affect the opponent’s merchandising schemes, or would hinder its plans to penetrate a new market sector.
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Cases on unfair advantage
Risk of unfair advantage established
Earlier reputed sign CTM application Case No
INTEL INTELMARK C-252/07(Advocate General Opinion)
In her opinion in the Intel preliminary ruling, Advocate General Sharpston referred to unfair advantage as follows: ‘The concepts of taking unfair advantage of the distinctive character or repute of the mark in contrast must be intended to encompass “instances where there is clear exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation”. Thus by way of example Rolls Royce would be entitled to prevent a manufacturer of whisky from exploiting the reputation of the Rolls Royce mark in order to promote his brand. It is not obvious that there is any real difference between taking advantage of a m ark’s distinctive character and t aking advantage of its repute; since however nothing turns on any such difference in the present case, I shall refer to both as free-riding’ (para. 33).
Earlier reputed sign CTM application Case No
CITIBANK et al T-181/05
‘…the reputation of the trade mark CITIBANK in the European Community in regard to banking services is not disputed. That reputation is associated with features of the banking sector, namely, solvency, probity and financial support to private and commercial clients in their professional and investment activities.
‘…there is a c lear relationship … between the services of customs agencies and the financial services offered by banks such as the applicants, in that clients who are involved in international trade and in the import and export of goods also use the financial and banking services which such transactions require. It follows that there is a probability that such clients will be familiar with the applicants’ bank given its extensive reputation at international level.
‘In those circumstances, the Court holds that there is a high probability that the use of the trade mark applied for, CITI, by customs agencies, and therefore for financial agency activities in the management of money and real estate for clients, may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark CITIBANK and the considerable investments undertaken by the applicants to achieve that reputation. That use of the trade mark applied for, CITI, could also lead to the perception that the intervener is associated with or belongs to the applicants and, therefore, could facilitate the marketing of services covered by the trade mark applied for. That risk is further increased because the applicants are the holders of several trade marks containing the component “citi”’ (paras 81-83).
Earlier reputed sign CTM application Case No
SPA MINERAL SPA T-93/06
MINERAL SPA (f or soaps, perfumeries, essential oils, preparations for body and beauty care, preparations for the hair, dentifrices in Class 3) could take unfair advantage of the image of the earlier trade mark SPA and the message conveyed by it in that the goods covered by the contested application would be perceived by the relevant public as supplying health, beauty and purity. It is not a question of whether toothpaste and perfume contain mineral water, but whether the public may think that the goods concerned are produced from or with mineral water (paras 43, 44).
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Earlier reputed sign Case No
L’Oréal et al C-324/09 (preliminary ruling)
According to L’Oréal et al, the defendants manufactured and imported perfume which was ‘smell-like’ of L’Oréal’s fragrances but sold at a considerably lower price, using packaging which ‘took a wink’ at the get- up covered by L’Oréal’s marks. The comparison lists used by the defendants present the perfumes which they market as being an imitation or a replica of goods bearing a trade mark with repute. Under Directive 84/450, comparative advertising which presents the advertiser’s products as an imitation of a product bearing a trade mark is inconsistent with fair competition and thus unlawful. Therefore, any advantage gained by the advertiser through such advertising will have been achieved as a result of unfair competition and must be regarded as taking unfair advantage of the reputation of that mark (para. 79).
Earlier reputed sign CTM application Case No
NASDAQ T-47/06
‘Taking account of the fact that the financial and stock market listing services supplied by the intervener under its trade mark NASDAQ and, therefore, the trade mark NASDAQ itself, undeniably presents a certain image of modernity and that image can be transferred to sports equipment and, in particular, to the high tech composite materials which would be marketed by the applicant under the mark applied for, which the applicant appears to recognise implicitly by stating that the word ‘nasdaq’ is descriptive of its main activities.
Therefore, in light of that evidence, and taking account of the similarity of the marks at issue, the importance of the reputation and the highly distinctive character of the trade mark NASDAQ, it must be held that the intervener has established prima facie the existence of a future risk, which is not hypothetical, of unfair advantage being drawn by the applicant, by the use of the mark applied for, from the reputation of the trade mark NASDAQ. There is therefore no need to set aside the contested decision on that point’ (paras 60, 61).
Earlier reputed sign CTM application Case No
RSC-ROYAL SHAKESPEARE COMPANY
ROYAL SHAKESPEARE T-60/10
There is a certain proximity and link between entertainment services and beer, even a certain similarity due to their complementarity. The public in the United Kingdom would be able to make a link with the Royal Shakespeare Company (RSC) when seeing a beer with the contested mark ROYAL SHAKESPEARE in a supermarket or in a bar. The contested mark would benefit from the power of attraction, the reputation and the prestige of the earlier mark for its own goods and services, which would attract the consumers’ attention thanks to the association with RSC, thereby gaining a commercial advantage over its competitors’ goods. The economic advantage would consist of exploiting the effort expended by RSC to establish the reputation and the image of its earlier mark without paying any compensation in exchange. That equates to an unfair advantage (para. 61).
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Earlier reputed sign CTM application Case No
T-369/10 C-294/12 P
(appeal dismissed)
The General Court confirmed that the Board of Appeal was entitled to find that the earlier marks have a reputation for merchandising products such as toys and games, although that reputation is lesser than that acquired by the earlier marks for sound records, video records, films, and the goods in question are similar, although they do not have the same nature, use or purpose, are neither complementary nor in competition and do not have the same sales channels (paras 38, 50, 52).
The very positive image portrayed by the earlier marks could benefit the goods covered by the contested mark [inter alia, wheelchairs, specially made for sick and disabled persons, Class 12], since the relevant public, on a ccount specifically of the handicap in question, would be par ticularly attracted by the very positive image of freedom, youth and mobility associated with the earlier marks, especially since a part of the public targeted by the goods of the contested mark belongs to the generation who knew the goods bearing the earlier marks in the 1960s, some of whom may now be concerned by the goods covered by the contested mark (para. 72).
Earlier reputed sign CTM application Case No
EMILIO PUCCI T-373/09 (appeal pending C-582/12 P)
(cases R 770/2008-2 and R 826/2008-2)
Although the applicant’s cosmetic products are dissimilar to the opponent’s clothes, they both fall squarely within the realm of products which are often sold as luxury items under famous marks of well-known designers and manufacturers. Taking into account that the earlier mark is very well known and that the commercial contexts in which the goods are promoted are relatively close, BoA concluded that consumers of luxury clothes will make a connection between the applicant’s mark for soaps, perfumery, essential oils, cosmetics and hair lotions in Class 3 and the famous mark ‘EMILIO PUCCI’, an association which will produce a commercial benefit as per the Board’s findings (BoA para. 129).
BoA concluded that there was a s trong likelihood that the applicant could exploit the reputation of the opponent’s mark for its own benefit. The use of the mark applied for in connection with the goods and services mentioned above will almost certainly draw the relevant consumer’s attention to the opponent’s highly similar and very well-known mark. The applicant will become associated with the aura of luxury that surrounds the ‘EMILIO PUCCI’ brand. Many consumers are likely to think that there is a direct connection between the goods of the applicant on the one hand, and the famous Italian fashion house on the other, perhaps in the form of a licensing agreement. The applicant could take unfair advantage of the fact that the public knows the trade mark ‘EMILIO PUCCI’ well in order to introduce its own highly similar trade mark without incurring any great risk and the costs of introducing a totally unknown trade mark onto the market (BoA para. 130).
The General Court confirmed the BoA findings.
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Risk of unfair advantage denied
Earlier reputed sign CTM application Case No
O2
R 2304/2010-2
The Board of Appeal found that (1) the marks have very limited similarities and are dissimilar overall; (2) the use of the common designation ‘O2’ is descriptive in the mark applied for; and (3) taking the completely different areas of use – and the descriptive use of the common element – there can be no possibility of the applicant benefiting from the distinctive character of the earlier mark, even if there may be an overlap in the relevant public (para. 55).
Earlier reputed sign CTM application Case No
VIPS VIPS T-215/03
The earlier mark VIPS has a reputation for restaurants, in particular fast food chains. However, it was not proven that it also enjoys any particular prestige. The term VIPS is laudatory in itself and extensively used in this manner. Therefore, it cannot be ‘diluted’. There is no explanation as to how the sales of software products under the mark VIPS could possibly benefit from their association with a fast-food chain, even if a link were made.
Earlier reputed sign CTM application Case No
SPA SPA-FINDERS T-67/04
SPA has a r eputation for mineral water in the Benelux. The contested mark, SPA FINDERS, covers publications, catalogues, magazines, newsletters, travel agency services. The General Court declared that there was no detrimental link between the signs. The sign SPA is also used to denote the town of SPA and the racing circuit of the same name. There is no evidence of unfair advantage or any kind of exploitation of the fame of the earlier mark. The word SPA in the mark applied for only denotes the kind of publication concerned.
3.4.3.2 Detriment to distinctiveness
The nature of the injury
Detriment to the distinctive character of an ea rlier reputed mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods/services for which it is registered and u sed as coming from its proprietor is weakened because use of a later similar mark leads to dispersion of the identity of the earlier reputed mark by making it less distinctive or unique (judgment of 27/11/2008, C-252/07, ‘Intel’, para. 29).
Article 8(5) CTMR states that a p roprietor of a reputed mark may oppose CTM applications which, without due cause, ‘would be detrimental to the distinctive character of earlier reputed marks’ (emphasis added). Clearly, therefore, the object of protection is the distinctiveness of the earlier reputed mark. As demonstrated in the Guidelines, Part C, Opposition, Section 2, Identity and Likelihood of Confusion, Chapter 4, Distinctiveness, ‘distinctiveness’ refers to the greater or lesser capacity of a m ark to identify the goods/services for which it has been registered as coming from a particular undertaking. Therefore, Article 8(5) CTMR protects reputed marks against a reduction of their distinctive quality by a later similar mark even where the later mark relates to
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dissimilar goods/services. The latter situation is commonly known as ‘dilution by blurring’ meaning that ‘dilution’ occurs to the exclusivity of the mark which is ‘blurred’ by the arrival of other similar marks which results in the reputed mark no l onger being capable of evoking in the mind of the public an immediate association with the goods it covers.
Although Article 8(5) CTMR only refers to conflicts between dissimilar goods/services, in its judgment of 09/01/2003, C-292/00, ‘Davidoff’ and judgment of 23/10/2003, C-408/01, ‘Adidas’, the Court held that this article also covers similar or identical goods/services.
The protection provided in Article 8(5) CTMR, therefore, acknowledges that the unrestrained use of a r eputed mark by third parties, even on di ssimilar goods, will eventually reduce the distinctive quality or uniqueness of that reputed mark. For example, if Rolls Royce were used on r estaurants, pants, candy, plastic pens, yard brushes etc. its distinctiveness would eventually be dispersed and its special hold upon the public would be reduced - even in relation to cars for which it is reputed. Consequently, the Rolls Royce mark’s ability to identify the goods/services for which it is registered and used as coming from its proprietor would be weakened in the sense that consumers of the goods for which the reputed mark is protected and reputed will be less inclined to associate it immediately with the owner who has built up the trade mark’s reputation. This is because, for those consumers, the mark now has several or many ‘other’ associations where it previously had one. This situation, in turn, is likely to diminish the capacity of the Rolls Royce mark to stimulate the desire of the public to buy the products for which it is registered and reputed.
Relevant consumer
Detriment to the distinctive character of the earlier reputed mark must be assessed by reference to the average consumers of the goods and services for which that mark is registered, who are reasonably well informed and r easonably observant and circumspect (judgment of 27/11/2008, C-252/07 ‘Intel’, para. 35).
The assessment of detriment to distinctiveness
Detriment to the distinctiveness of the earlier reputed mark occurs where use of a later similar mark reduces the distinctive quality of the earlier reputed mark. However, this cannot be found to occur merely because the earlier mark has a reputation and is identical with or similar to the mark applied for – such an appr oach would apply an automatic and indiscriminate finding of likelihood of dilution against all marks that are similar to reputed trade marks and would negate the requirement of proving detriment.
The Court held in ‘Intel’ that Article 4(4)(a) TMD (the equivalent to Article 8(5) CTMR) must be interpreted as meaning that proof that the use of the later mark would be detrimental to the distinctive character of the earlier mark requires evidence of a ‘change in the economic behaviour’ of the average consumer of the goods/services for which the earlier mark was registered, or a serious likelihood that such a change will occur in the future.
The Court has further elaborated on the concept of “change in the economic behaviour of the average consumers” in its judgment of 14/11/2013 C-383/12P ‘Wolf head image’.
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It indicated that it is an objective condition which cannot be deduced solely from subjective elements such as consumer’s perceptions. The standard of proof is higher. Therefore, in order to find a detriment or risk of detriment to the distinctiveness of the earlier trade mark, the mere fact that consumers note the presence of a ne w sign similar to an earlier sign is not sufficient of itself (paras. 35-40).
Whilst the opponent does not need to submit evidence of actual detriment, it must convince the Office by adducing evidence of a serious future risk – which is not merely hypothetical – of detriment. The opponent may do t his by submitting evidence that proves a l ikelihood of detriment on t he basis of logical deductions made from an analysis of the probabilities (and not mere suppositions) and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (see judgment of 16/04/2008, T-181/05, ‘Citi’, para. 78 as cited in judgment of 22/05/2012, T-570/10, ‘Wolf head image’, para. 52 and confirmed in the appeal by judgment of 14/11/2013, C-383/12P, paras. 42-43).
First use
Detriment to the distinctive character is characterised by an ‘avalanche effect’, meaning that the first use of a similar mark in a distinct market may not, in itself, dilute the identity or ‘uniqueness’ of the reputed mark but, over time, this would be the result because this first use may trigger further acts of use by different operators, thus leading to its dilution or detriment to its distinctive character.
The Court has held that the first use of an identical or similar mark may suffice to cause actual and present detriment to the distinctive character of the earlier mark or to give rise to a serious likelihood that such detriment will occur in the future (judgment of 27/11/2008, C-252/07 ‘Intel’, para. 75). In opposition proceedings before the Office, use of the contested sign may not have occurred at all. In this regard, the analysis that the Office carries out assumes that the future use of the contested sign, even if it were first use, may trigger further acts of use by different operators, thus leading to dilution by blurring. As seen above, the wording of Article 8(5) CTMR provides for this by stating that use of the applied-for mark without due c ause ‘would … be detrimental to the distinctiveness or repute of the earlier mark’.
Nevertheless, as set out above, the opponent bears the burden of showing that the actual or future use caused, or is likely to cause, detriment to the distinctiveness of the earlier reputed mark.
Inherent distinctiveness of the earlier mark
The Court has stated that ‘the more “unique” the earlier mark appears, the greater the likelihood that the use of a l ater identical or similar mark will be det rimental to its distinctive character’ (judgment of 27/11/2008, C-252/07 ‘Intel’ para. 74 and judgment of 28/10/2008, T-131/09 ‘Botumax’). Indeed, the earlier mark must possess an exclusive character in the sense that it should be associated by the consumers with a single source of origin – since it is only in this case that a l ikelihood of detriment to distinctiveness may be envisaged. If the same sign, or a variation thereof, is already in use in connection with a range of different goods, there can be no immediate link with any of the goods it distinguishes and, thus, there will be little or no r oom for further dilution.
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Accordingly, ‘… the risk of dilution appears, in principle, to be lower if the earlier mark consists of a t erm which, because of a meaning inherent in it, is very common and frequently used, irrespective of the earlier mark consisting of the term at issue. In such a case, re-use of the term in question by the contested trade mark is less likely to result in a dilution of the earlier mark’ (judgment of 22/03/2007, T-215/03, ‘VIPS’, para. 38).
If, therefore, the mark is suggestive of a characteristic shared by a w ide range of goods, the consumer is more likely to associate it with the specific feature of the product that it alludes to rather than with another mark.
In its judgment of 25/05/2005, T-67/04, ‘Spa-Finders’, the General Court confirmed the finding that the use of the mark SPA-FINDERS for publications and travel agency services would neither blur the distinctiveness, nor tarnish the reputation, of the mark SPA for mineral water: The term ‘spa’ in SPA-FINDERS may be used otherwise than in a trade mark context since it ‘is frequently used to designate, for example, the Belgian town of Spa and the Belgian racing circuit of Spa-Francorchamps or, in general, places for hydrotherapy such as hammams or saunas, [and consequently] the risk of detriment to the distinctive character of the mark SPA seems to be limited’ (para. 44).
Thus, if the applicant shows that the earlier sign or the element that gives rise to similarity is commonplace and i s already used by different undertakings in various sectors of the market, it may successfully refute the existence of a likelihood of dilution because it will be difficult to accept that the attractiveness of the earlier mark risks being diluted if it is not particularly unique. This will be par ticularly true where the respective goods are so different from each other that a pos sibility of association between them is even less probable, as was the case in the decision of 05/06/2000, R 802/1999-1 ‘DUPLO’, where the earlier mark was reputed for chocolate and the contested mark covered products such as printing inks, staplers, hole punchers and photocopiers. The Board of Appeal found that the ‘goods claimed in the application are so far removed from the opponent’s goods that dilution seems improbable: a t ypical consumer of chocolate bars who is familiar with the opponent’s products is unlikely to think of those products when he sees the word ‘duplo’ used in connection with products such as printing inks, staplers, hole punchers and photocopiers’.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 60
FINAL VERSION 1.0 DATE 01/08/2014
Cases on dilution by blurring
Dilution established
Earlier reputed sign CTM application Case No
BOTOX BOTUMAX
T-131/09Reputed for pharmaceuticals for the treatment of wrinkles
Cosmetics, pharmaceuticals, and other health-related goods, and printed matters
‘However, in the present case, the word element “botox” has no inherent meaning, but is a fanciful term with which the public will be faced only in relation to the goods covered by the widely known earlier trade mark. Consequently, the use of that word element or a similar word element by another trade mark registered for goods which may concern the general public will unquestionably result in the dilution of the distinctive character of the widely known earlier trade mark’ (para. 99).
That is the position with regard, first, to the cosmetics and pharmaceutical preparations in Classes 3 and 5 and, secondly, to the goods in Class 16 covered by the earlier marks, which include magazines or journals, the distribution of which may be widespread. The risk that the use of an identical or similar trade mark would be d etrimental to the distinctive character of a widely known earlier trade mark is greater where that other mark will be used in respect of goods intended for a wide public (para. 100).
The fact that ‘Botox’ was a coined word (abbreviating the words ‘botulinum’ and ‘toxin’) was important, because erosion of the earlier trade mark’s distinctive character (sometimes called dilution by blurring) will be more likely in circumstances where the elements of the trade marks giving rise to a similarity of signs enjoy a considerable degree of inherent distinctive character.
Dilution denied
Earlier reputed sign CTM application Case No
VIPS VIPS T-215/03Reputed for fast food restaurant
chain in Class 42 Computer programming for hotel services in Class 42
‘So far as concerns, first, detriment to the distinctive character of the earlier mark by the use without due cause of the mark applied for, that detriment can occur where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used (SPA-FINDERS, paragraph 34 above, paragraph 43). That risk thus refers to the “dilution” or “gradual whittling away” of the earlier mark through the dispersion of its identity and its hold upon the public mind (Opinion of Advocate General Jacobs in Adidas-Salomon and Adidas-Benelux, paragraph 36 above, point 37)’ (para. 37).
‘As far as concerns, first, the risk that the use of the mark applied for would be det rimental to the distinctive character of the earlier mark, in other words the risk of “dilution” and “gradual whittling away” of that mark, as explained in paragraphs 37 and 38 above, it must be pointed out that the term “VIPS” is the plural form, in English, of the abbreviation VIP (“Very Important Person”), which is widely and frequently used both internationally and nationally to describe famous personalities. In those circumstances, the risk that the use of the mark applied for would be detrimental to the distinctive character of the earlier mark is limited’ (para. 62).
‘That same risk is also even less probable in the present case as the mark applied for covers the services “Computer programming relating to hotel services, restaurants, cafés”, which are directed at a special and necessarily more limited public, namely the owners of those establishments. The consequence is that the mark applied for, if registration is allowed, will probably be known, through use, only by that relatively limited public, a factor which certainly reduces the risk of dilution or gradual whittling away of the earlier mark through the dispersion of its identity and its hold upon the public mind’ (para. 63).
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Guidelines for Examination in the Office, Part C, Opposition Page 61
FINAL VERSION 1.0 DATE 01/08/2014
Earlier reputed sign CTM application Case No
SPA SPA-FINDERS
T-67/04Reputed for mineral waters in Class 32
Printed publications including catalogues, magazines, newsletters in Class 16, Travel agency in Class 39
‘In the present case, the Court finds that the applicant does not put forward any evidence to support the conclusion that there is a risk of detriment to the distinctive character of the mark SPA by the use of the mark SPA-FINDERS. The applicant stresses the alleged immediate link which the public will establish between SPA and S PA-FINDERS. It infers from that link that there is detriment to the distinctive character. As the applicant acknowledged at the hearing, the existence of such a link is not sufficient to demonstrate the risk of detriment to the distinctive character. The Court notes, moreover, that since the term “spa” is frequently used to designate, for example, the Belgian town of Spa and the Belgian racing circuit of Spa-Francorchamps or, in general, places for hydrotherapy such as hammams or saunas, the risk of detriment to the distinctive character of the mark SPA seems to be limited’ (para. 44).
3.4.3.3 Detriment to repute
The nature of the injury
The final type of damage under Article 8(5) CTMR concerns harming the earlier mark by way of detriment to its repute. It can be seen as a step beyond blurring in that the mark is not merely weakened but actually degraded by the link which the public makes with the later mark. Detriment to repute, also often referred to as ‘dilution by tarnishing’ or simply as ‘tarnishing’, relates to situations where use of the contested mark without due cause is likely to devalue the image or the prestige that a mark with reputation has acquired among the public. The reputation of the earlier trade mark may be tainted or debased in this way, either when it is reproduced in an obscene, degrading or inappropriate context, or in a context which is not inherently unpleasant, but which proves to be incompatible with a particular image the earlier trade mark has acquired in the eyes of the public, due to the promotional efforts of its owner. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark (judgment of 18/06/2009, C-487/07, ‘L’Oréal’, para. 40). For example, if a reputed mark for gin were used by a third party on liquid detergent, this would reverberate negatively on the reputed mark in a way that makes it less attractive.
In short, tarnishment occurs where there is an association between the earlier reputed mark, either at the level of signs or at the level of goods, which is injurious to the earlier trade mark’s repute.
Relevant consumer
As with dilution by blurring, detriment to the reputation of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and r easonably observant and circumspect (judgment of 27/11/2008, C-252/07 ‘Intel’, para. 35 and judgment of 07/12/2010, T-59/08, ‘Nimei La Perla Modern Classic’, para. 35).
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The assessment of tarnishment
In order to establish detriment to the repute of an earlier mark, the mere existence of a connection in the mind of the consumer between the marks is neither sufficient nor determinative. Such a connection must certainly exist, but, in addition, the goods/services covered by the later mark must provoke the kind of negative or detrimental impact set out below when associated with the reputed mark.
Tarnishment occurs most frequently where the reputed mark is linked to goods which evoke undesirable or questionable mental associations which conflict with the associations or image generated by legitimate use of the reputed trade mark by its proprietor (decision of 12/03/2012, R 297/2011-5, ‘KAPPA’, para. 36).
Therefore, to prove tarnishment, the opponent must show that use of the applicant’s trade mark would prompt inappropriate or negative mental associations with the earlier trade mark, or associations conflicting with the image it has acquired in the market (decision of 23/11/2010, R 240/2004-2, ‘WATERFORD’, para. 89). The detriment in question occurs where the goods/services covered by the contested sign are perceived by the public in such a way that the earlier mark’s power of attraction is diminished such as where the contested goods/services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with reputation.
For example, if a mark that is associated in the minds of the public with an image of health, dynamism and y outh is used for tobacco products, the negative connotation conveyed by the latter would contrast strikingly with the image of the former (see further examples below). For tarnishment to occur, therefore, there must be s ome characteristic or qualities of the goods/services on which the contested mark is used that are potentially detrimental to the reputation of the earlier mark (judgment of 22/03/2007, T-215/03, ‘VIPS’, para. 67).
Earlier reputed sign CTM application Case No
WATERFORD
R 0240/2004-2
Reputed for crystal products, including glassware in Class 21
Alcoholic beverages, namely wines produced in the Stellenbosch district, South Africa in Class 33
‘Tarnishment or debasement of a t rade mark’s image through association with something inappropriate may happen when the trade mark is used, on the one hand, in an unpleasant, obscene or degrading context or, on t he other hand, in a context which is not inherently unpleasant but which proves to be incompatible with the trade mark’s image. This may be the case when the reputed mark might be linked with goods of poor quality or which evoke undesirable or questionable mental associations which conflict with the associations or image generated by legitimate use of the reputed trade mark by its proprietor, or when the reputed mark is linked to goods which are incompatible with the quality and prestige associated with that mark, even though it is not a matter of inappropriate use of the mark itself, or, eventually, when the reputed mark’s verbal or figurative element is amended or altered in a negative way’ (para. 88).
Frequently opponents argue that the goods/services of the applicant are of inferior quality or that the opponent cannot control the quality of such goods/services. The Opposition Division does not accept such an argument, per se, as a m eans of
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demonstrating detriment. Proceedings before the Office do not provide for assessing the quality of goods and services which, apart from being highly subjective, would not be feasible in cases where the goods and s ervices are not identical or in situations where the contested sign has not yet been put to use.
Therefore, in assessing whether the use of the contested trade mark is likely to damage the reputation of the earlier trade mark, the Opposition Division can only consider the goods and services as indicated in the specification of each trade mark. Consequently, for the purposes of the analysis by the Opposition Division, the harmful effects of the use of the contested sign in connection with the goods and services applied for must derive from the nature and usual characteristics of the goods at issue in general, not their quality in particular instances. This approach does not leave the opponent without protection because, in any event, where a later mark is used on low quality goods/services in a m anner that calls to mind an ear lier reputed mark, this would normally take unfair advantage of the distinctive character or the repute of the earlier trade mark or be detrimental to its distinctiveness.
Cases on dilution by tarnishing
Tarnishment established
Earlier reputed sign CTM application Case No
KAPPA
KAPPA
R 0297/2011-5
Reputed for sports clothing and footwear
Class 34 – Processed or unprocessed tobacco, smokers’ articles, tobacco products, cigarettes, cigars, cigarillos, tobacco, cigar and cigarette holders, cigars and cigarette cases, ashtrays, cigar clippers, tobacco pipes, pouches for tobacco, lighters, pocket devices for rolling cigarettes, cigarette paper, humidors for tobacco products, matches
The contested application was filed for tobacco and related goods in Class 34. Smoking tobacco is universally considered to be an extremely unhealthy habit. For this reason, the use of the sign ‘KAPPA’ for tobacco and related goods is likely to prompt negative mental associations with the respondent’s earlier marks or associations conflicting with and detrimental to their image of a healthy lifestyle (para. 38).
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Guidelines for Examination in the Office, Part C, Opposition Page 64
FINAL VERSION 1.0 DATE 01/08/2014
Earlier reputed sign CTM application Case No
R 0417/2008-1
Reputed for mineral waters
Scouring and polishing preparations and substances; pot pourri; incense; incense sticks; room fragrances and articles for perfuming rooms
The pleasant notions conveyed generally by mineral water do not mix seamlessly with detergents and scouring preparations. Use of marks that contain the word SPA for goods conveying such different connotations is likely to damage, or tarnish, the distinctive character of the earlier mark (para. 101).
‘Mineral water is not pleasantly associated by most consumers with incense or pots pourris. The use, in order to distinguish fragrances and incense, of a mark containing a word (SPA) that Belgian consumers strongly associate to bottled drinking water is therefore likely to damage the attractive and suggestive power that the brand, according to the evidence, currently enjoys’ (para. 103).
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Guidelines for Examination in the Office, Part C, Opposition Page 65
FINAL VERSION 1.0 DATE 01/08/2014
Earlier reputed sign CTM application Case No
R 2124/2010-1
Reputed for goods in Classes 18 and 25
Scientific, nautical, surveying, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
The opponent demonstrated that the prestigious image of its trade marks is linked to the traditional manufacturing method of its fine leather goods, which are handmade by master craftsmen who work only with top-quality raw materials. It is this image of luxury, glamour and exclusivity, combined with the exceptional quality of the product that the opponent has always striven to convey to the public, as the evidence adduced testifies. In fact, this image would be quite incompatible with goods of a strongly industrial and technological nature, such as electric meters, scientific microscopes, batteries, supermarket cash registers, fire-extinguishing apparatus or other instruments, for which the applicant intends to use its trade mark (para. 28).
What would be detrimental to the image of its trade marks, which the opponent has carefully fostered for decades, is the use of a trade mark that recalls its own and is applied to goods characterised, in the public’s perception, by a significant technological content (whereas a fine-leather article is rarely associated with technology) or as having an industrial origin (whereas fine leather goods are traditionally associated with craftsmanship) (para. 29).
The use of a trade mark that is practically identical to a trade mark that the public has come to perceive as synonymous with fine leather goods of excellent manufacture for technical apparatus or electrical tools of all kinds will diminish its attraction, that is, its reputation, amongst the public who knows and values the earlier trade marks (para. 30).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 66
FINAL VERSION 1.0 DATE 01/08/2014
Earlier reputed sign CTM application Case No
EMILIO PUCCI
T-373/09 (appeal pending C-582/12 P)
(cases R 770/2008-2 and R 826/2008-2)Reputed for clothing and footwear
for women
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring
and abrasive preparations; (abrasive preparations) soaps;
perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 21: Materials for cleaning purposes and steelwool
It its decisions of R 0770/2008-2 and R 0826/2008-2 it is stated that the risk of detriment to repute can occur where the goods and services covered by the mark applied for have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the mark applied for. The General Court confirmed the Board’s finding, adding that due to the great similarity between the signs at issue, the strong distinctive character of the Italian mark and its notoriety in the Italian market, it can be concluded that that there is a link between the signs in conflict, a link which could damage the idea of exclusivity, luxury and hi gh quality and therefore be a detriment to the notoriety of the Italian mark (para. 68).
Tarnishment denied
Earlier reputed sign CTM application Case No
T-192/09
Reputed for organisation of sports competitions Class 9
The Court noted that the opponent had not demonstrated any risk of injury to the reputation of the earlier marks, since it did not indicate how the attractiveness of the earlier marks would be diminished by the use of the contested mark on the contested goods. Specifically, it did not allege that the contested goods have any characteristic or quality that could have a ne gative influence on the image of the earlier marks (para. 68).
Earlier reputed sign CTM application Case No
SPA SPA-FINDERS
T-67/04Reputed for mineral waters in Class 32
Printed publications including catalogues, magazines, newsletters in Class 16, Travel agency in Class 39
‘This detriment is made out where the goods for which the mark applied for is used appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished’ (para. 46).
‘In the present case, SPA and SPA-FINDERS designate very different goods consisting, on the one hand, in mineral waters and, on the other, in publications and travel agency services. The Court finds that it is therefore unlikely that the goods and services covered by the mark SPA-FINDERS, even if they turn out to be of lower quality, would diminish the power of attraction of the mark SPA’ (para. 49).
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Guidelines for Examination in the Office, Part C, Opposition Page 67
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Earlier reputed sign CTM application Case No
VIPS VIPS T-215/03Reputed for fast food restaurant
chain in Class 42 Computer programming for hotel services in Class 42
‘The risk of that detriment (to the repute of the earlier mark) can, inter alia, occur where those goods or services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of its being identical or similar to the mark applied for’ (para. 39).
‘It must be pointed out in this connection that, although some fast food chain marks have an indisputable reputation, they do not, in principle and failing evidence to the contrary, convey a particularly prestigious or high quality image, the fast food sector being associated with other qualities such as speed or availability and, to a certain extent, youth, since many young people frequent that type of establishment’ (para. 57)
‘… it is appropriate to examine the risk that the use of the mark applied for could be detrimental to the reputation of the earlier mark. As was explained in paragraph 39 above, at issue is the risk that the association of the earlier mark with a reputation with the goods or services covered by the identical or similar mark applied for results in the earlier mark being damaged or tarnished, as a result of the fact that the goods or services covered by the mark applied for have a characteristic or a particular quality which may have a negative influence on the earlier mark’s image’ (para. 66)
‘In that regard, it must be stated that the services covered by the mark applied for do not have any characteristic or quality capable of establishing the likelihood of detriment of that type to the earlier mark. The applicant neither cited, nor a f ortiori proved, any characteristic or quality of that kind. The mere existence of a connection between the services covered by the conflicting marks is neither sufficient nor determinative. It is true that the existence of such a connection strengthens the probability that the public, faced with the mark applied for, would also think of the earlier mark. However, that factor is not, in itself, sufficient to diminish the earlier mark’s power of attraction. Such an outcome can arise only if it is established that the services covered by the mark applied for have characteristics or qualities which are potentially detrimental to the reputation of the earlier mark. Such evidence has not been adduced in the present case’ (para. 67).
3.4.4 Proof of encroachment upon reputation
3.4.4.1 Standard and burden of proof
In opposition proceedings detriment or unfair advantage may be only potential, as confirmed by the conditional wording of Article 8(5) CTMR, which requires that the use of the applied-for mark without due c ause ‘would take unfair advantage of, or be detrimental to the distinctiveness or repute of the earlier mark’.
In opposition proceedings actual detriment or unfair advantage will occur only exceptionally given that in most cases the applicant will not have effectively used its mark when the dispute arises. Nevertheless, such a possibility should not be ruled out completely and if there is evidence of actual use or damage, it will have to be considered and given appropriate weight.
However, the fact that detriment or unfair advantage may be only potential does not mean that a m ere possibility is sufficient for the purposes of Article 8(5) CTMR. The risk of detriment or unfair advantage must be serious, in the sense that it is foreseeable (i.e. not merely hypothetical) in the ordinary course of events. Therefore, it is not enough to merely show that detriment or unfair advantage cannot be excluded in general, or that it is only remotely possible. The proprietor of the earlier mark must adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or of detriment (judgment of 06/06/2012, T-60/10 ‘ROYAL SHAKESPEARE’, para. 53). As explained below, it is insufficient for the opponent only
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to refer in general terms to an unfair advantage of, or detriment to, the distinctive character or reputation of its earlier marks without submitting convincing evidence of actual detriment or cogent arguments establishing a serious, not merely hypothetical, potential risk of detriment.
As a rule, general allegations (such as merely citing the relevant CTMR wording) of detriment or unfair advantage will not be sufficient in themselves for proving potential detriment or unfair advantage: the opponent must adduce evidence and/or develop a cogent line of argument to demonstrate specifically how, taking into account both marks, the goods and services in question and all the relevant circumstances, the alleged encroachment might occur. Merely showing the reputation and good image of the earlier marks, without further substantiation by way of evidence and/or reasoning is not sufficient (decision of 15/2/2012, R 2559/2010-1 ‘GALLO’, paras 38, 39, and the Court case-law cited therein). This is shown in the following paragraphs.
The precise threshold of proof which must be satisfied to show that the risk of potential detriment or unfair advantage is serious and not merely hypothetical will be determined case by case, following the criteria indicated below.
As mentioned in paragraph 3.1.4.2 above when discussing the burden of proof, Article 76(1) CTMR requires the opponent to submit and prove all the facts on which its opposition is based. Moreover, Rule 19(2)(c) CTMIR requires the opponent to submit evidence or arguments showing that 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.
Therefore, within the period for completing the substantiation of the opposition, the opponent bears the burden of showing that the actual or future use of the applied-for mark has caused, or is likely to cause, detriment to the distinctiveness or the repute of the earlier mark, or that it has taken, or is likely to take, unfair advantage thereof.
In discharging this burden of proof, the opponent cannot merely contend that detriment or unfair advantage would be a necessary consequence flowing automatically from the use of the sign applied for, owing to the strong reputation of the earlier mark. Even where the earlier mark is highly reputed, unfair advantage or detriment must be properly proved and/or argued taking into account both marks and the relevant goods and services, since otherwise marks with reputation would enjoy blanket protection against identical or similar signs for virtually any kind of product. This would be clearly inconsistent with the wording and spirit of Article 8(5) CTMR, because in such a case reputation would become the sole requirement, rather than being only one of the several conditions provided for therein.
Therefore, where the opponent claims actual detriment or unfair advantage, it must submit indications and evidence of the kind of detriment suffered, or of the nature of the unfair advantage taken by the applicant. The opponent must also show that this resulted from the use of the sign applied for. In doing so, the opponent may rely on a variety of indications, depending on the kind of detriment or unfair advantage pleaded, such as a considerable decrease in sales of the goods bearing the mark, or a loss of clientele, or a decline of the degree of recognition of the earlier mark among the public.
However, in the case of potential detriment or unfair advantage, the exercise will necessarily be more abstract, as the detriment or unfair advantage in question has to be evaluated ex ante.
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Guidelines for Examination in the Office, Part C, Opposition Page 69
FINAL VERSION 1.0 DATE 01/08/2014
To that end, the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. When it is foreseeable that such injury would ensue from the use that might be made of the CTM application, the proprietor of the earlier mark is not required to wait for it actually to occur in order to be able to prohibit registration of the CTM application. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an i njury will occur in the future (judgment of 27/11/2008, C-252/07 ‘Intel’, para. 38, judgment of 07/12/2010, T-59/08, ‘NIMEI LA PERLA MODERN CLASSIC’, para. 33, judgment of 29/03/2012, T-369/10 ‘BEATLE’, para. 61, judgment of 06/07/2012, T-60/10 ‘ROYAL SHAKESPEARE’ para. 53 and judgment of 25/01/2012, T-332/10 ‘VIAGUARA’, para. 25).
In other words, the proprietor of the earlier mark must adduce prima facie evidence of a future risk, which is not hypothetical, of detriment (SPA-FINDERS, para. 40). Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (judgment of 10/05/2007, T-47/06, ‘nasdaq’ para. 54, upheld on appeal (C-320/07 P), judgment of 16/04/2008, T-181/05 ‘CITI’ para. 78, and judgment of 14/11/2013, C- 383/12P ‘Wolf head image’ paras 42-43).
However, considering that in such cases the matter to be proved is the likelihood of a future event and t hat, by definition, the opponent’s arguments cannot in themselves amount to evidence, it will often be nec essary to base certain conclusions on legal presumptions, that is, on l ogical assumptions or deductions resulting from the application of the rules of probability to the facts of the specific case. One such presumption was mentioned by the Court, when it stated that ‘the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it’ (judgment of 14/09/199, C-375/97, ‘General Motors’, para. 30). It is also clear from case-law that the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark (judgment of 06/07/2012, T-60/10 ‘ROYAL SHAKESPEAR’E, para. 54, judgment of 18/06/2009, C-487/07 ‘L’Oréal and O thers’ para. 44, and judgment of 27/11/2008, C-252/07 ‘Intel’, paras 67-69).
Furthermore, the kind of presumptions relevant here are rebuttable presumptions that the applicant may contest and disprove by submitting appropriate evidence; they are not conclusive presumptions .
In addition, if the type of detriment or unfair advantage argued in the specific case is of such a nature that presupposes the fulfilment of certain particular conditions of fact (e.g. exclusive character of the earlier mark, qualitative aspects of reputation, a given image etc.), these facts will also have to be proven by the opponent, who must submit appropriate evidence. Finally, as noted by the Court in its judgment of 07/12/2010, T-59/08, ‘NIMEI LA PERLA MODERN CLASSIC’ (paras 57, 58), although a likelihood of confusion between the two marks at issue is not required to demonstrate that the later mark takes unfair advantage of the earlier mark, where such likelihood is established on the basis of facts, this will be t aken as proof that unfair advantage has been taken or that, at least, there is a serious risk of such injury in the future.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 70
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3.4.4.2 Means of evidence
Where the opponent claims actual detriment or unfair advantage, it can use all the means of evidence provided for in Article 78 CTMR for proving this. For example, it may prove an actual decrease of trade mark awareness by reference to opinion polls and other documentary evidence, or a f all in sales by submitting trading results or extracts from its official accounts. The rules governing the evaluation and probative value of such evidence are the same as those mentioned in paragraph 3.1.4.3 and paragraph 3.1.4.4 above, in relation to the evidence required for proving reputation.
Even where the detriment or unfair advantage claimed is only potential, the opponent will have to prove any conditions of fact which might be necessary in particular cases for giving rise to a serious (i.e. non-hypothetical) risk of detriment or unfair advantage, by submitting evidence of the kind mentioned above.
Furthermore, as explained in the previous paragraph, the Court has confirmed that conclusions as to the risk of future encroachment may also be es tablished, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (judgment of 16/12/2010, joined cases T-345/08 and T-357/08 ‘BOTOLIST’ para. 82 and judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 53, and judgment 14/11/13, C- 383/12 P ‘Wolf head image”, para 42-43).
3.5 Use without due cause
The last condition for the application of Article 8(5) CTMR is that use of the sign applied for should be without due cause.
However, if it is established that none of the three types of risk of encroachment to reputation exists, the registration and use of the mark applied for cannot be prevented, as the existence or absence of due cause for the use of the mark applied for is, in those circumstances, irrelevant (judgment of 22/03/2007 T-215/03 ‘VIPS, para. 60, and judgment of 07/07/2010, T-124/09 ‘Carlo Roncato’, para. 51).
The existence of a cause justifying the use of the trade mark applied for is a defence which the applicant may raise. Therefore, it is up to the applicant to show that it has due cause t o use the mark applied for. This is an ap plication of the general rule according to which ‘he who asserts must prove’ which is the expression of the ancient rule ei qui affirmat incumbit probation (decision of 01/03/2004, R 145/2003-2 – ‘T CARD OLYMPICS (FIG. MARK) / OLYMPIC’, para. 23). Case-law clearly establishes that when the proprietor of the earlier mark has shown that there is either actual and present injury to its mark or, failing that, a serious risk that such injury will occur in the future, it is for the proprietor of the later mark to establish that there is due cause for the use of that mark (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 67 and, by analogy, judgment of 27/11/2008, C-252/07 ‘Intel’, para. 39).
In the absence of any indications in the evidence providing an apparent justification for the applicant’s use of the contested mark, the lack of due cause must be g enerally presumed (see to that effect judgment of 29/03/2012, T-369/10, ‘Beatle’, para. 76 and the case-law there cited, and its appeal C-294/12 P). However, the applicant may avail
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 71
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itself of the possibility of rebutting such a presumption by showing that it has a legitimate justification that entitles it to use the mark.
For example, such a situation could be envisaged if the applicant had been using the sign for dissimilar goods in the relevant territory before the opponent’s mark was applied for, or acquired a reputation, especially where such a coexistence has not in any way affected the distinctiveness and repute of the earlier mark.
The case-law below shows that due c ause may be f ound where the applicant establishes that it cannot reasonably be required to abstain from use of the mark (for example, because its use of the sign is a generic use to indicate the type of goods and services – whether by generic words or generic figurative devices), or where it has some specific right to use the mark for the goods and services (for example, it shows that a relevant coexistence agreement permits its use of the sign).
The condition of due cause is not fulfilled merely by the fact that (a) the sign is particularly suitable for identifying the products for which it is used, (b) the applicant has already used this sign for these products or similar products within and/or outside the relevant territory of the European Union, or (c) the applicant invokes a right ensuing from a filing over which the filing of the opponent’s trade mark takes precedence (see, inter alia, decision of 23/11/2010, R 0240/2004-2 ‘WATERFORD (fig.)’ and decision of 15/06/2009, R 1142/2005-2 ‘MARIE CLAIRE (fig.)’). Mere use of the sign is not enough – what must be shown is a valid reason justifying that use.
3.5.1 Examples of due cause
3.5.1.1 Due cause was accepted
Case No Comment
Decision of 02/06/2010, R 1000/2009-1, ‘FLEX (fig.)’, para. 72
The Board confirmed that the applicant had a due cause within the meaning of Article 8(5) CTMR for inserting the term ‘FLEX’ in the mark applied for, holding that this term was free from monopolies, since nobody holds exclusive rights in it and it is a suitable abbreviation, in many languages of the Community, to indicate that beds and mattresses are flexible.
Decision of 26/02/2008, R 320/2007-2, ‘biscuit packet (3D)/OREO(3D)’
The Board held that the applicant had due cause to represent the series of sandwich-type biscuits in the three-dimensional mark applied for, namely, to indicate to consumers the type of biscuits concerned, as defined by the relevant Spanish legislation.
Decision of 30/07/2007, R 1244/2006-1, ‘M FRATELLI MARTINI (fig.)’
The Board confirmed that the applicant had two good reasons to use the name MARTINI in the mark applied for: (i) ‘MARTINI’ is the family name of the founder of the applicant’s company, and (ii) the existence of a coexistence agreement from 1990.
Decision of 20/04/2007, R 710/2006-2, ‘CAL SPAS’
The Board confirmed that the applicant had due cause to use the term ‘SPAS’ as it corresponds to one of the generic uses of the term ‘spa’ as indicated by the Court of First Instance in the ‘Mineral Spa’ judgment Case T-93/06.
Decision of 23/01/2009, R 237/2008 & R 263/2008-1, ‘CARLO RONCATO’
The business affairs of the Roncato family, showing that both parties had the right to use the name ‘RONCATO’ as a trade mark in the suitcase and trunk sector, were held to constitute ‘due cause’ for use of the ‘RONCATO’ name in the contested trade mark.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 72
FINAL VERSION 1.0 DATE 01/08/2014
Case No Comment
Decision of 25/08/2011, Opposition decision B 1 708 398 ‘Posten AB v Ceská pošta s.p.’,
It was held that the applicant had due cause to use the figurative element of a postal horn since that device is widely used as a long- standing and historical symbol of postal services (trade mark registrations and internet evidence was submitted showing 29 European countries use the postal horn as a symbol for their postal services).
3.5.1.2 Due cause was not accepted
Case No Comment
Judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, paras 65-69
The General Court held that, in order to establish due cause, it is not use per se of the contested trade mark that is required, but a reason justifying the use of that trade mark. In this case, the applicant merely claimed to have ‘demonstrated how and for which product the contested trade mark has been used in the past’ but, even assuming that that aspect is relevant, provided no additional indication or explanation. Accordingly, the Court held that the applicant had not established due cause for such use.
Judgment of 25/03/2009, T-21/07, ‘L’Oréal SA’, para. 43
The General Court held that there was no due cause, since it had not been shown that the word ‘spa’ had become so necessary to the marketing of cosmetic products that the applicant could not reasonably be required to refrain from use of the mark applied for. The argument that ‘spa’ was of descriptive and generic character for cosmetic products was rejected, since such character does not extend to cosmetic products but only to one of their uses or destinations.
Judgment of 16/04/2008, T-181/05 ‘CITI’, para. 85
The General Court held that the use of the trade mark CITI in just one EU Member State (Spain) could not constitute due cause because, first, the extent of geographical protection of the national trade mark did not correspond to the territory covered by the trade mark applied for, and, second, the legal validity of that national registration was subject to dispute before the national courts. By the same token, the ownership of the domain ‘citi.es’ was held to be irrelevant.
Judgment of 10/05/2007, T-47/06, ‘NASDAQ’, para. 63, confirmed by CJ, C-327/07 P
The Court held that the only argument put forward before the Board of Appeal in respect of due cause (namely, that the word ‘nasdaq’ had been chosen because it is an acronym for ‘Nuovi Articoli Sportivi Di Alta Qualità’) was not convincing, noting that prepositions are not generally included in acronyms.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 73
FINAL VERSION 1.0 DATE 01/08/2014
Case No Comment
Decision of 23/11/2010, R 240/2004-2 ‘WATERFORD (fig.)’
Contrary to the applicant’s arguments that there was due cause because the term ‘WATERFORD’ was allegedly very common in names and t rade marks, the Board held that the applicant had failed to give any evidence of market coexistence of WATERFORD marks nor had it submitted any element from which it would be possible to infer that the relevant general public (in the UK) considers Waterford as a commonplace geographical name.
To the extent that such arguments play a role in the assessment of uniqueness of a sign in order to establish the existence of the necessary link in the mind of the relevant public between the signs at issue, the Board held that, nevertheless, once such uniqueness had been established, such arguments cannot serve as due cause.
Further, the Board noted that the condition of due cause is not fulfilled merely by the fact that (a) the sign is particularly suitable for identifying the products for which it is used, (b) the applicant has already used this sign for these products or similar products within and/or outside the relevant territory of the European Union, or (c) the applicant invokes a right ensuing from a filing over which the filing of the opponent’s trade mark takes precedence.
Decision of 06/10/2006, R 428/2005-2 ‘TISSOT’
The Board held that the applicant’s claim (unsubstantiated by any evidence) that the sign TISSOT is derived from the name of a trading company associated with the applicant’s company since the early 1970s, would, even if proven, not amount, on its own, to ‘due cause’, within the meaning of Article 8(5) CTMR. People who inherit a surname that happens to coincide with a f amous trade mark should not assume that they are entitled to use it in business in a m anner that would unfairly take advantage of the reputation that has been built up by the efforts of the brand owner.
Decision of 18/08/2005, R 1062/2000-4, ‘GRAMMY’
The applicant argued that ‘GRAMMY’ is an internationally easy and nice-sounding abbreviation of the applicant’s family name (Grammatikopoulos). The Board rejected this argument as insufficient to establish the due c ause that could prevent the application of Article 8(5) CTMR.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 74
FINAL VERSION 1.0 DATE 01/08/2014
Case No Comment
Decision of 15/06/2009, R 1142/2005-2, ‘MARIE CLAIRE (fig.)’
Due cause under Article 8(5) CTMR means that notwithstanding the detriment caused to, or the unfair advantage taken of, the distinctive character or reputation of the earlier trade mark, the registration and use by the applicant of the mark for the goods applied for may be justified, if the applicant cannot be reasonably required to abstain from using the contested mark, or if the applicant has a specific right to use the mark for with such goods which takes precedence over the earlier trade mark invoked in the opposition proceedings. In particular, the condition of due cause is not fulfilled merely by the fact that (a) the sign is particularly suitable for identifying the products for which it is used, (b) the applicant has already used this sign for these products or similar products within and/or outside the relevant territory of the Community, or (c) the applicant invokes a t rade mark with a filing date which is earlier than the opponent’s trade mark (decision of 25/04/2001 in R 283/1999-3 HOLLYWOOD / HOLLYWOOD).
With regards to the tolerance of the proprietor of the earlier mark, the Board held that such tolerance was merely for magazines and not for goods closer to its market sector (i.e. textiles). It noted that national case-law showed that while protection exists for each party within its own field of business, extension should be refused when they come closer to the other party’s field of activities and could infringe upon their rights.
In light of these factors, the Board held that the coexistence did not constitute due cause permitting registration of a CTM.
Judgment of 26/09/2012, T-301/09, ‘Citigate’, paras 116, 125 and 126
As regards the applicant’s argument that it has due cause to use the mark applied for (CITIGATE), because it has used a variety of marks consisting of or containing CITIGATE in relation to the goods and services for which registration is sought, the Court stated the following: it should be noted that the documents produced by the applicant simply show that there are various companies whose business name contains the word CITIGATE and a num ber of domain names which also contain that word. That evidence is not sufficient to establish due cause, because it does not demonstrate actual use of the CITIGATE mark.
As regards the applicant’s argument that it has due cause to use the mark applied for since the interveners have acquiesced to the use of CITIGATE in relation to the goods and services covered by the application for registration, the Court stated that the possibility cannot be excluded that, in certain cases, the coexistence of earlier marks on t he market could reduce (…) the likelihood of a connection being made between two marks in accordance with Article 8(5).
In the present case, coexistence was not proven.
Substantive Provisions
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FINAL VERSION 1.0 01/08/2014
GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART D
CANCELLATION
SECTION 2
SUBSTANTIVE PROVISIONS
Substantive Provisions
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Table of Contents
1 General Remarks ....................................................................................... 3
2 Revocation ................................................................................................. 3 2.1 Introduction ................................................................................................3 2.2 Non-use.......................................................................................................3 2.3 CTM becoming the common name (generic term) – Article 51(1)(b)
CTMR...........................................................................................................3 2.3.1 Onus of proof .................................................................................................. 3 2.3.2 Point in time to be considered ........................................................................ 3 2.3.3 Relevant public ............................................................................................... 4 2.3.4 Common name ............................................................................................... 4 2.3.5 Defence for the proprietor............................................................................... 4
2.4 CTM becoming misleading – Article 51(1)(c) CTMR.................................5 2.4.1 Onus of proof .................................................................................................. 5 2.4.2 Point in time to be considered ........................................................................ 5 2.4.3 Standards to be applied.................................................................................. 5
3 Absolute grounds for invalidity................................................................ 6 3.1 CTM registered contrary to Article 7 – Article 52(1)(a) CTMR .................6
3.1.1 Onus of proof .................................................................................................. 6 3.1.2 Points in time to be considered ...................................................................... 6 3.1.3 Standards to be applied.................................................................................. 7
3.2 Defence against a claim of lack of distinctiveness ..................................7
Substantive Provisions
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1 General Remarks
Revision within WP 1
2 Revocation
Revision within WP 1
2.1 Introduction
Revision within WP 1
2.2 Non-use
Revision within WP 1
2.3 CTM becoming the common name (generic term) – Article 51(1)(b) CTMR
A CTM will be revoked if, as a result of action or inaction on the part of the proprietor, it has become the common name in trade for a product or service for which it was registered.
2.3.1 Onus of proof
The onus is on the applicant for revocation to prove that the term has become the common name in the trade as a result of either:
- action, or - inaction
on the part of the proprietor.
The Cancellation Division shall examine the facts in accordance with Article 76(1) CTMR within the scope of factual submissions made by the revocation applicant (judgment of 13/09/2013, T 320/10, ‘Castel’, para. 28). In doing so, it may take into consideration obvious and well known facts. However, it shall not go beyond the legal arguments presented by the revocation applicant. If a request for cancellation is based only on Article 51(1)(b) CTMR, the trade mark could not then be revoked due to being e.g., against public order and morality.
2.3.2 Point in time to be considered
The applicant for revocation must prove that the trade mark has become the common name in trade for the product or service in question after the date of registration of the CTM, although facts or circumstances happened between the application and the registration can be t aken into account. The fact that the sign was, at the date of application, the common name used in trade for the goods or services in respect of
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which registration was sought would only be relevant in the context of an invalidity action.
2.3.3 Relevant public
The Office interprets Article 51(1)(b) CTMR as meaning that the trade mark must have become the common name for the product or service not just among some but among the vast majority of the relevant public, including those involved in the trade for the product or service in question (judgment of 29 April 2004, C-371/02, ‘Bostongurka’, paras. 23, 26). Nevertheless, the perception of consumers or end users will play, in general, a decisive role (‘Bostongurka’, para. 24). Moreover, the Court of Justice has declared that a trade mark is liable to revocation in respect of a product for which it is registered if, in consequence of acts or inactivity of the proprietor, it has become the common name for that product from the point of view solely of end users of the product (judgment of 6 March 2014, C-409/12, ‘Kornspitz’, para. 30), namely when the sellers of the finished product do not inform their costumers that the sign has been registered as a trade mark, nor do they offer to their costumers assistance which includes an indication of the origin of the goods for sale (‘Kornspitz’, paras 23-25).
2.3.4 Common name
A sign is regarded as the ‘common name in the trade’ if it is established practice in the trade to use the term in question to designate the goods or services for which it is registered (see Part B, Section 4, point 2.4. Customary signs or indications). It is not necessary to prove that the term directly describes a q uality or characteristic of the goods or services, but merely that it is actually used in the trade to refer to those goods or services. The distinctive force of a trade mark is always more likely to degenerate when a sign is suggestive or apt in some way, especially if it has positive connotations that lead others to latch on t o its suitability for designating not just a par ticular producer’s product or service but a par ticular type of product or service (decision of 30/01/2007, 1020 C, ‘STIMULATION’, paras 22, 32 et seq.).
The fact that a trade mark is used as a synonym for a specific product or service is an indication that it has lost its ability to differentiate the goods or services in question from those of other undertakings. One indication that a trade mark has become generic is when it is commonly used verbally to refer to a particular type or characteristic of the goods or services. However, this is not in itself decisive: it must be established whether the trade mark is still capable of differentiating the goods or services in question from those of other undertakings.
The absence of any alternative term or the existence of only one long, complicated term may also be an indication that a sign has become the common name in the trade for a specific product or service.
2.3.5 Defence for the proprietor
Where the proprietor of the CTM has done what could reasonably have been expected in the particular case (e.g. organised a TV campaign or placed advertisements in newspapers and r elevant magazines), the CTM cannot be revoked. The proprietor
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must then check whether its trade mark appears in dictionaries as a generic term; if it does, the proprietor will request that in future editions the trade mark is accompanied by an indication that it is a registered trade mark (Article 10 CTMR).
2.4 CTM becoming misleading – Article 51(1)(c) CTMR
If, as a result of use made of the mark by the proprietor or with its consent, the mark is liable to mislead the public, particularly concerning the nature, quality or geographical origin of the goods or services for which it is registered, the CTM can be revoked. In this context, quality refers to a characteristic or attribute rather than a degree or standard of excellence.
2.4.1 Onus of proof
The Cancellation Division shall examine the facts in accordance with Article 76(1) CTMR within the scope of factual submissions made by the revocation applicant (judgment of 13/09/2013, T-320/10, ‘Castel’, para. 28). In doing so, it may take into consideration obvious and well known facts. However, it shall not go beyond the legal arguments presented by the revocation applicant.
The onus for proving that the mark has become misleading rests on the revocation applicant, who must further prove that it is the use made by the proprietor that produces the misleading effect. I f the use is by a party other than the proprietor, the onus is on the revocation applicant to prove that the proprietor has consented to that use, unless the third party is a licensee of the proprietor.
2.4.2 Point in time to be considered
The applicant for revocation must prove that the trade mark has become liable to mislead the public, particularly concerning the nature, quality or geographical origin of the goods or services in question, after the date of registration of the CTM. If the sign was already deceptive or liable to deceive the public at the date of application, this would be relevant in the contest of an invalidity action.
2.4.3 Standards to be applied
The Guidelines concerning Examination contain details of the criteria to be appl ied when assessing whether a CTM application complies with Article 7(1)(g) CTMR (Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, point 2.7. Deceptiveness). The criteria are similar to those applied in revocation proceedings under Article 51(1)(c) CTMR
2.4.4 Examples
A trade mark composed of, or containing, a geographical indication will as a r ule be perceived by the relevant public as a reference to the place from where the goods originate. The only exception to this rule is where the relationship between the geographical name and the products is manifestly so fanciful (for example, because the
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place is not known, and unlikely to become known, to the public as the place of origin of the goods in question) that consumers will not make such a connection.
In this regard, the trade mark MÖVENPICK OF SWITZERLAND was revoked because the goods in question were produced (according to the facts) solely in Germany, not in Switzerland (decision of 12 February 2009, R 0697/2008-1 – MÖVENPICK OF SWITZERLAND)
Also, where a trade mark containing the word elements ‘goats’ and cheese’ and a figurative element clearly depicting a goat is registered for ‘goats’ cheese’, and use is proven for cheese not made from goats’ milk, the CTM will be revoked.
Where a trade mark containing the word elements ‘pure new wool’ is registered for ‘clothing’ and use is proven for clothing manufactured from artificial fibres, the CTM will be revoked.
Where a trade mark containing the words ‘genuine leather’ or the corresponding pictogram is registered for ‘shoe wear’ and use is proven for shoes not made of leather, the CTM will be revoked.
3 Absolute grounds for invalidity
3.1 CTM registered contrary to Article 7 – Article 52(1)(a) CTMR
If, at the time of application, the CTM was objectionable under any of the grounds listed in Article 7 it can be cancelled.
3.1.1 Onus of proof
The purpose of the cancellation procedure is, inter alia, to enable the Office to review the validity of the registration of a trade mark and to adopt, where necessary, a position that it should have adopted of its own motion in the registration process in accordance with Article 37(1) CTMR (judgment of 30/05/2013, T 396/11, ‘Ultrafilter international’, para. 20). Consequently, the Cancellation Division shall examine the facts in accordance with Article 76(1) CTMR within the scope of factual submissions made by the cancellation applicant (judgment of 13/09/2013, T 320/10, ‘Castel’, para. 28). In doing so, it may take into consideration obvious and well known facts. However, it shall not go beyond the legal arguments presented by the cancellation applicant.
3.1.2 Points in time to be considered
The General Court has held that whether a trade mark should be registered or should be declared invalid must be as sessed on t he basis of the situation at the date of application, not of registration (judgment of 03/06/2009, T-189/07, ‘Flugbörse’; confirmed by Order of 23/04/2010, C-332/09 P, ‘Flugbörse’).
Generally speaking, any developments or events after the date of application or priority date will not be taken into consideration. For example, the fact that a sign has, after the date of application, become the common term used in the trade for the goods or services in respect of which registration was sought is in principle irrelevant for the
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purposes of examining an invalidity action (it would only be relevant in the context of a revocation action). However, such facts can be taken into account where and t o the extent that they allow conclusions to be dr awn regarding the situation at the date of application.
3.1.3 Standards to be applied
The Guidelines concerning Examination contain details of the criteria to be applied when assessing whether a C TM application complies with Article 7. The criteria are identical to those applied in invalidity proceedings.
3.2 Defence against a claim of lack of distinctiveness
A trade mark which falls foul of Article 7(1)(b), (c) or (d) CTMR will not be cancelled where it has acquired distinctiveness through use. It is up to the CTM proprietor to make and substantiate such a claim.
The situation will be assessed in accordance with the relevant part of the Guidelines concerning Examination.
The proprietor must demonstrate that either:
- the trade mark acquired distinctive character on or before the date of application, or
- distinctive character was acquired after registration.
The first alternative is a logical corollary of Article 7(3) CTMR. Where a trade mark has been objected to pursuant to Article 7(1)(b), (c) or (d) CTMR, the applicant could prove distinctiveness acquired through use in accordance with Article 7(3) CTMR.
The second alternative is a corollary of Article 52(2) CTMR.
Changes in a Registration
Guidelines for Examination in the Office, Part E, Register Operations Page 1
FINAL VERSION 1.0 DATE 01/08/2014
GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 1
CHANGES IN A REGISTRATION
Changes in a Registration
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Table of Contents
1 Surrender ................................................................................................... 4 1.1 General principles ......................................................................................4 1.2 Legal effect .................................................................................................4 1.3 Formal requirements..................................................................................5
1.3.1 Form ............................................................................................................... 5 1.3.2 Language........................................................................................................ 5 1.3.3 Fees................................................................................................................ 5 1.3.4 Necessary particulars ..................................................................................... 5 1.3.5 Partial surrender ............................................................................................. 6 1.3.6 Signature ........................................................................................................ 6 1.3.7 Representation, authorisation......................................................................... 6 1.3.8 Requirements where a licence or other right in the Community trade mark
has been registered........................................................................................ 6
1.4 Examination................................................................................................7 1.4.1 Competence ................................................................................................... 7 1.4.2 Registration or rejection.................................................................................. 8
2 Alteration of a Trade Mark ........................................................................ 8 2.1 General principles ......................................................................................8 2.2 Formal requirements..................................................................................9
2.2.1 Form and language ........................................................................................ 9 2.2.2 Fees................................................................................................................ 9 2.2.3 Mandatory indications..................................................................................... 9
2.3 Substantive conditions for alteration......................................................10 2.3.1 Examples of acceptable alterations.............................................................. 10 2.3.2 Examples of unacceptable alterations.......................................................... 11
2.4 Publication................................................................................................12
3 Changes of Name or Address ................................................................ 13
4 Changes in Collective Trade Mark Regulations.................................... 14 4.1 Registration of the amended regulations ...............................................14
5 Division..................................................................................................... 15 5.1 General provisions...................................................................................15 5.2 Formal requirements................................................................................15
5.2.1 Form and language ...................................................................................... 15 5.2.2 Fees.............................................................................................................. 15 5.2.3 Mandatory indications................................................................................... 15
5.3 Registration ..............................................................................................17 5.4 New file, publication.................................................................................18
6 Post-Registration Seniority Claims........................................................ 18
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6.1 General principles ....................................................................................18 6.2 Legal effect ...............................................................................................18 6.3 Formal requirements................................................................................19
6.3.1 Form ............................................................................................................. 19 6.3.2 Language...................................................................................................... 19 6.3.3 Fees.............................................................................................................. 19 6.3.4 Mandatory indications................................................................................... 19
6.4 Examination..............................................................................................20 6.4.1 Substantive examination .............................................................................. 20 6.4.2 Triple identity ................................................................................................ 21 6.4.3 Harmonised seniority information................................................................. 22
6.5 Registration and publication ...................................................................22 6.6 Cancellation of seniority claims..............................................................23
7 Replacement of a CTM Registration by an IR ....................................... 23
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1 Surrender
Article 50 CTMR Rule 36 CTMIR
1.1 General principles
At any time after registration a Community trade mark (CTM) may be either wholly or partially surrendered by its proprietor. The surrender must be declared to the Office in writing. (For information on the withdrawal of Community trade mark applications, i.e. prior to registration, please see the Guidelines, Part B, Examination, Section 1, Proceedings, paragraph 5.1.)
1.2 Legal effect
Article 50(2) CTMR Rule 36 CTMIR
Surrenders only become legally effective on the date of entry in the Register of Community Trade Marks (‘the Register’). The registration procedure for the surrender may be suspended during on-going proceedings (see paragraph 1.4.1 below).
The proprietor’s rights in the registered CTM, as well as those of its licensees and any other holders of rights in the mark, lapse with an ex nunc effect on the date of the registration of the surrender in the Register. Therefore, the surrender has no retroactive effect.
The surrender has procedural and substantive effects.
In procedural terms, when the surrender is entered in the Register, the Community trade mark ceases to exist and any proceedings involving the mark before the Office terminate.
The substantive effects of surrender vis-à-vis third parties comprise the CTM proprietor renouncing any rights arising from its mark in the future.
The declarant is bound by the declaration of surrender during its registration procedure, provided that the following circumstances are present.
a) No revocation of the declaration reaches the Office on t he same day as the receipt of the declaration of surrender. That means that if a dec laration of surrender and a letter revoking that declaration reach the Office on the same day (regardless of the hour and minute of their receipt), they cancel each other out. Once it becomes effective, the declaration may not be revoked.
b) The declaration meets all the formal requirements, in particular those identified in paragraph 1.3.8 below.
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1.3 Formal requirements
1.3.1 Form
Rules 79, 79a, 80, 82 CTMIR Decision No°EX-11-03 of the President of the Office
The proprietor must declare the surrender to the Office in writing. The general rules for communication with the Office apply (see the Guidelines, Part A, General Rules, Section 1, Means of Communication, Time Limits).
The declaration of surrender is void where it contains conditions or time limitations. For example, it may not be made under the condition that the Office takes a particular decision or, in inter partes proceedings, that the other party makes a procedural declaration. For instance, during cancellation proceedings the mark may not be (partially) surrendered on the condition that the cancellation applicant withdraws its cancellation action. However, this does not exclude the possibility of an agreement between the parties, or that both parties request successive actions (for example, surrender of the trade mark and withdrawal of the cancellation action) in the same letter to the Office.
1.3.2 Language
Rule 95(b) CTMIR Article 119(2) CTMR
The declaration of surrender must be filed in one of the five languages of the Office.
1.3.3 Fees
There is no fee for a declaration of surrender.
1.3.4 Necessary particulars
Rule 36(1) CTMIR
The declaration of surrender must contain the particulars referred to in Rule 36(1) CTMIR. These are:
• the CTM registration number
• the CTM’s proprietor’s name and address or simply the proprietor’s OHIM ID number
• where the surrender is only for some of the goods or services for which the mark is registered, either the goods and services for which the surrender is declared or an indication of the goods and services for which the mark is to remain registered or both (see below under paragraph 1.3.5 Partial surrender.).
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1.3.5 Partial surrender
A CTM may be s urrendered in part, that is, for some of the goods and services for which it is registered. A partial surrender only becomes effective on the date it is entered in the Register.
For a pa rtial surrender to be a ccepted, the following two conditions relating to the goods and services must be met:
a) the new wording must not constitute an ex tension of the list of goods and services;
b) the partial surrender must constitute a valid description of goods and services.
For further details on acceptable restrictions, please see the Guidelines, Part B, Examination, Section 3, Classification.
1.3.6 Signature
Except where Rule 79 CTMIR allows otherwise, the declaration of surrender must be signed by the CTM proprietor or its duly appointed representative (see paragraph 1.3.7 below). If the declaration is submitted by electronic means, the indication of the sender’s name is deemed to be equivalent to a signature.
If an unsigned declaration is sent to the Office, the Office will invite the party concerned to correct the irregularity within a two-month time limit. If the deficiency is not remedied within the time limit, the surrender will be rejected.
1.3.7 Representation, authorisation
As far as representation of the CTM proprietor who is declaring the surrender is concerned, the normal rules apply (see the Guidelines, Part A, General Rules, Section 5, Professional Representation).
The procedural rules applicable in certain Member States that an au thorisation does not cover the right to declare the surrender of a trade mark unless expressly specified are not applicable under the CTMR.
1.3.8 Requirements where a licence or other right in the Community trade mark has been registered
Surrender cannot be registered if third parties have registered rights in the CTM (such as licensees, pledgees, etc.) without first fulfilling certain additional requirements.
Where a licence, or another right in the CTM, is entered in the Register, the following additional requirements apply.
a) Where a licence or a right in rem is entered in the Register, the CTM proprietor must submit sufficient proof that it has informed the licensee, pledgee, etc. of its intention to surrender.
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If the proprietor proves to the Office that the licensee, pledgee, etc. has given its consent to the surrender, the surrender will be registered immediately upon receipt of that notice.
If the CTM proprietor merely submits proof that it has informed the licensee/pledgee of its intention to surrender, the Office will inform the proprietor that the surrender will be registered three months after the date on w hich the Office received the evidence (Rule 36(2) CTMIR).
The Office will consider a c opy of the letter from the proprietor to the licensee/pledgee as sufficient evidence, provided that there is a reasonable likelihood that the letter was actually sent and received by the licensee/pledgee. The same applies to a written statement signed by the licensee/pledgee that it has been i nformed. An affidavit by the proprietor is not necessary. The term ‘prove’ in Article 50(3) CTMR does not refer to absolute certainty but to a reasonable probability, as follows from the other language versions of the regulations (French version of Article 50(3): justifie, Italian dimostre, German glaubhaft macht). The documents may be in any of the 23 official languages of the European Union. However, the Office may require a translation into the language chosen for the declaration of surrender or, at the choice of the declarant, into any of the five languages of the Office.
If the proof is missing or insufficient, the Office will ask for it within a time limit of two months.
b) Where a levy of execution is entered in the Register, the declaration of surrender must be accompanied by a declaration of consent to the surrender signed by the authority competent for the levy of execution (see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 4, Levy of Execution).
c) Where insolvency or similar proceedings are entered in the Register, the declaration of surrender must be requested by the liquidator (see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 5, Insolvency).
1.4 Examination
1.4.1 Competence
The Office is competent for examining the declaration of surrender.
Where surrender (or a partial surrender covering all the goods and/or services against which the application for cancellation is directed) is declared during on-going revocation or invalidity proceedings against the validity of the mark that is being surrendered, the relevant department (for example, the Cancellation Division) will be informed and the Office will suspend the registration of the surrender. The Cancellation Division will invite the cancellation applicant to indicate whether it wishes to continue with the proceedings and if so, the cancellation proceedings will continue until there is a final decision on substance. After the decision on the cancellation has become final, the surrender will be registered only for the goods and/or services for which the contested CTM has not been r evoked or declared invalid, if any (see judgment of 24/03/2011, C-552/09 P, ‘TiMiKinderjoghurt’, para. 39, decision of 22/10/2010,
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R 0463/2009-4 – ‘MAGENTA’, paras 25-27 and decision of 07/08/2013, R 2264/2012-2 – ‘SHAKEY’S’). (See the Guidelines, Part D, Cancellation, Section 1, Cancellation Proceedings, paragraph 7.3).
Where the CTM is subject to a case pending before the Boards of Appeal (BoA), the competent chamber will decide on the surrender.
Where the CTM is subject to a case pending before the General Court (GC) or the Court of Justice (CJEU), the surrender must be filed at the Office (not before the GC or the CJEU). The Office will then inform the GC or the CJEU whether or not it finds the surrender acceptable and valid. However, the surrender proceedings will be suspended until the GC or the CJEU has rendered a final decision on the issue (by analogy, see judgment of 16/05/2013, T-104/12, ‘VORTEX’)
1.4.2 Registration or rejection
Rule 87 CTMIR
In the event of a deficiency, the Office will give the declarant two months to remedy the deficiency.
Where the deficiency which is brought to the attention of the declarant is not remedied within the time limit specified, the Office will entirely reject the request to record the surrender in the Register.
Where the Office enters the surrender in the Register, it will inform the CTM proprietor and all right holders registered for that trade mark accordingly.
When notifying the registration of a partial surrender, a copy of the new list of goods and services will be given in the confirmation letter in the language of the proceedings.
2 Alteration of a Trade Mark
2.1 General principles
Article 48 CTMR Rule 25 CTMIR
This Section of the Guidelines, and t he provisions cited above, deal solely with alterations of the CTM that are requested by the proprietor of its own accord.
There is a difference between an amendment of a CTM application and an alteration of a registered CTM. The amendment of a C TM application is governed by Article 43 CTMR and Rules 13 and 26 CTMIR. The alteration of a registered CTM is governed by Article 48 CTMR, and Rules 25 and 26 CTMIR (for more information on amendments of a CTM application, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities).
This Section does not apply to corrections of obvious errors by the Office in its publications or in the CTM Register; such corrections are made ex officio, or at the
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proprietor’s request, pursuant to Rules 14 and 27 CTMIR (for more information, see the Guidelines, Part A, General Rules, Section 6, Revocation of Decisions and Cancellation of Entries in the Register and Correction of Errors).
The Regulations provide for the possibility of applying for an amendment of the representation of the mark (alteration of the mark) providing such alteration relates to the proprietor’s name and address and does not substantially affect the identity of the trade mark as originally registered.
The Regulations do not provide for the possibility of altering other elements of the CTM registration.
2.2 Formal requirements
2.2.1 Form and language
Article 48(2) CTMR
The application to alter the mark, that is, the representation of the mark, must be made in writing in one of the five languages of the Office.
2.2.2 Fees
Article 2(25) CTMFR
The application is subject to a fee of EUR 200; the request is deemed not to have been filed until the fee is paid (see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).
2.2.3 Mandatory indications
Rule 25(1) CTMIR
The application for alteration must contain:
• the CTM registration number
• the CTM proprietor’s name and address in accordance with Rule 1(1)(b) CTMIR; if the proprietor has previously been al located an I D number by OHIM, it is sufficient to indicate that ID number together with the proprietor’s name
• an indication of the element in the representation of the mark to be altered and the altered version of the element
• a representation of the mark as altered that complies with the formal requirements laid down in Rule 3 CTMIR.
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One single application for alteration may be filed for several CTM registrations, provided that both the CTM proprietor and the element to be altered are the same in each case. However, the fee has to be paid for each registration to be altered.
2.3 Substantive conditions for alteration
Article 48(2) CTMR allows the alteration of the representation of the mark only under extremely limited conditions, namely only when:
• the CTM includes the CTM proprietor’s name and address, and
• these are the elements for which alteration is sought, and
• the alteration would not substantially affect the identity of the trade mark as originally registered.
Strict rules apply: where the proprietor’s name or address is part of the distinctive elements of the mark, for example, part of a word mark, an alteration is excluded since the identity of the mark would be s ubstantially affected. An exception can only be accepted for usual abbreviations relating to the legal structure of the company. An alteration of the mark is only possible if the CTM proprietor’s name or address appears on a f igurative mark, for example, the label of a bottle, as a s ubordinate element in small letters. Such elements would normally not be taken into account in determining the scope of protection or the fulfilment of the use requirement. The rationale of Article 48 CTMR is precisely to exclude any alteration of the registered CTM that could affect its scope of protection or the assessment of the use requirement, so that rights of third parties cannot be affected.
No other element of the mark may be altered, even if it is only a subordinate element in small letters of a descriptive nature on a label of a bottle, such as the indication of the percentage of alcohol of a wine. Furthermore, Article 48(2) CTMR does not allow for the alteration of the list of goods and s ervices (see decision of 09/07/2008, R 0585/2008-2 – ‘SAGA’, para. 16). After registration, the only way to change the list of goods and services is through partial surrender under Article 50 CTMR (see paragraph 1.3.5 above).
2.3.1 Examples of acceptable alterations
MARK AS REGISTERED PROPOSED ALTERATION
CTM 7 389 687
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MARK AS REGISTERED PROPOSED ALTERATION
CTM 3 224 565
CTM 4 988 556
2.3.2 Examples of unacceptable alterations
MARK AS REGISTERED PROPOSED ALTERATION
CTM 11 058 823
ROTAM – INNOVATION IN POST PATENT TECHNOLOGY’
ROTAM – INNOVATION IN POST PATENT TECHNOLOGY
CTM 9 755 307
MINADI MINADI Occhiali MINADI
CTM 10 009 595
CHATEAU DE LA TOUR SAINT-ANNE CHATEAU DE LA TOUR SAINTE-ANNE
CTM 9 436 072
SLITONE ULTRA SLITONEULTRA
CTM 2 701 845
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MARK AS REGISTERED PROPOSED ALTERATION
CTM 3 115 532
CTM 7 087 943
CTM 8 588 329
In all cases the proposed alteration was refused as it substantially affects the identity of the Community trade mark as originally registered (Article 48(2) CTMR). Article 48(2) CTMR only allows for an alteration of the proprietor’s name and address contained in the registered trade mark provided this alteration does not substantially affect the identity of the trade mark.
2.4 Publication
Where the alteration of the registration is allowable, it will be registered and published in Part C.3.4 of the Bulletin; the publication will contain a representation of the CTM as altered.
Within three months of the publication of the alteration, third parties whose rights may be affected by the alteration may challenge the registration thereof. For this procedure, the provisions on the opposition procedure apply mutatis mutandis.
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3 Changes of Name or Address
Rules 26, 84 CTMIR
It is possible to alter the name, address or nationality of the proprietor of a registered CTM or its representative. The application to record the change must be made in one of the five languages of the Office. The alteration will be entered in the Register and published.
Pursuant to Rule 26 CTMIR, the name, including the indication of the legal form, and address of the proprietor or representative may be amended freely, provided that:
• as regards the proprietor’s name, the change is not the consequence of a transfer
• as regards the representative’s name, there is no substitution of one representative by another.
Pursuant to Rule 84(3) CTMIR, the indication of the nationality or the State of incorporation of a legal person may also be altered or added, provided that it is not the consequence of a transfer.
A change of the proprietor’s name within the sense of Rule 26(1) CTMIR is a change that does not affect the identity of the proprietor, whereas a transfer is a change from one proprietor to another. For details and the applicable procedure in case of doubt as to whether the change falls under Article 17 CTMR, see the Guidelines, Part E, Register Operations, Section 3, CTMS as Objects of Property, Chapter 1, Transfer.
Likewise, a change of a representative’s name within the sense of Rule 26(6) CTMIR is limited to a change which does not affect the identity of the appointed representative, for example, where the name changes as a result of marriage. Rule 26(6) CTMIR also applies where the name of an association of representatives changes. Such a change of name has to be distinguished from the substitution of one representative by another, which is subject to the rules governing appointment of representatives; for details, see the Guidelines, Part A, General Rules, Section 5, Professional Representation.
A change of name or address under Rule 26 CTMIR, or of nationality, may be the result of changed circumstances or of an error made when filing.
To record a change of name and address, the proprietor or its representative must submit an application to the Office. The application must contain the CTM number as well as the name and addr ess of the proprietor (in accordance with Rule 1(1)(b) CTMIR) or of the representative (in accordance with Rule 1(1)(e) CTMIR), both as recorded in the file and as amended.
Normally no proof or evidence of the change is necessary. However, in the event of doubt, the examiner may ask for proof such as a certificate from a trade register. The application to record the change of name or address is not subject to a fee.
Legal persons can only have one official address. In the event of doubt, the examiner may ask for evidence of the legal form or the address in particular. The official name and address are also used as the address for service by default. Ideally, a proprietor should have only one address for service. A change in the proprietor’s official
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designation or official address will be registered for all CTMs and RCDs in the name of that proprietor. A change in the official designation or address cannot be recorded just for specific portfolios of rights, contrary to the address for service. In principle, these rules apply to representatives by analogy.
4 Changes in Collective Trade Mark Regulations
Article 71 CTMR
According to Article 71 CTMR, the proprietors of Community collective marks must submit to the Office any amended regulations governing use.
The application to enter in the Register an amendment of the regulations governing the use of a collective trade mark must be made in writing in one of the five languages of the Office.
4.1 Registration of the amended regulations
Article 69 CTMR, Article 71(3), (4) CTMR, Rule 84(3)(e) CTMIR
The amendment will not be entered in the Register if the amended regulations do not satisfy the requirements of Article 67(2) CTMR or involve one of the grounds for refusal referred to in Article 68 CTMR.
Where the registration of the amendment of the regulations is accepted, it will be registered and published.
The recordal applicant will specify the part of the amended regulations to be entered in the Register, which can be:
• the applicant’s name and office address • the purpose of the association or the purpose for which the legal person
governed by public law is constituted • the bodies authorised to represent the association or the legal person • the conditions for membership • the persons authorised to use the mark • where appropriate, the conditions governing use of the mark, including sanctions • if the mark designates the geographical origin of goods or services, authorisation
for any person whose goods or services originate in the geographical area concerned to become a member of the association.
Within three months of the publication of the amended regulations, third parties whose rights may be affected by the amendment may challenge the registration thereof. For this procedure, the provisions on third party observations apply mutatis mutandis.
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5 Division
5.1 General provisions
Article 49 CTMR Rule 25a CTMIR
A registration can be split into different parts not only as the result of a partial transfer (see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer), but also on the CTM proprietor’s own motion. A division of a trade mark is particularly useful in order to isolate a disputed trade mark for certain goods or services and maintain the registration for the remainder. For information on the division of CTM applications, see the Guidelines, Part B, Examination, Section 1, Proceedings.
Whereas a partial transfer is free of charge but involves a change of proprietorship, the request for division of a trade mark is subject to a fee of EUR 250 and the trade mark remains in the hands of the same proprietor. If the fee is not paid, the request is deemed not to have been filed. The request must be made in one of the five languages of the Office.
Division is not available for international registrations under the Madrid Protocol designating the EU. The Register of International Registrations is kept exclusively at WIPO. OHIM does not have the authority to divide an international registration.
5.2 Formal requirements
5.2.1 Form and language
The application to divide the mark must be made in writing in one of the five languages of the Office.
5.2.2 Fees
Article 2(22) CTMFR
The application is subject to a fee of EUR 250; the request is deemed not to have been filed until the fee is paid (see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).
5.2.3 Mandatory indications
Rule 25a CTMIR
The request must contain:
• the registration number of the CTM to be divided
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• the proprietor’s name and address; if the proprietor has previously been allocated an ID number by OHIM, it is sufficient to indicate that ID number together with the proprietor’s name
• the list of goods and services for the divisional registration, or, if more than one new application is to be created, for each divisional registration
• the list of those goods and services that will remain in the original CTM.
The goods and services must be distributed between the original CTM and the new CTM so that the goods and services in the original and the new CTM do not overlap. The two specifications taken together must not be b roader than the original specification.
Therefore, the indications must be clear, precise and unequivocal. For example, when a CTM for goods or services in several classes is involved, and the ‘split’ between the old and new registration concerns whole classes, it is sufficient to indicate the respective classes for the new registration or for the remaining one.
When the application for a di vision indicates goods and services which are explicitly mentioned in the original list of goods and services, the Office will automatically retain the goods and s ervices which are not mentioned in the division application for the original CTM. For example, the original list contains goods A, B, and C and the division application relates to C; the Office will keep goods A and B in the original registration and create a new registration for C.
For the assessment of whether there is limitation or a broadening of scope of the list, the rules generally applicable in such situations apply (see the Guidelines, Part B, Examination, Section 3, Classification).
In all cases it is highly recommended to file a clear and p recise list of goods and services to be divided as well as a clear and precise list of goods and services to remain in the original registration. Furthermore, the original list must be clarified. For example, if the original list related to alcoholic beverages and the division relates to whisky and gin, the original list must be amended by restricting it to alcoholic beverages, except whisky and gin.
The Office will notify the proprietor of any deficiency in this regard and will give the proprietor two months to remedy the deficiency. If the deficiency is not remedied, the declaration of division will be refused (Rule 25a(2) CTMIR).
There are also certain periods during which, for procedural economy or to safeguard third party rights, a declaration of division is not admissible. These periods are prescribed by Article 49(2) CTMR and Rule 25a(3) CTMIR and are the following.
• As long as cancellation proceedings are pending before the Office (application for revocation or declaration of invalidity), only those goods and s ervices against which the cancellation request is not directed may be di vided from the original mark. The Office interprets Article 49(2)(a) CTMR as not only excluding a division where some of the contested goods are divided from the original mark, with the effect that the cancellation proceedings would have to be s plit, but also as excluding that all the contested goods are divided from the original mark. However, in this case, the CTM proprietor will be given the opportunity to amend the declaration of division by dividing the other goods and s ervices from the
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original mark, that is, those which are not contested in the cancellation proceedings.
• As long as proceedings are pending before the Boards of Appeal, the General Court or the European Court of Justice only those goods and s ervices not affected by the proceedings may be di vided from the original mark due to the suspensive effect of the proceedings.
• Likewise, as long as a counterclaim for revocation or declaration of invalidity is pending before a CTM court, the same conditions apply. This covers the period starting on the day the counterclaim was lodged before the CTM court and ending on the date on which the Office mentions the CTM court’s judgment in the CTM Register pursuant to Article 100(6) CTMR.
5.3 Registration
If the Office accepts the declaration of division, a new registration is created as of that date and not retroactively as from the date of the declaration.
The new registration keeps the filing date as well as any priority or seniority dates, depending on the goods and services; the seniority effect may become partial.
All requests and applications submitted and all fees paid prior to the date on which the Office receives the declaration of division are also deemed to have been made or paid for the resulting divisional registration. However, fees duly paid for the original registration will not be r efunded (Article 49(6) CTMR). The practical effects of this provision can be exemplified as follows.
• Where an appl ication for the registration of a licence was submitted and the payment of the fee for its registration was received by the Office prior to the declaration of division, the licence will be registered against the original registration and recorded in the file of the new registration. No further fees need to be paid.
• Where a CTM registration containing six classes is to be di vided into two registrations, each containing three classes, no additional class fees for the renewal are payable as from the date on which the division is entered in the Register but instead two basic renewal fees will be pa yable, one for each registration.
Where the division is not accepted, the original registration remains unchanged. It does not matter whether:
• the declaration of division was deemed not to have been f iled in the absence of the fee
• the declaration was refused because it failed to comply with the formal requirements (see 5.2 above).
In neither of the latter two cases will the fee be reimbursed.
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Where the final decision of the Office is that the declaration of division is not acceptable for any of the above reasons, the applicant may re-apply for the declaration of division, which will be subject to a new fee.
5.4 New file, publication
Rule 84(2) and Rule 84(3)(w) CTMIR
A new file has to be c reated for the divisional registration. It must contain all the documents which were on file for the original registration, plus all the correspondence related to the declaration of division, as well as all future correspondence for the new registration.
The division will be published in the CTM Bulletin. Rule 84(3)(w) CTMIR provides that the division of the registration will be published together with the items referred to in Rule 84(2) CTMIR in respect of the divisional registration and the list of goods and services of the original registration as amended.
6 Post-Registration Seniority Claims
Article 35 CTMR Rule 28 CTMIR Communication No 2/00 of 25/02/2000 Decision No EX-03-5 of 20/01/2003 Decision No EX-05-5 of 01/06/2005
6.1 General principles
The proprietor of an earlier trade mark registered in a Member State, including a trade mark registered under international arrangements having effect in a M ember State, who holds an identical CTM for goods or services which are identical with or contained within those for which the earlier trade mark has been r egistered, may claim for the CTM the seniority of the earlier trade mark in respect of the Member State in or for which it is registered.
Seniority may be claimed at any time after the registration of the CTM.
6.2 Legal effect
Seniority has the sole effect that where the holder of a CTM surrenders their earlier national trade mark registration or allows it to lapse, they will be deemed to continue to have the same rights as they would have had if the earlier trade mark had continued to be registered.
This means that the CTM represents a prolongation of earlier national registrations. If a proprietor claims seniority from one or more earlier registered national marks, the owner may decide not to renew the earlier national registrations but still be in the same position as if the earlier trade mark had continued to be registered in those Member
Changes in a Registration
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States where the earlier marks were registered. The Office recommends the proprietor to wait until it receives confirmation of the acceptance of the seniority claim before allowing the national mark to lapse (see also below under paragraph 6.4.2 Triple identity).
Seniority may be claimed not only for earlier national registrations, but also for an international registration designating an EU country. However, no seniority claim is possible for an earlier CTM registration or local registrations, even if the territory is part of the European Union (e.g. Gibraltar).
6.3 Formal requirements
6.3.1 Form
Rules 79, 79a, 80, 82 CTMIR Decision No°EX-11-03 of the President of the Office
The seniority claim must be declared to the Office in writing. The general rules for communication with the Office apply (see the Guidelines, Part A, General Rules, Section 1, Means of Communication, Time Limits).
The Office has made available to the public, free of charge, a form for the purpose of requesting the recordal of post-registration seniority claims. This form is the Recordal Application and may be downloaded from the Office’s website (http://oami.europa.eu).
6.3.2 Language
Rule 95(b) CTMIR
The seniority claim must be filed in one of the five languages of the Office.
6.3.3 Fees
There is no fee for an application for a seniority claim.
6.3.4 Mandatory indications
Rule 28 CTMIR Decision No EX-05-5 of 01/06/2005
The application must indicate:
• the CTM registration number
• the CTM proprietor’s name and address in accordance with Rule 1(1)(b) CTMIR; if the proprietor has previously been al located an I D number by OHIM, it is sufficient to indicate that ID number and the proprietor’s name
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• the Member State or Member States of the European Union in or for which the earlier mark, for which seniority is claimed, is registered
• the registration number and filing date of the relevant earlier registration(s).
Pursuant to Decision No EX-05-5 of 01/06/2005, the proprietor is not required to file a copy of the registration if the required information is available to the Office on t he website of the respective national office. If the copy of the registration is not submitted, the Office will first search for the necessary information on the respective website and only if the information is not available there will it ask the proprietor for a copy. Pursuant to Article 3 of Decision No EX-03-5, the copy of the relevant registration must consist of a c opy (simple photocopies suffice) of the registration and/or renewal certificate or extract from the Register, or an extract from the relevant national Gazette, or an extract or printout from a database. Examples of extracts that are not accepted are DEMAS, MARQUESA, COMPUSERVE, THOMSON, OLIVIA, PATLINK or COMPUMARK, SAEGIS.
6.4 Examination
6.4.1 Substantive examination
Seniority may only be claimed from an earlier registration, not an earlier application. The date of the earlier trade mark must be be fore the respective dates of the CTM (filing date or, if available, the priority date).
The examiner must check both that the earlier mark was registered and that it had not lapsed at the moment the claim was made (on the duration of protection of national marks see the Guidelines, Part C, Opposition, Section 1, Procedural Matters, paragraph 4.2.3.4).
If the earlier registration had l apsed at the moment the claim was made, seniority cannot be claimed, even if the relevant national trade mark law provides for a six- month grace period for renewal. While some national legislations allow for a ‘grace’ period, if the renewal is not paid the mark is considered to have lapsed from the day it was due for renewal. Therefore, the seniority claim is acceptable only if the applicant shows that it has renewed the earlier registration(s).
In the context of an enlargement of the EU, the following details have to be borne in mind. Where a national trade mark of, or an international registration with effect in, a new Member State was registered before the seniority claim is made, seniority may be claimed even though the priority, filing or registration date of the CTM to which the seniority claim relates predates the priority, filing or registration date of the national mark/IR with effect in the new Member State. This is because the CTM at issue only has effect in the new Member State from the date of accession. The national trade mark/IR with effect in the new Member State for which seniority is claimed is therefore ‘earlier’ than the CTM within the sense of Article 35 CTMR, provided the national trade mark/IR with effect in the new Member State enjoys a priority, filing or registration date prior to the accession date (see the Guidelines, Part A, General Rules, Section 9, Enlargement, Annex 1).
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Examples of acceptable seniority claims for new Member States
CTM Filing date Seniority claimcountry Accession date Filing date of earlier
right
2 094 860 TESTOCAPS 20/02/2001 Cyprus
01/05/2004 28/02/2001
2 417 723 PEGINTRON 19/10/2001 Hungary
01/05/2004 08/11/2001
352 039 REDIPEN 02/04/1996 Bulgaria 01/01/2007 30/04/1996
7 073 307 HydroTac 17/07/2008 Croatia 01/07/2013 13/10/2009
Explanation: In all cases, although the filing date of the CTM application is earlier than the filing date of the mark for which seniority is claimed, all the countries concerned acceded to the European Union after the filing date of the CTM application. It is from the accession date that the CTM application has protection in those Member States. Therefore, seniority can be c laimed for any national marks filed prior to the date of accession.
If the claim to seniority is in order, the Office will accept it and – once the CTM application has been registered – inform the relevant central industrial property office(s) of the Member State(s) concerned (Rule 8(3) CTMIR).
6.4.2 Triple identity
A valid seniority claim requires triple identity:
• the registered mark must be identical to the Community trade mark
• the goods and services of the CTM must be identical or contained within those for which the mark is registered
• the proprietor must be the same.
(See judgment of 19/01/2012, T-103/11, ‘Justing’.)
Examination of seniority claims is limited to the formal requirements and to the identity of the marks (see Communication of the President No 2/00 of 25/02/2000).
It is up to the owner to make certain that the triple identity requirements are met. The Office will normally only examine whether the marks are identical. The i dentity of owner, goods and services will not be examined.
As regards the identity of the marks, word marks will generally be considered without reference to the typeface in which they are registered. In considering whether word marks are identical the Office will not object if, for example, one mark is in uppercase and the other in lowercase. The addition or subtraction of a single letter in a word mark is sufficient for marks not to be c onsidered identical. As far as figurative marks are concerned, the Office will object if there is any difference in the appearance of the marks (judgment of 19/01/2012, T-103/11, ‘Justing’, para. 17 and judgment of 20/02/2013, T-378/11, ‘Medinet’).
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In this respect the General Court has held that
Even although the objectives of Article 8(1)(a) and of Article 34 of that regulation [CTMR] are not the same, it is a condition for the application of both of them that the marks at issue must be identical …
…
It must be stated at the outset that the fact that a mark is registered in colour or, on the contrary, does not designate any specific colour cannot be regarded as a ne gligible element in the eyes of a c onsumer. The impression left by a mark is different according to whether that mark is in colour or does not designate any specific colour.
(See judgment of 20/02/2013, T-378/11 ‘Medinet’, paras 40 and 52).
If the claim to seniority does not satisfy the formal requirements or if the marks are not identical, the Office will notify the proprietor and give it two months to remedy the deficiency or submit observations.
If the deficiency is not remedied, the Office will inform the proprietor that the right to claim seniority has been rejected.
For examples of acceptable and unac ceptable seniority claims see the Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 16.6.
6.4.3 Harmonised seniority information
In order to properly manage seniorities, all seniority entries in the system need to have the same format as that used in the databases of the national offices.
To enhance harmonisation between OHIM and participating IP offices, a list with the required format for seniorities has been established. This list provides a description of the format/formats used in each of the national offices, insofar as this has been determined.
Therefore, when examining seniority claims, examiners must verify that the format of the seniority in the Office’s system corresponds to the format used at national level.
6.5 Registration and publication
Rule 84(3)(f) CTMR
If the claim to seniority is in order, the Office will register it and inform the relevant central industrial property office(s) of the Member State(s) concerned (Rule 8(3) CTMIR).
The seniority claim will be published in the CTM Bulletin.
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The publication will contain the following data:
• the CTM registration number • the seniority claim details: country, registration number, registration date, filing
date, date of priority • the date and number of the entry of the seniority claim • the date the entry is published in the CTM Bulletin.
Rule 84(3)(f) CTMIR provides that the seniority claim will be registered together with the items referred to in Rule 84(2).
6.6 Cancellation of seniority claims
The CTM proprietor may at any time request the cancellation of the seniority claim from the Register of its own motion.
Seniority claims may also be cancelled by a decision of a national court (see Article 14 Directive 2008/95/EC).
The cancellation of the seniority claim will be published in the CTM Bulletin. Rule 84(3)(r) CTMIR provides that the cancellation of the seniority will be registered together with the items referred to in Rule 84(2).
7 Replacement of a CTM Registration by an IR
Article 157 CTMR Rule 84(2) CTMIR Article 4 bis MP Rule 21 Common Regulations under the Madrid Agreement and Protocol (CR)
In accordance with Article 4 bis of the Madrid Agreement and the Protocol, the holder of an international registration designating the European Union (IR) may request the Office to take note in its Register that a CTM registration is replaced by a corresponding IR. The holder’s rights in the EU will be deemed to start from the date of the earlier CTM registration. Therefore, the Office will enter in the Register that a CTM has been replaced by a designation of the EU through an IR and that entry will be published in the CTM Bulletin.
For more information on replacement, see the Guidelines, Part M, International Marks.
Transfer
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 3
CTMs AS OBJECTS OF PROPERTY
CHAPTER 1
TRANSFER
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Table of Contents
1 Introduction................................................................................................ 4 1.1 Transfers.....................................................................................................5 1.2 Application to record a transfer ................................................................5
2 Transfers vs Changes of Name ................................................................ 6 2.1 Erroneous application to record a change of name.................................7 2.2 Erroneous application to record a transfer ..............................................7
3 Formal and Substantive Requirements of an Application to Record a Transfer ...................................................................................................... 8 3.1 Languages ..................................................................................................8 3.2 Application filed for more than one mark .................................................9 3.3 Parties to the proceedings.........................................................................9 3.4 Formal requirements................................................................................10
3.4.1 Indication of the registration number ............................................................ 10 3.4.2 Particulars of the new proprietor................................................................... 10 3.4.3 Name and address of the representative ..................................................... 11 3.4.4 Signatures..................................................................................................... 12
3.5 Proof of transfer .......................................................................................12 3.6 Substantive requirements........................................................................13 3.7 Procedure to remedy deficiencies ..........................................................14
4 Partial Transfers ...................................................................................... 15 4.1 Rules on the distribution of the lists of goods and services................. 15 4.2 Objections.................................................................................................16 4.3 Creation of a new CTM application or registration ................................17
5 Transfer During the Course of Other Proceedings and Fees Issues .. 17 5.1 Specific issues of partial transfers .........................................................18 5.2 Transfer and inter partes proceedings ...................................................19
6 Entry in the Register, Notification and Publication .............................. 20 6.1 Entry in the Register ................................................................................20 6.2 Notification................................................................................................20 6.3 Publication................................................................................................21
7 Transfers for Registered Community Designs ..................................... 22 7.1 Rights of prior use for an RCD ................................................................22 7.2 Fees...........................................................................................................22
Transfer
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8 Transfers for International Trade Marks ................................................ 23
Transfer
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1 Introduction
Articles 1(2), 17(1), Article 24 CTMR Article 28 CDR Article 23 CDIR
A transfer is the change in ownership of the property rights in a Community trade mark (CTM) or CTM application from one entity to another. CTM and CTM applications may be transferred from the current proprietor to a new proprietor, primarily by way of assignment or legal succession. The transfer may be limited to some of the goods or services for which the mark is registered or applied for (partial transfer). In contrast to a licence or conversion, a t ransfer of a CTM cannot affect the unitary character of the CTM. Therefore, a CTM cannot be ‘partially’ transferred for some territories or Member States.
The provisions in the CDR and CDIR dealing with the transfer of designs are almost identical to the equivalent provisions of the CTMR and CTMIR, respectively. Therefore, the following applies mutatis mutandis to Community designs, with the few exceptions and particularities laid down in paragraph 7 below.
Article 16, Article 17(5), (6), (8), Articles 24, 87 CTMR Rule 31(8), Rule 84(3)(g) CTMIR
Upon request, transfers of registered CTMs are entered in the Register and transfers of CTM applications are noted in the files.
The rules on registering transfers and on legal effects of transfers apply both to CTMs and to CTM applications. The major difference is that the Regulations stipulate that when a CTM application is transferred, the transfer will be recorded in the file of the application rather than in the Register. However, in practice, changes in the ownership of a C TM application or a C TM are recorded in the same database. While these Guidelines generally make no distinction between the transfer of CTMs and CTM applications, special references will be i ncluded where the treatment of CTM applications differs from that of CTMs.
According to Article 17 CTMR, registering a transfer is not a condition for its validity. However, if a transfer is not registered by the Office, the entitlement to act remains with the registered proprietor, meaning, inter alia, that the new proprietor will not receive communications from the Office, in particular during inter partes proceedings or the notification of the renewal term of the mark. Furthermore, according to Article 16 CTMR, in all aspects of the CTM as an object of property that are not further defined by provisions of the CTMR, the proprietor’s address defines the applicable subsidiary national law. For all these reasons, it is important to register a transfer at the Office to ensure that entitlement to CTMs and applications is clear.
Transfer
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1.1 Transfers
Article 17(1), (2) CTMR
A transfer of a CTM involves two aspects, namely the validity of the transfer between the parties and the impact of a transfer on proceedings before the Office, such impact being triggered only after the entry of the transfer in the Register (or the files) (see paragraph 1.2 below).
As concerns the validity of the transfer between the parties, the CTMR allows a CTM to be transferred independently of any transfer of the undertaking to which it belongs (see also judgment of 30/03/2006, C-259/04, ‘Elizabeth Emanuel’, paras 45 and 48).
Article 17(3) CTMR
When a transfer is made by an assignment, except where the assignment is the result of a court decision, the former is only valid where the assignment is made in writing and is signed by both parties. This formal requirement for the validity of the transfer of a CTM is applicable irrespective of whether, under the national law governing transfers of (national) trade marks, an assignment is valid even without observing a par ticular form, such as the need for the transfer to be in writing and have the signatures of both parties.
When the proprietor of a CTM or CTM application dies, the heirs will become proprietors of the registration or application by way of individual or universal succession. This is also covered by the rules on transfers.
Similarly, a universal succession exists when there is a merger between two companies that leads to the formation of a new company or an acquisition by one company taking over another. Where the whole of the undertaking to which the mark belongs is transferred, there is a presumption that the transfer includes the CTM unless, in accordance with the law governing the transfer, an agreement to the contrary was made or unless circumstances clearly dictate otherwise.
Article 16 CTMR
Unless provided otherwise by the CTMR, transfers are subject to the national law of a Member State determined by Article 16 CTMR. The national law declared applicable in that provision is the national law in general and, therefore, also includes private international law, which in turn may refer to the law of another State.
1.2 Application to record a transfer
Article 17(5)-(8), CTMR Rule 31 CTMIR
A transfer becomes relevant in proceedings before the Office if an application to record a transfer has been made and the transfer has been en tered in the Register or, for CTM applications, recorded in the CTM application file.
Transfer
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Article 17(7) CTMR
However, in the period between the date when the Office receives the application to record a transfer and the date of registering the transfer, the new proprietor may already make submissions to the Office with a view to observing time limits. If, for example, a party has applied to register the transfer of a CTM application for which the Office has raised objections on absolute grounds, the new proprietor may reply to the objections (see paragraph 5 below).
This part of the Guidelines covers proceedings relating to the recordal of transfers. In the course of the examination of an application for recordal of a transfer, the Office will only examine whether sufficient evidence of the transfer has been s ubmitted. The Office will not examine whether the transfer itself is valid.
2 Transfers vs Changes of Name
Rule 26(1)-(3) CTMIR
A transfer must be distinguished from a change of name of the proprietor.
An application for the change of name of a proprietor of a CTM registration or application is dealt with in separate proceedings. More information on changes of name can be found in the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 7.3, Change of name/address.
Rule 26(1) CTMIR
In particular, no transfer is involved when a natural person changes their name due to marriage, or following an official procedure for changing a name, or when a pseudonym is used instead of the civil name, etc. In all these cases, the identity of the proprietor is not affected.
Where the name or the corporate status of a legal person changes, the criterion for distinguishing a transfer from a mere change of name is whether or not the identity of the legal person remains the same (in which case it will be registered as a change of name) (see decision of 06/09/2010, R 1232/2010-4 – ‘Cartier’, paras 12-14). In other words, where there is no termination of the legal entity (e.g. in the event of a merger by acquisition, where one c ompany is completely absorbed by the other and ceases to exist) and no start-up of a new legal entity (e.g. following the merger of two companies leading to the creation of a new legal entity), there is only a c hange in the formal corporate organisation that already existed, and not in the actual identity itself. Therefore, the change will be registered as a change of name, where necessary.
For example, if a CTM is in the name of Company A and as the result of a merger this company is absorbed by Company B, there is a transfer of assets from Company A to Company B.
Likewise, during a division of Company A into two separate entities, one being the original Company A and the other being a new Company B, if the CTM in the name of Company A becomes the property of Company B, there is a transfer of assets.
Transfer
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Normally, there is no transfer if the company registration number in the national register of companies remains the same.
Likewise, there is in principle the prima facie presumption that there is a t ransfer of assets if there is a change of country.
If the Office has any doubt about the applicable national law governing the legal person concerned, it may require appropriate information from the person applying to register the change of name.
Therefore, unless it is ruled to the contrary under the national law concerned, the change of company type, provided that it is not accompanied by a transfer of assets carried out by means of a merger or an acquisition, will be treated as a change of name and not as a transfer.
On the other hand, if the change of company type is the result of a merger, a division or a transfer of assets, depending on which company absorbs or is separated from the other or on which company transfers which assets to the other, this may be a case of transfer.
2.1 Erroneous application to record a change of name
Article 133(1) CTMR Rule 26(1), (5) (7) CTMIR
When an application is made to record a change of name, but the evidence shows that what is involved is actually a transfer for a CTM or CTM application, the Office informs the recordal applicant accordingly and i nvites it to file an appl ication to record a transfer, which is free of charge. Such a transfer is, however, subject to the payment of a fee when related to the transfer of a D esign (see paragraph 7 below). The communication sets a time limit, in general, of two months starting from the date of its notification. If the recordal applicant agrees or does not submit evidence to the contrary and files the corresponding application to record a t ransfer, the transfer will be recorded. If the recordal applicant does not modify its request, that is to say if it insists on recording the change as a change of name, or if it does not respond, the application to record a change of name will be rejected.
In this case, a new application to record the transfer may be filed at any time.
2.2 Erroneous application to record a transfer
Rule 31(1), (6) CTMIR
When an application is made to record a transfer, but what is involved is actually a change of name for a CTM or CTM application, the Office informs the recordal applicant accordingly and invites it to give its consent to record the indications concerning the proprietor in the files kept by the Office or in the Register as a change of name. That communication sets a time limit, in general, of two months starting from the date of its notification. If the recordal applicant agrees, the change of name will be
Transfer
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recorded. If the recordal applicant does not agree, that is to say if it insists on recording the change as a transfer, or if it does not respond, the application to record a transfer will be rejected.
3 Formal and Substantive Requirements of an Application to Record a Transfer
The Office strongly recommends that the online Recordal Application Form be used when applying to record a transfer. The form is free of charge and can be downloaded from the Office’s web site (http://www.oami.europa.eu).
Since the entry into force of Regulation No 1042/05, which amended the CTMFR, there is no need to pay a fee to register a transfer.
3.1 Languages
The application for registration of a transfer must be filed:
Rule 95(a), (b), 96(1) CTMIR
• when it relates to a CTM application, in the first or the second language indicated in the CTM application;
• when it relates to a registered CTM, in one of the languages of the Office.
When the application relates to more than one CTM application, the recordal applicant must select a language for the application that is common to all the CTMs concerned. If there is no common language, separate applications for transfer must be filed.
When the application relates to at least one CTM registration, the recordal applicant must select one of the five languages of the Office.
Rule 76(3) CTMIR
When expressly required by the Office, authorisations may be filed in any official language of the European Union.
Rule 96(2) CTMIR
Any supporting documents may be filed in any official language of the European Union. This applies to any document submitted as proof of the transfer such as a countersigned Transfer Document or a Transfer Certificate, a deed of assignment or an extract from a trade register or a declaration agreeing to record the successor in title as the new proprietor.
Rule 98 CTMIR
When the supporting documents are not submitted in either an official language of the European Union or in the language of the proceedings, the Office may require a
Transfer
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translation into the language of the proceedings or, at the choice of the recordal applicant, into any language of the Office. The Office will set a time limit of two months from the date of notification of the respective communication. If the translation is not submitted within the time limit, the document will not be taken into account and will be deemed not to have been submitted.
3.2 Application filed for more than one mark
Rule 31(7) CTMIR
Provided that both the original proprietor and the new one are the same in each case, then the recordal applicant can file a single application to record a transfer for several CTMs or CTM applications. This has the advantages that the various references only have to be given once and that only one decision needs to be taken.
Separate applications are necessary when the original proprietor and the new one are not strictly identical for each mark. This is the case, for example, where there is one successor in title for the first mark and there are multiple successors in title for another mark, even if the successor in title for the first mark is among the successors in title for the other mark. It is immaterial whether the representative is the same in each case.
When a single application is filed in such cases, the Office will issue a deficiency letter. The recordal applicant may overcome the objection either by limiting the application to those CTMs or CTM applications for which there is but one and t he same original proprietor and one and the same new proprietor, or by declaring its agreement that its application should be dealt with in two or more different proceedings. Otherwise, the application will be rejected in its entirety.
3.3 Parties to the proceedings
Article 17(5) CTMR Rule 31(5) CTMIR
The application to record a transfer may be filed by the original proprietor (the CTM owner as appearing in the Register or the CTM applicant as appearing in the CTM application file) or by the new proprietor (the ‘successor in title’, i.e. the person who will appear as the proprietor when the transfer is recorded).
The Office will usually communicate with the recordal applicant(s). In cases of doubt, the Office may require clarification from all the parties.
Transfer
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3.4 Formal requirements
Rule 1(1)(b), Rule 31(1), (2), Rule 79 CTMIR
An application to record a transfer must contain:
• the registration or application number of the CTM registration or application; • the new proprietor’s particulars; • where the new proprietor appoints a r epresentative, the representative’s name
and business address; • the signature(s) of the person(s) requesting the recordal; • proof of the transfer as set out in paragraph 3.5 below.
For additional requirements in cases of a partial transfer, see paragraph 4.
3.4.1 Indication of the registration number
Rule 31(1)(a) CTMIR
The registration number of the trade mark must be indicated.
3.4.2 Particulars of the new proprietor
Rules 1(1)(b), 31(1)(b) CTMIR
The particulars of the new proprietor that have to be indicated are the name, address and nationality in the case of a physical person. In the case of a legal entity, the recordal applicant shall indicate the official designation and must include the legal form of the entity, which may be abbreviated in a customary manner (for example, S.L., S.A, Ltd., PLC, etc.). Both natural persons and legal entities must indicate the State in which they are domiciled or have their seat or an establishment. The Office strongly recommends indicating the State of Incorporation for US companies, where applicable, in order to differentiate clearly between different owners in its database. These particulars correspond to the indications required in respect of an applicant for a new CTM application. However, where the Office has already attributed an ID number to the new proprietor, indicating that number together with the name of the new proprietor is sufficient.
The form made available by the Office also requests an i ndication of the original proprietor’s name. This indication will facilitate both the Office’s and the parties’ handling of the file.
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3.4.3 Name and address of the representative
Rule 77 CTMIR Article 93(1) CTMR Rule 76(1), (2), (4) CTMIR
Applications to record a transfer may be filed and signed by representatives on behalf of the CTM proprietor or the new proprietor.
When the new proprietor appoints a representative, who signs the application, either the Office or, in the context of inter partes proceedings, the other party to the proceedings may request an authorisation. In this event, if the representative does not submit an authorisation, the proceedings will continue as if no representative had been appointed.
When the original proprietor’s representative is also appointed as the new proprietor’s representative, the representative may sign the application on behalf of both the original proprietor and the new one. The representative may also be called upon to file an authorisation signed by the new proprietor.
Articles 92(3), 93(1) CTMR
The foregoing applies not only to representatives within the meaning of Article 93 CTMR (legal practitioners and professional representatives whose names are entered on the list maintained by the Office), but also to any employee acting on behalf of the employer or, under the conditions of Article 92(3) CTMR, on behalf of a legal person (company) that has economic connections with the employer.
Rule 77, Rule 83(1)(h) CTMIR
A general authorisation in the form made available by the Office will be considered sufficient for granting authorisation to file and sign applications for registration of transfers.
An individual authorisation will be checked to see that it does not exclude the authority to apply for a registration of a transfer.
Article 92(2) CTMR
When the recordal applicant is the new proprietor and that new proprietor does not have either its domicile or its principal place of business or a r eal and effective industrial or commercial establishment in the Community, for the purposes of the procedure to register the transfer it must be represented by a per son entitled to represent third parties before the Office (legal practitioner or professional representative whose name is entered on the list maintained by the Office). For details of who may represent, see the Guidelines, Part A, General Rules, Section 5, Professional Representation.
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3.4.4 Signatures
Rule 31(1)(d), Rule 31(5), Rule 79 CTMIR
The requirements concerning the person entitled to file the application and the signature must be seen in conjunction with the requirement to submit proof of the transfer. The principle is that the signatures of the original proprietor or proprietors and the new proprietor or proprietors must appear together or separately on the application or in an accompanying document.
Rule 31(5)(a) CTMIR
When the original proprietor and the new proprietor both sign the application, this is sufficient and no additional proof of the transfer is necessary.
Rule 31(5)(b) CTMIR
When the new proprietor is the recordal applicant and where the application is accompanied by a dec laration signed by the original proprietor that it agrees to the recording of the successor in title as the new proprietor, this is also sufficient and no additional proof is necessary.
When the original proprietor’s representative is also appointed as the new proprietor’s representative, the representative may sign the application on behalf of both the original proprietor and the new one, and no ad ditional proof is necessary. However, when the representative signing on behalf of both the original and the new proprietor is not the representative on file (i.e. in an application simultaneously appointing the representative and transferring the CTM), the Office will contact the recordal applicant to request evidence of the transfer (authorisation signed by the original proprietor, proof of transfer, confirmation of the transfer by the original owner or its representative on file).
3.5 Proof of transfer
Article 17(2), (3) CTMR Rules 31(1)(d), (5)(a)-(c), 83(1)(d) CTMIR
A transfer may be registered only when it is proved by documents duly establishing the transfer, such as a copy of the deed o f transfer. However, as already highlighted above, filing a copy of the deed of transfer is not necessary:
• when the new proprietor or its representative submits the application to record the transfer on its own and when the application is accompanied by a written declaration signed by the original proprietor (or its representative) that it agrees to the recordal of the transfer; or
• when the application to record the transfer is signed by both the original proprietor (or its representative) and by the new proprietor (or its representative); or
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• when the application to record the transfer is accompanied by a completed transfer (recordal) form or document signed by both the original proprietor (or its representative) and by the new proprietor (or its representative).
Parties to the proceedings may also use the forms established under the Trademark Law Treaty available on WIPO’s web site (https://www.wipo.int/treaties/en/ip/tlt/forms.ht ml). These forms are the Transfer Document – a document conceived as constituting the transfer (assignment) itself – and the Transfer Certificate – a document in which the parties to a transfer declare that a transfer has taken place. Either of these documents, duly completed, constitutes sufficient proof of transfer.
However, other means of proof are not excluded. Therefore, the agreement (deed) itself or any other document proving the transfer may be submitted.
When the transfer of the mark is the consequence of the transfer of the whole of the undertaking of the original proprietor, and unless proof is provided as indicated above, the document showing the transfer or assignment of the whole undertaking must be submitted.
When the transfer is due to a merger or another universal succession, the original proprietor will not be available to sign the application. In these cases, the application must be accompanied by supporting documents that prove the merger or universal succession, such as extracts from the trade register, etc. The Office may abstain from requiring additional proof where the facts are already known to the Office, for example in parallel proceedings.
Supporting documents need not be legalised, nor is it necessary to submit the original of a document. Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient.
If the Office has reason to doubt the accuracy or veracity of the document, it may require additional proof.
The Office will examine the documents only to the extent that they actually prove what is indicated in the application, namely the identity of the marks concerned and t he identity of the parties, and whether a transfer is involved. The Office does not consider or rule on contractual or legal questions arising under national law (see judgment of 09/09/2011, T-83/09 ‘Craic’ para. 27). If doubts arise, it is the national courts that deal with the legality of the transfer itself.
3.6 Substantive requirements
Article 17(4) CTMR
The Office will not register the transfer where it is clear from the transfer documents that because of the transfer the Community trade mark is likely to mislead the public concerning the nature, quality or geographical origin of the goods or services for which it is registered unless the new proprietor agrees to limit registration of the Community trade mark to goods or services for which it is not likely to be misleading.
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Article 7(1)(g) CTMR
A mark is likely to mislead the public because of its transfer if, had i t originally been filed by the new proprietor, it would have to be refused as misleading because of the particular circumstances relating to the proprietor and the mark.
Therefore, the criterion is whether the mark would mislead due to its proprietorship.
Article 7(1)(g), Article 17(4), Articles 43, 48 CTMR
The requirement that the likelihood of misleading the public must be the result of the transfer prevents the Office from taking into account, when examining an application to record a transfer, any other issue of deceptiveness that is not related to the link between the proprietor and t he mark. Once a m ark is registered, the Office may no longer raise general objections on the basis of deceptiveness. However, as long as the mark is not yet registered, the Office may object on s uch grounds. When the Office discovers such a ground for an objection during the examination of the application to record a transfer, it will register the transfer if all the requirements for the application are fulfilled, but subsequently will refer the case to the examiner for further examination on absolute grounds as appropriate.
However, to overcome an objection raised by the Office that due to the change in proprietorship the trade mark would mislead the public the recordal applicant cannot argue that the likelihood to mislead already existed at the date of filing of the CTM application.
The requirement that the likelihood of misleading the public must be clear from the transfer documents prevents the Office from basing its objections on speculative grounds and hy pothetical future developments. The mere fact that the goods and services will in the future be offered or marketed by a different person does not in itself constitute a likelihood of misleading the public. Speculations on the future use of the mark by the new proprietor will not be m ade. In particular, a possible change of the quality of the products sold under the mark must not be taken into account. There is reason to object to the registration of a transfer only if the mark itself would become misleading in relation to its new proprietor.
Objections on the ground of deceptiveness may be overcome in the relevant cases by amending the CTM application in accordance with Article 43 CTMR or the registered CTM in accordance with Article 48 CTMR. For more information on Office practice in relation to Article 7(1)(g) CTMR, see Part B, Section 4, Absolute Grounds for Refusal.
3.7 Procedure to remedy deficiencies
Article 17(7) CTMR Rules 31(6), 67(1) CTMIR
Where any of the deficiencies outlined above are noted, the Office will invite the recordal applicant to remedy the deficiency within a time limit of two months, starting from the date of the notification. The notification will be addressed to the person who filed the application to record the transfer or, where that person has appointed a
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representative, to the representative. The Office will not automatically inform the other party to the transfer, unless this is appropriate under the circumstances.
When the recordal applicant fails to remedy the deficiency or to submit the necessary additional proof, or where it is unable to convince the Office that the objections are not well-founded, the Office will reject the application.
4 Partial Transfers
Article 17(1) CTMR Rule 32 CTMIR
A partial transfer concerns only some of the goods and services in the CTM or CTM application. It involves the distribution of the original list of goods and services between the remaining CTM registration or application and a new one. When partial transfers are involved, the Office uses particular terminology to identify the marks. At the beginning of the proceedings there is the ‘original’ mark. This is the mark for which a partial transfer has been applied for. After the registration of the transfer, there are two marks: one is a mark that now has fewer goods and services, and is called the ‘remaining’ mark, and one is a ‘new’ mark that has some of the goods and services from the original mark. The ‘remaining’ mark retains the CTM number of the ‘original’ mark while the ‘new’ mark has a new CTM number.
Transfer cannot affect the unitary character of the CTM. Therefore, a CTM cannot be ‘partially’ transferred for some territories.
When there are doubts as to whether the transfer is partial or not, the Office will inform the transfer recordal applicant and invite it to make the necessary clarifications.
Partial transfers may also be involved when the transfer application concerns more than one C TM or CTM application. The following rules apply for each CTM or CTM application included in the transfer application.
4.1 Rules on the distribution of the lists of goods and services
Article 43 CTMR Rule 2, Rule 32(1) CTMIR
In the application to record a partial transfer, the goods and services to which the partial transfer relates must be indicated (the list of goods and services for the ‘new’ registration). The goods and services must be distributed between the original CTM or CTM application and a new CTM or CTM application so that the goods and services in the original CTM or CTM application and the new one do not overlap. The two specifications taken together must not be broader than the original specification.
Therefore, the indications must be clear, precise and unequivocal. For example, when a CTM for goods or services in several classes is involved, and the ‘split’ between the old and new registration concerns whole classes, it is sufficient to indicate the respective classes for the new registration or for the remaining one.
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When the application for a partial transfer indicates goods and services that are explicitly mentioned in the original list of goods and s ervices, the Office will automatically retain the goods and services that are not mentioned in the transfer application for the original CTM or CTM application. For example, the original list contains goods A, B and C, and the transfer application relates to C; the Office will keep goods A and B in the original registration and create a new registration for C.
In accordance with Communication No 2/12 of the President of the Office of 20/06/2012, CTMs filed prior to the 21/06/2012 claiming a particular class heading are considered to cover all the goods and services of the alphabetical list of that class in the edition of the Nice Classification in force at the time when the filing was made (see Communication No 2/12, paras V and VI).
When the application for a partial transfer indicates goods or services that are not expressly mentioned in the original list but fall under the literal meaning of a general indication contained therein, this will be acceptable provided that the list is not broadened. For the assessment of whether there is limitation or a broadening of scope of the list, the rules generally applicable in such situations apply (see the Guidelines, Part B, Examination, Section 3, Classification).
However, marks filed on or after 21/06/2012 claiming only the general indications of a particular class heading will be c onsidered to cover the literal meaning of that class heading and may only be partially transferred accordingly (see Communication No 2/12 paras VII and VIII).
Marks filed after 21/06/2012 claiming the general indications of a pa rticular class heading plus the alphabetical list will be considered to cover the literal meaning of that class heading plus the alphabetical list of goods and services concerned of that class in the edition of the Nice Classification in force at the time when the filing was made and may only be partially transferred accordingly (see Communication No 2/12 paras VII and VIII).
In all cases it is highly recommended to file a clear and p recise list of goods and services to be transferred as well as a clear and precise list of goods and services to remain in the original registration. Furthermore, the original list must be clarified. For example, if the original list related to ‘alcoholic beverages’ and the transfer relates to ‘whisky’ and ‘gin’, the original list must be a mended by restricting it to ‘alcoholic beverages, except whisky and gin’.
4.2 Objections
Rules 31(6), 32(3) CTMIR
When the application does not comply with the rules explained above, the Office will invite the recordal applicant to remedy the deficiency. If the deficiencies are not remedied, the Office will reject the application.
When the exchange of communications leads to a l ist of goods and services for the remaining registration that is different from the list filed in the CTM application, the Office will communicate not only with the new proprietor, if it is the party requesting the registration of the partial transfer, but also with the original proprietor, who remains the
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person who may dispose of the list of goods and services of the original registration. The Office will make any change to the original list of goods and services subject to the agreement of the original proprietor. If the agreement is not submitted within the time limit fixed by the Office, the application to record a transfer will be rejected.
4.3 Creation of a new CTM application or registration
Article 88 CTMR Rule 32(4), Rules 88, 89 CTMIR
A partial transfer leads to the creation of a new CTM application or registration. For this ensuing CTM application or registration, the Office will establish a separate file, which will consist of a complete copy of the electronic file of the original CTM application or registration, the application for registration of a t ransfer, and al l the correspondence related to the transfer application. The ensuing CTM application or registration will be given a new file number. It will have the same filing date and, where applicable, priority date as the original CTM application or registration. If the partial transfer relates to a CTM application, the ensuing CTM application is subject to the provisions for inspection of files in Article 88 CTMR.
As far as the original CTM application or registration is concerned, the Office will include in its files a copy of the application to record a transfer, but will generally not include copies of the further correspondence relating to that application.
5 Transfer During the Course of Other Proceedings and Fees Issues
Article 17(6), (7) CTMR
Without prejudice to the right to act from the time when the application for registration of a transfer is received by the Office where time limits are involved, the new proprietor will automatically become party to any proceedings involving the mark in question from the time the transfer is registered.
The filing of an application to record a transfer has no effect on time limits already running or set by the Office, including time limits for the payment of fees. New time limits for payment will not be set. From the date of registration of the transfer, the new proprietor becomes liable to pay any fees due.
Therefore, during the period between filing the application to record a transfer and the Office’s confirmation of its actual entry in the Register or in the file, it is important that the original proprietor and the new proprietor actively collaborate in communicating time limits and correspondence received during inter partes proceedings.
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5.1 Specific issues of partial transfers
Rule 32(5) CTMIR
In cases of partial transfers, the ensuing CTM or CTM application will be at the same procedural stage as the original (remaining) CTM or CTM application. Any time limit still pending for the original CTM or CTM application will be deemed to be pending for both the remaining CTM or application and the new one. After the registration of the transfer the Office will treat each CTM or CTM application separately and will decide on them separately.
When a CTM or CTM application is subject to the payment of fees and these fees have been paid by the original proprietor, the new proprietor will not be l iable to pay any additional fees with regard to the new CTM or CTM application. The relevant date is the entry date of the transfer in the register or in the files; therefore, when the fee for the original pending CTM or CTM application is paid after filing an application to record a transfer but before the recordal of the transfer itself, no additional fees are due.
Article 26(2) CTMR Rule 4, Rule 9(3), (5) CTMIR Article 2 No 2, 4 CTMFR
When the partial transfer involves a CTM application and class fees have not yet been paid or not been paid in full, the Office will proceed to record the transfer in the files of the remaining CTM application and to create a new CTM application as described above.
Where the CTM application originally related to more than three classes and, thus, would require the payment of additional class fees, the examiner will deal with such cases after recording the transfer in the files and creating a new CTM application, as described below.
When additional class fees were paid prior to recording the transfer but no additional class fees would be due bec ause the remaining CTM application now relates to three or fewer classes, no reimbursement will be made because the fees were paid correctly at the time of payment.
In all other cases, the examiner will treat the remaining CTM application and the new one separately, but without requesting a further basic fee to be paid for the new application. Class fees for the remaining CTM application and for the new one will be determined pursuant to the situation existing after the registration of the transfer. For example, when the original application had seven classes and after the transfer the remaining application has three while the new application has four, no additional class fees are due for the remaining application, while one additional class fee must be paid for the new application. When some of the goods and services of a particular class are transferred and o thers are not, that class becomes payable for both the remaining application and the new one. When a time limit to pay additional class fees has already been set but not yet expired, it will be set aside by the Office to allow the determination to be made on the basis of the situation after the registration of the transfer.
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Article 47(1), (3), (4) CTMR Rule 30(2), (4) CTMIR
When the application to record a partial transfer relates to a CTM registration that is due for renewal, that is, within six months prior to the expiry of the original registration and up to six months after that expiry, the Office will proceed to record the transfer and deal with the renewal and renewal fees as described below.
When no renewal request has been filed and no f ees have been pai d prior to the recording of the transfer, the general rules including the rules relating to payment of fees are applicable both to the remaining CTM registration and to the new one (separate requests, separate payment of fees, as necessary).
When a renewal request has been filed prior to the registration of the transfer, that request is also valid for the new CTM. However, while the original proprietor remains a party to the renewal proceedings for the remaining CTM, the new proprietor automatically becomes party to the renewal proceedings for the new registration.
In these situations, when a renewal request has been filed but the relevant fees have not been paid prior to the registration of the transfer, the fees to be paid are determined pursuant to the situation after the registration of the transfer. This means that both the proprietor of the remaining CTM and the proprietor of the new CTM must pay the basic renewal fee and any class fees.
When not only a renewal request has been filed prior to the registration of the transfer but also all the applicable renewal fees have been paid prior to this date, no additional renewal fees are due after the registration of the transfer. Furthermore, no reimbursement is made of any class fees already paid.
5.2 Transfer and inter partes proceedings
When an application to record a transfer is filed during inter partes proceedings, several different situations can arise. For earlier CTM registrations or applications on which the opposition/cancellation is based, the new proprietor can only become party to the proceedings (or file observations) once the application to record the transfer has reached the Office. The basic principle is that the new proprietor substitutes the original proprietor in the proceedings. The practice of the Office when dealing with transfers in opposition is described in the Guidelines, Part C, Opposition, Section 1, Procedural Matters, paragraph 6.5, Change of parties.
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6 Entry in the Register, Notification and Publication
6.1 Entry in the Register
Article 17(5) CTMR Rule 31(8), Rule 84(3)(g) CTMIR
When the application to record a transfer fulfils all requirements, if it concerns a registered CTM, the transfer will be entered in the Register, while if it concerns a CTM application, the Office will record the transfer in the corresponding file.
The entry in the Register will contain the following data:
• the registration date of the transfer, • the new proprietor’s name and address, • the name and address of the new proprietor’s representative, if any.
For partial transfers, the entry will also contain the following data:
• a reference to the number of the original registration and the number of the new registration,
• the list of goods and services remaining in the original registration, and • the list of goods and services of the new registration.
6.2 Notification
The Office will notify the recordal applicant of the recordal of the transfer.
If the application for recordal of a transfer is related to at least one CTM application, the notification will contain the appropriate reference to the relevant recording of the transfer in the files kept by the Office.
As regards notifying the other party, there is a distinction between total transfers and partial transfers.
Article 17(5) CTMR Rule 84(5) CTMIR
In cases of a total transfer, the notification will be sent to the party who submitted the application to register the transfer, that is to say, to the recordal applicant.
There will be no information to the other party:
• when the original proprietor’s representative is also the new proprietor’s appointed representative (in such a case the representative will receive one communication on behalf of both parties); or
• when the original proprietor has ceased to exist (death, merger).
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In all other cases, the other party will be informed of the outcome of the procedure, that is, the registration of the transfer. The other party will not receive information during the course of the proceedings unless serious doubts arise concerning the legality of the application to record the transfer or the transfer itself.
Rule 32(3), (4) CTMIR
In cases of a partial transfer, both the proprietor of the remaining CTM and the proprietor of the new CTM must receive notification, because necessarily two CTM applications or registrations are concerned. Therefore, a s eparate notification will be sent to the new applicant for each CTM application that has been transferred partially. In the case of a par tial transfer of a C TM registration, the Office will notify the new proprietor for each registration, containing, as appropriate, indications concerning the payment of renewal fees. A separate notification will be issued to the proprietor of the remaining CTM registration.
Furthermore, where in the case of a partial transfer the list of goods and services that are to remain in the original CTM application or registration needs to be clarified or amended, such clarification or amendment requires the agreement of the proprietor of the remaining CTM application or registration (see paragraph 4.2 above).
6.3 Publication
Article 17(5) CTMR Rule 84(3)(g), Rule 85(2) CTMIR
For CTM registrations, the Office publishes the entry in the Register of transfers in Part C of the Community Trade Marks Bulletin.
Article 39 CTMR Rule 12, Rule 31(8) CTMIR
When the application to record a transfer relates to a CTM application that has been published pursuant to Article 39 CTMR and Rule 12 CTMIR, the publication of the registration of the mark and the entry in the Register will mention the new proprietor from the outset. The publication of the registration will contain a reference to the earlier publication.
Article 39 CTMR Rule 12 CTMIR
When the transfer relates to a CTM application that has not been published, the publication pursuant to Article 39 CTMR and Rule 12 CTMIR will contain the name of the new proprietor without any indication that the application has been transferred. This also applies when the transfer of an unpublished CTM application is a partial transfer.
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7 Transfers for Registered Community Designs
Article 1(3), Articles 27, 28, 33, 34, Article 107(2)(f) CDR Article 23, Article 61(2), Articles 68(1)(c), 69(2)(i) CDIR Annex Nos 16, 17 CDFR
The legal provisions contained in the CDR, CDIR and CDFR for transfers correspond to the respective provisions in the CTMR, CTMIR and CTMFR.
Therefore, both the legal principles and the procedure for recording trade mark transfers apply mutatis mutandis to Community designs.
There are only a few exceptions and specificities, which are detailed below.
7.1 Rights of prior use for an RCD
Article 22(4) CDR
The right of prior use for an RCD cannot be transferred except where the third person, who owned the right before the filing or priority date of the application for an RCD, is a business, along with that part of the business in the course of which the act was done or the preparations were made.
7.2 Fees
Annex Nos 16, 17 CDFR
The fee of EUR 200 for recording a transfer applies per design and no t per multiple application. The same is true for the ceiling of EUR 1 000 if multiple requests are submitted.
Example 1: Out of a multiple application for 10 designs, 6 designs are transferred to the same successor in title. The fee is EUR 1 000 provided either that only one application to record these 6 t ransfers is filed or that several applications to record transfers are filed on the same day.
Example 2: Out of a multiple application for 10 designs, 5 designs are transferred to the same successor in title. The transfer refers also to another design not contained in that multiple application. The fee is EUR 1 000 provided that:
• only one application to record these 6 transfers is filed or several requests are filed on the same day, and
• the holder of the Community design and t he successor in title is the same in all 6 cases.
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8 Transfers for International Trade Marks
The Madrid System allows for the ‘change of ownership’ of an international registration. All applications to record a change in ownership should be s ubmitted on form MM5 either directly to the International Bureau by the holder on record or to the national Office of the holder on record or to the national Office of the new proprietor (transferee). The application to record a transfer cannot be filed directly with the International Bureau by the new proprietor. OHIM’s own Recordal Application form should not be used.
Detailed information on changes in ownership can be found in paras B.II.60.01-67.02 of the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (www.wipo.int/madrid/en/guide/).
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 3
CTMs AS OBJECTS OF PROPERTY
CHAPTER 2
LICENCES
Licences
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Table of Contents
1 Introduction................................................................................................ 4 1.1 Licence contracts.......................................................................................4 1.2 Advantages of the registration of a licence..............................................5
2 Registration of a Licence for a CTM or CTMA......................................... 5 2.1 Form, requests for more than one licence................................................6 2.2 Languages ..................................................................................................6 2.3 Fees.............................................................................................................6 2.4 Applicants and mandatory content of the application.............................7
2.4.1 Applicants ....................................................................................................... 7 2.4.2 Mandatory indications concerning the licenced CTM and the licensee ......... 7 2.4.3 Requirements concerning the person who makes the request –
Signature, proof of the licence, representation............................................... 8 2.4.4 Representation ............................................................................................. 10
2.5 Optional contents of the request.............................................................10 2.6 Examination of the request for registration............................................11
2.6.1 Fees.............................................................................................................. 11 2.6.2 Examination of the mandatory formalities .................................................... 12 2.6.3 Examination of optional elements ................................................................ 13
2.7 Registration procedure and publications ...............................................14
3 Cancellation or Modification of a Licence for a CTM or a CTMA......... 15 3.1 Competence, languages, presentation of the request ...........................15 3.2 Person making the request......................................................................16
3.2.1 Cancellation of a licence............................................................................... 16 3.2.2 Modification of a licence ............................................................................... 16
3.3 Contents of the request ...........................................................................17 3.4 Fees...........................................................................................................17
3.4.1 Cancellation of a licence............................................................................... 17 3.4.2 Modification of a licence ............................................................................... 18
3.5 Examination of the request......................................................................18 3.5.1 Fees.............................................................................................................. 18 3.5.2 Examination by the Office............................................................................. 18
3.6 Registration and publication ...................................................................19
4 Transfer of a Licence for a CTM or CTMA ............................................. 19 4.1 Definition of the transfer of a licence......................................................19 4.2 Applicable rules........................................................................................19
5 Registration of Licences for Registered Community Designs ............ 20 5.1 Registered Community designs ..............................................................20
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5.2 Multiple applications for registered Community designs...................... 20
6 Registration of Licences for International Trade Marks....................... 21
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1 Introduction
Articles 22, 23, 24 CTMR Articles 27, 32, 33 CDR
Registered Community trade marks (CTMs), as well as Community trade mark applications (CTMAs), may be the subject of licensing contracts (licences).
Registered Community designs (RCDs), as well as applications for a registered Community design, may be the subject of licences.
Paragraphs 1 to 4 below deal with trade mark licences concerning CTMs and CTMAs. The provisions in the CDR and CDIR dealing with design licences are almost identical to the equivalent provisions of the CTMR and C TMIR respectively. Therefore, the following applies mutatis mutandis to Community designs. Exceptions and specificities to Community designs are detailed in paragraph 5 below. Exceptions and specificities to international trade marks are laid down under paragraph 6 below.
1.1 Licence contracts
A trade mark licence is a contract by virtue of which the proprietor or applicant, (hereinafter referred to as the “proprietor”) of a t rade mark (the licensor), whilst retaining his proprietorship, authorises a third person (the licensee) to use the trade mark in the course of trade, under the terms and conditions set out in the contract.
A licence refers to a situation where the rights of the licensee in the CTM arise from a contractual relationship with the proprietor. The proprietor’s consent to, or tolerance of, a third party using the trade mark does not amount to a licence.
Article 16 CTMR
The CTMR does not have the competence to establish unified and complete provisions applicable to licences for CTMs or CTMAs. Rather, Article 16 CTMR refers to the law of a Member State, as far as the acquisition, validity and effects of the CTM as an object of property are concerned. To this end, a licence for a CTM is, in its entirety and for the whole territory of the European Union, assimilated to a licence for a trade mark registered in the Member State in which the CTM proprietor or applicant has its seat or its domicile. If the proprietor does not have a seat or domicile in a Member State, it will be dealt with as a licence for a trade mark registered in the Member State in which the proprietor has an establishment. If the proprietor does not have an establishment in a Member State, it will be dealt with as a licence for a trade mark registered in Spain.
This, however, applies only to the extent that Articles 17 to 24 CTMR do not provide otherwise.
Article 16 CTMR is limited to the effects of a licence as an object of property and does not extend to contract law. Article 16 CTMR does not govern the applicable law or the validity of a licensing contract, which means that the freedom of the contracting parties to submit the licensing contract to a given national law is not affected by the CTMR.
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1.2 Advantages of the registration of a licence
Articles 22(5), 23(1), (2), 50(3) CTMR
It is not compulsory to request an entry in the Register when there is a licence agreement. Moreover, when a party to proceedings before the Office has to prove use of a Community trade mark, if such use has been made by a licensee, it is not necessary for the licence to have been ent ered in the Register for that use to be deemed to be use with the proprietor’s consent pursuant to Article 15(2) CTMR.. However, such a registration has particular advantages.
a) In view of the provision of Article 23(1) CTMR, vis-à-vis third parties who might have acquired, or have entered in the Register, rights in the trade mark which are incompatible with the registered licence, the licensee may avail itself of the rights conferred by this licence only:
• if the licence was entered in the CTM Register, or
• in the absence of registration of the licence, if the third party had acquired such rights after the date of any legal acts such as referred to in Articles 17, 19 and 22 CTMR (such as a transfer, a right in rem or a previous license) knowing of the existence of the licence.
b) In the case where a licence for a CTM is entered in the Register, the surrender or partial surrender of that mark by its proprietor will only be entered in the Register if the proprietor establishes that it has informed the licensee of its intention to surrender.
The holder of a licence which is registered has, therefore, the right to be informed in advance by the proprietor of the trade mark of its intention to surrender the trade mark.
c) In the case where a licence for a Community trade mark is entered in the Register, the Office will notify the licensee at least six months before the expiry of the registration that the registration is approaching expiry. The Office will also notify the licensee of any loss of rights and of the expiry of the registration, where applicable.
d) Registering licences and their modification and/or cancellation is important for maintaining the veracity of the Register, particularly in the event of inter partes proceedings.
2 Registration of a Licence for a CTM or CTMA
Article 22(5) CTMR Rules 33, 34, Rule 84(3)(j) CTMIR
Both CTMAs and CTMs may be the subject of the registration of a licence.
The application for registration of a licence must comply with the following conditions.
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2.1 Form, requests for more than one licence
Rules 83(1)(e), 95(a) and (b) CTMIR
It is strongly recommended that the request for registration of a licence for a CTM be submitted on t he Office’s Recordal Application form. This form is available free of charge in the official languages of the European Union. It can be dow nloaded from OHIM’s website.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 2.2 below. This concerns, in particular, the list of goods and services and/or the territory.
Rules 31(7), 33(1) CTMIR
A single request for the registration of a licence in respect of two or more registered CTMs or CTMAs may be made only if the respective registered proprietor and the licensee are the same and the contracts have the same conditions, limitations and terms in each case (see paragraph 2.5 below).
2.2 Languages
Rule 95(a) CTMIR
The application for the registration of a licence for a CTM application may be made in the first or second language of the CTMA.
Rule 95(b) CTMIR
The application for the registration of a licence for a registered CTM must be made in one of the five languages of the Office, namely, English, French, German, Italian or Spanish.
2.3 Fees
Article 162(2)(c), (d) CTMR Rule 33(1), (4) CTMIR Article 2(23) CTMFR
The application for the registration of a licence is considered not to have been made until the fee is paid. The amount of this fee is EUR 200 for each CTM for which the registration of a licence is requested.
However, where several registrations of licences have been r equested in one s ingle request and the respective registered proprietor and the licensee are the same and the contractual terms are the same in all cases, the fee is limited to a maximum of EUR 1 000.
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The same maximum amount applies where several registrations of licences are applied for at the same time, provided that they could have been filed in one single request and where the respective registered proprietor and the licensee are the same in all cases. Furthermore, the contractual terms must be t he same. For example, an exclusive licence and a non-exclusive licence cannot be filed in the same request, even if they are between the same parties.
Once the corresponding fee is paid, the fee will not be reimbursed if the application for registration of the licence is refused or withdrawn.
2.4 Applicants and mandatory content of the application
2.4.1 Applicants
Article 22(5) CTMR
The registration of a licence may be requested at the Office by:
a) the proprietor of the CTM, or
b) the proprietor of the CTM jointly with the licensee, or
c) the licensee.
The formal conditions with which the request must comply depend on who is making the request. It is recommended that the first or the second of these options be used, since these allow for a speedier and smoother treatment of the request for registration of the licence.
2.4.2 Mandatory indications concerning the licenced CTM and the licensee
Rule 31, Rule 33(1) CTMIR
The request for registration of a licence must contain the following information:
Rule 31(1)(a), Rule 33(1) CTMIR
a) the registration number of the CTM concerned. If the request relates to several CTMs, each of the numbers must be indicated.
Rules 1(1)(b), 31(1)(b), Rule 33(1) CTMIR
b) the licensee’s name, address and nationality and the State in which it is domiciled or has its seat or an establishment.
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Rule 1(1)(e), Rules 31(2), 33(1) CTMIR
c) if the licensee designates a r epresentative, the representative’s name and ID number allocated by the Office should be indicated. If the representative has not yet been assigned an ID number, the business address must be indicated.
2.4.3 Requirements concerning the person who makes the request – Signature, proof of the licence, representation
Rule 79, Rule 82(3) CTMIR
The requirements concerning signature, proof of the licence and r epresentation vary depending on the person who makes the request. Where the requirement of a signature is referred to, in electronic communications, the indication of the sender’s name shall be deemed to be equivalent to the signature.
2.4.3.1 Request made by the CTM proprietor alone
Rule 1(1)(b), Rule 33(1) CTMIR
When a request is made by the CTM proprietor alone, it must be signed by the CTM proprietor
No proof of the licence is necessary.
The Office will not inform the licensee that the registration of the licence has been requested. It will, however, inform the licensee when the licence is recorded in the Register.
Where the licensee files a statement with the Office in which it opposes the registration of the licence, the Office will transmit the statement to the CTM proprietor for information purposes only. The Office will not take any further action on the statement but will register the licence. Following the registration of the licence, any licensee who disagrees with the registration of the licence may use the procedure for requesting the cancellation or amendment of the licence (see paragraph 3 below).
The Office will not take into account whether or not the parties, although having agreed on a licence contract, have agreed to register it at the Office. Any dispute on whether or not and in what manner the licence shall be registered is a matter that must be resolved among the parties concerned under the rules of the relevant national law (Article 16 CTMR).
2.4.3.2 Request made jointly by the CTM proprietor and the licensee
When the request is made jointly by the CTM proprietor and its licensee, it must be signed both by the CTM proprietor and the licensee.
In this case, the signature of both parties constitutes proof of the licence.
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Where there is a formal deficiency regarding the signature of the licensee or regarding the representative, the request will still be accepted as long as it would have also been acceptable if it had been presented by the CTM proprietor alone.
The same applies where there is a de ficiency regarding the signature of the CTM proprietor or regarding its representative but where the request would have been acceptable if it had been presented by the licensee alone.
2.4.3.3 Request made by the licensee alone
The request may also be made by the licensee alone. In this case, it must be signed by the licensee.
In addition, proof of the licence must be submitted.
2.4.3.4 Proof of the licence
There is sufficient proof of the licence if the request for registration of the licence is accompanied by any of the following evidence.
• A declaration that the CTM proprietor agrees to the registration of the licence, signed by the CTM proprietor or its representative.
In accordance with Rule 31(5)(a) CTMIR, it is also considered sufficient proof if the request for registration of the licence is signed by both parties. This case has already been dealt with in paragraph 2.4.3.2 above.
• The licence agreement, or an ex tract therefrom, indicating the parties and the CTM being licensed and bearing their signatures.
It suffices if the licence agreement is filed. In many instances, the parties to the licence agreement will not wish to disclose all the details, which may contain confidential information on the licence royalties or other terms and conditions of the licence. In these cases, it suffices if only a part or an extract of the licence agreement is submitted, as long as it contains the identification of the persons who are parties to the licence agreement, the fact that the CTM in question is the subject of a licence and the signatures of both parties. All other elements may be omitted or blacked out.
• An uncertified statement of licence using the complete WIPO Model International Form for the Request for Recordal of a License (found in the annex to the Joint Recommendation concerning trade mark licenses adopted by The Assembly of the Paris Union and the General Assembly of WIPO on 25/09-03/10/2000). The form must be signed by both the CTM proprietor, or its representative, and the licensee, or its representative. It can be found at:
https://www.wipo.int/export/sites/www/about-ip/en/development_iplaw/pdf/pub835a.pdf.
It suffices if an uncertified statement of licence on the WIPO model form is filed.
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Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient. The original or photocopy does not need to be authenticated or legalised.
Rule 95(a), (b), Rule 96(2) CTMIR
The evidence of the licence must be:
a) in the language of the Office which has become the language of the proceedings for the registration of the licence, see paragraph 2.1 above;
b) in any official language of the European Union other than the language of the proceedings; in this case the Office may require a translation of the document into a language of the Office to be filed within a period specified by the Office.
Where the supporting documents are not submitted in either an official language of the European Union or in the language of the proceedings, the Office may require a translation into the language of the proceedings or, at the choice of the party requesting the registration of the licence, into any language of the Office. The Office will fix a time limit of two months from the date of notification of that communication. If the translation is not submitted within that time limit, the document will not be taken into account and will be deemed not to have been submitted.
2.4.4 Representation
Articles 92(2), 93(1) CTMR
The general rules on representation apply (see the Guidelines, Part A, General Rules, Section 5, Professional Representation).
Where the recordal applicant has no domicile or principal place of business or a real and effective industrial or commercial establishment inside the European Union and has made the request alone, failure to fulfil the requirement of representation will lead to the request not being processed. The recordal applicant will be notified in the form of an information letter and any fees paid will be refunded. The recordal applicant is then free to submit a new request.
2.5 Optional contents of the request
Rule 34 CTMIR
Depending on t he nature of the licence, the request for registration may contain the request to register the licence together with other indications, namely those referred to under paragraphs a) to e) below. These indications may be individual or in any combination, for one l icence (e.g. an exclusive licence limited in time) or for several licences (e.g. one exclusive licence for A as regards Member State X and another for B as regards Member State Y). They are entered in the Register by the Office only if the request for registration of the licence itself clearly requests that they be registered. Without such an explicit request, the Office will not enter in the Register any indications
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contained in the licence agreement that are submitted, for example, as evidence of the licence.
However, if one or more of these indications are requested to be entered in the Register, the following details must be indicated.
Rule 34(1)(c), (2) CTMIR
a) Where registration of a licence limited to only some of the goods or services is requested, the goods or services for which the licence has been granted must be indicated.
Rule 34(1)(d), (2) CTMIR
b) Where the request is to register the licence as a territorially limited licence, the request must indicate the part of the European Union for which the licence has been granted. A part of the European Union may consist of one or several Member States or one or several administrative districts in a Member State.
Article 22(1) CTMR Rule 34(1)(a) CTMIR
c) Where registration of an exclusive licence is sought, a s tatement to this effect must be made in the request for registration.
Rule 34(1)(e) CTMIR
d) Where the registration of a l icence granted for a limited period of time is requested, the expiry date of the licence must be specified. In addition, the date of the commencement of the licence may be indicated.
Rule 34(1)(b) CTMIR
e) Where the licence is granted by a licensee whose licence is already entered in the Register of CTMs, the request for registration may indicate that it is for a sub- licence. Sub-licences cannot be recorded without first recording the parent licence.
2.6 Examination of the request for registration
2.6.1 Fees
Rule 33(2) CTMIR
Where the required fee has not been received, the Office will notify the recordal applicant that the request is deemed not to have been filed because the relevant fee has not been paid. However, a new request may be submitted at any time providing the correct fee is paid from the outset.
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2.6.2 Examination of the mandatory formalities
Rule 33(3) CTMIR
The Office will check whether the request for registration of the licence complies with the formal conditions mentioned in paragraph 2.4 above (indication of the CTM number(s), the required information concerning the licensee, the representative of the licensee where applicable).
The validity of the licence agreement will not be examined.
Article 93(1) CTMR Rules 33, 76, 77 CTMIR
The Office will check whether the request for registration of the licence has been duly signed. Where the request is signed by the licensee’s representative, an authorisation may be required by the Office or, in the context of inter partes proceedings, by the other party to those proceedings. In this event, if no authorisation is submitted, the proceedings will continue as if no representative had been appointed. Where the request for registration of the licence is signed by the proprietor’s representative who has already been des ignated as the representative for the CTM in question, the requirements relating to signature and authorisations are fulfilled.
Articles 92(2), 93(1) CTMR
The examination will include whether the recordal applicant (i.e. the CTM proprietor or the licensee) is obliged to be represented before the Office (see paragraph 2.4.4 above).
Rule 33(3) CTMIR
The Office will inform the recordal applicant in writing of any deficiencies in the application. If the deficiencies are not remedied within the time limit fixed in that communication, which will normally be two months following the date of the notification, the Office will reject the request for registration of the licence.
Where the request has been made jointly by the CTM proprietor and the licensee, the Office will communicate with the CTM proprietor and send a copy to the licensee.
Where the licensee has also made and signed the request, it will not be al lowed to contest the existence or scope of the licence.
Where the request for registration of the licence is filed by the CTM proprietor alone, the Office will not inform the licensee of the recordal request. The examination of proof of the licence will be done ex officio. The Office will disregard any statements or allegations of the licensee regarding the existence or scope of the licence or its registration; the licensee cannot oppose the registration of a licence.
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Rule 33(3) CTMIR
If the request is filed by the licensee on the basis of a copy of the licence contract, and where the Office has reasonable doubts as to the veracity of the documents, it will write to the licensee inviting it to remove those doubts. The licensee will then have the burden of proving that the licence exists, that is, it has to convince the Office of the veracity of the documents and their contents. In such a case, the Office may, within the scope of its ex officio power of examination (Article 76(1) CTMR), invite the CTM proprietor to submit observations. If the proprietor claims that the documents are falsified, this will be enough for the Office to reject the registration of a licence unless the licensee produces a final Court order from an E U Member State in its favour. Where the doubts cannot be removed, the registration of the licence will be refused. In such a case, the procedure always remains ex parte even though the CTM proprietor is heard; it is not a party to the proceedings.
2.6.3 Examination of optional elements
Rule 34 CTMIR
Where it is requested that the licence be registered as one of the following:
• an exclusive licence, • a temporary licence, • a territorially limited licence, • a licence limited to certain goods or services, or • a sub-licence,
the Office will examine whether the particulars mentioned in paragraph 2.4 above are indicated.
Rule 34(1), (2) CTMIR
As concerns the indication ‘exclusive licence’, the Office will only accept this term and will not accept any other wordings. If ‘exclusive licence` is not expressly indicated, the Office will consider the licence to be non-exclusive.
Where the request for the registration indicates that it is for a licence limited to certain goods or services covered by the CTM, the Office will check whether the goods and services are properly grouped and are actually covered by the CTM.
Rule 34(1)(b) CTMIR
As concerns a sub-licence, the Office will check whether it has been granted by a licensee whose licence is already entered in the Register. The Office will refuse the registration of a s ub-licence when the main licence has not been entered in the Register. However, the Office will not check the validity of the request for the registration of a sub-licence as an exclusive licence when the main licence is not an exclusive licence nor will it examine whether the main licence contract excludes granting sub-licences.
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It is up to the licensor to pay attention not to conclude and t o register incompatible contracts and to cancel or modify recordals that are no longer valid. For example, if an exclusive licence has been registered without limitation as to the goods and the territory, and the registration of another exclusive licence is requested, the Office will register that second licence, even though both licenses seem incompatible at first sight. It is to be assumed that the second licence contract is compatible with the first licence contract either from the very beginning (and the recordal is simply not precise as to the territory or the goods) or following a change in the contractual situation which was not communicated to the Register for Community trade marks.
Parties are, however, encouraged to update all register information regularly and swiftly by means of the cancellation or modification of existing licences (see paragraph 3 below).
Article 22(1) CTMR Rules 33(3), 34( CTMIR
If the particulars mentioned in paragraph 2.5 are missing, the Office will invite the recordal applicant for registration of the licence to submit the supplementary information. If the recordal applicant does not reply to that communication, the Office will not take into account the abovementioned indications and will register the licence without mentioning them. The recordal applicant will be notified of this by an appealable decision.
2.7 Registration procedure and publications
Rule 33(4) CTMIR
As concerns CTMAs, the licence will be mentioned in the files kept by the Office for the Community trade mark application concerned.
Rule 84(3)(j), Rule 85(2) CTMIR
When the mark is registered, the licence will be published in the Community Trade Marks Bulletin and mentioned in the Community Trade Marks Register.
Rule 84(5) CTMIR
The Office will notify both parties of the entry of the licence in the files kept by the Office. Where both parties have named a common representative, this representative will be notified.
Article 22(5) CTMR Rule 84(3)(j), Rule 85(2) CTMIR
As concerns CTMs, the Office will enter the licence in the Community Trade Marks Register and publish it in the Community Trade Marks Bulletin.
Where applicable, the entry in the Register will mention that the licence is:
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• an exclusive licence, • a temporary licence, • a territorially limited licence, • a sub-licence, or • a licence limited to certain goods or services covered by the CTM.
Only these bare facts will be mentioned. The following details will not be published:
• the period of validity of a temporary licence, • the territory covered by a territorially limited contract, • the goods and services covered by a partial licence.
Access to this information may be obtained through inspection of files (see the Guidelines, Part E, Register Operations, Section 5, Inspection of Files).
Licences are published in part C.4. of the Bulletin.
Rule 84(5) CTMIR
The Office will inform the recordal applicant of the registration of the licence. When the request for registration of the licence was filed by the licensee, the Office will also inform the CTM proprietor of the registration.
3 Cancellation or Modification of a Licence for a CTM or a CTMA
Rule 35(1) CTMIR
The registration of a l icence will be c ancelled or modified on t he request of an interested party, that is, the applicant or proprietor of the CTM or the registered licensee.
The Office will refuse the cancellation, transfer and/or modification of a licence or a sub-licence when the main licence has not been entered in the Register.
3.1 Competence, languages, presentation of the request
Article 133 CTMR Rule 35(3), (6), (7) CTMIR
Paragraphs 2.1 and 2.2 above are applicable.
It is strongly recommended that the request for cancellation of a licence be presented on the Recordal Application form. This form is available free of charge in the official languages of the European Union. It can be downloaded from OHIM’s website. Parties to the proceedings may also use the WIPO Model International Form No 1, Request for Amendment/Cancellation of a Li cense, which can be do wnloaded at https://www.wipo.int/export/sites/www/about-ip/en/development_iplaw/pdf/pub835a.pdf, or a form with a similar content and format.
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3.2 Person making the request
Rule 35(1) CTMIR
The request for the cancellation or modification of the registration of a licence may be filed by:
a) the applicant or proprietor of the CTM and the licensee jointly,
b) the applicant or proprietor of the CTM, or
c) the registered licensee.
3.2.1 Cancellation of a licence
Rule 35(4) CTMIR
In the case of a joint request filed by the CTM applicant or proprietor and the licensee, or of a request filed by the licensee, no proof for the cancellation of the licence is required since this implies a s tatement from the licensee that it consents to the cancellation of the registration of the licence. When the request for cancellation is filed by the CTM applicant or proprietor, alone, the request must be ac companied by evidence establishing that the registered licence no longer exists or by a dec laration from the licensee to the effect that it consents to the cancellation.
Where the registered licensee makes the request for cancellation alone, the CTM applicant or proprietor will not be informed of this request. Any observations filed by the proprietor will be forwarded to the licensee but will not preclude the cancellation of the licence. Paragraph 2.4.3.1 applies mutatis mutandis.
If the CTM proprietor alleges fraud on the part of the licensee, it must provide a final Court order to this effect. In fact it is not up to the Office to carry out any investigation in that respect.
Where several licences have been r equested simultaneously, it is possible to cancel one of these licences individually. In such a case a new entry number will be created in respect of the cancelled licence.
The entry in the Register of licences which are limited in time, that is, temporary licences, does not automatically expire and must instead be cancelled from the Register.
3.2.2 Modification of a licence
Rule 35(6) CTMIR
In the case of a joint request from the CTM applicant or proprietor and the licensee, no further proof for the amendment of the licence is required.
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If the request is made by the CTM applicant or proprietor, proof of the amendment of the licence is required only where the amendment for which entry in the Register is sought is of such a nature that it would diminish the rights of the registered licensee under the licence. This would be t he case, for example, where the licensee’s name were to change, where an exclusive licence were to become a non-exclusive licence, or where the licence were to become restricted regarding its territorial scope, the period of time for which it is granted, or the goods or services to which it applies.
If the request is made by the registered licensee, proof of the amendment of the licence is required only where the amendment for which entry in the Register is sought is of such a nat ure that it would extend the rights of the registered licensee under the licence. This would be the case, for example, where a non-exclusive licence were to become an exclusive licence, or where any registered restrictions of the licence as to its territorial scope, to the period of time for which it is granted, or to the goods or services to which it applies, were to be cancelled fully or in part.
If proof of the amendment of the licence is necessary, it is sufficient if any of the documents referred to above in paragraph 2.4.3.4 are submitted, subject to the following requirements.
• The written agreement must be signed by the other party to the licence contract and must relate to the registration of the amendment of the licence as requested.
• The Request for Amendment/Cancellation of a License must indicate how the licence has been amended.
• The copy or extract of the licence agreement must be of the licence as amended.
3.3 Contents of the request
Rules 26, 35 CTMIR
Paragraph 2.4 applies, save that the data concerning the licensee need not be indicated except in the case of a modification of the registered licensee’s name.
Paragraph 2.5 applies if a modification of the scope of the licence is requested, for example, if a l icence becomes a temporary licence or if the geographical scope of a licence is changed.
3.4 Fees
3.4.1 Cancellation of a licence
Article 162(2) CTMR Rule 35(3) CTMIR Article 2(24) CTMFR
The request for the cancellation of the registration of a licence is not deemed to have been filed until the required fee is paid, which amounts to EUR 200 for each CTM for which the cancellation is requested. Where several cancellations are requested
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simultaneously or within the same request, and where the respective CTM applicant or proprietor and the licensee are the same in each case, the fee is limited to a maximum of EUR 1 000.
Once the corresponding fee has been paid, the fee will not be reimbursed if the request is refused or withdrawn.
3.4.2 Modification of a licence
Rule 35(6) CTMIR
The modification of the registration of a licence is not subject to a fee.
3.5 Examination of the request
3.5.1 Fees
Rule 35(3) CTMIR
Where the required fee for the request for the cancellation of a licence has not been received, the Office will notify the recordal applicant that the request is deemed not to have been filed.
3.5.2 Examination by the Office
Rule 35(2), (4) CTMIR
As for the mandatory elements of the request, paragraph 2.6.2 applies mutatis mutandis, including in respect of proof of the licence, to the extent that such proof is required.
The Office will notify the recordal applicant of any deficiency, setting a time limit of two months. If the deficiencies are not remedied, the Office will refuse the request for cancellation or modification.
Rules 35(6), 84(5) CTMIR
Paragraph 2.6.3 applies to the extent that the modification of the licence would affect its nature or its limitation to a part of the goods and services covered by the CTM/CTMA.
The registration of the cancellation or modification of the licence will be communicated to the person who made the request; if the request was filed by the licensee, the CTMA applicant or CTM proprietor will receive a copy of that communication.
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3.6 Registration and publication
Rule 84(3)(s), Rule 85(2) CTMIR
In the case of a registered CTM, the creation, cancellation or modification will be entered in the Register of Community Trade Marks and publ ished in the Community Trade Marks Bulletin under C.4.
In the case of a CTM application, the cancellation or modification of the licence will be mentioned in the files of the CTM application concerned. When the registration of the CTM is published, no publications will be made in respect of licences that have been cancelled, and in the case of the modification of the licence, the data as modified will be published under C.4.
4 Transfer of a Licence for a CTM or CTMA
4.1 Definition of the transfer of a licence
Article 22(5) CTMR
A licence concerning a CTMA or a CTM may be transferred. The transfer of a licence is different from a sub-licence insofar as the former licensee loses all its rights under the licence, and will be replaced by a new licensee, whereas in the case of a sub-licence, the main licence remains in force. Likewise, the transfer of a l icence is different to a change of name of the owner where no c hange of ownership is implied (see the Guidelines, Part E, Section 3, CTMs as Objects of Property, Chapter 1, Transfer).
4.2 Applicable rules
Rule 33(1) CTMIR
The procedure for the registration of a transfer of a l icence follows the same rules as the registration of a licence set out in paragraphs 2 and 3 above.
Rule 33(1), (4) CTMIR Article 2(23)(b) CTMFR
The transfer of a l icence is subject to the payment of a fee. Paragraph 2.3 above applies mutatis mutandis.
To the extent that a declaration or a signature of the CTMA applicant or CTM proprietor is required in accordance with the rules, its place shall be t aken by a declaration or signature of the registered licensee (the former licensee).
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5 Registration of Licences for Registered Community Designs
Articles 27, 32, 33, Article 51(4) CDR Articles 24, 25, 26, Article 27(2) CDIR Annex Nos 18, 19 CDFR
The legal provisions contained in the CDR, CDIR and CDFR for licences correspond to the respective provisions in the CTMR, CTMIR and CTMFR.
Therefore, both the legal principles and the procedure for the registration, cancellation or amendment of trade mark licences apply mutatis mutandis to Community designs, save for the following exceptions and specificities.
5.1 Registered Community designs
There is no use requirement in the Community design law, so that the issue of whether use by a licensee is use with the consent of the right holder does not arise.
The CDR and C DIR require the indication of the products in which the design is intended to be incorporated or applied.
A partial licence for only some products in which the design is intended to be incorporated or applied is not possible. It is not possible to register a licence for a registered Community design for only part of the products it covers.
Any such limitations of the scope of the licence will be disregarded by the Office, and the licence will be registered as if the restriction were not present.
5.2 Multiple applications for registered Community designs
Article 37 CDR Article 24(1) CDIR
An application for a registered Community design may be in the form of a multiple application containing several designs.
For the purposes of the legal effect of licences, as well as of the procedure for registering licences, the individual designs contained in a multiple application shall be dealt with as if they were separate applications, and the same continues to apply after registration of the designs contained in the multiple application.
In other words, each design contained in a multiple application may be l icensed independently of the others.
The optional indications as to the kind of licence and t he procedure for their examination referred to above in paragraphs 2.5 and 2.6.1 (with the exception of a licence limited to some products, which is not possible) apply to each of the individual designs contained in a multiple application separately and independently.
Licences
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Annex Nos 18, 19 CDFR
The fee of EUR 200 for the registration of a l icence, the transfer of a l icence or the cancellation of a licence applies per design and not per multiple application. The same is true for the ceiling of EUR 1 000 if multiple requests are submitted.
Example 1: Out of a multiple application for 10 designs, 6 designs are licensed, in favour of the same licensee. The fee is EUR 1 000 provided that one single request for registration of these 6 licences is submitted or several requests are submitted on the same day. The request may indicate that for three out of these six designs the licence is an exclusive licence, without affecting the fees to be paid.
Example 2: Out of a multiple application for 10 designs, 5 designs are licensed in favour of the same licensee. A licence is also granted for another design not contained in that multiple application. The fee is EUR 1 000 provided that
• one single request for registration of these 6 l icences is submitted or several requests are submitted on the same day, and
• the holder of the Community design and the licensee are the same in all 6 cases.
6 Registration of Licences for International Trade Marks
The Madrid System allows for the recording of licences against an international registration. All requests for recording a l icence should be s ubmitted on form MM13 either directly to the International Bureau by the recorded holder or through the Office of the recorded holder or through the Office of a contracting party in respect of which the licence is granted or through the Office of the licensee. The request cannot be submitted directly to the International Bureau by the licensee. The Office’s own Recordal Application form should not be used.
Detailed information on the recording of licences can be found in Sections B.II.93.01 to 99.04 of the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (www.wipo.int/madrid/en/guide/). For further information on international trade marks, see the Guidelines, Part M.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 3
CTMs AS OBJECTS OF PROPERTY
CHAPTER 3
RIGHTS IN REM
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Table of Contents
2 Requirements for a Request for the Registration of a Right in Rem..... 5 2.1 Application form and requests for more than one right in rem...............5 2.2 Languages ..................................................................................................5 2.3 Fees.............................................................................................................6 2.4 Applicants and mandatory content of the application.............................6
2.4.1 Applicants ....................................................................................................... 6 2.4.2 Mandatory indications concerning the CTM and the pledgee ........................ 6 2.4.3 Requirements concerning the person who submits the request –
signature, proof of the right in rem, representation ........................................ 7 2.4.3.1 Request submitted by the CTM proprietor alone .........................................7 2.4.3.2 Request submitted jointly by the CTM proprietor and the pledgee..............8 2.4.3.3 Request submitted by the pledgee alone ....................................................8 2.4.3.4 Proof of the right in rem...............................................................................8
2.4.4 Representation ............................................................................................... 9
2.5 Examination of the request for registration..............................................9 2.5.1 Fees................................................................................................................ 9 2.5.2 Examination of the mandatory formalities .................................................... 10
2.6 Registration procedure and publications ...............................................11
3 Procedure for the Cancellation or Modification of the Registration of a Right in Rem ......................................................................................... 12 3.1 Competence, languages, submission of the request.............................12 3.2 Person submitting the request ................................................................12
3.2.1 Cancellation of the registration of a right in rem........................................... 12 3.2.2 Modification of the registration of a right in rem ........................................... 13
3.3 Contents of the request ...........................................................................14 3.4 Fees...........................................................................................................14
3.4.1 Cancellation of the registration of a right in rem........................................... 14 3.4.2 Modification of the registration of a right in rem ........................................... 14
3.5 Examination of the request......................................................................14 3.5.1 Fees.............................................................................................................. 14 3.5.2 Examination by the Office............................................................................. 14
3.6 Registration and publication ...................................................................15
4 Procedure for the Transfer of a Right in Rem ....................................... 15 4.1 Provision for the transfer of a right in rem .............................................15 4.2 Applicable rules........................................................................................15
5 Rights in Rem for Registered Community Designs.............................. 16 5.1 Multiple applications for registered Community designs...................... 16
6 Rights in Rem for International Trade Marks ........................................ 17
Rights in Rem
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1 Introduction
Article 19 CTMR Rules 33, 35 CTMIR Article 24 CDR
Both registered Community trade marks (CTMs) and Community trade mark applications (CTMAs) may be the subject of rights in rem.
Both registered Community designs (RCDs) and registered Community design applications may be the subject of rights in rem.
Paragraphs 1 to 4 of this chapter deal with rights in rem concerning CTMs and CTMAs. The provisions in the CDR and CDIR dealing with rights in rem concerning designs are almost identical to the equivalent provisions of the CTMR and C TMIR respectively. Therefore, the following applies mutatis mutandis to Community designs. Procedures specific to Community designs are detailed in paragraph 5 below. Procedures specific to international trade marks are detailed in paragraph 6 below.
A ‘right in rem’ or ‘real right’ is a limited property right which is an absolute right. Rights in rem refer to a legal action directed toward property, rather than toward a particular person, allowing the owner of the right the opportunity to recover, possess or enjoy a specific object. These rights may apply to trade marks or designs. They may consist, inter alia, in use rights, usufruct or pledges. ‘In rem’ is different from ‘in personam,’ which is directed toward a particular person.
The most common rights in rem for trade marks or designs are pledges or securities. They secure the repayment of a debt of the proprietor of the trade mark or design (i.e. the debtor) in such a way that, where it cannot repay the debt, the creditor (i.e. the owner of the pledge or security) may receive repayment of the debt by, for example, selling the trade mark or design. Other examples are DE: Pfand, Hypothek; EN: Guarantees, Warranties, Bails and Sureties; ES: Prenda, Hipoteca; FR: Nantissement, Gage, Hypothèque, Garantie, Caution; IT: Pegno, Ipoteca.
There are two types of right in rem that the applicant can ask to be noted in the file or entered in the Register:
• rights in rem that serve the purpose of guaranteeing securities (pledge, charge, etc.)
• rights in rem that do not serve as a guarantee (usufruct).
Article 16 CTMR
The CTMR does not establish unified and complete provisions applicable to rights in rem for CTMs or CTMAs. Rather, Article 16 CTMR refers to the law of a Member State regarding the acquisition, validity and effects of the CTM as an object of property. To this end, a r ight in rem for a CTM is, in its entirety and f or the whole territory of the Community, assimilated to a r ight in rem for a trade mark registered in the Member State in which the CTM proprietor or applicant has its seat or its domicile, or, if this is not the case, to a right in rem for a trade mark registered in the Member State in which the proprietor has an establishment, or if this is not the case, to a right in rem for a
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trade mark registered in Spain (Member State in which the seat of the Office is situated).
This, however, applies only to the extent that Articles 17 to 24 CTMR do not provide otherwise.
Article 16 CTMR is limited to the effects of a right in rem as an object of property, and does not extend to contract law. Article 16 CTMR does not govern the applicable law, or the validity, of a r ight in rem contract, which means that the freedom of the contracting parties to submit the right in rem contract to a given national law is not affected by the CTMR.
Articles 19(2), 23(1) CTMR
It is not compulsory to register rights in rem, nor is registration a condition for considering the use of a trade mark by a pledgee under the terms of the right in rem contract to have been made with the consent of the proprietor pursuant to Article 15(2) CTMR,. However, such a registration has particular advantages.
a) In view of the provision of Article 23(1) CTMR, vis-à-vis third parties who might have acquired or have entered in the Register rights in the trade mark which are incompatible with the registered right in rem, the pledgee may avail itself of the rights conferred by this right in rem only:
• if the right in rem was entered in the Register of Community Trade Marks, or
• in the absence of registration of the right in rem, if the third party had acquired its rights after the date of the acquisition of the rights in rem knowing of the existence of the right in rem.
b) In the event that a right in rem for a C ommunity trade mark is entered in the Register, the surrender of that mark by its proprietor will only be entered in the Register if the proprietor establishes that it has informed the pledgee of its intention to surrender.
The pledgee of a right in rem which is registered has, therefore, the right to be informed in advance by the trade mark’s proprietor of its intention to surrender the trade mark.
c) In the event that a right in rem for a C ommunity trade mark is entered in the Register, the Office will notify the pledgee at least six months before the expiry of the registration that the registration is approaching expiry. The Office will also notify the pledgee of any loss of rights and of the expiry of the registration, where applicable.
d) Recording rights in rem is important for maintaining the veracity of the Register, particularly in the event of inter partes proceedings.
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2 Requirements for a Request for the Registration of a Right in Rem
Article 19(2) CTMR Rule 33, Rule 84(3)(h) CTMIR
Both CTMAs and CTMs may be the subject of the registration of a right in rem.
The application for registration of a r ight in rem must comply with the following conditions.
2.1 Application form and requests for more than one right in rem
Rule 95(a) and (b) CTMIR
It is strongly recommended that the request for registration of a right in rem for a CTM be submitted on the Recordal Application form. This form is available free of charge in the official languages of the European Union. It can be downloaded from OHIM’s website.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 2.2 below.
Rules 31(7), 33(1) CTMIR
A single request for the registration of a right in rem for two or more registered CTMs or CTMAs may be submitted only if the respective registered proprietor and pledgee are the same in each case.
2.2 Languages
Rule 95(a) CTMIR
The application for the registration of a right in rem for a CTMA may be submitted in the first or second language of the CTM application.
Rule 95(b) CTMIR
The application for the registration of a right in rem for a CTM must be submitted in one of the five languages of the Office, namely, English, French, German, Italian or Spanish.
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2.3 Fees
Article 162(2)(c) and (d) CTMR Rule 33(1) and (4) CTMIR Article 2(23) CTMFR
The application for the registration of a r ight in rem is considered not to have been submitted until the fee is paid. The fee is EUR 200 for each Community trade mark for which the registration of a right in rem is requested.
However, where several registrations of rights in rem have been requested in a single request and the registered proprietor and the pledgee are the same in all cases, the fee is limited to a maximum of EUR 1 000.
The same maximum amount applies where several registrations of rights in rem are applied for at the same time, provided that they could have been f iled in a single request and where the registered proprietor and the pledgee are the same in all cases.
Once the corresponding fee is paid, the fee will not be reimbursed if the application for registration of the right in rem is refused or withdrawn (file classified).
2.4 Applicants and mandatory content of the application
2.4.1 Applicants
Article 19(2) CTMR
The registration of a right in rem may be requested by:
a) the proprietor of the CTM, or
b) the proprietor of the CTM jointly with the pledgee, or
c) the pledgee.
The formal conditions with which the request must comply depend on who submits the request. It is recommended that the first or the second of these options be used, since these allow for a speedier and smoother treatment of the request for registration of the right in rem.
2.4.2 Mandatory indications concerning the CTM and the pledgee
Rule 31, Rule 33(1) CTMIR
The request for registration of a right in rem must contain the following information.
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Rule 31(1)(a), Rule 33(1) CTMIR
a) The registration number of the CTM concerned. If the request relates to several CTMs each of the numbers must be indicated.
Rules 1(1)(b), 31(1)(b), Rule 33(1) CTMIR
b) The pledgee’s name, address and nationality and the State in which it is domiciled or has its seat or an establishment.
Rule 1(1)(e), Rules 31(2), 33(1) CTMIR
c) If the pledgee designates a representative, the representative’s name and business address must be i ndicated; the indication of the address may be replaced by the indication of the ID number allocated by the Office.
2.4.3 Requirements concerning the person who submits the request – signature, proof of the right in rem, representation
Rule 79, Rule 82(3) CTMIR
The requirements concerning signature, proof of the right in rem and r epresentation vary depending on the person who submits the request. Where the requirement of a signature is referred to, pursuant to Rule 79 and Rule 82(3) CTMIR, in electronic communications, the indication of the sender’s name will be deemed equivalent to the signature.
2.4.3.1 Request submitted by the CTM proprietor alone
Rule 1(1)(b), Rule 33(1) CTMIR
When a request is submitted on behalf of the CTM proprietor alone, it must be signed by the CTM proprietor.
No proof of the right in rem is necessary.
The Office will not inform the pledgee that the registration of the right in rem has been requested. It will, however, inform the pledgee when the right in rem is recorded in the Register.
Where the pledgee files a statement with the Office in which it opposes the registration of the right in rem, the Office will forward the statement to the CTM proprietor for information purposes only. The Office will not take any further action on s uch a statement. Following the registration of the right in rem, any pledgee who disagrees with the registration of the right in rem may request the cancellation or modification of the registration of the right in rem (see paragraph 3 below).
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The Office will not take into account whether the parties have agreed to register a right in rem contract at the Office. Any dispute on whether or not and in what manner the right in rem should be registered is a matter that must be resolved between the parties concerned under the relevant national law (Article 16 CTMR).
2.4.3.2 Request submitted jointly by the CTM proprietor and the pledgee
When the request is submitted jointly by the CTM proprietor and the pledgee, it must be signed by both parties.
In this case, the signature of both parties constitutes proof of the right in rem.
Where there is a formal deficiency regarding the signature or the representative of the pledgee, the request will still be ac cepted as long as it would have also been acceptable if it had been submitted by the CTM proprietor alone.
The same applies where there is a deficiency regarding the signature or representative of the CTM proprietor but where the request would have been acceptable if it had been submitted by the pledgee alone.
2.4.3.3 Request submitted by the pledgee alone
The request may also be submitted by the pledgee alone. In this case, it must be signed by the pledgee.
In addition, proof of the right in rem must be submitted.
2.4.3.4 Proof of the right in rem
There is sufficient proof of the right in rem if the request for registration of the right in rem is accompanied by any of the following evidence.
• A declaration, signed by the CTM proprietor, that it agrees to the registration of the right in rem.
In accordance with Rule 31(5)(a) CTMIR, it is also considered sufficient proof if the request for registration of the right in rem is signed by both parties. This case has already been dealt with under paragraph 2.4.3.2 above.
• The right in rem contract, or an extract therefrom, indicating the CTM at issue and the parties, and bearing their signatures.
It suffices if the right in rem agreement is submitted. In many instances, the parties to the right in rem contract will not wish to disclose all the details of the contract, which may contain confidential information about the terms and conditions of the pledge. In these cases it suffices if only a part or an extract of the right in rem agreement is submitted, as long as it identifies the parties to the right in rem agreement and the CTM that is subject to a right in rem, and bears the signatures of both parties. All other elements may be omitted or blacked out.
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• An uncertified statement of a right in rem, signed by both the CTM proprietor and the pledgee.
Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient. The original or photocopy does not need to be aut henticated or legalised unless the Office has reasonable doubts as to the veracity of the documents.
Rule 95(a) and (b), Rule 96(2) CTMIR
The evidence of the right in rem must be:
a) in the language of the Office which has become the language of the proceedings for the registration of the right in rem, see paragraph 2.2 above;
b) in any official language of the Community other than the language of the proceedings; in this case the Office may require a t ranslation of the document into a language of the Office to be filed within a period specified by the Office.
Where the supporting documents are not submitted in either an official language of the European Union or in the language of the proceedings, the Office may require a translation into the language of the proceedings or, at the choice of the party requesting the registration of the right in rem, in any language of the Office. The Office will set a time limit of two months from the date of notification of that communication. If the translation is not submitted within that time limit, the document will not be taken into account and will be deemed not to have been submitted.
2.4.4 Representation
Articles 92(2), 93(1) CTMR
The general rules on representation apply (see the Guidelines, Part A, General Rules, Section 5, Professional Representation).
2.5 Examination of the request for registration
2.5.1 Fees
Rule 33(2) CTMIR
Where the required fee has not been received, the Office will notify the recordal applicant that the request is deemed not to have been filed because the relevant fee has not been paid. However, a new request may be submitted at any time providing the correct fee is paid from the outset.
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2.5.2 Examination of the mandatory formalities
Rule 33(3) CTMIR
The Office will check whether the request for registration of the right in rem complies with the formal conditions mentioned in paragraph 2.4 above (indication of the CTM number(s), the required information concerning the pledgee, the representative of the pledgee where applicable).
The validity of the right in rem agreement will not be examined.
Article 93(1) CTMR Rules 33, 76, 77 CTMIR
The Office will check whether the request for registration of the right in rem has been duly signed. Where the request is signed by the pledgee’s representative, an authorisation may be r equired by the Office or, in the context of inter partes proceedings, by the other party to those proceedings. In this event, if no authorisation is submitted, the proceedings will continue as if no representative had been appointed. Where the request for registration of the right in rem is signed by the proprietor’s representative who has already been designated as the representative for the CTM in question, the requirements relating to signature and authorisations are fulfilled.
Articles 92(2), 93(1) CTMR
The examination will include whether the recordal applicant (i.e. the CTM proprietor or the pledgee) is obliged to be r epresented before the Office (see paragraph 2.4.4 above).
Rule 33(3) CTMIR
The Office will inform the recordal applicant in writing of any deficiencies in the application. If the deficiencies are not remedied within the time limit set in that communication, which will normally be two months following the date of the notification, the Office will reject the request for registration of the right in rem.
Where the request has been submitted jointly by the CTM proprietor and the pledgee, the Office will communicate with the CTM proprietor and send a copy to the pledgee.
Where the pledgee has also submitted and signed the request, it will not be allowed to contest the existence or scope of the right in rem agreement.
Where the request for registration of the right in rem is submitted by the CTM proprietor alone, the Office will not inform the pledgee. The examination of evidence of the right in rem will be done ex officio. The Office will disregard any statements or allegations of the pledgee regarding the existence or scope of the right in rem or its registration; the pledgee cannot oppose the registration of a right in rem.
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Rule 33(3) CTMIR
If the request is filed by the pledgee on the basis of a copy of the right in rem agreement, and w here the Office has reasonable doubts as to the veracity of the documents, it will write to the pledgee inviting it to remove those doubts. The pledgee will then have the burden of proving that the right in rem exists, that is, it has to convince the Office of the veracity of the documents. In such a case, the Office may, within the scope of its ex officio power of examination (Article 76(1) CTMR), invite the CTM proprietor to submit observations. If the proprietor claims that the documents are falsified, this will be eno ugh for the Office to reject the registration of a r ight in rem unless the pledgee produces a Court order from an EU Member State in its favour. In any case, if the doubts cannot be removed, the registration of the right in rem will be refused. In such a case, the procedure always remains ex parte even though the CTM proprietor is heard; it is not a party to the proceedings.
2.6 Registration procedure and publications
Rule 33(4) CTMIR
The right in rem for CTMAs will be m entioned in the files kept by the Office for the Community trade mark application concerned.
Rule 84(3)(h), Rule 85(2) CTMIR
When the mark is registered, the right in rem will be published in the Community Trade Marks Bulletin and entered in the Community Trade Mark Register.
Rule 84(5) CTMIR
The Office will notify the recordal applicant of the entry of the right in rem in the files kept by the Office. Where applicable, the CTM applicant will also be notified.
Article 22(5) CTMR Rule 84(3)(h), Rule 85(2) CTMIR
For CTMs, the Office will enter the right in rem in the Community Trade Mark Register and publish it in the Community Trade Marks Bulletin.
Access to this information may be obtained through inspection of files (see the Guidelines, Part E, Register Operations, Section 5, Inspection of Files).
Rights in rem are published in Part C.5. of the Bulletin.
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Rule 84(5) CTMIR
The Office will inform the recordal applicant of the registration of the right in rem. When the request for registration of the right in rem was filed by the pledgee, the Office will also inform the CTM proprietor of the registration.
3 Procedure for the Cancellation or Modification of the Registration of a Right in Rem
Rule 35(1) CTMIR
The registration of a right in rem will be cancelled or modified at the request of an interested party, that is, the applicant or proprietor of the CTM or the registered pledgee.
3.1 Competence, languages, submission of the request
Article 133 CTMR Rule 35(3), (6) and (7) CTMIR
Paragraphs 2.1 and 2.2 above apply.
There is no Office form for registering the cancellation or modification of a right in rem.
3.2 Person submitting the request
Rule 35(1) CTMIR
The request for the cancellation or modification of the registration of a right in rem may be submitted by:
a) the CTM applicant/proprietor and the pledgee jointly,
b) the CTM applicant/proprietor, or
c) the registered pledgee.
3.2.1 Cancellation of the registration of a right in rem
Rule 35(4) CTMIR
If the CTM applicant/proprietor and the pledgee submit a joint request or if the pledgee alone submits a request, no proof of the cancellation of the registration of the right in rem is required since the application itself implies a s tatement by the pledgee that it consents to the cancellation of the registration of the right in rem. When the request for
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cancellation is submitted by the CTM applicant/proprietor, the request must be accompanied by evidence establishing that the registered right in rem no longer exists or by a declaration by the pledgee that it consents to the cancellation.
Where the registered pledgee submits the request for cancellation by itself, the CTM applicant/proprietor will not be informed of this request. Any observations filed by the proprietor will be forwarded to the pledgee but will not preclude the cancellation of the registration of the right in rem. Paragraph 2.4.3.1 above applies mutatis mutandis.
If the CTM proprietor alleges fraud on the part of the pledgee, it must provide a Court order to this effect. It is not up to the Office to carry out any investigation into such a claim.
Where the registration of several rights in rem has been requested simultaneously, it is possible to cancel one o f these registrations individually. In such an event, a new recordal number will be created for the cancelled right in rem.
3.2.2 Modification of the registration of a right in rem
Rule 35(6) CTMIR
If the CTM applicant/proprietor and the pledgee submit a joint request, no further proof for the modification of the registration of the right in rem is required.
If the request is submitted by the CTM applicant/proprietor, proof of the modification of the registration of the right in rem is required only where the modification is of such a nature that it would diminish the rights of the registered pledgee under the right in rem. This would be the case, for example, of a change of the pledgee’s name.
If the request is submitted by the registered pledgee, proof of the modification of the registration of the right in rem is required only where the modification, is of such a nature that it would extend the rights of the registered pledgee under the right in rem.
If proof of the modification of the registration of the right in rem is necessary, it is sufficient if any of the documents referred to above under paragraph 2.4.3.4 are submitted, subject to the following requirements.
• The written agreement must be s igned by the other party to the right in rem agreement and must relate to the registration of the modification of the right in rem as requested.
• The request for modification/cancellation of the registration of a right in rem must show the right in rem in its amended form.
• The copy or extract of the right in rem agreement must show the right in rem in its amended form.
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3.3 Contents of the request
Rules 26, 35 CTMIR
Paragraph 2.4 above applies, except that the data concerning the pledgee need not be indicated except in the event of a modification of the registered pledgee’s name.
3.4 Fees
3.4.1 Cancellation of the registration of a right in rem
Article 162(2) CTMR Rule 35(3) CTMIR Article 2(24) CTMFR
The request for the cancellation of the registration of a right in rem is not deemed to have been f iled until the required fee of EUR 200 per cancellation is paid. Where several cancellations are requested simultaneously or within the same request, and where the CTM applicant/proprietor and the pledgee are the same in each case, the fee is limited to a maximum of EUR 1 000.
Once the corresponding fee has been paid, the fee will not be reimbursed if the request is refused or withdrawn.
3.4.2 Modification of the registration of a right in rem
Rule 35(6) CTMIR
The modification of the registration of a right in rem is not subject to a fee.
3.5 Examination of the request
3.5.1 Fees
Rule 35(3) CTMIR
Where the required fee for the request for the cancellation of the registration of a right in rem has not been r eceived, the Office will notify the recordal applicant that the request is deemed not to have been filed.
3.5.2 Examination by the Office
Rule 35(2) and (4) CTMIR
Paragraph 2.5.2 applies mutatis mutandis to the mandatory elements of the request, even for proof of the right in rem, to the extent that such proof is required.
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The Office will notify the recordal applicant of any deficiency, setting a time limit of two months. If the deficiencies are not remedied, the Office will refuse the request for registering the cancellation or modification.
Rules 35(6), 84(5) CTMIR
The registration of the cancellation or modification of the right in rem will be communicated to the person who submitted the request; if the request was submitted by the pledgee, the CTM applicant/proprietor will receive a copy of the communication.
3.6 Registration and publication
Rule 84(3)(s), Rule 85(2) CTMIR For a registered CTM, the creation, cancellation or modification of a registration of a right in rem will be entered in the Register of Community Trade Marks and published in the Community Trade Marks Bulletin under C.5.
For a CTM application, the cancellation or modification of the right in rem will be mentioned in the files of the CTM application concerned. When the registration of the CTM is published, no publications will be made for rights in rem that have been cancelled, and if a right in rem has been modified, the data as modified will be published under C.5.
4 Procedure for the Transfer of a Right in Rem
4.1 Provision for the transfer of a right in rem
Rule 33(1) CTMIR
A right in rem may be transferred.
4.2 Applicable rules
Rule 33(1) CTMIR
The procedure for the registration of a transfer of a right in rem follows the same rules as the registration of a right in rem set out in paragraph 2 above.
Rule 33(1) and (4) CTMIR Article 2(23)(b) CTMFR
The transfer of a right in rem is subject to the payment of a fee. Paragraph 2.3 above applies mutatis mutandis.
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To the extent that a declaration or a signature of the CTM applicant/proprietor is required in accordance with the rules, it must be replaced by a declaration or signature of the registered pledgee (the former pledgee).
5 Rights in Rem for Registered Community Designs
Articles 27, 29, and 33, Article 51(4) CDR Articles 24 and 26, Article 27(2) CDIR Annex (18) and (19) CDFR
The legal provisions contained in the CDR, CDIR and CDFR in respect of rights in rem correspond to the respective provisions in the CTMR, CTMIR and CTMFR.
Therefore, both the legal principles and t he procedure in respect of the registration, cancellation or modification of trade mark rights in rem apply mutatis mutandis to Community designs, except for the following specific procedures.
5.1 Multiple applications for registered Community designs
Article 37 CDR Article 24(1) CDIR
An application for a registered Community design may be in the form of a multiple application, applying for several designs.
For the purposes of the legal effect of rights in rem, as well as of the procedure for registering rights in rem, individual designs contained in a multiple application will be dealt with as if they were separate applications, and the same continues to apply after registration of the designs contained in the multiple application.
In other words, each design contained in a multiple application may be pl edged independently of the others.
Annex (18) and (19) CDFR
The fee of EUR 200 for the registration of a right in rem or the cancellation of a right in rem applies per design and not per multiple application. The same is true for the ceiling of EUR 1 000 if multiple requests are submitted.
Example 1
Out of a multiple application for 10 des igns, 6 designs are pledged, in favour of the same pledgee. The fee is EUR 1 000 provided that either a single request for registration of these 6 rights in rem is submitted or several requests are submitted on the same day.
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Example 2
Out of a multiple application for 10 des igns, 5 designs are pledged, in favour of the same pledgee. The registration for a right in rem is also requested for another design not contained in that multiple application. The fee is EUR 1 000 Euro provided that:
• either a single request for registration of these 6 rights in rem is submitted or several requests are submitted on the same day, and
• the holder of the Community design and the pledgee are the same in all 6 cases.
6 Rights in Rem for International Trade Marks
The Madrid System allows for the recording of rights in rem against an international registration (see Rule 20 Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and t he Protocol Relating to that Agreement). For the convenience of the users, the MM19 form is available for requesting that a restriction of the holder’s right of disposal be entered in the International Register. The use of this form is strongly recommended to avoid irregularities. Requests should be submitted either directly to the International Bureau by the holder or to the national IP Office of the holder or to the Office of a contracting party to whom the right in rem is granted or to the Office of the pledgee. The request cannot be submitted directly to the International Bureau by the pledgee. OHIM’s own Recordal Application form should not be used.
Detailed information on the recording of rights in rem can be found in Part B, Chapter II, paragraphs 92.01 to 92.04 of the Guide to the International Registration of Marks under the Madrid Agreement and t he Madrid Protocol (www.wipo.int/madrid/en/guide). For further information on international trade marks, see the Guidelines Part M, International Marks.
Levy of Execution
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 3
CTMs AS OBJECTS OF PROPERTY
CHAPTER 4
LEVY OF EXECUTION
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Table of Contents
1 Introduction................................................................................................ 3
2 Requirements for a Request for the Registration of a Levy of Execution ................................................................................................... 4 2.1 Application form and requests for more than one levy of execution .....4 2.2 Languages ..................................................................................................5 2.3 Fees.............................................................................................................5 2.4 Applicants and mandatory content of the application.............................6
2.4.1 Applicants ....................................................................................................... 6 2.4.2 Mandatory indications concerning the CTM and the beneficiary ................... 6 2.4.3 Requirements concerning the person who submits the request –
signature, proof of the levy of execution, representation ............................... 7 2.4.3.1 Request submitted by the CTM proprietor...................................................7 2.4.3.2 Request submitted by the beneficiary .........................................................7 2.4.3.3 Request submitted by a Court or Authority..................................................7 2.4.3.4 Proof of the levy of execution ......................................................................8
2.4.4 Representation ............................................................................................... 8
2.5 Examination of the request for registration..............................................9 2.5.1 Fees................................................................................................................ 9 2.5.2 Examination of the mandatory formalities ...................................................... 9
2.6 Registration procedure and publications ...............................................10
3 Procedure for the Cancellation or Modification of the Registration of a Levy of Execution................................................................................. 10 3.1 Competence, languages, submission of the request.............................11 3.2 Person submitting the request ................................................................11
3.2.1 Cancellation of the registration of a levy of execution.................................. 11 3.2.2 Modification of the registration of a levy of execution .................................. 11
3.3 Contents of the request ...........................................................................12 3.4 Fees...........................................................................................................12
3.4.1 Cancellation of the registration of a levy of execution.................................. 12 3.4.2 Modification of the registration of a levy of execution .................................. 12
3.5 Examination of the request......................................................................12 3.5.1 Fees.............................................................................................................. 12 3.5.2 Examination by the Office............................................................................. 13
3.6 Registration and publication ...................................................................13
4 Levy of Execution for Registered Community Designs ....................... 13 4.1 Multiple applications for registered Community designs...................... 14
5 Levy of Execution for International Trade Marks.................................. 14
Levy of Execution
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1 Introduction
Article 20 CTMR Rules 33, 35 CTMIR Article 29 CDR
Both registered Community trade marks (CTMs) and Community trade mark applications (CTMAs) may be levied in execution.
Both registered Community designs (RCDs) and registered Community design applications may be levied in execution.
Paragraphs 1 to 3 of this chapter deal with levies of execution concerning CTMs and CTMAs. The provisions in the CDR and CDIR dealing with levy of execution concerning designs are almost identical to the equivalent provisions of the CTMR and CTMIR respectively. Therefore, the following applies mutatis mutandis to Community designs. Procedures specific to Community designs are detailed in paragraph 4 below. Procedures specific to international trade marks are detailed in paragraph 5 below.
A levy of execution is the act by which a court officer appropriates a debtor’s property, following a judgment of possession obtained by a plaintiff from a court. In this way a creditor can recover its claim from all the property of the debtor, including from its trade mark rights.
Article 16 CTMR
The CTMR does not establish unified and complete provisions applicable to the levy of execution for CTMs or CTMAs. Rather, Article 16 CTMR refers to the law of a Member State, regarding the procedure for levy of execution. To this end, a levy of execution on a CTM is, in its entirety and for the whole territory of the Community, assimilated to a levy of execution for a trade mark registered in the Member State in which the CTM proprietor or applicant has its seat or its domicile, or, if this is not the case, to a levy of execution for a trade mark registered in the Member State in which the proprietor has an establishment, or if this is not the case, to a levy of execution for a trade mark registered in Spain (Member State in which the seat of the Office is situated).
This, however, applies only to the extent that Articles 17 to 24 CTMR do not provide otherwise.
Articles 20(2), 50(3), 23(3) CTMR Rule 36(2) CTMIR
Registration of a levy of execution is not compulsory; however, such a registration has particular advantages:
a) In view of the provision of Article 23(3) CTMR, vis-à-vis third parties who might have acquired or have entered in the Register rights in the trade mark which are incompatible with the registered levy of execution, the beneficiary may avail itself of the rights conferred by this levy of execution, if national law so permits, only:
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• if the levy of execution was entered in the Register of Community Trade Marks, or
• in the absence of registration of the levy of execution, if the third party had acquired its rights after the date of the adjudication of the levy of execution knowing of the existence of the levy of execution.
b) In the event that a levy of execution against a Community trade mark is entered in the Register, the surrender of that mark by its proprietor will only be entered in the Register if the proprietor establishes that it has informed the beneficiary of its intention to surrender.
The beneficiary of a levy of execution which is registered has, therefore, the right to be informed in advance by the trade mark’s proprietor of its intention to surrender the trade mark.
c) In the event where a levy of execution against a Community trade mark is entered in the Register, the Office will notify the beneficiary at least six months before the expiry of the registration that the registration is approaching expiry. The Office will also notify the beneficiary of any loss of rights and of the expiry of the registration, where applicable.
d) Recording a l evy of execution is important for maintaining the veracity of the Register, particularly in the event of inter partes proceedings.
2 Requirements for a Request for the Registration of a Levy of Execution
Article 20(3) CTMR Rule 33, Rule 84(3)(i) CTMIR
Both CTMAs and CTMs may be the subject of the registration of a levy of execution.
The application for registration of a levy of execution must comply with the following conditions.
2.1 Application form and requests for more than one levy of execution
Rule 95(a) and (b) CTMIR
It is strongly recommended that the request for registration of a levy of execution for a CTM be submitted on the Recordal Application form. This form is available free of charge in the official languages of the European Union. It can be dow nloaded from OHIM’s website.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 2.2 below.
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Rules 31(7), 33(1) CTMIR
A single request for the registration of a levy of execution for two or more registered CTMs or CTMAs may be submitted only if the respective registered proprietor and beneficiary are the same in each case.
2.2 Languages
Rule 95(a) CTMIR
The application for the registration of a l evy of execution against a C TMA may be submitted in the first or second language of the CTM application.
Rule 95(b) CTMIR
The application for the registration of a l evy of execution against a C TM must be submitted in one of the five languages of the Office, namely, English, French, German, Italian or Spanish.
2.3 Fees
Article 162(2)(c) and (d) CTMR Rule 33(1) and (4) CTMIR Article 2(23) CTMFR
The application for the registration of a levy of execution is considered not to have been submitted until the fee is paid. The fee is EUR 200 for each Community trade mark for which the registration of a levy of execution is requested.
However, where several registrations of levy of execution have been r equested in a single request and the registered proprietor and the beneficiary are the same in all cases, the fee is limited to a maximum of EUR 1 000.
The same maximum amount applies where several registrations of levy of execution are applied for at the same time, provided that they could have been filed in a single request and w here the registered proprietor and t he beneficiary are the same in all cases.
Once the corresponding fee is paid, the fee will not be reimbursed if the application for registration of the levy of execution is refused or withdrawn (file classified).
Where the recordal applicant (see paragraph 2.4.1 below) is a Court or an Authority, no fee is to be paid and administrative cooperation is applied.
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2.4 Applicants and mandatory content of the application
2.4.1 Applicants
Article 20(3) CTMR
The registration of a levy of execution may be requested by:
a) the proprietor of the CTM,
b) the beneficiary of the levy of execution,
c) a Court or Authority.
The formal conditions with which the request must comply depend on who submits the request.
2.4.2 Mandatory indications concerning the CTM and the beneficiary
Rule 31, Rule 33(1) CTMIR
The request for registration of a levy of execution must contain the following information.
Rule 31(1)(a), Rule 33(1) CTMIR
a) The registration number of the CTM concerned. If the request relates to several CTMs each of the numbers must be indicated.
Rules 1(1)(b), 31(1)(b), Rule 33(1) CTMIR
b) The beneficiary’s name, address and nat ionality and the State in which it is domiciled or has its seat or an establishment.
Rule 1(1)(e), Rules 31(2), 33(1) CTMIR
c) If the beneficiary designates a representative, the representative’s name and business address must be i ndicated; the indication of the address may be replaced by the indication of the ID number allocated by the Office.
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2.4.3 Requirements concerning the person who submits the request – signature, proof of the levy of execution, representation
Rule 79, Rule 82(3) CTMIR
The requirements concerning signature, proof of the levy of execution and representation vary depending on the person who submits the request. Where the requirement of a signature is referred to, pursuant to Rule 79 and Rule 82(3) CTMIR, in electronic communications, the indication of the sender’s name will be deemed equivalent to the signature.
2.4.3.1 Request submitted by the CTM proprietor
Rule 1(1)(b), Rule 33(1) CTMIR
When a request is submitted on behalf of the CTM proprietor, it must be signed by the CTM proprietor.
The Office will not inform the beneficiary that the registration of the levy of execution has been requested. It will, however, inform the beneficiary when the levy of execution is recorded in the Register.
Where the beneficiary files a s tatement with the Office in which it opposes the registration of the levy of execution, the Office will forward the statement to the CTM proprietor for information purposes only. The Office will not take any further action on such a statement. Following the registration of the levy of execution, any beneficiary who disagrees with the registration of the levy of execution may request the cancellation or modification of the registration of the levy of execution (see paragraph 3 below).
Any dispute on w hether or not and i n what manner the levy of execution should be registered is a matter that must be resolved between the parties concerned under the relevant national law (Article 16 CTMR).
2.4.3.2 Request submitted by the beneficiary
The request may also be submitted by the beneficiary. In this case, it must be signed by the beneficiary.
In addition, proof of the levy of execution must be submitted.
2.4.3.3 Request submitted by a Court or Authority
The request may also be submitted by the Court or Authority issuing the judgment. In this case, it must be signed by the Court or Authority.
In addition, proof of the levy of execution must be submitted.
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2.4.3.4 Proof of the levy of execution
There is sufficient proof of the levy of execution if the request for registration of the levy of execution is accompanied by the Court judgment.
In many instances, the parties to the levy of execution proceedings will not wish to disclose all the details of the judgment, which may contain confidential information. In these cases it suffices if only a part or an extract of the levy of execution judgment is submitted, as long as it identifies the parties to the levy of execution proceedings, the CTM that is subject to the levy of execution and that the judgment is final. All other elements may be omitted or blacked out.
Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient. The original or photocopy does not need t o be aut henticated or legalised unless the Office has reasonable doubts as to the veracity of the documents.
Rule 95(a) and (b), Rule 96(2) CTMIR
The evidence of the levy of execution must be:
a) in the language of the Office which has become the language of the proceedings for the registration of the levy of execution, see paragraph 2.2 above.
b) in any official language of the European Union other than the language of the proceedings; in this case the Office may require a t ranslation of the document into a language of the Office to be filed within a period specified by the Office.
Where the supporting documents are not submitted in either an official language of the European Union or in the language of the proceedings, the Office may require a translation into the language of the proceedings or, at the choice of the party requesting the registration of the levy of execution, in any language of the Office. The Office will set a time limit of two months from the date of notification of that communication. If the translation is not submitted within that time limit, the document will not be taken into account and will be deemed not to have been submitted.
2.4.4 Representation
Articles 92(2), 93(1) CTMR
The general rules on representation apply (see the Guidelines, Part A, General Rules, Section 5, Professional Representation).
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2.5 Examination of the request for registration
2.5.1 Fees
Rule 33(2) CTMIR
Where the required fee has not been received, the Office will notify the recordal applicant (unless the recordal applicant is a Court or Authority, in which case no fee is required, see paragraph 2.3 above) that the request is deemed not to have been filed because the relevant fee has not been paid. However, a new request may be submitted at any time providing the correct fee is paid from the outset.
2.5.2 Examination of the mandatory formalities
Rule 33(3) CTMIR
The Office will check whether the request for registration of the levy of execution complies with the formal conditions mentioned in paragraph 2.4 above (indication of the CTM number(s), the required information concerning the beneficiary, the representative of the beneficiary where applicable).
The validity of the levy of execution judgment will not be examined.
Article 93(1) CTMR Rules 33, 76, 77 CTMIR
The Office will check whether the request for registration of the levy of execution has been duly signed. Where the request is signed by the beneficiary’s representative, an authorisation may be r equired by the Office or, in the context of inter partes proceedings, by the other party to those proceedings. In this event, if no authorisation is submitted, the proceedings will continue as if no representative had been appointed. Where the request for registration of the levy of execution is signed by the proprietor’s representative who has already been designated as the representative for the CTM in question, the requirements relating to signature and authorisations are fulfilled.
Articles 92(2), 93(1) CTMR
The examination will include whether the recordal applicant (i.e. the CTM proprietor or the beneficiary) is obliged to be represented before the Office (see paragraph 2.4.4 above).
Rule 33(3) CTMIR
The Office will inform the recordal applicant in writing of any deficiencies in the application. If the deficiencies are not remedied within the time limit set in that
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communication, which will normally be two months following the date of the notification, the Office will reject the request for registration of the levy of execution.
Where the request for registration of the levy of execution is submitted by the CTM proprietor alone, the Office will not inform the beneficiary. The examination of evidence of the levy of execution will be done ex officio. The Office will disregard any statements or allegations of the beneficiary regarding the existence or scope of the levy of execution or its registration; the beneficiary cannot oppose the registration of a levy of execution.
2.6 Registration procedure and publications
Rules 33(4), 84(5) CTMIR
The levy of execution for CTMAs will be mentioned in the files kept by the Office for the Community trade mark application concerned.
The Office will notify the recordal applicant of the entry of the levy of execution in the files kept by the Office. Where applicable, the CTM applicant will also be notified.
Rule 84(3)(i), Rule 85(2) CTMIR
When the mark is registered, the levy of execution will be published in the Community Trade Marks Bulletin and entered in the Community Trade Marks Register. The Office will inform the recordal applicant of the registration of the levy of execution. Where applicable, the CTM proprietor will also be informed.
Access to this information may be obtained through inspection of files (see the Guidelines, Part E, Register Operations, Section 5, Inspection of Files).
Levies of execution are published in Part C.7. of the Bulletin.
3 Procedure for the Cancellation or Modification of the Registration of a Levy of Execution
Rule 35(1) CTMIR
The registration of a levy of execution will be cancelled or modified at the request of an interested party, that is, the applicant or proprietor of the CTM or the registered beneficiary.
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3.1 Competence, languages, submission of the request
Article 133 CTMR Rule 35(3), (6) and (7) CTMIR
Paragraphs 2.1 and 2.2 above apply.
There is no O ffice form for registering the cancellation or modification of a l evy of execution.
3.2 Person submitting the request
Rule 35(1) CTMIR
The request for the cancellation or modification of the registration of a levy of execution may be submitted by:
a) the CTM applicant/proprietor and the beneficiary jointly,
b) the CTM applicant/proprietor, or
c) the registered beneficiary.
3.2.1 Cancellation of the registration of a levy of execution
Rule 35(4) CTMIR
The request for cancellation of the registration of a levy of execution must be accompanied by evidence establishing that the registered levy of execution no longer exists. This proof comprises the final Court judgment.
Where the registered beneficiary alone submits the request for cancellation, the CTM applicant/proprietor will not be informed of this request. Any observations filed by the proprietor will be forwarded to the beneficiary but will not preclude the cancellation of the registration of the levy of execution. Paragraph 2.4.3.1 above applies mutatis mutandis.
Where the registration of several levies of execution has been requested simultaneously, it is possible to cancel one of these registrations individually. In such an event, a new recordal number will be created for the cancelled levy of execution.
3.2.2 Modification of the registration of a levy of execution
Rule 35(6) CTMIR
A levy of execution may be modified upon submission of the corresponding Court judgment showing such a modification.
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3.3 Contents of the request
Rule 35 CTMIR
Paragraph 2.4 above applies, except that the data concerning the beneficiary need not be indicated except in the case of a modification of the registered beneficiary’s name.
3.4 Fees
3.4.1 Cancellation of the registration of a levy of execution
Article 162(2) CTMR Rule 35(3) CTMIR Article 2(24) CTMFR
The request for the cancellation of the registration of a levy of execution is not deemed to have been filed until the required fee of EUR 200 per cancellation is paid (unless the recordal applicant is a C ourt or Authority, in which case no f ee is required, see paragraph 2.3 above). Where several cancellations are requested simultaneously or within the same request, and where the CTM applicant/proprietor and the beneficiary are the same in each case, the fee is limited to a maximum of EUR 1 000.
Once the corresponding fee has been paid, the fee will not be reimbursed if the request is refused or withdrawn.
3.4.2 Modification of the registration of a levy of execution
Rule 35(6) CTMIR
The modification of the registration of a levy of execution is not subject to a fee.
3.5 Examination of the request
3.5.1 Fees
Rule 35(3) CTMIR
Where the required fee for the request for the cancellation of the registration of a levy of execution has not been received, the Office will notify the recordal applicant that the request is deemed not to have been filed.
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3.5.2 Examination by the Office
Rule 35(2), (4) CTMIR
Paragraph 2.5.2 applies mutatis mutandis to the mandatory elements of the request, even for proof of the levy of execution, to the extent that such proof is required.
The Office will notify the recordal applicant of any deficiency, setting a time limit of two months. If the deficiencies are not remedied, the Office will refuse the request for registering the cancellation or modification.
Rules 35(6), 84(5) CTMIR
The registration of the cancellation or modification of the levy of execution will be communicated to the person who submitted the request; if the request was submitted by the beneficiary, the CTM applicant/CTM proprietor will receive a copy of the communication.
3.6 Registration and publication
Rule 84(3)(s), Rule 85(2) CTMIR
In the case of a r egistered CTM, the creation, cancellation or modification of a registration of a levy of execution will be entered in the Register of Community Trade Marks and published in the Community Trade Marks Bulletin under C.7.
In the case of a C TM application, the cancellation or modification of the levy of execution will be mentioned in the files of the CTM application concerned. When the registration of the CTM is published, no publ ications will be made for levies of execution that have been cancelled, and if a levy of execution has been modified, the data as modified will be published under C.7.2.
4 Levy of Execution for Registered Community Designs
Articles 27, 30, 33, Article 51(4) CDR Articles 24, 26, Article 27(2) CDIR Annex (18) and (19) CDFR
The legal provisions contained in the CDR, CDIR and C DFR in respect of levies of execution correspond to the respective provisions in the CTMR, CTMIR and CTMFR.
Therefore, both the legal principles and t he procedure in respect of the registration, cancellation or modification of trade mark levies of execution apply mutatis mutandis to Community designs, except for the following specific procedures.
Levy of Execution
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4.1 Multiple applications for registered Community designs
Article 37 CDR Article 24(1) CDIR
An application for a registered Community design may be in the form of a multiple application, applying for several designs.
For the purposes of the legal effect of a levy of execution, as well as of the procedure for registering a levy of execution, individual designs contained in a multiple application will be dealt with as if they were separate applications, and the same continues to apply after registration of the designs contained in the multiple application.
In other words, each design contained in a m ultiple application may be levied independently of the others.
Annex (18), (19) CDFR
The fee of EUR 200 for the registration of a levy of execution or the cancellation of a levy of execution applies per design and not per multiple application. The same is true for the ceiling of EUR 1 000 if multiple requests are submitted.
Example 1
Out of a multiple application for 10 designs, 6 designs are levied, in favour of the same beneficiary. The fee is EUR 1 000 provided that either a single request for registration of these 6 levies of execution is submitted or several requests are submitted on the same day.
Example 2
Out of a multiple application for 10 designs, 5 designs are levied, in favour of the same beneficiary. The registration of a levy of execution is also requested for another design not contained in that multiple application. The fee is EUR 1 000 provided that
• either a single request for registration of these 6 levies of execution is submitted, or several requests are submitted on the same day, and
• the holder of the Community design and t he beneficiary are the same in all 6 cases.
5 Levy of Execution for International Trade Marks
The Madrid System allows for the recording of a levy of execution against an international registration (see Rule 20 Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement). For the convenience of the users, the MM19 form is available for requesting that a restriction of the holder's right of disposal be entered in
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the International Register. The use of this form is strongly recommended to avoid irregularities. Requests should be submitted either directly to the International Bureau by the holder or to the national IP Office of the recorded holder or to the Office of a contracting party to whom the levy of execution is granted or to the Office of the beneficiary. The request cannot be submitted directly to the International Bureau by the beneficiary. OHIM’s own Recordal Application form should not be used.
Detailed information on t he recording of levies of execution can be found in Part B, Chapter II, paragraphs 92.01 to 92.04 of the Guide to the International Registration of Marks under the Madrid Agreement and t he Madrid Protocol (www.wipo.int/madrid/en/guide). For further information on international trade marks, see the Guidelines, Part M, International Marks.
Insolvency Proceedings or Similar Proceedings
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART E
REGISTER OPERATIONS
SECTION 3
CTMs AS OBJECTS OF PROPERTY
CHAPTER 5
INSOLVENCY PROCEEDINGS OR SIMILAR PROCEEDINGS
Insolvency Proceedings or Similar Proceedings
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Table of Contents
1 Introduction................................................................................................ 3
2 Requirements for a Request for the Registration of Insolvency Proceedings or Similar Proceedings ....................................................... 4 2.1 Application form.........................................................................................5 2.2 Languages ..................................................................................................5 2.3 Fees.............................................................................................................5 2.4 Applicants and mandatory content of the application.............................5
2.4.1 Applicants ....................................................................................................... 5 2.4.2 Mandatory indications concerning the CTM and the liquidator ...................... 6 2.4.3 Requirements concerning the person who submits the request –
signature, proof of appointment, representation............................................. 6 2.4.4 Representation ............................................................................................... 7
2.5 Examination of the request for registration..............................................7 2.6 Registration procedure and publications .................................................8
3 Procedure for the Cancellation or Modification of the Registration of Insolvency Proceedings............................................................................ 9 3.1 Competence, languages, submission of the request...............................9 3.2 Person submitting the request ..................................................................9
3.2.1 Cancellation of the registration of an insolvency.......................................... 10 3.2.2 Modification of the registration of an insolvency........................................... 10
3.3 Contents of the request ...........................................................................10 3.4 Fees...........................................................................................................10
3.4.1 Cancellation of the registration of insolvency proceedings .......................... 10 3.4.2 Modification of the registration of insolvency proceedings........................... 10
3.5 Examination of the request......................................................................11 3.6 Registration and publication ...................................................................11
4 Insolvency Proceedings for International Trade Marks ....................... 11
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1 Introduction
Articles 16, 21 CTMR Rules 33, 35 CTMIR Article 31 CDR Council Regulation (EC) No 1346/2000 of 29 May 2000 on insolvency proceedings
Both registered Community trade marks (CTMs) and Community trade mark applications (CTMAs) may be affected by insolvency proceedings or similar proceedings.
Both registered Community designs (RCDs) and registered Community design applications may be affected by insolvency proceedings or similar proceedings.
Paragraphs 1 to 3 of this chapter deal with recording insolvency proceedings or similar proceedings against CTMs and CTMAs. The provisions in the CDR and CDIR dealing with insolvency proceedings and similar proceedings concerning designs are identical to the equivalent provisions of the CTMR and C TMIR respectively. Therefore, the following applies mutatis mutandis to Community designs. Procedures specific to international trade marks are detailed in paragraph 4 below.
For the purposes of these guidelines ‘insolvency proceedings’ are understood as the collective proceedings which entail the partial or total divestment of a debtor and the appointment of a l iquidator. In the United Kingdom, for example, such proceedings include the winding up by or subject to the supervision of the court, creditors’ voluntary winding up ( with confirmation by the court), administration, voluntary arrangements under insolvency legislation and bankruptcy or sequestration; ‘liquidator’ is understood as any person or body whose function is to administer or liquidate assets of which the debtor has been di vested or to supervise the administration of their affairs. In the United Kingdom, for example, such persons or bodies include liquidators, supervisors of a v oluntary arrangement, administrators, official receivers, trustees and j udicial factors; ‘Court’ is understood as the judicial body or any other competent body of a Member State empowered to open insolvency proceedings or to take decisions in the course of such proceedings; ‘judgment’ in relation to the opening of insolvency proceedings or the appointment of a liquidator is understood as including the decision of any Court empowered to open s uch proceedings or to appoint a liquidator (for terminology in other territories, please see Council Regulation (EC) No 1346/2000 of 29 May 2000 on insolvency proceedings).
These guidelines serve to explain the procedure before the Office for registering the opening, modification or closure of insolvency proceedings or similar proceedings. In accordance with Article 16 CTMR, all other provisions are covered by national law. In addition, Council Regulation (EC) No 1346/2000 of 29 May 2000 o n insolvency proceedings regulates the provisions on jurisdiction, recognition and applicable law in the area of insolvency proceedings.
Article 21(1) CTMR
The Regulations specifically state that a Community trade mark may only be involved in insolvency proceedings opened in the Member State in the territory of which the debtor has its centre of main interests, the only exception being when the debtor is an
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insurance undertaking or credit institution in which case the Community trade mark may only be involved in those proceedings opened in the Member State where that undertaking or institution has been authorised. The ‘centre of main interests’ should correspond to the place where the debtor conducts the administration of its interests on a regular basis and is, therefore, ascertainable by third parties.
Articles 21(3), 23(4) CTMR
Registration of the opening, modification and closure of insolvency proceedings is not compulsory, however, such a registration has particular advantages.
a) In view of the provision of Article 23(4) CTMR, vis-à-vis third parties who might have acquired or have entered in the Register rights in the trade mark which are incompatible with the registered insolvency, the effects shall be governed by the law of the Member State in which such proceedings are first brought within the meaning of national law or of conventions applicable in this field.
b) In the event that insolvency proceedings against a C ommunity trade mark are entered in the Register, the CTM proprietor loses its right to act and, therefore, may not perform any actions before the Office (such as withdraw, surrender, transfer, file oppositions, act in inter partes proceedings, etc.).
c) In the event that insolvency proceedings against a C ommunity trade mark are entered in the Register, the Office will notify the liquidator at least six months before the expiry of the registration that the registration is approaching expiry. The Office will also notify the liquidator of any loss of rights and of the expiry of the registration, where applicable.
d) Recording insolvency proceedings is important for maintaining the veracity of the Register, particularly in the event of inter partes proceedings. In this respect please see the Guidelines, Part C, Opposition, Section 1, Procedural Matters, paragraph 6.5.5.2.
The Office strongly recommends that liquidators withdraw, surrender or transfer the CTMs and CTMAs subject to insolvency proceedings prior to the final winding up.
2 Requirements for a Request for the Registration of Insolvency Proceedings or Similar Proceedings
Article 21(3), Article 24 CTMR Rule 33, Rule 84(3)(i) CTMIR
Both CTMAs and CTMs may be the subject of the registration of insolvency proceedings.
The application for registration of insolvency proceedings must comply with the following conditions.
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2.1 Application form
Rule 95(a) and (b) CTMIR
The application must be a formal request for registering insolvency proceedings or similar proceedings.
It is strongly recommended that the request for registration of insolvency proceedings against a CTM be submitted on the Recordal Application form using the ‘others’ option in the ‘Type of recordal’ section of the form. This form is available free of charge in the official languages of the European Union. It can be downloaded from OHIM’s website.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 2.2 below.
2.2 Languages
Rule 95(a) CTMIR
The application for the registration of insolvency proceedings against a CTMA may be submitted in the first or second language of the CTM application.
Rule 95(b) CTMIR
The application for the registration of insolvency proceedings against a CTM must be submitted in one of the five languages of the Office, namely, English, French, German, Italian or Spanish.
2.3 Fees
Article 162(2)(c) and (d )CTMR Rule 33(1) and (4) CTMIR Article 2(23) CTMFR
There is no fee for registering insolvency proceedings or similar proceedings.
2.4 Applicants and mandatory content of the application
2.4.1 Applicants
Article 20(3) CTMR
The registration of insolvency proceedings or similar proceedings may be r equested by:
a) the liquidator,
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b) the Court,
c) the applicant/owner/holder.
2.4.2 Mandatory indications concerning the CTM and the liquidator
Rule 31, Rule 33(1) CTMIR
The request for registration of insolvency proceedings or similar proceedings must contain the following information.
Article 21(2) CTMR Rule 31(1)(a), Rule 33(1) CTMIR
a) The registration number of the CTM concerned.
Where the recordal applicant indicates only some of the CTMs owned by the proprietor, the Office will register the insolvency proceedings against all CTMs and CTMAs linked to the owner’s ID number at the Office.
Where the owner is joint proprietor of a CTM or CTMA, the insolvency proceedings will apply to the share of the joint proprietor.
Rules 1(1)(b), 31(1)(b), Rule 33(1) CTMIR
b) The liquidator’s name, address and nat ionality and t he State in which it is domiciled or has its seat or an establishment.
Rule 1(1)(e), Rules 31(2), 33(1) CTMIR
c) If the liquidator designates a r epresentative, the representative’s name and business address must be indicated; the indication of the address may be replaced by the indication of the ID number allocated by the Office.
2.4.3 Requirements concerning the person who submits the request – signature, proof of appointment, representation
Rule 79, Rule 82(3) CTMIR
Where the requirement of a signature is referred to, pursuant to Rule 79 and Rule 82(3) CTMIR, in electronic communications, the indication of the sender’s name will be deemed equivalent to the signature.
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There is sufficient proof of the appointment of a l iquidator and of the insolvency proceedings if the request for registration of the insolvency proceedings is accompanied by the Court judgment.
It suffices if the insolvency judgment is submitted. In many instances, the parties to the insolvency proceedings will not wish to disclose all the details of the judgment, which may contain confidential information. In these cases it suffices if only a par t or an extract of the judgment is submitted, as long as it identifies the parties to the proceedings. All other elements may be omitted or blacked out.
Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient. The original or photocopy does not need t o be aut henticated or legalised unless the Office has reasonable doubts as to the veracity of the documents.
Rule 95(a) and (b), Rule 96(2) CTMIR
The evidence of the insolvency proceedings must be:
a) in the language of the Office which has become the language of the proceedings for the registration of the insolvency, see paragraph 2.2 above.
b) in any official language of the European Union other than the language of the proceedings; in this case the Office may require a t ranslation of the document into a language of the Office to be filed within a period specified by the Office.
Where the supporting documents are not submitted in either an official language of the European Union or in the language of the proceedings, the Office may require a translation into the language of the proceedings or, at the choice of the party requesting the registration of the insolvency, in any language of the Office. The Office will set a time limit of two months from the date of notification of that communication. If the translation is not submitted within that time limit, the document will not be taken into account and will be deemed not to have been submitted.
2.4.4 Representation
Articles 92(2), 93(1) CTMR
The general rules on representation apply (see the Guidelines, Part A, General Rules, Section 5, Professional Representation).
2.5 Examination of the request for registration
Article 21(1) CTMIR
The Office will check that there are no other pending recordals and that no insolvency proceedings have already been registered for the proprietor concerned. Only a request relating to the Member State in which insolvency proceedings or similar proceedings were first brought may be recorded.
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Rule 33(3) CTMIR
The Office will check whether the request for registration of the insolvency proceedings complies with the formal conditions mentioned in paragraph 2.4 above (indication of the CTM number(s), the required information concerning the liquidator, the liquidator’s representative where applicable).
The validity of the insolvency judgment will not be examined.
Article 93(1) CTMR Rules 33, 76, 77 CTMIR
The Office will check whether the request for registration of the insolvency proceedings has been duly signed. Where the request is signed by the liquidator’s representative, an authorisation may be r equired by the Office or, in the context of inter partes proceedings, by the other party to those proceedings. In this event, if no authorisation is submitted, the proceedings will continue as if no representative had been appointed.
Articles 92(2), 93(1)CTMR
The examination will include whether the recordal applicant (i.e. the liquidator, the Court or the applicant/proprietor/holder) is obliged to be represented before the Office (see paragraph 2.4.4 above).
Rule 33(3) CTMIR
The Office will inform the recordal applicant in writing of any deficiencies in the application. If the deficiencies are not remedied within the time limit set in that communication, which will normally be two months following the date of the notification, the Office will reject the request for registration of the insolvency proceedings.
2.6 Registration procedure and publications
Rule 33(4), 84(5) CTMIR
The insolvency proceedings for CTMAs will be mentioned in the files kept by the Office for the Community trade mark application(s) concerned.
The Office will notify the recordal applicant of the entry of the insolvency proceedings in the files kept by the Office. Where applicable, the CTM applicant will also be notified.
Rule 84(3)(i), Rule 85(2) CTMIR
When the mark is registered, the insolvency proceedings will be published in the Community Trade Marks Bulletin and entered in the Community Trade Mark Register.
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The Office will inform the recordal applicant of the registration of the insolvency proceedings.
The liquidator’s contact details are recorded as the proprietor’s ‘correspondence address’ in OHIM’s owners and representatives database and third parties may consult the full details of the insolvency proceedings through an appl ication for inspection of files (see the Guidelines, Part E, Register Operations, Section 5, Inspection of Files).
Insolvency proceedings are published in part C.6. of the Bulletin. The publication contains the CTM registration number(s), the name of the authority requesting the entry in the Register, the date and number of the entry and the publication date of the entry in the CTM Bulletin.
3 Procedure for the Cancellation or Modification of the Registration of Insolvency Proceedings
Rule 35(1) CTMIR
The registration of insolvency proceedings will be cancelled or modified at the request of an interested party, that is, the applicant or proprietor of the CTM or the registered liquidator.
3.1 Competence, languages, submission of the request
Article 133 CTMR Rules 35(3), (6), (7) CTMIR
Paragraphs 2.1 and 2.2 above apply.
There is no O ffice form for registering the cancellation or modification of insolvency proceedings.
3.2 Person submitting the request
Rule 35(1) CTMIR
The request for the cancellation or modification of the registration of insolvency proceedings may be submitted by:
a) the registered liquidator, b) the Court, c) the applicant/owner/holder.
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3.2.1 Cancellation of the registration of an insolvency
Rule 35(4) CTMIR
The request for registering the cancellation of insolvency proceedings must be accompanied by evidence establishing that the registered insolvency no longer exists. This proof comprises the final Court judgment.
Where the registered liquidator alone submits the request for cancellation, the CTM applicant/proprietor will not be informed of this request. Any observations filed by the proprietor will be forwarded to the liquidator but will not preclude the cancellation of the registration of the insolvency proceedings.
3.2.2 Modification of the registration of an insolvency
Rule 35(6) CTMIR
The registration of insolvency proceedings may be m odified upon submission of the corresponding Court judgment showing such a modification.
3.3 Contents of the request
Rule 35 CTMIR
Paragraph 2.4 above applies, except that the data concerning the liquidator need not be indicated except in the event of a modification of the registered liquidator’s name.
3.4 Fees
3.4.1 Cancellation of the registration of insolvency proceedings
Article 162(2) CTMR Rule 35(3) CTMIR Article 2(24) CTMFR
The request for the cancellation of the registration of insolvency proceedings is not subject to a fee.
3.4.2 Modification of the registration of insolvency proceedings
Rule 35(6) CTMIR
The modification of the registration of insolvency proceedings is not subject to a fee.
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3.5 Examination of the request
Rule 35(2), (4) CTMIR
Paragraph 2.5 applies mutatis mutandis to the mandatory elements of the request, even for proof of the insolvency proceedings.
The Office will notify the recordal applicant of any deficiency, setting a time limit of two months. If the deficiencies are not remedied, the Office will refuse the request for registering the cancellation or modification.
Rules 35(6), 84(5) CTMIR
The registration of the cancellation or modification of the insolvency proceedings will be communicated to the person who submitted the request; if the request was submitted by the liquidator, the CTM applicant/proprietor will receive a c opy of the communication.
3.6 Registration and publication
Rule 84(3)(s), Rule 85(2) CTMIR
In the case of a r egistered CTM, the creation, cancellation or modification of a registration of an insolvency will be entered in the Register of Community Trade Marks and published in the Community Trade Marks Bulletin under C.6.
In the case of a CTM application, the cancellation or modification of the insolvency proceedings will be mentioned in the files of the CTM application concerned. When the registration of the CTM is published, no publ ications will be m ade for insolvency proceedings that have been cancelled, and if the insolvency proceedings have been modified, the data as modified will be published under C.6.2.
4 Insolvency Proceedings for International Trade Marks
The Madrid System allows for the recording of insolvency proceedings against an international registration (see Rule 20 Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement). For the convenience of the users, the MM19 form is available for requesting that a restriction of the holder's right of disposal be entered in the International Register. The use of this form is strongly recommended to avoid irregularities. Requests should be submitted either directly to the International Bureau by the holder or to the national IP Office of the recorded holder or to the Office of a contracting party in respect of whom the insolvency is granted or to the Office of the liquidator. The request cannot be submitted directly to the International Bureau by the liquidator. OHIM’s own Recordal Application form should not be used.
Detailed information on the recording of insolvency proceedings can be found in Part B, Chapter II, paragraphs 92.01 to 92.04 of the Guide to the International Registration of
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Marks under the Madrid Agreement and t he Madrid Protocol (www.wipo.int/madrid/en/guide). For further information on international trade marks, see the Guidelines, Part M, International Marks.
International Marks
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS
PART M
INTERNATIONAL MARKS
International Marks
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Table of Contents
1 Introduction................................................................................................ 4
2 OHIM as Office of Origin ........................................................................... 4 2.1 Examination and forwarding of international applications......................4
2.1.1 Identification of international applications....................................................... 5 2.1.2 Fees................................................................................................................ 5
2.1.2.1 Handling fee ................................................................................................5 2.1.2.2 International fees.........................................................................................5
2.1.3 Forms.............................................................................................................. 6 2.1.3.1 Entitlement to file.........................................................................................7 2.1.3.2 Basic mark...................................................................................................7 2.1.3.3 Priority claim(s)............................................................................................9 2.1.3.4 Designated contracting parties ....................................................................9 2.1.3.5 Signature.....................................................................................................9 2.1.3.6 Form for the designation of the USA ...........................................................9
2.1.4 Examination of the international application by OHIM ................................. 10 2.1.5 Irregularities found by WIPO ........................................................................ 10
2.2 Subsequent designations ........................................................................11 2.3 Notification of facts affecting the basic registration..............................12 2.4 Forwarding of changes affecting the international mark....................... 13
2.4.1 Cases where applications for changes can be forwarded without examination .................................................................................................. 14
2.4.2 Cases where applications for changes will be forwarded after examination .................................................................................................. 14
3 OHIM as Designated Office..................................................................... 15 3.1 Overview ...................................................................................................15 3.2 Professional representation ....................................................................16 3.3 First republication, searches and formalities.........................................16
3.3.1 First republication ......................................................................................... 16 3.3.2 Searches....................................................................................................... 17 3.3.3 Formalities examination................................................................................ 17
3.3.3.1 Languages.................................................................................................17 3.3.3.2 Collective marks ........................................................................................18 3.3.3.3 Seniority claims .........................................................................................19
3.4 Absolute grounds for refusal...................................................................21 3.5 Third-party observations .........................................................................22 3.6 Opposition ................................................................................................22
3.6.1 Timing ........................................................................................................... 22 3.6.2 Receipt and informing the international holder............................................. 23 3.6.3 Fees.............................................................................................................. 23 3.6.4 Admissibility check ....................................................................................... 23 3.6.5 Language of proceedings ............................................................................. 24 3.6.6 Representation of the IR holder.................................................................... 24
3.6.6.1 Opposition receipts....................................................................................24 3.6.6.2 Notification of commencement of opposition proceedings ........................25
3.6.7 Provisional refusal (based on relative grounds) ........................................... 25
International Marks
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3.6.8 Suspension of opposition where there is a pending provisional refusal on absolute grounds .......................................................................................... 26
3.7 Cancellation of the IR or renunciation of the EU designation............... 26 3.8 Limitations of the list of goods and services .........................................26 3.9 Confirmation or withdrawal of provisional refusal and issue of
Statement of Grant of Protection ............................................................27 3.10 Second republication ...............................................................................27 3.11 Transfer of the designation of the EU.....................................................28 3.12 Invalidity, revocation and counterclaims................................................28 3.13 Fee management ......................................................................................29
4 Conversion, Transformation, Replacement .......................................... 29 4.1 Preliminary remarks .................................................................................29 4.2 Conversion................................................................................................30 4.3 Transformation .........................................................................................30
4.3.1 Preliminary remarks...................................................................................... 30 4.3.2 Principle and effects ..................................................................................... 31 4.3.3 Procedure ..................................................................................................... 31 4.3.4 Examination .................................................................................................. 32
4.3.4.1 Application for transformation of IR designating the EU where no particulars have been published................................................................32
4.3.4.2 Application for transformation of IR designating the EU where particulars have been published................................................................32
4.3.5 Transformation and Seniority ....................................................................... 33 4.3.6 Fees.............................................................................................................. 33
4.4 Replacement .............................................................................................33 4.4.1 Preliminary remarks...................................................................................... 33 4.4.2 Principle and effects ..................................................................................... 34 4.4.3 Procedure ..................................................................................................... 34 4.4.4 Fees.............................................................................................................. 35 4.4.5 Publication .................................................................................................... 35 4.4.6 Replacement and seniority ........................................................................... 35 4.4.7 Replacement and transformation ................................................................. 35 4.4.8 Replacement and conversion ....................................................................... 35
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This part of the Guidelines focuses specifically on the examination of international marks. For further details on nor mal aspects of procedure, please also consult the other relevant parts of the Guidelines (examination, opposition, cancellation, etc.).
1 Introduction
The purpose of this part of the Guidelines is to explain how, in practice, the link between the Community trade mark (CTM) and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (‘Madrid Protocol’ or MP) affects procedures and s tandards of examination and oppos ition at OHIM. Paragraph 2 deals with OHIM’s tasks as an office of origin, that is, with ‘outgoing’ international applications. Paragraph 3 deals with its tasks as a designated office, that is, with ‘incoming’ international registrations designating the EU (IR). Paragraph 4 deals with conversion, transformation and replacement.
The Guidelines are not intended to, and cannot, add to or subtract from the substance of new Title XIII CTMR and Rules 102-126 CTMIR. OHIM is also bound by the provisions of the Madrid Protocol and the Common Regulations (CR). Reference may also be made to the ‘Guide to the International Registration of Marks’ published by WIPO as the Guidelines do not intend to repeat what is said there.
2 OHIM as Office of Origin
The tasks of OHIM as office of origin chiefly comprise:
• examining and forwarding international applications; • examining and forwarding subsequent designations; • handling notices of irregularity issued by WIPO; • notifying WIPO of certain facts affecting the basic mark during the five-year
dependency period; • forwarding certain requests for changes in the international register.
2.1 Examination and forwarding of international applications
Article 146 CTMR Rule 102(3) CTMIR
International applications filed with OHIM are subject to:
• payment of the handling fee; • the existence of (a) basic CTM registration(s) or application(s) (‘basic mark(s)’); • identity between the international application and the basic mark(s); • proper completion of the MM2 or EM2 form; • an entitlement to file the international application through OHIM.
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2.1.1 Identification of international applications
An international application will be identified in the OHIM database under the basic CTM(A) number followed by the suffix _01 (e.g. 012345678_01) if it relates to a first international application. Further applications based on the same basic CTM(A) will be identified by _02, _03, etc. International applications based on more than one CTM(A) will be identified by the number of the older CTM(A).
Upon receipt of an international application, the examiner will send a receipt to the applicant, quoting the file number.
2.1.2 Fees
2.1.2.1 Handling fee
Article 147(5), Article 150 CTMR Article 2(31) CTMFR Rule 103(1), Rule 104 CTMIR
An international application is only deemed to have been f iled if the handling fee of EUR 300 has been paid.
Payment of the handling fee must be made to OHIM by one of the accepted means of payment (for details, see the Guidelines Part A, General Rules, Section 3, Payment of Fees, Costs and Charges, paragraph 2, Means of Payment).
Where the applicant chooses to base the international application on a CTM once it is registered, the application for the IR is deemed to have been received on the date of registration of the CTM; therefore, the handling fee will be due on the date of registration of the CTM.
The means of payment used may be communicated to OHIM by ticking the appropriate boxes on the EM2 form or by giving this information in the letter accompanying the MM2 form.
If, in the course of examination of the international application, the examiner finds that the handling fee has not been paid, the examiner will inform the applicant and ask it to pay the fee within two months. If payment is made within the two-month time limit set by the OHIM, the date of receipt which OHIM will communicate to WIPO will be t he date the payment reaches OHIM. If payment is still not made within the two-month time limit set by OHIM, OHIM will inform the applicant that it considers the international application not to have been filed and will close the file.
2.1.2.2 International fees
All international fees must be paid directly to WIPO. None of the fees payable directly to WIPO will be collected by OHIM. Any such fees paid by error to OHIM will be reimbursed to the sender.
If the applicant uses EM2 forms, the Fee C alculation Sheet (Annex to WIPO form MM2) must be submitted in the language in which the international application is to be
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transmitted to WIPO. Alternatively, the applicant can attach a copy of the payment to WIPO. However, OHIM will not examine whether the Fee C alculation Sheet is attached, whether it is correctly filled in, or whether the amount of the international fees has been correctly calculated. Any questions regarding the amount of the international fees and related means of payment should be addressed to WIPO. A fee calculator is available on WIPO’s website.
2.1.3 Forms
Article 147(1) CTMR Rules 83(2)(b), 103(2)(a) CTMIR
Use of one of the official forms is compulsory. The official form is either WIPO form MM2, available in English, French or Spanish, or OHIM form EM2 (OHIM adaptation of MM2), which is available in all official EU languages. Applicants may not use other forms or change the contents and layout of the forms. However, both the WIPO MM2 form and the OHIM EM2 form are available in .doc format allowing as much text as necessary to be entered for each item.
If the application is filed in a language that is not one of the Madrid Protocol languages (English, French, Spanish), the applicant must indicate in which of these three languages the application is to be forwarded to WIPO. All items on the form must be completed in the same language; it is not possible to choose a language other than the language of the form.
OHIM recommends using the OHIM EM2 form. The OHIM EM2 form in English, French and Spanish has almost the same layout and numbering as the WIPO MM2 form but is specifically adapted to the CTM environment:
• applicants can indicate payment details (item 0.4) to OHIM in the introductory item 0 and the number of pages (item 0.5) the application contains;
• certain choices are limited to what is applicable to OHIM (e.g. OHIM is always the office of origin (item 1), and the applicant must be a national of an EU Member State (item 3));
• item 4b has been added for including the representative before OHIM; • the reproduction of the mark need not be submitted in item 7, as OHIM will use
the reproduction available in the basic CTM(A); • the option of seeking protection for the same goods and services contained in the
basic mark by ticking a box has been added in item 10; • since self-designation is not possible, the EU is not included in the list of
Contracting Parties to be designated in item 11; • item 13 has been del eted, as OHIM certifies the international application
electronically.
Where the applicant chooses the OHIM EM2 form in a language version other than English, French or Spanish, the following additional sections of the form have to be completed:
• tick boxes in item 0.1 for indicating the MP language in which the international application is to be transmitted to WIPO;
• tick boxes in item 0.2 for selecting the language in which OHIM is to communicate with the applicant on matters concerning the international
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application, that is, either the language in which the international application is filed or the language in which it is to be transmitted to WIPO (see Article 147(1), second sentence, CTMR);
• tick boxes in item 0.3 for indicating either that a translation of the list of goods and services is included or that OHIM is authorised to produce the translation;
• a final item A with tick boxes for specifying annexes (attached translations).
The appropriate boxes in items 0.1, 0.2 and 0.3 must be ticked. If none of the boxes in item 0.2 is ticked, OHIM will communicate with the applicant in the language of the EM2 form.
All applicable items in the form must be completed following the indications provided on the form itself and in the ‘Guide to the International Registration of Marks’ published by WIPO.
2.1.3.1 Entitlement to file
Article 2(1)(i) Madrid Protocol (MP)
Under item 3 of the official form, an indication must be given regarding entitlement to file. An applicant is entitled to file with OHIM as office of origin if it is a national of, or has domicile or a real and effective industrial or commercial establishment in, an EU Member State. The applicant may choose on which criterion/criteria to base the right to file. For example, a D anish national domiciled in Germany can choose to base entitlement to file either on nationality or domicile. A French national domiciled in Switzerland is entitled to file only based on nationality (however, in this case a representative before OHIM must be appointed). A Swiss company with no domicile or real and effective industrial or commercial establishment in an EU Member State is not entitled to file an international application through OHIM.
Where there are multiple applicants, each must fulfil at least one of the entitlement criteria.
The expression ‘real and effective industrial or commercial establishment in an EU Member State’ is to be interpreted in the same way as in other instances, such as in the context of professional representation (see the Guidelines, Part A, General Rules, Section 5, Professional Representation, paragraph 3.1.1).
2.1.3.2 Basic mark
Rule 103(2)(c), (d), (e) CTMIR Rule 9(4)(a)(v), (vii), (vii bis-xii), Rule 11(2) CR
The Madrid system is founded on the requirement of a basic national or regional trade mark application or registration. Under the MP, an i nternational application may be based on either a mark that has already been registered (‘basic registration’), or a trade mark application (‘basic application’) at any point in the trade mark examination procedure.
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An applicant may choose to base its international application on several basic marks providing it is the applicant/proprietor of all the basic CTMAs and CTMs even where, although containing identical marks, the goods and services covered are different.
All the basic CTMA(s) or CTM(s) must have been accorded a filing date, and must be in force.
The international applicant must be identical to the CTM holder/CTMA applicant. The international application may not be filed by a licensee or an affiliated company of the holder of the basic mark(s). A deficiency in this respect may be overcome by transferring the basic mark to the international application applicant, or by recording a change of name, as applicable (see the Guidelines Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer). Where there are multiple holders or applicants in the basic CTM(s) or CTMA(s), the international application must be submitted by the same persons.
The reproduction of the mark must be identical. Particular attention should be paid to the following:
• Item 7 c) of the official form must be ticked if the mark is in standard characters (word mark).
• Item 8 a) of the official form foresees the possibility of making a colour claim. Where the basic CTM(s) or CTMA(s) contain(s) an i ndication of colours, the same indication must be m ade in the international application (see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 11). Where the basic CTM(s) or CTMA(s) is/are in colour but do(es) not contain an indication of colours the applicant may choose to indicate the colours for the international application.
• If the basic mark is
○ a mark for a colour or colour combination as such, ○ a three-dimensional mark, ○ a sound mark, and/or ○ a collective mark,
the international application must be the same, and item 7 d) or 9 d) must be ticked. If the basic mark is a sound mark, only the graphic representation, i.e. the musical notation, will be transmitted to WIPO as WIPO does not accept electronic sound files.
• If the basic mark includes a description, the same description may be included in the international application (item 9 e)). However, a description of the mark may not be added in the international application if the basic mark(s) do(es) not contain one.
• A disclaimer may be included even if the basic mark(s) do(es) not include one (item 9 g)).
• WIPO requires a transliteration in Latin characters if the mark contains characters other than Latin. If no transliteration is provided, WIPO will raise an irregularity, which must be remedied directly by the applicant. This is true for all types of trade marks, not just word marks.
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The list of goods and services must be identical to or narrower than the list contained in the basic mark(s) on the day the international application is filed.
• The applicant must specify the list of goods and services by class (item 10).
• The list may also be limited for some designated parties.
If the applicant does not provide a translation into the WIPO language chosen by it (English, French or Spanish) but instead authorises OHIM to provide the translation or to use the one available for the basic mark(s), it will not be consulted on the translation.
2.1.3.3 Priority claim(s)
If priority is claimed under item 6 of the official form, the office of earlier filing, the filing number (if available) and the filing date must be indicated. Priority documents should not be submitted. Where the earlier filing claimed as a priority right in an international application does not relate to all the goods and services, those to which it does relate should be indicated. Where priority is claimed from several earlier filings with different dates, the goods and services to which each earlier filing relates should be indicated. The validity of the claim will in principle not be challenged by the examiner, as in most cases either the basic CTM(A) is the first filing for which priority is claimed or the priority of another earlier mark has already been claimed and examined in relation to the basic CTM(A). However, if there is evidence in the file that priority is claimed for a right that is not a first filing, the examiner will object and request that the priority claim be deleted.
2.1.3.4 Designated contracting parties
An international application filed at OHIM is governed exclusively by the Madrid Protocol. Only contracting parties that are party to the Protocol can be designated, regardless of whether they are also bound by the Madrid Agreement.
2.1.3.5 Signature
Rule 9(2)(b) CR
The signature in item 12 of the official form is optional since the data will be forwarded only electronically to WIPO and not as an original document or facsimile copy of the form.
2.1.3.6 Form for the designation of the USA
Where the United States of America is designated, a duly completed and signed WIPO MM18 form must be attached (see item 11, footnote **). This form, which contains the declaration of intention to use the mark, is available only in English and m ust be submitted in that language irrespective of the language of the international application.
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2.1.4 Examination of the international application by OHIM
Article 147 CTMR Rule 103(2), Rule 104 CTMIR Article 3(1) MP
Where examination of the international application reveals deficiencies, OHIM will invite the applicant to remedy them within one month. In principle, this short time limit should enable OHIM to forward the international application to WIPO within two months from the date of receipt and thus maintain that date as the date of international registration.
Examiners may try solving minor deficiencies or seeking clarification over the phone in order to speed up the process.
If the deficiencies are not remedied, OHIM will inform the applicant that it refuses to forward the international application to WIPO. The handling fee will not be refunded.
This does not preclude the filing of another international application at a later date.
As soon as OHIM is satisfied that the international application is in order, it will transmit it to WIPO electronically, with the exception of documents such as the Fee Calculation Sheet or the MM18, which will be transmitted as scanned attachments. The electronic transmission will contain the certification by the office of origin referred to in Article 3(1) MP.
2.1.5 Irregularities found by WIPO
Rule 11(4), Rules 12, 13 CR
If WIPO detects irregularities in the application, it will issue an irregularity notice, which will be forwarded to both the applicant and OHIM as office of origin. The irregularities must be remedied by OHIM or the applicant, depending on their nature. Irregularities relating to the payment of the international fees must be remedied by the applicant. Any of the irregularities mentioned in Rule 11(4) CR must be remedied by OHIM.
Where there are irregularities in the classification of the goods and services, in the indication of the goods and services, or in both, the applicant cannot present its arguments directly to WIPO. Instead, they must be c ommunicated through OHIM. In this case, OHIM will forward the applicant’s communication just as it is to WIPO, as OHIM does not make use of either the option under Rule 12(2) CR to express a different opinion or that under Rule 13(2) CR to make a pr oposal to remedy the irregularity.
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2.2 Subsequent designations
Article 149 CTMR Rule 1(xxvi bis), Rule 24(2) CR Article 2(1)(ii) MP Rule 83(2)(b), Rule 105(1)(a), (c), (d), Rule 105(2), (4) CTMIR
Within the framework of the Madrid System, the holder of an international registration can extend the geographical scope of a r egistration’s protection. There is a specific procedure called ‘subsequent designation to a registration’, which extends the scope of the international registration to other members of the Madrid Union for whom either no designation has been recorded to date or the prior designation is no longer in effect.
Unlike international applications, subsequent designations need not be filed through the office of origin but may be filed directly with WIPO. Direct filing with WIPO is recommended for a speedier process.
Where an IR is transferred to a per son who is not entitled to make a subsequent designation through OHIM, the application for such a subsequent designation cannot be filed through OHIM, but must instead be filed through WIPO or the corresponding office of origin (for more information on entitlement to file, see paragraph 2.1.3.1 above).
Subsequent designations may only be made after an initial international application has been made and has resulted in an international registration.
Subsequent designations are not subject to payment of a handling fee to OHIM.
Subsequent designations must be filed on the official form: the WIPO MM4 form in English, French or Spanish or the OHIM EM4 form in the other EU languages. There is no specific OHIM form in English, French and Spanish as no s pecial indications for OHIM are needed in those languages and the WIPO MM4 form is, therefore, sufficient.
The Fee Calculation Sheet (Annex to the WIPO MM4 form) must be submitted in the language in which the subsequent designation is to be transmitted to WIPO. Alternatively, the applicant can attach a copy of the payment to WIPO. However, OHIM will not examine whether the Fee Calculation Sheet is attached, whether it is correctly filled in, or whether the amount of the international fees has been correctly calculated. Any questions regarding the amount of the international fees and related means of payment should be addressed to the International Bureau. A fee calculator is available on WIPO’s website.
In the MM4 or EM4 forms, the indications to be made are limited to indications concerning the applicant and its entitlement to file, indications concerning the representative, the list of goods and services, and the designation of additional Contracting Parties to the Madrid Protocol. These indications must be made in the same way as in the MM2 form. The only difference in the entitlement to file is that a subsequent designation may be filed at OHIM if the international registration is transferred to a person who is a national of an EU Member State or has their domicile or an establishment in the EU (OHIM as ‘office of the contracting party of the holder’).
A subsequent designation may also be used to extend the scope of the IR to enlarge the goods and/or services coverage of a prior designation
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The list of goods and services may be the same as in the international registration (item 5 a) of the official form) or narrower (item 5 b) or c)). It may not be broader than the scope of protection of the international registration even if covered by the basic mark.
For example, an IR for classes 18 and 25 designating China for class 25 can subsequently extended to China for class 18; however, that same IR could not be subsequently extended to China for class 9 as this class is not covered by the international registration, even if it is covered by the basic mark.
Within these limitations, different lists may be presented for different, subsequently designated, contracting parties.
The mark must be the same as in the initial international registration.
Subsequent designations must be made in the same language as the initial international application, failing which OHIM will refuse to forward the subsequent designation.
If the application is not in English, French or Spanish, the applicant must tick item 0.1 on the OHIM EM4 form and indicate the language in which the subsequent designation is to be transmitted to WIPO. That language may be different from the language of the international registration. Items 0.2 and 0.3 regarding the translation of the list of goods and services and t he language of correspondence between the applicant and O HIM must also be completed.
Where the holder/applicant so requests, a s ubsequent designation may take effect after specific proceedings have been concluded, namely the recording of a change or a cancellation in respect of the IR concerned or the renewal of the IR.
2.3 Notification of facts affecting the basic registration
Articles 44, 49 CTMR Rule 106(1)(a), (b), (c), Rule 106(2), (3), (4) CTMIR
If, within five years of the date of the international registration, the basic mark(s) ceases to exist in whole or in part, the international registration is cancelled to the same extent since it is ‘dependent’ thereon. This occurs not only in the event of a ‘central attack’ by a third party, but also if the basic mark(s) lapse(s) due to action or inaction on the part of its proprietor.
For CTMs, this covers cases where, either fully or partially (for only some goods or services),
• the CTMA(s) on which the IR is based is (are) withdrawn, deemed to be withdrawn or refused;
• the CTM(s) on which the IR is based is (are) surrendered, not renewed, revoked or declared invalid by OHIM or, upon a counterclaim in infringement proceedings, by a CTM court.
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Where the above occurs as a r esult of a decision (by OHIM or a C TM court), the decision must be final.
If the above occurs within the five-year period, OHIM must notify WIPO accordingly.
OHIM must check that the international application has actually been registered before notifying WIPO that the basic CTM has ceased to have effect.
WIPO must also be notified in certain cases where a procedure has been initiated prior to expiry of the five-year period but is not finally decided within that period. This notification is to be made immediately after expiry of the five-year period. The cases involved are:
• a pending refusal of the basic CTMA(s) on absolute grounds (including ensuing appeals before the Boards of Appeal or the GC/CJEU);
• pending opposition proceedings (including ensuing appeals before the Boards or the GC/CJEU);
• pending cancellation proceedings before OHIM (including ensuing appeals before the Boards or the GC/CJEU);
• a counterclaim in infringement proceedings against a CTM, according to the CTM Register, which is pending before a CTM court.
Once a final decision has been taken or the proceedings have been terminated, a further notification must be sent to WIPO stating whether and to what extent the basic mark(s) has (have) ceased to exist or remained valid.
If, within five years of the date of the international registration, the basic CTM(s) or CTMA(s) is (are) divided or partially transferred, this must also be no tified to WIPO. However, in those cases, there will be no ef fect on t he validity of the international registration. The purpose of the notification is merely to keep record of the number of mark(s) on which the IR is based.
No other changes in the basic mark(s) will be notified to WIPO by OHIM. Where the applicant/holder wishes to record the same changes in the international register it should apply for this separately (see paragraph 2.4 below)
2.4 Forwarding of changes affecting the international mark
Rule 107 CTMIR
The international register is kept at WIPO. The possible changes listed below may only be recorded once the mark has been registered.
OHIM will not process requests for renewal or payments of renewal fees.
In principle, most changes relating to international registrations can be filed either directly with WIPO by the holder of the international registration on record or through the office of origin. However, some applications for changes can be filed by another party and through another office, as detailed below.
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2.4.1 Cases where applications for changes can be forwarded without examination
Rules 20, 20 bis, Rule 25(1) CR
The following applications for changes relating to an international registration can be presented to OHIM as an ‘office of the contracting party of the holder’:
• WIPO form MM5: change of ownership, either total or partial, submitted by the IR holder on record (in CTM terminology, this corresponds to a transfer);
• WIPO form MM6: limitation of the list of goods and s ervices for all or some contracting parties;
• WIPO form MM7: renunciation of one or more contracting parties (not all); • WIPO form MM8: full or partial cancellation of the international registration; • WIPO form MM9: change of the name or address of the holder; • WIPO forms MM13/MM14: new licence or amendment to a licence submitted by
the IR holder on record; • WIPO form MM15: for cancelling the recording of a license • WIPO form MM19: restriction of the holder’s right of disposal submitted by the IR
holder on record (in CTM terminology, this corresponds to a right in rem, levy of execution, enforcement measure or insolvency proceedings contemplated in Articles 19, 20 and 21 CTMR).
Such applications made to OHIM by the IR holder will simply be f orwarded to WIPO without further examination. The provisions under the CTMR and C TMIR for the corresponding proceedings do not apply. In particular, the language rules applicable are those under the CR, and there is no OHIM fee to be paid.
These applications can only be f iled through OHIM if it is the office of origin or if it acquires competence in respect of the holder as the result of a t ransfer of the international registration (see Rule 1(xxvi bis) CR). However, this condition will not be examined by OHIM because the latter will simply forward the request, which could have been filed with WIPO directly.
No use will be made of the options provided in Rule 20(1)(a) CR that allow an office of the contracting party of the holder to notify the International Bureau of a restriction of the holder’s right of disposal on its own motion.
2.4.2 Cases where applications for changes will be f orwarded after examination
Rule 20(1)(a), Rule 20 bis(1), Rule 25(1)(b) CR Rule 120 CTMIR
The Common Regulations provide that applications for recording a change of ownership, a l icence or a restriction of the holder’s right of disposal may only be f iled directly with WIPO by the holder of the international registration. It would be practically impossible to record a change of ownership or licence with WIPO where:
• the original holder no longer exists (merger, death), or
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• the holder is either not cooperating with its licensee or (even more likely) is the beneficiary of an enforcement measure.
For these reasons, the new holder, licensee or beneficiary of the right of disposal has no choice but to file their application with the office of the contracting party of the holder. WIPO will register such applications without any substantive examination on the basis that they have been transmitted by that office.
To avoid a third person becoming the owner or licensee of an international registration, it is imperative that OHIM examines all applications presented by any person other than the holder of the IRin order to verify that there is proof of the transfer, licence or other right, as provided in Rule 120 CTMIR. OHIM limits itself to examining proof of the transfer, licence or other right, and Rule 31(1), (5) CTMIR and the corresponding parts of the OHIM Guidelines on transfers, licences, rights in rem, levy of execution and insolvency proceedings apply by analogy. If no proof is furnished, OHIM will refuse to forward the application to WIPO.
This decision is open to appeal.
In all other respects, the rules under the CTMR and CTMIR do not apply. In particular, the application must be in one of the WIPO languages and on the appropriate WIPO form, and no fee is payable to OHIM.
3 OHIM as Designated Office
3.1 Overview
Since 01/10/2004, any person who is a nat ional of, or has a domicile or commercial establishment in, a State which is party to the Madrid Protocol and who is the owner of a national application or registration in that same State (a ‘basic mark’) may, through the national office where the basic mark is applied for or registered (the ‘office of origin’), file an international application or a subsequent designation in which they can designate the European Union.
Once it has examined classification and checked certain formalities (including payment of fees), WIPO will publish the IR in the International Gazette, issue the certificate of registration and no tify the designated offices of the international registration. OHIM receives the data from WIPO exclusively in electronic form.
International registrations designating the EU are identified by OHIM under their WIPO registration number preceded by a ‘W’ and followed by a 0 in the case of a new IR (e.g. W01 234 567) and a 1 in the case of a subsequent designation (e.g. W10 987 654). Further designations of the EU for the same IR will be i dentified as W2, W3, etc. However, when searching in OHIM databases online the ‘W’ should not be indicated.
OHIM has 18 months to inform WIPO of all possible grounds for refusal of the EU designation. The 18-month period starts on the day on which OHIM is notified of the designation.
Where corrections are received from WIPO that affect the mark itself, the goods and services or the designation date, it is up to OHIM to decide if a new 18-month period is to start running from the new notification date. Where a correction affects only part of the goods and services, the new time limit applies only to that part and OHIM would
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have to re-publish the IR in part in the CTM Bulletin and re-open the opposition period only for that part of the goods and services.
The main tasks performed by OHIM as designated office are:
• first republication of IRs designating the EU; • drawing up of Community search reports; • examination of formalities, including seniority claims; • examination on absolute grounds; • examination of oppositions against IRs; • processing of communications from WIPO concerning changes to the IRs.
3.2 Professional representation
Article 92(2) Article 93 CTMR
In principle, the IR holder does not need to appoint a representative before OHIM.
Non-EU holders are, however, obliged to be r epresented (a) further to a provisional refusal, (b) for filing seniority claims directly before OHIM, or (c) further to an objection on a seniority claim (see the Guidelines, Part A, General Rules, Section 5, Professional Representation and Articles 92 and 93 CTMR).
If the non-EU IR holder has appointed a representative before WIPO who also appears in the database of representatives maintained by OHIM, this representative will automatically be considered to be the representative of the IR holder before OHIM.
Where the non-EU IR holder has not appointed a r epresentative or has appointed a representative before WIPO who does not appear in the database of representatives maintained by OHIM, any notifications of provisional refusal or objection will contain an invitation to appoint a representative in compliance with Articles 92 and 93 CTMR. For the particularities of representation in each of the proceedings before OHIM, see paragraphs 3.3.3, 3.4 and 3.6.6 below.
3.3 First republication, searches and formalities
3.3.1 First republication1
Article 152 CTMR
Upon receipt, IRs will immediately be republished in Part M.1 of the CTM Bulletin, except where the second language is missing.
Publication will be l imited to bibliographic data, the reproduction of the mark and the class numbers, and will not include the actual list of goods and services. This means, in particular, that OHIM will not translate international registrations or the list of goods and services. The publication will also indicate the first and second languages of the IR and contain a reference to the publication of the IR in the WIPO Gazette, which should be
1 IRs are published first in the International Gazette and then ‘republished’ by OHIM.
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consulted for further information. For more details, reference is made to the CTM Bulletin on OHIM’s website.
The international registration has, from the date of first republication, the same effect as a published CTM application.
3.3.2 Searches
Article 155 CTMR
As with direct CTM filings, OHIM will draw up a Community search report for each IR, which will cite similar CTMs and I Rs designating the EU. The owners of the earlier marks cited in the report will receive a surveillance letter in accordance with Article 155(4) CTMR. In addition, upon request by the international holder, OHIM will send the IR to the participating national offices to have national searches carried out (see the Guidelines Part B, Examination, Section 1, Proceedings).
The national search request must be filed directly with OHIM. Holders of IRs designating the EU must request the national searches and pay the corresponding fee within a period of one month from when WIPO informs OHIM of the designation. Late or missing payments of search fees will be dealt with as if the request for national searches had not been filed and then only the Community search report will be drawn up.
Payment can be made using any of the means of payment accepted by OHIM (for details, see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges, paragraph 2).
The search reports will be sent directly to the IR holder or, if the latter has appointed a representative before WIPO, to that representative, irrespective of location. The holder will not be r equired to appoint a r epresentative before OHIM for the sole purpose of receiving the search report or requesting national searches.
3.3.3 Formalities examination
The formalities examination carried out by OHIM on IRs is limited to whether a second language has been i ndicated, whether the application is for a c ollective mark and whether there are any seniority claims. OHIM will not review the classification of goods and services performed by WIPO.
3.3.3.1 Languages
Article 119(3), (4) CTMR Rule 96(1), Rules 112, 126 CTMIR Rule 9(5)(g)(ii) CR
Rule 9(5)(g)(ii) CR and Rule 126 CTMIR require the applicant for an international application designating the EU to indicate a second language, different from the first one, selected from the four remaining languages of OHIM by ticking the appropriate box in the contracting parties section of WIPO forms MM2/MM3 or MM4.
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According to Rule 126 CTMIR, the language of filing of the international application will be the language of the proceedings within the meaning of Article 119(4) CTMR. If the language chosen by the international registration holder in written proceedings is not the language of the international application, the holder must supply a translation into that language within one month from when the original document was submitted. If the translation is not received within this time limit, the original document is deemed not to have been received by OHIM.
The second language indicated in the international application will be the second language within the meaning of Article 119(3) CTMR, that is, a possible language of proceedings for opposition, revocation or invalidity proceedings before OHIM.
Where no second language has been indicated, the examiner will issue a provisional refusal of protection and give the holder two months from the day on which OHIM issues the provisional refusal pursuant to Rule 112 CTMIR to remedy the deficiency. Where the IR holder is obliged to be represented in proceedings before OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, the notification of provisional refusal will invite the holder to appoint a representative in compliance with Articles 92 and 93 CTMR. This notification will be r ecorded in the international register, published in the Gazette and communicated to the IR holder. The reply to the provisional refusal must be addressed to OHIM.
If the IR holder remedies the deficiency and complies with the requirement to appoint a representative before OHIM, if applicable, within the prescribed time limit, the IR will proceed to republication.
If the deficiency has not been r emedied and/or a r epresentative has not been appointed (if applicable), OHIM will confirm the refusal to the IR holder. The holder has two months within which to lodge an appeal. Once the decision is final, OHIM will inform WIPO that the provisional refusal is confirmed.
3.3.3.2 Collective marks
Articles 66, 67 CTMR Rule 43, Rule 121(1), (2), (3) CTMIR
In the CTM system, there are only two kinds of mark: individual marks and collective marks (for more details see the Guidelines, Part B, Examination, Section 2, Formalities).
The international application form contains one s ingle indication grouping collective marks, certification marks and guarantee marks. Therefore, if the IR designating the EU is based on a national certification mark, guarantee mark or collective mark, it will be identified as a collective mark before OHIM; this entails the payment of higher fees.
The conditions applying to Community collective marks will also apply to IRs designating the EU as a collective mark.
According to Rule 121(2) CTMIR, the holder must submit the regulations governing use of the mark directly to OHIM within two months of the date on which the International Bureau notified OHIM of the designation.
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If, by then, the regulations on use have not been submitted or contain irregularities, or the holder does not comply with the requirements of Article 66, the examiner will issue a provisional refusal of protection and give the holder two months from the day on which OHIM issues the provisional refusal pursuant to Rule 121(3) CTMIR to remedy the deficiency. Where the IR holder is obliged to be represented in proceedings before OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, the notification of provisional refusal will invite the holder to appoint a representative in compliance with Articles 92 and 93 CTMR. This notification will be recorded in the international register, published in the Gazette and communicated to the IR holder. The reply to the provisional refusal must be addressed to OHIM. If the IR holder remedies the deficiency and complies with the requirement to appoint a representative before OHIM, if applicable, within the prescribed time limit, the international registration will proceed.
If the deficiency has not been r emedied and/or a r epresentative has not been appointed (if applicable), OHIM will confirm the refusal to the IR holder, and grant a two-month time limit for lodging an appeal. Once the decision is final, OHIM will inform WIPO that the provisional refusal is confirmed.
When, in the answer to the provisional refusal, elements are submitted satisfying OHIM that the basic mark is a certification mark or guarantee mark and the IR holder is not qualified to be the owner of a Community collective mark, OHIM will examine the designation as an individual mark. The IR holder will be informed accordingly and will also be r eimbursed with the difference in euros between the fees for an i ndividual designation of the EU and for a collective one.
3.3.3.3 Seniority claims
Seniority claims filed together with the designation
Article 153(1) CTMR Rule 9(3)(d), Rule 9(7), Rule 108, Rule 109(1), (2), (3), (4) CTMIR Rule 9(5)(g)(i), Rule 21 bis CR
The applicant may, when designating the EU in an i nternational application or a subsequent designation, claim the seniority of an earlier mark registered in a Member State. Such a c laim must be pr esented by attaching form MM17 to the international application or subsequent designation request, which should include for each claim:
• the EU Member State in which the earlier right is registered; • the registration number; • the filing date of the relevant registration.
There is no equivalent provision to Rule 8(2) CTMIR applicable to direct CTM filings.
No certificates or documents in support of the seniority claims should be attached to the MM17 form, as they will not be transmitted to OHIM by WIPO. Seniority claims presented together with the international application or subsequent designation will be examined in the same way as seniority claims presented with a Community trade mark application. For more information, please refer to the Guidelines, Part B, Examination, Section 2, Formalities.
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If it is necessary to file documentation in support of the seniority claim or if the claim contains irregularities, the examiner will issue a deficiency letter giving the IR holder two months within which to remedy the deficiency. Where the IR holder is obliged to be represented in proceedings before the OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, the holder will also be invited to appoint a representative before OHIM.
If the seniority claim is accepted by OHIM, the IP offices concerned will be informed. WIPO need not be informed since no change in the international register is required. If the deficiency has not been r emedied and/or a r epresentative has not been appointed (if applicable), the right of seniority will be lost pursuant to Rule 109(2) CTMIR. The IR holder may request a decision, which can be appealed. Once it is final, OHIM will inform WIPO of any loss, refusal or cancellation of the seniority right or of any withdrawal of the seniority claim. Those changes will be recorded in the international register and published by WIPO.
Seniority claims filed directly before OHIM
Article 153(2) CTMR Rule 110(1), (2), (4), (5), (6) CTMIR Rule 21 bis (2) CR
The IR holder may also claim the seniority of an earlier mark registered in a Member State directly before OHIM upon publication of the final acceptance of the IR. Where the IR holder is obliged to be represented in proceedings before OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, OHIM will invite the holder to appoint a representative in compliance with Articles 92 and 93 CTMR.
The reply to the deficiency letter must be addressed to OHIM.
Any seniority claim presented in the interval between the filing of the international application and the publication of the final acceptance of the IR will be deemed to have been received by OHIM on the date of publication of the final acceptance of the IR and will therefore be examined by OHIM after that date.
If it is necessary to file documentation in support of the seniority claim or if the claim contains irregularities, the examiner will issue a deficiency letter giving the IR holder two months within which to remedy the deficiency. Where the holder of the international registration is obliged to be r epresented in proceedings before OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, the holder will also be r equested to appoint a representative before OHIM.
If the seniority claim is accepted by OHIM, it will inform WIPO, which will record this fact in the international register and publish it.
The IP offices concerned will be informed pursuant to Rule 110(6) CTMIR.
If the deficiency is not remedied and/or a r epresentative has not been appointed (if applicable), the seniority right will be refused and the IR holder will be given two
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months within which to lodge an appeal. In such cases, WIPO is not informed. The same applies if the seniority claim is abandoned.
3.4 Absolute grounds for refusal
Article 154(1) CTMR Rule 112(5), 113 CTMIR
International registrations designating the EU shall be s ubject to examination as to absolute grounds for refusal in the same way as direct CTMAs (for details, please consult the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal and Community Collective Marks).
If OHIM finds that the mark is eligible for protection, it will send an interim status of the mark to WIPO, indicating that the ex-officio examination has been completed, but that the IR is still open t o oppositions or third-party observations. This notification will be recorded in the international register, published in the Gazette and communicated to the IR holder.
If OHIM finds that the mark is not eligible for protection, it will send a provisional refusal of protection, giving the holder two months from the day on which the provisional refusal is sent to file observations. Where the holder of the international registration is obliged to be represented in proceedings before OHIM and its representative before WIPO does not appear in the database of representatives maintained by OHIM, the notification of provisional refusal will also invite the holder to appoint a representative in compliance with Articles 92 and 93 C TMR. This notification will be r ecorded in the international register, published in the Gazette and communicated to the IR holder. The reply to the provisional refusal must be addressed to OHIM.
If, after re-examining the case, the objection is waived, the examiner will issue an interim status of the mark to WIPO, provided that the opposition period is still running.
Where no provisional refusal has been issued by OHIM before the start of the opposition period (six months after republication), the absolute grounds examination shall be considered concluded. OHIM will, therefore, send an interim status of the mark to WIPO.
Once the provisional refusal has been sent, further examination is the same as for a direct CTMA; direct exchanges with the holder or its representative will be held as often as required.
Replies received by the IR holder or its representative will not be addr essed where both are located outside the EU.
If the holder fails to overcome the objections or convince the examiner that they are unfounded, or refrains from replying to the objection, the refusal will be confirmed to the extent identified in the provisional refusal. In other words, if the provisional refusal concerned only part of the goods and services, only those goods and services will be refused and the remaining goods and services will be accepted. The IR holder will be given two months within which to lodge an appeal.
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Once the decision is final and provided that the refusal is total, OHIM will inform WIPO that the provisional refusal is confirmed. If the absolute grounds refusal is only partial, the communication to WIPO will be issued once all other procedures (oppositions) are terminated or the opposition period is over with no opposition received (see point 3.9 below).
3.5 Third-party observations
Article 40 CTMR Rule 112(5) CTMIR
Third-party observations can be validly filed at OHIM from the date of notification of the IR to OHIM until at least the end of the opposition period and, if an opposition was filed, as long as the opposition is pending, but not beyond the 18-month period OHIM has for informing WIPO of all possible grounds for refusal (see paragraph 3.1 above).
If third-party observations are received before OHIM communicates the outcome of the absolute grounds examination to WIPO and OHIM considers the observations justified, a provisional refusal will be issued without mentioning the third-party observations.
If third-party observations are received after a provisional refusal on absolute grounds has been i ssued in relation to goods and s ervices other than those to which the observations relate and the OHIM considers the observations justified, a further provisional refusal will be issued without mentioning the third-party observations.
If third-party observations are received after an interim status of the mark has been issued and the OHIM considers them justified, a provisional refusal further to third-party observations will be i ssued. The observations will be at tached to the provisional refusal.
The further examination procedure is identical to the procedure described in the Guidelines, Part B, Examination, Section 1, Proceedings, paragraph 3.1, Procedural aspects concerning observations by third parties and review of absolute grounds.
If OHIM considers the observations unjustified, they will simply be forwarded to the applicant without WIPO being informed.
3.6 Opposition
Article 156 CTMR Rules 114 and 115 CTMIR
3.6.1 Timing
Oppositions may be filed against the international registration between the sixth month and the ninth month following the date of first republication. For example, if the first republication is on 15/02/2012, the opposition period starts on 16/08/2012 and ends on 15/11/2012.
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The opposition period is fixed and is independent of the outcome of the procedure on absolute grounds. Nevertheless, the start of the opposition procedure depends on the outcome of the absolute grounds examination insofar as the opposition procedure may be suspended if an absolute grounds refusal is issued.
Oppositions filed after the republication of the IR but prior to the start of the opposition period will be kept on hold and be deemed to have been filed on the first day of the opposition period. If the opposition is withdrawn before that date, the opposition fee is refunded.
For full details on t he opposition procedure, please consult the Guidelines, Part C, Opposition, Section 1, Procedural Matters.
3.6.2 Receipt and informing the international holder
Rule 16a, Rule 114(3) CTMIR
OHIM will issue a receipt to the opponent. If the opposition has been received before the beginning of the opposition period, a letter will be sent to the opponent, informing it that the opposition will be deem ed to have been received on t he first day of the opposition period and that the opposition will be put on hold until then.
OHIM will also send a copy of the notice of opposition to the IR holder or, if the latter has appointed a representative before WIPO and OHIM holds sufficient contact information, to that representative, irrespective of location, for information purposes.
3.6.3 Fees
Article 156(2) CTMR Rule 54 CTMIR
The opposition shall not be treated as duly entered until the opposition fee has been paid. If payment of the fee within the opposition period cannot be es tablished, the opposition will be deemed not to have been entered.
If the opponent disagrees with this finding, it has the right to request a formal decision on loss of rights. If OHIM decides to confirm the finding, both parties will be informed thereof. If the opponent appeals this decision, OHIM will issue a provisional refusal to WIPO, even if incomplete, for the sole purpose of meeting the 18-month time limit. If the decision becomes final, the provisional refusal will be r eversed. Otherwise, the opposition procedure will start in the normal manner.
3.6.4 Admissibility check
Article 92(2) CTMR Rules 17, 115 CTMIR
OHIM will examine whether the opposition is admissible and whether it contains the particulars required by WIPO.
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If the opposition is considered inadmissible, OHIM will inform the IR holder accordingly and no provisional refusal based on an opposition will be sent to WIPO.
For full details on oppos ition proceedings see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.
3.6.5 Language of proceedings
Article 119(6) CTMR Rule 16(1) CTMIR
Oppositions (like cancellation requests) must be filed in the language of the international registration (the first language) or in the second language that the international holder is obliged to indicate when designating the EU. The opponent may choose one of these two languages as the language of the opposition proceedings. The opposition may also be filed in any of the other three OHIM languages provided that a translation into the language of the proceedings is filed within one month.
OHIM will use:
• the language of the opposition proceedings chosen by the opponent in all communications made directly to the parties;
• the language in which the IR was registered by WIPO (first language) in all communications with WIPO, e.g. the provisional refusal.
3.6.6 Representation of the IR holder
3.6.6.1 Opposition receipts
Rule 16a CTMIR
If applicable, in the opposition receipts OHIM will inform the IR holder that if it does not appoint a representative who complies with the requirements stipulated in Articles 92(3) or 93 CTMR within one month of receipt of the communication, OHIM will communicate the formal requirement to appoint a representative to the IR holder together with the opposition deadlines once the opposition is found admissible.
Where the IR holder has a WIPO representative within the EU who does not appear in the database of representatives maintained by OHIM, OHIM will inform this representative that if they wish to represent the IR holder before OHIM they must specify the basis of their entitlement (i.e. whether they are a legal practitioner or professional representative within the meaning of Article 93(1)(a) or (b) CTMR or an employee representative within the meaning of Article 92(3) CTMR) (see also the Guidelines, Part A, General Rules, Section 5, Professional Representation).
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3.6.6.2 Notification of commencement of opposition proceedings
Rule 18(1) CTMIR
If the opposition has been found admissible and where, despite the invitation pursuant to paragraph 3.6.6.1 above, the IR holder fails to appoint an EU representative before the opposition has been notified as admissible, further processing of the file will depend on whether or not the IR holder is obliged to be represented before OHIM pursuant to Article 92(2) CTMR.
• If the IR holder is not obliged to be represented before OHIM, the proceedings will continue directly with the IR holder, i.e. the IR holder will be sent notification of the admissibility of the opposition and the time limits set for substantiation.
• If the IR holder is obliged to be represented before OHIM, the IR holder will be notified of the admissibility of the opposition and will be formally requested to appoint an EU representative within two months of receipt of the communication (Rule 114(4) CTMIR), failing which the IR will be refused with a right to appeal. Once the decision is final the opposition proceedings will be c losed and WIPO will be informed. For the attribution of costs, the normal rules apply. This means that no decision on the costs will be taken and the opposition fee will not be refunded.
3.6.7 Provisional refusal (based on relative grounds)
Article 156(2) CTMR Rule 18, Rule 115(1) CTMIR Article 5(1), Article 5(2)(a), (b) MP Rule 17(1)(a), (2)(v) CR
Any opposition that is deemed to have been entered and is admissible will lead to a notification of provisional refusal being sent to WIPO based on the pending opposition. WIPO will be informed of every admissible opposition duly entered within the opposition period by means of a separate provisional refusal for each opposition.
The provisional refusal will contain the list of goods and s ervices against which the opposition is directed, the earlier rights invoked, and the relevant list of goods and services on which the opposition is based.
The opponent must provide the list of goods and services on which the opposition is based in the language of the opposition proceedings. OHIM will send this list to WIPO in that language and w ill not translate it into the language in which the international registration was registered.
This notification will be recorded in the international register, published in the Gazette and communicated to the IR holder. It will not, however, contain any time limit, as the time limit for commencement of the proceedings will be set in the direct notification to the parties made in parallel by OHIM, as in the case of a normal CTM.
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3.6.8 Suspension of opposition where there is a pending provisional refusal on absolute grounds
Rule 18(2), 20 (7) CTMIR
If the opposition was filed after OHIM had already sent a notification of provisional refusal on absolute grounds in relation to the same goods and services, OHIM will inform WIPO of the provisional refusal and communicate to the parties that, as from the date of the communication, the opposition procedure is suspended until a final decision on absolute grounds is issued.
If the provisional refusal on absolute grounds leads to a final refusal of protection for all goods and services or for those contested by the opposition, the opposition procedure is closed without proceeding to a decision and the opposition fee is refunded.
If the refusal on absolute grounds is not maintained or is only partially maintained, the opposition procedure is resumed for the remaining goods and services.
3.7 Cancellation of the IR or renunciation of the EU designation
If, further to a provisional refusal on absolute or relative grounds, the holder requests the cancellation of the IR from the international register or renounces its designation of the EU, the file is closed upon r eceipt of the notification by WIPO. If this happens before the start of the adversarial part of the opposition proceedings, the opposition fee is reimbursed to the opponent, since it is equivalent to withdrawal of the CTMA. The IR holder must submit such requests to WIPO (or through the office of origin) using the official form (MM7/MM8). OHIM cannot act as an intermediary and w ill not forward these requests to WIPO.
However, cancellation of the IR at the request of the office of origin (due to a ‘central attack’ during the five-year dependency period) is considered equivalent to rejection of the CTMA in parallel proceedings under Rule 18(2) CTMIR, in which case the opposition fee is not reimbursed.
3.8 Limitations of the list of goods and services
OHIM cannot communicate limitations as such to WIPO.
Therefore, further to a provisional refusal on absolute or relative grounds, the IR holder can choose to limit the list of goods or services:
• either through WIPO, using the appropriate form (MM6/MM8) (in which case, provided the limitation allows the objection to be waived, OHIM will communicate to WIPO that the provisional refusal is withdrawn), or
• directly with OHIM. In this case OHIM will communicate the limitation to WIPO by confirming the provisional refusal. In other words, WIPO’s register will reflect the partial refusal, not the limitation as such.
Where there is no provisional refusal pending, all limitations must be filed only through WIPO.
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Limitations will be examined in the same way as limitations or partial surrenders of a CTM(A) (see the Guidelines, Part B, Examination, Section 3, Classification, and the Guidelines, Part E, Register Operations, Section 1, Changes in a Registration). When the limitation has been submitted through WIPO and i s considered unacceptable by OHIM, a declaration that the limitation has no ef fect in the territory of the EU will be issued pursuant to Rule 27(5) CR. This declaration will not be s ubject to review or appeal.
Partial cancellations at the request of the office of origin (further to a ‘central attack’ during the five-year dependency period) will be recorded as they are by OHIM.
If the limitation is submitted before the start of the adversarial part of the opposition proceedings and allows the opposition proceedings to be terminated, the opposition fee is reimbursed to the opponent.
3.9 Confirmation or w ithdrawal of pro visional refusal and issue of Statement of Grant of Protection
Rules 113(2)(a), 115(5)(a), 116(1) CTMIR
If one o r several notifications of provisional refusal have been s ent to WIPO, OHIM must, once all procedures have been completed and all decisions are final,
• either confirm the provisional refusal(s) to WIPO
• or send a Statement of Grant of Protection to WIPO indicating that the provisional refusal(s) is/are partially or totally withdrawn. The Statement of Grant of Protection must specify for which goods and services the mark is accepted.
If, upon expiry of the opposition period, the IR has not been the subject of any provisional refusal, OHIM will send a Statement of Grant of Protection to WIPO for all the goods and services.
The Statement of Grant of Protection must include the date on w hich the IR was republished in Part M.3 of the CTM Bulletin.
OHIM will not issue any registration certificate for IRs.
3.10 Second republication
Articles 151(2),(3), 152(2), Article 160 CTMR Rule 116(2) CTMIR
The second republication by OHIM will take place when, upon c onclusion of all procedures, the IR is (at least in part) protected in the EU.
The date of the second republication will be the starting point for the five-year use period and the date from which the registration may be invoked against an infringer.
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From the date of second republication, the international application has the same effects as a registered CTM. These effects may therefore come into force before the 18-month time limit has elapsed.
Only the following data will be published in Part M.3.1 of the CTM Bulletin:
111 Number of the international registration; 460 Date of publication in the International Gazette (if applicable); 400 Date(s), number(s) and page(s) of previous publication(s) in the CTM Bulletin; 450 Date of publication of the international registration or subsequent designation in
the CTM Bulletin.
3.11 Transfer of the designation of the EU
Rule 120 CTMIR
The IR represents a single registration for administrative purposes since it is one entry in the international register. However, in practice, it is a bundle of national (regional) marks with regard to substantive effects and the trade mark as an object of property. As regards the link with the basic mark, while the IR must originally be in the name of the proprietor of the basic mark, it may thereafter be transferred independently of the basic mark.
In fact, a ‘transfer of the international registration’ is nothing more than a transfer of the mark with effect for one, several or all designated Contracting Parties. In other words, it is equivalent to a transfer of the corresponding number of national (regional) marks.
Transfers may not be presented directly to OHIM in its capacity as designated office; they must be submitted to WIPO or through the office of the contracting party of the holder using the WIPO MM5 form. Once recorded by WIPO, the change of ownership of the designation of the EU will be notified to OHIM and automatically integrated into the OHIM database.
In its capacity as designated office, OHIM has nothing to examine for the transfer. Rule 27(4) CR allows a designated office to declare to WIPO that, as far as its designation is concerned, a change of ownership has no effect. However, OHIM does not apply this provision since it does not have the authority to re-examine whether the change in the international register was based on proof of the transfer. Furthermore, OHIM does not re-examine the mark for potential deceptiveness either (Article 17(4) CTMR) unless the transfer is filed during the absolute grounds examination phase.
3.12 Invalidity, revocation and counterclaims
Articles 51, 52, 53, Articles 151(2), 152(2), Articles 158, 160 CTMR Rule 117 CTMIR
The effects of an I R designating the EU may be dec lared invalid; the application for invalidation of the effects of an IR designating the EU corresponds, in CTM terminology, to an application for declaration of revocation or for invalidity.
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There is no time limit for filing an application for invalidity/revocation with the following exceptions:
• an application for invalidity of an IR designating the EU is only admissible once the designation has been finally accepted by OHIM, namely once the Statement of Grant of Protection has been sent.
• an application for revocation on the basis of non-use of an IR designating the EU is only admissible if, at the date of filing the request, the final acceptance of the IR had been republished by OHIM at least five years earlier (see Article 160 CTMR, stating that the date of publication pursuant to Article 152(2) takes the place of the date of registration for the purpose of establishing the date as from which the mark that is the subject of an IR designating the EU must be put to genuine use in the European Union).
OHIM will examine the request as if it were directed against a direct CTM (for further information, see the Guidelines, Part D, Cancellation).
If the IR designating the EU is totally or partially invalidated/revoked further to a final decision or a c ounterclaim action, OHIM will notify WIPO according to Article 5(6) Madrid Protocol and Rule 19 CR. WIPO will record the invalidation/revocation and publish it in the International Gazette.
3.13 Fee management
As a c onsequence of setting the equivalent of the registration fee at zero for direct CTMs and the application of this change to Madrid fees on 12/08/2009, there will no longer be any reimbursement of part of the individual fee for IRs designating the EU with a designation date later than the above date that are finally refused or for which the IR holder has renounced protection in respect of the EU prior to the refusal decision becoming final pursuant to Articles 154 and 156 CTMR.
Pursuant to Article 3 (last paragraph) of Commission Regulation (EC) No 355/2009 of 31/03/2009 amending Commission Regulation (EC) No 2869/95 of 13/12/1995 on the fees payable to OHIM, designations of the EU filed before 12/08/2009 will continue to benefit from a refund of the registration fee in the event of refusal or withdrawal as per Article 13 CTMFR in the version in force prior to the entry into force of Commission Regulation No 355/2009.
4 Conversion, Transformation, Replacement
4.1 Preliminary remarks
Conversion or transformation
Both apply when an IR designating the EU ceases to have effect, but for different reasons:
• When an IR ceases to have effect because the mark of origin has been the subject of a ‘central attack’ during the five-year dependency period, transformation into a direct CTM application is possible. Transformation is not available when the IR has been cancelled at the holder’s request or the holder has renounced in part or in whole the designation of the EU. The EU designation
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must still be ef fective when the transformation is requested, that is, it must not have been f inally refused by OHIM; otherwise, there will be not hing left to transform and conversion of the designation would be the only possibility.
• When the IR designating the EU is finally refused by OHIM or ceases to have effect for reasons independent of the basic trade mark, only conversion is available. Conversion is possible within the prescribed time limit even if, in the meanwhile, the IR has also been cancelled from the international register at the request of the office of origin, i.e. via a ‘central attack’.
4.2 Conversion2
Articles 112 to 114, 159 CTMR Rule 24(2)(a)(iii) CR
The legal option of conversion has its origins in the CTM System, which has been adapted to allow a designation of the EU through an IR to be converted into a national trade mark application, just like for a direct CTM. The CTM System and Madrid System have also been adapted to allow for conversion into a designation of Member States party to the Madrid System (known as ‘opting back’). Malta is not party to the Madrid System.
The latter is forwarded to WIPO as a r equest for subsequent designation of the Member State(s). This type of subsequent designation is the only one that, instead of being filed with the office of origin or with WIPO directly, has to be filed through the designated office.
For full details on C onversion, see the Guidelines, Part E, Register Operations, Section 2, Conversion.
4.3 Transformation
Article 6(3), Article 9 quinquies MP Article 161 CTMR Rule 84(1)(p), Rule 124 CTMIR
4.3.1 Preliminary remarks
Transformation has its origins solely in the Madrid Protocol. It was introduced in order to soften the consequences of the five-year dependency period already set in place by the Madrid Agreement. Where an IR is cancelled in whole or in part because the basic mark has ceased to have effect, and the holder files an application for the same mark and same goods and s ervices as the cancelled registration with the office of any contracting party for which the IR had effect, that application will be treated as if it had been filed on the date of the IR or, where the contracting parties had been designated
2 In English, ‘conversion’ is used to describe a specific legal provision of the CTM System (Article 112 et seq.) while ‘transformation’ is used to describe that in Article 9 quinquies of the Madrid Protocol. In other languages, only one word is used to describe these two different legal provisions (e.g. in Spanish ‘transformación’). In order to avoid confusion, the English word ‘conversion’ could be used in parentheses when, for example, the Spanish word ‘transformación’ is used within the meaning of Article 112 CTMR.
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subsequently, on the date of the subsequent designation; it shall also enjoy the same priority, if any.
This filing is not governed by the Protocol, nor is WIPO involved in any way. Unlike conversion, transformation of the EU designation into national applications is not possible. Nor is it possible to transform an EU designation into individual Member State designations. If the EU has been designated, the IR has effect in the EU and not in individual Member States as such.
The EU designation must still be effective when the transformation is requested, that is, it must not have been finally refused by OHIM; otherwise, there will be nothing left to transform and conversion of the designation would be the only possibility.
4.3.2 Principle and effects
Article 27 CTMR
Following a cancellation in whole or in part of an I R designating the EU at the request of the office of origin under Article 9 quinquies of the Protocol (i.e. following a ‘central attack’ during the five-year dependency period), the holder may file a ‘direct’ CTM application for the same mark and same goods and services as the cancelled mark.
The application resulting from the transformation will be treated by OHIM as if it had been filed on the date of the original IR or, where the EU was designated subsequently to the IR, on the date of the subsequent designation; it shall also enjoy the same priority, if any.
The date of the IR or of the subsequent designation will not become the filing date of the Community trade mark application. Article 27 CTMR, which applies mutatis mutandis, lays down clear conditions for the granting of a filing date, subject also to payment of the application fee within one m onth. However, the date of the IR or subsequent designation will be the date that determines the ‘earlier right effect’ of the CTM for the purposes of priority searches, oppositions, etc.
Unlike for priority and seniority claims (Rule 9(8) CTMIR), it is not possible to have a ‘split’ or ‘partial’ date, with one date being only for those goods which were contained in the IR and the filing date of the Community trade mark application being the relevant date for the additional goods and services. No such partial transformation effect is foreseen in Article 9 quinquies of the Madrid Protocol or Article 161 CTMR.
Renewal starts to run from the filing date of the transformed CTM.
4.3.3 Procedure
The conditions for invoking a transformation right under Article 9 quinquies of the Madrid Protocol are:
• that the application is filed within a period of three months from the date on which the IR was cancelled in whole or in part, and
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• that the goods and services of the ensuing application are in fact covered by the list of goods and services of the designation of the EU.
The applicant needs to claim this right in the relevant section provided in the CTM e- filing or CTM application form. The following indications must be given in this section:
1. number of the IR that has been cancelled in whole or in part; 2. date on which the IR was cancelled in whole or in part by WIPO; 3. date of the IR pursuant to Article 3(4) MP or date of territorial extension to the EU
made subsequently to the IR pursuant to Article 3 ter (2) MP; 4. date of priority claimed in the IR, if any.
OHIM will invite the applicant to remedy any deficiencies detected within a per iod of two months. If the deficiencies are not remedied, the right to the date of the IR or the territorial extension and, if any, of the priority of the IR will be lost. In other words, should the transformation be finally refused, the CTMA will be examined as a ‘normal’ application.
4.3.4 Examination
4.3.4.1 Application for transformation of IR designating the EU where no par ticulars have been published
When the application for transformation relates to an IR designating the EU for which the particulars have not been publ ished pursuant to Article 152(2) CTMR (in other words that has not been finally accepted by OHIM), the CTM resulting from transformation will be treated as a normal CTM application; it will be examined as to classification, formalities and absolute grounds and published for opposition purposes. Nothing in the regulations allows OHIM to omit the examination process.
Nevertheless, since this case presupposes that an IR designating the EU had already existed, OHIM can take advantage of the classification of the list of goods and services of the cancelled IR (as far as it complies with OHIM rules) as well as the Community search reports already issued for that IR (since the date of the ensuing CTM application is the same as the date of the original IR, the search report must by definition come to the same results).
The CTM will be published in Part A of the CTM Bulletin for opposition purposes with an additional field under INID code 646, mentioning the details of the transformation. The remainder of the procedure will be the same as for a normal CTM filing, including if an opposition procedure had already been initiated against the IR designating the EU without reaching the final decision stage. In such a c ase, the previous opposition procedure would be closed and a new opposition would need to be filed.
4.3.4.2 Application for transformation of IR designating the EU where particulars have been published
When the application for transformation relates to an IR designating the EU for which the particulars have already been published pursuant to Article 152(2) CTMR, the examination and opposition stage are omitted (Article 37 to 42 CTMR).
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Nevertheless, the list of goods and s ervices will have to be t ranslated into all languages. The CTM will then be publ ished in Part B.2 of the CTM Bulletin with the translations and the additional INID code 646, and the registration certificate will be issued immediately.
4.3.5 Transformation and Seniority
If seniority claims have been accepted by OHIM and are registered by WIPO in the file for the transformed IR designating the EU, there is no need to claim seniority again in the CTM resulting from transformation. This is not explicitly foreseen in Rule 124(2) CTMIR (only priority is mentioned under (d)) but is extended by analogy to seniority in view of the fact that:
• OHIM has already accepted the claims and WIPO has published them, • where the owner had let the earlier marks lapse in the meanwhile, it would not be
able to file new claims before OHIM (one condition of a valid seniority claim being that the earlier right is both registered and in force when the claim is made).
4.3.6 Fees
There is no s pecific ‘transformation’ fee. The CTM application resulting from the transformation of the IR designating the EU is subject to the same fees as a ‘normal’ CTM application, namely the basic fee.
The basic fee for the CTM application must be paid to OHIM within one month of the filing of the CTM requesting transformation in order for the request to comply with Article 27 CTMR and Article 9 quinquies (iii) and the transformation to be accepted. For example, if the end of the three-month time limit for transformation is 01/04/2012 and transformation into a CTMA is filed on 30/3/2012, the deadline for payment of the basic fee is 30/04/2012. If payment occurs after that date, the conditions for transformation are not met, transformation will be refused and the filing date given to the CTMA will be the date of the payment.
4.4 Replacement
Article 157 CTMR Rule 84(2) CTMIR Article 4 bis MP Rule 21 CR
4.4.1 Preliminary remarks
Replacement has its origins in the Madrid Agreement and Madrid Protocol. A mark that is registered with the office of a contracting party is, under certain conditions, deemed to be replaced by an international registration of the same mark without prejudice to the rights already acquired (earlier date). The wording of Article 4 bis (1) MP clearly provides that replacement is deemed to take place automatically, without the need for any action by the holder and without any record having to be made of the replacement. Nevertheless, it is possible to ask OHIM to take note of the replacement in its Register (Rule 21 CR). The purpose of this procedure is to ensure that the relevant information
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concerning the replacement is made available to third parties in the national or regional registers as well as in the international register. In other words, it is not an obligation to have the replacement registered in order to be able to invoke it, but it can be useful.
Apart from the qualification relating to earlier acquired rights, neither the Agreement nor the Protocol elaborates further on replacement.
4.4.2 Principle and effects
In accordance with Article 4 bis of the Agreement and t he Protocol, the holder may request OHIM to take note in its Register that a CTM registration is replaced by a corresponding IR. The holder’s rights in the EU should be deemed to start from the date of the earlier CTM registration. A reference will therefore be introduced in the CTM Register that a direct CTM has been r eplaced by a des ignation of the EU through an IR and published.
4.4.3 Procedure
A request for replacement may be filed at OHIM by the international holder at any time after notification of the EU designation by WIPO.
Once a request to record a replacement has been received, OHIM will carry out a formal examination, checking that the marks are identical, that all the goods and services listed in the CTM are listed in the IR designating the EU, that the parties are identical and that the CTM has been registered prior to the designation of the EU. The IR need not have an identical list of goods and services: the list may be broader in scope. It cannot, however, be narrower.
OHIM considers it sufficient for noting the replacement in the Register if the IR and CTM coexist on the date of the IR. In particular, should the designation of the EU through an IR not yet be finally accepted, OHIM will not wait for final acceptance before recording the replacement. It is up to the international holder to decide when to request the replacement.
If all conditions are met, OHIM will note the replacement in the CTM Register and inform WIPO that a CTM has been replaced by an IR as per Rule 21 CR, indicating:
• the number of the IR • the CTM number • the CTM application date • the CTM registration date • the priority date(s) (if relevant) • the seniority number(s), filing date(s) and country/countries (if relevant) • the list of goods and services of the replacement (if relevant).
After the replacement has been r ecorded, the CTM is maintained normally in the Register as long as the holder renews it. In other words, there is coexistence between the replaced CTM in force and the IR designating the EU.
According to Rule 21(2) of the Common Regulations under the Madrid Agreement and Protocol, WIPO will record the indications notified under paragraph (1) of that rule in the international register, publish them and inform the holder accordingly, in order to
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ensure that the relevant information concerning replacement is made available to third parties. Nevertheless, there is no obligation for OHIM to communicate further changes affecting the replaced CTM.
4.4.4 Fees
The request for taking note of a replacement is free of charge.
4.4.5 Publication
Rule 84(2), Rule 85 CTMIR
The replacement is entered in the CTM Register and publ ished in the CTM Bulletin under Part C.3.7.
4.4.6 Replacement and seniority
Article 4 bis(1)MP
Since replacement occurs ‘without prejudice to any rights acquired’ by virtue of the earlier registration, OHIM will include information on the seniority claims contained in the replaced CTM registration within the content of the notification to be sent to WIPO under Rule 21 CR.
4.4.7 Replacement and transformation
If the IR that replaced the direct CTM ceases to have effect following a ‘central attack’, and provided that the conditions laid down by Article 9 quinquies of the Protocol are met, the holder can request a transformation of the IR under Article 9 quinquies while maintaining the effects of the replacement of the CTM and i ts earlier date effects, including priority or seniority if applicable.
4.4.8 Replacement and conversion
The IR and the CTM should coexist on the date of the IR if the replacement is to be effective. Therefore, if the IR that replaces the direct CTM is finally refused by OHIM (e.g. further to an opposition), the holder can request conversion of the designation of the EU and should be able to maintain the effects of the replacement of the CTM and its earlier date effects, including priority or seniority if applicable.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON REGISTERED COMMUNITY
DESIGNS
EXAMINATION OF APPLICATIONS FOR REGISTERED COMMUNITY DESIGNS
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Table of Contents
1 Introduction................................................................................................ 7 1.1 Purpose of the Guidelines .........................................................................7 1.2 General principles ......................................................................................7
1.2.1 Duty to state reasons...................................................................................... 7 1.2.2 Right to be heard ............................................................................................ 8 1.2.3 Compliance with time limits ............................................................................ 8 1.2.4 Scope of the examination carried out by the Office........................................ 9 1.2.5 User-friendliness............................................................................................. 9
2 Filing an Application at OHIM................................................................. 10 2.1 Introduction ..............................................................................................10 2.2 Form of the application............................................................................10
2.2.1 Different means of filing................................................................................ 10 2.2.2 Use of the official form.................................................................................. 10 2.2.3 Applications sent by post or personal delivery ............................................. 10 2.2.4 E-filing........................................................................................................... 11 2.2.5 Fax................................................................................................................ 11
2.3 Content of the application .......................................................................11 2.4 Language of the application ....................................................................11 2.5 Representation of the applicant ..............................................................12
2.5.1 When is representation mandatory? ............................................................ 12 2.5.2 Who may represent? .................................................................................... 12
2.6 Date of receipt, file number and issue of receipt ...................................13 2.6.1 Applications filed through national offices (Intellectual Property Office of a
Member State or Benelux Office for Intellectual Property (BOIP))............... 13 2.6.2 Applications received directly at the Office................................................... 13
2.7 Registration or examination report .........................................................14 2.7.1 Registration................................................................................................... 14 2.7.2 Examination report and informal communication on possible deficiencies
(‘preliminary examination report’) ................................................................. 14 2.7.2.1 Priority claims and supporting documents.................................................14 2.7.2.2 Priority claims made subsequent to the filing ............................................15 2.7.2.3 Application filed by fax...............................................................................15 2.7.2.4 Payment of fees ........................................................................................15 2.7.2.5 Multiple applications and request for partial deferment .............................16
3 Allocation of a Filing Date....................................................................... 16 3.1 Request for registration...........................................................................16 3.2 Information identifying the applicant ......................................................17 3.3 Representation of the design suitable for reproduction........................ 17
3.3.1 General requirements................................................................................... 17 3.3.2 Neutral background ...................................................................................... 17 3.3.3 Designs retouched with ink or correcting fluid.............................................. 18 3.3.4 Quality........................................................................................................... 19
3.3.4.1 Fax ............................................................................................................19
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3.3.4.2 E-filing .......................................................................................................20 3.3.5 Specimen...................................................................................................... 21
4 Examination of the Substantive Requirements .................................... 21 4.1 Compliance with the definition of a design ............................................22
4.1.1 Blueprints, plans for houses or other architectural plans and interior or landscape designs........................................................................................ 22
4.1.2 Colours per se and combinations of colours ................................................ 22 4.1.3 Icons ............................................................................................................. 23 4.1.4 Mere verbal elements ................................................................................... 23 4.1.5 Music and sounds......................................................................................... 23 4.1.6 Photographs ................................................................................................. 23 4.1.7 Living organisms........................................................................................... 23 4.1.8 Teaching material ......................................................................................... 23 4.1.9 Concepts....................................................................................................... 24
4.2 Public policy and morality .......................................................................24 4.2.1 Common principles....................................................................................... 24 4.2.2 Public policy.................................................................................................. 24 4.2.3 Morality ......................................................................................................... 24
4.3 Objection...................................................................................................25
5 Additional Requirements Regarding the Reproduction of the Design 25 5.1 Number of views.......................................................................................26 5.2 Consistency of the views.........................................................................27
5.2.1 Complex products......................................................................................... 28 5.2.2 Details........................................................................................................... 28 5.2.3 Sets of articles .............................................................................................. 29 5.2.4 Variations of a design ................................................................................... 29 5.2.5 Colours ......................................................................................................... 30 5.2.6 Elements external to the design ................................................................... 31
5.3 Use of identifiers to exclude features from protection ..........................32 5.3.1 Broken lines .................................................................................................. 32 5.3.2 Boundaries.................................................................................................... 32 5.3.3 Colour shading and blurring ......................................................................... 33 5.3.4 Separations................................................................................................... 33
5.4 Explanatory text, wording or symbols ....................................................34 5.5 Amending and supplementing views......................................................34 5.6 Specific requirements ..............................................................................35
5.6.1 Repeating surface patterns .......................................................................... 35 5.6.2 Typographic typefaces ................................................................................. 35
6 Additional Elements that an Application Must or May Contain........... 36 6.1 Mandatory requirements..........................................................................36
6.1.1 Identification of the applicant and its representative .................................... 36 6.1.2 Specification of the languages...................................................................... 37 6.1.3 Signature ...................................................................................................... 37
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6.1.4 Indication of products ................................................................................... 37 6.1.4.1 General principles .....................................................................................37 6.1.4.2 The Locarno and EuroLocarno classifications...........................................38 6.1.4.3 How to indicate products ...........................................................................38 6.1.4.4 Ex officio change of indication ...................................................................39
6.1.5 Long lists of products.................................................................................... 40 6.1.6 Objections to product indications.................................................................. 41
6.1.6.1 No product indication.................................................................................41 6.1.6.2 Deficient product indication .......................................................................41 6.1.6.3 Obvious mismatch.....................................................................................41
6.2 Optional elements ....................................................................................42 6.2.1 Priority and exhibition priority ....................................................................... 42
6.2.1.1 Priority .......................................................................................................42 6.2.1.2 Exhibition priority .......................................................................................48
6.2.2 Description.................................................................................................... 49 6.2.3 Indication of the Locarno Classification........................................................ 50
6.2.3.1 General principles .....................................................................................50 6.2.3.2 Multiple application and the requirement of ‘unity of class’........................50
6.2.4 Citation of the designer(s) ............................................................................ 50 6.2.5 Request for deferment.................................................................................. 51
6.2.5.1 General principles .....................................................................................51 6.2.5.2 Request for deferment...............................................................................52 6.2.5.3 Request for publication..............................................................................52 6.2.5.4 Observation of time limits ..........................................................................52 6.2.5.5 Deficiencies ...............................................................................................53
7 Multiple Applications............................................................................... 54 7.1 General principles ....................................................................................54 7.2 Formal requirements applying to multiple applications........................ 54
7.2.1 General requirements................................................................................... 54 7.2.2 Separate examination................................................................................... 55 7.2.3 The ‘unity of class’ requirement.................................................................... 55
7.2.3.1 Principle.....................................................................................................55 7.2.3.2 Products other than ornamentation ...........................................................55 7.2.3.3 Ornamentation...........................................................................................56 7.2.3.4 Deficiencies ...............................................................................................57
8 Payment of Fees ...................................................................................... 57 8.1 General principles ....................................................................................57 8.2 Currency and amounts.............................................................................58 8.3 Means of payment, details of the payment and refund..........................59
9 Withdrawals and Corrections ................................................................. 59 9.1 Introduction ..............................................................................................59 9.2 Withdrawal of the application..................................................................59 9.3 Corrections to the application.................................................................60
9.3.1 Elements subject to correction ..................................................................... 60 9.3.2 Elements that cannot be corrected............................................................... 60 9.3.3 Procedure for requesting correction ............................................................. 60 9.3.4 Deficiencies .................................................................................................. 61
10 Registration, Publication and Certificates............................................. 61
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10.1 Registration ..............................................................................................61 10.2 Publication................................................................................................62
10.2.1 General principles......................................................................................... 62 10.2.2 Format and structure of the publication........................................................ 62
10.3 Registration certificate.............................................................................64
11 Corrections and Changes in the Register and in the Publication of Community Design Registrations .......................................................... 64 11.1 Corrections ...............................................................................................64
11.1.1 General Principles ........................................................................................ 64 11.1.2 The request for correction ............................................................................ 65 11.1.3 Publication of corrections ............................................................................. 66
11.2 Changes in the Register...........................................................................66 11.2.1 Introduction ................................................................................................... 66 11.2.2 Surrender of the registered Community design............................................ 66
11.2.2.1 General principles .....................................................................................66 11.2.2.2 Formal requirements for a declaration of surrender ..................................67
11.2.3 Changes in the name and address of the applicant / holder and / or its representative ............................................................................................... 68
11.2.4 Transfers....................................................................................................... 69 11.2.4.1 Introduction................................................................................................69 11.2.4.2 Rights of prior use in respect of a registered Community design ..............69 11.2.4.3 Fees ..........................................................................................................69
11.2.5 Licences....................................................................................................... 69 11.2.5.1 General principles .....................................................................................69 11.2.5.2 Registered Community designs.................................................................70 11.2.5.3 Multiple applications for registered Community designs............................70 11.2.5.4 Fees ..........................................................................................................70
12 International Registrations ..................................................................... 70 12.1 General overview of the Hague System..................................................71
12.1.1 The Hague Agreement and the Geneva Act ................................................ 71 12.1.2 Procedure for filing international applications............................................... 71
12.1.2.1 Particularities.............................................................................................71 12.1.2.2 Deferment of publication............................................................................72 12.1.2.3 Fees ..........................................................................................................72
12.1.3 Examination carried out by the International Bureau ................................... 72
12.2 The role of the Office as designated office.............................................73 12.2.1 Receipt of the international registration designating the European Union ... 73 12.2.2 Grounds for non-registrability ....................................................................... 73
12.2.2.1 Compliance with the definition of a design, public policy and morality ......73 12.2.2.2 Time limits .................................................................................................73 12.2.2.3 Languages.................................................................................................74 12.2.2.4 Professional representation.......................................................................74 12.2.2.5 Renunciation and limitation .......................................................................74 12.2.2.6 Grant of protection.....................................................................................75 12.2.2.7 Refusal ......................................................................................................75
12.3 Effects of International registrations ......................................................75
13 Enlargement and the Registered Community Design .......................... 76 13.1 The automatic extension of the Community design to the territories
of the new Member States .......................................................................76
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13.2 Other practical consequences.................................................................77 13.2.1 Filing with national offices............................................................................. 77 13.2.2 Professional representation.......................................................................... 77 13.2.3 First and second language ........................................................................... 77 13.2.4 Translation .................................................................................................... 77
13.3 Examination of grounds for non-registrability .......................................77 13.4 Immunity against cancellation actions based on gr ounds of
invalidity which become applicable merely because of the accession of a new Member State.............................................................................78 13.4.1 General principle .......................................................................................... 78
13.4.1.1 Grounds of invalidity that are applicable independently of the enlargement of the EU...............................................................................78
13.4.1.2 Grounds of invalidity resulting from enlargement of the EU.......................79 13.4.2 Effects of a priority claim .............................................................................. 80
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1 Introduction
1.1 Purpose of the Guidelines
The Guidelines explain how, in practice, the requirements of the Community Design Regulation1 (CDR), the Community Design Implementing Regulation2 (CDIR), and the Fees Regulation3 (CDFR) are applied by OHIM’s Design Service from the receipt of an application for a registered Community design (RCD) up t o its registration and publication. The Office has no c ompetence with regard to unregistered Community designs.
The purpose of the Guidelines is to ensure consistency among the decisions taken by the Designs Service and to ensure a c oherent practice in file handling. These Guidelines are merely a set of consolidated rules setting out the line of conduct which the Office itself proposes to adopt, which means that, to the extent that those rules comply with the legal provisions of a higher authority, they constitute a self-imposed restriction on t he Office, in that it must comply with the rules which it has itself laid down. However, these Guidelines cannot derogate from the CDR, the CDIR or the CDFR, and it is solely in the light of those regulations that the applicant’s capacity to file an application to register a Community design must be assessed.
The Guidelines are structured to follow the sequence of the examination process with each section and sub-section constituting a step in the registration proceedings from the receipt of the application up to registration and publication. The General Principles (see paragraph 1.2 below) should be kept in mind throughout the whole examination process.
1.2 General principles
1.2.1 Duty to state reasons
The decisions of the Office must state the reasons on which they are based (Article 62 CDR). The reasoning must be logical and it must not lead to internal inconsistencies.
The Office is, however, not required to give express reasons for its assessment of the value of each argument and each piece of evidence submitted to it, in particular where it considers that the argument or evidence in question is unimportant or irrelevant to the outcome of the dispute (see, by analogy, judgment of 15/06/2000, C-237/98P, ‘Dorsch Consult Ingenieurgesellschaft mbH’, para. 51). It is sufficient if the Office sets out the
1 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs), by Council Regulation No 1891/2006 of 18 D ecember 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2001 on Community designs, as amended by Commission Regulation (EC) No 876/2007 on 24 July 2007 amending Regulation (EC) No 2245/2002 implementing Council Regulation (EC) No 6/2002 on Community designs following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs 3 Commission Regulation (EC) No 2246/2002 of 16 December 2002 on the fees, as amended by Commission Regulation (EC) No 877/2007 of 24 July 2007 amending Regulation (EC) No 2246/2002 concerning the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs
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facts and legal considerations with decisive importance in the context of the decision (judgment of 12/11/2008, T-7/04, ‘Limoncello’, para. 81).
Whether the reasoning satisfies those requirements is a question to be assessed with reference not only to its wording, but also to its context and the legal rules governing the matter in question (judgment of 07/02/2007, T-317/05, ‘Guitar’, para. 57).
1.2.2 Right to be heard
The decisions of the Office shall be based only on reasons or evidence on which the applicant has had an opportunity to present its comments (Article 62 CDR, second sentence).
The right to be heard covers all the factual and legal evidence which form the basis for the act of taking the decision, but it does not apply to the final position which the Office intends to adopt.
The obligation to state reasons has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the next instance to exercise their power to review the legality of the decision. Moreover, the obligation to state reasons is an essential procedural requirement, as distinct from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure (judgment of 27/06/2013, T-608/11, ‘Instrument for writing II’, para. 67-68 and the case law cited there).
1.2.3 Compliance with time limits
Applicants must respond to the Office’s communications within the time limits set by those communications.
Any written submission or document that has not been submitted within the time limits set by the Office is belated. The same applies to supplementary materials attached only to the confirmation copy of a letter that was in itself sent on time (usually by fax), where this confirmation mail arrives after the expiry of the time limit. This is irrespective of whether such materials are specifically mentioned in the initial letter (for specific rules as regards applications filed by fax, see paragraph 2.7.2.3.).
The Office may disregard facts or evidence which the applicant does not submit in due time (Article 63(2) CDR).
For calculation of time limits see Article 56 CDIR.
A request to extend a time limit by an appl icant has to be made before its expiry (Article 57(1) CDIR).
As a g eneral rule, a first request to extend a time limit will be g ranted. Further extensions will not automatically be granted. Reasons in support of any further request for extension must be submitted to the Office. The request for extension of the time limit must indicate the reasons why the applicant cannot meet the deadline. The
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obstacles faced by the parties’ representatives do not justify an ex tension (see, by analogy, order of 05/03/2009, C-90/08 P, ‘Corpo Livre’, paras 20-23).
The extension cannot result in a time limit longer than six months (Article 57(1) CDIR). The applicant is informed about any extension.
Applicants failing to observe the time limits run the risk that their observations may be disregarded, which may result in a loss of rights. In such a case, the applicant may file a request for restitutio in integrum (Article 67 CDR. See also the Guidelines Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, Section 8, Restitutio in integrum).
1.2.4 Scope of the examination carried out by the Office
When examining an application for a Community design, the Office shall examine the facts of its own motion (Article 63(1) CDR).
The examination procedure is kept to a minimum, that is, mainly an examination of the formalities. However, the grounds for non-registrability foreseen at Article 47 CDR must be examined ex officio by the Office:
(a) whether the subject-matter of the application corresponds to the definition of a design as set forth in Article 3(a) CDR; and
(b) whether the design is contrary to public policy or accepted principles of morality.
Where one of these two grounds is applicable, the procedure explained below in paragraph 4 will apply.
Other protection requirements are not examined by the Office. A Community design which has been r egistered in breach of the protection requirements laid down in Article 25(1)(b) to (g) CDR is liable to be i nvalidated if an i nterested party files a request for a dec laration of invalidity (see the Guidelines on E xamination of Design Invalidity Applications).
1.2.5 User-friendliness
One of the fundamental objectives of the CDR is that the registration of Community designs should present the minimum cost and difficulty to applicants, so as to make it readily available to any applicant including small and m edium-sized enterprises and individual designers.
To that end, examiners are encouraged to contact the applicant or, if a representative has been appointed (see paragraph 2.5 below), its representative by phone, in order to clarify issues arising from the examination of an application for a Community design, before or after an official deficiency letter has been sent.
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2 Filing an Application at OHIM
2.1 Introduction
There are two ways of applying for registration of a Community design, that is, (i) either via a direct filing, at the Office or at the central industrial property office of a Member State or, in Benelux countries, at the Benelux Office for Intellectual Property (BOIP) (Article 35 et seq. CDR) or (ii) via an international registration filed with the International Bureau of the World Intellectual Property Organisation and designating the European Union (Article 106a et seq. CDR).
This section will deal with direct filings. The examination of the formalities relating to international registrations designating the European Union will be ex plained in paragraph 12.
2.2 Form of the application
2.2.1 Different means of filing
An application for a registered Community design may be directly filed at the Office by fax, post, personal delivery or e-filing. It may also be f iled at the central industrial property office of a Member State or in Benelux countries, at the Benelux Office for Intellectual Property (BOIP) (Article 35 CDR).
2.2.2 Use of the official form
The Office provides a form (Article 68(1)(a) CDIR) which may be downloaded from the Office’s website4. The use of the form is not mandatory but it is strongly recommended (Article 68(6) CDIR), in order to facilitate the processing of the application and to avoid errors.
Applicants may use forms of a similar structure or format, such as forms generated by computers on the basis of the information contained in the official form.
2.2.3 Applications sent by post or personal delivery
Applications can be sent to the Office by ordinary post or private delivery services at the following address:
Office for Harmonization in the Internal Market Avenida de Europa, 4
E-03008 Alicante SPAIN
Applications can also be handed i n personally at the reception of the Office from Monday to Friday, except on official holidays, from 08.30 to 13.30 and from 15.00 to 17.00.
4 https://oami.europa.eu/ohimportal/en/forms-and-filings
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The application has to be signed by the applicant or its representative. The name of the signatory must be indicated and the authority of the signatory must be specified (see paragraph 6.1.3 Signature).
2.2.4 E-filing
E-filing is a recommended means of filing to the extent that the system gives guidance to the applicant, thus reducing the number of potential deficiencies and speeding up the examination procedure.
Where a communication is sent to the Office by electronic means, the indication of the sender’s name will be deemed to be equivalent to the signature (see paragraph 6.1.3 Signature).
2.2.5 Fax
Applications can be sent by fax to the following fax number: +34 96 513 1344.
However, filing an appl ication by fax is not recommended because the quality of the representation of the design may deteriorate in the course of the transmission or on receipt by the Office.
Moreover, applicants must be aware of the fact that the processing of their application will be delayed by up to one month (see paragraph 2.7.2.3).
2.3 Content of the application
The application must satisfy all the mandatory requirements set out in Articles 1 (‘content of the application’), 3 ( ‘indication of products’), 4 ( ‘representation of the design’) and 6 CDIR (‘fees for the application’).
Additional requirements apply where the applicant selects one of the following options: a multiple application is filed (Article 2 CDIR), specimens are filed (Article 5 CDIR), a priority or an exhibition priority is claimed (Article 8 and 9 CDIR), or where the applicant chooses to be, or must be, represented (Article 77 CDR).
2.4 Language of the application
The application may be filed in any of the official languages of the European Union (language of filing) (Article 98(1) CDR; Article 1(1)(h) CDIR)5.
5 The European Union has 24 official and working languages, including Irish. Irish became a full EU language on 01/01/ 2007. There is however a temporary derogation for a renewable period extending until 31/12/2016 during which ‘the institutions of the European Union shall not be bound by the obligation to draft all acts in Irish and to publish them in that language in the Official Journal of the European Union’ (see Council Regulation (EC) No 920/2005 of 13/06/2005 (OJ L 156, 18.6.2005, p. 3) and Council Regulation (EU) No 1257/2010 (OJ L 343, 29/12/2010, p. 5). Until then, it is not possible to file an application for a r egistered Community design in Irish. Croatian became an official language on 01/07/2013(see paragraph 13).
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The applicant must indicate a second language which must be a language of the Office that is, Spanish (ES), German (DE), English (EN), French (FR) or Italian (IT). The second language must be different from the language of filing.
All written communications have to be drafted in the language of filing, unless the first language chosen is not one of the five working languages of the Office and the applicant agrees to receive the communication in the second language of the application. The consent to the use of the second language must be given for each individual application for a C ommunity design. It may not be given for all existing or future files.
This language regime applies throughout the application and ex amination procedure until registration.
2.5 Representation of the applicant
2.5.1 When is representation mandatory?
Where the applicant does not have its domicile or its principal place of business or a real and effective industrial or commercial establishment in the European Union, it must be represented by a representative in all proceedings before the Office other than in filing an application (Article 77(2) CDR, Article 10(3)(a) CDIR).
If this requirement is not complied with, the applicant will be requested to appoint a representative within a time limit of two months. Where the applicant does not comply with the request, the application is rejected as inadmissible (Art. 77(2) CDR; Art. 10(3)(a) CDIR). In examining whether an applicant has a r eal and effective industrial or commercial establishment in the European Union, the Office follows the guidance of the Court of Justice of 22/11/1978, C-33/78, ‘Somafer SA’, para. 12 (‘… the concept of branch, agency or other establishment implies a place of business which has the appearance of permanency, such as the extension of a par ent body, has a m anagement and i s materially equipped to negotiate business with third parties …’). Proof that an applicant has a real and effective industrial or commercial establishment in the European Union may consist, inter alia, of articles of incorporation, annual reports, statements in writing, and other business documents.
2.5.2 Who may represent?
Representation of applicants before the Office may be effected only by a legal practitioner or by a professional representative who fulfills the requirements of Article 78(1) CDR.
A natural or legal person whose domicile, principal place of business, or real and effective industrial or commercial establishment is in the European Union may act before the Office through an em ployee. Employees of such a legal person may also represent another legal person having neither its domicile nor its principal place of business nor a r eal and effective industrial or commercial establishment within the European Union, provided there exist economic connections between the two legal persons (Article 77(3) CDR). The Office may request evidence in this respect.
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Employees acting on behalf of natural or legal persons pursuant to Article 77(3) CDR must submit a signed authorisation for insertion in the file (Article 62(2) CDIR).
2.6 Date of receipt, file number and issue of receipt
2.6.1 Applications filed through national offices (Intellectual Property Office of a Member State or Benelux Office for Intellectual Property (BOIP))
If a Community design application is filed at the central industrial property office of a Member State or at the Benelux Office for Intellectual Property (BOIP), it will have the same effect as if it has been filed at the Office on that same day, provided that it is received at the Office within two months from the date it was filed at the national office or, as the case may be, the Benelux Office for Intellectual Property (BOIP) (Article 38(1) CDR).
If the Community design application does not reach the Office within this two-month time limit, it will be deemed to have been filed on t he date that it is received by the Office (Article 38(2) CDR).
Where the Community design application is received shortly after the expiry of this two- month period, the examiner will check whether this time limit is to be extended under one of the conditions provided for at Article 58(3) CDIR.
2.6.2 Applications received directly at the Office
The date of receipt is the date on which the application reaches the Office. This date may not coincide with the ‘date of filing’ where the requirements for such a date to be allocated are not met (see paragraph 3).
The Office is open for the receipt of applications sent by post or private delivery services from Monday to Friday, except on official holidays. An annual decision of the President of the Office specifies the days on which the Office is not open for the receipt of documents and on which ordinary post is not delivered.
Applications sent by fax or e-filing will be r eceived on t he date of successful transmission.
Where the application is sent by post or fax, the applicant will not have any confirmation of a date of receipt or file number until a first communication from an examiner is received (see below).
For electronically filed Community design applications, the system issues an immediate automatic filing receipt which appears on the screen of the computer from which the application was sent. In principle, the applicant should save or print out the automatic receipt. The Office will not send an additional receipt. Receipts for electronically filed applications already contain their provisional filing dates and the file number.
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2.7 Registration or examination report
2.7.1 Registration
If the application for a Community design satisfies all requirements for registration, it will normally be registered within ten working days.
The registration of an a pplication complying with all requirements may, however, be delayed where the indication of the products in which the design is intended to be incorporated, or to which it is intended to be applied, was not made by reference to the list of products included in the EuroLocarno database available on the website of the Office (https://oami.europa.eu/eurolocarno/). In such a case, the indication of the products may have to be sent for translation into the official languages of the Union (see paragraph 6.1.4.4).
An application complying with all registration requirements can be registered within two working days if the following conditions are met:
• the application is filed electronically (e-filing) • both the indication of product(s) and its/their classification are made by using the
EuroLocarno system (see paragraph 6.1.4.4) • priority documents, where a pr iority is claimed, are included with the e-filing
application • the owner and the representative, if any, are registered in OHIM's database and
reference is made to the Office’s internal ID number • fees are to be debited from a current account with the Office • no deficiency is found in the application.
2.7.2 Examination report and i nformal communication on possible deficiencies (‘preliminary examination report’)
Where a deficiency has been de tected in the application, the examiner will issue an examination report summing up the irregularities noted and giving a time limit for the applicant, or the appointed representative, to remedy them.
Before sending such an ex amination report, the examiner can send an i nformal communication, called ‘preliminary examination report’, highlighting some potential deficiencies and ai ming at speeding up t he examination procedure. This informal communication informs the applicant that the examination procedure is pending due to any of the following circumstances.
2.7.2.1 Priority claims and supporting documents
Where the application contains a claim of priority of one or more previous applications without submitting a certified copy thereof, the applicant may still submit a copy within three months of the filing date (Article 42 CDR; Article 8(1) CDIR; see paragraph 6.2.1.1 below).
In such circumstances, the examiner will inform the applicant that the examination of the application will be put on hol d until the missing certified copy of the previous application(s) is submitted. The examination will proceed three months after the filing
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date, unless a copy of the previous application(s), or a declaration that the priority claim is withdrawn, is received earlier.
2.7.2.2 Priority claims made subsequent to the filing
Where the applicant states in the application its intention to claim the priority of one or more previous applications without submitting any details about them, it may still submit, within one month of the filing date, the declaration of priority, stating the date on which, and the country in or for which, the previous application was made (Article 42 CDR; Article 8(2) CDIR; see paragraph 6.2.1.1 below).
In such circumstances, the examiner will inform the applicant that the examination of the application will be put on hol d until the missing information is submitted. The examination will proceed one month after the filing date, unless a declaration of priority, or a declaration that the priority claim is withdrawn, is received earlier.
2.7.2.3 Application filed by fax
Where an application is filed by fax, the examiner will inform the applicant that the examination will proceed one month after the date of receipt of the fax unless a confirmation copy of the application is received earlier by post, private delivery services or personal delivery.
This course of action attempts to avoid situations in which the examination is carried out on the basis of a faxed representation of a design which does not fully disclose all of its features (such as colours) or whose quality is not optimal.
2.7.2.4 Payment of fees
All fees (that is, the registration and publication fees and additional fees in the event of multiple applications) relating to an appl ication must be pai d at the time when the application is submitted to the Office (Article 6 CDIR; see paragraph 8 below).
Lack of payment or unidentified payment
Where the application has not yet been linked with a pay ment of the corresponding fees, the examiner will inform the applicant that the examination will proceed as soon as the payment has been identified and linked to this specific application.
If the applicant does not respond to the Office’s communication, and the payment remains unidentifiable, a deficiency letter will be sent.
Lack of funds
Where the full amount of the fees relating to the application cannot be debited from the current account due to insufficient funds, the examiner will inform the applicant that the examination will begin as soon as the current account has been c redited with the missing amount.
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If the applicant does not respond to the Office’s communication, and the payment remains incomplete, a deficiency letter will be sent.
For more information on the payment of fees, see paragraph 8 below.
2.7.2.5 Multiple applications and request for partial deferment
Where a m ultiple application contains a r equest for deferment in respect of some designs (see paragraph 6.2.5 below), the examiner will send the applicant a summary of the application containing a representation of the first view of each design to be published without delay. The applicant will be requested to confirm the correctness of this summary within one month. In the absence of any reply or contrary instruction from the applicant, the examination will proceed on the basis of the information on file.
3 Allocation of a Filing Date
The date on which a document is ‘filed’ is the date of receipt by the Office rather than the date on which this document was sent (Article 38(1) CDR, Article 7 CDIR).
Where the the application has been filed at the central industrial property office of a Member State or at the Benelux Office for Intellectual Property (BOIP), the date of filing at that office will be deemed the date of receipt by the Office, unless the application reaches the Office more than two months after such date. In this case, the date of filing will be the date of receipt of the application by the Office (Article 38 CDR).
Pursuant to Article 36(1) CDR, the allocation of a filing date requires that the application contain at least:
(a) a request for registration of a Community design, and (b) information identifying the applicant, and (c) a representation of the design suitable for reproduction pursuant to Article 4(1)(d)
and (e) CDIR or, where applicable, a specimen (Article 10 CDIR).
Payment of fees is not a r equirement for allocating a filing date. It is, however, a requirement for the registration of the application (see paragraph 8 below).
3.1 Request for registration
A request for registration is filed where the applicant has completed (at least partly) the application form provided by the Office or its own form, or made use of e-filing (see paragraph 2.2 above).
Where it is obvious that the document received from the applicant is not an application for a Community design, but an appl ication for registration of a Community trade mark, the examiner will forward this document to the competent department of the Office and the examiner will inform the applicant accordingly without delay.
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3.2 Information identifying the applicant
The information identifying the applicant, for the purpose of allocating a filing date, does not have to satisfy all the requirements set out in Article 1(1)(b) CDIR (see paragraph 6.1.1). It is enough that information is supplied regarding the surname and forename(s) of natural persons or the corporate name of legal entities, and that an address for service be indicated or any other data communication link which allows the applicant to be contacted.
3.3 Representation of the design suitable for reproduction
3.3.1 General requirements
The representation of the design shall consist of a graphic and/or photographic reproduction of the design, either in black and white or in colour (Article 4(1) CDIR).
Irrespective of the form used for filing the application (paper, e-filing, or fax), the design must be reproduced on a neutral background and must not be retouched with ink or correcting fluid.
It must be of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished and permitting it to be reduced or enlarged to a size no greater than 8 cm by 16 cm per view for entry in the Register of Community Designs and for publication in the Community Designs Bulletin (Article 4(1)(e) CDIR).
The purpose of that requirement is to allow third parties to determine with accuracy all the details of the Community design for which protection is sought.
Drawings, photographs (except slides), computer-made representations or any other graphical representation are accepted provided they are suitable for reproduction, including on a r egistration certificate in paper format. 3D computer-animated design generating motion simulation is not accepted for that very reason. CD-ROMs and other data carriers are not accepted.
3.3.2 Neutral background
The background in a v iew is considered neutral as long as the design shown in this view is clearly distinguishable from its environment without interference from any other object, accessory or decoration, whose inclusion in the representation could cast doubt on the protection sought (decision of 25/04/2012, R 2230/2011-3 – ‘Webcams’, paras 11-12).
In other words, the requirement of a neu tral background neither demands a ‘neutral’ colour nor an ‘ empty’ background (see also paragraph 5.2.6 below). It is instead decisive that the design stands out so clearly from the background that it remains identifiable (decision of 25/01/2012, R 284/2011-3 – ‘Tool chest’, para. 13).
The views, among the seven allowed for representing a design (Article 4(2) CDIR), which do not have a neutral background will be objected to.
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The examiner will issue a de ficiency letter. The examiner will give the applicant the possibility to remedy the deficiencies within a two-month period by:
• withdrawing those views (which will not form part of the Community design); or • by submitting new views on a neutral background
or by amending the objected views in such a way that the design will be isolated from its background. This latter option will make use of identifiers such as boundaries or colour shading clarifying the features of the design for which protection is sought (see paragraph 5.3 below), as in the seventh view of RCD 2038216-0001 (courtesy of BMC S.r.l.):
Provided the deficiencies are remedied within the time limit set by the Office, the date on which all the deficiencies are remedied will determine the date of filing (Article 10(2) CDIR).
If the deficiencies are not remedied within the time limit set by the Office, the application will not be d ealt with as a Community design application. The f ile will be closed by a decision of the examiner and the applicant will be notified. The examiner will notify the Finance Department that a refund of any fees paid should be made to the applicant (Article 10(2) CDIR).
3.3.3 Designs retouched with ink or correcting fluid
The design shall not be retouched with ink or correcting fluid (Article 4(1)(e) CDIR).
Examiners do not see the paper version of the representation but only scanned representations thereof. Therefore, it is only where the use of ink or correcting fluid
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leaves doubt as to whether the visible correction is or not an ornamental feature forming part of the design, that corrected representations will be objected to and refused for the purpose of allocating a filing date.
The applicant may remedy a deficiency in the same manner as described above under paragraph 3.3.2.
3.3.4 Quality
The requirement that the design must be of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished, for publication purposes, applies equally to all applications, irrespective of the means of filing.
Applications sent by fax and e-filing, however, raise specific issues.
3.3.4.1 Fax
Transmission by telecopy (fax) may not be app ropriate for filing design applications, because the representation of the design may be di storted or blurred or otherwise damaged. Where an application is transmitted by fax, it is highly recommended that a paper confirmation copy be filed without delay, by ordinary mail, private delivery services or personal delivery.
Where an appl ication is transmitted by fax, the examiner will in any event await a confirmation copy for a period of up to one month from the date of receipt of the fax transmission before further processing the application. Once this period has lapsed, the examiner will continue the examination on the basis of the documents on file.
Two deficiencies caused by unsatisfactory fax transmissions may arise:
(i) the reproduction of a design as transmitted by fax is not of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished
(ii) the application is incomplete and/or illegible.
As far as the issue of allocating a filing date is concerned, these two hypotheses must be distinguished.
The Office distinguishes an i llegible transmission from one o f insufficient quality as follows. Where a comparison between the initial transmission and the original reproduction allows drawing a c onclusion on w hether these documents relate to the representation of one and the same design, it must be considered that the initial transmission was merely of insufficient quality. Where such a c omparison is not possible at all, the initial transmission was illegible.
(i) The reproduction of a design as transmitted by fax is not of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished
The original date of filing will be retained if the applicant sends on its own motion or in reply to the Office’s informal communication (see paragraph 2.7.8 above) the original reproduction of the design within one month following the fax transmission, provided its quality permits all the details of the matter for which protection is sought to be clearly distinguished (Article 66(1), second paragraph, CDIR).
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The confirmation copy has to consist of the same document which was used initially for the fax transmission. The examiner will reject a ‘confirmation copy’ which is not strictly identical to the document which was used for the fax transmission. This would be the case for instance if the applicant submitted in its confirmation amended views or additional views of the design(s).
In the event of any discrepancy between the original and the copy previously submitted by fax, only the submission date of the original will be taken into consideration.
If no o riginal reproduction is received within the one-month time limit following the receipt of the fax, the Office will send a formal notification inviting the applicant to submit the original reproduction within a two-month period.
If that request is complied with in due time, the date of filing will be the date on which the Office receives the original reproduction, provided its quality permits all the details of the matter for which protection is sought to be clearly distinguished (Article 66(1), third paragraph, CDIR).
If the deficiencies are not remedied within the time limit set by the Office in its notification, the application will not be deal t with as a Community design application. The file will be closed by a decision of the examiner and the applicant will be notified. The examiner will notify the Finance Department that a refund of any fees paid should be made to the applicant (Article 10(2) CDIR).
Where the Office receives a reproduction of a design where some of the views are deficient due to fax transmission and where the confirmation copy is received later than one month after the date of receipt of the fax transmission, the applicant will be left with the choice of
• having as the date of filing the date of receipt of the confirmation copy; or • keeping the date of receipt of the fax transmission as the date of filing, but only
for the non-deficient views; in such a case, the deficient views will be withdrawn.
(ii) The application is incomplete and/or illegible.
In the case where the fax was incomplete or illegible and where the missing or illegible parts concern the information identifying the applicant or the representation of the design, the Office will issue a formal notification requesting the applicant to resend the application by fax, post or personal delivery within a two-month time limit. If that request is complied with in due t ime, the date of filing will be t he date on which the Office receives the complete and legible documents (Article 66(2) CDIR).
If the deficiencies are not remedied within the time limit set by the Office, the application will not be d ealt with as a Community design application. The f ile will be closed by a decision of the examiner and the applicant will be notified. The examiner will notify the Finance Department that a refund of any fees paid should be made to the applicant (Article 10(2) CDIR).
3.3.4.2 E-filing
The representation of the design must be filed as an at tachment to the electronic application form. Each view must be filed as a single attachment to the electronic application form and must be in .jpeg data format. The size of each attachment cannot
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exceed five MB (see Decision No EX-11-3 of the President of the Office, of 18/04/2011, concerning electronic communication with and by the Office).
Low resolution attachments are likely to be objected to due to their insufficient quality for reproduction and publication purposes where the enlargement of the views to a size of 8 cm by 16 cm causes the details of the design to be blurred.
Where it is clear that the electronic filing was deficient due t o technical problems attributable to the Office, such as the partial uploading of all views, the Office will allow the applicant to resubmit the missing views (or all views) by letter, attaching a copy of the e-filing receipt. The original filing date via e-filing will be retained, provided that no other deficiency affecting the filing date exists.
3.3.5 Specimen
The graphic or photographic reproduction of the design can be s ubstituted by a specimen of the design provided the following cumulative conditions are met:
• the application relates to a two-dimensional design, and • the application contains a r equest for deferment (Article 36(1)(c) CDR;
Article 5(1) CDIR).
In the event of a m ultiple application, the substitution of the representation by a specimen may apply only to some of the designs, provided these designs are two- dimensional and are subject to a request for deferment (see paragraph 6.2.5 below).
A specimen is usually a sample of a piece of material such as textile, wallpaper, lace, leather, etc.
Specimens must not exceed 26.2 cm x 17 cm in size, 50 grams in weight or 3 mm in thickness. They must be capable of being stored and unfolded (Article 5(2) CDIR).
Five samples of every specimen must be filed; in the case of a multiple application, five samples of the specimen must be filed for each design (Article 5(3) CDIR).
The application and the specimen(s) have to be sent in a single delivery either by post or personal delivery. A date of filing will not be accorded until both the application and the specimen(s) have reached the Office.
Where the applicant submits a s pecimen relating to an appl ication which does not contain a request for deferment, the specimen is not admissible. In such a case, the date of filing will be det ermined by the date on which the Office receives a s uitable graphic or photographic reproduction of the design, provided the deficiency is remedied within two months of receipt of the Office’s notification (Article 10(2) CDIR).
4 Examination of the Substantive Requirements
The Office carries out an examination of the substantive protection requirements which is limited to two absolute grounds for refusal.
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An application will be refused if the design does not correspond to the definition provided for in Article 3(a) CDR or if is contrary to public policy or to accepted principles of morality (Article 9 CDR).
4.1 Compliance with the definition of a design
A ‘design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and / or materials of the product itself and / or its ornamentation (Article 3(a) CDR).
A ‘product’ means any industrial or handicraft item, including, inter alia, parts intended to be as sembled into a c omplex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs (Article 3(b) CDR).
Whether the product claimed is actually made or used, or can be made or used, in an industrial or handicraft manner will not be examined.
Whether a design discloses the appearance of the whole or a part of a ‘product’ will be examined in the light of the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function, and of the indication of the products in which the design is intended to be incorporated or to which it is intended to be applied (Article 36(2) CDR).
The following examples, albeit non-exhaustive, illustrate the Office’s practice.
4.1.1 Blueprints, plans for houses or other architectural plans and interior or landscape designs
Blueprints, plans for houses or other architectural plans and interior or landscape designs (e.g. gardens) will be considered ‘products’ for the purpose of applying Article 7(1) CDR and will be accepted only with the corresponding indication of ‘printed matters’ in Class 19-08 of the Locarno Classification.
An objection will be raised if the product indicated in an application for a design consisting of a bl ueprint of a hous e is ‘houses’ in Class 25-03 of the Locarno Classification. This is because a bl ueprint does not disclose the appearance of a finished product such as a house.
4.1.2 Colours per se and combinations of colours
A single colour may of course be an element of a design, but on its own it does not comply with the definition of a design because it does not constitute the ‘appearance of a product’.
Combinations of colours may be accepted if it can be ascertained from the contours of the representation that they relate to a pr oduct such as, for instance, a logo or a graphic symbol in Class 32 of the Locarno Classification.
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4.1.3 Icons
Designs of screen displays and icons and other kinds of visible elements of a computer program are eligible for registration (see Class 14-04 of the Locarno Classification).
4.1.4 Mere verbal elements
Mere words per se and sequences of letters (written in standard characters in black and white) do not comply with the definition of a design because they do not constitute the appearance of a product.
The use of fanciful characters and/or the inclusion of a figurative element, however, render(s) the design eligible for protection either as a logo / graphic symbol in Class 32 of the Locarno Classification, or as the ornamental representation of a part of any product to which the design will be applied.
4.1.5 Music and sounds
Music and sounds per se do not constitute the appearance of a product and, therefore, do not comply with the definition of a design.
However, the graphical representation of a musical composition, in the form of a musical string, would qualify as a design, if applied for as, for example, other printed matter in Class 19-08 or graphic symbols in Class 32 of the Locarno Classification.
4.1.6 Photographs
A photograph per se constitutes the appearance of a product and, therefore, complies with the definition of a design, irrespective of what it discloses. The indication of the product can be writing paper, cards for correspondence and announcements in Class 19-01, other printed matters or photographs in Class 19-08 of the Locarno Classification, or any product to which the design will be applied.
4.1.7 Living organisms
Living organisms are not ‘products’, that is, industrial or handicraft items. A design which discloses the appearance of plants, flowers, fruits etc. in their natural state will, in principle, be refused. However, no objection will be raised if the indication of the product specifies that this product is artificial (see in particular Class 11-04 of the Locarno Classification).
4.1.8 Teaching material
Teaching material such as graphs, charts, maps etc. can be representations of products in Class 19-07 of the Locarno Classification.
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4.1.9 Concepts
A design application is refused where the representation is of a product that is simply one example amongst many of what the applicant wishes to protect. An exclusive right cannot be granted to a ‘non-specific’ design that is capable of taking on a multitude of different appearances. This is the case where the subject-matter of the application relates, inter alia to a concept, an invention or a method for obtaining a product.
4.2 Public policy and morality
4.2.1 Common principles
The concepts of public policy and m orality may vary from one country to another. A restrictive measure based on public policy or morality may be based on a conception which is not necessarily shared by all Member States (judgment of 14/10/2004, C-36/02, ‘Omega’, paras 33 and 37).
Given the unitary character of the registered Community design (Article 1(3) CDR), it is enough that a design be found contrary to public policy in at least part of the Union for this design to be refused under Article 9 CDR (see, by analogy, judgment of 20/09/2011, T-232/10, ‘Coat of arms of the Soviet Union’, paras 37 and 62). This finding can be supported by the legislation and adm inistrative practice of certain Member States.
It is not necessary that the use of the design would be illegal and prohibited. However, illegality of the use of the design under European or national legislation is a strong indication that the design should be refused under Article 9 CDR.
4.2.2 Public policy
The safeguard of public policy may be r elied on t o refuse a Community design application only if there is a g enuine and sufficiently serious threat to a f undamental interest of society (judgment of 14/03/2000, C-54/99, ‘Église de scientologie’, para. 17).
Designs which portray or promote violence or discrimination based on s ex, racial or ethnic origin, religion or belief, disability, age or sexual orientation will be refused on that account (Article 10 of the Treaty on the Functioning of the European Union).
4.2.3 Morality
The safeguard of morality may be relied on to refuse a Community design application if the design is perceived as sufficiently obscene or offensive from the perspective of a reasonable person of normal sensitivity and t olerance (see, by analogy, judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’, para. 21).
Bad taste, as opposed to contrariety to morality, is not a ground for refusal.
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4.3 Objection
Where an objection is raised by the examiner in respect of one or the other of the two above absolute grounds for refusal, the applicant will be given the opportunity of withdrawing or amending the representation of the design or of submitting its observations within a two-month time limit (Article 47(2) CDR, Article 11 CDIR).
If the objection relates to the compliance with the definition of a des ign and i f this objection can be ov ercome by amending the indication of the products in which the design is intended to be incorporated or to which it is intended to be applied, the examiner will propose such an amendment in the communication to the applicant.
Where the applicant opts for submitting an amended representation of the design, this representation will be admissible under the condition that ‘the identity of the design is retained’ (Article 11(2) CDIR).
Maintenance in an a mended form will, therefore, be limited to cases in which the removed or disclaimed features are so insignificant in view of their size or importance that they are likely to pass unnoticed in the perception of the informed user.
Features can be removed or disclaimed by making use of the identifiers referred to in paragraph 5.3 below.
Provided the deficiencies are remedied within the time limit set by the Office, the date on which all the deficiencies are remedied will determine the date of filing (Article 10(2) CDIR).
Where the applicant fails to overcome the grounds for non-registrability within the time limit, the Office will refuse the application. If those grounds concern only some of the designs contained in a multiple application, the Office will refuse the application only in so far as those designs are concerned (Article 11(3) CDIR).
5 Additional Requirements Regarding the Reproduction of the Design
Applicants are reminded that the requirements concerning the format of the representation of the design may vary according to the manner in which the application was filed (paper, e-filing, use of specimen). These requirements are set out in Articles 4 and 5 CDIR.
The following instructions supplement the requirements regarding the quality of the reproduction and the neutral background (see paragraph 3.3 above).
The following instructions apply to all designs, irrespective of the manner in which the application was filed.
Even where a representation of the design has been replaced by a specimen in accordance with Article 5 CDIR (see paragraph 3.3.5 above), the applicant must file a graphic or photographic reproduction of the design at the latest three months before the 30-month deferment period expires (Article 15(1)(c) CDIR; see paragraph 6.2.5.3 below).
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Any deficiency found in an application and relating to one or the other of the requirements under this section will have no bearing on the granting of a filing date. However, if the deficiencies are not remedied within the time limit set by the Office in its examination report, the application will be refused (Article 46(3) CDR). If the deficiencies concern only some of the designs contained in a multiple application, the Office will refuse the application only in so far as those designs are concerned (Article 11(3) CDIR).
Once a date of filing has been granted, refusal of the application does not give rise to a refund of the fees paid by an applicant (Article 13 CDIR).
5.1 Number of views
The purpose of the graphic representation is to disclose the features of the design for which protection is sought. The graphic representation must be self-contained, in order to determine with clarity and precision the subject-matter of the protection afforded by the registered Community design to its proprietor. This rule is dictated by the requirement of legal certainty.
It is the responsibility of the applicant to disclose as thoroughly as possible the features of its design. The Office will not examine whether additional views would be required to fully disclose the appearance of the design, with the exceptions listed under paragraphs 5.2.1 to 5.2.3 below.
A maximum of seven different views can be filed in order to represent the design (Article 4(2) CDIR). The views may be plain, in elevation, cross-sectional, in perspective or exploded. Only one copy of each view should be filed.
An exploded view is a view in which all the components of a complex product are shown disassembled in order to explain how these components can be assembled together, as in the example below (RCD 380969-0002, courtesy of Aygaz Anonim Sirketi, designer Zafer Dikmen).
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The alternative positions of the moveable or removable parts of a design can be shown in separate views, as in the example below (RCD 588694-0012, courtesy of Fujitsu Toshiba Mobile Communications, designer Hideki Hino).
Each of the views must be numbered by the applicant in Arabic numerals by figures separated by a dot, the first being the number of the design, the second being the number of the view. For instance, the 6th view of the second design of a m ultiple application must be numbered: 2.6.
In cases where more than seven views are provided, the Office will disregard any of the extra views for registration and publication purposes (decision of 27/10/2009, R 571/2007-3 – ‘Frames for cycles or motorcycles’, para. 13). The Office will take the views in the consecutive order in which the views are numbered by the applicant (Article 4(2) CDIR).
Where a reproduction comprises less than seven views and the views are not numbered, the examiner will number the views according to the sequence given in the application.
The examiner will not change the order of the views as appearing in the application, or their orientation.
5.2 Consistency of the views
The examiner will check whether the views relate to the same design, that is, to the appearance of one and the same product or of its parts.
Where the views are inconsistent and relate to more than one design, the applicant will be invited either to withdraw some views or to convert the application into a multiple application for different designs, and pay the corresponding fees.
To submit a correct and complete application (including representations of the design) falls within the applicant’s responsibility. The Office is not entitled to remedy any deficiencies in respect of incongruent views once the Community design is registered and published (see decision of 3/12/2013, R 1332/2013-3 ‘Adapters’, para. 14 et seq.)
The consistency of the views may be par ticularly difficult to assess when examining applications for designs relating to complex products, to details of products and to sets of articles.
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5.2.1 Complex products
A complex product is a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product (Article 3(c) CDR).
Applicants must submit, among the seven views allowed, at least one view showing the complex product in its assembled form. See the example below (RCD 238092-0001 courtesy of Eglo Leuchten GmbH):
Each of the component parts could in themselves be a ‘design’. Therefore, where all the views disclose different component parts, without showing these parts connected to each o ther, the examiner will issue a de ficiency letter giving the applicant two options:
• the applicant can convert its application into a multiple application combining the separate designs for each component part in question and pay the corresponding fees; or
• the applicant can limit its application to just one design by withdrawing the views representing other designs.
5.2.2 Details
The same reasoning applies to a design which is not intended to be incorporated in a complex product where the views only show individual details which cannot be related to the appearance of the product as a whole.
Each of the individual details of the product could in themselves be a ‘ design’. Therefore, where all the views disclose different detailed features, without showing these features connected to each other, the examiner will issue a deficiency letter giving the applicant two options:
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• the applicant can convert its application into a multiple application combining the separate designs for each individual detail in question and pay the corresponding fees; or
• the applicant can limit its application to just one design by withdrawing the views representing other designs.
5.2.3 Sets of articles
A set of articles is a group of products of the same kind which are generally regarded as belonging together and are so used. See the example below (RCD 685235-0001, courtesy of Zaklady Porcelany Stolowej KAROLINA Sp. z o.o.)
The difference between a complex product and a set of articles is that, in contrast to a complex product, the articles of a ‘set of articles’ are not mechanically connected.
A set of articles can be a ‘product’ in itself within the meaning of Article 3 CDR. It can be represented in a single design application if the articles making up this set are linked by aesthetic and functional complementarity and are, in normal circumstances, sold altogether as one single product, like a chess board and its pieces or sets of knives, forks and spoons.
It must, however, be clear from the representation that protection is sought for a design resulting from the combination of the articles making up the set.
Applicants must submit, among the 7 views allowed, at least one view showing the set of articles in its entirety.
Otherwise, the examiner will issue a deficiency letter giving the applicant two options:
• the applicant can convert its application into a multiple application combining the separate designs for each article in question and pay the corresponding fees; or
• the applicant can limit its application to just one design by withdrawing the views representing other designs.
5.2.4 Variations of a design
Sets of products should not be confused with variations of a de sign. The different embodiments of a same concept cannot be gr ouped in a s ingle application because each embodiment is a design on its own, as in the example below (RCD 1291652- 0001; -0002; -0003; -0004, courtesy of TESCOMA s.r.o.).
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Where, in an application for a single registered Community design, the views relate to more than one design, the examiner will issue a deficiency letter giving the applicant two options:
• the applicant can convert its application into a multiple application combining the separate designs and pay the corresponding fees; or
• the applicant can limit its application to just one design by withdrawing the views representing other designs.
5.2.5 Colours
The representation of the design may be submitted either in black and w hite (monochrome) or in colour (Article 4(1) CDIR).
Representations combining black and white views with colour views will be objected to due to their inconsistency and the resulting legal uncertainty as to the protection sought.
The same reasoning applies where the same features of a design are represented in different colours in the various views. Such an inconsistency illustrates the fact that the application relates to more than one design (decisions of 31/03/2005, R 965/2004-3 – Tape measure’, paras 18-20; of 12/11/2009, R 1583/2007-3 – ‘Bekleidung’, paras 9-10).
The applicant will, therefore, be invited either to withdraw some of the colour views in order to maintain consistency between the remaining ones, or to convert the application into a multiple application, and pay the corresponding fees.
However, as an exception to the above principle, the same features of a design can be represented in different colours in the various views if the applicant submits evidence that the change of colours at different points in time, while the product is in use, is one of the relevant features of the design, as in the example below (RCD 283817-0001, courtesy of ASEM Industrieberatung und Vermittlung).
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Where the reproduction is in colour, the registration and the publication will also be in colour (Article 14(2)(c) CDIR).
5.2.6 Elements external to the design
Views can include external and f oreign matter to the design provided their inclusion does not cast any doubt on the protection sought and serves only an illustrative purpose (see paragraph 3.3.2 above).
See for instance the following two RCDs, No 210166-0003 (courtesy of Karl Storz GmbH & Co. KG) and No 2068692-0002 (courtesy of Tenzi Sp. z o.o.) in which the inclusion of a hand or buildings and vegetation in some of the views serves the purpose of clarifying how the product in which the design is incorporated will be used or the context in which it will be used:
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5.3 Use of identifiers to exclude features from protection
Unlike Article 37 CTMR, neither the CDR nor the CDIR provides rules for the possibility of including in the application a s tatement that the applicant disclaims any exclusive right to one or more features disclosed in the views.
Use of a description, within the meaning of Article 36(3)(a) CDR, is not appropriate in this regard since a description ‘shall not affect the scope of protection of the design as such’ according to Article 36(6) CDR. Moreover, only an indication that a description has been filed is published, not the description as such (Article 14(2)(d) CDIR). Disclaimers must therefore be apparent from the representation of the design itself.
In an application for registration of a Community design the following identifiers will be allowed:
5.3.1 Broken lines
Broken lines may be us ed in a v iew either to indicate the elements for which no protection is sought (for example, ornamentation applied to the surface of a g iven product whose shape is disclaimed) or to indicate portions of the design that are not visible in that particular view, that is, non-visible lines.
RCD 30606-0005, courtesy of Nokia Corporation (designer: Petteri Kolinen)
5.3.2 Boundaries
Boundaries may be used to surround features of the design for which protection is sought, the remaining parts being considered as having a purely illustrative purpose, that is, to show the environment in which the claimed features are placed.
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RCD 164611-0004, courtesy of Valio Oy (designer: Aki Liukko)
RCD 2038216-0001 courtesy of BMC S.r.l.
5.3.3 Colour shading and blurring
Colour shading and bl urring may be us ed to exclude a num ber of features from protection and thus to highlight claimed features.
RCD 244520-0002, courtesy of Nokian Tyres plc
RCD 222120-0002, courtesy of Altia Plc
RCD 220405-0003, courtesy of KUBOTA CORPORATION (designer:
Yoshitaka Higashikawa)
5.3.4 Separations
Separations can be used to indicate that, for ease of illustration, the precise length of the design is not claimed (indeterminate length).
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RCD 1868753-0001, courtesy of Viskadalens Produktion AB (designer: Johan Larsson)
5.4 Explanatory text, wording or symbols
No explanatory text, wording or symbols, other than the indication ‘top’ or the name or address of the applicant may be displayed in the views (Article 4(1)(c) CDIR).
Where words, letters, numbers and symbols (such as arrows) are clearly not part of the design, the examiner may cut them from the views using the specific informatics tool available for this. If the examiner is not able to cut them out for technical reasons, the applicant will be requested to send in clean views or to withdraw the deficient ones.
Where the words, letters, numbers, etc. are part of the design (graphical symbol), the design is acceptable.
Verbal elements displayed in the representation that are part of the design will be keyed in and entered in the file. Where several verbal elements are displayed, the examiner will only take into account the most prominent one.
Indications such as ‘side’, ‘front view’, etc. will be cut for publication purposes. If the applicant considers such indications to be relevant, it may wish to include them in the box ‘Description’ at the time of filing. Further amendments or the addition of a description will not be allowed.
5.5 Amending and supplementing views
As a matter of principle, the representation may not be altered after the application has been filed. The submission of additional views or the withdrawal of some views will therefore not be accepted (Article 12(2) CDIR), unless expressly allowed or required by the Office.
In particular, the views initially filed may not be replaced with better-quality ones. The representations examined and published will be those that the applicant provided in its original application.
The submission of amended or additional views, where allowed, must be m ade by electronic communication via the OHIM website (not by e-mail), by post or fax (the latter is, however, not recommended; see paragraph 2.2.5 above).
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5.6 Specific requirements
5.6.1 Repeating surface patterns
Where the application concerns a design consisting of a repeating surface pattern, the representation of the design must disclose the complete pattern and a sufficient portion of the repeating surface (Article 4(3) CDIR), in order to show how this pattern is infinitely multiplied.
Where the application does not contain a description making clear that the design consists of a repeating surface pattern, the Office will assume that this is not the case and will not request a sufficient portion of the repeating surface.
If additional views represent the pattern applied to one or more specific products for illustrative purposes, the applicant must make sure that the shape of such products is not claimed as part of the design by using any method referred to under paragraph 5.3 above (RCD 002321232-0002, courtesy of Textiles Visatex SL.):
5.6.2 Typographic typefaces
Where the application concerns a des ign consisting of a typographic typeface, the representation of the design must consist of a string of all the letters of the alphabet, upper case and lower case, and of all the Arabic numerals, as well as of a text of five lines produced using that typeface, all in 16-pitch font (Article 4(4) CDIR).
Where the application does not include a text of five lines using the typeface concerned (Article 4(4) CDIR), the applicant will be requested to submit such a text or to accept a change in the indication of products to ‘set of characters’ in Locarno Class 18.03.
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6 Additional Elements that an Application Must or May Contain
6.1 Mandatory requirements
In addition to the requirements for the grant of a filing date (see paragraph 3 above), the application must properly identify the applicant and, if applicable, its representative (Article 1(b) and ( e) CDIR), specify the two languages of the application (Article 1(h) CDIR), contain a signature (Article 1(i) CDIR) and indicate the products in which the design is intended to be incorporated or to which it is intended to be appl ied (Article 1(d) CDIR).
Even after a date of filing has been granted, the examiner will issue an objection if a deficiency with regard to any of the above requirements is noted in the course of examining the Community design application (Article 10(3)(a) CDIR).
6.1.1 Identification of the applicant and its representative
Pursuant to Article 1(b) CDIR, an application will be objected to if it does not contain the following information regarding the applicant: its name, address and nationality and the State in which it is domiciled or, if the applicant is a legal entity, in which it has its seat or establishment. If the Office has given the applicant an identification number, it is sufficient to mention that number together with the applicant’s name.
Where the application is filed in the name of more than one appl icant, the same requirement applies to each one.
Names of natural persons must give both the family name and t he given name(s). Legal entities must be indicated by their official designation. The State whose law governs such entities must also be indicated.
If the applicant does not have a r epresentative, it is highly recommended that an indication be given of telephone numbers as well as fax numbers and details of other data-communications links, such as electronic mail.
Each applicant must, in principle, indicate only one address. Where several addresses are indicated, only the first address mentioned will be taken into account, except where the applicant designates one of the addresses as an address for service.
If there is more than one applicant, the Office will send its communications to the applicant mentioned first in the application.
If the applicant has appointed a representative, the application must indicate the name of that representative and the address of their place of business. If an appointed representative has been given an identification number by the Office, it will be sufficient to mention that number together with the representative’s name.
If the representative has more than one business address or if there are two or more representatives with different business addresses, the application must indicate which address is to be used as the address for service. Where no such indication is made, the address for service will be taken to be the first address mentioned.
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If there is more than one applicant, the application may appoint one representative to be the common representative for all applicants.
6.1.2 Specification of the languages
The application may be filed in any of the official languages of the European Union (language of filing) (Article 98(1) CDR, see paragraph 2.4). The language used in the application form does not affect the language of the application. It is the language of the content supplied by the applicant that is decisive. The language of filing will be the first language of the application.
The applicant must indicate a second language, which must be a n Office language, that is, Spanish (ES), German (DE), English (EN), French (FR) or Italian (IT).
The second language must be different from the language of filing.
The two-letter ISO CODES (codes set up for identifying languages by the International Organisation for Standards) may be used in the box provided in the application form.
6.1.3 Signature
The application must be signed by the applicant or its representative (Article 1(i) CDIR). Where there is more than one applicant or representative, the signature of one of them will be sufficient.
If an appl ication is filed electronically, it is enough for the name and authority of the signatory to be indicated. If an appl ication is filed by fax, a facsimile signature is considered valid.
For representatives, the signature consisting of the name of the law firm is acceptable.
6.1.4 Indication of products
6.1.4.1 General principles
Pursuant to Article 36(2) CDR, an application for a Community design must indicate the products in which the design is intended to be incorporated or to which it is intended to be applied. Pursuant also to Article 1(1)(d) and Article 3(3) CDIR, the indication of products must be worded in such a way as to indicate clearly the nature of the products and to enable each product to be c lassified in only one c lass of the Locarno classification, preferably using the terms appearing in the list of products set out therein, or in the EuroLocarno database (see below).
Neither the product indication nor the classification affects the scope of protection of a Community design as such (Article 36(6) CDR). Classification serves exclusively administrative purposes, in particular allowing third parties to search the registered Community designs databases (Article 3(2) CDIR).
Applicants do not themselves have to classify the products in which their design is intended to be i ncorporated or to which it is intended to be appl ied (Article 36(3)(d)
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CDR). This is, however, highly recommended in order to speed up t he registration procedure (see paragraph 6.2.3).
The considerations that follow here below only refer to single design applications. As far as multiple design applications are concerned, the ‘unitary class’ requirement applies (see paragraph 7.2.3).
6.1.4.2 The Locarno and EuroLocarno classifications
The Locarno Classification is an i nternational classification for industrial designs. It exists in two official languages, namely English and French. Its structure and contents are adopted and amended by the Committee of Experts from the countries party to the Locarno Agreement. The Classification is administered by the World Intellectual Property Organization (WIPO). The current, tenth, edition contains 32 classes and 219 subclasses.
EuroLocarno is the Office’s design classification tool. It is based on, and has the same structure as, the Locarno Classification (i.e. the same classes and s ubclasses). It contains the alphabetical list of products of the Locarno Classification and i s supplemented by a large number of additional product terms. EuroLocarno is available in all the official languages of the Union at OHIM’s website.
In order to speed up and simplify the registration procedure, it is highly recommended that products be indicated using the terms listed in the EuroLocarno database.
Using the terms listed in the EuroLocarno database obviates the need for translations and thus prevents long delays in the registration procedure. Using these product terms whenever possible will improve the transparency and searchability of the registered Community designs databases.
6.1.4.3 How to indicate products
More than one product can be indicated in the application.
When more than one product is indicated in the application, the products do not have to belong to the same class of the Locarno Classification, unless several designs are combined in a multiple application (Article 37(1) CDR; Article 2(2) CDIR; see paragraph 7.2.3).
Each class and s ubclass of the Locarno Classification and E uroLocarno has a ‘heading’. The class and subclass headings give a general indication of the fields to which the products belong.
In any event, the product(s) must be indicated in such a way as to allow classification in both the relevant class and subclass of the Locarno Classification (Article 1(2)(c) CDIR).
The use of terms listed in the heading of a given class of the Locarno Classification is not per se excluded, but it is not recommended. Applicants should not choose generic terms referred to in the heading of the relevant class (e.g. ‘articles of clothing’ in Class 2), but, instead, select terms listed in the heading of the subclass (e.g. ‘garments’ in subclass 02-02) or more specific terms from among those listed in the subclasses of the class in question (e.g. ‘jackets’ in subclass 02-02).
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Where the product indication does not allow classification in a subclass, the examiner will determine the relevant subclass by reference to the product disclosed in the graphical representation (see paragraph 6.2.3.1 below). For example, where an application contains as a product indication the term ‘Furnishing’ in Class 6 of the Locarno Classification, the examiner will assign a s ubclass by taking account of the design itself insofar as it makes clear the nature of the product, its intended purpose or its function. If the design discloses the appearance of a bed, the examiner will assign the subclass 06-02 to the generic indication ‘Furnishing’.
The use of adjectives in product indications is not per se excluded, even if such adjectives are not part of the alphabetical list of products of the Locarno Classification or of EuroLocarno (e.g. ‘electric tools for drilling’ in subclass 08-01, or ‘cotton pants’ in subclass 02-02). However, it may cause delays in processing the application where a translation of the adjective into all the EU languages is required.
6.1.4.4 Ex officio change of indication
Product terms not listed in the Locarno Classification or EuroLocarno
Where an applicant uses terms that are not in EuroLocarno, the examiner will, in straightforward cases, substitute ex officio the wording used by the applicant with an equivalent or more general term listed in the Locarno Classification or EuroLocarno. The purpose of this is to avoid having to translate terms into all the EU languages, which would result in delays in processing the application.
For instance, where an applicant chooses the term ‘Running trainers’ (a term not listed in EuroLocarno) to indicate the products in which the design will be incorporated, the examiner will change this indication to ‘Footwear’ (which is the heading of subclass 02- 04) or ‘Shoes’ (which is listed under subclass 02-04).
Even though the product indication does not affect the scope of protection of a Community design as such, the examiner will refrain from replacing the terms chosen by the applicant with more specific terms.
Products and their parts; sets
Where a design represents the appearance of one part of a product, and that product as a whole is indicated in the application (e.g. an application for the design of a knife handle specifies that the products in which this design will be incorporated are ‘knives’ in subclass 08-03), the examiner will replace that product indication by the indication ‘Product(s) X (Part of -)’, provided both the part in question and the product as a whole belong to the same class of the Locarno Classification.
Where a design represents a set of products, and these products are indicated in the application (e.g. an application for the design of a s et of dishes specifies that the products in which this design will be incorporated are ‘dishes’ in subclass 07-01), the examiner will replace that indication by ‘Product(s) X (Set of -)’. Ornamentation
The same reasoning applies where the design represents ornamentation for a given product, and that product as a whole is indicated in the application. The examiner will
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replace that product indication by the indication ‘Product(s) X (Ornamentation for -)’. The product will thus be classified under Class 32-00 of the Locarno Classification.
Moreover, where the product indication is ‘Ornamentation’ and the design does not limit itself to representing this ornamentation but also discloses the product to which the ornamentation is applied, or part of that product, without its contours being disclaimed, this product will be added to the product indication, and the classification will be amended accordingly.
A list of products combining ‘Ornamentation’ with other products belonging to different classes of the Locarno Classification will give rise to an obj ection where several designs are combined in a multiple application (see paragraph 7.2.3.).
Notification of the ex officio change of indication
Provided there is no deficiency, the examiner will register the Community design(s) and notify the applicant of the ex officio change of product indication.
Where the applicant objects to such ex officio change, it can apply for correction of the corresponding entry in the Register (see paragraph 11.1.) and request that the original terms used in the application be maintained, provided there are no issues concerning the clarity and pr ecision of these terms or their classification (Article 20 CDIR; see decision of 05/07/2007, R 1421-2006-3, ‘Cash registers’). In this case, however, applicants are informed that translation of the original terms into all official languages of the Union is likely to delay registration of the Community design(s).
6.1.5 Long lists of products
More than one product can be indicated in an application.
However, in order to ensure that the Community designs Register remains searchable and to save translation costs, where an application indicates more than five different products belonging to the same subclass of the Locarno Classification, the examiner will suggest replacing the product indication by the heading of the subclass in question.
For example, let us assume an application contains the following product indication: Locking or closing devices, Keys for vehicles, Anti-theft interlocking strips for doors, Anti-theft posts for motorcycles, Padlocks (part of -), Keepers of locks, Latches, Handcuffs, Handbag frames, Hasps, Lock bolts, Closing devices for doors and windows, Door openers [electric], Door bolts, Locks, Clasps for purses and handbags, Flat bolts [locks], Padlocks, Locking devices, Clasps for leather goods, Door closers, Casement bolts for windows or doors, Catches for venetian blinds, Keys for electric contacts, Cable-type padlocks for cycles, Theftproof locks, Keys, Box fasteners, Door check brakes, Tumbler locks, Door locks for vehicles, Fastenings for motor truck loading gates, Safety locks for bicycles, Clasps for cigarette cases, Shutter turnbuckles, Wheel clamps [boots], Manacles, Locks (part of -).
Since all these products are classified in the same subclass of the Locarno Classification, the examiner will propose replacing this list by the heading of subclass 08-07, that is, ‘Locking or closing devices’.
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Where the product indication contains more than five products that do not belong to the same subclass of the Locarno Classification, the examiner will suggest that the applicant limit the number of products to five and select products accordingly.
If, within the time limit indicated in the examiner’s communication, the applicant expresses its wish to maintain the original list of products, the examination will proceed on the basis of that list.
If the applicant does not respond within the time limit or expressly agrees with the examiner’s proposal, the examination will proceed on t he basis of the product indication as proposed by the examiner.
6.1.6 Objections to product indications
Where the examiner raises an objection, the applicant will be g iven two months to submit its observations and remedy any deficiencies noted (Article 10(3) CDIR).
The examiner may invite the applicant to specify the nature and pur pose of the products in order to allow proper classification, or may suggest product terms from EuroLocarno in order to assist the applicant.
If the deficiency is not remedied within the time limit, the application will be r ejected (Article 10(4) CDIR).
6.1.6.1 No product indication
An objection will be raised where the application gives no i ndication of the products concerned (Article 36(2) CDR). However, if an indication can be found in the description or in the priority document, the examiner will record this as the product indication (decision of 21/03/2011, R 2432/2010-3, ‘Kylkropp för elektronikbärare’, para. 14).
6.1.6.2 Deficient product indication
The examiner will also object to the product indication if it does not enable each product to be classified in only one c lass and s ubclass of the Locarno classification (Article 3(3) CDIR).
This will be the case where the indication is too vague or ambiguous to allow the nature and purpose of the products in question to be determined, for example merchandise, novelty items, gifts, souvenirs, home accessories, electric devices, etc.
This will also be the case where the indication concerns a service rather than a product, for example sending or processing of information.
6.1.6.3 Obvious mismatch
Since one of the main objectives of the product indication and classification is to make the Community designs Register searchable by third parties, the examiner will raise an
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objection where the product indication clearly does not match the product as disclosed in the representation of the design.
6.2 Optional elements
An application may contain a num ber of optional elements, as listed in Article 1(1)(f) and (g) and Article 1(2) CDIR, that is,
• a priority or exhibition priority claim; • a description; • an indication of the Locarno Classification of the products contained in the
application; • the citation of the designer(s); • a request for deferment.
6.2.1 Priority and exhibition priority
6.2.1.1 Priority
General principles
An application for a Community design may claim the priority of one or more previous applications for the same design or utility model in or for any state party to the Paris Convention or to the Agreement establishing the World Trade Organization, or in or for another State with which there is a reciprocity agreement (Article 41 CDR; Article 8 CDIR). This ‘Convention priority’ is of six months from the date of filing of the first application.
The effect of the right of priority is that the date of priority counts as the date of filing of the application for a registered Community design for the purposes of Articles 5, 6, 7 and 22, Article 25(1)(d) and Article 50(1) CDR (Article 43 CDR).
Priority claims are subject to the following requirements:
• priority may be c laimed within six months from the date of filing of the first application;
• a priority may be claimed only from the first filing of a design or a utility model in a country that is a member of the Paris Convention or the World Trade Organization (WTO), or in another State with which there is a r eciprocity agreement;
• the proprietor must be the same, or a transfer document establishing the Community design applicant’s right to claim the priority of a previous application originally filed by another applicant must be provided;
• the priority declaration (containing date, number and country of the first application) must be submitted not later than one month from the date of filing of the RCD application;
• the details and the certified copy of the previous application must be submitted not later than three months from the date of submission of the declaration of priority.
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As a substantive requirement, the Community design must relate to the ‘same design or utility model’ as the one for which priority is claimed (Article 41(1) CDR). This means that the subject-matter of the previous application must be i dentical to that of the corresponding Community design, without the addition or suppression of any features. A priority claim is however valid if the Community design and the previous application for a design right or a utility model differ only in immaterial details within the meaning of Article 5 CDR.
When examining an application for a Community design, the Office does not verify whether the application relates to the ‘same design or utility model’ as the one whose priority is claimed. Therefore, the applicant alone is responsible for ensuring that this requirement is satisfied, failing which the validity of the priority claim could be challenged at a later stage.
A priority claim will be examined for the purposes of Articles 5, 6 and 7 and Article 25(1)(d) CDR by the Office during invalidity proceedings if a third party challenges the validity of such a priority claim or if the holder challenges the effects of the disclosure of a design, where this disclosure occurred within the priority period (see the Guidelines on the Examination of Design Invalidity Applications, paragraph 5.5.1.8: Disclosure within the priority period).
During the examination phase of an application for a Community design, the Office will limit itself to verifying whether the formalities relating to a pr iority claim are complied with (Article 45(2)(d) CDR).
Claiming priority
The applicant may claim the priority of one or more previous design or utility model applications. Thus, the priority of more than one previous application can be claimed where two or more Community designs are combined in a multiple application.
If the priority of the same previous application is claimed for all designs of a multiple application, the box ‘Same priority for all designs’ should be t icked in the (paper) application form.
Any filing that is equivalent to a regular national filing under the domestic law applicable to it will be recognised as giving rise to the right of priority. A regular national filing means any filing that is suitable for establishing the date on which the application was filed in the country concerned, whatever the subsequent outcome of that application (Article 41(3) CDR).
Priority may be claimed either when filing the Community design application or within a period of one month of the filing date. During this one-month period, the applicant must submit the declaration of priority and indicate the date on which and the country in which the previous application was made (Article 8(2) CDIR).
Where there is no indication of the claim in the application, the submission of priority documents within one month of the filing date will be c onstrued as a dec laration of priority.
Unless it is expressly indicated in the application that a priority claim will be made subsequently, the application will be ex amined without delay and, if no deficiency is
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found, will be r egistered without waiting one month for any potential declaration of priority. If a declaration of priority is validly filed after registration of the Community design application, a corresponding entry will subsequently be made in the Register.
The applicant must provide the Office with the file number(s) of the previous application(s) and a certified copy of the previous application(s) (Article 8 CDIR) within three months of either the filing date or, as the case may be, receipt of the declaration of priority by the Office.
Deficiencies
The Office will limit itself to verifying whether the formalities relating to a priority claim have been complied with (Article 45(2)(d) CDR), that is,
• whether priority was claimed within six months of filing the first application; • whether priority was claimed when filing the application or within one m onth of
the filing date; • whether the details and the copy of the previous application were submitted in
due time (within three months of either the filing date or, as the case may be, receipt of the declaration of priority);
• whether the previous application concerns a design or a utility model; • whether the previous application was filed in a country that is a member of the
Paris Convention or the World Trade Organization (WTO), or in another state with which there is a reciprocity agreement;
• whether the previous application was a first filing (meaning that a priority claim should be rejected if the priority application in turn claimed priority);
• whether the proprietor is the same or whether a transfer document establishes the Community design applicant’s right to claim the priority of a previous application originally filed by another applicant.
Where remediable deficiencies are found, the examiner will request the applicant to remedy them within two months.
If the deficiencies are not remedied in due time or cannot be remedied, the Office will inform the applicant of the loss of the priority right and of the possibility of requesting a formal (i.e. appealable) decision on that loss (Article 46(1) and (4) CDR; Article 40(2) CDIR).
If the deficiencies that are not remedied concern only some of the designs contained in a multiple application, the right of priority will be lost in respect only of the individual designs concerned (Article 10(8) CDIR).
Whether priority is claimed within six months of filing the first application
The examiner will examine whether the date of filing allocated to the Community design is no later than six months from the filing date of the first application. Applicants should note that the date of filing allocated by the Office may not always correspond to the date of receipt of the Community design application (see paragraph 3).
In order to speed up registration proceedings, where the date of filing of the Community design application is indisputably and irremediably well beyond this six-month period,
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the Office will reject the priority claim without formally notifying the applicant of this deficiency.
Where the date of filing of the Community design application is only slightly beyond the six-month period, the examiner will check whether the period has to be extended under one of the conditions provided for in Article 58 CDIR.
The priority right claimed must always be a pr evious application, which, for this very reason, cannot bear the same date as the Community design application.
Whether priority is claimed when filing the application or within one month of the filing date
The examiner will check that priority has been claimed no later than one month after the filing date of the Community design.
Whether the details of the previous application and the copy of the priority document were submitted in due time
Where priority is claimed when filing or by submitting a declaration of priority, the applicant must indicate the date on which, and the country in or for which the previous application was made (Article 1(1)(f) CDIR). Failure to do so will, however, not lead to an objection: the examiner will wait for the priority document to be submitted.
The file number and the priority document must be submitted within three months of the filing date of the Community design application or submission of the declaration of priority (Article 8 CDIR).
The priority document must consist of a c ertified copy of the previous application or registration, issued by the authority that received it, and be accompanied by a certificate stating the filing date of that application. The priority document may be filed in the form of an original or as an accurate photocopy. Insofar as the original document contains a representation of the design in colour, the photocopy must also be in colour (Decision No EX-03-05 of the President of the Office of 20/01/2003 concerning the formal requirements of a priority or seniority claim). Applicants claiming the priority of a U.S. patent (design) application are allowed to submit the certified copy of this application in CD-ROM format (Communication No 12/04 of the President of the Office of 20/10/2004).
Where the priority of a previous registered Community design is claimed, the applicant must indicate the number of the previous application and its date of filing. No additional information or document is required (Decision No EX-03-05 of the President of the Office of 20/01/2003 concerning the formal requirements of a priority or seniority claim).
If the language of the previous application is not one of the five Office languages, the examiner may invite the applicant to file a t ranslation within two months (Article 42 CDR). It is not necessary for the whole document to be translated, but only that information allowing the examiner to check the nature of the right (design or utility model), the country of filing, the file number, the filing date and the applicant’s name.
In order to speed up registration proceedings, where an examiner detects deficiencies in the priority claim, a deficiency letter will be issued before the time limit expires for
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submitting all the details of the previous application, including the file number and priority document. The time limit for remedying deficiencies will be no less than three months from the filing date or date of receipt of the declaration of priority.
Whether the previous application concerns a design or a utility model
The priority of a previous design or utility model application may be claimed, including that of a previous Community design or an international design registration.
Many national laws do not provide for the protection of utility models, for example the laws of the United States of America. In the European Union, utility models can be registered in, inter alia, Austria, Czech Republic, Denmark, Finland, Germany, Italy, Hungary, Poland, Portugal, Slovakia and S pain. Utility models can be also be registered in Japan.
A priority claim based on a previous patent application will in principle be refused. However, the priority of an international application filed under the Patent Cooperation Treaty (PCT) can be claimed since Article 2 of the PCT defines the term ‘patent’ in a broad sense that covers utility models.
A priority claim can be based on a pr evious application filed with the United States Patent and Trademark Office (USPTO) only if the subject-matter of the previous application relates to a ‘design patent’, not a ‘patent’.
In order to speed up registration proceedings, where the previous application indisputably and irremediably involves a right that is not a design or a utility model, the Office will reject the priority claim without formally notifying the applicant of this deficiency.
Whether the previous application was filed in a country that is member of the Paris Convention or the World Trade Organization (WTO), or in another State with which there is a reciprocity agreement
The states and o ther territories listed below are not members of any of the relevant conventions, nor do they benefit from reciprocity agreements. Therefore, priority claims based on filings in the following countries and territories will be refused:
Afghanistan (AF) Abkhazia American Samoa (AS) Anguilla (AI) Aruba (AW) Bermuda (BM) Cayman Islands (KY) Cook Islands (CK) Eritrea (ER) Ethiopia (ET) Falkland Islands (FK) Guernsey (Channel Islands) (GG) Isle of Man (IM) Jersey (Channel Islands) (JE) Kiribati (KI)
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Marshall Islands (MH) Micronesia (Federated States of) (FM) Montserrat (MS) Nauru (NR) Palau (PW) Pitcairn (Island) (PN) Saint Helena (SH) Somalia (SO) Turks and Caicos Islands (TC) Tuvalu (TV) Virgin Islands, British (VG)
In order to speed up registration proceedings, where the previous application was filed indisputably and irremediably in one of the above countries or territories, the Office will reject the priority claim without formally notifying the applicant of the deficiency.
Whether the previous application is a first filing
As a matter of principle, the previous application must be a first filing. The examiner will therefore check that the priority document does not refer to priority being claimed in respect of an even earlier application.
In order to speed up r egistration proceedings, where the previous application is indisputably and i rremediably not a first filing, the Office will reject the priority claim without formally notifying the applicant of the deficiency.
As an e xception, a s ubsequent application for a des ign that was the subject of a previous first application and has been filed in or in respect of the same state, will be considered as a first application for the purpose of determining priority, provided that, at the date of filing of the subsequent application, the previous application had been withdrawn, abandoned or refused without being open to public inspection and without leaving any rights outstanding, and had not served as a basis for claiming priority. The previous application may not thereafter serve as a basis for claiming a right of priority (Article 41(4) CDR).
Whether the proprietor is the same or a transfer has occurred
Priority can be claimed by the applicant of the first application or its successor in title. In the latter case, the first application must have been transferred prior to the filing date of the Community design application, and documentation to this effect must be provided.
The right of priority as such may be transferred independently of the first application. Priority can therefore be accepted even if the owners of the Community design and the previous application are different, provided that evidence of assignment of the priority right is supplied. In this case, the execution date of the assignment must be prior to the filing date of the Community design application.
Subsidiary or associated companies of the applicant are not considered to be the same legal entity as the Community design applicant itself.
When, in reply to an objection by the examiner on a discrepancy between the identity of the applicant and that of the previous application holder, the applicant explains that
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this is due to a corporate name change, a document establishing this change of corporate name must be submitted within two months.
6.2.1.2 Exhibition priority
General principles
The effect of exhibition priority is that the date on which the design was displayed at an officially recognised exhibition is deemed to be the date of filing of the application for a registered Community design for the purposes of Articles 5, 6, 7 and 22, Article 25(1)(d) and Article 50(1) CDR (Article 43 CDR).
The applicant can claim exhibition priority within six months of the first display. Evidence of the display must be filed (Article 44(1) and (2) CDR).
Exhibition priority cannot extend the six-month period of ‘Convention priority’ (Article 44(3) CDR).
Claiming exhibition priority
Like ‘Convention priority’ (see paragraph 6.2.1 above), exhibition priority can be claimed either when filing a Community design application or subsequently. Where the applicant wishes to claim exhibition priority after having filed an application, the declaration of priority, indicating the name of the exhibition and the date of first display of the product, must be submitted within a p eriod of one month of the filing date (Article 9(2) CDIR).
The applicant must, within three months of the filing date or receipt of the declaration of priority, provide the Office with a certificate issued at the exhibition by the responsible authority. This certificate must state that the design was disclosed at the exhibition, specify the opening date of the exhibition and, where first public use did not coincide with the opening date of the exhibition, the date of first public use. The certificate must be accompanied by identification of the actual disclosure of the product in which the design is incorporated, duly certified by the authority (Article 9(1) and (2) CDIR).
Priority can only be g ranted where the application for a C ommunity design is filed within six months of first display at an exhibition recognised for this purpose, namely a world exhibition within the meaning of the Convention on International Exhibitions signed in Paris on 22/11/1928. These exhibitions are rare and Article 44 CDR does not cover display at other, national or international, exhibitions. The exhibitions can be found on the website of the Paris ‘Bureau International des Expositions’: http://www.bie-paris.org/site/en/.
Deficiencies
The Office will limit itself to verifying whether the formalities relating to an exhibition priority claim have been satisfied (Article 45(2)(d) CDR), that is,
• whether the filing date of the Community design falls within the six-month period following the first display of the product;
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• whether priority was claimed when filing the application or within one m onth of the filing date;
• whether the application or the subsequent declaration of priority gives details of the name of the exhibition and the date of first display of the product;
• whether the exhibition was a world exhibition within the meaning of the Convention on International Exhibitions of 22/11/1928;
• whether the certificate issued at the exhibition by the responsible authority was submitted in due time;
• whether the proprietor named in this certificate is the same as the applicant.
Where remediable deficiencies are found, the examiner will request the applicant to remedy them within a time limit no shorter than the three-month time limit for submitting the certificate referred to above.
If the deficiencies are not remediable or are not remedied in due time, the Office will inform the applicant of the loss of the priority right and of the possibility of requesting a formal (i.e. appealable) decision on that loss (Article 46(1) and (4) CDR; Article 40(2) CDIR).
If the deficiency concerns only some of the designs contained in a multiple application, the right of priority shall be lost in respect only of the individual designs concerned (Article 10(8) CDIR).
6.2.2 Description
The application may include a description not exceeding 100 w ords explaining the representation of the design or the specimen (see paragraph 3.3.5 above). The description must relate only to those features that appear in the reproductions of the design or the specimen. It may not contain statements concerning the purported novelty or individual character of the design or its technical value (Article 1(2)(a) CDIR).
The description does not affect the scope of protection of a Community design as such (Article 36(6) CDR).
The description may, however, clarify the nature or purpose of some features of the design in order to overcome a possible objection. For instance, where different views of the same design display different colours, thus raising doubts as to consistency between them (see paragraph 5.2.5 above), the description may explain that the colours of the design change when the product in which this design is incorporated is in use.
Descriptions submitted after the date of filing of the application will not be accepted.
The Register will include a mention that a description has been filed, but the description as such will not be pu blished. The description, however, will remain part of the administrative file of the application and will be open t o public inspection by third parties under the conditions set out at Article 74 CDR and Articles 74 and 75 CDIR.
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6.2.3 Indication of the Locarno Classification
6.2.3.1 General principles
The applicant may itself identify the classification, in accordance with the Locarno Classification, of the products indicated in the application (see paragraph 6.1.4 above).
If the applicant provides a classification, the products must be grouped in accordance with the classes of the Locarno Classification, each group being preceded by the number of the relevant class, and presented in the order of the classes and subclasses (Article 3 CDIR).
Since classification is optional, no objection will be r aised if the applicant does not submit a classification or does not group or sort the products as required, provided that no objection is raised with regard to the indication of products (paragraph 4.6 above). If no such objection is raised, the examiner will classify the products ex officio according to the Locarno Classification.
Where the applicant has indicated only the main class and no subclass, the examiner will assign the subclass that appears suitable in view of the design shown in the representation. For instance, where a design application indicates packaging in Class 9 of the Locarno Classification, and the design represents a bot tle, the examiner will assign subclass 09-01 (the heading of which is Bottles, flasks, pots, carboys, demijohns, and containers with dynamic dispensing means).
Where the applicant has given the wrong classification, the examiner will assign the correct one ex officio.
Products that combine different elements so as to perform more than one function may be classified in as many classes and subclasses as the number of purposes served. For instance, the product indication Refrigerating boxes with radios and CD players will be classified under Classes 14-01 (Equipment for the recording or reproduction of sounds or pictures), 14-03 (Communications equipment, wireless remote controls and radio amplifiers) and 15-07 (Refrigeration machinery and apparatus) of the Locarno Classification.
6.2.3.2 Multiple application and the requirement of ‘unity of class’
If the same product indication applies to all designs contained in a multiple application, the relevant box ‘Same indication of product for all designs’ should be ticked in the (paper) application form and the field ‘Indication of product’ left blank for the subsequent designs.
Where several designs other than ornamentation are combined in a m ultiple application, the application will be divided if the products in which the designs are intended to be incorporated or to which they are intended to be applied belong to more than one class of the Locarno Classification (Article 37(1) CDR); Article 2(2) CDIR; see paragraph 7.2.3).
6.2.4 Citation of the designer(s)
The application may include
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(a) a citation of the designer(s), or (b) a collective designation for a team of designers, or (c) an indication that the designer(s) or team of designers has/have waived the right
to be cited (Article 18 CDR; Article 1(2)(d) CDIR).
The citation, the waiver and an indication regarding the designer(s) are merely optional and are not subject to examination.
If the designer or the team of designers is the same for all designs applied for in a multiple application, this should be indicated by ticking the box ‘Same designer for all designs’ in the (paper) application form.
Since the right to be cited as the designer is not limited in time, the designer’s name can also be ent ered into the Register after registration of the design (Article 69(2)(j) CDIR).
6.2.5 Request for deferment
6.2.5.1 General principles
The applicant for a r egistered Community design may, when filing the application, request that its publication be def erred for 30 months from the date of filing or, if a priority is claimed, from the date of priority (Article 50(1) CDR).
Where no deficiency is found, the Community design will be registered. The information published in Part A.2. of the Community Designs Bulletin consists of the file number, date of filing, date of entry in the Register, registration number, name and address of the holder and na me and business address of the representative (if applicable). No other particulars such as the representation of the design or the indication of products are published (Article 14(3) CDIR).
Nevertheless, third parties may inspect the entire file if they have obtained the applicant’s prior approval or if they can establish a legitimate interest (Article 74(1) and (2) CDR).
In particular, there is a legitimate interest where an interested person submits evidence that the holder of the registered Community design whose publication is deferred has taken steps with a view to invoking the right against them.
No registration certificate will be made available as long as the publication of a design is deferred. The holder of the design registration subject to deferment may, however, request a certified or uncertified extract of the registration, containing the representation of the design or other particulars identifying its appearance (Article 73(b) CDIR), for the purpose of invoking its rights against third parties (Article 50(6) CDR).
The procedure described in this Section does not apply to international registrations designating the European Union (see paragraph 12 below).
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6.2.5.2 Request for deferment
Deferment of publication must be requested in the application (Article 50(1) CDR). Subsequent requests will not be accepted, even if received on the same day.
Applicants should be aware that designs can be r egistered and ac cepted for publication within two working days and ev en sometimes on the day that the application is received (see paragraph 2.7.1 above). If, by mistake, an application does not contain a request for deferment, the application should be w ithdrawn in order to prevent publication. Given the speed of the registration and publication processes, this should be done immediately after filing. The applicant should also contact an examiner on the day of the withdrawal.
A request for deferment of publication may concern only some of the designs of a multiple application. In this case, the designs to be deferred must be clearly identified by ticking the box ‘Request for deferment of publication’ on the (paper) form or the box ‘Publication to be deferred’ (e-filing) for each individual design.
The applicant must pay a fee for deferment of publication along with the registration fee (see paragraph 8 below). Payment of the publication fee is optional at the filing stage.
6.2.5.3 Request for publication
When applying, or at the latest three months before the 30-month period expires (that is, on the last day of the 27th month following the filing date or priority date, as the case may be), the applicant must comply with what are known as the ‘publication request requirements’ (Article 15 CDIR), by:
• paying the publication fee for the design(s) to be deferred (see paragraph 8); • in cases where a representation of the design has been replaced by a specimen
in accordance with Article 5 CDIR (see paragraph 3.3.5 above), filing a representation of the design in accordance with Article 4 CDIR (see paragraph 5);
• in the case of a multiple registration, clearly indicating which of the designs among those identified for deferment are to be published or surrendered, or for which designs deferment is to be continued, as the case may be.
Where the Community design holder notifies the Office, any time before the 27 months have expired, of its wish to have the design(s) published (‘request for anticipated publication’), it must specify whether publication should take place as soon as technically possible (Article 16(1) CDIR)) or when the 30-month deferment period expires. Where there is no specific request from the applicant, the designs will be published when the deferment period expires.
If the holder, despite a previous request for publication, decides that the design should not be published after all, it must submit a written request for surrender well before the design is due to be published. Any publication fees already paid will not be refunded.
6.2.5.4 Observation of time limits
Community design holders should be aware that the Office will not issue reminders regarding the expiry of the 27-month period before which the publication request requirements must be complied with. It is therefore the responsibility of the applicant
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(or, as the case may be, its representative) to make sure that the time limits are observed.
Particular attention must be paid where a priority date was claimed either at the time of or after filing, since this priority date will determine the time limits applicable to deferment. Moreover, the time limits applicable to deferment may differ for each of the designs of a multiple registration, if different priority dates are claimed for each individual design.
Where the time limit for complying with ‘the publication request requirements’ is not met, thus resulting in a loss of rights, the Community design holder may file a request for restitutio in integrum (Article 67 CDR; See also the Guidelines Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, Section 8, Restitutio in integrum).
6.2.5.5 Deficiencies
Deficiencies at the examination stage
If the information contained in the application is contradictory (e.g. the deferment fee has been paid, but the applicant has not ticked the box ‘Request for deferment of publication’) or inconsistent (e.g. the amount of the deferment fees paid for a multiple application does not correspond to the number of designs to be deferred), the examiner will issue a deficiency letter asking the applicant to confirm that deferment is requested and, where applicable, for which specific design(s) of a multiple application, and/or to pay the corresponding fees.
Deficiencies relating to the ‘publication request requirements’
If, once the 27-month period following the filing date or priority date of the Community design registration has expired, the holder has failed to comply with the ‘publication request requirements’, the examiner will issue a deficiency letter giving two months for the deficiencies to be remedied (Article 15(2) CDIR).
Where a deficiency concerns the payment of publication fees, the applicant will be requested to pay the correct amount plus fees for late payment (that is, EUR 30 for a design and, in the case of a multiple application, 25% of the fees for publication for each additional design; Article 15(4) CDIR; Articles 8 and 10 of the Annex to the CDFR).
Applicants should be aware that the time limit set by the examiner cannot be extended beyond the 30-month period of deferment (Article 15(2) CDIR).
If deficiencies are not remedied within the set time limit, the registered Community design(s) to be deferred will be deem ed from the outset not to have had t he effects specified in the CDR (Article 15(3)(a) CDIR).
The examiner will notify the holder accordingly, after the 30-month period of deferment has expired.
In the case of a ‘request for anticipated publication’ (see paragraph 6.2.5.3), failure to comply with the publication request requirements will result in the request being
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deemed not to have been f iled (Article 15(3)(a) CDIR). The publication fee will be refunded if it has already been paid. Where there are still more than 3 months before the 27-month period expires, the holder may, however, submit another request for publication.
Where the deficiency concerns a payment that is insufficient to cover the publication fees for all the designs that are to be deferred in a multiple application, including any fees for late payment, the designs not covered by the amount paid will be deemed from the outset not to have had the effects specified in the CDR. Unless the holder made it clear which designs were to be covered by the amount paid, the examiner will take the designs in consecutive numerical order (Article 15(4) CDIR).
Publication after deferment
Where there are no def iciencies or deficiencies have been overcome in due time, the registration will be published in Part A.1 of the Community Designs Bulletin.
The holder may request that only some of the designs of a multiple application are published.
Mention will be made in the publication of the fact that deferment was originally applied for and, where applicable, that a specimen was initially filed (Article 16 CDIR).
7 Multiple Applications
7.1 General principles
A multiple application is a request for the registration of more than one design within the same application. Each of the designs contained in a multiple application or registration is examined and deal t with separately. In particular, each design may, separately, be enforced, be licensed, be the subject of a right in rem, a levy of execution or insolvency proceedings, be s urrendered, renewed or assigned, be t he subject of deferred publication or be declared invalid (Article 37(4) CDR).
Multiple applications are subject to specific registration and publ ication fees, which decrease in proportion to the number of designs (see paragraph 8 below).
7.2 Formal requirements applying to multiple applications
7.2.1 General requirements
All the designs in a multiple application must have the same owner(s) and the same representative(s) (if any).
The number of designs contained in a multiple application is unlimited. The designs need not be related to one another or be otherwise similar in terms of appearance, nature or purpose.
The number of designs should not be c onfused with the ‘number of views’ that represent the designs (see paragraph 5.1 above).
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Applicants must number the designs contained in a multiple application consecutively, using Arabic numerals (Article 2(4) CDIR).
A suitable representation of each design contained in a multiple application must be provided (see Paragraph 5 above) and an indication given of the product in which the design is intended to be incorporated or to be applied (Article 2(3) CDIR, see paragraph 6.1.4 above).
7.2.2 Separate examination
Each of the designs contained in a multiple application is examined separately. If a deficiency concerning some of the designs contained in a multiple application is not remedied within the time limit set by the Office, the application will be refused only in so far as those designs are concerned (Article 10(8) CDIR).
The decisions on the registration or refusal of the designs contained in a m ultiple application will all be taken at the same time.
Even if some of the designs in a multiple application already comply with both the substantive and formal requirements, they will not be registered until any deficiencies affecting other designs have been r emedied or the designs in question have been refused by the decision of an examiner.
7.2.3 The ‘unity of class’ requirement
7.2.3.1 Principle
As a rule, all the product(s) indicated for the designs contained in a multiple application must be classified in only one of the 32 Locarno classes.
As an exception, the indication Ornamentation or Product(s) X (Ornamentation for -) in Class 32-00 can be combined with indications of products belonging to another Locarno class.
7.2.3.2 Products other than ornamentation
The products indicated for each design in a multiple application may differ from those indicated for others.
However, except in cases of ornamentation (see paragraph 7.2.3.3 below), any products that are indicated for each and every design of a m ultiple application must belong to the same class of the Locarno Classification (Article 37(1) CDR; Article 2(2) CDIR). This ‘unity of class’ requirement is considered to be complied with even if the products belong to different subclasses of the same class of the Locarno Classification.
For instance, a m ultiple application is acceptable if it contains one de sign with the product indication Motor vehicles (Class 12, subclass 08) and one design with the product indication Vehicle interiors (Class 12, subclass 16), or if both designs indicate both these terms. This is an example of two designs in different subclasses but in the same class, namely Class 12 of the Locarno Classification.
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An objection would, however, be raised if, in the above example, the products indicated were Motor vehicles (Class 12, subclass 08) and Lights for vehicles, since the second term belongs to Class 26, subclass 06 of the Locarno Classification. The examiner would then require the multiple application to be di vided, as explained under paragraph 7.2.3.4 below.
A multiple application cannot be divided unless there is a deficiency affecting the ‘unity of class’ requirement (Article 37(4) CDR).
7.2.3.3 Ornamentation
Ornamentation is a dec orative element capable of being applied to the surface of a variety of products without affecting their contours. It can be a two-dimensional pattern or a three-dimensional moulding or carving, in which the design stands out from a flat surface.
Although ornamentation is, in itself, a product within the meaning of the Locarno Classification (Class 32), its primary purpose is to constitute one o f the features of other products.
A multiple application can therefore combine designs for ornamentation with designs for products such as those to which this ornamentation will be applied, provided that all the products belong to the same class of the Locarno Classification.
For some designs, the indication Ornamentation or Product(s) X (Ornamentation for) in Class 32 of the Locarno Classification is neutral and therefore ignored for the purpose of examining whether the product indication for the remaining designs meets the ‘unity of class’ requirement.
The same reasoning applies to the following product indications in Class 32 of the Locarno Classification: Graphic symbols, Logos and Surface patterns.
For example, a multiple application is acceptable if it combines designs for Ornamentation or China (Ornamentation for) in Class 32 with designs representing pieces of a tea set for China in Class 7, subclass 01. In turn, if Linen (Table -) were indicated as a product for one of these designs, an objection would be raised as this product belongs in Class 6, subclass 13 of the Locarno Classification, that is, a different class.
Where the applicant has indicated the product as Ornamentation or Product(s) X (Ornamentation for), the examiner will prima facie examine whether it is really for ornamentation by looking at the design in question. Where the examiner agrees that it is for ornamentation, the product will be classified in Class 32.
Where the examiner does not agree that the design is for ornamentation, a deficiency letter must be sent on the grounds of an obvious mismatch between the products indicated and the design (see paragraph 6.1.6.3 above).
Where the representation of the design is not limited to ornamentation itself but also discloses the product to which such ornamentation is applied, without the contours of this product being disclaimed, this specific product must be added to the list of products and the classification must be amended accordingly (see paragraph 6.1.4.4).
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This may lead to an objection where a multiple application combines a number of such designs applied to products that belong to different classes of the Locarno Classification.
7.2.3.4 Deficiencies
For example, let us assume that three designs representing cars are combined in one multiple application, and the product indication for each design is Motor cars (subclass 12-08) and Scale models (subclass 21-01).
The examiner will issue an objection and request the applicant to:
• delete some of the product indications so that the remaining products can be classified in only one Locarno class; or
• divide the application into two multiple applications for each of the Locarno classes concerned, and pay the corresponding additional fees; or
• divide the application into three single applications for each design concerned, and pay the corresponding additional fees.
In some cases, it will not be possible to delete product indications, for example where a given product must be classified in two or more classes on account of the plurality of purposes it serves (see Paragraph 6.2.3.1).
The applicant will be invited to comply with the examiner’s request within two months and pay the total amount of fees for all applications resulting from the division of the multiple application or to delete some products in order to meet the ‘unity of class’ requirement.
The total amount to be paid is calculated by the examiner and notified to the applicant in the examination report. The examiner proposes the most cost-effective option between dividing the multiple application into as many applications as Locarno classes concerned or as many applications as designs concerned.
Where the applicant does not remedy the deficiencies in due t ime, the multiple application is refused in its entirety.
8 Payment of Fees
8.1 General principles
Community design applications are subject to various fees, which the applicant must pay at the time of filing (Article 6(1) CDIR), including the registration fee and t he publication fee or, where the application includes a r equest for deferment of the publication, the deferment fee.
In the case of multiple applications, additional registration, publication or deferment fees must be paid for each additional design. If payment has not been made when filing the application, late payment fees must also be paid.
In the case of deferment, applicants can, when filing, choose to pay not only the registration and deferment fee, but also the publication fee.
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For the fee payable with respect to an international application designating the European Union see paragraph 12.1.2.3 Fee.
8.2 Currency and amounts
Fees must be paid in euros. Payments made in other currencies are not accepted.
The fees for filing an application are as follows:
Registration fees
Single design or first design in a multiple application €230
2nd to 10th design in a multiple application €115 per design
11th+ design in a multiple application €50 per design
Publication fees
Single design or first design to be published in a multiple application €120
2nd to 10th design to be published in a multiple application €60 per design
11th+ design to be published in a multiple application €30 per design
Deferment fees (where deferment of publication is requested)
Single design or first design with deferment of publication in a multiple application €40
2nd to 10th design with deferment of publication in a multiple application €20 per design
11th+ design with deferment of publication in a multiple application €10 per design
Example of fees due for the filing of a multiple application where the publication of only some designs is to be deferred
Design number deferment Registration fee Publication fee Deferment fee
xxxxxxxx-0001 Yes €230 - €40
xxxxxxxx-0002 Yes €115 - €20
xxxxxxxx-0003 No €115 €120 -
xxxxxxxx-0004 No €115 €60 -
xxxxxxxx-0005 No €115 €60 -
If, after registration, publication is requested for design xxxxxxxx-0001, this will in effect be the fourth design to be published and the publication fee will be EUR 60.
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8.3 Means of payment, details of the payment and refund
The means of payment, the details to accompany the payment and the conditions for a refund of fees paid are explained in The Guidelines, Part A, Section 3, Payment of fees, costs and charges.
Fees are refunded when the application is withdrawn or refused without a f iling date having been granted (application ‘not dealt with as a Community design application’)
The Office also refunds amounts paid that are insufficient to cover the registration and publication (or deferment) fees for the design or at least one design of a multiple application.
9 Withdrawals and Corrections
9.1 Introduction
The applicant may at any time during the examination withdraw an a pplication for a registered Community design or, in the case of a multiple application, withdraw some of the designs contained in the multiple application. Corrections are allowed only in some specific situations.
Any correction or change to the Register and/or publication, that is after the design has been registered by the examiner, must be dealt with in accordance with paragraph 11 below.
9.2 Withdrawal of the application
Prior to registration the applicant may at any time withdraw an application for a Community design or, in the case of a m ultiple application, withdraw some of the designs contained in the multiple application (Article 12(1) CDIR). The examiner will send confirmation of the withdrawal.
Requests for withdrawal must be submitted in writing and include:
• the file number of the application for a registered Community design or, where the request for withdrawal is submitted before an application number has been allocated, any information enabling the application to be identified, such as the reference number of the applicant / representative and / or the provisional file number referred to in the automatic receipt for applications filed via the e-filing system;
• in the case of a multiple application, an indication of the design(s) that the applicant wants to withdraw if only some are to be withdrawn; and
• the name and addr ess of the applicant and / or, if applicable, the name and address of the representative.
The ‘date of withdrawal’ is the date on which the Office receives the request for withdrawal.
Fees will not be refunded if a filing date has been granted, except where the amount of fees paid by the applicant is insufficient to cover the fees relating to registration and
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publication (or deferment as the case may be) for the design, or for at least one design of a multiple application.
Requests for withdrawal received by the Office on or after the date of registration of the design will be dealt with as requests for surrender.
Requests for withdrawal received by the Office on the filing date of the design application will be accepted even if the design is registered that same day.
9.3 Corrections to the application
9.3.1 Elements subject to correction
Only the name and address of the applicant or the representative, errors of wording or of copying, or obvious mistakes may be c orrected, at the request of the applicant (Article 12(2) CDIR).
Apart from the name and address of the applicant or representative, the following elements may be corrected at the applicant’s request if they contain errors of wording or of copying or obvious mistakes: • the date of filing, where the application was filed with the central industrial
property office of a M ember State or, in Benelux countries, with the Benelux Office for Intellectual Property (BOIP), upon notification by the office concerned that an error regarding the date of receipt has been made;
• the name of the designer or team of designers; • the second language; • an indication of the product(s); • the Locarno classification of the product(s) contained in the application; • the country, date and number of the prior application where Convention priority is
claimed; • the name, place and dat e of the first exhibition of the design where exhibition
priority is claimed; • the description.
9.3.2 Elements that cannot be corrected
As a matter of principle, the representation of the design(s) cannot be altered after the application has been filed (Article 12(2) CDIR). The submission of additional views or the withdrawal of any views at a later stage will not be accepted, unless expressly required or proposed by the Office (see paragraphs 5.2 and 5.5 above).
Where a request for correction amends the representation of the design(s), the applicant will be informed that its request is not acceptable. The applicant must decide whether it wishes to continue the registration process or to file a fresh application for which it will have to pay the applicable fees.
9.3.3 Procedure for requesting correction
A request for correction of the application must contain:
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a) the file number of the application; b) the name and address of the applicant; c) where the applicant has appointed a r epresentative, the name and bus iness
address of the representative; d) an indication of the element of the application to be corrected and the corrected
version of that.
A single request may be m ade for correction of the same element in two or more applications belonging to the same applicant.
If all the requirements are met, the examiner will send confirmation of the correction.
Corrections and amendments after registration are dealt with by the Operations Support Department (see paragraph 11 below).
9.3.4 Deficiencies
Where a request for correction does not meet the above requirements and t he deficiency found can be remedied, the examiner will invite the applicant to remedy the deficiency within two months. If the deficiency is not remedied in due time, the examiner will refuse the request for correction.
Requests for correction that would have the effect of amending the representation of the design(s) will be refused irremediably.
Descriptions submitted after the date of filing of the application are not accepted (see paragraph 6.2.2 above). Requests for correction that involve submitting a description after the date of filing of the application will therefore be refused.
10 Registration, Publication and Certificates
10.1 Registration
Once examination of absolute grounds for refusal and formalities is completed, the examiner must ensure that all the particulars referred to in Article 14 CDIR have been provided (particulars which are mandatory for the applicant and which must be indicated in the application are highlighted):
(a) the filing date of the application; (b) the file number of the application and of each individual design included in a
multiple application; (c) the date of publication of the registration; (d) the name, address and nationality of the applicant and the state in which it
is domiciled or has its seat or establishment; (e) the name and business address of the representative, other than an
employee acting as representative in accordance with the first sentence of Article 77(3) CDR; where there is more than one representative, only the name and business address of the first-named representative, followed by the words ‘et al’, will be recorded; where an association of representatives is appointed, only the name and address of the association will be recorded;
(f) the representation of the design;
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(g) an indication of the product(s) by name, preceded by the number(s) of and grouped according to the class(es) and subclass(es) of the Locarno Classification;
(h) particulars of priority claims pursuant to Article 42 CDR; (i) particulars of exhibition priority claims pursuant to Article 44 CDR; (j) the citation of the designer or team of designers or a statement that the designer
or team of designers has waived the right to be cited; (k) the language in which the application was filed and t he second l anguage
indicated by the applicant pursuant to Article 98(2) CDR; (l) the date of registration of the design in the Register and the registration number; (m) a mention of any request for deferment of publication pursuant to Article 50(3)
CDR, specifying the date of expiry of the period of deferment; (n) a mention that a specimen has been filed pursuant to Article 5 CDIR; (o) a mention that a description was filed pursuant to Article 1(2)(a) CDIR; (p) a mention that the representation of the design contains a verbal element.
Once all the particulars in the check-list are on file, the examiner will check whether all the applicable fees have been paid.
Where no deficiency is found, the application is registered.
10.2 Publication
10.2.1 General principles
All registered Community designs are published in the Community Designs Bulletin, which is published in electronic format only, on the OHIM website.
However, international registrations designating the European Union are published by WIPO (Hague Express Bulletin) (see paragraph 12 below).
Unless an application contains a request for deferment of publication, publication will take place immediately after registration; publication is daily.
Where an application contains a request for deferment of publication, publication is made in Part A.2 of the Bulletin and is limited to the following particulars: the design number, filing date, registration date and the names of the applicant and the representative, if any.
Where an application contains a request for deferment of publication for only some of the designs of a multiple application, only the designs for which deferment has not been requested are published in full.
10.2.2 Format and structure of the publication
The Community Designs Bulletin is available in two formats:
• HTML • PDF.
Both formats are equally valid for publication and search purposes.
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The Community Designs Bulletin comprises the following four parts:
• Part A deals with Community design registrations and consists of three sections:
o Part A.1: Community design registrations in accordance with Articles 48 and 50 CDR.
o Part A.2: Community design registrations with requests for deferment and their first publication in accordance with Article 50 CDR and Article 14(3) CDIR.
o Part A.3: Errors in Part A (mistakes and er rors in registrations). A.3.1: absolute errors; A.3.2: relative errors.
• Part B deals with entries in the Register subsequent to registration, such as amendments, transfers, licences, etc. and consists of eight sections:
o Part B.1: mistakes and errors o Part B.2: transfers o Part B.3: invalidity and entitlement proceedings o Part B.4: surrenders and designs without effects o Part B.5: licences o Part B.6: rights in rem o Part B.7: insolvency proceedings o Part B.8: levy of execution (seizures).
• Part C deals with renewals and i nformation on expired registrations and is subdivided into three sections:
o Part C.1: Renewals in accordance with Article 13(4) CDR and Article 69(3)(m) CDIR.
o Part C.2: Expired registrations according to Articles 22(5) and 69(3)(n) CDIR.
o Part C.3: Correction of errors or mistakes in renewals and ex pired registrations.
• Part D deals with Restitutio in integrum (Article 67 CDR) and is divided into two sections:
o Part D.1: Restitutio in integrum. o Part D.2: Correction of errors or mistakes in Part D.
In the Bulletin, each item is preceded by the corresponding INID code in accordance with WIPO standard ST.80. Where appropriate, information is published in all official EU languages (Article 70(4) CDIR).
The INID codes used for items published in for example Part A.1 of the Bulletin are as follows:
21 File number 25 Language of filing and second language 22 Date of filing 15 Date of entry into the Register 45 Date of publication 11 Registration number 46 Date of expiry of the deferment
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72 Name(s) of designer(s) or team of designers 73 Name and address of the holder 74 Name and business address of the representative 51 Locarno classification 54 Indication of the product(s) 30 Country, date and number of application for which priority is claimed (Convention
priority) 23 Name, place and date on which the design was first exhibited (exhibition priority) 29 Indication that a specimen was filed 57 Indication that a description was filed 55 Representation of the design
The publication is made in all EU languages that are official on the date of the application.
10.3 Registration certificate
A registration certificate is issued after the registered Community design has been published in full (i.e. publication in Part A.1).
However, the Office does not issue registration certificates for international registrations designating the European Union (see paragraph 12 below).
Since 15/11/2010, registration certificates have been issued only as online e-certificates. Holders of Community design registrations are invited to download the certificate from the day after publication, using the “eSearch plus” tool on t he OHIM website. . No paper copy of the certificate of registration will be i ssued. However, certified or uncertified copies of the registration certificate may be requested.
The certificate contains all the particulars entered in the Community designs Register at the date of registration. No new certificate is issued following changes made in the Register after the date of registration. However, an extract from the Register, which reflects the current administrative status of the design(s), may be requested.
A corrected certificate is issued after publication of a relative error detected in a design registration (Part A.3.2) or after publication of a relative error detected in a recordal (Part B.1.2). A relative error is an error attributable to the Office that modifies the scope of the registration.
11 Corrections and Changes in the Register and in the Publication of Community Design Registrations
11.1 Corrections
11.1.1 General Principles
Only the name and address of the applicant, errors of wording or of copying, or obvious mistakes may be c orrected, at the request of the applicant and p rovided that such correction does not change the representation of the design (Article 12(2) CDIR) (decision of 3/12/2013, R 1332/2013-3 ‘Adapters’, para. 14 et seq.). There is no fee for such requests.
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Where the registration of a des ign or the publication of the registration contains a mistake or error attributable to the Office, the Office will correct the error or mistake of its own motion or at the request of the holder (Article 20 CDIR). There is no fee for such requests.
A request for correction of mistakes made by the Office can only refer to the contents of the publication of the registration (Articles 49, 73 and 99 CDR and Articles 14 and 70 CDIR) and the entries in the Register (Articles 48, 72 and 99 CDR and Articles 13 and 69 CDIR).
Unless the Office itself made an e rror when publishing the representation of the design(s) (e.g. by distorting or truncating the representation), the holder will not be allowed to request the correction of its Community design if this has the effect of altering the representation (Article 12(2) CDIR) (decision of 3/12/2013, R 1332/2013- 3 ‘Adapters’, para. 14 et seq.).
Corrections will be made as soon as the mistake is detected, including, where necessary, years after the original entry in the Register.
11.1.2 The request for correction
According to Articles 12 and 19 CDIR, requests for the correction of mistakes and errors in the Register and in the publication of the registration must contain:
a) the registration number of the registered Community design; b) the name and address of the holder as registered in the Register or the name of
the holder and the identification number assigned to the holder by the Office; c) where the holder has appointed a representative, the name and business
address of the representative or the name of the representative and the identification number assigned to the representative by the Office; and
d) an indication of the entry in the Register and/or of the content of the publication of the registration to be corrected and the corrected version of the element in question.
A single request may be made for the correction of errors and mistakes in respect of two or more registrations belonging to the same holder (Article 19(4) and Article 20 CDIR).
If the requirements for such corrections are not fulfilled, the Office will inform the applicant of the deficiency. If the deficiency is not remedied within the two months specified by the Office, the request for correction will be refused (Article 19(5) and 20 CDIR).
Requests for the correction of mistakes or errors that are not entries in the Register and / or that do no t concern the contents of the publication of registrations will be refused. Accordingly, requests for correction of the description explaining the representation of the design or the specimen will be refused.
Errors in the translation of the product indication into the official EU languages are considered attributable to the Office and will be corrected because the translations are considered as entries in the Register and as part of the contents of the publication of the registration, despite the fact that the translations are done not by the Office but by
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the Translation Centre for the Bodies of the European Union (Communication No 4/05 of the President of the Office of 14/06/2005 concerning the correction of mistakes and errors in the Register and in the publication of the registration of Community designs).
In cases of doubt, the text in the Office language in which the application for a registered Community design was filed will be authentic (Article 99(3) CDR). If the application was filed in an official EU language other than one of the Office languages, the text in the second language indicated by the applicant will be authentic.
11.1.3 Publication of corrections
The holder will be notified of any changes in the Register (Article 69(5) CDIR).
Corrections will be published by the Office in Part A.3 of the Community Designs Bulletin and entered in the Register together with the date on which they were recorded (Article 20 and 69(3)(e) CDIR).
Where the mistake or error is attributable to the Office, the Office will, after publication of the mistake or error, issue the holder with a certificate of registration containing the entries in the Register (Article 69(2) CDIR) and a s tatement to the effect that those entries have been recorded in the Register (Article 17 CDIR).
In cases where the mistake or error is the holder’s, a certificate of registration reflecting the corrected mistake or error will be issued only where no certificate has previously been issued. In any event, holders can always request the Office to issue an extract of the Register (in certified or simple form) to reflect the current status of their design(s).
11.2 Changes in the Register
11.2.1 Introduction
This section describes the changes in the Community designs Register, as follows:
• surrender of a Community design with or without deferment, in particular partial surrender;
• changes in the name and address of the applicant and / or of the representative, where applicable, of which the Office was notified before registration of the Community design (i.e., before issue of the notification of registration);
• changes in the name and address of the holder and / or of the representative, where applicable, for a Community design with deferred publication that has not been published yet;
• recordal of transfers; • recordal of licences.
11.2.2 Surrender of the registered Community design
11.2.2.1 General principles
A Community design may be surrendered by the holder at any time after registration. A surrender must be declared to the Office in writing (Article 51 CDR).
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However, a request for renunciation of an i nternational design designating the European Union must be filed with, and recorded by, the International Bureau (see Article 16 of the Geneva Act and paragraph 12.2.2.5 below).
Surrender can also be declared for only some of the designs contained in a multiple registration (Article 27(1)(d) CDIR).
The effect of a declaration of surrender begins on the date on which the surrender is entered in the Community designs Register, without any retroactive effect (Article 51(1) CDR). However, if a C ommunity design for which publication has been deferred is surrendered, it will be deemed from the outset not to have had the effects specified in the CDR (Article 51(2) CDR).
A registered Community design may be partially surrendered provided that its amended form complies with the requirements for protection and the identity of the design is retained (Article 51(3) CDR). Partial surrender will therefore be limited to cases in which the features removed or disclaimed do not contribute to the novelty or individual character of a Community design, in particular:
• where the Community design is incorporated in a product that constitutes a component part of a complex product, and the removed or disclaimed features are invisible during normal use of this complex product (Article 4(2) CDR); or
• where the removed or disclaimed features are dictated by a f unction or by interconnection purposes (Article 8(1) and (2) CDR); or
• where the removed or disclaimed features are so insignificant in view of their size or importance that they are likely to go unnoticed by the informed user.
The surrender will be entered in the Register only with the agreement of the proprietor of a right entered in the Register (Article 51(4) CDR). Persons having a registered right include the holders of a registered licence, the proprietors of a registered right in rem, the creditors of a registered levy of execution or the authority competent for the registered bankruptcy or similar procedures.
In the case of licences registered in the Community design Register, the surrender of a Community design is entered in the Register only upon receipt of evidence that the right holder has informed licensee(s) of the surrender accordingly. The surrender is entered in the Register three months after the date on which the Office obtains proof that the holder has informed licensee(s) of the surrender accordingly or earlier if proof is obtained of the licensee’s(licensees’) consent to the surrender (Article 51(4) CDR; Article 27(2) CDIR).
Where a claim relating to the entitlement to a registered Community design has been brought before a court pursuant to Article 15 CDR, the surrender is entered in the Register only with the agreement of the claimant (Article 27(3) CDIR).
11.2.2.2 Formal requirements for a declaration of surrender
A declaration of surrender must contain the particulars referred to in Article 27(1) CDIR:
a) registration number of the registered Community design; b) name and address of the holder; c) name and address of the representative, where appointed;
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d) indication of the designs for which the surrender is declared in the case of multiple registrations;
e) representation of the amended design in accordance with Article 4 CDIR in the case of partial surrender.
In the case of a partial surrender, the holder must submit a representation of the Community design as amended (Article 27(1)(e) CDIR).
If a declaration of surrender does not contain all the particulars listed above and does not fulfill all the above requirements, depending on the situation, the Office will notify the holder of the deficiencies and request that they be remedied within the prescribed time limit. Where the deficiencies are not remedied within the time limit, the surrender will not be entered in the Register and the Community design holder will be informed thereof in writing (Article 27(4) CDIR).
11.2.3 Changes in the name and address of the applicant / holder and / or its representative
The Community design holder may request recordal of the change of name or address in the Register by submitting a written request to the Office. Recordals of changes of name and / or address are free of charge.
The request for recordal of a change of name or address in respect of an international design designating the European Union must be filed with the International Bureau (see Article 16 of the Geneva Act).
For the differences between a change of name and a transfer, see the Guidelines on Community Trade Marks, Part E, Section 3, Chapter 1, on ‘Transfers and changes of name’.
A single request may be made for a change of name or address in respect of two or more registrations belonging to the same holder.
A request for a c hange of name or address by a Community design holder must contain:
a) the registration number of the Community design; b) the holder’s name and address as recorded in the Register or the holder’s
identification number; c) an indication of the holder’s name and address as changed; d) the name and address of the representative, where appointed.
If the above requirements are not fulfilled, the Office will send a deficiency letter. If the deficiency is not remedied within the specified time limit, the Office will refuse the request (Article 19(5) CDIR).
Changes of name and address for Community design applicants in connection with applications for Community designs are not entered in the Register but must be recorded in the files kept by the Office concerning Community design applications (Article 19(7) CDIR).
Changes in the holders of Community design registrations are published in Part B.2.2 of the Community designs Bulletin, while transfers of rights are published in Part B.2.1.
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Changes in the representatives are published in Part B.9 of the Community designs Bulletin.
11.2.4 Transfers
11.2.4.1 Introduction
A Community design registration may be transferred by the holder, and transfers are recorded upon request in the Register. However, the request for recording a transfer in respect of an international design designating the European Union must be filed with the International Bureau (see Article 16 of the Geneva Act).
The legal provisions contained in the CDR, CDIR and C DFR in respect of transfers correspond to the provisions in the CTMR, CTMIR and CTMFR respectively (see the Guidelines on Community Trade Marks, Part E, Chapter 1, on Transfer). The legal principles and procedure for the recordal of trade mark transfers apply mutatis mutandis to Community designs with the following particularities.
11.2.4.2 Rights of prior use in respect of a registered Community design
The right of prior use in respect of a registered Community design cannot be transferred except, where the third person, who claimed said right before the filing or priority date of the application for a registered Community design, is a business, along with that part of the business in the course of which the act was done or the preparations were made (Article 22(4) CDR).
11.2.4.3 Fees
The fee of EUR 200 for the recordal of a transfer applies per design, with an upper limit of EUR 1 000 if multiple requests are submitted in the same application (points 16 and 17 of the annex to the CDFR).
11.2.5 Licences
11.2.5.1 General principles
Community design registrations may be l icensed by the holder and the licences recorded upon request in the Register. The provisions of the CDR and CDIR dealing with Community design licences (Articles 27, 32 and 33, and Article 51(4) CDR; Articles 24 and 25, and Article 27(2) CDIR) are almost identical to those in the CTMR and CTMIR (see the Guidelines on Community Trade Marks, Part E, Chapter 2, on Licences).
The legal principles and procedure for the recordal of licences in respect of Community trade marks apply mutatis mutandis to Community designs (Article 24(1) CDIR) with the following particularities.
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11.2.5.2 Registered Community designs
There is no use requirement in Community design law. Therefore, the issue of whether use by a licensee is use with the consent of the right holder does not arise.
The CDR and CDIR require an indication of the products in which the design is intended to be incorporated or applied (see paragraph 6.1.4 above.). A partial licence for only some of the products in which the design is intended to be i ncorporated or applied is not possible.
Any limitations of the scope of the licence will therefore be disregarded by the Office, and the licence will be registered as if there were no such limitations.
11.2.5.3 Multiple applications for registered Community designs
An application for a registered Community design may take the form of a multiple application combining several designs (Article 37 CDR).
Each design contained in a multiple application may be licensed independently of the others (Article 24(1) CDIR).
11.2.5.4 Fees
The fee of EUR 200 for the recordal, transfer or cancellation of a licence applies per design, not per application, with a ceiling of EUR 1 000 if multiple requests are submitted in the same application (points 18 and 19 of the annex to the CDFR).
Example 1: From a multiple application for ten designs, six designs are licensed to the same licensee. The fee for registering the licences is EUR 1 000, provided that
• all six licences are included in a single registration request, or • all the relevant requests are submitted on the same day.
The request may indicate that, for three of these six designs, the licence is an exclusive one, without this having any impact on the fees to be paid.
Example 2: From a multiple application for ten designs, five designs are licensed to the same licensee. A licence is also granted for another design not contained in that multiple application. The fee is EUR 1 000, provided that:
• all six licences are included in a single registration request, or that all the relevant requests are submitted on the same day, and
• the holder of the Community design and the licensee are the same in all six cases.
12 International Registrations
This part of the Guidelines deals with the particularities of examining international registrations designating the European Union that result from applications filed with the International Bureau of the World Intellectual Property Organisation (hereinafter referred to as ‘international registrations’ and ‘the International Bureau’) under the
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Geneva Act of 02/07/1999 of the Hague Agreement concerning the international registration of industrial designs.
12.1 General overview of the Hague System
12.1.1 The Hague Agreement and the Geneva Act
The Hague Agreement is an international registration system that makes it possible to obtain protection for designs in a nu mber of States and/or intergovernmental organisations, such as the European Union or the African Intellectual Property Organization, by means of a single international application filed with the International Bureau. Under the Hague Agreement, a single international application replaces a whole series of applications which, otherwise, would have had to be filed with different national intellectual property offices or intergovernmental organisations.
The Hague Agreement consists of three separate international treaties: the London (1934) Act, the application of which has been frozen since 01/01/2010, the Hague (1960) Act and the Geneva (1999) Act. Each Act has a different set of legal provisions, which are independent of one another.
International registrations designating the European Union are governed by the Geneva Act.
Unlike the Madrid ‘Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks’, neither the Geneva Act nor the CDR provides for procedures for converting or transforming an international registration into Community or national designs or into designations of Member States party to the Hague System, or for replacing Community or national designs by an international registration designating the contracting party in question.
12.1.2 Procedure for filing international applications
12.1.2.1 Particularities
Another difference with the Madrid System is that the Geneva Act does neither allow nor require an international registration to be based on a previously filed Community or national design. OHIM can only be a ‘designated office’, not an ‘office of origin’. International applications must therefore be filed directly with the International Bureau (Article 106b CDR).
The Geneva Act and the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement (‘CR’) contain specific rules, which may differ from those applicable to ‘direct filings’ of Community designs, that is, applications filed directly with OHIM or via the central industrial property office of a Member State or, in Benelux countries, the Benelux Office for Intellectual Property (BOIP) (see paragraph 2.2.1 above). These specific rules relate, in particular, to entitlement to file an international application, the contents of an international application, fees, deferment of publication, the number of designs that may be i ncluded in a m ultiple application (up to 100), representation before the International Bureau and the use of languages (an international application must be in English, French, or Spanish).
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12.1.2.2 Deferment of publication
An international application may contain a request that publication of the design, or of all the designs contained in a multiple application, be deferred. The Geneva Act does not allow deferment of publication to be r equested for only some of the designs contained in a multiple application (Article 11 of the Geneva Act).
The period of deferment of publication for an international application designating the European Union is 30 months from the filing date or, where priority is claimed, the priority date. The application will be published at the end of this 30-month period, unless the holder submits a request for earlier publication to the International Bureau (Article 11 of the Geneva Act).
The procedure described in paragraph 6.2.5 above does not apply as the Office is not responsible for publishing international registrations designating the European Union.
12.1.2.3 Fees
Three types of fees6 must be pai d for an international application designating the European Union, namely:
• a basic fee • a publication fee • an individual designation fee, that is, EUR 62 per design, converted into Swiss
francs (Article 106c CDR; Article 1a to the Annex of the CDFR; Rule 28 CR).
12.1.3 Examination carried out by the International Bureau
When it receives an international application, the International Bureau checks that it complies with the prescribed formal requirements, such as those relating to the quality of the reproductions of the design(s) and the payment of the required fees. The applicant is informed of any deficiency, which must be corrected within the prescribed time limit of three months, failing which the international application is considered to be abandoned.
Where an international application complies with the prescribed formal requirements, the International Bureau records it in the International Register and (unless deferment of publication has been r equested) publishes the corresponding registration in the ‘International Designs Bulletin’. Publication takes place electronically on the website of the World Intellectual Property Organization (‘WIPO’) and contains all relevant data concerning the international registration, including a reproduction of the design(s).
The International Bureau notifies the international registration to all designated offices, which then have the option of refusing protection on substantive grounds.
6 See www.wipo.int/hague/en/fees
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12.2 The role of the Office as designated office
It will be e xplained below how international registrations are dealt with by the Office from notification by the International Bureau through to the final decision to accept or refuse the designation of the European Union.
The main steps before the Office as designated office are:
• receipt of the international registration designating the European Union; • examination of the grounds for non-registrability.
12.2.1 Receipt of the international registration designating the European Union
Communications between the Office and the International Bureau are by electronic means (Article 43(3) CDIR).
12.2.2 Grounds for non-registrability
Once the international registration designating the European Union has been notified to the Office by the International Bureau, the rules laid down under Title XIa CDR a nd Article 11a CDIR (Examination of grounds for refusal) apply (Article 106a(1) CDR).
12.2.2.1 Compliance with the definition of a design, public policy and morality
An international registration may not be refused on the grounds of non-compliance with formal requirements, since such requirements are to be c onsidered as already satisfied following examination by the International Bureau.
The Office limits its examination to the two grounds for non-registrabiity (Article 11a CDIR). An international application will be refused if a design does not correspond to the definition in Article 3(a) CDR or if it is contrary to public policy or accepted principles of morality (Article 9 CDR) (see paragraph 4 above).
The examination of grounds for non-registrability for international registrations will be carried out as if the design(s) had been appl ied for directly with the Office. The time limits and other general procedural aspects governing said examination are the same as those that apply in the case of design applications filed directly at the Office (see Introduction, paragraph 1.2.3, and paragraph 4.3 above).
12.2.2.2 Time limits
The Office must inform the International Bureau of any refusal of protection within six months of publication of the international registration on the WIPO website (Article 11a(1) CDIR).
A preliminary refusal must be reasoned and s tate the grounds on w hich refusal is based, and the holder of the international registration must be given an opportunity to be heard (Article 106e(1) and (2) CDR).
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Thus, within two months of the date of receipt of the notification of provisional refusal by the international registration holder, the latter will be g iven the opportunity to renounce the international registration, to limit the international registration to one or some of the designs for the European Union or to submit observations (Article 11a(2) CDIR).
The International Bureau will forward the notification of provisional refusal to the holder (or to its representative before WIPO if applicable). The holder must reply direct to the Office or, if applicable, through his representative (see paragraph 12.2.2.4 below).
For time-limit extensions, see Introduction, paragraph 1.2.3.
12.2.2.3 Languages
An international application must be filed in English, French or Spanish (Rule 6(1) CR). The recording and publication of the international registration will indicate the language in which the international application was received by the International Bureau (Rule 6(2) CR). In practice, this language can be identified from the product indication (INID code 54): the first language used in the product indication is the language in which the international application was received by the International Bureau. The indications given in the other two languages are translations provided by the International Bureau (Rule 6(2) CR).
The language in which the international application was received by the International Bureau will be the first language of the EU designation and will therefore become the language of the examination proceedings (Article 98(1) and (3) CDR).
In all communications with the International Bureau, the Office will therefore use the language in which the international registration was filed.
If the holder wishes to use a different Office language, it must supply a translation into the language in which the international registration was filed, within one month of the date of submission of the original document (Article 98(3) CDR; Article 81(1) CDIR). If no translation is received within this time limit, the original document is deemed not to have been received by the Office.
12.2.2.4 Professional representation
The holder may, if representation is mandatory under Article 77(2) CDR (see paragraph 2.5 above), be requested to appoint, within two months, a professional representative before the Office in accordance with Article 78(1) CDR (Article 11a(3) CDIR).
If the holder fails to appoint a representative within the specified time limit, the Office will refuse protection of the international registration (Article 11a(4) CDIR).
12.2.2.5 Renunciation and limitation
Where the holder renounces the international registration or limits it to one or some of the designs for the European Union, it must inform the International Bureau by way of recording procedure in accordance with Article 16(1)(iv) and (v) of the Geneva Act. The
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holder can inform the Office by submitting a c orresponding statement (Article 11a(6) CDIR).
12.2.2.6 Grant of protection
Where the Office finds no grounds for refusing protection or where a preliminary refusal is withdrawn, the Office must inform the International Bureau accordingly without delay.
12.2.2.7 Refusal
Where the holder does not submit observations that satisfy the Office within the specified time limit, the Office will confirm its decision refusing protection for the international registration. If the refusal concerns only some of the designs contained in a multiple international registration, the Office will refuse the latter only insofar as those designs are concerned (Article 11(3) CDIR).
There is no l egal provision in the CDR or CDIR allowing an appl icant to request an amendment of the design in order to overcome an objection concerning an international registration. On the other hand, an applicant may renounce the designation of the European Union by addressing WIPO directly, who will then notify the Office.
The holder of the international registration has the same remedies available to it as it would have had i f it had filed the design(s) in question directly with the Office. The ensuing procedure takes place solely at Office level. An appeal against a decision to refuse protection must be submitted by the holder to the Boards of Appeal, within the time limit and in accordance with the conditions set out in Articles 55 to 60 CDR and Articles 34 to 37 CDIR (Article 11a(5) CDIR). The International Bureau is not involved in this procedure at all.
Once the decision to refuse or accept the international registration is final, a final notification will be sent to the International Bureau, indicating whether the design(s) has / have been finally refused or accepted.
Where the final refusal relates to only some of the designs contained in a multiple application, the notification to the International Bureau will indicate which designs have been refused and which accepted.
12.3 Effects of International registrations
If no r efusal is notified by the Office within six months of the publication of the international registration on t he WIPO website, or if a no tice of preliminary refusal is withdrawn, the international registration will, from the date of registration granted by the International Bureau, as referred to in Article 10(2) of the Geneva Act (Article 106a(2) CDR), have the same effect as if it had been applied for with, and registered by, the Office.
International registrations can be subject to invalidity proceedings under the same conditions and procedural rules as ‘direct filings’ (Article 106f CDR; see the Guidelines on the Examination of Design Invalidity Applications). Since the language of filing of an international registration designating the European Union is necessarily an Office
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language, an application for a declaration of invalidity against such an international registration must be filed in this language.
The Office will notify the holder or their representative direct of any request for a declaration of invalidity The holder must reply direct to the Office or, if applicable, through a representative who is on the Office’s list in accordance with Article 78 CDR (see paragraph 2.5 above).
Where the Office declares the effects of an i nternational registration invalid in the territory of the European Union, it must inform the International Bureau of its decision as soon as the latter becomes final (Article 106f(2) CDR; Article 71(3) CDIR).
The particularities of the procedures governing the renewal of international registrations and recordals of changes of name, transfers, renunciation or limitation of certain designs, for any or all of the designated contracting parties, are dealt with in the Guidelines Concerning Proceedings before the Office on Renewal of Registered Community Designs and at paragraphs 11.2.2 to 11.2.4 (Articles 16 and 17 o f the Geneva Act; Article 22a CDIR).
13 Enlargement and the Registered Community Design
This section discusses the rules relating to the accession of new Member States to the European Union and t he consequences thereof for applicants for, and hol ders of, registered Community designs.
Ten new Member States joined the European Union on 01/05/2004 (Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia and Slovakia), two on 01/01/2007 (Bulgaria and Romania) and one on 01/07/2013 (Croatia), bringing the number of Member States up to 28.
Article 110a CDR contains provisions relating to enlargement as regards registered Community designs. These provisions were inserted in the CDR when the EU was enlarged in 2004 and r emain applicable for successive enlargements. The only modification to the text of the CDR is the addition of the names of the new Member States.
As far as registrability and validity of Community designs are concerned, the effects of the enlargement of the European Union on registered Community design rights are the following.
13.1 The automatic extension of the Community design to the territories of the new Member States
Pursuant to Article 110a(1) CDR, the effects of all Community design rights filed before 01/05/2004, 01/01/2007 or 01/07/2013 extend automatically to the territories of the Member States that acceded on those dates (Article 110a(1) CDR).
Extension is automatic in the sense that it does not have to undergo any administrative formality and does not give rise to any extra fees. Moreover, it cannot be opposed by the Community design holder or any third party.
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13.2 Other practical consequences
13.2.1 Filing with national offices
As from the enlargement date, a C ommunity design application may also be f iled through the industrial property office of a new Member State.
13.2.2 Professional representation
As from the accession date, applicants (as well as other parties to proceedings before the Office) who have their seat or domicile in a new Member State no longer need to be represented by a professional representative. As from the accession date, professional representatives from a new Member State may be entered on the list of professional representatives maintained by the Office pursuant to Article 78 CDR and may then represent third parties before the Office.
13.2.3 First and second language
Since 01/01/2004 there have been nine new official EU languages, namely Czech, Estonian, Latvian, Lithuanian, Hungarian, Maltese, Polish, Slovak and Slovenian. A further two languages (Bulgarian and R omanian) were added on 01/01/20077 and a further one (Croatian) on 01/07/2013.
These languages may be us ed as the first language only for Community design applications filed on or after the accession date concerned.
13.2.4 Translation
Community design applications with a filing date prior to the accession date, or existing Community design registrations, will neither be translated into, nor republished in the language of the new Member State(s). Community design applications filed after the accession date will be translated and published in all official EU languages.
13.3 Examination of grounds for non-registrability
The Office limits its examination of the substantive protection requirements to only two grounds for non-registrability (Article 47(1) CDR). An application will be refused if the design does not correspond to the definition provided for at Article 3(a) CDR or if it is contrary to public policy or to accepted principles of morality (Article 9 CDR) (see paragraph 4 above).
An application for a registered Community design cannot be refused on the basis of any of the grounds for non-registrability listed in Article 47(1) CDR if these grounds become applicable merely because of the accession of a new Member State (Article 110a(2) CDR).
7 For Irish, see paragraph 2.4
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Whether a C ommunity design is in conformity with Article 3 CDR o r complies with public order and accepted principles of morality is normally assessed without reference to any particular national or linguistic context.
However, where a C ommunity design contains an of fensive word element in a language which, as a r esult of the accession of a new Member State, becomes an official language of the European Union after the date of filing, the absolute ground of refusal provided for under Article 9 CDR does not apply.
13.4 Immunity against cancellation actions based on gro unds of invalidity which become applicable merely because of the accession of a new Member State
13.4.1 General principle
Community designs filed or registered before 01/05/2004, 01/01/2007 or 01/07/2013 will not be c ancelled on the basis of grounds for invalidity that exist in one of the Member States acceding to the European Union on those dates if the ground for invalidity only became opposable as from the accession date in question (Article 110a(3) CDR). This is an expression of the need to respect acquired rights.
Not all grounds of invalidity set out in Article 25(1) CDR may become ‘applicable merely because of the accession of a new Member State’.
13.4.1.1 Grounds of invalidity that are applicable independently of the enlargement of the EU
The accession of a new Member State has no effect on the applicability of the following four grounds for invalidity. Article 110a(3) CDR therefore does not offer any protection against their application to Community designs filed before 01/05/2004, 01/01/2007 or 01/07/2013 respectively.
Non-visibility and functionality
The non-visibility of a Community design applied to a part of a complex product and the restrictions applying to features of a design that are solely dictated by technical function or the requirements of interconnection, are grounds of invalidity that must be evaluated on the basis of the design itself and not of a factual situation that exists in any given Member State (Article 25(1)(b) CDR read in combination with Article 4 and 8 CDR).
Novelty and individual character
Under normal circumstances, lack of novelty or individual character of a Community design will not be affected by enlargement of the EU (Article 25(1)(b) CDR read in combination with Article 5 and 6 CDR).
The disclosure of a design prior to the filing or priority date of a Community design can destroy the latter’s novelty or individual character, even if such disclosure took place in a country before the date of its accession to the EU. The sole requirement is that such disclosure could ‘reasonably have become known in the normal course of business in
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the circles specialised in the sector concerned operating in the Community’ (Article 7(1) CDR).
Entitlement to the Community design
The fact that the holder is not entitled to the Community design as a result of a court decision is another ground for invalidity that is not affected by enlargement (Article 25(1)(c) CDR). Article 14 CDR does not impose any nationality requirement for the person claiming to be entitled to the Community design, nor does it require that the court decision originates from a court located in a Member State.
Improper use of one or more of the elements listed in Article 6ter of the Paris Convention
The invalidity ground of improper use of one or more of the elements listed in Article 6ter of the Paris Convention is not affected by enlargement of the EU either. There is no requirement for the sign of which use is prohibited to come from a Member State (Article 25(1)(g) CDR).
13.4.1.2 Grounds of invalidity resulting from enlargement of the EU
A Community design filed on or before 30/04/2004, 31/12/2006 or 30/06/2013 respectively cannot be invalidated on the basis of the four grounds of invalidity referred to below where any of these grounds becomes opposable as a result of the accession of a new Member State on those dates (Article 110a(3) CDR).
Conflict with a prior design right protected in a new Member State (Article 25(1)(d) CDR)
A Community design filed before the date of accession of a Member State cannot be invalidated on the basis of a conflict with an earlier design that has enjoyed protection in the new Member State since a date prior to the filing or priority date of the Community design but that was disclosed to the public at a later date.
Use of an earlier distinctive sign (Article 25(1)(e) CDR)
A Community design filed before the date of accession of a Member State cannot be invalidated on account of the use of a distinctive sign that has enjoyed protection in the new Member State since a date prior to the filing or priority date of the Community design.
Unauthorised use of a work protected under the copyright law of a Member State (Article 25(1)(f) CDR)
A Community design filed before the date of accession of a Member State cannot be invalidated on account of the non-authorised use of a work that has been protected by the copyright law of the new Member State since a date prior to the filing or priority date of the Community design.
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Improper use of signs, emblems, coats of arms, other than those covered by Article 6ter of the Paris Convention (Article 25(1)(g) CDR)
A Community design filed before the date of accession of a Member State cannot be invalidated on account of the improper use of signs, emblems or coats of arms, other than those covered by Article 6ter of the Paris Convention, that are of particular public interest for the new Member State.
Public policy and morality
A Community design filed before the date of accession of a new Member State cannot be invalidated on account that it is contrary to public policy or morality in the territory of that new Member State.
13.4.2 Effects of a priority claim
Community designs with a filing date on or after 01/05/2004, 01/01/2007 or 01/07/2013 respectively may be invalidated on the basis of the four grounds mentioned above.
This applies even if the priority date of the Community design in question precedes the relevant accession date. The priority right does not protect the Community design holder against any change in the law that is applicable to the validity of its design.
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON REGISTERED COMMUNITY
DESIGNS
RENEWAL OF REGISTERED COMMUNITY DESIGNS
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Table of Contents
1. Introduction................................................................................................ 3
2. FRAUD WARNING ..................................................................................... 3 2.1. Private companies sending misleading invoices.....................................3 2.2. Renewal by unauthorised third persons...................................................4 2.3. Contact........................................................................................................4
3. Term of Protection..................................................................................... 4
4. Notification of Expiry of Registration ...................................................... 4
5. Fees and Other Formal Requirements for the Request for Renewal .... 5 5.1 Persons who may submit a request for renewal ......................................5 5.2 Content of the request for renewal...........................................................6 5.3 Languages ..................................................................................................6 5.4 Fees.............................................................................................................7 5.5 Time limits ..................................................................................................7
5.5.1. Six months period for renewal before expiry (basic period) ........................... 7 5.5.2 Six months grace period following expiry (grace period) ............................... 8
5.6 Means of payment ......................................................................................8
6 Procedure before the Office ..................................................................... 9 6.1 Competence................................................................................................9 6.2 Examination of formal requirements.........................................................9
6.2.1 Observance of time limits ............................................................................... 9 6.2.2 Compliance with formal requirements .......................................................... 11
6.3 Items not to be examined.........................................................................11 6.4 Alteration ..................................................................................................12 6.5 Restitutio in integrum ..............................................................................12
7 Entries in the Register............................................................................. 12
8 Date of Effect of Renewal or Expiry ....................................................... 13
9 Renewal of International Design Registrations Designating the European Union....................................................................................... 13
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1. Introduction
There are two ways of applying for a registered Community design: either (i) via a ‘direct filing’ at the Office or a national Office (Article 35 et seq. CDR) or (ii) via an international registration filed with the International Bureau of the World Intellectual Property Organisation and designating the European Union (Article 106a et seq. CDR).
The purpose of the Guidelines is to explain how, in practice, the requirements of the Community Design Regulation1 (CDR), the Community Design Implementing Regulation2 (CDIR) and the Fees Regulation3 (CDFR) are applied by the Office in respect of renewal procedures relating to ‘direct filings’ of Community designs (see paragraphs 3 to 8 below). The Guidelines are not intended to, and cannot, add to or subtract from the legal contents of the Regulations.
Paragraph 9 below makes reference to the relevant instruments applicable to the renewal of international registrations designating the European Union.
2. FRAUD WARNING
2.1. Private companies sending misleading invoices
The Office is aware that users in Europe are receiving an i ncreasing amount of unsolicited mail from companies requesting payment for trade mark and design services such as renewal.
A list of letters from firms or registers, which users have complained are misleading, is published on t he Office website. Please note that these services are not connected with any official trade mark or design registration services provided by IP Offices or other public bodies within the European Union such as OHIM.
If you receive a letter or invoice please check carefully what is being offered to you, and its source. Please note that the OHIM never sends invoices to users or letters requesting direct payment for services (see the Guidelines, Part A, General Rules, Section 3, Payment of fees, cost and charges).
1 Council Regulation (EC) No 6/2002 of 12 December 2001 on C ommunity Designs), as amended by Council Regulation No 1891/2006 of 18 December 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2001 on Community designs, as amended by Commission Regulation (EC) No 876/2007 on 24 July 2007 amending Regulation (EC) No 2245/2002 implementing Council Regulation (EC) No 6/2002 on Community designs following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs 3 Commission Regulation (EC) No 2246/2002 of 16 December 2002 on t he fees, as amended by Commission Regulation (EC) No 877/2007 of 24 July 2007 amending Regulation (EC) No 2246/2002 concerning the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs
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2.2. Renewal by unauthorised third persons
The Office is also aware that fraudsters have targeted the e-renewal module, applying for renewal without proprietors’ consent and thus blocking renewal via the module for persons legitimately authorised to renew in this way. The technical block is designed to prevent a renewal being paid for twice. If, when you file a request for e-renewal, you discover that the mark is ‘blocked’ because renewal has already been requested, please contact the Office.
2.3. Contact
If you have any doubts or detect any new cases, please check with your legal advisers or contact us by telephone on +34 965 139 100 or by e-mail at information@oami.europa.eu
3. Term of Protection
Articles 12, 38 CDR Article 10 CDIR
The term of protection of a registered Community design (RCD) is five years from the date of filing of the application (Article 12 CDR).
The date of filing of the application is determined according to Article 38 CDR a nd Article 10 CDIR (see the Guidelines concerning Applications for Registered Community Designs, Section 2, ‘Allocation of a filing date’).
Registration may be renewed for one or more periods of 5 years each, up to a total of 25 years from the date of filing.
4. Notification of Expiry of Registration
Article 13(2) CDR Article 21 CDIR
At least six months before the expiry of the registration, the Office will inform:
• the holder of the Community design and • any person having a registered right in respect of the Community design
that the registration is approaching expiry. Persons having a registered right include the holders of a registered licence, the proprietors of a registered right in rem, the creditors of a registered levy of execution or the authority competent to act on behalf of the proprietor in insolvency procedures.
Failure to give such information does not affect the expiry of the registration and does not involve the responsibility of the Office.
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5. Fees and Other Formal Requirements for the Request for Renewal
Article 22(8), Articles 65, 66, 67, Article 68(1) (e) CDIR
The general rules concerning communications to the Office apply, which means that the request for renewal may be submitted as follows:
• by electronic means available on the OHIM Website (e-renewal). Entering the name and surname in the appropriate place on the electronic form is deemed to be a signature. Using e-renewal offers advantages such as the receipt of immediate electronic confirmation of the renewal request automatically or the use of the renewal manager feature to complete the form quickly for as many registered Community designs as needed.
• by transmitting a signed original form by fax, mail, or by any other means. A standard form is available on t he OHIM website. Forms have to be s igned but annexes need not be.
It is strongly recommended to renew Community design registrations by electronic means (‘e-renewal’). The process of electronic renewal automatically checks and validates the requirements laid down in the CDIR.
A single application for renewal may be submitted for two or more designs, whether or not part of the same multiple registration, upon payment of the required fees for each of the designs, provided that the Community design holders or the representatives are the same in each case.
For Fees see paragraph 5.4, for Compliance with formal requirements see paragraph 6.2.2.
5.1 Persons who may submit a request for renewal
Article 13(1) CDR
Requests for renewal may be submitted by:
• the registered proprietor of a Community design; • the successor in title where a Community design has been transferred, with effect
from when the request for registration of the transfer was received by the Office; • a person authorised by the proprietor of a Community design to do so. Such a
person may, for instance, be a registered licensee, a non-registered licensee or any other person who has obtained the proprietor’s authorisation to renew the Community design;
• a representative acting on behalf of any of the above persons.
Persons obliged to be represented before the Office pursuant to Article 77(2) CDR can submit a request for renewal directly.
When the renewal request is submitted by a per son other than the registered proprietor, an authorisation will have to exist in its favour; however, it does not need to be filed with the Office unless the Office requests it. For example, if the Office receives
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fees from two different sources, the owner will be contacted in order to know which person is authorised to file the renewal request. Where no reply is received from the owner, the Office will validate the payment that reached the Office first (see, by analogy, judgment of 12/05/2009, T-410/07, ‘Jurado’, paras 16-24).
5.2 Content of the request for renewal
Article 22(1) CDIR
A request for renewal of registration must contain the following:
• The name of the person requesting renewal (that is, the Community design proprietor or an authorised person or representative; see paragraph 3.1). If the Office has allocated an ID number to the applicant for renewal, it is sufficient to indicate this number.
• The registration number of the registered Community design. This number is always composed of a nine-digit root, followed by a four-digit ending (e.g. XXXXXXXXX-YYYY).
• In the case of a multiple registration, an indication that renewal is requested for all the designs covered by the multiple registration or, if the renewal is not requested for all the designs, an indication of those for which it is requested.
Where the Community design holder has appointed a representative, the name of the representative should be m entioned. If the representative is already on record, the indication of their ID number is sufficient. If a new representative is appointed in the request for renewal, their name and a ddress must be given in accordance with Article 1(1)(e) CDIR
Payment alone can constitute a v alid request for renewal providing such payment timely reaches the Office and contains the name of the payer, the registration number of the Community design and the indication ‘renew’. In such circumstances no further formalities need be complied with (see The Guidelines Concerning Proceedings Before The Office for Harmonization In The Internal Market (Trade Marks And Designs) Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).
5.3 Languages
Article 80(b) CDIR
The request for renewal may be filed in any of the five languages of the Office. This language becomes the language of the renewal proceedings. However, when the request for renewal is filed by using the form provided by the Office pursuant to Article 68 CDIR, such a form may be used in any of the official languages of the Community, provided that the form is completed in one o f the languages of the Office, as far as textual elements are concerned.
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5.4 Fees
Article 13(3) CDR Article 22(2) (a), (b) CDIR Article 7(1) CDFR Annex to the CDFR, points 11 and 12
The fees payable for the renewal of a Community design consist of:
• a renewal fee, which, where several designs are covered by a multiple registration, is proportionate to the number of designs covered by the renewal;
• any additional fee applicable for late payment of the renewal fee or late submission of the request for renewal.
The amount of the renewal fee, per design, whether or not included in a m ultiple registration, is as follows:
• for the first period of renewal: EUR 90 • for the second period of renewal: EUR 120 • for the third period of renewal: EUR 150 • for the fourth period of renewal: EUR 180.
The fee must be paid within a period of six months ending on the last day of the month in which protection ends (see paragraph 5.5 below).
The fee may be paid within a further period of six months following the last day of the month in which protection ends, provided that an additional fee of 25% of the total renewal fee is paid (see paragraph 5.5.2 below).
When the payment is made by transfer or payment to an Office bank account, the date on which payment is deemed to have been made is the date on which the amount is credited to the Office’s bank account.
5.5 Time limits
Article 13 CDR Articles 22(2), 58(1) CDIR
5.5.1. Six months period for renewal before expiry (basic period)
The request for renewal and the renewal fee must be submitted within a period of six months ending on t he last day of the month in which protection ends (hereinafter referred to as ‘the basic period’).
If this time limit expires on a day on which the Office is not open for receipt of documents or on which ordinary mail is not delivered in Alicante, it will extend until the first day thereafter on which the Office is open for receipt of documents and on which ordinary mail is delivered. Other exceptions are provided for at Article 58(2) and (4) CDIR. For example, where the Community design has a filing date of 01/04/2013, the last day of the month in which protection ends will be 30/04/2018. Therefore, a request for
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renewal must be introduced and the renewal fee paid between 01/11/2017 and 30/04/2018 or, where this is a Saturday, Sunday or other day on which the Office is closed or does not receive ordinary mail, the first following working day on which the Office is open to the public and does receive ordinary mail.
5.5.2 Six months grace period following expiry (grace period)
Where the relevant time limit is not met, the request for renewal may still be submitted and the renewal fee may still be paid within a further period (hereinafter the ‘grace period’) of six months following the last day of the month in which the basic period ends, provided that an additional fee of 25% of the total renewal fee is paid within the grace period (see Article 13.3 CDR). Thus, renewal will only be successfully effected if payment of all fees (renewal fees and addi tional fees for late payment, where applicable) reaches the Office within the grace period.
In the above example, the grace period during which a request for renewal may still be introduced upon payment of the renewal fee plus the additional fee is counted from the day after 30/04/2018, namely from 01/05/2018, and end s on 31 /10/2018 or, if 31/10/2018 is a Saturday, Sunday or other day on which the Office is closed or does not receive ordinary mail, the first following working day on which the Office is open to the public and does receive ordinary mail. This applies even if, in the above example, 30/04/2018 was a Saturday or Sunday; the rule that a time limit to be observed vis-à- vis the Office is extended until the next working day applies only once and to the end of the first period, not to the starting date of the grace period.
Fees which are paid before the start of the first six-month period will not, in principle, be taken into consideration and will be refunded.
5.6 Means of payment
Article 5 CDFR
The admissible means of payment are bank transfers, credit cards (only if renewal is applied for electronically via the e-renewal module) and depos its in current accounts held with the Office. Payment cannot be made by cheque. Fees and charges must be paid in euros.
Where the Community design proprietor has a current account at the Office, the fee will be debited automatically from the account once a request for renewal is filed. Unless different instructions are given, the renewal fee will be debited on the last day of the six-month time limit provided for in Article 13(3) CDR, i.e. on the last day of the month in which protection ends.
If a request for renewal is filed late (see paragraph 5.5.2 above), the debit will take place, unless different instructions are given, with effect from the day on which the belated request was filed, and will be subject to a surcharge.
Where the request is submitted by a professional representative within the meaning of Article 78 CDR, who represents the Community design proprietor, and t he
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representative has a current account before the Office, the renewal fee will be debited from the representative’s current account.
Payment may also be made by the other persons identified in paragraph 5.1 above.
Payment by debiting a current account held by a third party requires explicit authorisation from the holder of the current account that the account can be debited for the fee in question. In such cases, the Office will check if authorisation has been given. If none has been given, a letter will be sent to the renewal applicant asking them to submit the authorisation to debit the third party account. In such cases, payment is considered to be made on the date the Office receives the authorisation.
Where the fees (renewal fees and, where applicable, additional fee for late payment) have been paid, but the registered Community design is not renewed (i.e. where the fee has been paid only after expiry of the grace period, or where the fee paid amounts to less than the basic fee plus the fee for late payment/late submission of the request for renewal, or where certain other deficiencies have not been remedied; see paragraph 6.2.2 below), the fees in question will be refunded.
6 Procedure before the Office
6.1 Competence
Article 104 CDR
The Operations Support Department is responsible for treating renewal requests and entering them in the Register.
6.2 Examination of formal requirements
Examination of a request for renewal is limited to formalities as follows.
6.2.1 Observance of time limits
(a) Before expiry of the basic period
Article 13 CDR Article 22(3) CDIR Article 5, Article 6(1) CDFR
Where the request for renewal is filed and the renewal fee paid within the basic period, the Office will record the renewal, provided the other conditions laid down in the CDR and CDIR are fulfilled.
Where no request has been filed before the basic period expires, but the Office receives a payment of the renewal fee that contains the minimum indications (name of the person requesting the renewal and t he registration number of the renewed
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Community design(s)), this will constitute a valid request and no further formalities will need to be complied with.
However, where no request for renewal has been filed but a renewal fee has been paid that does not contain the minimum indications (name of the person requesting the renewal and the registration number of the renewed Community design(s)), the Office will invite the Community design proprietor to submit a request for renewal and pay , where applicable, the additional fee for late submission of the request for renewal. A letter will be sent out as early as possible after receipt of the fee, so as to enable the request to be filed before the additional fee becomes due.
Where a request has been submitted within the basic period, but the renewal fee has not been paid or has not been paid in full, the Office will invite the person requesting renewal to pay the renewal fee or the remaining part thereof along with the additional fee for late payment.
If the request for renewal is filed by a per son authorised by the proprietor of the Community design, the proprietor of the Community design will receive a copy of the notification.
(b) Before expiry of the grace period
Article 13(3) CDR Article 22(4) CDIR
Where a r equest has been submitted within the additional grace period, but the renewal fee has not been paid or has not been paid in full, the Office will invite the person requesting renewal to pay the renewal fee or the remaining part thereof along with the additional fee for late payment.
Renewal will be effected only if payment of all fees (renewal fees and additional fee for late payment) is made or considered to be made before expiry of the l grace period (see paragraphs 3.5 and 3.6 above).
(c) Situation where the proprietor or representative holds a current account
The Office will not debit a c urrent account unless there is an ex press request for renewal. It will debit the account of the person performing the action (the Community design proprietor, the representative thereof or a third person).
Where the request is filed within the basic period, the Office will debit the renewal fees without any surcharge.
Where the request is filed within the additional period, the Office will debit the renewal fee along with a 25% surcharge (see paragraph 3.4).
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6.2.2 Compliance with formal requirements
Article 22, and Article 40 CDIR
Where a request for renewal does not comply with formal requirements (see paragraph 5 Fees and O ther Formal Requirements for the Request for Renewal) but such deficiencies can be remedied, the Office will invite the renewal applicant to remedy the deficiencies within a t ime limit of two months. This time limit applies even if the additional period has already expired.
If the request for renewal is filed by a per son authorised by the proprietor of the Community design, the proprietor of the Community design will receive a copy of the notification.
Where a request for renewal has been submitted by two different persons claiming to be authorised by the proprietor of the Community design, the Office will seek clarification on who is the authorised person by contacting the proprietor directly.
Where the deficiencies are not remedied before the relevant time limit expires, the Office will proceed as follows:
• If the deficiency lies in the fact that there is no indication of the designs of a multiple registration to be renewed, and the fees paid are insufficient to cover all the designs for which renewal is requested, the Office will establish which designs the amount paid is intended to cover. In the absence of any other criteria for determining which designs are intended to be covered, the Office will take the designs in the numerical order in which they are represented. The Office will check that the registration has expired for all designs for which the renewal fees have not been paid in part or in full.
• In the case of other deficiencies, the Office will check that the registration has expired and issue a notification of loss of rights to the proprietor or their representative or, where applicable, to the person requesting renewal and any person recorded in the Register as having rights in the Community design(s).
The proprietor may apply for a decision on the matter under Article 40(2) CDIR within two months.
Where the renewal fees have been paid but the registration is not renewed, those fees will be refunded.
6.3 Items not to be examined
No examination will be carried out on renewal in respect of the registrability of the design or correct classification of the design’s products. Nor will a r egistration be reclassified that was registered in accordance with an edi tion of the Locarno Classification no l onger in force at the time of renewal. Such reclassification will not even be available at the proprietor’s request.
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6.4 Alteration
Article 12(2) CDIR
As a matter of principle, since the representation of a Community design may not be altered after the filing of the application, the submission of additional views or withdrawal of some views at the time of renewal is not accepted.
Other changes that do not alter the representation of the Community design itself (changes of name, address, etc.), and which the owner wishes to have recorded in the Register when the registration is renewed, must be c ommunicated separately to the Office according to the applicable procedures (see the Guidelines concerning Applications for Registered Community Designs, Section 10). They will be included in the data recorded at renewal only if they are recorded in the Register no later than the date of expiry of the Community design registration.
6.5 Restitutio in integrum
Article 67 CDR Article 15 of the Annex to the CDFR
A party to proceedings before the Office may be reinstated in their rights (restitutio in integrum) if they were unable to observe a time limit vis-à-vis the Office in spite of all due care having been taken as required by the circumstances, provided that the failure to observe the time limit had the direct consequence, by virtue of the provisions of the Regulations, of causing the loss of a right or means of redress.
Restitutio in integrum is only available upon application to the Office and is subject to a fee (EUR 200).
The application must be made within two months from removal of the cause of non- compliance but in any event not later than one year after expiry of the unobserved time limit. The act omitted must be completed within the same period.
In the case of failure to submit a request for renewal or to pay the renewal fee, the time limit of one year starts on the day on which the protection ends (basic period), not on the date of expiry of the further period of six months (additional period).
7 Entries in the Register
Article 13(4) CDR Article 40, Article 22(6), Article 69(3)(m), Article 69(5), Article 71 CDIR
Where the request for renewal complies with all the requirements, the renewal will be entered in the Register.
The Office will notify the Community design proprietor or their representative of the renewal of the design, its entry in the Register and the date from which renewal takes effect.
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The Office, where it has determined that the registration has expired, will inform the Community design proprietor or their representative and any person recorded in the Register as having rights in the Community design of the expiry of the registration and its cancellation from the Register.
The proprietor may apply for a decision on the matter under Article 40(2) CDIR within two months.
8 Date of Effect of Renewal or Expiry
Article 13(4) CDR Article 22(6), Article 56 CDIR
Renewal will take effect from the day following that on which the existing registration expires.
Where the Community design has expired and i s cancelled from the Register, the cancellation will take effect from the day following that on which the existing registration expired.
9 Renewal of International Design Registrations Designating the European Union
Article 17 of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the ‘Geneva Act’) Article 12 CDR
International registrations designating the European Union are protected for an initial term of 5 years from the date of the international registration, and may be renewed for additional terms of 5 years, up to a total term of 25 years from the date of registration.
Pursuant to Article 11a of the Annex to the CDFR, the individual renewal fees for an international registration designating the European Union, per design, are as follows:
• for the first period of renewal: EUR 31 • for the second period of renewal: EUR 31 • for the third period of renewal: EUR 31 • for the fourth period of renewal: EUR 31.
International registrations must be renewed directly at the International Bureau of WIPO in compliance with Article 17 of the Geneva Act (Article 22a CDIR). The Office will not deal with renewal requests or payments of renewal fees in respect of international registrations.
The procedure for the renewal of international marks is managed entirely by the International Bureau, which sends out the notice for renewal, receives the renewal fees and records the renewal in the International Register. When international registrations designating the EU are renewed, the International Bureau also notifies the Office.